1103.01(b) Jurisdictional Requirement
An application seeking concurrent registration through a concurrent use proceeding before the Board must allege use in commerce "prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under [the Trademark Act of 1946]; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947." [ Note 1.] As a practical matter, this means that an application seeking concurrent registration through a concurrent use proceeding normally must assert a date of first use in commerce prior to the earliest application filing date of the application(s) or 1946 Act registration(s) involved in the proceeding, (or prior to July 5, 1947, in the case of an involved registration under the Acts of 1881 or 1905).
This requirement is jurisdictional in nature. [ Note 2.] If it is not met, i.e., if the asserted date of first use is not prior to the cut-off date as described in the preceding paragraph, applicant normally is not entitled to a concurrent registration, and the trademark examining attorney in charge of the application should refuse registration.
However, an application for concurrent registration need not meet the jurisdictional requirement, that is, need not assert use in commerce prior to the earliest application filing date of the application(s), or registration(s) (if any), involved in the proceeding (or prior to July 5, 1947 if relevant) under two circumstances. The first circumstance exists where the owner of such application(s) or registration(s) consents to the grant of a concurrent registration to the concurrent use applicant. [ Note 3.] The second circumstance exists where there is an application seeking concurrent registration based on a final determination, by a court of competent jurisdiction, that applicant is entitled to concurrently use its mark. [ Note 4.] See TBMP § 1103.03.
NOTES:
1. See Trademark Act § 2(d), 15 U.S.C. § 1052(d).
2. See Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (a valid application cannot be filed at all without lawful use in commerce and for purposes of concurrent use proceeding, such lawful use must have begun prior to the filing date of any application with which concurrent use is sought); In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 436 (CCPA 1970) (applicant’s lawful use outside of conflicting claimant’s area is jurisdictional in nature and must begin prior to filing date by conflicting claimant; extent of such actual use in commerce is irrelevant so long as it is more than a token use); Fleming Companies v. Thriftway Inc., 809 F. Supp. 38, 26 USPQ2d 1551, 1553 (S.D. Ohio 1992) (plaintiff did not use mark in expanded territory prior to defendant’s registration and therefore could not be "lawful" user), aff’g 21 USPQ 1451 (TTAB 1991); Boi Na Braza, LLC v. Terra Sul Corp., 110 USPQ2d 1386, 1392 (TTAB 2014) (applicant’s claim of first use prior to the earliest filing dates of the involved applications and registration met the jurisdictional requirement); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1478 (TTAB 2014) (applicant’s evidence that he used his mark prior to the earliest filing date of the involved applications met the jurisdictional requirement); America’s Best Franchising Inc. v. Abbott, 106 USPQ2d 1540, 1548 (TTAB 2013) (applicant’s use of its mark prior to the filing date of defendant’s geographically unrestricted registration meets the jurisdictional requirement); CDS Inc. v. I.C.E.D. Management, Inc., 80 USPQ2d 1572, 1580 n.12 (TTAB 2006) (priority is not normally an issue in concurrent use proceedings; question is whether concurrent use applicant has met the jurisdictional requirement of establishing use in commerce prior to the filing date of the defendant's application); Ole’ Taco Inc. v. Tacos Ole, Inc., 221 USPQ 912, 915 (TTAB 1984) (applicant’s "innocent use without notice of registrant’s use and activity" prior to registrant’s filing date meets the jurisdictional requirement); The Pennsylvania Fashion Factory, Inc. v. Fashion Factory, Inc., 215 USPQ 1133, 1136 (TTAB 1982) (jurisdictional requirement met); Morgan Services Inc. v. Morgan Linen Services Inc., 12 USPQ2d 1841, 1842 (TTAB 1989) (assignees (excepted users) stand in the shoes of the assignor (concurrent use applicant) for purposes of determining jurisdictional requirement and therefore assignee's acquisition of rights through territorial assignment meets jurisdictional requirement); My Aching Back Inc. v. Klugman, 6 USPQ2d 1892, 1894 (TTAB 1988) (jurisdictional requirement not met where applicant was not a lawful concurrent user since applicant used mark after filing date of excepted user’s registration and therefore had constructive notice of use of same mark for same goods by another party); Over the Rainbow, Ltd. v. Over the Rainbow, Inc., 227 USPQ 879, 882 (TTAB 1985) (jurisdictional requirement met where excepted users had no registration or application). Cf. The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1592 (TTAB 1995) (where Board declined to institute concurrent use proceeding).
3. See Trademark Act § 2(d), 15 U.S.C. § 1052(d).
4. See In re Home Federal Savings and Loan Association, 213 USPQ 68, 69 (TTAB 1982).