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

October 2017 Edition of the TMEP

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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); America's Best Franchising Inc. v. Abbott, 106 USPQ2d 1540, 1549 (TTAB 2013) (citing In re Beatrice Foods Co., 429 F.2d 466, 472-73, 166 USPQ 431,435-36 (C.C.P.A. 1970)); In re The 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.