1113 "Conversion " of Opposition or Cancellation Proceeding to Concurrent Use Proceeding
1113.01 Conversion of Opposition Proceeding
In certain situations, an opposition proceeding may be "converted" into a concurrent use proceeding. In these cases, the opposition proceeding is not actually transformed into a concurrent use proceeding. Rather, the opposition is terminated, usually by dismissal without prejudice, in favor of the concurrent use proceeding. The concurrent use proceeding, in turn, is instituted immediately. In fact, notice of the institution of the concurrent use proceeding is normally included in the order terminating the opposition proceeding. [ Note 1.] When this occurs, the party that was in the position of defendant in the opposition proceeding, i.e., the applicant, becomes the party in the position of plaintiff in the concurrent use proceeding and is referred to as the applicant. The party that was in the position of plaintiff in the opposition proceeding, i.e., the opposer, becomes the party in the position of defendant in the concurrent use proceeding and is referred to as the excepted user.
An opposition may be terminated in favor of a concurrent use proceeding in the situations described below:
- (1) When an opposition to a concurrent use application is filed by a party specified in the application as an exception to applicant’s claim of exclusive use, the opposition may be dismissed without prejudice in favor of a concurrent use proceeding. [ Note 2.] This action may be taken by the Board upon its own initiative, or upon motion.
- (2) When an opposition to a concurrent use application is filed by a party that is not specified in the application as an exception to applicant’s claim of exclusive use, the Board may grant a motion to dismiss the opposition without prejudice in favor of a concurrent use proceeding if opposer files an application for concurrent registration, naming applicant as an exception to its claim of exclusive use. However, the opposition will be suspended and not be dismissed, and the concurrent use proceeding will not be instituted, until opposer’s concurrent use application is published in the Official Gazette for opposition, and no opposition is filed, or all oppositions filed are dismissed.
- (3) When an opposition to a concurrent use application is filed by a party that is not specified in the application as an exception to applicant’s claim of exclusive use, and the opposer does not file an application for concurrent registration, the Board may grant a motion to dismiss the opposition without prejudice in favor of a concurrent use proceeding if applicant amends its application to specify the opposer as an additional exception to its claim of exclusive use. The Board may grant applicant’s amendment to add opposer as an excepted user and dismiss the opposition without prejudice in a single order.
- (4) When an opposition is filed against an application for an unrestricted registration, the applicant may file a motion to amend its application to one for concurrent registration, reciting opposer as an exception to applicant’s claim of exclusive use, together with a motion to terminate the opposition in favor of a concurrent use proceeding. If opposer consents to the amendment, the opposition will be dismissed without prejudice, and the concurrent use proceeding will be instituted. [ Note 3.] If opposer does not consent to the amendment, but applicant consents to entry of judgment against itself with respect to its right to an unrestricted registration, judgment will be entered against applicant, in the opposition, with respect to applicant’s right to an unrestricted registration; the amendment will be approved; and a concurrent use proceeding involving the amended application will be instituted, all in one Board order. [ Note 4.]
NOTES:
1. Cf. 37 C.F.R. § 2.99(c) (in effect providing, inter alia, that when a concurrent use application has been published in the Official Gazette for opposition, a concurrent use proceeding will not be instituted unless no opposition is filed, or unless all oppositions that are filed are dismissed or withdrawn).
2. See Boi Na Braza, LLC v. Terra Sul Corp., 110 USPQ2d 1386, 1388 & n.8 (TTAB 2014) (noting that, had defendant not opposed plaintiff’s geographically restricted application, a concurrent use proceeding would have been instituted earlier and defendant would have maintained the option to contest plaintiff’s application); Inland Oil & Transport Co. v. IOT Corp., 197 USPQ 562, 564 (TTAB 1977) (applicant’s motion to dismiss opposition and institute concurrent use proceeding granted where party named as exception filed opposition against concurrent use application; by setting forth opposer as exception to applicant’s exclusive right to use, applicant has, in effect, admitted that it is not entitled to unrestricted registration).
3. See, e.g., Holmes Oil Co. v Myers Cruizers of Mena Inc., 101 USPQ2d 1148, 1149 n.1 (TTAB 2011) (parties stipulated to terminate opposition proceeding in favor of concurrent use proceeding and to an amendment of the application to state geographic restrictions).
4. See Terrific Promotions Inc. v. Vanlex Inc., 36 USPQ2d 1349, 1350 (TTAB 1995) (opposer objected to amendment; judgment entered; concurrent use proceeding instituted); Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224, 1229 (TTAB 1993); Faces, Inc. v. Face’s, Inc., 222 USPQ 918, 920 (TTAB 1983) (applicant accepted judgment in opposition; concurrent use proceeding instituted).
1113.02 Conversion of Cancellation Proceeding
In appropriate situations, a cancellation proceeding may also be terminated in favor of a concurrent use proceeding, if one party has a concurrent use application reciting the adverse party in the cancellation proceeding as an exception to its claim of exclusive use; the application is published in the Official Gazette for opposition; and no opposition is filed, or all oppositions filed are dismissed or withdrawn. [ Note 1.] See TBMP § 1112.
NOTES:
1. Cf. Chichi’s, Inc. v. Chi-Chi’s, Inc., 222 USPQ 831, 832 (Comm’r 1984) (cancellation proceeding not terminated in favor of a concurrent use proceeding, but a decision in the cancellation proceeding adverse to respondent would not preclude respondent from filing a new application seeking concurrent registration with petitioner). See also Boi Na Braza, LLC v. Terra Sul Corp., 110 USPQ2d 1386, 1388 (TTAB 2014) (after its registration was cancelled, respondent filed a new application seeking a concurrent use registration with petitioner).