1208.03(b) Decision on Request for Interference
The Director will declare an interference only upon a showing of extraordinary circumstances that would result in a party being unduly prejudiced in the absence of an interference. 37 C.F.R. §2.91(a). The availability of opposition and cancellation procedures provides a remedy and ordinarily precludes the possibility of undue prejudice to a party. Id. The request for interference must show that there is some extraordinary circumstance that would make the remedy of opposition or cancellation inadequate or prejudicial to the party’s rights. See In re Family Inns of Am., Inc., 180 USPQ 332, 333 (Comm’r Pats. 1974). The potential need to file two notices of opposition that could be consolidated if the issues were sufficiently similar is not considered an extraordinary circumstance that will unduly prejudice a petitioner without an interference. The fact that an earlier-filed application based on §1(b), §44, or §66(a) has been cited against a later-filed application based on use in commerce under §1(a) also is not an extraordinary circumstance that warrants declaration of an interference. An opposition proceeding is the proper forum for determining priority between an applicant and another party. Priority for purposes of examination of an application is determined by filing date. 37 C.F.R. §2.83(a); TMEP §1208.02(a).
Although §16 of the Act permits the declaration of an interference between an application and a registration, the practice of declaring an interference in these cases has been discontinued because the applicant cannot obtain a registration if the interfering registration remains on the register; therefore, even if the applicant prevailed in the interference, the applicant would still have to petition to cancel the interfering registration. See In re Kimbell Foods, Inc., 184 USPQ 172, 172 (Comm’r Pats. 1974); Ex parte H. Wittur & Co., 153 USPQ 362, 362-63 (Comm’r Pats. 1966); 37 C.F.R. §2.96.
See TBMP Chapter 1000.