1101.01    Nature of Proceeding

A concurrent use registration proceeding (hereafter referred to as a "concurrent use proceeding") is an inter partes proceeding in which the Board determines whether one or more applicants is entitled to a concurrent registration, that is, a restricted registration, with conditions and limitations fixed by the Board, as to the mode or place of use of the applicant’s mark or the goods and/or services on or in connection with which the mark is used. [ Note 1.] Restrictions are generally to claimed geographic areas of use.

Trademark Act § 2(d), 15 U.S.C. § 1052(d), governs the Board’s determination of registrability in a concurrent use proceeding. That section provides, in part, that if the Director (acting through the Board):

... determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to …

a certain specified date (normally, prior to the earliest application filing date of the application(s), or 1946 Act registration(s) (if any), involved in the proceeding, or prior to July 5, 1947, in the case of an involved registration under the Acts of 1881 or 1905.) [ Note 2.] See TBMP § 1103.01(b).

The proviso of Trademark Act § 2(d), 15 U.S.C. § 1052(d), sets out two requirements for issuance of a concurrent use registration in a proceeding before the Board. [ Note 3.] A concurrent use applicant needs to meet the jurisdictional requirement of use in commerce prior to the applicable date specified in Trademark Act § 2(d). For information concerning the dates specified in Trademark Act § 2(d) and a discussion of the jurisdictional requirement, see TBMP § 1103.01(b). A concurrent use applicant also must show that use of the mark for which it seeks a concurrent registration will not result in a likelihood of confusion. [ Note 4.] There is no provision in the Lanham Act to allow for concurrent use registrations in the dilution context. [ Note 5.]

For information regarding disclosures and discovery conferences in the context of a concurrent use proceeding, see TBMP § 401. [ Note 6.]

NOTES:

 1.   See, e.g., 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; 37 C.F.R. § 2.133(c); Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 204 USPQ 820, 831 (CCPA 1980) (the conditions and limitations imposed by Trademark Act § 2(d) are for the purpose of preventing consumer confusion); Southwestern Management, Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1020 (TTAB 2015), aff’d mem., 652 F. App’x 971 (Fed. Cir. 2016) (referencing the language of Trademark Act § 2(d)); Bad Boys Bail Bonds, Inc. v. Yowell, 115 USPQ2d 1925, 1928 (TTAB 2015) (same); Nobelle.com LLC v. Qwest Communications International Inc., 66 USPQ2d 1300, 1307 (TTAB 2003) ("A concurrent use registration, by its very nature, contemplates that the registered mark can and does function to identify more than one source … because each source’s use of the mark is subject to conditions and limitations which eliminate likelihood of confusion . . . ."); Terrific Promotions Inc. v. Vantex Inc., 36 USPQ2d 1349, 1353 (TTAB 1995); Pinocchio’s Pizza Inc. v. Sandra Inc., 11 USPQ2d 1227, 1229 (TTAB 1989); Women’s World Shops Inc. v. Lane Bryant Inc., 5 USPQ2d 1985, 1988 (TTAB 1988); Ole’ Taco Inc. v. Tacos Ole, Inc., 221 USPQ 912, 916 (TTAB 1984).

 2.   See Trademark Act § 17, 15 U.S.C. § 1067.

 3.   See In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 436 (CCPA 1970); Southwestern Management, Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1020 (TTAB 2015), aff’d mem., 652 F. App’x 971 (Fed. Cir. 2016); Bad Boys Bail Bonds, Inc. v. Yowell, 115 USPQ2d 1925 (TTAB 2015); Over the Rainbow, Ltd. v. Over the Rainbow, Inc., 227 USPQ 879, 882 (TTAB 1985).

 4.   See Southwestern Management, Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1020 (TTAB 2015), aff’d mem., 652 F. App’x 971 (Fed. Cir. 2016); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1478 (TTAB 2014); America’s Best Franchising Inc. v. Abbott, 106 USPQ2d 1540, 1547-48 (TTAB 2013); Georgia-Southern Oil Inc. v. Richardson, 16 USPQ2d 1723, 1725 (TTAB 1990); Over the Rainbow, Ltd. v. Over the Rainbow, Inc., 227 USPQ 879, 882 n.4 (TTAB 1985). Cf. Nobelle.com LLC v. Qwest Communications International Inc., 66 USPQ2d 1300, 1307 (TTAB 2003) (petitioner asserting that concurrent use registration should be deemed abandoned because mark is used by multiple parties "must do more than merely show that the registered mark is being used concurrently by the concurrent use registrants in accordance with the conditions and limitations set forth in their concurrent use registrations.").

 5.   Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car Inc., 330 F.3d 1333, 66 USPQ2d 1811, 1819 (Fed. Cir. 2003) ("Section 1063 does not provide for concurrent use registrations, an omission that must be seen as a deliberate choice made by Congress."). See also Trademark Act § 2(f), 15 U.S.C. § 1052(f)  ("A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), may be refused registration only pursuant to a proceeding brought under section 13.").

 6.   37 C.F.R. § 2.120(a)(1). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42244-47 (August 1, 2007).