1102.02 Bases for Concurrent Registration – Board Determination; Court Determination
There are two bases upon which a concurrent registration may be issued.
First, a concurrent registration may be issued when the Board determines, in a concurrent use proceeding, that an applicant is entitled to a concurrent registration. Such determination may have been made in a prior concurrent use proceeding or will be made in the to-be-instituted concurrent use proceeding. See TBMP § 1101.01 and TBMP § 1103.01.
Second, a concurrent use registration may be issued "when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce." [ Note 1.]
These two types of concurrent use registrations are the only means by which a geographically restricted registration may be obtained. See TBMP § 1101.02. Thus, for example, an applicant may not, by including a geographical restriction in its identification of goods and/or services, obtain a geographically restricted registration without a concurrent use proceeding. [ Note 2.]
If an application seeking concurrent registration on the basis of the Board’s decision in a prior concurrent use proceeding meets certain requirements, in addition to those necessary for all concurrent use applications [ Note 3.], the registration sought, if otherwise appropriate, will be issued based on the Board’s prior decision. See TBMP § 1103. A new concurrent use proceeding before the Board will not be necessary, because of the legal principles of res judicata and stare decisis. [ Note 4.] For information concerning the requirements for an application seeking a concurrent registration on the basis of the Board’s decision in a prior concurrent use proceeding, see TBMP § 1103.02.
Similarly, if an application seeking concurrent registration on the basis of a prior court determination of concurrent rights meets certain requirements, in addition to those necessary for all concurrent use applications, the registration sought, if otherwise appropriate, will be issued based on the court determination, without any concurrent use proceeding before the Board. [ Note 5.] For information concerning the requirements for an application seeking a concurrent registration on the basis of a prior court determination of concurrent rights, see TBMP § 1103.03.
NOTES:
1. See Trademark Act § 2(d), 15 U.S.C. § 1052(d). See also 37 CFR § 2.99(f); Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630, 635 (CCPA 1976) (district court found applicant entitled to restricted registration); Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 293 F.2d 685, 130 USPQ 412, 419-20 (CCPA 1961) (court ordered restricted registration); In re Alfred Dunhill Ltd., 4 USPQ2d 1383 (Comm’r 1987); In re Forbo, 4 USPQ2d 1415, 1415 (Comm’r 1984).
2. See In re Home Federal Savings & Loan Association, 213 USPQ 68, 69 (TTAB 1982).
3. See 37 CFR § 2.42.
4. Cf. 37 CFR § 2.99(f).
5. See 37 CFR § 2.99(f).