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37 C.F.R. § 2.99(c)  If no opposition is filed, or if all oppositions that are filed are dismissed or withdrawn, the Trademark Trial and Appeal Board will send a notification to the applicant for concurrent use registration (plaintiff) and to each applicant, registrant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 If no opposition is filed, or if all oppositions that are filed are dismissed or withdrawn, the Board will send notice of the institution of the concurrent use proceeding to the applicant and to each entity that has been named as an excepted user by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).