1106.02    Publication of Concurrent Use Application; Opposition Period

Once the trademark examining attorney has approved the mark for publication, and marked the application, it is then published, with the indicated statement, in the Official Gazette for opposition. The status of the application is changed to "Concurrent Use Proceeding Pending" on the date of publication and is reported to the Board. The application is then added to the Board’s electronic system and tracked until after the opposition period has passed.

If the application seeking concurrent registration based on a court decree meets the requirements of 37 CFR § 2.99(f), and is not opposed, or all oppositions filed are dismissed or withdrawn, the application goes to issue without the institution of a concurrent use proceeding. [ Note 1.] See TBMP § 1103.03. Similarly, if the application seeking concurrent registration on the basis of a prior Board concurrent use determination meets the conditions described in TBMP § 1103.02, and is not opposed, or all oppositions filed are dismissed or withdrawn, the application goes to issue without the institution of a new concurrent use proceeding. [ Note 2.] See TBMP § 1103.02 and TBMP § 1103.03.

Concurrent use proceedings will be instituted (1) if the application seeks concurrent registration by way of a concurrent use proceeding before the Board, and is not opposed, or all oppositions filed are dismissed or withdrawn [ Note 3.]; (2) if the application seeks concurrent registration on the basis of a court decree but does not meet the requirements of 37 CFR § 2.99(f); or (3) seeks concurrent registration on the basis of the Board’s decision in a prior concurrent use proceeding but does not meet the conditions described in TBMP § 1103.02, and the application is not opposed, or all oppositions filed are dismissed or withdrawn [ Note 4.] See TBMP § 1103.02 and TBMP § 1103.03.

After the opposition period has expired, and no opposition is filed, or all oppositions filed are dismissed or withdrawn the Board then institutes the proceeding, identifies the defending users and sends notice thereof to each party. See TBMP § 1106.03 and TBMP § 1106.04. There is no fee for the institution of a concurrent use proceeding.

NOTES:

 1.   37 CFR § 2.99(f).

 2.   Cf. 37 CFR § 2.99(f).

 3.   See 37 CFR § 2.99(c).

 4.   See 37 CFR § 2.99(c)  and 37 CFR § 2.99(f).