1109 Conduct of Proceeding
Once commenced, a concurrent use proceeding is conducted in the same general manner as an opposition or cancellation proceeding, except that, inter alia, there is no complaint (see TBMP § 1106.04 and TBMP § 1107), and thus no motions relating to the complaint, and the "answer" is not an answer in the usual sense of the word, and is not always required. See TBMP § 1107. The parties are subject to disclosure and conferencing obligations. The issue to be decided by the Board is the entitlement of the concurrent use applicant(s) to the registration(s) sought, and the extent, if any, to which every other involved application or registration should be restricted as a result thereof. See TBMP § 1108. If an answer, when required, is not filed, default judgment is entered against the non-answering party, precluding that party from claiming any right more extensive than that acknowledged in the involved concurrent use application(s), but each concurrent use applicant will still have the burden of proving its entitlement to the registration(s) sought. See TBMP § 1107. In certain cases where default judgment is entered for failure to answer, a concurrent use applicant may be permitted to prove its entitlement to registration by less formal procedures (such as by submission of declaration or affidavit evidence). See TBMP § 1107 and TBMP §1108.
In addition, parties may obtain expedited determination of concurrent use proceedings by stipulating to Accelerated Case Resolution (ACR). See TBMP § 528.05(a)(2) and TBMP § 702.04. However, and as noted above, in appropriate circumstances concurrent use cases may be resolved based upon an informal "ex parte" type of showing of entitlement to registration by applicant after default by common law excepted user(s) for failure to answer. See TBMP § 1108. As a result, concurrent use applicants are more likely to achieve expedited determination of concurrent use proceedings by means of the informal "ex parte" type of showing.
The order in which the parties offer evidence depends upon whether or not they own an involved application or registration. If two or more parties own an involved concurrent use application, the order in which the parties offer evidence also depends upon the filing dates of such applications. See TBMP § 1108.
In addition, the conferencing, disclosure, trial and briefing schedule in a concurrent use proceeding involving three or more parties differs from that in an opposition or cancellation proceeding, because of the multiplicity of parties. Along with the concurrent use notice, the Board sends out an order setting dates in the case. Specifically, the Board sets a deadline for the discovery conference, disclosure dates, and the opening and closing date for discovery, and schedules testimony periods so that each party in the position of plaintiff will have a period for presenting its case in chief against each party in the position of defendant, each party in the position of defendant will have a period for presenting its case and meeting the case of each plaintiff, and each party in the position of plaintiff will have a period for presenting evidence in rebuttal. See TBMP § 701. The testimony periods are separated from the discovery period and from each other by 60-day intervals, with intervening deadlines for pretrial disclosures. Similarly, the Board schedules briefing periods so that each party in the position of plaintiff will have a period for filing a main brief on the case, each party in the position of defendant will have a period for filing a main brief and meeting the main brief of each plaintiff, and each party in the position of plaintiff will have a period for filing a reply brief. [ Note 1.] See TBMP § 801.02(e).
NOTES:
1. See 37 C.F.R §2.128(a)(2).
1109.01 Sample Trial Schedules - Cases Commenced On or After November 1, 2007
Set forth below is a sample trial and briefing schedule for a concurrent use proceeding involving parties A, B, C, D, and E, where A, B, C, and D are all concurrent use applicants, A’s application has the latest filing date, B’s application has the next-latest filing date, C’s application has the next-latest filing date, D’s application has the earliest filing date, and E is a specified concurrent user which does not own an involved application or registration (the trial and briefing schedule would look the same if E were a concurrent use applicant whose application had the earliest filing date, or if E owned an involved registration):
| Mailing Date | 6/1/2010 |
| Time to Answer | 7/11/2010 |
| Deadline for Discovery Conference | 8/10/2010 |
| Discovery Opens | 8/10/2010 |
| Initial Disclosures Due | 9/9/2010 |
| Expert Disclosures Due | 1/7/2011 |
| Discovery Closes | 2/6/2011 |
| A’s Pretrial Disclosures Due | 3/23/2011 |
| A’s 30-day Trial Period Ends | 5/7/2011 |
| B’s Pretrial Disclosures Due | 5/22/2011 |
| B’s 30-day Trial Period Ends | 7/6/2011 |
| C’s Pretrial Disclosures Due | 7/21/2011 |
| C’s 30-day Trial Period Ends | 9/4/2011 |
| D’s Pretrial Disclosures Due | 9/19/2011 |
| D’s 30-day Trial Period Ends | 11/3/2011 |
| E’s Pretrial Disclosures Due | 11/18/2011 |
| E’s 30-day Trial Period Ends | 1/2/2012 |
| A’s Rebuttal Disclosures Due | 1/17/2012 |
| A’s 15-day Rebuttal Period Ends | 2/16/2012 |
| B’s Rebuttal Disclosures Due | 3/2/2012 |
| B’s 15-day Rebuttal Period Ends | 4/1/2012 |
| C’s Rebuttal Disclosures Due | 4/16/2012 |
| C’s 15-day Rebuttal Period Ends | 5/16/2012 |
| D’s Rebuttal Disclosures Due | 5/31/2012 |
| D’s 15-day Rebuttal Period Ends | 6/30/2012 |
| Briefs on Final Hearing (37 C.F.R. § 2.128) | |
| shall become due as follows: | |
| BRIEF FOR A is due | 8/29/2012 |
| BRIEF FOR B is due | 9/28/2012 |
| BRIEF FOR C is due | 10/28/2012 |
| BRIEF FOR D is due | 11/27/2012 |
| BRIEF FOR E is due | 12/27/2012 |
| REPLY BRIEFS, if any, shall be due as follows: | |
| REPLY BRIEF FOR A is due | 1/11/2013 |
| REPLY BRIEF FOR B is due | 1/26/2013 |
| REPLY BRIEF FOR C is due | 2/10/2013 |
| REPLY BRIEF FOR D is due | 2/25/2013 |
Set forth below is another sample trial and briefing schedule for a concurrent use proceeding involving parties X, Y, and Z, where X is a concurrent use applicant, Y owns a registration which is involved in the proceeding, and Z is a specified concurrent user which does not own an involved application or registration:
| Mailing Date | 6/1/2010 |
| Time to Answer | 7/11/2010 |
| Deadline for Discovery Conference | 8/10/2010 |
| Discovery Opens | 8/10/2010 |
| Initial Disclosures Due | 9/9/2010 |
| Expert Disclosures Due | 1/7/2011 |
| Discovery Closes | 2/6/2011 |
| X’s Pretrial Disclosures Due | 3/23/2011 |
| X’s 30-day Trial Period Ends | 5/7/2011 |
| Y’s Pretrial Disclosures Due | 5/22/2011 |
| Y’s 30-day Trial Period Ends | 7/6/2011 |
| Z’s Pretrial Disclosures Due | 7/21/2011 |
| Z’s 30-day Trial Period Ends | 9/4/2011 |
| X’s Rebuttal Disclosures Due | 9/19/2011 |
| X’s 15-day Rebuttal Period Ends | 10/19/2011 |
| Briefs on Final Hearing (37 C.F.R. § 2.128) | |
| shall become due as follows: | |
| BRIEF FOR X is due | 12/18/2011 |
| BRIEF FOR Y is due | 1/17/2012 |
| BRIEF FOR Z is due | 2/16/2012 |
| REPLY BRIEFS, if any, shall be due as follows: | |
| REPLY BRIEF FOR X is due | 3/2/2012 |
The trial and briefing schedule set forth immediately above would look the same if Y and Z were both specified concurrent users that did not own an involved application or registration. If X, Y, and Z were all concurrent use applicants, there would be a separate testimony period and pretrial disclosure due date for each party, and X and Y would each have a separate rebuttal testimony period; each party would also be allowed time to file a brief on the case, but only X and Y would be allowed time in which to file a reply brief.
Set forth below is a sample trial and briefing schedule used where A is a concurrent use applicant, and B, C, and D are named excepted users, none of which own a registration or pending trademark application. In this case, the trial schedule is issued only after the date for answer has passed, and if a defending user fails to file an answer, it will not be included on the schedule.
| Deadline for Discovery Conference | 8/10/2010 |
| Discovery Opens | 8/10/2010 |
| Initial Disclosures Due | 9/9/2010 |
| Expert Disclosures Due | 1/7/2011 |
| Discovery Closes | 2/6/2011 |
| A’s Pretrial Disclosures | 3/23/2011 |
| A’s 30-day Trial Period Ends | 5/7/2011 |
| B’s Pretrial Disclosures | 5/22/2011 |
| B’s 30-day Trial Period Ends | 7/6/2011 |
| C’s Pretrial Disclosures | 7/21/2011 |
| C’s 30-day Trial Period Ends | 9/4/2011 |
| D’s Pretrial Disclosures | 9/19/2011 |
| D’s 30-day Trial Period Ends | 11/3/2011 |
| A’s Rebuttal Disclosures | 11/18/2011 |
| A’s 15-day Rebuttal Period Ends | 12/18/2011 |
With the exceptions noted above, the practices and procedures for conducting discovery conferences, serving initial, expert, and pretrial disclosures, taking discovery, filing motions, introducing evidence, briefing the case, presenting oral arguments at final hearing, and seeking review of a decision of the Board, are essentially the same in a concurrent use proceeding as in an opposition or cancellation proceeding.