TMEP 714.05(b): Section 2(d) Refusal Based on Earlier-Filed Application that Has Matured Into Registration

This is the October 2015 Edition of the TMEP

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714.05(b)    Section 2(d) Refusal Based on Earlier-Filed Application that Has Matured Into Registration

The examining attorney must issue a new nonfinal action when first refusing registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d), as to an earlier-filed application that has registered, even if the applicant had been advised of the existence of the earlier-filed application in a prior Office action. See TMEP §716.02(c) regarding procedure when application is suspended pending the disposition of more than one earlier-filed conflicting application.

In a §66(a) application, a new nonfinal refusal under §2(d) may be issued more than 18 months after the date on which the IB forwards the request for extension of protection to the USPTO, provided that the USPTO had notified the IB of the conflicting application prior to expiration of the 18-month period. See TMEP §1904.03(b).