1107 Answer; Default
There is no complaint in a concurrent use proceeding. Cf. TBMP § 1003. Instead, there is a notice which informs the parties of the institution of the proceeding, supplies information concerning the filing and due date of an "answer" to the notice, and sets conferencing, disclosure, discovery, trial, and briefing dates for those cases commenced on or after November 1, 2007. [ Note 1.] 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. The notice takes the place of a complaint to the extent that it informs every specified person of the scope of the concurrent registration sought by each concurrent use applicant, and the extent of each concurrent use applicant’s acknowledgment of the concurrent rights of others - i.e., the essence of what each concurrent use applicant intends to prove at trial. See TBMP § 1103.01(c)-(f) and TBMP § 1106.
The Board does not send a copy of each involved concurrent use application with the notice to every person specified in the application. Instead, within ten days from the date of the Board’s notification, the applicant for concurrent use registration must serve copies of its application, specimens and drawing on each excepted user identified as a concurrent user in the application for registration, and file with the Board proof of proper service of the copies. Copies of the served documents themselves should not be filed with the Board. The contents of the application file may also be viewed at the USPTO website (http://www.uspto.gov). The concurrent use applicant must notify the Board within ten days of the date of receipt of a returned service copy, or of the date on which applicant learns that service has been ineffective. [ Note 2.] See TBMP § 1103.01(f) and TBMP § 1106.04.
The "answer" in a concurrent use proceeding is a response to the notice. In the "answer," the answering party sets forth its position with respect to the registration(s) sought by the concurrent use applicant(s). [ Note 3.]
An answer to the notice is not required of an applicant or registrant whose application or registration is involved in the proceeding, but such a party may file an answer if it so desires. See TBMP § 1104. Any other party specified as a concurrent user, e.g., a common law user, or a specified party who owns an application for an unrelated mark, which is not involved in the proceeding, and thus stands in the position of a common law user, must file an answer to avoid default. Any answer must be filed within the time set in the Board’s notice, usually 40 days, or within an extension of time for that purpose. See TBMP § 501 and TBMP § 509. [ Note 4.]
If a party that is required, under 37 CFR § 2.99(d)(2), to file an answer fails to do so, judgment will be entered against that party precluding the party from claiming any right more extensive than that acknowledged by applicant in the involved concurrent use application(s). However, each concurrent use applicant still will have the burden of proving its entitlement to the registration(s) sought as against every party specified in its application(s), including any party against which default judgment for failure to answer has been entered. See TBMP § 1108. That is, the concurrent use applicant still will have to prove that there will be no likelihood of confusion by reason of the concurrent use by the parties of their respective marks, and, where necessary, that the parties have become entitled to use their marks as a result of their concurrent lawful use in commerce prior to the applicable date specified in Trademark Act § 2(d), 15 U.S.C. § 1051 (d) ) [usually, this means use in commerce prior to the earliest application filing date of the application(s), or 1946 Act registration(s) (if any), involved in the proceeding (or prior to July 5, 1947, in the case of an involved registration under the Acts of 1881 or 1905)]. [ Note 5.] See TBMP § 1103.01(b). Moreover, if, after the entry of default judgment against a party for failure to answer, the concurrent use applicant seeks to amend its application to narrow the extent of the concurrent rights conceded therein to the defaulting party, the defaulting party will be allowed an opportunity to object thereto. If the amendment is permitted, the defaulting party will be allowed to contest the registration sought by the applicant, to the extent that the applicant claims a greater right, as against the defaulting party, than that previously claimed.
When default judgment for failure to file an answer is entered against a party to a concurrent use proceeding, the Board does not continue to send copies of all of the communications issued by the Board in the proceeding to that party, nor do the other parties to the proceeding need to continue serving copies of all papers which they file in the proceeding on the defaulting party. However, a copy of the Board’s final decision in the case will be mailed to the defaulting party. Moreover, any request by the concurrent use applicant to amend its application to narrow the extent of the concurrent rights conceded therein to the defaulting party must be served upon that party. If the amendment is permitted, the Board will send a copy of its action on the request, and copies of all further communications issued by the Board in the proceeding, to the defaulting party, provided the Board has a serviceable address. Similarly, after approval of such an amendment, copies of all further papers filed by the other parties to the proceeding should be served on the defaulting party.
If a concurrent use proceeding involves only the concurrent use applicant and one or more specified common law excepted users which do not have an involved application or registration, and default judgment for failure to answer is entered against every specified user, applicant may prove its entitlement to registration as against the defaulting users by an "ex parte" type of showing. See TBMP § 1108 for information on how to prove entitlement by making an "ex parte" showing.
NOTES:
1. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42243 (August 1, 2007).
2. See 37 CFR § 2.99(d)(1) and 37 CFR § 2.119.
3. See, e.g., Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224, 1225-26 (TTAB 1993); Fleming Companies v. Thriftway Inc., 21 USPQ2d 1451, 1453 (TTAB 1991), aff’d, 809 F. Supp. 38, 26 USPQ2d 1551 (S.D. Ohio 1992); Georgia-Southern Oil Inc. v. Richardson, 16 USPQ2d 1723 (TTAB 1990); Newsday, Inc. v. Paddock Publications, Inc., 223 USPQ 1305, 1307 (TTAB 1984); Ole’ Taco Inc. v. Tacos Ole, Inc., 221 USPQ 912, 916 (TTAB 1984).
4. See 37 CFR § 2.99(d)(2); Newsday, Inc. v. Paddock Publications, Inc., 223 USPQ 1305, 1307 (TTAB 1984) (concurrent use applicant may amend its application to one seeking an unrestricted registration upon showing that concurrent user has discontinued use of its mark, and not merely abandoned its application for registration).
5. See 37 CFR § 2.99(d)(3). See also Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224, 1229 (TTAB 1993); Precision Tune Inc. v. Precision Auto-Tune Inc., 4 USPQ2d 1095, 1096 (TTAB 1987); Newsday, Inc. v. Paddock Publications, Inc., 223 USPQ 1305, 1307 (TTAB 1984).