Interference

15 U.S.C. §1066

Interference; declaration by

Director.

Upon petition showing extraordinary circumstances, the

Director may declare that an interference exists when application is made for the

registration of a mark which so resembles a mark previously registered by another, or

for the registration of which another has previously made application, as to be likely

when used on or in connection with the goods or services of the applicant to cause

confusion or mistake or to deceive. No interference shall be declared between an

application and the registration of a mark the right to the use of which has become

incontestable.

15 U.S.C. §1068

Action of Director in interference, opposition,

and proceedings for concurrent use registration or for cancellation.

In such proceedings the Director may refuse to register

the opposed mark, may cancel the registration, in whole or in part, may modify the

application or registration by limiting the goods or services specified therein, may

otherwise restrict or rectify with respect to the register the registration of a

registered mark, may refuse to register any or all of several interfering marks, or may

register the mark or marks for the person or persons entitled thereto, as the rights of

the parties hereunder may be established in the proceedings: Provided, That in the case

of the registration of any mark based on concurrent use, the Director shall determine

and fix the conditions and limitations provided for in subsection (d) of section 2 of

this Act. However, no final judgment shall be entered in favor of an applicant under

section 1(b) before the mark is registered, if such applicant cannot prevail without

establishing constructive use pursuant to section 7(c).

An interference is a proceeding in which the Board

determines which, if any, of the owners of conflicting applications (or of one or more

applications and one or more registrations that are in conflict) is entitled to

registration.

See

15

U.S.C. §§1066

,

1068

;

TBMP §1001

efore the mark is registered, if such applicant cannot prevail without

establishing constructive use pursuant to section 7(c).

An interference is a proceeding in which the Board

determines which, if any, of the owners of conflicting applications (or of one or more

applications and one or more registrations that are in conflict) is entitled to

registration.

See

15

U.S.C. §§1066

,

1068

;

TBMP §1001

.

An interference can be declared only upon petition to the

Director.  However, the Director will grant such a petition only if the petitioner can show

extraordinary circumstances that would result in a party being unduly prejudiced in the

absence of an interference. The availability of an opposition or cancellation proceeding

ordinarily precludes the possibility of undue prejudice to a party. Thus, a petitioner must

show that there is some extraordinary circumstance that would make the remedy of opposition

or cancellation inadequate or prejudicial to the party’s rights. Interferences are

generally limited to situations where a party would otherwise be required to engage in

successive or a series of opposition or cancellation proceedings, and where the issues are

substantially the same.

See

In re Family Inns of Am., Inc.

, 180 USPQ 332 (Comm'r Pats. 1974).

The following matters are not subject to

interference: (1) registrations on the Supplemental Register; (2) applications for

registration on the Supplemental Register; (3) registrations under the Act of 1920; and

(4) registrations of marks that have become incontestable.

See

TMEP §§1208.03-1208.03(c)

and

TBMP

Chapter 1000

for more information about interferences.

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