1207.04 Concurrent Use Registration

1207.04(a) Concurrent Use – In General

Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), contains a proviso under which an eligible applicant may request issuance of a registration based on rights acquired by concurrent use of its mark, either with the owner of a registration or application for a conflicting mark or with a common-law user of a conflicting mark.

In a concurrent use application, the applicant normally requests a geographically restricted registration. See TBMP §§1101.01 and 1103.01(d)(2). The applicant seeks registration for a specified geographical area of the United States and lists one or more parties who concededly have rights in the mark in other geographical areas of the United States. See 15 U.S.C. §1051(a)(3)(D); 37 C.F.R. §2.42; TBMP §§1102.01 and 1103.01. These other parties may own applications or registrations, or they may have common law rights in a mark, but no application or registration. TBMP §1104.

There are two bases upon which a concurrent use registration may be issued: (1) a determination by the Trademark Trial and Appeal Board, in either a prior or to-be-instituted concurrent use proceeding, that the applicant is entitled to a concurrent registration; or (2) a final determination by a court of competent jurisdiction of the concurrent rights of the relevant parties to use the same or similar marks in commerce. See 15 U.S.C. §1052(d); 37 C.F.R. §2.99; TBMP §1102.02.

"Incontestable" registrations (i.e., where the registrant’s right to use the mark has become incontestable pursuant to 15 U.S.C. §1065) are subject to concurrent use registration proceedings. TBMP §1105; see Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 319-20, 189 USPQ 630, 636 (C.C.P.A. 1976); Thriftimart, Inc. v. Scot Lad Foods, Inc., 207 USPQ 330, 334 (TTAB 1980).

Registrations and applications to register on the Supplemental Register and registrations under the Act of 1920 (see TMEP §1601.05) are not subject to concurrent use registration proceedings. 37 C.F.R. §2.99(g); TBMP §1105.

Concurrent use registration is requested by the applicant; it should not be suggested or initiated by the examining attorney.

1207.04(b) Filing Basis of Application Seeking Concurrent Use Registration

In an application based on use in commerce under 15 U.S.C. §1051(a), the applicant may seek concurrent use registration at the time the application is filed or in a subsequent amendment. See 37 C.F.R. §§2.42 and 2.73.

In an application based on a bona fide intent to use the mark in commerce under 15 U.S.C. §1051(b), the applicant may not amend to seek concurrent use registration until the applicant files an acceptable allegation of use. 37 C.F.R. §§2.73 and 2.99(g).

Applications based solely on §44 or §66(a) of the Trademark Act are not subject to concurrent use registration proceedings. 37 C.F.R. §2.99(g).

1207.04(c) Criteria for Requesting Concurrent Use Registration

An applicant is eligible to request a registration subject to concurrent use if it meets one or more of the following criteria:

(1) The concurrent use request is sought pursuant to a decree of a court of competent jurisdiction (or a decision by the Board in a prior concurrent use proceeding) reflecting a final determination of the rights of the concurrent user;
(2) The owner of the registration consents to the grant of a concurrent use registration to the applicant; or
(3) The applicant’s date of first use in commerce is before the filing date of the pending applications or of any registrations issued under the Trademark Act of 1946. When a party specified as an excepted user does not own an application or registration, the applicant’s date of first use in commerce is before the filing date of any application to register the mark that may be filed by the excepted user.

15 U.S.C. §1052(d); 37 C.F.R. §2.99(e). The applicant has the burden of proving that it is entitled to a concurrent use registration. 37 C.F.R. §2.99(e).

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 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. 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, 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)).

1207.04(e) Applications Subject to Concurrent Use Proceeding Before the Trademark Trial and Appeal Board

Ordinarily, the examining attorney should not require an applicant for concurrent use registration to submit evidence in support of its claim to concurrent rights. However, the examining attorney should refuse registration under §2(d) if the applicant has requested a concurrent use registration and information in the record suggests that the applicant has not met the basic requirements for concurrent use registration (e.g., if the application indicates that the applicant adopted and used the mark with knowledge of the superior rights of a person specified as an excepted user, or that actual confusion has resulted from the concurrent use of the marks of the parties in their respective geographic areas). See Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526-27, 3 USPQ2d 1306, 1308-09 (Fed. Cir. 1987); In re Place for Vision, Inc., 196 USPQ 267, 269-70 (TTAB 1977).

If an application that seeks registration through a concurrent use proceeding before the Board complies with the relevant requirements and it appears that the applicant is otherwise entitled to registration but for the question of concurrent rights, the examining attorney will approve the application for publication subject to a concurrent use proceeding. See 15 U.S.C. §1062(a). The examining attorney must not issue a refusal under §2(d) as to any registration named by the applicant as an exception to its exclusive rights.

If, in response to a refusal under §2(d) or an advisory regarding an earlier-filed application, an application is amended to seek registration through a concurrent use proceeding and complies with the relevant requirements, and it appears that the applicant is otherwise entitled to registration but for the question of concurrent rights, the examining attorney will withdraw the previously issued refusal or advisory as to any registration or application named by the applicant as an exception to its exclusive rights and will approve the application for publication subject to a concurrent use proceeding.

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

When the examining attorney determines that the mark in an application that is subject to a concurrent use proceeding is ready for publication, the examining attorney should prepare the record as follows. The application must contain a concurrent use statement that will be printed in the Official Gazette. The statement may be submitted by the applicant or prepared by the examining attorney. The statement must be in the following form:

Subject to Concurrent Use Proceeding 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].

Applicant claims the exclusive right to use the mark in the area comprising _____________ [specifying the area for which the applicant seeks registration].

After publication, if no opposition is filed, or if any opposition that is filed is dismissed or withdrawn, the Trademark Trial and Appeal Board will institute the concurrent use proceeding. See 37 C.F.R. §2.99; TMEP §1506. The Board will consider and determine concurrent use rights only in the context of a concurrent use registration proceeding. 37 C.F.R. §2.99(h).

See TBMP Chapter 1100.

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.

1207.04(g) Application for Concurrent Use Registration Based on Final Board Decision in Prior Concurrent Use Proceeding

A concurrent use registration may also be based on a final determination by the Trademark Trial and Appeal Board, in a prior concurrent use proceeding, that applicant is entitled to a concurrent use registration of its mark. TBMP §1103.02.

When examining an application for a concurrent use registration based on a final Board decision in a prior concurrent use proceeding, the examining attorney must determine whether the application complies with the specific requirements for concurrent use applications (see TMEP §1207.04(d)) and all other requirements that would apply to an unrestricted application.

In addition, all of the following conditions must be 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;
(2) The Board’s prior decision specifies applicant’s right to concurrent use registration;
(3) A copy of the Board’s prior decision is submitted to the examining attorney;
(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 the 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 the applicant’s entitlement to concurrent registration; 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 Board’s prior decision.

If the conditions listed above are satisfied, the examining attorney must ensure that the appropriate concurrent use statement for registration based on a final determination by the Board in a prior concurrent use proceeding is entered in the database and approve the application for publication (see TMEP §§1207.04(e) and (g)(i)).

If any of the conditions listed above are not satisfied, the examining attorney must ensure that the appropriate concurrent use statement for registration subject to a concurrent use registration proceeding before the Board is entered in the database and approve the application for publication (see TMEP §§1207.04(e) and (e)(i)). TBMP §1103.02.

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

If the application satisfies all the conditions listed in TMEP §1207.04(g), complies with all other relevant requirements, and is otherwise entitled to registration, the examining attorney will approve the application for publication of the mark. 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 Board, in the following form:

Registration limited to the area comprising __________ [indicating the area specified in the Board’s prior decision as the area for which applicant is entitled to registration and any other restriction designated by the Board] pursuant to Concurrent Use Proceeding No. ______________ [specifying the number of the prior concurrent use proceeding].

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