1106.05 Locating Excepted Users
It is the responsibility of the concurrent use applicant, which has the burden of proving its entitlement to concurrent registration, to provide information concerning the current address of each specified excepted user, as well as information concerning each user’s use of its particular mark in its particular area or mode of use, and the registrations issued to or applications filed by the excepted user, if any. [ Note 1.] See TBMP § 1103.01(c)-(f) and TBMP § 1108. The address used by the Board in mailing the notice to a specified excepted user is the address provided by the concurrent use applicant in its application, unless the user itself owns an involved application or registration which includes an address more current than the one provided by the concurrent use applicant.
If a notice or other communication sent by the Board to a specified excepted user is returned as undeliverable, the concurrent use applicant will be required to investigate further and furnish the correct address. If the excepted user owns an application or registration, additional notice may be given by publication in the Official Gazette for the period of time prescribed by the Director. [ Note 2.] If, however, the excepted user does not own an application or registration, unless and until the concurrent use applicant furnishes the correct address for the user, the proceeding cannot go forward. Alternatively, if, upon further investigation, the concurrent use applicant learns that a specified excepted user has abandoned its use of its mark, the concurrent use applicant may file a motion to amend its application to delete reference to that user. The motion should include an explanation of the facts that serve as the basis for the motion. If the motion is granted, the amendment will be entered, and the user in question will be dropped as a party to the proceeding. See TBMP § 1104. Should it come to applicant’s attention that all excepted users have abandoned their mark or assigned them to applicant, applicant may file a motion to amend its application to delete the excepted users and to seek a geographically unrestricted registration. If such a motion is granted, the concurrent use proceeding will be dissolved and the application will be republished as a geographically unrestricted application.
If the owner of a registration is listed as an excepted user and the concurrent use applicant is unable, after reasonable investigation, to locate the registrant, applicant may file a petition to cancel the registration owned by the user on the ground of abandonment. The concurrent use proceeding will be suspended pending the outcome of the petition to cancel. If the Board grants the petition to cancel on the ground that the registrant has discontinued use of its mark with no intent to resume use and thereby has abandoned the mark, the concurrent use proceeding will be resumed. The concurrent use applicant may then file a motion to amend its application to delete reference to the registrant as an exception to applicant’s exclusive right to use the mark in commerce, and to seek a geographically unrestricted registration of the mark, if there are no other excepted users listed. If the applicant and the Board are unable to locate the registrant, notice of the filing of the petition to cancel will be published in the Official Gazette. [ Note 3.] If the registrant fails to appear within the thirty-day period of time allowed by the notice, default judgment will be entered against the registrant on the claim of abandonment and the petition to cancel will be granted. The concurrent use applicant may then file a motion to amend its application to delete reference to the registrant as an exception to applicant’s exclusive right to use the mark in commerce, and to seek a geographically unrestricted registration of the mark if there are no other excepted users listed.
NOTES:
1. See 37 C.F.R. § 2.42(b)(4)-(8) and 37 C.F.R. § 2.99(e).
2. 37 C.F.R. § 2.118. The period of time allowed by the notice is typically thirty days.
3. See 37 C.F.R. § 2.118.