TMEP 1207.04(d)(ii): Concurrent Use Application for a Collective or Certification Mark

October 2017 Edition of the TMEP

Previous: §1207.04(d)(i) | Next: §1207.04(e)

1207.04(d)(ii)    Concurrent Use Application for a Collective or Certification Mark

In addition to the requirements for a collective or certification mark application (see TMEP §§1303.01, 1304.02, 1306.02), a concurrent use application must include a verified statement in which the applicant attests to certain information. See 37 C.F.R. §2.42(b).

The required verified statement must include the following, to the extent known by the applicant:

  • (1) the applicant’s members’ or authorized users’ goods and/or services, for a collective trademark, collective service mark, or certification mark, or the nature of the applicant’s collective membership organization, for a collective membership mark;
  • (2) the geographic area in which the applicant’s members or authorized users are using the mark in commerce and the mode of use for which the applicant seeks registration;
  • (3) the concurrent users’ names and addresses and the registrations issued to or applications filed by the concurrent users (if any);
  • (4) the concurrent user’s members’ or authorized users’ goods and/or services, for a collective trademark, collective service mark, or certification mark, or the nature of the concurrent user’s collective membership organization, for a collective membership mark; and
  • (5) the geographic areas in which the concurrent user’s members or authorized users are using the mark in commerce, the mode of use by the concurrent users’ members or authorized users, and the time periods of such use by the concurrent users’ members or authorized users.

See 15 U.S.C. §§1051(a)(3)(D)  ,1054; 37 C.F.R. §2.42(b); TBMP §1101.

For a §1(a) collective mark application, an applicant must also modify the verified statement required for an unrestricted application under 37 C.F.R. §2.44(a)(4)(i)(D) (see TMEP §§1303.01(b)(i), 1304.02(b)(i)) to indicate an exception, i.e., that no other persons except members and the concurrent user(s) as specified in the application have the right to use the mark in commerce. 37 C.F.R. §2.44(d); see 15 U.S.C. §§1051(a)(3)(D), 1054.

For a §1(a) certification mark application, an applicant must also modify the verified statement required for an unrestricted application under 37 C.F.R. §2.45(a)(4)(i)(F) (see TMEP §1306.02(b)(i)) to indicate an exception, i.e., that no other persons except authorized users and concurrent user(s) as specified in the application have the right to use the mark in commerce. 37 C.F.R. §2.45(d); see 15 U.S.C. §§1051(a)(3)(D), 1054.

The applicant does not have to insert the information in the list above directly in the verification or declaration at the end of the application; this information may be set forth anywhere in the application as long as it is attested to by the applicant.

In addition to the requirements noted above, 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)).