716.02(c) Conflicting Marks in Pending Applications
When there are conflicting marks in pending applications, action on the application with the later effective filing date will be suspended (if the application appears to be otherwise in condition for publication or issue or for a final action) until the mark in the conflicting application with the earlier effective filing date is either registered or abandoned. 37 C.F.R. §2.83(c). See TMEP §§1208–1208.02(f) for more information about conflicting marks in pending applications.
If the examining attorney has cited an earlier-filed pending application, the applicant may respond by arguing that there is no likelihood of confusion between the marks. If the examining attorney is not persuaded by the applicant’s arguments, the examining attorney should suspend the later-filed application pending disposition of the earlier-filed conflicting application. The suspension notice should include a statement that the applicant’s arguments were not persuasive. It is not necessary to address the merits of the applicant’s arguments prior to the initial suspension. See TMEP §716.03 regarding the applicant’s request to remove an application from suspension.
If the examining attorney discovers that an earlier-filed pending application was abandoned, but that a petition to revive is pending, the examining attorney should suspend the later-filed application pending disposition of the petition to revive. If the petition to revive is granted, the later-filed application will remain suspended until the mark in the earlier-filed application is registered or the earlier-filed application is again abandoned.
When an application is suspended pending the disposition of more than one earlier-filed conflicting application, and one of the conflicting applications matures into registration, the examining attorney will normally not issue a refusal of registration until all the remaining conflicting application(s) are registered or abandoned, in order to avoid issuing piecemeal refusals. However, if deemed appropriate, the examining attorney does have the discretion to issue a refusal of registration under §2(d) in this situation.
Sometimes, the applicant will file an opposition to the registration of the earlier-filed conflicting mark. In this situation, it is possible that a settlement agreement filed in the Board proceeding may be contingent upon the approval of an amendment or acceptance of a consent agreement filed in the suspended application, and the consequent approval of the application for publication. The Board has no jurisdiction over the application that is pending before the examining attorney. Thus, the applicant must file the amendment or consent agreement with the examining attorney, not with the Board. The examining attorney must consider the amendment or agreement and take appropriate action. See TBMP §605.03(c).