1103.01(d)(1)    In General

15 U.S.C. § 1051(a)(3)(D) … 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.

37 CFR § 2.42 Concurrent use. An application for registration as a lawful concurrent user shall specify and contain all the elements required by the preceding sections. The applicant in addition shall state in the application the area, the goods, 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 on or in connection with which such use is made; the mode of such use; and the periods of such use.

The applicant must state in the application the geographic area, goods and/or services, and (if applicable) mode of use for which applicant seeks registration of the mark. [ Note 1.] The application must provide, to the extent of applicant’s knowledge, the concurrent lawful use of the mark by others, setting forth their names and addresses; their areas of use; the goods and/or services on or in connection with which their use is made; the mode of their use; the periods of their use; and the registrations issued to, or applications filed by them, if any. For information concerning statements by the concurrent use applicant regarding use of the mark by others, see TBMP § 1103.01(e).

The statement in the application of the area, goods and/or services, and (if applicable) mode of use for which applicant seeks registration serves to give notice, both when the mark is published for opposition (assuming it is approved for publication) and when a concurrent use proceeding is thereafter instituted (if no opposition is filed, or if all oppositions filed are dismissed or withdrawn), of the scope of the registration sought by applicant. The statement setting forth the concurrent lawful use of the mark by others serves to give notice of the extent of applicant’s acknowledgment of the concurrent rights of others. [ Note 2.]

NOTES:

 1.   See 37 CFR § 2.42. See also Trademark Act § 1(a), 15 U.S.C. § 1051(a)(3)(D).

 2.   See 37 CFR § 2.99(d)(1)  and 37 CFR § 2.99(d)(3); In re Wells Fargo & Co., 231 USPQ 95, 105-06 (TTAB 1986); In re El Chico Corp., 159 USPQ 740, 741 (TTAB 1968). See also Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224, 1230 (TTAB 1993) (at late stage in contested concurrent use proceeding, Board will generally not permit concurrent use applicant to enlarge territory for which it seeks registration).