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.”