1101.02    Context for USPTO Determination of Concurrent Rights

37 C.F.R. § 2.99(h)  The Trademark Trial and Appeal Board will consider and determine concurrent use rights only in the context of a concurrent use registration proceeding.

37 C.F.R. § 2.133(c)  Geographic limitations will be considered and determined by the Trademark Trial and Appeal Board only in the context of a concurrent use registration proceeding.

Within the USPTO, the Board determines the right to a concurrent registration. [ Note 1.] Concurrent registration rights are considered and determined by the Board only in the context of a concurrent use proceeding. [ Note 2.]

A registration cannot be restricted territorially by amendment under Trademark Act § 7(e), 15 U.S.C. § 1057(e), and 37 C.F.R. § 2.173(a). [ Note 3.] Thus, a cancellation proceeding may not be settled by amending the involved registration to include territorial restrictions. [ Note 4.] However, the registrant may agree to entry of judgment against it in the cancellation proceeding or voluntarily surrender its registration for cancellation and thereafter apply for a registration as a lawful concurrent user. [ Note 5.] See also TBMP § 1114. The cancellation proceeding may be suspended to allow registrant time to file a concurrent use application, and terminated when registrant’s concurrent use application has been published for opposition purposes and no opposition is filed, or all oppositions filed are dismissed or withdrawn. See TBMP § 1113.02.

Moreover, a Trademark Act § 7(e) amendment may generally not be used to remove a concurrent use restriction from a registration. However, removal of a concurrent use restriction by amendment under Trademark Act § 7(e) may be permitted where an entity which was the only exception to registrant’s right to exclusive use of its registered mark assigns its rights in its mark to registrant, so that all rights in the mark are merged in registrant. [ Note 6.]

NOTES:

 1.   See Trademark Act § 2(d), Trademark Act § 17, and Trademark Act § 18, 15 U.S.C. § 1052(d), 15 U.S.C. § 1067  and 15 U.S.C. § 1068.

 2.   See Trademark Act § 2(d), Trademark Act § 17, and Trademark Act § 18, 15 U.S.C. § 1052(d), 15 U.S.C. § 1067, and 15 U.S.C. § 1068. See also 37 C.F.R. § 2.99(h)  and 37 C.F.R. § 2.133(c); Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car Inc., 330 F.3d 1333, 66 USPQ2d 1811, 1815 (Fed. Cir. 2003); Stock Pot Restaurant, Inc. v. Stockpot, Inc., 737 F.2d 1576, 222 USPQ 665, 669 (Fed. Cir. 1984) (attempt to interject concurrent use proceeding into cancellation unavailing), aff’g, 220 USPQ 52 (TTAB 1983); Mother’s Restaurant Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566, 221 USPQ 394, 400 (Fed. Cir. 1983) (concurrent use not available in cancellation by way of counterclaim); Rosso & Mastracco, Inc. v. Giant Food Inc., 720 F.2d 1263, 219 USPQ 1050, 1053 (Fed. Cir. 1983); Selfway, Inc. v. Travelers Petroleum, Inc., 579 F.2d 75, 198 USPQ 271, 277 (CCPA 1978) (concurrent rights can only be adjudicated in concurrent use proceeding); Holmes Oil Co. v Myers Cruizers of Mena Inc., 101 USPQ2d 1148, 1149 (TTAB 2011) (in concurrent use proceedings, the Board determines entitlement to a registration, generally with a geographic restriction); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1106 n.3 (TTAB 2007) (no consideration given in cancellation proceeding to proposed counterclaim to partially cancel petitioner’s pleaded registrations by further limiting the geographic scope thereof).

 3.   See In re Forbo, 4 USPQ2d 1415, 1415 (Comm’r 1984) ("Registrations are territorially restricted pursuant to concurrent use or court proceedings in which territorial rights are judicially determined; a registrant may not make this determination itself or request it in the same way that a registration is restricted as to goods.").

 4.   See, e.g., Chichi’s, Inc. v. Chi-Chi’s, Inc., 222 USPQ 831, 832 (Comm’r 1984) (a decision in the cancellation proceeding adverse to respondent would not preclude respondent from filing a new application seeking concurrent registration with petitioner). See also Boi Na Braza, LLC v. Terra Sul Corp., 110 USPQ2d 1386, 1388 (TTAB 2014) (after its registration was cancelled, respondent filed a new application seeking a concurrent use registration with petitioner named as concurrent user).

 5.   See Chichi’s, Inc. v. Chi-Chi’s, Inc., 222 USPQ 831, 832 (Comm’r 1984).

 6.   See In re Alfred Dunhill Ltd., 4 USPQ2d 1383, 1384 (Comm’r 1987) (geographic restriction removed by amendment when excepted rights assigned to registrant).