TMEP 1207.04(e)(i): Preparing the Record for Publication

October 2017 Edition of the TMEP

Previous: §1207.04(e) | Next: §1207.04(f)

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. Pursuant to TBMP §1103.01(f),  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After publication, if no opposition is filed, or if any opposition that is filed is dismissed or withdrawn, the Trademark Trial and Appeal Board will institute the concurrent use proceeding.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 regarding concurrent use proceedings.