1114    Alteration of Restrictions on Concurrent Registration

A concurrent registration may be issued only pursuant to the decision of the Board in a concurrent use proceeding, or on the basis of a final determination, by a court of competent jurisdiction, that more than one person is entitled to use the same or similar marks in commerce. See TBMP § 1102.02. 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 1.]

A concurrent registrant that wishes to alter the restriction to its registration may only do so, if at all, through an appropriate decision in a new concurrent use proceeding before the Board, or by order of a court of competent jurisdiction. A Trademark Act § 7(e) amendment cannot be used to alter a concurrent use restriction. [ Note 2.]

However, removal of such a restriction by amendment under Trademark Act § 7(e) may be permitted where an entity that 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 3.] Requests to record changes to a Trademark Act § 66(a), 15 U.S.C. § 1141f(a)  registration must be filed with the International Bureau. The amendment is not made under Trademark Act § 7. [ Note 4.] See TBMP § 514.01, for further information regarding amendments to Trademark Act § 66(a) registrations.

In addition, if every concurrent user specified in a concurrent registration abandons its use of its involved mark, and owns no subsisting registration thereof, the owner of the remaining concurrent registration may file a new application for an unrestricted registration of the mark. [ Note 5.] See TBMP § 1104.

NOTES:

 1.   See Morgan Services Inc. v. Morgan Linen Services Inc., 12 USPQ2d 1841, 1843 (TTAB 1989); In re Alfred Dunhill Ltd., 4 USPQ2d 1383, 1384 (Comm’r 1987); In re Forbo, 4 USPQ2d 1415, 1415 (Comm’r 1984).

 2.   See Morgan Services Inc. v. Morgan Linen Services Inc., 12 USPQ2d 1841, 1843 (TTAB 1989) (amendments to registrations cannot be made under 37 CFR § 2.173); In re Alfred Dunhill Ltd., 4 USPQ2d 1383, 1384 (Comm’r 1987) (so-called assignment of concurrent rights does not provide basis for deleting restriction listed in concurrent users’ registration); In re Forbo, 4 USPQ2d 1415, 1416 (Comm’r 1984) (registrant may not request territorial restriction by way of petition to Commissioner).

 3.   See In re Alfred Dunhill Ltd., 4 USPQ2d 1383, 1384 (Comm’r 1987) (assignment of rights resulted in removal of limitation on concurrent user’s exclusive right to use).

 4.   See 37 CFR § 7.22.

 5.   Cf. Fleming Companies Inc. v. Thriftway Inc., 21 USPQ2d 1451, 1453 (TTAB 1991) (although abandonment of application without written consent of every adverse party precludes common law user from claiming any right to federal registration, inasmuch as user reserved right to continue using mark, it will not be dropped as party to concurrent use proceeding), aff’d, 809 F. Supp. 38, 26 USPQ2d 1551 (S.D. Ohio 1992); Newsday, Inc. v. Paddock Publications, Inc., 223 USPQ 1305, 1307-08 (TTAB 1984) (applicant not entitled to concurrent use registration where user abandoned application for mark but not its right to continue using mark).