When examining trademark applications, Examining Attorneys prioritize applications based on their effective filing dates. If multiple applications contain conflicting marks that could cause a likelihood of confusion, the trademark in the application with the earliest effective filing date will either be published in the Official Gazette for registration on the Principal Register or registered on the Supplemental Register if appropriate. Any conflicting application that is not published or issued will be suspended.

The suspended status remains in effect until the published or issued application is either registered or abandoned. A mark in a conflicting application cannot be refused registration under §2(d) of the Trademark Act until an earlier filed application is registered. Therefore, it remains suspended while waiting to see if registration or abandonment occurs. You can refer to 37 C.F.R §2.83(c), as well as the Trademark Manual of Examining Procedure ("TMEP") §1207.01 and §1208 for more details. In certain cases, there may be multiple conflicting pending applications. If conflicting applications have the same filing date but one application is unsigned, the unsigned application will be treated as having a later execution date. If two conflicting applications have the same filing date and execution date, the application with the lowest serial number will have priority for publication or registration.

Disputes over the effective filing dates of trademark applications are not uncommon, despite the expectation of clear dates. You can find more information on priority disputes on the web pages titled "Priority Determinations in Trademark Law - Constructive Use Priority" and "Priority Determinations in Trademark Law - Foreign Rights." Under §1 or §44 of the Trademark Act, the filing date of an application is the date when the United States Patent & Trademark Office ("USPTO") receives all the mandatory elements of the application according to TMEP §201. In the case of an application under §66(a) of the Trademark Act, the filing date is either the international registration date (if an international application requested extension of protection to the U.S.) or the date the International Bureau ("IB") recorded the subsequent designation. Additionally, when a foreign application is involved, there is another circumstance where an alternative date is considered the effective filing date. If an applicant claims priority under §44(d) of the Trademark Act based on a foreign trademark application, the effective filing date is the date the foreign application was filed.

Regarding intent-to-use trademark applications, if the application is amended to the Supplemental Register, the filing date will be the date the Allegation of Use is filed. It is crucial to be aware of this rule because the USPTO does not modify the original filing date in its database. Consequently, a general practitioner may be misled by the information in the database and potentially provide incorrect information to a client involved in a priority dispute. Therefore, it is essential to thoroughly review the entire file of a conflicting application to determine the effective filing date accurately. If there is a possibility that the mark in the intent-to-use application (the 1(b) application) may need to be amended to the Supplemental Register, the client should be alerted to the risk that the Examining Attorney would conduct a new conflict search after the filing of the Allegation of Use. This new search could yield negative results depending on the time elapsed between the original filing date and the date the Allegation of Use was filed. Additionally, it is important to remember another restriction with 1(b) applications: assignments cannot be made until an Allegation of Use is filed unless the Assignee is a successor to the Assignor's business.

Another complex situation arises when an abandoned trademark application is later revived or reinstated. In this scenario, the Examining Attorney must conduct a new search as well. If a later filed application contains a conflicting mark, the earlier filed application that was previously abandoned and has now been revived will take priority. The later filed application will be placed in suspension status pending the outcome of the earlier filed application. However, if a later filed application for a conflicting mark has already been issued a certificate of registration in the meantime, the revived or reinstated application must be refused based on the ground of likelihood of confusion, even though the revived or reinstated application had an earlier filing date.