Before we begin talking about Prior Pending Application Advisories, remember that one of the most common refusals is a Section 2(d) Refusal – Likelihood of Confusion.
A Section 2(d) Refusal - Likelihood of Confusion means that the USPTO believes that another registered trademark for related goods or services is confusingly similar to your trademark. Note that this refusal is based on a REGISTERED trademark.
But what happens if somebody applied earlier than you, and their trademark might be confusingly similar to your trademark, but their application hasn’t yet registered?
In other words, suppose you submitted the trademark JUBILEE for t-shirts on June 1, 2021. But a month earlier, another applicant submitted the trademark JUBILEE for t-shirts on May 1, 2021. That applicant filed their trademark before you, and it is clearly confusingly similar to your trademark, but it hasn’t yet registered into a trademark.
What that means is that the USPTO has identified a pending application that might be confusingly similar to your trademark. However, it is only when that application actually registers that the USPTO will decide whether to issue a Section 2(d) Refusal based on that trademark.
A Prior Pending Application Advisory does not automatically mean that this prior pending application will eventually become a Section 2(d) Refusal!
Applications are refused for MANY reasons, so it is possible that the prior application might become abandoned.
Or, the pending application might register, and the USPTO might determine then that a Section 2(d) Refusal shouldn’t be issued because the trademarks are not confusingly similar.
Or, the pending application could register, and the USPTO might determine that the now-registered trademark is confusingly similar to yours, and it will then issue a Section 2(d) Refusal.
So, what do you do when you receive a Prior Pending Advisory?
If you received a Prior Pending Advisory in your Office Action, you can choose whether or not to specifically respond to this Advisory in your response.
Similar to a Section 2(d) Refusal, you could submit a response as to why you believe your trademark is not confusingly similar to the pending application. You can review the Section 2(d) Refusal – Likelihood of Confusion video in the Trademarks Classroom for more information on submitting responses for confusingly similar trademarks
Or, you can simply choose not to address this prior pending application advisory when you submit your response to the Office Action.
Why?
Because if and when that application DOES register, and it becomes an actual refusal, the USPTO will issue another Non-final Office Action. At that point, the prior pending application will become a Section 2(d) Refusal, and you’d have the opportunity to provide a Response then.
However, you must provide a response that addresses the other Refusals or Requirements listed in the Office Action - even if you choose not to address the Prior Pending Advisory in your response.
So, to recap, a Prior Pending Advisory is simply the USPTO stating that it has determined that there is a trademark that was filed before yours – but has not yet registered – that MIGHT be confusingly similar to yours.
When you respond to your current Non-final Office Action, you can provide arguments as to why you believe the prior pending application is not confusingly similar to yours.
Or, when you respond to the other issues in your Office Action, you can choose not to respond to this Advisory.
Then, if that pending application becomes registered at a later date, and the USPTO argues that it is confusingly similar to yours, you will receive ANOTHER Non-final office action with that Section 2(d) Refusal. At that point, you’d have the opportunity to respond to that Non-Final Office Action with why you don’t believe the trademarks are confusingly similar.
