1103.02    Application Based on Prior Board Decision

An application seeking concurrent registration on the basis of the Board’s final decision in a prior concurrent use proceeding, see TBMP § 1102.01, must assert use in commerce of the mark sought to be registered. See TBMP § 1103.01(a). The application must also specify and contain all the requirements of 37 C.F.R. § 2.42  (described in TBMP § 1103.01), namely, the requirements that applicant state in the application the area, goods and/or services, and (if applicable) mode of use for which applicant seeks registration, and also state, to the extent of applicant’s knowledge, the concurrent lawful use of the mark by others, setting forth their names and addresses, their areas of use, the goods and/or services on or in connection with which their use is made, the mode of their use, the periods of their use, and the registrations issued to or applications filed by them, if any. [ Note 1.] In addition, the applicant should submit a copy of the Board decision upon which it relies to ensure that the processing of its application is not delayed. Although the Board often may obtain, on its own, a copy of the prior Board decision upon which the applicant relies, this is not always possible.

When an application for concurrent registration is based on a final determination by the Board in a prior concurrent use proceeding, that applicant is entitled to a concurrent registration of its mark, a new concurrent use proceeding will not be instituted, that is, the application (if found otherwise acceptable, published, and not opposed, or opposed unsuccessfully) will be forwarded to issue without having to go through a new concurrent use proceeding, provided that the following conditions are met:

  • (1) The applicant is entitled to registration subject only to the concurrent lawful use of a party or parties to the prior concurrent use proceeding; and
  • (2) The Board’s prior decision specifies applicant’s right to concurrent registration; and
  • (3) A copy of the Board’s prior decision is submitted to the trademark examining attorney; and
  • (4) The concurrent use application complies with the Board’s prior decision, in that it seeks registration for the same, or a more limited, geographic area or mode of use than granted to applicant in the prior decision; seeks registration for substantially the same mark or one less confusingly similar to those of the other party or parties in the prior proceeding; and seeks registration for substantially the same goods and/or services as, or more limited goods and/or services than, those listed in the Board’s prior specification of applicant’s entitlement to concurrent registration [ Note 2.]; and
  • (5) The excepted use specified in the concurrent use application does not involve a registration, or any involved registration has been restricted in accordance with the Board’s prior decision.

If an application seeking concurrent registration on the basis of the Board’s determination in a prior concurrent use proceeding meets all of the conditions specified above, a new concurrent use proceeding is unnecessary, because of the legal principles of res judicata and stare decisis. [ Note 3.] If any of the conditions are not satisfied, a new concurrent use proceeding will be prepared and instituted. In the event that the first four conditions are met, but an involved registration was not restricted in accordance with the Board’s prior decision, a new concurrent use proceeding will be instituted solely for the purpose of restricting the involved registration in accordance with the Board’s decision. In such cases, the Board’s notice of institution includes a web link or web address to access the concurrent use application proceeding contained in Office records, and an order to the registrant to show cause why its registration should not be restricted in accordance with the Board’s prior decision. If no good cause is shown, the registration is ordered restricted, applicant is found entitled to the registration sought, and the concurrent use proceeding is dissolved.

When and if the application is approved for publication, it is marked (by the trademark examining attorney) with the following statement:

REGISTRATION LIMITED TO THE AREA COMPRISING ______________ PURSUANT TO CONCURRENT USE PROCEEDING NO. _______. CONCURRENT REGISTRATION WITH ______________.

The area specified in the Board’s prior decision as the area for which applicant is entitled to registration is inserted in the first blank, together with any other conditions or limitations imposed by the Board. The second blank is filled in with the number of the prior concurrent use proceeding. The third 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 prior concurrent use 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 third blank space.

If all of the conditions are not satisfied, a new concurrent use proceeding is necessary. When and if the application 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.

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 4.] See TBMP § 1106.

The Board does not determine, in a concurrent use proceeding, the right to concurrent registration of a party that is included in the proceeding only as a common law concurrent user, i.e., a party that does not own an involved application or registration. See TBMP § 1108. A party that was included in a prior concurrent use proceeding only as a common law concurrent user may not thereafter obtain a concurrent registration on the basis of the Board’s decision in the prior proceeding, without going through a new concurrent use proceeding.

NOTES:

 1.   See 37 C.F.R. § 2.42(b).

 2.   Cf. regarding comparison of marks and goods/services in context of prior registration defense, Missouri Silver Pages Directory Publishing Corp. v. Southwestern Bell Media, Inc., 6 USPQ2d 1028, 1030-31 (TTAB 1988); Carl Karcher Enterprises, Inc. v. Gold Star Chili, Inc., 222 USPQ 979, 981 (TTAB 1983), recon. denied, 222 USPQ 727 (TTAB 1983); Place for Vision, Inc. v. Pearle Vision Center, Inc., 218 USPQ 1022, 1023 (TTAB 1983).

 3.   Cf. 37 C.F.R. § 2.99(f).

 4.   See 37 C.F.R. § 2.99(d)(1).