TMEP 702.03(b): Conflicting Applications

October 2017 Edition of the TMEP

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702.03(b)    Conflicting Applications

The term "conflicting applications" refers to two or more pending applications that are filed by different applicants and may ultimately require a refusal of registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d), due to a likelihood of confusion between the marks.  When assigned a new application, the examining attorney must search the USPTO’s automated records to determine whether there are any conflicting applications.  If there are conflicting applications, the examining attorney should not transfer the conflicting application to the examining attorney who acted on the first conflicting application.  Instead, the examining attorney should examine the assigned application and issue an Office action that includes a notice to the applicant that there is a prior-filed application to register a mark that may be likely to cause confusion with the applicant’s mark. See TMEP §§1208–1208.03(c).  The examining attorney handling the later-filed application should act consistently with the examining attorney who handled the earlier-filed application, unless it would be clear error ( see TMEP §706.01) to act consistently.  If necessary, the examining attorney should review the electronic record of the earlier-filed application before taking an action in the later-filed conflicting application.