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).