1102.02    Bases for Concurrent Registration – Board Determination; Court Determination

There are two bases upon which a concurrent registration may be issued.

First, a concurrent registration may be issued when the Board determines, in a concurrent use proceeding, that an applicant is entitled to a concurrent registration. Such determination may have been made in a prior concurrent use proceeding or will be made in the to-be-instituted concurrent use proceeding. See TBMP § 1101.01 and TBMP § 1103.01.

Second, a concurrent use registration may be issued "when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce." [ Note 1.]

These two types of concurrent use registrations are the only means by which a geographically restricted registration may be obtained. See TBMP § 1101.02. Thus, for example, an applicant may not, by including a geographical restriction in its identification of goods and/or services, obtain a geographically restricted registration without a concurrent use proceeding. [ Note 2.]

If an application seeking concurrent registration on the basis of the Board’s decision in a prior concurrent use proceeding meets certain requirements, in addition to those necessary for all concurrent use applications [ Note 3.], the registration sought, if otherwise appropriate, will be issued based on the Board’s prior decision. See TBMP § 1103. A new concurrent use proceeding before the Board will not be necessary, because of the legal principles of res judicata and stare decisis. [ Note 4.] For information concerning the requirements for an application seeking a concurrent registration on the basis of the Board’s decision in a prior concurrent use proceeding, see TBMP § 1103.02.

Similarly, if an application seeking concurrent registration on the basis of a prior court determination of concurrent rights meets certain requirements, in addition to those necessary for all concurrent use applications [ Note 5.], the registration sought, if otherwise appropriate, will be issued based on the court determination, without any concurrent use proceeding before the Board. [ Note 6.] For information concerning the requirements for an application seeking a concurrent registration on the basis of a prior court determination of concurrent rights, see TBMP § 1103.03.

NOTES:

 1.   See Trademark Act § 2(d), 15 U.S.C. § 1052(d). See also 37 C.F.R. § 2.99(f); Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630, 635 (CCPA 1976) (district court found applicant entitled to restricted registration); Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 293 F.2d 685, 130 USPQ 412, 419-20 (CCPA 1961) (court ordered restricted registration); In re Alfred Dunhill Ltd., 4 USPQ2d 1383, 1384 (Comm’r 1987) (concurrent use rights must be made by a court or by the TTAB).

 2.   See In re Home Federal Savings & Loan Association, 213 USPQ 68, 69 (TTAB 1982) (applicant may not amend to seek geographical limitations outside a concurrent use proceeding). See also In re Forbo, 4 USPQ2d 1415, 1416 (Comm’r 1984) (registrant may not request geographic restriction by amendment under Trademark Act § 7(d)).

 3.   See 37 C.F.R. § 2.42.

 4.   Cf. 37 C.F.R. § 2.99(f).

 5.   See 37 C.F.R §2.42.

 6.   See 37 C.F.R. § 2.99(f).