1207.04(d)   Requirements for All Concurrent Use Applications

An application for registration as a lawful concurrent user is generally examined in the same manner as any other application for registration. 37 C.F.R. §2.99(a). The examining attorney must examine the application to determine whether it complies with the relevant requirements for a non-restricted application. Additionally, the applicant must comply with the following requirements in a concurrent use application:

  • (1) The applicant must specify the goods and/or services and the geographic area for which the applicant seeks registration of the mark. 15 U.S.C. §1051(a)(3)(D); 37 C.F.R. §2.42; TBMP §1101.01. The applicant must also set forth the mode of use. 37 C.F.R. §2.42.
  • (2) The applicant must specify, to the extent of its knowledge, the exceptions to its claim of exclusive use, listing any concurrent use by others and the relevant goods and/or services, geographic areas, and periods of this use. 15 U.S.C. §1051(a)(3)(D); 37 C.F.R. §2.42.
  • (3) The applicant must also list the names and addresses of the concurrent users, the registrations issued to or applications filed by them (if any), and the mode of such use. 37 C.F.R. §2.42.
  • (4) The verification for a concurrent use application should be modified to indicate an exception, that no one else except as specified in the application has the right to use the mark. See 15 U.S.C. §1051(a)(3)(D); TMEP §804.02.

The applicant does not have to insert the stated exceptions in the verification or declaration; the exceptions may be set forth anywhere in the application.

In addition to the requirements noted above, which apply to all applications for concurrent use registration, concurrent use applications must meet other conditions, depending on whether the application is subject to a concurrent use proceeding before the Board (see TMEP §§1207.04(e)-(e)(i) ), pursuant to the decree of a court (see TMEP §§1207.04(f)-(f)(i) ), or based on a final decision by the Board in a prior concurrent use proceeding (see TMEP §§1207.04(g)-(g)(i)).