Conflicting Applications

The term “conflicting applications” refers to two or more

pending applications that are filed by different applicants and may ultimately

require a refusal of registration under §2(d) of the Trademark Act,

15 U.S.C.

§1052(d)

, due to a likelihood of confusion between the marks.

When assigned a new application, the examining attorney must search the USPTO’s

automated records to determine whether there are any conflicting applications. If

there are conflicting applications, the examining attorney should

not

transfer the conflicting application to the

examining attorney who acted on the first conflicting application. Instead, the

examining attorney should examine the assigned application and issue an Office action

that includes a notice to the applicant that there is a prior-filed application to

register a mark that may be likely to cause confusion with the applicant’s mark.

See

TMEP

§§1208–1208.03(c)

. The examining attorney handling the

later-filed application should act consistently with the examining attorney who

handled the earlier-filed application, unless it would be clear error

(

see

TMEP §706.01

) to

act consistently. If necessary, the examining attorney should review the electronic

record of the earlier-filed application before taking an action in the later-filed

conflicting application.

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