1103.01    Application Based on Board Determination

An application for concurrent registration based on a Board determination must:

  • (1) assert use in commerce of the mark sought to be registered [ Note 1.], see also TBMP § 1103.01(a);
  • (2) meet jurisdictional requirements [ Note 2.], see also TBMP § 1103.01(b);
  • (3) include a verified statement indicating to the extent of applicant’s knowledge the geographic area in which the applicant is using a trademark or service mark in commerce; for a trademark or service mark, the goods and/or services used in commerce; for a collective trademark, collective service mark, or certification mark, the geographic area in which the applicant’s members’ or authorized users’ are using the marks in commerce; and for a collective membership mark, the nature of the concurrent user’s collective membership organization; and (if applicable) the mode of use for which applicant seeks registration of the mark [ Note 3.];
  • (4) include a verified statement indicating, 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 for a trademark or service mark, and the goods and/or services on or in connection with which their use is made; for a collective trademark, collective service mark, or certification mark, the concurrent user’s members’ or authorized users’ geographic area of use and the goods or services on or in connection with which their use is made; the time periods of their use; and the registrations issued to or applications filed by them, if any; for a collective membership mark, the nature of the concurrent user’s collective membership organization; [ Note 4.]; and
  • (5) specify and contain all the elements required by the rules of practice in trademark cases for a non-restricted application. [ Note 5.] See also TBMP § 1103.01(c).

When it is determined that applicant is entitled to have its mark registered, subject to a concurrent use proceeding, the mark will be published for opposition. If no opposition is filed, or if all oppositions that are filed are dismissed or withdrawn, the Board will send notification to the applicant and to each entity that has been named as an excepted user by the applicant of the institution of the concurrent use proceeding. [ Note 6.] The Board’s notice of institution will include a web link or web address to access the concurrent use application proceeding contained in Office records. [ Note 7.]

For information concerning applicant’s obligation to assert use in commerce, see TBMP § 1103.01(a).

For information concerning applicant’s obligation to meet certain jurisdictional requirements, see TBMP § 1103.01(b).

NOTES:

 1.   Trademark Act § 2(d), 15 U.S.C. § 1052(d). See 37 C.F.R. § 2.99(g).

 2.   See Trademark Act § 2(d), 15 U.S.C. § 1052(d).

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

 4.   See 37 C.F.R. § 2.42(b)(4)-(9).

 5.   See 37 C.F.R. § 2.32  - 37 C.F.R. § 2.41.

 6.   See 37 C.F.R. § 2.99(c).

 7.   See 37 C.F.R. § 2.99(d). Concurrent use applicants no longer need to serve a copy of their application on the excepted applicants, registrants and users. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69956 (Oct. 7, 2016).

1103.01(a)    Application Must Assert Use in Commerce

A basic requirement for any concurrent use application (whether it is to be based on a Board determination or on a prior court determination of applicant’s concurrent use rights) is that it must assert use in commerce of the mark sought to be registered.

Trademark Act § 2(d), 15 U.S.C. § 1052(d), provides, in pertinent part:

[I]f the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this Act; ...Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. [ Note 1.] (Emphasis added.)

In an application based on use in commerce under Trademark Act § 1(a), 15 U.S.C. § 1051 (a), the applicant may seek concurrent use registration at the time the application is filed or in a subsequent amendment. [ Note 2.]

If a concurrent use application is filed as an intent-to-use application under Trademark Act § 1(b), 15 U.S.C. § 1051(b), rather than as a use application under Trademark Act § 1(a), 15 U.S.C. § 1051(a), the applicant may not amend the application to seek concurrent use until use is effected. [ Note 3.] Thus, an intent-to-use application for an unrestricted registration may be amended to seek concurrent registration only after an acceptable allegation of use under 37 C.F.R. § 2.76  or 37 C.F.R. § 2.88  has been filed in the application. [ Note 4.]

Applications based solely on Trademark Act § 44, 15 U.S.C. § 1126  or based on Trademark Act § 66(a), 15 U.S.C. § 1141f(a), are not subject to concurrent use registration proceedings. [ Note 5.] Thus, an application for registration under the provisions of Trademark Act § 44 may not seek concurrent registration unless the application also includes, as a second basis for registration, an allegation of use in commerce pursuant to Trademark Act § 1(a), 15 U.S.C. § 1051(a), or, in the case of an application based also on Trademark Act § 1(b), 15 U.S.C. § 1051(b), an allegation of use under 37 C.F.R. § 2.76  or 37 C.F.R. § 2.88. [ Note 6.] Where the second basis for registration is Trademark Act § 1(b), the allegation of use must be filed prior to amendment of the application to seek concurrent use registration. [ Note 7.] In a § 66(a) application, the applicant may not claim more than one basis. [ Note 8.]. Thus, a § 66(a) application is never subject to concurrent use proceedings.

NOTES:

 1.   Trademark Act § 2(d), 15 U.S.C. § 1052(d). See 37 C.F.R. § 2.99(g); Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (concurrent use applicant’s use of mark during pendency of registrant’s federal registration is not lawful, but use of mark following cancellation of federal registration is lawful as it is not subject to former constructive notice effects of that registration; "constructive notice … exists, and lasts, only as long as the federal registration giving rise to that constructive notice remains in effect."); Bad Boys Bail Bonds, Inc. v. Yowell, 115 USPQ2d 1925, 1927 (TTAB 2015) (during ex parte prosecution examining attorney advised intent-to-use applicant that it could not seek concurrent use registration until it filed an acceptable allegation of use); Fleming Companies v. Thriftway Inc., 809 F. Supp. 38, 26 USPQ2d 1551, 1553 (S.D. Ohio 1992) (use must be lawful), aff’g 21 USPQ2d 1451 (TTAB 1991).

 2.   TMEP § 1207.04(b).

 3.   See 37 C.F.R. § 2.99(g); TMEP § 1207.04(b).

 4.   See 37 C.F.R. § 2.73.

 5.   37 C.F.R. § 2.99(g). See TMEP § 1207.04(b); Miscellaneous Changes to Trademark Rules of Practice, 73 Fed. Reg. 67759 (November 17, 2008).

 6.   See TMEP § 1207.04(b).

 7.   See 37 C.F.R. § 2.73.

 8.   37 C.F.R. § 2.34(b). See also TMEP § 806.02(a).

1103.01(b)    Jurisdictional Requirement

An application seeking concurrent registration through a concurrent use proceeding before the Board must allege use in commerce "prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under [the Trademark Act of 1946]; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947." [ Note 1.] As a practical matter, this means that an application seeking concurrent registration through a concurrent use proceeding normally must assert a date of first use in commerce prior to the earliest application filing date of the application(s) or 1946 Act registration(s) involved in the proceeding, (or prior to July 5, 1947, in the case of an involved registration under the Acts of 1881 or 1905).

This requirement is jurisdictional in nature. [ Note 2.] If it is not met, i.e., if the asserted date of first use is not prior to the cut-off date as described in the preceding paragraph, applicant normally is not entitled to a concurrent registration, and the trademark examining attorney in charge of the application should refuse registration.

However, an application for concurrent registration need not meet the jurisdictional requirement, that is, need not assert use in commerce prior to the earliest application filing date of the application(s), or registration(s) (if any), involved in the proceeding (or prior to July 5, 1947 if relevant) under two circumstances. The first circumstance exists where the owner of such application(s) or registration(s) consents to the grant of a concurrent registration to the concurrent use applicant. [ Note 3.] The second circumstance exists where there is an application seeking concurrent registration based on a final determination, by a court of competent jurisdiction, that applicant is entitled to concurrently use its mark. [ Note 4.] See TBMP § 1103.03.

NOTES:

 1.   See Trademark Act § 2(d), 15 U.S.C. § 1052(d).

 2.   See Stawski v. Lawson, 129 USPQ2d 1036 (TTAB 2018) (concurrent use denied because concurrent use applicant failed to establish jurisdictional requirement of prior lawful use in commerce), appeal dismissed, No. 19-1617 (Fed. Cir. Dec. 19, 2019); 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 concurrent use proceeding, such lawful use must have begun prior to the filing date of any application with which concurrent use is sought); In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 436 (CCPA 1970) (applicant’s lawful use outside of conflicting claimant’s area is jurisdictional in nature and must begin prior to filing date by conflicting claimant; extent of such actual use in commerce is irrelevant so long as it is more than a token use); Fleming Companies v. Thriftway Inc., 809 F. Supp. 38, 26 USPQ2d 1551, 1553 (S.D. Ohio 1992) (plaintiff did not use mark in expanded territory prior to defendant’s registration and therefore could not be "lawful" user), aff’g 21 USPQ 1451 (TTAB 1991); Boi Na Braza, LLC v. Terra Sul Corp., 110 USPQ2d 1386, 1392 (TTAB 2014) (applicant’s claim of first use prior to the earliest filing dates of the involved applications and registration met the jurisdictional requirement); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1478 (TTAB 2014) (applicant’s evidence that he used his mark prior to the earliest filing date of the involved applications met the jurisdictional requirement); America’s Best Franchising Inc. v. Abbott, 106 USPQ2d 1540, 1548 (TTAB 2013) (applicant’s use of its mark prior to the filing date of defendant’s geographically unrestricted registration meets the jurisdictional requirement); CDS Inc. v. I.C.E.D. Management, Inc., 80 USPQ2d 1572, 1580 n.12 (TTAB 2006) (priority is not normally an issue in concurrent use proceedings; question is whether concurrent use applicant has met the jurisdictional requirement of establishing use in commerce prior to the filing date of the defendant’s application).

For TTAB decisions issued prior to 2000, see also: Ole’ Taco Inc. v. Tacos Ole, Inc., 221 USPQ 912, 915 (TTAB 1984) (applicant’s "innocent use without notice of registrant’s use and activity" prior to registrant’s filing date meets the jurisdictional requirement); The Pennsylvania Fashion Factory, Inc. v. Fashion Factory, Inc., 215 USPQ 1133, 1136 (TTAB 1982) (jurisdictional requirement met); Morgan Services Inc. v. Morgan Linen Services Inc., 12 USPQ2d 1841, 1842 (TTAB 1989) (assignees (excepted users) stand in the shoes of the assignor (concurrent use applicant) for purposes of determining jurisdictional requirement and therefore assignee’s acquisition of rights through territorial assignment meets jurisdictional requirement); My Aching Back Inc. v. Klugman, 6 USPQ2d 1892, 1894 (TTAB 1988) (jurisdictional requirement not met where applicant was not a lawful concurrent user since applicant used mark after filing date of excepted user’s registration and therefore had constructive notice of use of same mark for same goods by another party); Over the Rainbow, Ltd. v. Over the Rainbow, Inc., 227 USPQ 879, 882 (TTAB 1985) (jurisdictional requirement met where excepted users had no registration or application). Cf. The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1592 (TTAB 1995) (where Board declined to institute concurrent use proceeding).

 3.   See Trademark Act § 2(d), 15 U.S.C. § 1052(d).

 4.   See In re Home Federal Savings and Loan Association, 213 USPQ 68, 69 (TTAB 1982).

1103.01(c)    Application Must Meet Requirements Applicable to Non-Restricted Application

A concurrent use application must specify and contain all the elements required by the rules of practice in trademark cases for a non-restricted application. [ Note 1.]

NOTES:

 1.   See 37 C.F.R. § 2.32  - 37 C.F.R. § 2.41. See also DataNational Corp. v. BellSouth Corp., 60 F.3d 1565, 35 USPQ2d 1554, 1558-59 (Fed. Cir. 1995) (before an applicant may obtain a concurrent use registration, it must first satisfy requirements which apply to any application whether restricted or unrestricted; applicant may not obtain concurrent use registration where designation is generic in non-territory), aff’g 18 USPQ2d 1862, 1866 (TTAB 1991); 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 concurrent use proceeding, such lawful use must begin prior to the filing date of any application with which concurrent use is sought); In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 436 (CCPA 1970) (extent of such use in commerce is irrelevant so long as it is more than a token use); 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).

1103.01(d)    Application Must Identify Nature and Extent of Restriction Sought

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).

1103.01(d)(2)    Geographic Restrictions

Generally, concurrent rights arise when a party, in good faith, and without knowledge of a prior party’s use in another geographic area, adopts and uses the same or similar mark for the same or similar goods or services within its own geographic area. [ Note 1.] The vast majority of concurrent use applications seek a registration that is restricted geographically.

The area for which registration is sought is usually more extensive than the area in which the applicant is actually using its mark. If an applicant for concurrent registration believes that it is the prior user as against the other party or parties to the proceeding, applicant may, as the prior user, seek registration for all of the United States except for the subsequent user’s area of actual use and (possibly) natural expansion. [ Note 2.] If applicant is not the prior user, but believes that the prior user, through its failure to expand over a long period of time, has abandoned its right as a prior user to expand into all of the United States except for the applicant’s area of actual use and natural expansion, applicant may seek registration for all of the United States except for the prior user’s area of actual use. [ Note 3.] If the concurrent use applicant is a subsequent user not seeking registration for the entire United States because it does not believe that the prior user has abandoned its rights, the concurrent use applicant normally will seek registration not only for its area of actual use but also for its area of natural expansion. In any case, even where the concurrent use applicant is the prior user, if another party to the proceeding owns a registration of its mark, the right to use of which has become incontestable, any registration issued to the concurrent use applicant will be limited to the concurrent use applicant’s area of actual use prior to actual or constructive notice of registrant’s rights, unless the parties stipulate otherwise. [ Note 4.]

The description of the geographic area sought by the concurrent use applicant should be sufficiently definite. If the excepted area is less than an entire state, it should be described in terms of counties or in other specific and definite terms. [ Note 5.]

NOTES:

 1.   See Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 3 USPQ2d 1306, 1307 (Fed. Cir. 1987) (issue of likelihood of confusion was properly resolved by looking at the concurrent use applicant’s area of actual use, not merely the area claimed in its application); Southwestern Management, Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007 (TTAB 2015) ("…even if Applicant had knowledge of Defendant’s prior common law uses, such knowledge would not necessarily obviate good faith on the part of Applicant, as Applicant could have believed that its adoption was sufficiently remote so as to make confusion unlikely."), aff’d mem., 652 F. App’x 971 (Fed. Cir. 2016); Boi Na Braza, LLC v. Terra Sul Corp., 110 USPQ2d 1386, 1392 (TTAB 2014) (applicant adopted its mark in good faith and without knowledge of defendant’s prior use); America’s Best Franchising Inc. v. Abbott, 106 USPQ2d 1540, 1548 (TTAB 2013) (applicant adopted use of its marks in good faith, in its own geographic area, and without knowledge of defendant’s prior use of its marks); Georgia-Southern Oil Inc. v. Richardson, 16 USPQ2d 1723, 1726 (TTAB 1990) (actual use in a territory is not necessary to establish rights in that territory and depends on a number of factors).

See also Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 204 USPQ 820, 829 (CCPA 1980) (mere knowledge of the existence of the prior user should not, in itself, constitute bad faith); In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 436 (CCPA 1970) (concurrent use jurisdictional requirements met); Fleming Companies v. Thriftway Inc., 809 F. Supp. 38, 26 USPQ2d 1551, 1553 (S.D. Ohio 1992) (plaintiff did not use mark in expanded territory prior to defendant’s registration and therefore could not be "lawful" user), aff’g 21 USPQ 1451 (TTAB 1991); DataNational Corp. v. BellSouth Corp., 18 USPQ2d 1862, 1866 (TTAB 1991), aff’d, 60 F.3d 1565, 35 USPQ2d 1554 (Fed. Cir. 1995) (concurrent use application for mark that is generic in concurrent use applicant’s unclaimed territory fails to meet jurisdictional requirements even if mark is associated with applicant in its claimed territory); 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; here, confusion inevitable; applicant unable to establish its entitlement to registration in area claimed, where senior user was national franchise).

 2.   See 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 United States 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); Ole’ Taco Inc. v. Tacos Ole, Inc., 221 USPQ 912, 916 (TTAB 1984) (subsequent user may obtain registration for area of actual use as well as area of natural expansion and subsequent user who adopts in good faith is not necessarily precluded from further expansion after learning of prior user); Zimmerman v. Holiday Inns of America, Inc., 123 USPQ 86, 87 (TTAB 1959) (acknowledged the right of the subsequent user to operate in areas into which it had expanded after notice of the existence of the prior user). Cf. Terrific Promotions Inc. v. Vantex Inc., 36 USPQ2d 1349, 1353 (TTAB 1995) (where good faith subsequent user that had vigorously expanded under mark was given most of U.S.).

 3.   See, e.g., Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 204 USPQ 820, 832 (CCPA 1980); Boi Na Braza, LLC v. Terra Sul Corp., 110 USPQ2d 1386, 1394-95 (TTAB 2014) (applicant entitled to registration for all of the United States except for prior users’ area of actual use due to defendant’s inaction and except for "buffer area" ceded by applicant); America’s Best Franchising Inc. v. Abbott, 106 USPQ2d 1540, 1554 (TTAB 2013) (applicant entitled to registration for all of the United States except prior user’s area of actual use due to defendant’s inaction and because applicant was the first to seek federal registration); Pinocchio’s Pizza Inc. v. Sandra Inc., 11 USPQ2d 1227, 1228 (TTAB 1989). Cf. 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).

 4.   See Trademark Act § 15 and Trademark Act § 33(b)(5), 15 U.S.C. § 1065  and 15 U.S.C. § 1115(b)(5); Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630, 633 (CCPA 1976) (court determination of rights); Thriftimart, Inc. v. Scot Lad Foods, Inc., 207 USPQ 330, 334 (TTAB 1980) (agreement by parties found to obviate likelihood of confusion).

 5.   See Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224, 1230 (TTAB 1993) (description excepting "the San Francisco Bay area" indefinite); In re El Chico Corp., 159 USPQ 740, 741 (TTAB 1968) (merely stating that there are various users in various states for similar services is insufficient).

1103.01(d)(3)    Mode of Use Restrictions

In very rare instances, a concurrent use applicant may seek concurrent registration based only on conditions or limitations as to the mode of use of its mark [ Note 1.] or as to the goods and/or services on or in connection with which the mark is used, i.e., a restriction as to the form in which it may use its mark; a limitation as to the trade channels in which its goods are sold; a requirement that the mark always be used in conjunction with a particular trade dress or house mark, or a specified disclaimer of affiliation. [ Note 2.] Usually, "mode of use" cases arise before the federal district courts, which, for equitable reasons, may permit a continuation of concurrent use even if there is some resulting confusion. Notwithstanding the likelihood of confusion, a party to the court proceeding may obtain concurrent registration on the basis of such a court determination, if its application is otherwise acceptable for registration. [ Note 3.] In contrast, when concurrent registration is sought by way of a concurrent use proceeding before the Board, the Board cannot allow registration if it finds that there would be a likelihood of confusion from the continued concurrent use of the marks. [ Note 4.]

An applicant seeking registration on the basis of "mode of use" conditions or limitations should request concurrent registration only if its application includes a condition or limitation not capable of being incorporated into the applicant’s drawing of its mark and/or identification of goods or services, and into the drawing and/or identification of any conflicting application or registration which may be owned by another. [ Note 5.]

Where an applicant seeks registration on the basis of "mode of use" conditions or limitations which are incorporated, or are capable of being incorporated, into the applicant’s drawing of its mark and/or identification of goods or services, and into the drawing and/or identification of any conflicting application or registration which may be owned by another, a concurrent use proceeding is unnecessary and will not be instituted by the Board. The application should be presented as a regular application, not as a concurrent use application. [ Note 6.] If an applicant that has incorporated mode of use conditions or limitations into its drawing and/or identification is unable to obtain a registration in the absence of corresponding conditions or limitations in a conflicting application or registration, and the owner thereof is not willing to amend its application or registration to include the conditions or limitations, applicant’s remedy lies in an opposition or a petition for cancellation, respectively, to restrict the application or registration appropriately. [ Note 7.]

For information concerning a claim for partial opposition or partial cancellation, i.e., a request to restrict, see TBMP § 309.03(d).

NOTES:

 1.   See The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1589 n.4 (TTAB 1995) (mode of use refers to "the manner of displaying the mark, e.g., where the mark is displayed only in a certain stylization, or only in conjunction with a particular trade dress or house mark, or only in conjunction with a disclaimer of affiliation.").

 2.   See, e.g., Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630, 632 (CCPA 1976) (restrictions, inter alia, to form of mark and geographic area of use); Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 293 F.2d 685, 130 USPQ 412, 419-20 (CCPA 1961) (restrictions, inter alia, to form of mark and types of goods). Cf. The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1592 (TTAB 1995) (request for concurrent use registration based on asserted dissimilarity of trade channels denied); In re Wells Fargo & Co., 231 USPQ 95 (TTAB 1986) (court imposed geographic restriction and mode of use requirements involving, inter alia, trade dress and advertising).

 3.   See, e.g., Trademark Act § 2(d), 15 U.S.C. § 1052 (d); Nobelle.com LLC v. Qwest Communications International Inc., 66 USPQ2d 1300, 1302 n.4 (TTAB 2003) (mode of use restrictions in nine concurrent use registrations issued in accord with opinions and orders entered by federal district court in antitrust litigation); Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630, 635 (CCPA 1976) (application presenting mark in plain typed capital letters did not violate judgment but accompanying specimen showing mark in prohibited script did); Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 293 F.2d 685, 130 USPQ 412, 416 (CCPA 1961).

 4.   See Trademark Act § 2(d), 15 U.S.C. § 1052(d); Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630, 635 (CCPA 1976) ("[T]he sentence referring to court determinations is independent of the opening words of the proviso referring to the Commissioner’s determination that confusion, etc., is ‘not likely.’ We do not consider those words to be a limitation on the provision for granting concurrent registrations on the basis of determinations of right to use by courts of competent jurisdiction.").

 5.   See The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1591 (TTAB 1995) (refusing to institute concurrent use proceeding where sole basis for applicant’s request for institution thereof is the asserted dissimilarity in the trade channels in which the parties’ services are offered; "Concurrent use proceedings shall be reserved for those situations where the proposed conditions and limitations cannot be incorporated into the drawing of the mark or the identification of goods, and cannot be considered under the main clause of Section 2(d)."). See also Ex parte Crossett Lumber Co., 89 USPQ 29, 30 (USPTO 1951) (no concurrent use proceeding instituted where only proposed restriction was to have parties use same mark with different additional wording by each).

 6.   See The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1590-91 (TTAB 1995) ("Any ‘conditions and limitations’ as to the parties’ marks and/or goods which are incorporated into the parties’ respective drawings and identifications of goods and/or services can and must be considered as part of the basic likelihood of confusion analysis under the main clause of Section 2(d).").

 7.   See The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1591 n.7 (TTAB 1995) ("If the mark and/or goods conditions or limitations which might avoid a finding of likelihood of confusion are not already present in a conflicting registration, and the owner of the registration is not willing to amend its registration to incorporate the conditions or limitations, applicant’s remedy lies in a petition for partial cancellation to restrict the registration;" concurrent use proceeding not instituted where only limitation was trade channels that could be adequately dealt with under main clause of Trademark Act § 2(d) in ordinary ex parte or inter partes proceeding).

1103.01(e)    Application Must Identify Excepted Users and Their Asserted Rights

In addition to the requirement that the applicant must provide certain information about its own mark, see TBMP § 1103.01(d)(1)-(3), the applicant must state in the application, to the extent of applicant’s knowledge, the concurrent lawful use of the mark by others, setting forth their names and addresses; their 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. [ Note 1.]

In specifying a concurrent use applicant’s extent of its knowledge of the concurrent rights of others, [ Note 2.] it is not necessary that it list, as exceptions to its claim of exclusive use, every entity known to it to be using the same or similar mark for the same or similar goods or services. Rather, applicant’s duty is to list any entity known to it to be a senior user of a clearly conflicting mark, as well as any junior user known to it to have clearly conflicting rights which are clearly established, as, for example, by court decree, by settlement agreement, or by a registration. [ Note 3.]

NOTES:

 1.   See 37 C.F.R. § 2.42(b).

 2.   See 37 C.F.R. § 2.42(b). See also Trademark Act § 1(a), 15 U.S.C. § 1051(a); Gallagher’s Restaurants Inc., v. Gallagher’s Farms Inc., 3 USPQ2d 1864, 1866 (TTAB 1986) (motion to amend concurrent use application to add additional users denied where it was filed late in proceeding, existence of the users were known to applicant years earlier, and applicant failed to specify the marks or the goods/services allegedly used by those parties); In re Wells Fargo & Co., 231 USPQ 106, 116 (TTAB 1986) (concurrent use registration denied where, inter alia, applicant failed to specify areas of use and services of excepted user); In re El Chico Corp., 159 USPQ 740, 741 (TTAB 1968) (merely stating that there are various users in various states for similar services is insufficient).

 3.   See Rosso & Mastracco, Inc. v. Giant Food Inc., 720 F.2d 1263, 219 USPQ 1050, 1053 (Fed. Cir. 1983) (no requirement to investigate and report all possible users; senior user ordinarily need not identify junior users in the oath unless rights of a junior user have been "clearly established"); Pennsylvania Fashion Factory, Inc. v. Fashion Factory, Inc., 215 USPQ 1133, 1137 (TTAB 1982) (duty to investigate only known prior users; existence of other users came to applicant’s attention after applicant began use and then only as result of computer-generated search report). See also In re Sun Refining & Marketing Co., 23 USPQ2d 1072, 1073 (TTAB 1991) (obligated to amend declaration to acknowledge rights recognized by the terms of a settlement agreement). Cf. SCOA Industries Inc. v. Kennedy & Cohen, Inc., 188 USPQ 411, 414 (TTAB 1975) (no duty to identify other user where there are arguable differences between the marks).

1103.01(f)    Other Requirements

37 C.F.R. § 2.99(b)  If it appears that the applicant is entitled to have the mark registered, subject to a concurrent use proceeding, the mark will be published in the Official Gazette as provided by § 2.80.

37 C.F.R. § 2.80  Publication for opposition. If, on examination or reexamination of an application for registration on the Principal Register, it appears that the applicant is entitled to have his mark registered, the mark will be published in the Official Gazette for opposition. The mark will also be published in the case of an application to be placed in interference or concurrent use proceedings, if otherwise registrable.

37 C.F.R. § 2.99(c)  If no opposition is filed, or if all oppositions that are filed are dismissed or withdrawn, the Trademark Trial and Appeal Board will send a notification to the applicant for concurrent use registration (plaintiff) and to each applicant, registrant or user specified as a concurrent user in the application (defendants). …

37 C.F.R. § 2.99(d)(1) The Board’s notice of institution will include a web link or web address to access the concurrent use application proceeding contained in Office records.

When it is determined that an applicant is entitled to have its mark registered, subject to a concurrent use proceeding, the mark will be published for opposition. If no opposition is filed, or if all oppositions that are filed are dismissed or withdrawn, the Board will send notice of the institution of the concurrent use proceeding to the applicant and to each entity that has been named as an excepted user by the applicant. The Board’s notice of institution will include a web link or web address to access the concurrent use application proceeding contained in Office records. [ Note 1.] See TBMP § 1106.

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, together with any other conditions or limitations to which registration would be restricted.

For information concerning the examination by the trademark examining attorney of a concurrent use application, see TMEP § 1207.04(d) and TMEP § 1207.04(e)(i).

NOTES:

 1.   See 37 C.F.R. § 2.99(b)  - 37 C.F.R. § 2.99(d). Concurrent use applicants no longer need to serve the application on the excepted registrants and users. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69956 (Oct. 7, 2016).