1111 Effect of Abandonment of Involved Application
After the commencement of a concurrent use proceeding, if an applicant whose application is the subject of the proceeding abandons its application without the written consent of each adverse party, judgment will be entered against the concurrent use applicant, the proceeding will be dissolved and registration to applicant will be refused. See TBMP § 603.
Similarly, where the concurrent use proceeding involves two or more applicants, and one of the applicants files an abandonment of its application without the written consent of each party, judgment is entered against the applicant who filed the abandonment without the written consent of each party, the proceeding is dissolved as to that applicant and registration to such applicant is refused. See TBMP § 603. However, where the abandoning applicant reserves its rights to continue using its mark, and the abandoning applicant is also specified as an excepted user in any other application involved in the proceeding, while judgment is entered against the abandoning applicant, the applicant remains a party to the proceeding as a common law concurrent user. Every other applicant that has listed the abandoning applicant as an excepted user will retain the burden of proving its entitlement to registration in view of the acknowledged rights of the abandoning applicant. [ Note 1.]
For further information regarding the effect of abandonment of an involved application in a concurrent use proceeding, see TBMP § 603.
NOTES:
1. Cf. Fleming Companies Inc. v. Thriftway Inc., 21 USPQ2d 1451, 1453 (TTAB 1991) (although abandonment of application without written consent of every adverse party precludes common law user from claiming any right to federal registration, inasmuch as user reserved right to continue using mark, it will not be dropped as party to concurrent use proceeding), aff’d, 809 F. Supp. 38, 26 USPQ2d 1551 (S.D. Ohio 1992); Newsday, Inc. v. Paddock Publications, Inc., 223 USPQ 1305, 1307-08 (TTAB 1984) (applicant not entitled to concurrent use registration where user abandoned application for mark but not its right to continue using mark).