As stated in section 1207.04(a) Concurrent Use – In General of the Trademark Manual of Examination Procedure:

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 concurrent with the registration of a conflicting mark.

In a concurrent use application, the applicant normally requests a geographically restricted registration. 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. These other parties may own applications or registrations, or they may have common law rights in a mark, but no application or registration. "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. See Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630 (C.C.P.A. 1976); Thriftimart, Inc. v. Scot Lad Foods, Inc., 207 USPQ 330 (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).

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

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  • Statutory basis for concurrent registration.
    • CDS, Incorporated v. I.C.E.D. Management, Inc., Concurrent Use No. 94001250, (TTAB 2006).
      • Section 2(d) of the Trademark Act (15 U.S.C. § 1052(d)) provides: "That if the Director 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 (1) the earliest of the filing dates of the applications pending or of any registration issued under this Act…"
  • Determination of when concurrent registrations are permitted.
    • CDS, Incorporated v. I.C.E.D. Management, Inc., Concurrent Use No. 94001250, (TTAB 2006).
      • We earlier pointed out the two requirements which the proviso sets out as conditions precedent to the issuance of concurrent registrations. The first, that the parties be presently entitled to concurrently use the mark in commerce, we view as being primarily jurisdictional in nature. As with a single applicant, we consider the extent of such actual use to be irrelevant so long as it amounts to more than a mere token attempt to conform with the requirement of the statute. Cf. Fort Howard Paper Co. v. Kimberly-Clark Corp., 55 CCPA 947, 390 F.2d 1015, 157 USPQ 55 (1968). The touchstone, however, is the requirement that there be no likelihood of confusion, mistake or deception in the market place as to the source of the goods resulting from the continued concurrent use of the trademark. Only in satisfying this standard, can the Patent Office be sure that both the rights of the individual parties and those of the public are being protected. Once there has been a determination that both parties are entitled to a federal registration, the extent to which those registrations are to be restricted territorially must also be governed by the statutory standard of likelihood of confusion. In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 436 (CCPA 1970).
  • Bruden of Proof: An applicant for a concurrent use registration has the burden of proof for allowing registration.
    • CDS, Incorporated v. I.C.E.D. Management, Inc., Concurrent Use No. 94001250, (TTAB 2006).
      • Under 37 CFR § 2.99(e), an "applicant for a concurrent use registration has the burden of proving entitlement thereto." The board has held that "[a]s a general rule, a prior user of a mark is entitled to a registration covering the entire United States limited only to the extent that the subsequent user can establish that no likelihood of confusion exists and that it has concurrent rights in its actual area of use, plus its area of natural expansion." Pinocchio's Pizza v. Sandra Inc., 11 USPQ2d 1227, 1228 (TTAB 1989).
  • Explanation of geographic area of use for the prior and junior user of a registered marks.
    • CDS, Incorporated v. I.C.E.D. Management, Inc., Concurrent Use No. 94001250, (TTAB 2006).
      • ICED as the registrant and prior user "is entitled to a registration covering the entire United States, including areas of its use and nonuse, subject only to the exception of geographic areas where the junior user can prove prior use. The junior user is, in effect, frozen in its area of prior use." Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car Inc., 330 F.3d 1333, 66 USPQ2d 1811, 1818 (Fed. Cir. 2003). However, the area of "prior use" includes more than areas of actual use. The CCPA has held that: actual use in a territory was not necessary to establish rights in that territory, and that the inquiry should focus on the party's (1) previous business activity; (2) previous expansion or lack thereof; (3) dominance of contiguous areas; (4) presently-planned expansion; and, where applicable (5) possible market penetration by means of products brought in from other areas. Weiner King, Inc. v. The Weiner King Corp., 615 F.2d 512, 204 USPQ 820, 830 (CCPA 1980). Furthermore, use in a territory must be more "than a token attempt to conform with the requirement of the statute." Beatrice Foods, 166 USPQ at 436.
  • Advertising on the Internet does not automatically preclude concurrent use registration (and the presence of a disclaimer is helpful in avoiding confusion).
    • CDS, Incorporated v. I.C.E.D. Management, Inc., Concurrent Use No. 94001250, (TTAB 2006).
      • Also, in Allard Enterprises Inc. v. Advanced Programming Resources, 249 F.3d 564, 58 USPQ2d 1710, 1717 (6th Cir. 2001), the Court stated the following: "We also vacate the district court's injunction against Allard's use of the APR mark on the internet. Although we have held that APR has superior rights to use the mark, at a minimum, in central Ohio we decline to affirm the district court's conclusion that an injunction prohibiting Allard's use of the mark in a specific geographic area necessarily precludes any use of the mark by Allard on the internet… We suggest that, due to the paucity of case law addressing concurrent trademark rights and internet use, the district court may want to consider cases addressing the role of national advertising by parties with concurrent trademark rights. Courts have held in some cases that, despite a concurrent user with a territory of exclusive use, an almost-national user should be permitted some form of national advertising."
    • CDS, Incorporated v. I.C.E.D. Management, Inc., Concurrent Use No. 94001250, (TTAB 2006).
      • The Sixth Circuit has "found the existence of a disclaimer very informative, and [it] held that there was no likelihood of confusion, partly on that basis." Taubman Co. v. Webfeats, 319 F.3d 770, 65 USPQ2d 1834, 1839 (6th Cir. 2003), citing, In Holiday Inns, Inc. v. 800 Reservation, Inc., 86 F.3d 619, 39 USPQ2d 1181 (6th Cir. 1996).
    • CDS, Incorporated v. I.C.E.D. Management, Inc., Concurrent Use No. 94001250, (TTAB 2006).
      • Here, too, in the context of a concurrent use proceeding, and because of our view that advertising on the Internet does not automatically preclude concurrent use registration, we find that the presence of a disclaimer on CDS's website is likewise helpful in avoiding confusion in this case. Therefore, we conclude that the specific evidence of the parties' simultaneous use on the Internet in this case does not require us to find that there is a likelihood of confusion.
CDS, Incorporated v. I.C.E.D. Management, Inc., Concurrent Use No. 94001250, (TTAB 2006) Grand Total
Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car Inc., 330 F.3d 1333, 66 USPQ2d 1811 (Fed. Cir. 2003) 1
Taubman Co. v. Webfeats, 319 F.3d 770, 65 USPQ2d 1834 (6th Cir. 2003) 1
Allard Enterprises Inc. v. Advanced Programming Resources, 249 F.3d 564, 58 USPQ2d 1710 (6th Cir. 2001) 1
In Holiday Inns Inc. v. 800 Reservation Inc., 86 F.3d 619, 39 USPQ2d 1181 (6th Cir. 1996) 1
Pinocchio's Pizza v. Sandra Inc., 11 USPQ2d 1227 (TTAB 1989) 1
Weiner King Inc. v. The Weiner King Corp., 615 F.2d 512, 204 USPQ 820 (CCPA 1980) 1
In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431 (CCPA 1970) 1
Fort Howard Paper Co. v. Kimberly-Clark Corp., 55 CCPA 947, 390 F.2d 1015, 157 USPQ 55 (1968) 1
Grand Total 8 8

Sec. 1052. Trademarks registrable on principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--
  1. (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
  2. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
  3. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
  4. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director 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 (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
  5. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
  6. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.

 

 

Sec. 1065. Incontestability of right to use mark under certain conditions

Except on a ground for which application to cancel may be filed at any time under paragraphs (3) and (5) of section 1064 of this title, and except to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark, the right of the registrant to use such registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable: Provided, That--
    1. (1) there has been no final decision adverse to registrant's claim of ownership of such mark for such goods or services, or to registrant's right to register the same or to keep the same on the register; and
    2. (2) there is no proceeding involving said rights pending in the Patent and Trademark Office or in a court and not finally disposed of; and
    3. (3) an affidavit is filed with the Director within one year after the expiration of any such five-year period setting forth those goods or services stated in the registration on or in connection with which such mark has been in continuous use for such five consecutive years and is still in use in commerce, and other matters specified in paragraphs (1) and (2) of this section; and
    4. (4) no incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered.
Subject to the conditions above specified in this section, the incontestable right with reference to a mark registered under this chapter shall apply to a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905, upon the filing of the required affidavit with the Director within one year after the expiration of any period of five consecutive years after the date of publication of a mark under the provisions of subsection (c) of section 1062 of this title.
The Director shall notify any registrant who files the above- prescribed affidavit of the filing thereof.

 

 

C.F.R. Sec. 2.99. Application to register as concurrent user.

  1. (a) An application for registration as a lawful concurrent user will be examined in the same manner as other applications for registration.
  2. (b) If it appears that the applicant is entitled to have the mark registered, subject to a concurrent use proceeding, the mark will be published in the Official Gazette as provided by §2.80.
  3. (c) If no opposition is filed, or if all oppositions that are filed are dismissed or withdrawn, the Trademark Trial and Appeal Board will send a notification to the applicant for concurrent use registration (plaintiff) and to each applicant, registrant or user specified as a concurrent user in the application (defendants). The notification for each defendant shall state the name and address of the plaintiff and of the plaintiff's attorney or other authorized representative, if any, together with the serial number and filing date of the application. If a party has provided the Office with an e-mail address, the notification may be transmitted via e-mail.
  4. (d)
    1. (1) Within ten days from the date of the Board's notification, the applicant for concurrent use registration must serve copies of its application, specimens and drawing on each applicant, registrant or user specified as a concurrent user in the application for registration, as directed by the Board. If any service copy is returned to the concurrent use applicant as undeliverable, the concurrent use applicant must notify the Board within ten days of receipt of the returned copy.
    2. (2) An answer to the notice is not required in the case of an applicant or registrant whose application or registration is specified as a concurrent user in the application, but a statement, if desired, may be filed within forty days after the issuance of the notice; in the case of any other party specified as a concurrent user in the application, an answer must be filed within forty days after the issuance of the notice.
    3. (3) If an answer, when required, is not filed, judgment will be entered precluding the specified user from claiming any right more extensive than that acknowledged in the application(s) for concurrent use registration, but the applicant(s) will remain with the burden of proving entitlement to registration(s).
  5. (e) The applicant for a concurrent use registration has the burden of proving entitlement thereto. If there are two or more applications for concurrent use registration involved in a proceeding, the party whose application has the latest filing date is the junior party. A party whose application has a filing date between the filing dates of the earliest involved application and the latest involved application is a junior party to every party whose involved application has an earlier filing date. If any applications have the same filing date, the application with the latest date of execution will be deemed to have the latest filing date and that applicant will be the junior party. A person specified as an excepted user in a concurrent use application but who has not filed an application shall be considered a party senior to every party that has an application involved in the proceeding.
  6. (f) When a concurrent use registration is sought on the basis that a court of competent jurisdiction has finally determined that the parties are entitled to use the same or similar marks in commerce, a concurrent use registration proceeding will not be instituted if all of the following conditions are fulfilled:
    1. (1) The applicant is entitled to registration subject only to the concurrent lawful use of a party to the court proceeding; and
    2. (2) The court decree specifies the rights of the parties; and
    3. (3) A true copy of the court decree is submitted to the examiner; and
    4. (4) The concurrent use application complies fully and exactly with the court decree; and
    5. (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 specified in this paragraph is not satisfied, a concurrent use registration proceeding shall be prepared and instituted as provided in paragraphs (a) through (e) of this section.
  7. (g) Registrations and applications to register on the Supplemental Register and registrations under the Act of 1920 are not subject to concurrent use registration proceedings. Applications under section 1(b) of the Act of 1946 are subject to concurrent use registration proceedings only after the applicant files an acceptable allegation of use under §2.76 or §2.88. Applications based solely on section 44 or section 66(a) of the Act are not subject to concurrent use registration proceedings.
  8. (h) The Trademark Trial and Appeal Board will consider and determine concurrent use rights only in the context of a concurrent use registration proceeding.