New Procedure for Co-Pending U.S. Trademark Applications

On March 17, 2006, the U.S. Patent and Trademark Office announced that it is modifying the First Action System for Trademarks (FAST), to identify and assign co-pending applications electronically. The changes will create a rolling system whereby the same examining attorney will "usually handle all applications filed by the same applicant during a certain window of time." The new system will be implemented in April 2006.

The term “co-pending applications” refers to pending applications filed by the same applicant. If an applicant has multiple pending applications, the issues in the applications may be similar. For example, common issues may arise because the applications have the same or similar identifications of goods, the same or similar marks, or the same or similar specimens of use. Unless an error in the handling of a particular application exists, the Office’s goal is to treat applications filed by the same applicant that present similar issues consistently.

However, if an applicant files a large number of co-pending applications, it may not be practicable for the Office to assign all of the applications to a single examining attorney.
The new system for assigning co-pending applications attempts to balance the sometimes-conflicting goals of ensuring consistency and processing applications in a timely manner.

The following is a summary of the new procedures:

• Ownership search: When assigning a new application to an examining attorney, FAST will determine whether the applicant has any other unassigned pending applications filed during a specified period of time, generally about three months from the application filing date.
• Ten (10) or fewer co-pending applications: If the applicant has ten (10) or fewer unassigned co-pending applications, FAST will assign all of the co-pending applications to the same examining attorney.
• More than ten (10) co-pending applications: If the applicant has more than ten (10) unassigned co-pending applications, the first ten (10) unassigned applications will be assigned to same examining attorney.
• Examination procedure: Because FAST will only assign co-pending applications filed within a certain time period and will only assign a certain number of co-pending applications to a single examining attorney, there will still be times when an applicant has co-pending applications that are assigned to different examining attorneys. In those situations, the examining attorney will be required to follow the procedures for handling co-pending applications set forth in TMEP §702.03 et seq. If the applicant owns unassigned application(s) for the same or similar mark, the examining attorney is encouraged to assign those applications to himself or herself. TMEP §702.03(a)(i).
• Docket management: If an applicant has a large number of co-pending applications, FAST may assign the examining attorney up to nine (9) more applications than the examining attorney requested. If the examining attorney believes he or she will be unable to examine all of the assigned applications within seven (7) days, the examining attorney should request an extension of time from his or her managing or senior attorney.

The policy regarding conflicting applications, namely, two or more pending applications that are filed by different applicants and may ultimately require a refusal of registration under §2(d) of the Trademark Act, has not changed. See TMEP §702.03(b).