USPTO Does Not Issue Duplicate Registrations

The USPTO will not issue two or more identical registrations on

the same register.  If two applications on the same register would result in registrations

that are exact duplicates, the USPTO will permit only one application to mature into

registration, and will refuse registration in the other application.

37 C.F.R.

§2.48

.  For instance, if two identical applications are filed by an

applicant, and the USPTO has not taken action in either application, then the USPTO will

refuse registration in both applications.  However, if the USPTO has already taken action

in one of the applications but not the other, then the USPTO will refuse registration in

the second application.

The applicant may overcome the refusal(s) by abandoning one of

the applications.  If practicable, the USPTO will permit the applicant to choose which

application should mature into registration.  If one of the applications has matured into

registration, the applicant may choose to either surrender the registration and allow the

application to proceed to registration, or retain the registration and abandon the

application.

Basis.

Applications filed under or amended to §1 of the Trademark Act

would result in duplicate registrations if the only difference between them is that one is

based on use in commerce under §1(a) and the other is based on intent-to-use under §1(b).

However, an application filed under §1 and an application filed under §44 that are

otherwise identical would not result in duplicate registrations, nor would an application

under §66(a) of the Trademark Act that is otherwise identical to an application filed under

§1 or §44.

Classification Change.

Where the international classification of

goods/services has changed, a new application for registration of the same mark for the

same goods/services in a different class will not result in a duplicate registration

result in duplicate registrations, nor would an application

under §66(a) of the Trademark Act that is otherwise identical to an application filed under

§1 or §44.

Classification Change.

Where the international classification of

goods/services has changed, a new application for registration of the same mark for the

same goods/services in a different class will not result in a duplicate registration.  For

example, if applicant owns a registration of a mark for legal services in Class 42, and

files a new application after January 1, 2007, for registration of the same mark for legal

services in Class 45, this is not a duplicate.

Standard Character/Typed Drawing

.  An application for registration of a

mark depicted in standard characters would result in a duplicate registration of an

application of the same mark in “typed” format (

see

TMEP

§807.03(g)

) for the same goods/services.

Standard Character/Special Form

.  A standard character drawing and a

special form drawing of the same mark would not result in duplicate registrations.

Overlapping Goods/Services

.  Applications/registrations with

identifications that include some of the same goods/services, but also different

goods/services, would not result in duplicate registrations.

Color.

A drawing in which the entire mark is lined for color

(

see

TMEP

§808.01(b)

), would result in a duplicate registration of a color

drawing of the mark, if the colors are identical.  See

TMEP

§§807.07–807.07(g)

regarding color drawings.

If the applicant claims different shades of a color (e.g.,

purple in one and lavender in the other), any resulting registrations are not

duplicates

trations.

Color.

A drawing in which the entire mark is lined for color

(

see

TMEP

§808.01(b)

), would result in a duplicate registration of a color

drawing of the mark, if the colors are identical.  See

TMEP

§§807.07–807.07(g)

regarding color drawings.

If the applicant claims different shades of a color (e.g.,

purple in one and lavender in the other), any resulting registrations are not

duplicates.

Where one application/registration is not completely lined for

color (i.e., if the mark on the drawing includes color(s) in addition to unclaimed or

unexplained black, white, and/or gray), this would not result in a duplicate registration

of an application seeking registration that includes a claim of the same color(s) in

addition to a claim of color for, or an explanation of the presence of, the

black/white/gray in the drawing.  See

TMEP §§807.07(d)–807.07(d)(iii)

regarding

drawings that include black/white/gray.

Principal/Supplemental Register

.  An application for registration of a

mark on the Principal Register would not result in a duplicate of an application for

registration of the same mark on the Supplemental Register.

Registrations Issued Under Prior Acts

. If eligible, marks registered

under the Acts of 1881, 1905, and 1920 may also be registered under the Act of 1946

(

see

§46(b) of the Trademark Act of 1946).  Even if the mark and the

goods/services in a registration issued under the 1946 Act are identical to the mark and

goods/services in a registration issued under a prior Act, the registrations are not

considered duplicates.  See

TMEP §§1601.04

,

1601.05

,

1602.02

, and

1602.03

regarding registrations issued

under prior Acts.

Section 66(a) Application Based on Different Int’l Registration

.  A

§66(a) application would not result in a duplicate registration of another §66(a)

application or registered extension of protection based on a different international

registration

the registrations are not

considered duplicates.  See

TMEP §§1601.04

,

1601.05

,

1602.02

, and

1602.03

regarding registrations issued

under prior Acts.

Section 66(a) Application Based on Different Int’l Registration

.  A

§66(a) application would not result in a duplicate registration of another §66(a)

application or registered extension of protection based on a different international

registration.

When an application is a duplicate of a registration owned by

the applicant, and USPTO records show that the registration is still active, the examining

attorney must refuse registration.  If the registration is subject to cancellation for

failure to file an affidavit of continued use or excusable nonuse under

15 U.S.C.

§1058

or

§1141k

, or due to expire for failure to file a renewal application

under

15 U.S.C. §1059

(i.e., because the grace period has passed and no

affidavit or renewal application has been filed), and the application is otherwise in

condition for approval or final refusal, the examining attorney must suspend the

application until the Trademark database is updated to show that the registration is

cancelled or expired.  See

TMEP §1611

for information about how the

owner of a registration who has not timely filed a §8 or §71 affidavit or declaration or §9

renewal application may expedite the cancellation or expiration of its own

registration.

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