1103.01(d)(1)    In General

Trademark Act § 1, 15 U.S.C §1051(a)(3)(D)  … in the case of every application claiming concurrent use, the applicant shall –

  • (i) state exceptions to the claim of exclusive use; and
  • (ii) shall specify, to the extent of the verifier’s knowledge—
    • (I) any concurrent use by others;
    • (II) the goods on or in connection with which and the areas in which each concurrent use exists;
    • (III) the periods of each use; and
    • (IV) the goods and area for which the applicant desires registration.

37 C.F.R. §2.42  Concurrent use.

  • (a) Prior to seeking concurrent use, an application for registration on the Principal Register under the Act must assert use in commerce and include all the application elements required by the preceding sections, in addition to § 2.44 or § 2.45, if applicable.
  • (b) The applicant must also include a verified statement that indicates the following, to the extent of the applicant’s knowledge:
    • (1) For a trademark or service mark, the geographic area in which the applicant is using the mark in commerce; for a collective mark or certification mark, the geographic area in which the applicant’s members or authorized users are using the mark in commerce;
    • (2) For a trademark or service mark, the applicant’s goods or services; for a collective trademark, collective service mark, or certification mark, the applicant’s members’ or authorized users’ goods or services; for a collective membership mark, the nature of the applicant’s collective membership organization;
    • (3) The mode of use for which the applicant seeks registration;
    • (4) The concurrent users’ names and addresses;
    • (5) The registrations issued to or applications filed by such concurrent users, if any;
    • (6) For a trademark or service mark, the geographic areas in which the concurrent user is using the mark in commerce; for a collective mark or certification mark, the geographic areas in which the concurrent user’s members or authorized users are using the mark in commerce;
    • (7) For a trademark or service mark, the concurrent user’s goods or services; for a collective trademark, collective service mark, or certification mark, the concurrent user’s members’ or authorized users’ goods or services; for a collective membership mark, the nature of the concurrent user’s collective membership organization;
    • (8) The mode of use by the concurrent users or the concurrent users’ members or authorized users; and
    • (9) The time periods of such use by the concurrent users or the concurrent users’ members or authorized users.

The applicant must include a verified statement stating, to the extent of applicant’s knowledge, the geographic area, goods and/or services, and (if applicable) mode of use for which applicant seeks registration of the mark. [ Note 1.] The application must also state to the extent of applicant’s knowledge, the concurrent lawful use of the mark by others, setting forth their names and addresses; their geographic areas of use; the goods and/or services on or in connection with which their use is made; the mode of their use; the periods of their use; and the registrations issued to, or applications filed by them, if any. For information concerning statements by the concurrent use applicant regarding use of the mark by others, see TBMP § 1103.01(e).

The statement in the application of the area, goods and/or services, and (if applicable) mode of use for which applicant seeks registration serves to give notice, both when the mark is published for opposition (assuming it is approved for publication) and when a concurrent use proceeding is thereafter instituted (if no opposition is filed, or if all oppositions filed are dismissed or withdrawn), of the scope of the registration sought by applicant. The statement setting forth the concurrent lawful use of the mark by others serves to give notice of the extent of applicant’s acknowledgment of the concurrent rights of others. [ Note 2.]

NOTES:

 1.   See 37 C.F.R. § 2.42(b). See also Trademark Act § 1(a), 15 U.S.C. § 1051(a)(3)(D).

 2.   See 37 C.F.R. § 2.99(d)(1)  and 37 C.F.R. § 2.99(d)(3); In re Wells Fargo & Co., 231 USPQ 95, 105-06 (TTAB 1986); In re El Chico Corp., 159 USPQ 740, 741 (TTAB 1968). See also Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224, 1230 (TTAB 1993) (at late stage in contested concurrent use proceeding, Board will generally not permit concurrent use applicant to enlarge territory for which it seeks registration).