1105 Applications and Registrations Not Subject to Proceeding
37 C.F.R. § 2.73 An application that includes section 1(a) of the Trademark Act as a filing basis, or for which an acceptable allegation of use under § 2.76 or § 2.88 has been filed, may be amended to an application for concurrent use registration, provided that the application as amended meets the requirements of § 2.42. The trademark examining attorney will determine whether the application, as amended, is acceptable.
37 C.F.R. § 2.99(g) Registrations and applications to register on the Supplemental Register and registrations under the Act of 1920 are not subject to concurrent use registration proceedings. Applications under section 1(b) of the Act of 1946 are subject to concurrent use registration proceedings only after the applicant files an acceptable allegation of use under § 2.76 or § 2.88. Applications based solely on section 44 or section 66(a) of the Act are not subject to concurrent use registration proceedings.
Applications on Supplemental Register. Applications for registration on the Supplemental Register, registrations on the Supplemental Register, and registrations issued under the Act of 1920 are not subject to concurrent use proceedings. [ Note 1.]
Applications under Trademark Act §§ 44 or 66(a). Applications for registration based solely on Trademark Act § 44 or Trademark Act § 66(a), 15 U.S.C. § 1126 or 15 U.S.C. § 1141f(a) are not subject to concurrent use proceedings. [ Note 2.]
Applications under Trademark Act § 1(b). Applications to register under Trademark Act § 1(b), 15 U.S.C. § 1051(b), i.e., intent-to-use applications, are subject to concurrent use proceedings only after an acceptable allegation of use under 37 C.F.R. § 2.76 or 37 C.F.R. § 2.88 has been filed. [ Note 3.] See TBMP § 1103.01(a). If a concurrent use application is filed as an intent-to-use application under Trademark Act § 1(b) rather than as a use application under Trademark Act § 1(a), 15 U.S.C. § 1051(a), the applicant may not amend the application to seek concurrent use until use is effected. [ Note 4.] Further, applicants may not file an amendment to allege use in an application under Trademark Act § 1(b) that is the subject of an opposition in an effort to qualify for concurrent use registration. 37 C.F.R. § 2.76(a) provides that an applicant may not file an amendment to allege use after the date the application has been approved for publication. Applications are in a "blackout period" while an opposition is pending. [ Note 5.] Should the parties to an opposition wish to go forward with concurrent use registrations, applicant in the opposition may consider abandoning its opposed application and refiling it as a use-based, concurrent use application. If the abandonment is with opposer’s consent, judgment will not be entered against applicant, and the opposition can be dismissed without prejudice. [ Note 6.] Opposer should also consider amending any pending application it may have to one seeking a concurrent use registration to enable a full adjudication of rights under the marks. For information regarding termination of the opposition in favor of a concurrent use proceeding, see TBMP § 1113.01.
Limitations of rights as against incontestable marks. An "incontestable registration," that is, a registration of a mark the right to use of which has become incontestable pursuant to Trademark Act § 15, 15 U.S.C. § 1065, is subject to a concurrent use proceeding. However, any registration issued to the concurrent use applicant as against the owner of an incontestable registration will be limited (even if applicant is the prior user) to applicant’s area of actual use prior to actual or constructive notice of registrant’s rights, unless the parties stipulate otherwise. [ Note 7.]
The five-year incontestability period for a registration is tolled with respect to an applicant’s concurrent rights if, prior to expiration of the five-year period, the applicant files a proper concurrent use application (or an amendment converting its unrestricted application into one seeking concurrent use registration) naming the registrant as an exception to applicant’s right of exclusive use. [ Note 8.]
NOTES:
1. See Trademark Act § 26, 15 U.S.C. § 1094 ; 37 C.F.R. § 2.99(g).
2. See 37 C.F.R. § 2.99(g).
3. See 37 C.F.R. § 2.99(g). Cf. 37 C.F.R. § 2.73.
4. See 37 C.F.R. § 2.99(g); TMEP § 1207.04(b).
5. See TMEP § 1104.03(b).
6. See 37 C.F.R. § 2.135.
7. See Trademark Act § 15 and Trademark Act § 33(b)(5), 15 U.S.C. § 1065 and 15 U.S.C. § 1115(b)(5); Boi Na Braza, LLC v. Terra Sul Corp., 110 USPQ2d 1386, 1394-95 (TTAB 2014) (defendant entitled only to specific area in which it established prior rights in view of plaintiff’s ownership of a registration, the right to use of which has become incontestable); Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630, 636 (CCPA 1976) (only the right to use may become incontestable, not the registration); Thriftimart, Inc. v. Scot Lad Foods, Inc., 207 USPQ 330, 334 (TTAB 1980) (applicant involved in concurrent use proceeding with registration with incontestable rights is normally only entitled to specific area in which it has established rights prior to actual or constructive notice of the registration).
8. See Arman’s Systems, Inc. v. Armand’s Subway, Inc., 215 USPQ 1048, 1050 (TTAB 1982).