Why would you file a second application for the same trademark on the same goods and services?

There may be times when you run out of options on a trademark application. In an Intent-To-Use application, for example, you may have filed a Statement of Use that cannot be retracted. So if your original specimens have been rejected, you are now stuck with trying to come up with substitute specimens that were in use in the relevant time period. Perhaps, an insurance extension might still be available in your ITU application. If the need to refile a trademark application arises, let’s discuss the potential consequences of the second application and how to best proceed.

Another possible scenario is that you have already filed the maximum number of extension requests in an ITU application, and you still have not used the mark on the identified goods or services.

Can a second trademark application for the same mark on the same goods be rejected?

If you file a second application for the exact same mark on exactly the same goods and services, your second application will be rejected if the USPTO has already taken action on the first application. If no action has been taken in either application, then both applications will be refused.

Pursuant to TMEP 703, the USPTO will not issue duplicate registrations.

What if the second application for the same mark has some overlapping goods or services?

If the second application identifies some goods or services that overlap with a first application, but also contains some different goods or services, the second filing would not result in a duplicate registration. Accordingly, the second application with the overlapping goods or services would not be refused on the basis of seeking a duplicate registration.

So a practical way to avoid a refusal in the second application is to include some different goods or services that are not identified in your first application.

What would not be a trademark application for a duplicate registration?

If you refile a trademark application with certain differences, the new filing might not violate the rule against duplicate registrations. For example, the following differences would allow for the filing of a trademark application for a similar mark that you previously registered:

  • color differences
  • different shades of color
  • word mark (standard character mark) vs. design mark (special form drawing)
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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com

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