1102.01    Means of Generation

A concurrent use proceeding before the Board may be generated only by filing an application with the Office under Trademark Act § 1(a), 15 U.S.C. § 1051(a), for registration as a lawful concurrent user (hereafter referred to as a "concurrent use application"). [ Note 1.] The Board determines and decides the applicant’s right to a concurrent use registration under Trademark Act § 17, 15 U.S.C. § 1067. A concurrent use application is an application in which applicant concedes that its use of the mark is not exclusive and provides the USPTO with all the information applicant has regarding others who are using the same or similar mark. [ Note 2.] Specifically, Trademark Act § 1(a)(3)(D), 15 U.S.C. § 1051(a)(3)(D)  provides:

… in the case of every application claiming concurrent use, the applicant shall—

  • (i) state exceptions to the claim of exclusive use; and
  • (ii) shall specify, to the extent of the verifier’s knowledge—
    • (I) any concurrent use by others;
    • (II) the goods on or in connection with which and the areas in which each concurrent use exists;
    • (III) the periods of each use; and
    • (IV) the goods and area for which the applicant desires registration.

In addition to the above statutory requirements, the applicant shall state in the application the area, the goods or services, and the mode of use for which applicant seeks registration; and also shall state, to the extent of the applicant’s knowledge, the concurrent lawful use of the mark by others, setting forth their names and addresses; registrations issued to or applications filed by such others, if any; the areas of such use; the goods or services on or in connection with which such use is made; the mode of such use; and the periods of such use. [ Note 3.]

For further information concerning the requirements for a concurrent use application, see TBMP § 1103.

NOTES:

 1.   See Chichi’s, Inc. v. Chi-Chi’s, Inc., 222 USPQ 831, 832 (Comm’r 1984) (Commissioner has no power to order the commencement of a concurrent use proceeding absent a concurrent use application; respondent in cancellation proceeding may agree to entry of judgment against it or voluntarily surrender its registration for cancellation and then apply for a registration as a lawful concurrent user, and may also request that the district court determine the respective concurrent rights of the parties). Cf. J&D Home Improvement Inc. v. Basement Doctor Inc., 65 USPQ2d 1958 (D. Del. 2003) (federal district courts lack original jurisdiction over matters regarding concurrent use of trademark). See also Inland Oil & Transport Co. v. IOT Corp., 197 USPQ 562, 563 (TTAB 1977); Hollowform, Inc. v. Delma Aeh, 180 USPQ 284, 286 (TTAB 1973), aff’d, 515 F.2d 1174, 185 USPQ 790 (CCPA 1975).

 2.   See Trademark Act § 1(a)(1)(A), Trademark Act § 1(a)(3)(D)(i), and Trademark Act § 1(a)(3)(D)(ii)(I-IV), 15 U.S.C. § 1051 (a) (1)(A), 15 U.S.C. § 1051(a)(3)(D)(i)  and 15 U.S.C. § 1051 (a) (3) (D) (ii)(I-IV). See also Trademark Act § 2(d), 15 U.S.C. § 1052(d); 37 CFR § 2.42; TMEP § 1207.04.

 3.   See 37 CFR § 2.42.