When a business applies for a trademark, registration is usually denied when a competing trademark has previously been registered. A company applying for a trademark, when faced with that situation, may then file a petition to cancel the conflicting registration. The application will then be suspending pending a resolution of the petition to cancel. But if the conflicting mark is still in the registration process, the applicable procedures will change and petition to cancel is not an option.
Once an application for registration of a trademark has been submitted to the US Patent and Trademark Office, it is sent to an examining attorney with the USPTO. The examining attorney, in reviewing the application, will initially search the USPTO’s automated records to determining whether there are any conflicting applications or registrations. “Conflicting” applications or registrations are marks filed by a different applicant that 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. Registration will generally be refused when the conflicting mark has previously been registered.
An examining attorney, however, cannot refuse registration under §2(d) of the Trademark Act based on an earlier-filed application for a conflicting mark until the mark registers. Therefore, when the examining attorney has examined the later-filed application and determined that it is in condition to be approved for publication or issue or in condition for a final refusal, but for the conflict between the marks, 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); In re Direct Access Communications (M.C.G.) Inc., 30 USPQ2d 1393 (Comm’r Pats. 1993). Because the conflicting mark has not been “registered” yet, a petition to cancel the registration cannot be filed.
This situation may often occur in situations when the conflicting application is made under 15 U.S.C. § 1051(b) based on an intention to use a trademark in commerce (as opposed to applications based on prior use of the mark in commerce). If such an application is not opposed and meets the requirements, it will not be immediately registered. Instead, a Notice of Allowance will be issued with the proviso that the mark will not be registered until it has been used in commerce and the applicant files a Statement of Use. The Statement of Use must be filed within six months or the application will be deemed abandoned. The applicant can request up to five six-month extensions of this time period, and the later-filed application may remain suspended during that time period.
The potential delay serves as a reminder that a party seeking trademark protection should not delay in filing an application even when it appears that no one else has been using the mark in commerce. An “intent to use” application by another party can delay the process of securing trademark protection even when your business can clearly demonstrate prior use.