1112 Effect of Adverse Decision in Opposition or Cancellation
A party which receives an adverse decision, in an opposition, cancellation, or interference proceeding, on the issue of priority of use is not precluded thereby from seeking a concurrent use registration, unless its first use in commerce was subsequent to the earliest application filing date of any conflicting application or registration owned by another party to the opposition, cancellation, or interference proceeding, and that other party does not consent to the grant of a concurrent registration to the applicant. The concurrent use registration must be sought by filing a new application seeking concurrent use with the prevailing party before the Board. [ Note 1.] See TBMP § 1103.01(b).
NOTES:
1. See Trademark Act § 2(d), 15 U.S.C. § 1052(d); Rosso and Mastracco, Inc. v. Giant Food Inc., 720 F.2d 1263, 219 USPQ 1050, 1053 (Fed. Cir. 1983) (counterclaim to cancel registration denied). Cf. U.S. Soil, Inc. v. Colovic, 214 USPQ 471, 472 (TTAB 1982) (opposition cannot proceed where it has been established through prior litigation that applicant has superior rights, and where opposer only alleges that it has rights in certain geographic areas); Home Federal Savings & Loan Association v. Home Federal Savings & Loan Association of Chicago, 205 USPQ 467, 469 (TTAB 1979) (following entry of judgment against applicant for unrestricted registration, applicant may seek registration on a concurrent use basis with all others entitled to use the same term in different geographical areas); Cook’s Pest Control, Inc. v. Sanitas Pest Control Corp., 197 USPQ 265, 271 n.5 (TTAB 1977); 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).