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); See Am. Best Franchising Inc. v. Abbott, 106 USPQ2d 1540, 1549 (TTAB 2013) (citing In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431,435-36 (CCPA 1970)); 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.