1101 In General
15 U.S.C. § 1052 No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it -
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- (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to
- (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter;
- (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or
- (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director 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. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
15 U.S.C. § 1067(a) In every case of interference, opposition to registration, application to register as a lawful concurrent user, or application to cancel the registration of a mark, the Director shall give notice to all parties and shall direct the Trademark Trial and Appeal Board to determine and decide the respective rights of registration.…
15 U.S.C. § 1068 In such proceedings the Director may refuse to register the opposed mark, may cancel the registration, in whole or in part, may modify the application or registration by limiting the goods or services specified therein, may otherwise restrict or rectify with respect to the register the registration of a registered mark, may refuse to register any or all of several interfering marks, or may register the mark or marks for the person or persons entitled thereto, as the rights of the parties under this chapter may be established in the proceedings: Provided, That in the case of the registration of any mark based on concurrent use, the Director shall determine and fix the conditions and limitations provided for in subsection (d) of section 1052 of this title.…
1101.01 Nature of Proceeding
A concurrent use registration proceeding (hereafter referred to as a "concurrent use proceeding") is an inter partes proceeding in which the Board determines whether one or more applicants is entitled to a concurrent registration, that is, a restricted registration, with conditions and limitations fixed by the Board, as to the mode or place of use of the applicant’s mark or the goods and/or services on or in connection with which the mark is used. [ Note 1.] Restrictions are generally to claimed geographic areas of use.
Trademark Act § 2(d), 15 U.S.C. § 1052(d), governs the Board’s determination of registrability in a concurrent use proceeding. That section provides, in part, that if the Director (acting through the Board):
... determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to …
a certain specified date (normally, 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 2.] See TBMP § 1103.01(b).
The proviso of Trademark Act § 2(d), 15 U.S.C. § 1052(d), sets out two requirements for issuance of a concurrent use registration in a proceeding before the Board. [ Note 3.] A concurrent use applicant needs to meet the jurisdictional requirement of use in commerce prior to the applicable date specified in Trademark Act § 2(d). For information concerning the dates specified in Trademark Act § 2(d) and a discussion of the jurisdictional requirement, see TBMP § 1103.01(b). A concurrent use applicant also must show that use of the mark for which it seeks a concurrent registration will not result in a likelihood of confusion. [ Note 4.] There is no provision in the Lanham Act to allow for concurrent use registrations in the dilution context. [ Note 5.]
For concurrent use proceedings commenced on or after November 1, 2007, the Board has adopted a modified disclosure and conferencing regime. [ Note 6.] For further information regarding disclosures and discovery conferences, see TBMP § 401.
NOTES:
1. See, e.g., Trademark Act § 2(d), Trademark Act § 17, and Trademark Act § 18, 15 U.S.C. § 1052(d), 15 U.S.C. § 1067, and 15 U.S.C. § 1068; 37 CFR § 2.133(c); Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 204 USPQ 820, 831 (CCPA 1980) (the conditions and limitations imposed by Trademark Act § 2(d) are for the purpose of preventing consumer confusion); Nobelle.com LLC v. Qwest Communications International Inc., 66 USPQ2d 1300, 1307 (TTAB 2003) ("A concurrent use registration, by its very nature, contemplates that the registered mark can and does function to identify more than one source … because each source’s use of the mark is subject to conditions and limitations which eliminate likelihood of confusion . . ."); Terrific Promotions Inc. v. Vantex Inc., 36 USPQ2d 1349, 1353 (TTAB 1995); Pinocchio’s Pizza Inc. v. Sandra Inc., 11 USPQ2d 1227, 1229 (TTAB 1989); Women’s World Shops Inc. v. Lane Bryant Inc., 5 USPQ2d 1985, 1988 (TTAB 1988); Ole’ Taco Inc. v. Tacos Ole, Inc., 221 USPQ 912, 916 (TTAB 1984).
2. See Trademark Act § 17, 15 U.S.C. § 1067.
3. See In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 436 (CCPA 1970); Over the Rainbow, Ltd. v. Over the Rainbow, Inc., 227 USPQ 879, 882 (TTAB 1985).
4. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1478 (TTAB 2014); America’s Best Franchising Inc. v. Abbott, 106 USPQ2d 1540, 1547-48 (TTAB 2013); Georgia-Southern Oil Inc. v. Richardson, 16 USPQ2d 1723, 1725 (TTAB 1990); Over the Rainbow, Ltd. v. Over the Rainbow, Inc., 227 USPQ 879, 882 n.4 (TTAB 1985). Cf. Nobelle.com LLC v. Qwest Communications International Inc., 66 USPQ2d 1300, 1307 (TTAB 2003) (petitioner asserting that concurrent use registration should be deemed abandoned because it is used by multiple parties "must do more than merely show that the registered mark is being used concurrently by the concurrent use registrants in accordance with the conditions and limitations set forth in their concurrent use registrations.").
5. Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car Inc., 330 F.3d 1333, 66 USPQ2d 1811, 1819 (Fed. Cir. 2003).
6. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42244-47 (August 1, 2007).
1101.02 Context for USPTO Determination of Concurrent Rights
37 CFR § 2.99(h) The Trademark Trial and Appeal Board will consider and determine concurrent use rights only in the context of a concurrent use registration proceeding.
37 CFR § 2.133(c) Geographic limitations will be considered and determined by the Trademark Trial and Appeal Board only in the context of a concurrent use registration proceeding.
Within the U.S. Patent and Trademark Office ("USPTO"), the Board determines the right to a concurrent registration. [ Note 1.] Concurrent registration rights are considered and determined by the Board only in the context of a concurrent use proceeding. [ Note 2.]
A registration cannot be restricted territorially by amendment under Trademark Act § 7(e), 15 U.S.C. § 1057(e), and 37 CFR § 2.173(a). [ Note 3.] Thus, a cancellation proceeding may not be settled by amending the involved registration to include territorial restrictions. [ Note 4.] However, the registrant may agree to entry of judgment against it in the cancellation proceeding or voluntarily surrender its registration for cancellation and thereafter apply for a registration as a lawful concurrent user. [ Note 5.] See also TBMP § 1114. The cancellation proceeding may be suspended to allow registrant time to file a concurrent use application, and terminated when registrant’s concurrent use application has been published for opposition purposes and no opposition is filed, or all oppositions filed are dismissed or withdrawn. See TBMP § 1113.02.
Moreover, a Trademark Act § 7(e) amendment may generally not be used to remove a concurrent use restriction from a registration. However, removal of a concurrent use restriction by amendment under Trademark Act § 7(e) may be permitted where an entity which was the only exception to registrant’s right to exclusive use of its registered mark assigns its rights in its mark to registrant, so that all rights in the mark are merged in registrant. [ Note 6.]
NOTES:
1. See Trademark Act § 2(d), Trademark Act § 17, and Trademark Act § 18, 15 U.S.C. § 1052(d), 15 U.S.C. § 1067 and 15 U.S.C. § 1068.
2. See Trademark Act § 2(d), Trademark Act § 17, and Trademark Act § 18, 15 U.S.C. § 1052(d), 15 U.S.C. § 1067, and 15 U.S.C. § 1068. See also 37 CFR § 2.99(h) and 37 CFR § 2.133(c) ); Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car Inc., 330 F.3d 1333, 66 USPQ2d 1811, 1815 (Fed. Cir. 2003); Stock Pot Restaurant, Inc. v. Stockpot, Inc., 737 F.2d 1576, 222 USPQ 665, 669 (Fed. Cir. 1984) (attempt to interject concurrent use proceeding into cancellation unavailing), aff’g, 220 USPQ 52 (TTAB 1983); Mother’s Restaurant Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566, 221 USPQ 394, 400 (Fed. Cir. 1983) (concurrent use not available in cancellation by way of counterclaim); Rosso & Mastracco, Inc. v. Giant Food Inc., 720 F.2d 1263, 219 USPQ 1050, 1053 (Fed. Cir. 1983); Selfway, Inc. v. Travelers Petroleum, Inc., 579 F.2d 75, 198 USPQ 271, 277 (CCPA 1978) (concurrent rights can only be adjudicated in concurrent use proceeding); Holmes Oil Co. v Myers Cruizers of Mena Inc., 101 USPQ2d 1148, 1149 (TTAB 2011) (in concurrent use proceedings, the Board determines entitlement to a registration, generally with a geographic restriction); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1106 n.3 (TTAB 2007) (no consideration given in cancellation proceeding to proposed counterclaim to partially cancel petitioner’s pleaded registrations by further limiting the geographic scope thereof).
3. See In re Forbo, 4 USPQ2d 1415, 1415 (Comm’r 1984).
4. See, e.g., Chichi’s, Inc. v. Chi-Chi’s, Inc., 222 USPQ 831, 832 (Comm’r 1984) (a decision in the cancellation proceeding adverse to respondent would not preclude respondent from filing a new application seeking concurrent registration with petitioner). See also Boi Na Braza, LLC v. Terra Sul Corp., 110 USPQ2d 1386, 1388 (TTAB 2014) (after its registration was cancelled, respondent filed a new application seeking a concurrent use registration with petitioner).
5. See Chichi’s, Inc. v. Chi-Chi’s, Inc., 222 USPQ 831, 832 (Comm’r 1984).
6. See In re Alfred Dunhill Ltd., 4 USPQ2d 1383, 1384 (Comm’r 1987) (geographic restriction removed by amendment when excepted rights assigned to registrant).