1110 Settlement Providing for Concurrent Registration
Most concurrent use proceedings before the Board are not litigated to final decision on the merits, but rather are settled on the basis of an agreement between the parties which provides for the issuance to the concurrent use applicant(s) of the concurrent registration(s) sought. Such an agreement is usually filed by the concurrent use applicant(s) together with a request for issuance of the concurrent registration(s) sought.
The Board will not enter judgment on behalf of the concurrent use applicant(s), and find such applicant(s) entitled to concurrent registration on the basis of a settlement agreement, unless the terms of the agreement are sufficient to persuade the Board that confusion, mistake, or deception is not likely to result from the continued concurrent use by the parties of their marks. [ Note 1.] If a concurrent use settlement agreement is determined to be insufficient, the Board generally will suspend proceedings and allow the parties time to submit a revised agreement correcting the deficiencies.
Traditionally, the geographic territories set forth in a concurrent use settlement agreement are mutually exclusive. Some additional provisions that may be included in settlement agreements are: (1) agreement by each party not to use or advertise in the geographical area of the other party; (2) agreement that the parties will take whatever steps are necessary to prevent actual confusion; (3) establishment of a "buffer zone" between the geographical areas of the parties; (4) recitation of any specific differences between the respective marks and goods of the parties; (5) information concerning any particular aspects of the goods, services or channels of trade which may help to preclude likelihood of confusion; (6) agreement by the parties to use distinctly different packaging, labeling, signs, or others marks in association with the subject marks; and (7) information as to the length and extent of concurrent use, and whether, in the experience of the parties, such use has resulted in any actual confusion. [ Note 2.] These factors are not all inclusive, and the parties may include any other relevant facts in demonstrating that there is no likelihood of confusion arising from the parties’ concurrent use of similar marks in their respective geographical areas.
While internet advertising increases the geographic scope of a party’s advertising, measures may be taken to reduce the possibility of consumer confusion with respect to such advertising. Examples include: a statement on each party’s website that it is not affiliated with the other party or parties; a statement on the website indicating the party’s specific geographic area of use; and displaying the subject mark on the website in close association with another mark or trade name or in a certain form. [ Note 3.]
If a settlement agreement does not include every party to the proceeding, each concurrent use applicant still will have the burden of proving its entitlement to registration as against every party to the proceeding that is not also a party to the agreement, even if a default judgment for failure to answer has been entered against a non-included party. [ Note 4.]
NOTES:
1. See Trademark Act § 2(d), 15 U.S.C. § 1052 (d) ); In re Beatrice Foods Co., 166 USPQ 431, 437 (CCPA 1970) (agreements worked out by the parties in good faith should be considered by the Board); Fleming Cos. v. Thriftway Inc., 21 USPQ2d 1451, 1454 (TTAB 1991) (concurrent use applicant not entitled to registration including expanded area of geographic use in view of agreement entered into by its predecessor), aff’d, 809 F. Supp. 38, 26 USPQ2d 1551 (S.D. Ohio 1992); Holmes Oil Co. v Myers Cruizers of Mena Inc., 101 USPQ2d 1148, 1150 (TTAB 2011) (persuasiveness of otherwise traditional consent agreement provided in resolution of concurrent use proceeding depends on reasons given that confusion is not likely); Precision Tune Inc. v. Precision Auto-Tune Inc., 4 USPQ2d 1095, 1096 (TTAB 1987) (agreement persuasive); Meijer, Inc. v. Purple Cow Pancake House, 226 USPQ 280, 282 (TTAB 1985) (initial agreement deficient in view of, inter alia, provision allowing for "spill over" advertising); The Pennsylvania Fashion Factory, Inc. v. Fashion Factory, Inc., 215 USPQ 1133, 1136 (TTAB 1982) (agreement between parties to concurrent use proceeding sufficient to show applicant’s entitlement to registration; existence of other known users of the same mark as set forth in the final paragraph of the agreement does not render agreement as having been made in bad faith); Handy Spot Inc. v. J. D. Williams Co., 181 USPQ 351, 352 (TTAB 1974) (mere naked agreement wherein parties have not delineated measures taken to preclude likelihood of confusion is not persuasive).
For further information concerning settlement agreements offered in a concurrent use proceeding as a basis for the issuance of the concurrent registration(s) sought, see Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1308 (Fed. Cir. 1988) (agreements to be given "substantial weight"). Cf. Houlihan v. Parliament Import Co., 921 F.2d 1258, 17 USPQ2d 1208, 1212 (Fed. Cir. 1990) (agreements entitled to "great weight;" although the agreement did not contain explicit provisions designed to avoid confusion or explicit statement that concurrent use of the marks would not cause confusion, the provisions in the agreement reflected recognition by parties that concurrent use by marks in their respective, albeit in contiguous geographic areas, would not cause likelihood of confusion).
2. See Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1308 (Fed. Cir. 1988) (agreement between parties given substantial weight); In re Beatrice Foods Co., 166 USPQ 431, 437 (CCPA 1970) ("there can be no better assurance of the absence of any likelihood of confusion, mistake or deception than the parties’ promises to avoid any activity which might lead to such likelihood."); Holmes Oil Co. v Myers Cruizers of Mena Inc., 101 USPQ2d 1148, 1150 (TTAB 2011) (traditional consent agreement considered in concurrent use proceeding where only applicant’s registration was to be geographically restricted found sufficient); Precision Tune Inc. v. Precision Auto-Tune Inc., 4 USPQ2d 1095, 1096 (TTAB 1987) (agreement persuasive to show no likelihood of confusion); The Pennsylvania Fashion Factory, Inc. v. Fashion Factory, Inc., 215 USPQ 1133, 1134-35 (TTAB 1982) (agreement sufficient; concurrent use registration granted). Cf. Newsday, Inc. v. Paddock Publications, Inc., 223 USPQ 1305, 1307-08 (TTAB 1984) (settlement agreement rescinded; concurrent use registration denied).
3. See CDS Inc. v. I.C.E.D. Management Inc., 80 USPQ2d 1572, 1583-84 (TTAB 2006) (entitlement may still be shown even where parties both advertise on the Internet).
4. See Precision Tune Inc. v. Precision Auto-Tune Inc., 4 USPQ2d 1095, 1096 (TTAB 1987) (ex parte type showing permitted); Fleming Companies v. Thriftway Inc., 21 USPQ2d 1451, 1456 (TTAB 1991), aff’d, 809 F. Supp. 38, 26 USPQ2d 1551 (S.D. Ohio 1992).