1108 Issue in Concurrent Use Proceeding; Burden of Proof
37 C.F.R. § 2.99(e) The applicant for a concurrent use registration has the burden of proving entitlement thereto. If there are two or more applications for concurrent use registration involved in a proceeding, the party whose application has the latest filing date is the junior party. A party whose application has a filing date between the filing dates of the earliest involved application and the latest involved application is a junior party to every party whose involved application has an earlier filing date. If any applications have the same filing date, the application with the latest date of execution will be deemed to have the latest filing date and that applicant will be the junior party. A person specified as an excepted user in a concurrent use application but who has not filed an application shall be considered a party senior to every party that has an application involved in the proceeding.
37 C.F.R. § 2.116(b) ... A party that is a junior party in an interference proceeding or in a concurrent use registration proceeding shall be in the position of plaintiff against every party that is senior, and the party that is a senior party in an interference proceeding or in a concurrent use registration proceeding shall be a defendant against every party that is junior.
The issue to be determined in a concurrent use proceeding is the entitlement of the concurrent use applicant(s) to the registration(s) sought, and the extent, if any, to which every other involved application or registration should be restricted as a result thereof. The Board does not determine the right to registration of a party that is included in the proceeding only as a common law concurrent user (i.e., a party that does not own an involved application or registration). The specific territorial rights to which any common law users are entitled are not before the Board except to the extent that their registration rights may be limited by the territorial rights to which applicant proves entitlement. Any registration rights of a common law user can be determined only if such user were to file an application seeking concurrent registration and a concurrent use proceeding is instituted involving such application. [ Note 1.]
Each applicant for concurrent registration has the burden of proving its entitlement thereto as against every other party specified in its application as an exception to its claim of exclusive right to use. [ Note 2.] See TBMP § 1104. That is, a concurrent use applicant must prove that there will be no likelihood of confusion by reason of the concurrent use by the parties of their respective marks, and that the parties have become entitled to use their marks as a result of their concurrent lawful use in commerce prior to the applicable date specified in Trademark Act § 2(d), 15 U.S.C. § 1052(d) [usually, this means use in commerce prior to the earliest application filing date of the application(s), or 1946 Act registration(s) (if any), involved in the proceeding (or prior to July 5, 1947, in the case of an involved registration under the Acts of 1881 or 1905)]. [ Note 3.] See TBMP § 1103.01(b) and TBMP § 1103.01(d)(2).
Any other party may attempt to prove any ground or basis for refusal of registration to the concurrent use applicant that may be asserted with respect to an application for an unrestricted registration in an opposition proceeding, as well as other matters, such as, that the concurrent use applicant is entitled to a concurrent registration covering only some of the area specified in its application; that the concurrent use applicant is not entitled to registration at all because it is a bad faith junior user; that applicant does not meet the jurisdictional requirement of use of its involved mark prior to the applicable date specified in Trademark Act § 2(d), see TBMP § 1103.01(b); or that applicant’s use of its mark is unlawful. [ Note 4.]
In a concurrent use proceeding, a junior party stands in the position of plaintiff, in that it is the applicant-plaintiff that is seeking to reduce the geographic area of the senior party-defendant, thereby making the senior party stand in the position of defendant. [ Note 5.] When there are two or more concurrent use applications involved in a concurrent use proceeding, the party whose application has the latest filing date is the junior party. A party whose application has a filing date between the filing dates of the earliest involved application and the latest involved application is a junior party to every party whose involved application has an earlier filing date. If any applications have the same filing date, the application with the latest date of execution will be deemed to have the latest filing date, and that applicant will be the junior party. A party which is specified in an involved concurrent use application as an excepted user, but which does not have an involved application, shall be considered a party senior to every party that has an application involved in the proceeding. [ Note 6.]
Ex Parte Showing: When a concurrent use proceeding involves only the concurrent use applicant and one or more specified common law excepted users which do not have an involved application or registration, and default judgment for failure to answer is entered against every specified user, applicant still has the burden of proving its entitlement to the registration sought, i.e., that there exists no likelihood of confusion among consumers by reason of the concurrent use by the parties of their respective marks. [ Note 7.]
In such case, the concurrent use applicant may prove its entitlement by making an ex parte showing. The availability of making an ex parte showing allows a concurrent use applicant the right to prove its entitlement to registration by less formal procedures rather than by more formal procedures (such as depositions upon oral examination, submission of evidence through a notice of reliance). [ Note 8.] Such a showing usually suffices if the concurrent use applicant can address many of the factors the Board considers at in settlement agreements. See TBMP § 1110. In such a case, the Board, instead of setting formal trial dates, simply allows the concurrent use applicant time in which to submit proof of its entitlement to registration. [ Note 9.] In the event the concurrent use applicant fails to make a sufficient ex parte showing, judgment is entered against the concurrent use applicant, the concurrent use proceeding is dissolved and registration to the concurrent use applicant is refused.
NOTES:
1. See Terrific Promotions Inc. v. Vantex Inc., 36 USPQ2d 1349, 1353 (TTAB 1995); Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224, 1230 (TTAB 1993); Fleming Companies v. Thriftway Inc., 21 USPQ2d 1451, 1456 (TTAB 1991), aff’d, 809 F. Supp. 38, 26 USPQ2d 1551 (S.D. Ohio 1992) (the only issue properly before the Board in a concurrent use proceeding concerns the concurrent use applicant’s entitlement to registration); Georgia-Southern Oil Inc. v. Richardson, 16 USPQ2d 1723, 1725 n.5 (TTAB 1990) (unless named as an exception by the concurrent use applicant, a third-party’s application may not be joined in a concurrent use proceeding for purposes of determining proper ownership thereof, but unnamed party may amend its application to seek concurrent registration, in which case such application would become subject to its own concurrent use proceeding); The Pennsylvania Fashion Factory, Inc. v. Fashion Factory, Inc., 215 USPQ 1133, 1136 (TTAB 1982) (applicant entitled to concurrent registration despite knowledge of existence of other users of mark that came to applicant’s attention after it began use of its mark).
2. See 37 C.F.R. § 2.99(e); Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 3 USPQ2d 1306, 1309 (Fed. Cir. 1987) (concurrent use applicant not entitled to registration because, despite the fact that it does not seek registration for entire trading area, when its entire trading area is taken into account, confusion with senior user’s mark is likely); Hanscomb Consulting, Inc. v. Hanscomb Ltd., 2020 USPQ2d 10085 (TTAB 2019) (concurrent use applicant failed to demonstrate that excepted user’s use was solely limited to the geographic limitations set forth in its application; record demonstrated that the parties’ area of use overlapped); Southwestern Management, Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007 (TTAB 2015) (applicant seeking exclusive right to use "Delmonico’s" mark for restaurant services throughout United States except in designated geographic areas in and around New York City, New Orleans and Las Vegas failed to prove that, with appropriate geographic restriction, there would be no likelihood of confusion, mistake or deception in marketplace), aff’d mem., 652 F. App’x 971 (Fed. Cir. 2016); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1484 (TTAB 2014) (concurrent use applicant did not carry his burden of establishing there would be no likelihood of confusion with respect to adjacent territories); CDS Inc. v. I.C.E.D. Management Inc., 80 USPQ2d 1572, 1583-84 (TTAB 2006) (entitlement may still be shown even where parties both advertise on the Internet).
For TTAB decisions issued prior to 2000, see also: Terrific Promotions Inc. v. Vantex Inc., 36 USPQ2d 1349, 1352 (TTAB 1995) (mention of concurrent user in two in-flight airline magazines did not prevent issuance of concurrent use registrations); Big M. Inc. v. United States Shoe Corp., 228 USPQ 614, 616 (TTAB 1985) (concurrent use applicant did not prove entitlement to registration where parties failed to agree to limit actual use to territorial scope of proposed concurrent use registrations); Ole’ Taco Inc. v. Tacos Ole, Inc., 221 USPQ 912, 917 (TTAB 1984) (applicant entitled to area of actual use plus reasonable area of probable expansion); Handy Spot Inc. v. J. D. Williams Co., 181 USPQ 351, 352 (TTAB 1974) (parties’ "mere naked consent agreement" fails to prove entitlement). Cf. Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1308 (Fed. Cir. 1988) (in case involving consent agreement regarding parties’ use of their respective marks in different territories, overlapping advertising and customer solicitation did not mandate determination that there was a likelihood of confusion.).
3. See Trademark Act § 2(d), 15 U.S.C. § 1052(d); 37 C.F.R. § 2.99(e); Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 3 USPQ2d 1306, 1307 (Fed. Cir. 1987) (concurrent use registration refused where junior user admitted use of mark in trading area of senior user; likelihood of confusion in concurrent use proceeding is to be determined on basis of actual territorial use of the respective marks, and not with respect to geographic area "claimed" in the application for concurrent use registration); Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 204 USPQ 820, 832 (CCPA 1980); Bad Boys Bail Bonds, Inc. v. Yowell, 115 USPQ2d 1925, 1933 (TTAB 2015) (motion for summary judgment granted where there is no genuine dispute of material fact that applicant did not use the mark shown in the drawing in commerce prior to the filing date of the application underlying defendant’s registration); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1483-84 (TTAB 2014) (concurrent use applicant not entitled to registration because there is a likelihood of confusion in the area where both parties are using their mark); America’s Best Franchising, Inc. v. Abbott, 106 USPQ2d 1540, 1548-54 (TTAB 2013) (applicant demonstrated likelihood of confusion is avoided by the parties’ concurrent use of their marks where applicant’s, the junior user, use of its mark was prior to the filing date of defendant’s geographically unrestricted application and applicant is entitled to registration of the entire United States excluding defendant’s territory of actual use); CDS, Inc. v. I.C.E.D. Management, Inc., 80 USPQ2d 1572, 1581 (TTAB 2006) (registrant is entitled to registration covering the entire United States, "including areas of its use and non-use, subject only to the exception of geographic areas where the junior user can prove prior use").
For decisions issued prior to 2000, see also: Fleming Companies v. Thriftway Inc., 809 F. Supp. 38, 26 USPQ2d 1551, 1553 (S.D. Ohio 1992) (party is entitled to concurrent use registration for a given territory only if the party actually used the mark in that territory prior to registration by the other party; plaintiff did not use mark in expanded territory prior to defendant’s registration and therefore could not be "lawful" user), aff’g 21 USPQ2d 1451, 1455 (TTAB 1991); Terrific Promotions Inc. v. Vantex Inc., 36 USPQ2d 1349, 1353 (TTAB 1995) (good faith second user that has vigorously expanded under mark given most of U.S.); Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224, 1229 (TTAB 1993); Georgia-Southern Oil Inc. v. Richardson, 16 USPQ2d 1723, 1725 (TTAB 1990) (actual use in a territory is not necessary to establish rights in that territory and depends on a number of factors); Pinocchio’s Pizza Inc. v. Sandra Inc., 11 USPQ2d 1227, 1229 (TTAB 1989) (as a general rule prior user is entitled to registration covering entire U.S. except for geographic area in which subsequent user has actually used the mark plus an area shown to be within the natural expansion of its business, but rule is not absolute); Over the Rainbow, Ltd. v. Over the Rainbow, Inc., 227 USPQ 879, 884 (TTAB 1985) (primary concern in concurrent use proceeding is the avoidance of likelihood of confusion; applicant unable to establish its entitlement to registration in area claimed where senior user was national franchise); Faces, Inc. v. Face’s, Inc., 222 USPQ 918, 920 (TTAB 1983); Ole’ Taco Inc. v. Tacos Ole, Inc., 221 USPQ 912, 915 (TTAB 1984).
4. See DataNational Corp v. Bell South Corp., 60 F.3d 1565, 35 USPQ2d 1554, 1557-59 (Fed. Cir. 1995) (the term "use" means use as a trademark; a concurrent use applicant may claim less than the entire country as the place of use but only when there is actual or potential concurrent use of the mark by another lawful user that is not likely to cause confusion, and where mark is generic in the non-claimed area, there can be no lawful user in the non-claimed area), aff’g 18 USPQ2d 1862 (TTAB 1991); Person’s Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1480 (Fed. Cir. 1990) (allegation of bad faith adoption and use of mark in U.S. subsequent to user’s adoption in foreign country); Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (a valid application cannot be filed at all without lawful use in commerce and for purposes of claim of concurrent rights, such lawful use must begin prior to the filing date of any application with which concurrent use is sought); Fleming Companies v. Thriftway Inc., 809 F. Supp. 38, 26 USPQ2d 1551 (S.D. Ohio 1992) (junior user was not lawful user in that it did not lawfully use the mark in expanded territory prior to defendant’s registration), aff’g 21 USPQ2d 1451, 1455 (TTAB 1991); Women’s World Shops Inc. v. Lane Bryant Inc., 5 USPQ2d 1985, 1988 (TTAB 1988) (plaintiff’s use, albeit geographically remote, was not lawful because plaintiff had actual knowledge of defendant’s prior use); Pagan-Lewis Motors, Inc. v. Superior Pontiac, Inc., 216 USPQ 897, 899 (TTAB 1982) (applicant’s first use was neither innocent nor in good faith since applicant had constructive notice of user’s mark).
5. See 37 C.F.R. § 2.116(b).
6. See 37 C.F.R. § 2.99(e).
8. See Precision Tune Inc. v. Precision Auto-Tune Inc., 4 USPQ2d 1095, 1096 (TTAB 1987) (affidavit of officer of concurrent use applicant submitted vis-à-vis defaulted users). See also Fleming Companies v. Thriftway Inc., 21 USPQ2d 1451, 1456 (TTAB 1991), aff’d, 809 F. Supp. 38, 26 USPQ2d 1551 (S.D. Ohio 1992).
9. For an example of proof of entitlement to concurrent registration in such a situation, see Precision Tune Inc. v. Precision Auto-Tune Inc., 4 USPQ2d 1095, 1096 (TTAB 1987) (affidavit of officer of concurrent use applicant submitted vis-à-vis defaulted users).