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).
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).