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).