1102    Generation of Proceeding

1102.01    Means of Generation

A concurrent use proceeding before the Board may be generated only by filing an application with the Office under Trademark Act § 1(a), 15 U.S.C. § 1051(a), for registration as a lawful concurrent user (hereafter referred to as a "concurrent use application"). [ Note 1.] The Board determines and decides the applicant’s right to a concurrent use registration under Trademark Act § 17, 15 U.S.C. § 1067. A concurrent use application is an application in which applicant concedes that its use of the mark is not exclusive and provides the USPTO with all the information applicant has regarding others who are using the same or similar mark. [ Note 2.] Specifically, Trademark Act § 1(a)(3)(D), 15 U.S.C. § 1051(a)(3)(D)  provides:

… 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.

In addition to the above statutory requirements, the applicant shall state in the application the geographic area, the goods or services, 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 geographic areas of such use; the goods or services on or in connection with which such use is made; the mode of such use; and the time periods of such use. [ Note 3.]

For further information concerning the requirements for a concurrent use application, see TBMP § 1103.

NOTES:

 1.   See Chichi’s, Inc. v. Chi-Chi’s, Inc., 222 USPQ 831, 832 (Comm’r 1984) (Commissioner has no power to order the commencement of a concurrent use proceeding absent a concurrent use application; respondent in cancellation proceeding may agree to entry of judgment against it or voluntarily surrender its registration for cancellation and then apply for a registration as a lawful concurrent user, and may also request that the district court determine the respective concurrent rights of the parties). Cf. J&D Home Improvement Inc. v. Basement Doctor Inc., 65 USPQ2d 1958 (D. Del. 2003) (federal district courts lack original jurisdiction over matters regarding concurrent use of trademark). See also In re Forbo, 4 USPQ2d 1415, 1416 (Comm’r 1984) (registrant may not request geographic restriction by amendment under Trademark Act § 7(d)); Inland Oil & Transport Co. v. IOT Corp., 197 USPQ 562, 563 (TTAB 1977); Hollowform, Inc. v. Delma Aeh, 180 USPQ 284, 286 (TTAB 1973), aff’d, 515 F.2d 1174, 185 USPQ 790 (CCPA 1975).

 2.   See Trademark Act § 1(a)(1)(A), Trademark Act § 1(a)(3)(D)(i), and Trademark Act § 1(a)(3)(D)(ii)(I-IV), 15 U.S.C. § 1051(a)(1)(A), 15 U.S.C. § 1051(a)(3)(D)(i)  and 15 U.S.C. § 1051(a)(3)(D)(ii)(I-IV). See also Trademark Act § 2(d), 15 U.S.C. § 1052(d); 37 C.F.R. § 2.42; TMEP § 1207.04.

 3.   See 37 C.F.R. § 2.42(b).

1102.02    Bases for Concurrent Registration – Board Determination; Court Determination

There are two bases upon which a concurrent registration may be issued.

First, a concurrent registration may be issued when the Board determines, in a concurrent use proceeding, that an applicant is entitled to a concurrent registration. Such determination may have been made in a prior concurrent use proceeding or will be made in the to-be-instituted concurrent use proceeding. See TBMP § 1101.01 and TBMP § 1103.01.

Second, a concurrent use registration may be issued "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." [ Note 1.]

These two types of concurrent use registrations are the only means by which a geographically restricted registration may be obtained. See TBMP § 1101.02. Thus, for example, an applicant may not, by including a geographical restriction in its identification of goods and/or services, obtain a geographically restricted registration without a concurrent use proceeding. [ Note 2.]

If an application seeking concurrent registration on the basis of the Board’s decision in a prior concurrent use proceeding meets certain requirements, in addition to those necessary for all concurrent use applications [ Note 3.], the registration sought, if otherwise appropriate, will be issued based on the Board’s prior decision. See TBMP § 1103. A new concurrent use proceeding before the Board will not be necessary, because of the legal principles of res judicata and stare decisis. [ Note 4.] For information concerning the requirements for an application seeking a concurrent registration on the basis of the Board’s decision in a prior concurrent use proceeding, see TBMP § 1103.02.

Similarly, if an application seeking concurrent registration on the basis of a prior court determination of concurrent rights meets certain requirements, in addition to those necessary for all concurrent use applications [ Note 5.], the registration sought, if otherwise appropriate, will be issued based on the court determination, without any concurrent use proceeding before the Board. [ Note 6.] For information concerning the requirements for an application seeking a concurrent registration on the basis of a prior court determination of concurrent rights, see TBMP § 1103.03.

NOTES:

 1.   See Trademark Act § 2(d), 15 U.S.C. § 1052(d). See also 37 C.F.R. § 2.99(f); Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630, 635 (CCPA 1976) (district court found applicant entitled to restricted registration); Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 293 F.2d 685, 130 USPQ 412, 419-20 (CCPA 1961) (court ordered restricted registration); In re Alfred Dunhill Ltd., 4 USPQ2d 1383, 1384 (Comm’r 1987) (concurrent use rights must be made by a court or by the TTAB).

 2.   See In re Home Federal Savings & Loan Association, 213 USPQ 68, 69 (TTAB 1982) (applicant may not amend to seek geographical limitations outside a concurrent use proceeding). See also In re Forbo, 4 USPQ2d 1415, 1416 (Comm’r 1984) (registrant may not request geographic restriction by amendment under Trademark Act § 7(d)).

 3.   See 37 C.F.R. § 2.42.

 4.   Cf. 37 C.F.R. § 2.99(f).

 5.   See 37 C.F.R §2.42.

 6.   See 37 C.F.R. § 2.99(f).