1207.04(f)    Application for Concurrent Use Registration Pursuant to Court Decree

The USPTO may issue a concurrent use registration pursuant to the final determination of a court of competent jurisdiction that more than one person is entitled to use the same or similar marks in commerce. 15 U.S.C. §1052(d)(3). An applicant who seeks a concurrent use registration on the basis of a court determination does not have to be a prior user or obtain the consent of the owner of the involved mark. See Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 317-18, 189 USPQ 630, 633-34 (C.C.P.A. 1976); cf. Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 293 F.2d 685, 690-94, 130 USPQ 412, 417-20 (C.C.P.A. 1961); TBMP §1103.03.

When examining an application for concurrent use registration pursuant to the decree of a court, the examining attorney must determine whether the application complies with the specific requirements for concurrent use applications (see TMEP §§1207.04(d)) and the requirements that would apply to an unrestricted application.

In addition, under 37 C.F.R. §2.99(f), all of the following conditions must be met, or a concurrent use proceeding before the Board must be prepared and instituted:

  • (1) The applicant is entitled to registration subject only to the concurrent lawful use of a party to the court proceeding;
  • (2) The court decree specifies the rights of the parties;
  • (3) A true copy of the court decree is submitted to the examining attorney;
  • (4) The concurrent use application complies fully and exactly with the court decree; and
  • (5) The excepted use specified in the concurrent use application does not involve a registration, or any involved registration has been restricted by the Director in accordance with the court decree.

If any of the conditions listed above are not satisfied, the examining attorney will approve the application for publication subject to a concurrent use registration proceeding before the Board (see TMEP §§1207.04(e) and (e)(i)), rather than pursuant to the court decree. 37 C.F.R. §2.99(f).

1207.04(f)(i)    Preparing the Record for Publication

If the application complies with all the conditions listed in TMEP §1207.04(f) and all other relevant requirements, and is otherwise entitled to registration, the examining attorney will approve the application for publication of the mark. The examining attorney should prepare the record as follows:

The application must contain a concurrent use statement to be printed in the Official Gazette. The statement may be submitted by the applicant or prepared by the examining attorney. The statement will delineate the concurrent rights of the parties as determined by the court, in the following form:

Registration limited to the area comprising __________ [specifying the area granted to the applicant by the court and any other restriction designated by the court] pursuant to the decree of ______________ [specifying the name of the court, proceeding number and date of the decree].

Concurrent registration with ________________ [specifying the application serial number(s) or registration number(s), if any, of each other party; otherwise, the name and address of each other party].

After publication, if no opposition is filed, or if any opposition that is filed is dismissed or withdrawn, the application will mature into a registration.