TMEP 703: USPTO Does Not Issue Duplicate Registrations

This is the October 2015 Edition of the TMEP

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703    USPTO Does Not Issue Duplicate Registrations

The USPTO will not issue two or more identical registrations on the same register. If two applications on the same register would result in registrations that are exact duplicates, the USPTO will permit only one application to mature into registration, and will refuse registration in the other application. 37 C.F.R. §2.48. For instance, if two identical applications are filed by an applicant, and the USPTO has not taken action in either application, then the USPTO will refuse registration in both applications. However, if the USPTO has already taken action in one of the applications but not the other, then the USPTO will refuse registration in the second application.

The applicant may overcome the refusal(s) by abandoning one of the applications. If practicable, the USPTO will permit the applicant to choose which application should mature into registration. If one of the applications has matured into registration, the applicant may choose to either surrender the registration and allow the application to proceed to registration, or retain the registration and abandon the application.

Basis. Applications filed under or amended to §1 of the Trademark Act would result in duplicate registrations if the only difference between them is that one is based on use in commerce under §1(a) and the other is based on intent-to-use under §1(b). However, an application filed under §1 and an application filed under §44 that are otherwise identical would not result in duplicate registrations, nor would an application under §66(a) of the Trademark Act that is otherwise identical to an application filed under §1 or §44.

Classification Change. Where the international classification of goods/services has changed, a new application for registration of the same mark for the same goods/services in a different class will not result in a duplicate registration. For example, if applicant owns a registration of a mark for legal services in Class 42, and files a new application after January 1, 2007, for registration of the same mark for legal services in Class 45, this is not a duplicate.

Standard Character/Typed Drawing. An application for registration of a mark depicted in standard characters would result in a duplicate registration of an application of the same mark in “typed” format (see TMEP §807.03(g)) for the same goods/services.

Standard Character/Special Form. A standard character drawing and a special form drawing of the same mark would not result in duplicate registrations.

Overlapping Goods/Services. Applications/registrations with identifications that include some of the same goods/services, but also different goods/services, would not result in duplicate registrations.

Color. A drawing in which the entire mark is lined for color (see TMEP §808.01(b)), would result in a duplicate registration of a color drawing of the mark, if the colors are identical. See TMEP §§807.07–807.07(g) regarding color drawings.

If the applicant claims different shades of a color (e.g., purple in one and lavender in the other), any resulting registrations are not duplicates.

Where one application/registration is not completely lined for color (i.e., if the mark on the drawing includes color(s) in addition to unclaimed or unexplained black, white, and/or gray), this would not result in a duplicate registration of an application seeking registration that includes a claim of the same color(s) in addition to a claim of color for, or an explanation of the presence of, the black/white/gray in the drawing. See TMEP §§807.07(d)–807.07(d)(iii) regarding drawings that include black/white/gray.

Principal/Supplemental Register. An application for registration of a mark on the Principal Register would not result in a duplicate of an application for registration of the same mark on the Supplemental Register.

Registrations Issued Under Prior Acts. If eligible, marks registered under the Acts of 1881, 1905, and 1920 may also be registered under the Act of 1946 (see §46(b) of the Trademark Act of 1946). Even if the mark and the goods/services in a registration issued under the 1946 Act are identical to the mark and goods/services in a registration issued under a prior Act, the registrations are not considered duplicates. See TMEP §§1601.04, 1601.05, 1602.02, and 1602.03 regarding registrations issued under prior Acts.

Section 66(a) Application Based on Different Int’l Registration. A §66(a) application would not result in a duplicate registration of another §66(a) application or registered extension of protection based on a different international registration.

When an application is a duplicate of a registration owned by the applicant, and USPTO records show that the registration is still active, the examining attorney must refuse registration. If the registration is subject to cancellation for failure to file an affidavit of continued use or excusable nonuse under 15 U.S.C. §1058 or §1141k, or due to expire for failure to file a renewal application under 15 U.S.C. §1059 (i.e., because the grace period has passed and no affidavit or renewal application has been filed), and the application is otherwise in condition for approval or final refusal, the examining attorney must suspend the application until the Trademark database is updated to show that the registration is cancelled or expired. See TMEP §1611 for information about how the owner of a registration who has not timely filed a §8 or §71 affidavit or declaration or §9 renewal application may expedite the cancellation or expiration of its own registration.