1104    Parties to Proceeding; Involved Applications, Registrations

The parties to a concurrent use proceeding are the concurrent use applicant(s), (hereinafter "applicant") and all of those persons listed in the concurrent use application(s) as exceptions to applicant’s claim of exclusive use (hereinafter "excepted users"). The persons listed as excepted users may themselves own one or more federal applications (either for concurrent registration with applicant, or for an unrestricted registration) or federal registrations for a conflicting mark, or may simply be common law users of a conflicting mark. Thus, a concurrent use proceeding may involve the concurrent use applicant(s) and one or more other applicants, and/or one or more registrants, and/or one or more common law concurrent users. Often, the only parties to a concurrent use proceeding are the concurrent use applicant, and a common law user that does not own an involved application or registration. [ Note 1.]

If, after the commencement of a concurrent use proceeding, the concurrent use applicant learns of another person with conflicting concurrent rights, the applicant may file a motion to amend its application to list that person as an additional exception to applicant’s claim to exclusive use. If the motion is granted, the person listed in the amendment will be added as a party to the proceeding and will be notified of the proceeding by the Board. [ Note 2.] Similarly, if the concurrent use applicant learns that a person listed as an exception to applicant’s claim of exclusive use has abandoned its mark, or if the person assigns its rights in its mark to the applicant, the applicant may file a motion to amend its application to delete reference to that person. The motion should include an explanation of the facts that serve as the basis for the motion. If the motion is granted, the amendment will be entered, and the person in question will be dropped as a party to the proceeding. [ Note 3.]

The applications and/or registrations involved in a concurrent use proceeding include the concurrent use application(s); every conflicting unrestricted application which is identified in the concurrent use application(s) as being owned by a person listed as an exception to the concurrent use applicant’s claim of exclusive use, and which has a filing date prior to the filing date of the concurrent use application(s); every conflicting registration identified in the concurrent use application(s) as being owned by a person listed as an exception to the concurrent use applicant’s claim of exclusive use; and every registration claimed by the concurrent use applicant(s) in the concurrent use application(s), unless there is no conflict between the mark(s) in such registration(s) and the mark(s) of the other party or parties to the proceeding. [ Note 4.] If any identified application has not yet been published in the Official Gazette, or has been published but has not yet cleared the opposition period, the proceeding will be instituted, with the owner of that application being included as a common law user, rather than as an applicant. The Board may, in its discretion, suspend proceedings in the concurrent use proceeding until the unpublished application either becomes abandoned, or is published in the Official Gazette and survives the opposition period; at which time it may be added to the proceeding, and the position of its owner will be changed from that of common law user to applicant. See TBMP § 1106. Further, when the Board institutes the concurrent use proceeding, inquiry will be made as to whether any party owns any other application or registration which is for the same or similar mark, and same or similar goods and/or services, and thus should be added to the proceeding. A conflicting application or registration identified in response to this inquiry normally will be added to the proceeding.

However, if a party to the proceeding owns a conflicting application which seeks an unrestricted registration, and which was not filed until after the concurrent use application(s), the trademark examining attorney will suspend action on the subsequent unrestricted application (once the application is otherwise in condition for approval for publication) pending disposition of the concurrent use application(s). [ Note 5.] In the event that the concurrent use application(s) matures into concurrent registration(s), the concurrent registration(s) will be cited, under Trademark Act § 2(d), 15 U.S.C. § 1052(d), as a reference(s) against the subsequent unrestricted application. [ Note 6.] Alternatively, if the owner of the subsequent unrestricted application amends it to seek concurrent registration, assuming it is otherwise in condition to be published, asserts use in commerce, and meets the jurisdictional requirement for concurrent registration, the application will be published for opposition. See TBMP § 1103.01(b). When the Board is informed of the amendment, it may suspend the concurrent proceeding pending the amended application clearing its opposition period. If no opposition is filed, or if all oppositions filed are dismissed or withdrawn, the application will be added to the concurrent use proceeding. If the Board is not advised of the amendment to concurrent use in time to add the application to the ongoing concurrent use proceeding, a new concurrent use proceeding will be instituted. [ Note 7.]

The only issue properly before the Board in a concurrent use proceeding concerns the concurrent use applicant’s entitlement to registration. The specific territorial rights to which any common law users are entitled are not before the Board except to the extent that their registration rights may be limited by the territorial rights to which applicant proves entitlement. Because common law users do not own involved applications or registrations, any registration rights of a common law user can be determined only if and when such user files an application seeking concurrent registration and a concurrent use proceeding is instituted involving such application. See TBMP § 1108.

NOTES:

 1.   See Fleming Companies Inc. v. Thriftway Inc., 21 USPQ2d 1451, 1456 (TTAB 1991); Georgia-Southern Oil Inc. v. Richardson, 16 USPQ2d 1723, 1725 n.5 (TTAB 1990) (unless named as an exception by the concurrent use applicant, a third-party’s application may not be joined in a concurrent use proceeding for purposes of determining proper ownership thereof, but an unnamed party may amend its application to seek concurrent registration, in which case such application would become subject to its own concurrent use proceeding); Newsday, Inc. v. Paddock Publications, Inc., 223 USPQ 1305, 1308 (TTAB 1984) (two concurrent use applicants).

 2.   Cf. 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).

 3.   Cf. Fleming Companies Inc. v. Thriftway Inc., 21 USPQ2d 1451, 1453 (TTAB 1991) (although abandonment of application without written consent of every adverse party precludes common law user from claiming any right to federal registration, inasmuch as user reserved right to continue using mark, it will not be dropped as party to concurrent use proceeding), aff’d, 809 F. Supp. 38, 26 USPQ2d 1551, 1553 (S.D. Ohio 1992); 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 Boi Na Braza LLC v. Terra Sul Corp., 110 USPQ2d 1386, 1389 n.10 (TTAB 2014); Holmes Oil Co. v Myers Cruizers of Mena Inc., 101 USPQ2d 1148, 1149 (TTAB 2011); Morgan Services Inc. v. Morgan Linen Services Inc., 12 USPQ2d 1841, 1842 (TTAB 1989).

 5.   See Southwestern Management, Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1020 n.73 (TTAB 2015) (examining attorney suspended action on defendants’ pending applications seeking unrestricted registration filed after applicant’s application), aff’d mem., 652 F. App’x 971 (Fed. Cir. 2016); Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224, 1226 (TTAB 1993) (Board has no jurisdiction over user/registrant’s application that was pending before examining attorney unless application is amended to seek concurrent use, and is published without successful opposition, and is added to the proceeding). See also America’s Best Franchising Inc. v. Abbott, 106 USPQ2d 1540, 1544 (TTAB 2013) (defendant’s uninvolved geographically unrestricted application suspended pending disposition of applicant’s involved concurrent use applications).

 6.   See Georgia-Southern Oil Inc. v. Richardson, 16 USPQ2d 1723, 1725 n.5 (TTAB 1990) (despite parties’ treatment of unrelated party’s application as being involved in concurrent use proceeding, it is not; Board makes no legal determination regarding ownership of trademark application, but as it was filed after concurrent use application and is pending before examining attorney, if it is not amended to seek concurrent use, applicant’s concurrent registration will be a Trademark Act § 2(d) bar to an unrestricted registration to third-party applicant).

 7.   See Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477, 1480 (TTAB 1998); Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224, 1230 (TTAB 1993); Georgia-Southern Oil Inc. v. Richardson, 16 USPQ2d 1723, 1725 n.5 (TTAB 1990).