Chapter 200
Application Filing Date

201.01 Effective Filing Date Controls for Purposes of Determining Priority for Publication or Issue

The filing date of an application ( see TMEP §201 ) is also the effective filing date, except where:  (1) the applicant is entitled to priority under 15 U.S.C. §1126(d) or §1141g ( see TMEP §206.02 ); (2) the applicant amends an intent-to-use application filed under 15 U.S.C. §1051(b) to the Supplemental Register ( see TMEP §206.01 ); or (3) the application was filed before November 16, 1989, the applicant had not used the mark in commerce for one year before the application filing date, and the applicant amends to the Supplemental Register on or after November 16, 1989 ( see TMEP §206.03 ).  The effective filing date is controlling for purposes of determining priority for publication or issue ( see TMEP §1208.01 ) and constructive use priority ( see TMEP §201.02 ).

201.02 Constructive Use Priority

Under 15 U.S.C. §§1057(c) and 1141f(b) , filing any application for registration on the Principal Register, including an intent-to-use application, constitutes constructive use of the mark, provided the application matures into a registration. See Cent. Garden & Pet Co. v. Doskocil Mfg. Co. , 108 USPQ2d 1134 (TTAB 2013) .  Upon registration, filing affords the applicant nationwide priority over others, except:  (1) parties who used the mark before the applicant’s filing date; (2) parties who filed in the USPTO before the applicant; or (3) parties who are entitled to an earlier priority filing date based on the filing of a foreign application under 15 U.S.C. §1126(d)   or §1141g ( see TMEP §206.02 ).   See Zirco Corp. v. Am. Tel. and Tel. Co. , 21 USPQ2d 1542 (TTAB 1991) ; Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc. , 525 F.3d 8, 86 USPQ2d 1527 (D.C. Cir. 2008).

202.01 Clear Drawing of the Mark

In a §66(a) application, the drawing must meet the requirements of the Madrid Protocol and the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement , which are available on the IB’s website at http://www.wipo.int/madrid/en/ .  The IB will determine whether the drawing meets these requirements before sending the application to the USPTO.  See TMEP §§1904 et seq. for further information about §66(a) applications.

Under 37 C.F.R. §2.21(a)(3) , a §1 or §44 applicant must submit "a clear drawing of the mark" to receive a filing date, except in applications for registration of sound, scent, and other non-visual marks.  A separate drawing page (or digital image of a separate drawing page in an application filed through the Trademark Electronic Application System ("TEAS")) is not mandatory, but is encouraged.  See TMEP §807.09 regarding "drawings" in applications for registration of non-visual marks.

A "drawing" is simply a depiction of the mark for which registration is sought.   37 C.F.R. §2.52 .  A drawing that includes multiple elements that do not comprise an identifiable mark, or that consists of wording describing the mark, does not constitute a clear drawing of the mark.

An application that includes two or more drawings displaying materially different marks does not meet the requirement for a "clear drawing of the mark."  Therefore, an application is denied a filing date if it includes two or more drawings displaying materially different marks.   See Humanoids Group v. Rogan, 375 F.3d 301, 71 USPQ2d 1745 (4th Cir. 2004).

However, if an applicant (1) submits a separate drawing page showing a mark in a paper application, (2) enters a standard character mark in the "Mark Information" field of an application filed through TEAS, or (3) attaches a .jpg file containing a mark to the "Mark Information" field of a TEAS application, and a different mark appears elsewhere in the application, the drawing page or mark shown in the "Mark Information" field on TEAS will control for purposes of determining the nature and elements of the mark.  The USPTO will grant a filing date to the application, and disregard any other mark that appears elsewhere in the application.  The applicant will not be permitted to amend the mark if the amendment is a material alteration of the mark on the drawing page in a paper application or the "Mark Information" field in a TEAS application.   In re L.G. Lavorazioni Grafite S.r.l. , 61 USPQ2d 1063 (Dir USPTO 2001).  See 37 C.F.R. §2.72 and TMEP §§807.14 et seq. regarding material alteration of a mark.

A specimen showing the mark does not satisfy the requirement for a drawing.  If the only depiction of the mark is on a specimen ( e.g., an advertisement, a photograph of the goods, or the overall packaging), then there is no drawing, and the application will be denied a filing date.

See TMEP §§807 et seq. for additional information about the examination of drawings.

See also TMEP §204.03 regarding the examining attorney’s handling of applications that are erroneously granted a filing date.

202.02 Listing of Recognizable Goods or Services

The USPTO will deny a filing date to an application under §1 or §44 of the Trademark Act if the application does not identify recognizable goods or services.  See TMEP §1402.02 for further information.

202.03 Filing Fee for At Least One Class of Goods or Services

In an application under §1 or §44 of the Trademark Act, the applicant must pay the filing fee for at least one class of goods or services before an application can be given a filing date.   37 C.F.R. §2.21(a)(5) .  The fee can be paid by credit card, check, money order, electronic funds transfer (EFT), or by an authorization to charge a deposit account.   37 C.F.R. §2.207 .  See TMEP §§405 et seq. for additional information about fees.

The amount of the trademark application filing fee varies depending on whether the application is filed through TEAS or on paper.  An applicant has four choices.  The applicant can file:

• A paper application at the highest fee per class, set forth in 37 C.F.R. §2.6(a)(1)(i) ;
• A regular TEAS application at the lower fee per class set forth in 37 C.F.R. §2.6(a)(1)(ii) ;
• A TEAS RF application ( see TMEP §820 ) at the lower fee per class set forth in 37 C.F.R. §2.6(a)(1)(iii) ; or
• A TEAS Plus application ( see TMEP §§819 et seq.) at the lowest fee per class, set forth in 37 C.F.R. §2.6(a)(1)(iv) .

See TMEP §§819 et seq. regarding TEAS Plus.   See also notices at 70 Fed. Reg. 2952 (Jan. 19, 2005) and 70 Fed. Reg. 38768 (July 6, 2005) .  The current fee schedule is available on the USPTO website at http://www.uspto.gov .

The complete fee for at least a single class must be submitted with the application as filed.  Partial or piecemeal fee payments are unacceptable and will be returned.

If an application does not include a filing fee for at least a single class, the USPTO will deny a filing date.   In re Buckhead Marketing & Distribution , Inc., 71 USPQ2d 1620 (Dir USPTO 2004); In re Paulsen, 35 USPQ2d 1638 (Comm’r Pats. 1995).  If a filing date has been granted when the USPTO discovers that the applicant has not paid the filing fee for at least a single class, the filing date will be cancelled.   See TMEP §204.01 .

See TMEP §§202.03(a) and 405.06 regarding payments that are refused or charged back by financial institutions, and TMEP §405.03 regarding deposit accounts.

The filing fee for a §66(a) application will be sent to the USPTO by the IB, pursuant to Article 8 of the Madrid Protocol.  Generally, the examining attorney should not require additional fees during examination, except where the application is divided due to a change in ownership with respect to some but not all of the goods/services.  See TMEP §810 for further information about application filing fees, and TMEP §§ 1904 et seq. for further information about §66(a) applications.

204.01 Filing Date Cancelled if Minimum Filing Requirements not Met

Applications under §1 or §44 of the Trademark Act are initially assigned a filing date and serial number and then reviewed for compliance with the minimum requirements for receipt of a filing date set forth in 37 C.F.R. §2.21(a) .  If the minimum filing requirements have not been met, the USPTO cancels the filing date and serial number, refunds any filing fee submitted, and sends a notice to the applicant explaining why the application is defective.

See TMEP §204.02 regarding the procedures for requesting review of the denial of a filing date by the Office of the Deputy Commissioner for Trademark Examination Policy.

204.02 Resubmission of Applications  

The USPTO prefers that all applications be filed through TEAS.  However, if the USPTO denies a filing date in a paper application, the applicant may resubmit the original papers or a copy of the original papers, together with the item(s) necessary to correct the defect(s), and a new filing fee.  The applicant should cross off the cancelled serial number.   A filing fee for at least a single class of goods or services must be included when the applicant resubmits an application, even if the applicant has not yet received a refund of the fee previously submitted.

The new filing date will be the date on which a complete application, including all elements required by 37 C.F.R. §2.21(a) ,is received in the USPTO.  Note that applications claiming priority under §44(d) of the Trademark Act must meet all filing date requirements within six months of the filing date of the foreign application.   37 C.F.R. §2.34(a)(4)(i) ; TMEP §§806.01(c) and 1003.02 .

If an applicant believes that the USPTO committed an error in denying the application a filing date, the applicant may submit a request to restore the filing date.   See TMEP §1711 .  The USPTO prefers that the applicant file a new application, including the required application filing fee, using TEAS, located at http://www.uspto.gov .  After the applicant receives a new serial number, the applicant should submit a request to restore the original filing date.  To ensure proper routing and processing, the Office prefers that the request also be filed electronically.  In TEAS, the Request to Restore Filing Date form can be accessed by clicking on the link entitled "Petition Forms."  Alternatively, the request should be faxed to the Office of the Deputy Commissioner for Trademark Examination Policy at 571-273-8950.

The request should:  (1) include the new serial number; (2) state the reason(s) why the applicant believes the filing date was denied in error; and (3) include a copy of any Notice of Incomplete Trademark Application received from the USPTO.  Although applicants have two (2) months from the issuance date of a Notice of Incomplete Trademark Application to file a request to restore the original filing date ( 37 C.F.R. §2.146(d) ), it is recommended that the applicant file the request immediately upon receipt of the new serial number, to expedite processing.

204.03 Examining Attorney’s Handling of Applications That Are Erroneously Accorded a Filing Date

In rare situations, an application under §1 or §44 that does not meet the minimum requirements of 37 C.F.R. §2.21 for receipt of a filing date may be erroneously referred to an examining attorney for examination.  If the examining attorney discovers the error before issuing an action in the case, then the examining attorney should have the application declared informal.  The USPTO will cancel the filing date and serial number, refund any filing fee submitted, and send a notice to the applicant explaining why the application is defective.   See TMEP §204.01 .

However, if the examining attorney discovers that the application as filed did not meet the minimum requirements for receipt of a filing date after issuing an action, the examining attorney must issue a supplemental Office action refusing registration on the ground that the application was not eligible to receive a filing date.  Any outstanding refusals and requirements must be maintained and incorporated into the supplemental Office action.  The applicant must be given six months to comply with all filing-date requirements.  If the applicant fails to perfect the filing-date requirements within the response period, the application is void.  If a filing fee was submitted with the original application, the examining attorney must have the filing fee refunded and update the USPTO’s automated records to indicate that the application is abandoned.

If the applicant complies with the filing-date requirements within six months of the issuance of the examining attorney’s Office action, the application will receive a new filing date as of the date on which the applicant satisfied all minimum filing-date requirements.  In such a case, the examining attorney must conduct a new search of Office records for conflicting marks, and issue another Office action if necessary.

If the supplemental Office action was issued because the check submitted as payment of an application filing fee was returned to the USPTO unpaid, or an EFT or credit-card payment was refused or charged back by a financial institution, the examining attorney must treat a response that addresses any outstanding refusals and requirements, but does not include the required fee, as an incomplete response, and must issue a notice of incomplete response granting the applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to perfect the response. To issue a notice of incomplete response, the examining attorney must use the "Examiner’s Non-Responsive Amendment." The notice must not include a six-month response clause. If the applicant does not respond, or responds but does not submit the required fee, the application must be abandoned for incomplete response.

206.01 Amendment of §1(b) Application from Principal Register to Supplemental Register upon Filing of Allegation of Use

An applicant relying on a bona fide intention to use the mark in commerce under 15 U.S.C. §1051(b)   is not eligible for registration on the Supplemental Register until the applicant has submitted an acceptable amendment to allege use under 15 U.S.C. §1051(c) or statement of use under 15 U.S.C. §1051(d) .   37 C.F.R. §§2.47(d) and 2.75(b) .

If an application is based solely on §1(b), and the applicant files an acceptable amendment to allege use or statement of use andan acceptable amendment to the Supplemental Register, the USPTO will consider the filing date of the amendment to allege use or statement of use to be the effective filing date of the application.   37 C.F.R. §2.75(b) .  The examining attorney must conduct a new search of USPTO records for conflicting marks.   See TMEP §206.04 regarding examining attorney's action after conducting a new search.

Amendment of an application from the Supplemental to the Principal Register does not change the effective filing date of an application.   Kraft Group LLC v. Harpole, 90 USPQ2d 1837 (TTAB 2009) (filing date did not change when applicant who originally sought registration on the Supplemental Register without alleging use in commerce amended to seek registration on the Principal Register under §1(b)).

See TMEP §§816.02 and 1102.03 for additional information about examination of intent-to-use applications on the Supplemental Register.

206.02 Application Claiming Priority under §44(d) or §67

When an applicant is entitled to priority based on a foreign application, the effective filing date is the date on which the foreign application was first filed in the foreign country.   15 U.S.C. §§1126(d)(1)   and 1141g ; 37 C.F.R. §§2.34(a)(4)(i) and 7.27(c) ; TMEP §§1003.02 and 1904.01(e) .

In an application under §44(d) of the Trademark Act, the priority claim for the United States application must be filed within six months after the filing date of the foreign application. The applicant may submit a priority claim after the filing date of the United States application if:  (1) the applicant submits the priority claim within the six-month priority period ( 37 C.F.R. §2.35(b)(5) ); and (2) the applicant was entitled to priority on the filing date of the United States application.  

In an application under §66(a) of the Act, the priority claim must be submitted with the international application or subsequent designation filed with the IB within six months after the filing date of the foreign application. The priority claim will be part of the request for extension of protection sent to the USPTO by the IB. In some situations, however, the USPTO may receive a priority claim or a corrected priority claim after receipt of the §66(a) application via a notice of correction from the IB.

If the priority date is included in the original §44(d) or §66(a) application, the examining attorney must determine, while conducting a search of USPTO records for conflicting marks, whether there are any applications for conflicting marks that would be deemed later filed. The examining attorney must also notify the examining attorney assigned to any later-filed application so that the application may be suspended pending disposition of the §44(d) or §66(a) application with the earlier effective filing date.

If the priority claim in a §44(d) or §66(a) application is submitted after the examining attorney has conducted a search of USPTO records for conflicting marks, the examining attorney must conduct a new search to determine whether, in view of the new earlier effective filing date, there are any applications for conflicting marks that would now be deemed later filed. The examining attorney must also notify the examining attorney assigned to any now later-filed application so that the application may be suspended pending disposition of the application with the earlier effective filing date.

See TMEP §1003.05 regarding the procedures when an application filed after a §44(d) application’s priority date proceeds to publication or registration because the §44(d) application was not yet filed with the USPTO when the examining attorney searched for conflicting marks. See TMEP §1904.01(e) regarding the procedures when an application filed after a §66(a) application’s priority date proceeds to publication or registration because the request for extension of protection for the §66(a) application was not yet of record with the USPTO when the examining attorney searched for conflicting marks.

206.03 Applications Filed Before November 16, 1989, That Are Amended to the Supplemental Register on or After November 16, 1989

In an application filed before November 16, 1989, the date of the amendment to the Supplemental Register becomes the effective filing date of the application if:  (1) the applicant had not used the mark in commerce for one year before the application filing date; and (2) the applicant amends to the Supplemental Register on or after November 16, 1989.   See TMEP §816.02 .

206.04 Examining Attorney’s Action After Conducting New Search When the Effective Filing Date Changes to a Later Date

When the effective filing date changes to a later date, the examining attorney must conduct a new search of USPTO records for conflicting marks.  If the search shows that because of the new, later effective filing date, there is a later-filed conflicting application that now has an earlier filing date, the examining attorney must suspend action of the subject application pending disposition of the other application, if the application is otherwise in condition for suspension.  In addition, the examining attorney must notify the examining attorney assigned to the other application of the change in the effective filing date of the subject application, so that the other examining attorney may withdraw the application from suspension and either approve it for publication or take action on any other outstanding issues.

See TMEP §§206.02 regarding the procedures when the effective filing date changes to an earlier date and TMEP §§1208–1208.02(f) regarding conflicting marks in pending applications.