1106 Commencement of Proceeding
1106.01 Marking of Concurrent Use Application
When an application seeking concurrent registration by way of a concurrent use proceeding before the Board is approved for publication, it is marked (by the trademark examining attorney) with the following statement:
SUBJECT TO CONCURRENT USE PROCEEDING WITH _____________. APPLICANT CLAIMS EXCLUSIVE RIGHT TO USE THE MARK IN THE AREA COMPRISING ______.
The first blank is filled in with the number(s) of the involved application(s) or registration(s) owned by the other party or parties to the proceeding. If any such party does not own an application or registration of its involved mark, then the name and address of the party is inserted in the first blank space. The second blank is filled in with the area for which applicant seeks registration.
If an application approved for publication seeks concurrent registration on the basis of the Board’s determination, in a prior concurrent use proceeding, of applicant’s entitlement thereto, and meets the conditions described in TBMP § 1103.02, so that a new concurrent use proceeding is unnecessary, the application is marked with the following statement:
REGISTRATION LIMITED TO THE AREA COMPRISING________ PURSUANT TO CONCURRENT USE PROCEEDING NO._____. CONCURRENT REGISTRATION WITH ______ .
The area specified in the Board’s decision as the area for which applicant is entitled to registration is inserted in the first blank, together with any other conditions or limitations imposed by the Board. The second blank is filled in with the number of the prior concurrent use proceeding. The third blank is filled in with the number(s) of the involved application(s) or registration(s) owned by the other party or parties to the prior concurrent use proceeding. If any such party does not own an application or registration of its involved mark, then the name and address of the party is inserted in the third blank space.
If an application approved for publication seeks concurrent registration on the basis of a court determination of concurrent rights, and meets the conditions of 37 C.F.R. § 2.99(f), see TBMP § 1103.03, so that a concurrent use proceeding is unnecessary, the application is marked with the following statement:
REGISTRATION LIMITED TO THE AREA COMPRISING_________ PURSUANT TO THE DECREE OF_______. CONCURRENT REGISTRATION WITH ______.
The area granted to applicant by the court is inserted in the first blank, together with any other conditions or limitations imposed by the court. The second blank is filled in with the name of the court, proceeding number, and date of decree. The third blank is filled in with the number(s) of the involved application(s) or registration(s) owned by the other party or parties to the court proceeding. If any such party does not own an application or registration of its involved mark, then the name and address of the party is inserted in the third blank space.
1106.02 Publication of Concurrent Use Application; Opposition Period
Once the trademark examining attorney has approved the mark for publication and marked the application, it is then published, with the indicated statement, in the Official Gazette for opposition. The status of the application is changed to "Concurrent Use Proceeding Pending" on the date of publication and is reported to the Board. The application is then added to the Board’s electronic system and tracked until after the opposition period has passed.
If the application seeking concurrent registration based on a court decree meets the requirements of 37 C.F.R. § 2.99(f), and is not opposed, or all oppositions filed are dismissed or withdrawn, the application goes to issue without the institution of a concurrent use proceeding. [ Note 1.] See TBMP § 1103.03. Similarly, if the application seeking concurrent registration on the basis of a prior Board concurrent use determination meets the conditions described in TBMP § 1103.02, and is not opposed, or all oppositions filed are dismissed or withdrawn, the application goes to issue without the institution of a new concurrent use proceeding. [ Note 2.] See TBMP § 1103.02 and TBMP § 1103.03.
Concurrent use proceedings will be instituted (1) if the application seeks concurrent registration by way of a concurrent use proceeding before the Board, and is not opposed, or all oppositions filed are dismissed or withdrawn [ Note 3.]; (2) if the application seeks concurrent registration on the basis of a court decree but does not meet the requirements of 37 C.F.R. § 2.99(f); or (3) seeks concurrent registration on the basis of the Board’s decision in a prior concurrent use proceeding but does not meet the conditions described in TBMP § 1103.02, and the application is not opposed, or all oppositions filed are dismissed or withdrawn [ Note 4.] See TBMP § 1103.02 and TBMP § 1103.03.
After the opposition period has expired, and no opposition is filed, or all oppositions filed are dismissed or withdrawn the Board then institutes the proceeding, identifies the defending users and sends notice thereof to each party. See TBMP § 1106.03 and TBMP § 1106.04. There is no fee for the institution of a concurrent use proceeding.
NOTES:
2. Cf. 37 C.F.R. § 2.99(f).
3. See 37 C.F.R. § 2.99(c).
4. See 37 C.F.R. § 2.99(c) and 37 C.F.R. § 2.99(f).
1106.03 Preparing the Record for the Involved Application and Registration Files
The Board identifies and enters into the record any applications or registrations that are to be included in the concurrent use proceeding. For information concerning involved applications and registrations, see TBMP § 1104. If any such application has not yet been published in the Official Gazette, or has been published but has not yet cleared the opposition period, the proceeding will be instituted, with the owner of that application being included as a common law user, rather than as an applicant. The Board may, in its discretion, suspend proceedings in the concurrent use proceeding until the unpublished application either becomes abandoned, or is published in the Official Gazette and survives the opposition period. After the application survives the opposition period, it is added to the proceeding, and the position of its owner is changed from that of common law user to applicant. Cf. TBMP § 1104 and TBMP § 1108.
1106.04 Preparing Concurrent Use Notices
There is no complaint in a concurrent use proceeding. Cf. TBMP § 1003. Instead, after the concurrent use application is published, the Board electronically tracks it until it clears its opposition period, the Board identifies all other applications and registrations, if any, to be included in the proceeding, and then the Board prepares notices for each concurrent use applicant and for each party.
The notice sent to each involved concurrent use applicant advises the applicant of the institution of the proceeding and includes a web link or web address to access the concurrent use proceeding contained in Office records. [ Note 1.]
A separate order is issued to the excepted users [ Note 2.], defending applicants or defending registrants, advising each party that the concurrent use proceeding is thereby instituted and supplying information concerning the filing of an "answer" to the notice and specifying a due date therefor. For information concerning the "answer" in a concurrent use proceeding, see TBMP § 1107. The institution order will set out the parties’ conference, disclosures, discovery, trial and briefing periods, unless there is more than one named excepted user, and none of them owns a trademark application or registration. See TBMP § 1109. In that case, the trial schedule is issued after all answers are filed; if any defending common law user fails to file an answer, judgment will be entered against that user as a defaulting user. See TBMP § 1107. The order will also allow the parties until a specified time to advise the Board of any relevant, but as yet uninvolved, application(s) and/or registration(s), which should be included in the proceeding.
The notice to each party listed as an exception to a concurrent use applicant’s claim of exclusive use also specifies the name and address of the concurrent use applicant and the concurrent use applicant’s attorney or other authorized representative, if any, together with the concurrent use applicant’s mark, goods and/or services, application filing date and serial number, and claimed territory [ Note 3.]; the name and address of any other involved applicant or registrant; the name and address of any other involved applicant’s attorney or other authorized representative, if any; the mark, goods and/or services, application filing date, application serial number, and claimed territory of any other involved application (if the application is unrestricted, the claimed territory will be described in the notice as "The entire United States"); the mark, goods and/or services, registration filing and issue dates, registration number, and claimed territory of any other involved registration; and the name and address of any other involved party which is simply a common law concurrent user, i.e., does not own an involved application or registration of its mark.
The notices are sent to each involved applicant, in care of the applicant’s attorney or other authorized representative, if any; to any involved user; and to any involved registrant. If an applicant is not represented by an attorney but the applicant has appointed a domestic representative, the Board will send the notice to the domestic representative unless the applicant has designated in writing another correspondence address. [ Note 4.] In the case of an involved registration, the notice is sent to the registrant itself, or to the registrant’s domestic representative if one is appointed, even if there is an attorney or other authorized representative of record in the application file after the mark has registered. [ Note 5.]
If a party has provided the Office with an email address, the notification may be transmitted via email. [ Note 6.] In any proceeding, an undelivered notice from the Board of the commencement of a proceeding may result in notice by publication in the Official Gazette, available for viewing at the USPTO’s website (http://www.uspto.gov ). [ Note 7.]
The Board no longer forwards a copy of each concurrent use applicant’s involved application(s) with the notice to each party specified in the concurrent use application as an exception to applicant’s claim of exclusive use. [ Note 8.] The rules also dispense with the requirement that the concurrent use applicant provide the Board with copies of its concurrent use application, for service by the Board, on each excepted party. [ Note 9.]
The concurrent use proceeding commences when the Board sends the notices to the parties, and sets the schedule for conferencing, disclosures, discovery, trial and briefing. [ Note 10.] If there is more than one named excepted user, and none of them owns a trademark application or registration, the trial schedule is issued after all answers are filed, but the concurrent use proceeding commences when the Board sends the notices to the parties. [ Note 11.] Where a concurrent use proceeding has been commenced solely to order a registrant, named as an excepted user in the proceeding, to show cause why its registration should not be restricted to comply with a decision in a prior Board proceeding or with a court decree, the Board does not include a trial schedule when it sends the notices to the parties.
NOTES:
1. See 37 C.F.R. § 2.99(d)(1).
2. Excepted users are those parties identified by the applicant as users who are exceptions to applicant’s claim of exclusive right to use the mark under Trademark Act § 2(d), 15 U.S.C. § 1052(d).
3. See 37 C.F.R. § 2.99(c).
4. Cf. 37 C.F.R. § 2.105(c) and 37 C.F.R. § 2.119(d).
5. Cf. 37 C.F.R. § 2.113(c).
6. See 37 C.F.R. § 2.99(c); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42243 (August 1, 2007).
7. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42244 (August 1, 2007).
8. See 37 C.F.R. § 2.99(d)(1).
9. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42243 (August 1, 2007). The parties must use email to meet their service obligations, unless they stipulate otherwise or unless certain exceptions apply. 37 C.F.R. § 2.119(b).
10. Cf. 37 C.F.R. § 2.93.
11. See 37 C.F.R. § 2.99(c).
1106.05 Locating Excepted Users
It is the responsibility of the concurrent use applicant, which has the burden of proving its entitlement to concurrent registration, to provide information concerning the current address of each specified excepted user, as well as information concerning each user’s use of its particular mark in its particular area or mode of use, and the registrations issued to or applications filed by the excepted user, if any. [ Note 1.] See TBMP § 1103.01(c)-(f) and TBMP § 1108. The address used by the Board in mailing the notice to a specified excepted user is the address provided by the concurrent use applicant in its application, unless the user itself owns an involved application or registration which includes an address more current than the one provided by the concurrent use applicant.
If a notice or other communication sent by the Board to a specified excepted user is returned as undeliverable, the concurrent use applicant will be required to investigate further and furnish the correct address. If the excepted user owns an application or registration, additional notice may be given by publication in the Official Gazette for the period of time prescribed by the Director. [ Note 2.] If, however, the excepted user does not own an application or registration, unless and until the concurrent use applicant furnishes the correct address for the user, the proceeding cannot go forward. Alternatively, if, upon further investigation, the concurrent use applicant learns that a specified excepted user has abandoned its use of its mark, the concurrent use applicant may file a motion to amend its application to delete reference to that user. The motion should include an explanation of the facts that serve as the basis for the motion. If the motion is granted, the amendment will be entered, and the user in question will be dropped as a party to the proceeding. See TBMP § 1104. Should it come to applicant’s attention that all excepted users have abandoned their mark or assigned them to applicant, applicant may file a motion to amend its application to delete the excepted users and to seek a geographically unrestricted registration. If such a motion is granted, the concurrent use proceeding will be dissolved and the application will be republished as a geographically unrestricted application.
If the owner of a registration is listed as an excepted user and the concurrent use applicant is unable, after reasonable investigation, to locate the registrant, applicant may file a petition to cancel the registration owned by the user on the ground of abandonment. The concurrent use proceeding will be suspended pending the outcome of the petition to cancel. If the Board grants the petition to cancel on the ground that the registrant has discontinued use of its mark with no intent to resume use and thereby has abandoned the mark, the concurrent use proceeding will be resumed. The concurrent use applicant may then file a motion to amend its application to delete reference to the registrant as an exception to applicant’s exclusive right to use the mark in commerce, and to seek a geographically unrestricted registration of the mark, if there are no other excepted users listed. If the applicant and the Board are unable to locate the registrant, notice of the filing of the petition to cancel will be published in the Official Gazette. [ Note 3.] If the registrant fails to appear within the thirty-day period of time allowed by the notice, default judgment will be entered against the registrant on the claim of abandonment and the petition to cancel will be granted. The concurrent use applicant may then file a motion to amend its application to delete reference to the registrant as an exception to applicant’s exclusive right to use the mark in commerce, and to seek a geographically unrestricted registration of the mark if there are no other excepted users listed.
NOTES:
1. See 37 C.F.R. § 2.42(b)(4)-(8) and 37 C.F.R. § 2.99(e).
2. 37 C.F.R. § 2.118. The period of time allowed by the notice is typically thirty days.
3. See 37 C.F.R. § 2.118.