TMEP 1207.04(a): Concurrent Use – In General

October 2017 Edition of the TMEP

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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, 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. See15 U.S.C. §1051(a)(3)(D)37 C.F.R. §2.42(b); TBMP §§1102.01, 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. See15 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.