                 CHAPTER 1000  INTERFERENCES


1001  In General

1002  Declaration of Interference

1003  Institution of Interference

1004  Issues in Interference

1005  Burden of Proof

1006  Addition of Party

1007  Conduct of Proceeding



1001  In General

15 U.S.C.1066.  Upon petition showing extraordinary
circumstances, the Commissioner may declare that an
interference exists when application is made for the
registration of a mark which so resembles a mark previously
registered by another, or for the registration of which
another has previously made application, as to be likely
when used on or in connection with the goods or services of
the applicant to cause confusion or mistake or to deceive.
No interference shall be declared between an application and
the registration of a mark the right to use of which has
become incontestable.

37 CFR 2.83 Conflicting marks.
(a) Whenever an application is made for registration of a
mark which so resembles another mark or marks pending
registration as to be likely to cause confusion or mistake
or to deceive, the mark with the earliest effective filing
date will be published in the Official Gazette for
opposition if eligible for the Principal Register, or issued
a certificate of registration if eligible for the
Supplemental Register.

(b) In situations in which conflicting applications have the
same effective filing date, the application with the
earliest date of execution will be published in the Official
Gazette for opposition or issued on the Supplemental
Register.

(c) Action on the conflicting application which is not
published in the Official Gazette for opposition or not
issued on the Supplemental Register will be suspended by the
Examiner of Trademarks until the published or issued
application is registered or abandoned.

37 CFR 2.91 Declaration of interference.
(a) An interference will not be declared between two
applications or between an application and a registration
except upon petition to the Commissioner.  Interferences
will be declared by the Commissioner only upon a showing of
extraordinary circumstances which would result in a party
being unduly prejudiced without an interference.  In
ordinary circumstances, the availability of an opposition or
cancellation proceeding to the party will be deemed to
remove any undue prejudice.

(b) Registrations and applications to register on the
Supplemental Register, registrations under the Act of 1920,
and registrations of marks the right to use of which has
become incontestable are not subject to interference.

An interference is a proceeding in which the Board
determines which, if any, of the owners of conflicting
applications (or of one or more applications and one or more
registrations which are in conflict) is entitled to
registration.  See Sections 16 and 18 of the Act, 15 U.S.C.
1066 and 1068.  A "conflict" exists, for interference
purposes, whenever "application is made for the registration
of a mark which so resembles a mark previously registered by
another, or for the registration of which another has
previously made application, as to be likely when used on or
in connection with the goods or services of the applicant to
cause confusion or mistake or to deceive."  See Section 16
of the Act, 15 U.S.C. 1066.  See also Section 2(d) of the
Act, 15 U.S.C. 1052(d); 37 CFR 2.83; and TMEP 1208.01(a).

Ordinarily, when conflicting applications are pending, the
application with the earliest effective filing date is
approved for publication in the Official Gazette for
opposition (if the mark is eligible for registration on the
Principal Register), or is registered on the Supplemental
Register (if the mark is eligible for registration on the
Supplemental Register).  Action on any later-filed
conflicting application is suspended until the earlier-filed
application is registered or abandoned.  See 37 CFR 2.83,
and TMEP 1208.01.

If the owner of an application which conflicts with one or
more pending applications wishes to have the PTO set up an
interference proceeding between the conflicting
applications, rather than have the PTO follow the procedure
described in 37 CFR 2.83, that applicant must file a
petition to the Commissioner to declare an interference.
See Section 16 of the Act, 15 U.S.C. 1066; 37 CFR 2.91(a);
and TBMP 1002.

NOTE:  Although the Commissioner is authorized by Section 16
of the Act to declare an interference between an application
and a registration (except for registrations issued on the
Supplemental Register, registrations issued under the Act of
1920, and registrations of marks the right to use of which
has become incontestable), it is not the Commissioner's
practice to do so.  See TBMP 1002, and authorities cited
therein.



1002  Declaration of Interference

15 U.S.C.1066.  Upon petition showing extraordinary
circumstances, the Commissioner may declare that an
interference exists when application is made for the
registration of a mark which so resembles a mark previously
registered by another, or for the registration of which
another has previously made application, as to be likely
when used on or in connection with the goods or services of
the applicant to cause confusion or mistake or to deceive.
No interference shall be declared between an application and
the registration of a mark the right to use of which has
become incontestable.

37 CFR 2.91 Declaration of interference.
(a) An interference will not be declared between two
applications or between an application and a registration
except upon petition to the Commissioner.  Interferences
will be declared by the Commissioner only upon a showing of
extraordinary circumstances which would result in a party
being unduly prejudiced without an interference.  In
ordinary circumstances, the availability of an opposition or
cancellation proceeding to the party will be deemed to
remove any undue prejudice.

(b) Registrations and applications to register on the
Supplemental Register, registrations under the Act of 1920,
and registrations of marks the right to use of which has
become incontestable are not subject to interference.

Under Section 16 of the Act of 1946, 15 U.S.C. 1066, the
Commissioner, upon petition showing extraordinary
circumstances, may declare that an interference exists when
an application conflicts with a registration issued to
another, or with an application previously filed by another,
that is, "when application is made for the registration of a
mark which so resembles a mark previously registered by
another, or for the registration of which another has
previously made application, as to be likely when used on or
in connection with the goods or services of the applicant to
cause confusion or mistake or to deceive.".

A petition for declaration of an interference will be
granted by the Commissioner only if the petition shows
"extraordinary circumstances which would result in a party
being unduly prejudiced without an interference."  See 37
CFR 2.91(a).  See also In re Ratny, 24 USPQ2d 1713 (Comm'r
1992); In re Kimbell Foods, Inc., 184 USPQ 172 (Comm'r
1974); and In re Family Inns of America, Inc., 180 USPQ 332
(Comm'r 1974).  Ordinarily, the availability of an
opposition or cancellation proceeding is deemed to prevent
any undue prejudice from the unavailability of an
interference proceeding.  See 37 CFR 2.91(a).  See also In
re Kimbell Foods, Inc., supra.  However, a petition to the
Commissioner to declare an interference has been granted
where, but for the interference, multiple oppositions would
be necessary.  See In re Family Inns of America, Inc.,
supra.  See also TMEP 1208.04 and 1208.04(b).

Although the Commissioner is authorized by Section 16 of the
Act to declare an interference between an application and a
registration (except for registrations issued on the
Supplemental Register, registrations issued under the Act of
1920, and registrations of marks the right to use of which
has become incontestable--see Sections 16, 26, and 46(b) of
the Act, and 37 CFR 2.91(b)), it is not the Commissioner's
practice to do so.  See In re Kimbell Foods, Inc., 184 USPQ
172 (Comm'r 1974), and Ex parte H. Wittur & Co., 153 USPQ
362 (Comm'r 1966).  This is because a registration will not
be cancelled as a result of a decision in an interference
proceeding.  A formal petition for cancellation must still
be filed and granted, and the registration must be
cancelled, before any registration will be issued to the
applicant.  See 37 CFR 2.96; In re Kimbell Foods, Inc.,
supra; Ex parte H. Wittur & Co., supra; Hy-Pure
Laboratories, Inc. v. Foley & Co., 98 USPQ 280 (Chief
Examiner 1953); and Cudahy Packing Co. v. York Pharmacal
Co., 93 USPQ 227 (Comm'r 1952).  The interference proceeding
is superfluous, since the cancellation proceeding by itself
will accomplish the same purpose as the two proceedings
together.

A petition to the Commissioner to declare an interference
should be made by separate paper bearing the title "PETITION
TO THE COMMISSIONER," and be accompanied by the fee
specified in 37 CFR 2.6(k).  For further information
concerning the form for a petition to the Commissioner, see
37 CFR 2.146(c), and TBMP 905.

A petition to declare an interference should not be filed in
an application until the application has been examined by
the Trademark Examining Attorney, and the mark has been
found registrable but for the existence of one or more
pending conflicting applications.  When such a petition is
filed, the Examining Attorney will immediately forward the
petition, together with the application file, to the
Assistant Commissioner for Trademarks for determination of
the petition.  See TMEP 1208.04(a).



1003  Institution of Interference

37 CFR 2.92 Preliminary to interference.
An interference which has been declared by the Commissioner
will not be instituted by the Trademark Trial and Appeal
Board until the Examiner of Trademarks has determined that
the marks which are to form the subject matter of the
controversy are registrable, and all of the marks have been
published in the Official Gazette for opposition.

37 CFR 2.93 Institution of interference.
An interference is instituted by the mailing of a notice of
interference to the parties.  The notice shall be sent to
each applicant, in care of the applicant's attorney or other
representative of record, if any, and if one of the parties
is a registrant, the notice shall be sent to the registrant
or the registrant's assignee of record.  The notice shall
give the name and address of every adverse party and of the
adverse party's attorney or other authorized representative,
if any, together with the serial number and date of filing
and publication of each of the applications, or the
registration number and date of issuance of each of the
registrations, involved.

An interference proceeding does not commence with the
granting of a petition to the Commissioner to declare an
interference.  Rather, the interference proceeding will not
be instituted unless and until the Trademark Examining
Attorney has determined that the marks which are to be
included in the interference are registrable, but for the
interfering marks; and all of the marks have been published
(preferably together) in the Official Gazette for
opposition, subject to the interference.  See 37 CFR 2.92,
and TMEP 1208.04(c).

If an application published subject to interference is
opposed by an entity which is not to be a party to the
interference, the opposition may be determined first,
following which the interference, if still necessary and
appropriate, will be instituted (cf. 37 CFR 2.99(c));
alternatively, depending upon the circumstances, the
opposition and interference may go forward
contemporaneously.  If an opposition is filed by an entity
which is to be a party to the interference, and the
interference is to involve three or more parties, the
opposition will be dismissed without prejudice in favor of
the interference proceeding, wherein the rights of all
parties can be determined in a single proceeding.  If an
opposition is filed by an entity which is to be a party to
the interference, and the interference is to involve only
two parties, the rights of the parties will be determined in
the opposition, and the interference will not be instituted.

If the marks which are to be included in an interference (1)
are found by the Trademark Examining Attorney to be
registrable, (2) are published for opposition, and (3)
survive the opposition period (as indicated in the preceding
paragraph), the interference proceeding will be instituted
by the Board.

The Board prepares a "notice of interference" notifying the
parties that the interference proceeding is thereby
instituted, and setting trial and briefing dates in the
case.  The notice specifies the name and address of each
party to the proceeding and of each party's attorney or
other authorized representative, if any; the mark of each
party; and the serial number, filing date, and publication
date of each involved application.  See 37 CFR 2.93.

An interference proceeding commences when the Board mails
the notice of interference to the parties.  The notice is
mailed to the attorney or other authorized representative of
each involved applicant, or, if the applicant does not have
an attorney or other authorized respresentative, to the
applicant.  See 37 CFR 2.93.

It is not the Commissioner's practice to declare an
interference with a registration.  See TBMP 1002, and cases
cited therein.  However, should the Commissioner elect to
declare an interference with one or more registrations, the
notice of interference would specify the registration number
and issuance date of each involved registration, and would
be mailed to the registrant or its assignee of record.  See
37 CFR 2.93.

There are no pleadings in an interference proceeding.  Cf.
TBMP 1004, 1105, and 1106.  The notice of interference
takes the place of pleadings, to the extent that it serves
to provide each party with information concerning the
involved application (or registration, if an interference
should be declared with one or more registrations) of every
adverse party.

There is no fee for an interference proceeding, beyond the
fee required for a petition to the Commissioner to declare
an interference.  See 37 CFR 2.6.  Cf. TBMP 1002.



1004  Issues in Interference

37 CFR 2.96 Issue; burden of proof.
The issue in an interference between applications is
normally priority of use, but the rights of the parties to
registration may also be determined.  ...  The issue in an
interference between an application and a registration shall
be the same, but in the event the final decision is adverse
to the registrant, a registration to the applicant will not
be authorized so long as the interfering registration
remains on the register.

Normally, the issue to be determined in an interference
proceeding is priority of use.  However, such additional
issues as the registrability of each mark, and whether there
is, in fact, a conflict between the marks involved in the
proceeding (i.e., whether the marks do so resemble one
another as to be likely, when used in connection with the
respective goods and/or services of the parties, to cause
confusion, mistake, or deception), are always before the
Board in an interference, and may also be determined; there
is no requirement that a party file an affirmative pleading
of such matters in order to be heard thereon.  See, for
example, Sections 17 and 18 of the Act, 15 U.S.C. 1067 and
1068; 37 CFR 2.96; Giant Food Inc. v. Malone & Hyde, Inc.,
522 F.2d 1386, 187 USPQ 374, 380 (CCPA 1975); Dynamet
Technology, Inc. v. Dynamet Inc., 197 USPQ 702 (TTAB 1977),
aff'd, 593 F.2d 1007, 201 USPQ 129 (CCPA 1979); Jos. Schlitz
Brewing Co. v. United Vintners, Inc., 166 USPQ 493, 494
(TTAB 1970); Clairol Inc. v. Holland Hall Products, Inc.,
165 USPQ 214, 217-218 (TTAB 1970); Tudor Square Sportswear,
Inc. v. Pop-Op Corp., 160 USPQ 50, 53-54 (TTAB 1968); La
Jolla Sportswear Co. v. Maskuline Underwear Co., 114 USPQ
130, 131 (Comm'r 1957); Saul Lefkowitz and Janet E. Rice,
Adversary Proceedings Before the Trademark Trial and Appeal
Board, 75 Trademark Rep. 323, 325 (1985); and Notice of
Final Rulemaking published in the Federal Register on May
23, 1983 at 48 FR 23122, and in the Official Gazette of June
21, 1983 at 1031 TMOG 13 (deleting former 37 CFR 2.97,
which contained a requirement for an affirmative pleading of
registrability issues).



1005  Burden of Proof

37 CFR 2.96 Issue; burden of proof.
...  The party whose application involved in the
interference has the latest filing date is the junior party
and has the burden of proof.  When there are more than two
parties to an interference, a party shall be a junior party
to and shall have the burden of proof as against every other
party whose application involved in the interference has an
earlier filing date.  If the involved applications of any
parties have the same filing date, the application with the
latest date of execution will be deemed to have the latest
filing date and that applicant will be the junior party.
...

37 CFR 2.116(b) ...  A party that is a junior party in an
interference proceeding or in a concurrent use registration
proceeding shall be in the position of plaintiff against
every party that is senior, and the party that is a senior
party in an interference proceeding or in a concurrent use
registration proceeding shall be a defendant against every
party that is junior.

In an interference proceeding, the party whose involved
application has the latest filing date is the junior party.
When there are three or more parties to an interference, a
party is a junior party to every other party whose involved
application has an earlier filing date.  If the involved
applications of any parties have the same filing date, the
application with the latest date of execution is deemed to
have the latest filing date, and that applicant is the
junior party.  See 37 CFR 2.96.

A junior party in an interference proceeding is in the
position of plaintiff, and has the burden of proof, as
against every party that is senior, that is, as against
every party whose involved application has an earlier filing
date.  Conversely, a senior party is in the position of
defendant as against every party that is junior, that is, as
against every party whose involved application has a later
filing date.  See 37 CFR 2.96 and 2.116(b).  See also Jim
Dandy Co. v. Martha White Foods, Inc., 458 F.2d 1397, 173
USPQ 673 (CCPA 1972); and McNeil v. Mini Mansions, Inc., 178
USPQ 312 (TTAB 1973).



1006  Addition of Party

37 CFR 2.98 Adding party to interference.
A party may be added to an interference only upon petition
to the Commissioner by that party.  If an application which
is or might be the subject of a petition for addition to an
interference is not added, the examiner may suspend action
on the application pending termination of the interference
proceeding.

A party may be added to an interference only upon petition
to the Commissioner filed, pursuant to 37 CFR 2.98, by the
party to be added.

For information concerning joining or substituting a
transferee when there has been an assignment of a mark which
is involved in an interference proceeding, see TBMP 512.01.



1007  Conduct of Proceeding

Once commenced (see TBMP 1002 and 1003), an interference
proceeding is conducted in the same general manner as an
opposition or cancellation proceeding, except that there are
no pleadings (see TBMP 1003 and 1004), and therefore no
motions relating to pleadings; the issues of priority of
use, likelihood of confusion, and registrability are always
before the Board (see TBMP 1004); a party's burden of proof
as against another party to the proceeding depends upon the
filing date of its involved application (see TBMP 1005);
and additional parties may be added to the proceeding upon
petition to the Commissioner filed by the party to be added
(see TBMP 1006).

In addition, the trial and briefing schedule in an
interference involving three or more parties differs,
because of the multiplicity of parties, from that in an
opposition or cancellation.  In the notice of interference
which commences an interference proceeding, the Board sets
trial and briefing dates in the case.  See TBMP 1003.
Specifically, the Board sets a closing date for discovery
(which opens when the notice of interference is served by
the Board upon the parties), and schedules testimony periods
so that each party in the position of plaintiff (see TBMP
1005) will have a period for presenting its case in chief
against each party in the position of defendant, each party
in the position of defendant will have a period for
presenting its case and meeting the case of each plaintiff,
and each party in the position of plaintiff will have a
period for presenting evidence in rebuttal; the testimony
periods are separated from the discovery period and from
each other by 30-day intervals.  See TBMP 701.  Similarly,
the Board schedules briefing periods so that each party,
beginning with the junior-most party and ending with the
senior-most party, will have a time for filing its main
brief on the case, and each junior party will have a time
for filing a reply brief.  See TBMP 801.02(e).

Set forth below is a sample trial and briefing schedule for
an interference involving parties A, B, C, D, and E, where A
is junior to every other party; B is junior to C, D, and E,
and senior to A; C is junior to D and E, and senior to A and
B; D is junior to E, and senior to A, B, and C; and E is
senior to every other party:

     THE PERIOD FOR DISCOVERY TO CLOSE     :  July 2, 1984

     Testimony period for A to close       :  August 31, 1984
     (opening 30 days prior thereto)

     Testimony period for B to close       :  October 30, 1984
     (opening 30 days prior thereto)

     Testimony period for C to close       : December 31, 1984
     (opening 30 days prior thereto)

     Testimony period for D to close       :  March 1, 1985
     (opening 30 days prior thereto)

     Testimony period for E to close       :  April 30, 1985
     (opening 30 days prior thereto)

     Rebuttal testimony period for
     A to close                            :  June 14, 1985
     (opening 15 days prior thereto)

     Rebuttal testimony period for
     B to close                            :  July 29, 1985
     (opening 15 days prior thereto)

     Rebuttal testimony period for
     C to close                            :  September 12, 1985
     (opening 15 days prior thereto)

     Rebuttal testimony period for
     D to close                            :  October 28, 1985
     (opening 15 days prior thereto)

     Briefs on final hearing (37 CFR 2.128) shall become due
as follows:

     Brief for A shall be due              :  December 27, 1985

     Brief for B shall be due              :  January 26, 1986

     Brief for C shall be due              :  February 25, 1986

     Brief for D shall be due              :  March 27, 1986

     Brief for E shall be due              :  April 26, 1986

     Reply briefs, if any, shall be due as follows:

     Reply brief for A shall be due        :  May 11, 1986

     Reply brief for B shall be due        :  May 26, 1986

     Reply brief for C shall be due        :  June 10, 1986

     Reply brief for D shall be due        :  June 25, 1986

With the exceptions noted above, the practices and
procedures for taking discovery, filing motions, introducing
evidence, briefing the case, presenting oral arguments at
final hearing, and seeking review of a decision of the
Board, are essentially the same in an interference as in an
opposition or cancellation.

