TMEP 1208.01: Priority for Publication or Issue Based on Effective Filing Date

October 2017 Edition of the TMEP

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1208.01    Priority for Publication or Issue Based on Effective Filing Date

In ex parte examination, priority among conflicting pending applications is determined based on the effective filing dates of the applications, without regard to whether the dates of use in a later-filed application are earlier than the filing date or dates of use of an earlier-filed application, whether the applicant in a later-filed application owns a registration of a mark that would be considered a bar to registration of the earlier-filed application, or whether an application was filed on the basis of use of the mark in commerce or a bona fide intent to use the mark in commerce. See 37 C.F.R. §2.83(a).

When two or more applications contain marks that are conflicting, the mark in the application that has the earliest effective filing date will be published for opposition if it is eligible for registration on the Principal Register, or will be registered if it is eligible for registration on the Supplemental Register. Id. In rare situations, the effective filing date changes after submission of an amendment to allege use and amendment to the Supplemental Register. See TMEP §206.01. In such cases, the examining attorney must conduct a new search and follow the procedures discussed in TMEP §206.04. However, once a registration issues, a likelihood-of-confusion refusal that is required by the Trademark Act applies regardless of the filing-date priority of the underlying application. Internal examination procedures do not have primacy over statutory law, and a refusal that is authorized by the Trademark Act will not be considered invalid due to errors in examination procedure. In re House Beer, LLC, 114 USPQ2d 1073, 1076 (TTAB 2015). See TMEP §§206-206.03 regarding effective filing dates.

The examining attorney cannot refuse registration under §2(d) of the Trademark Act based on a conflicting mark in an earlier-filed application until the conflicting mark registers. See TMEP §1207.01. Therefore, when the examining attorney has examined the later-filed application and determined that, but for the conflict between the marks, it is in condition to be approved for publication or issue, or in condition for a final refusal, the examining attorney will suspend action on the later-filed application until the earlier-filed application matures into a registration or is abandoned. 37 C.F.R. §2.83(c); TMEP §§716.02(c) and 1208.02(c).