1106.04 Preparing Concurrent Use Notices
There is no complaint in a concurrent use proceeding. Cf. TBMP § 1003. Instead, after the concurrent use application is published, the Board electronically tracks it until it clears its opposition period, the Board identifies all other applications and registrations, if any, to be included in the proceeding, and then the Board prepares notices for each concurrent use applicant and for each party.
The notice sent to each involved concurrent use applicant advises the applicant of the institution of the proceeding and gives the applicant ten days from the date of the order to serve a copy of its application, specimens of use, and drawing of the mark on each user identified in its application. [ Note 1.] If any service copy is returned to the concurrent use applicant as undeliverable, the concurrent use applicant must notify the Board within ten days of receipt of the returned copy. [ Note 2.] The concurrent use applicant must also file with the Board proof that it has effected proper service of the copies, but should not file a copy of the served documents themselves with the Board. [ Note 3.]
A separate order is issued to the excepted users [ Note 4.], defending applicants or defending registrants, advising each party that the concurrent use proceeding is thereby instituted and supplying information concerning the filing of an "answer" to the notice and specifying a due date therefor. For information concerning the "answer" in a concurrent use proceeding, see TBMP § 1107. The institution order will set out the parties’ conference, disclosures, discovery, trial and briefing periods, unless there is more than one named excepted user, and none of them owns a trademark application or registration. See TBMP § 1109. In that case, the trial schedule is issued after all answers are filed; if any defending common law user fails to file an answer, judgment will be entered against that user as a defaulting user. See TBMP § 1107. The order will also allow the parties until a specified time to advise the Board of any relevant, but as yet uninvolved, application(s) and/or registration(s), which should be included in the proceeding.
The notice to each party listed as an exception to a concurrent use applicant’s claim of exclusive use also specifies the name and address of the concurrent use applicant and the concurrent use applicant’s attorney or other authorized representative, if any, together with the concurrent use applicant’s mark, goods and/or services, application filing date and serial number, and claimed territory [ Note 5.]; the name and address of any other involved applicant or registrant; the name and address of any other involved applicant’s attorney or other authorized representative, if any; the mark, goods and/or services, application filing date, application serial number, and claimed territory of any other involved application (if the application is unrestricted, the claimed territory will be described in the notice as "The entire United States"); the mark, goods and/or services, registration filing and issue date, registration number, and claimed territory of any other involved registration; and the name and address of any other involved party which is simply a common law concurrent user, i.e., does not own an involved application or registration of its mark.
The notices are sent to each involved applicant, in care of the applicant’s attorney or other authorized representative, if any; to any involved user; and to any involved registrant. If an applicant is not represented by an attorney but the applicant has appointed a domestic representative, the Board will send the notice to the domestic representative unless the applicant has designated in writing another correspondence address. [ Note 6.] In the case of an involved registration, the notice is sent to the registrant itself, or to the registrant’s domestic representative if one is appointed, even if there is an attorney or other authorized representative of record in the application file after the mark has registered. [ Note 7.]
If a party has provided the Office with an e-mail address, the notification may be transmitted via e-mail. [ Note 8.] In any proceeding, an undelivered notice from the Board of the commencement of a proceeding may result in notice by publication in the Official Gazette, available for viewing at the USPTO’s website (http://www.uspto.gov ). [ Note 9.]
The Board no longer forwards a copy of each concurrent use applicant’s involved application(s) with the notice to each party specified in the concurrent use application as an exception to applicant’s claim of exclusive use. [ Note 10.] The rules also dispense with the requirement that the concurrent use applicant provide the Board with copies of its concurrent use application, for service by the Board, on each excepted party. [ Note 11.]
The concurrent use proceeding commences when the Board sends the notices to the parties, and sets the schedule for conferencing, disclosures, discovery, trial and briefing for those cases commenced on or after November 1, 2007. [ Note 12.] Where a concurrent use proceeding has been commenced solely to order a registrant, named as an excepted user in the proceeding, to show cause why its registration should not be restricted to comply with a decision in a prior Board proceeding or with a court decree, the Board does not include a trial schedule when it sends the notices to the parties.
NOTES:
1. See 37 CFR § 2.99(d)(1) and 37 CFR § 2.119(a).
2. See 37 CFR § 2.99(d)(1).
3. See 37 CFR § 2.119.
4. Excepted users are those parties identified by the applicant as users who are exceptions to applicant’s claim of exclusive right to use the mark under Trademark Act § 2(d), 15 U.S.C. § 1052(d).
5. See 37 CFR § 2.99(c).
6. Cf. 37 CFR § 2.105(c) and 37 CFR § 2.119(d).
7. Cf. 37 CFR § 2.113(c).
8. See 37 CFR § 2.99(c); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42243 (August 1, 2007). The parties may also, by prior agreement, meet their service obligations by utilizing electronic means such as fax or e-mail. 37 CFR § 2.119(b).
9. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42244 (August 1, 2007).
10. See 37 CFR § 2.99(d)(1).
11. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42243 (August 1, 2007).
12. Cf. 37 CFR § 2.93.