Companion Registrations

If the applicant previously filed a companion

application that has matured into a registration, the examining attorney should

not

transfer their application to the prior

examining attorney.  Generally, in the later application, the examining attorney

should act consistently with the registration, unless it would be clear error

(

see

TMEP §706.01

)

to act consistently.  However, the USPTO is not bound by the decisions of the

examining attorneys who examined the applications for the applicant’s previously

registered marks, based on different records.  Eligibility for registration must

be determined on the basis of the facts that exist at the time registration is

sought.

See

TMEP

§1216.01

and cases cited therein.

See

TMEP

§702.03(a)(iv)

regarding classification and

identification in companion registrations.