The Prior Registration Puzzle: Overcoming Registration Refusals Based on Intervening Third-Party Marks


Many trademark attorneys practicing for an appreciable length of time have encountered the following scenario:

  1. Your client owns a registration for a mark (the “Anchor Registration”);
  2. Your client refrained from opposing registration of a similar third-party mark (the “Intervening Mark”) because it saw a low likelihood of confusion;
  3. Your client’s subsequently filed applications in the Trademark Office for the mark depicted in the Anchor Registration (or a virtually identical mark) were refused registration based on the Intervening Mark; and
  4. Attempts to obtain consent from, or coexist with, the Intervening Mark owner were unsuccessful for some reason.

It’s a frustrating situation, to be sure, but fortunately you’re not without options.  One of those options is arguing to the Trademark Office that your client’s Anchor Registration should entitle it to registration of its subsequently filed applications.  This idea originated with the Morehouse defense, also known as the prior registration defense, which “is an equitable doctrine that applies where an applicant owns a prior registration for essentially the same mark identifying essentially the same goods (or services) that are the subject mark and goods of the proposed application.” Morehouse Mfg. Corp. v. J. Strickland & Co., 160 USPQ 715 (CCPA 1969).  In that situation “ʻthe opposer cannot be further injured because there already exists an injurious registration,’ and therefore the additional registration does not add to the injury.”

The problem with the Morehouse defense is that it is just that – a defense, assertable only in inter partes proceedings, and not in ex parte proceedings between an applicant and the Trademark Office.  So a similar yet different approach is needed.  Enter In re Strategic Partners, 102 USPQ2d 1397 (TTAB 2012), in which the Board found no confusion between an application for the mark ANYWEAR and an intervening registration for ANYWEAR BY JOSIE NATORI, based on the applicant’s ownership of an anchor registration for ANYWEARS, the plural version of the applied-for mark.  The Board considered this “unusual situation” to fall under the thirteenth DuPont factor in its confusion analysis, which relates to “[a]ny other established fact probative of the effect of use.”

But would-be citers to In re Strategic Partners may have also found it of limited utility.  Many Examining Attorneys had taken the position that central to the Board’s holding in In re Strategic Partners was the fact that the parties’ marks had coexisted on the Register for over 5 years – a fact that rendered the anchor registrations invulnerable to cancellation on confusion grounds and is not available for many other applicants attempting to apply the decision to their situation.

Fortunately, the Board made a more definite statement regarding the prior registration argument in In re 1872 LLC, Serial No. 88897035 (Sept. 23, 2021), holding that the argument should be viewed more flexibly, and that in this specific case, only 18 months of coexistence between similar marks was enough to outweigh the remaining DuPont factors and support a reversal of the registration refusal.

While there will undoubtedly be cases to come further glossing this issue, the current status of the “Anchor Registrant” described in the scenario above seems favorable.

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About the Author: Tore T. DeBella

Tore T. DeBella is a partner in the firm's Intellectual Property Practice Group. Tore’s practice focuses on trademark clearance, portfolio management and enforcement, as well as information technology and data privacy/security strategy and compliance. Tore’s unique blended practice offers significant value to his clients, as he is able to counsel on both the “brand value” and “data” implications of various cutting-edge technological issues like social media, website policies and terms, keyword advertising and domain names.

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