TMEP 1207.04(f): Application for Concurrent Use Registration Pursuant to Court Decree

October 2017 Edition of the TMEP

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1207.04(f)    Application for Concurrent Use Registration Pursuant to Court Decree

The USPTO may issue a concurrent use registration pursuant to the final determination of a court of competent jurisdiction that more than one person is entitled to use the same or similar marks in commerce. 15 U.S.C. §1052(d). An applicant who seeks a concurrent use registration on the basis of a court determination does not have to be a prior user or obtain the consent of the owner of the involved mark. See Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 317-18, 189 USPQ 630, 633-34 (C.C.P.A. 1976); cf. Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 293 F.2d 685, 690-94, 130 USPQ 412, 417-20 (C.C.P.A. 1961); TBMP §1103.03.

When examining an application for concurrent use registration pursuant to the decree of a court, the examining attorney must determine whether the application complies with the specific requirements for concurrent use applications (see TMEP §1207.04(d)(i)-(ii)) and the requirements that would apply to an unrestricted application (see TMEP §§801-806.01(e) for trademarks and service marks, 1303.01 for collective trademarks and collective service marks, 1304.02 for collective membership marks, and 1306.02 for certification marks).

In addition, under 37 C.F.R. §2.99(f), all the following conditions must be met, or a concurrent use proceeding before the Board must be prepared and instituted:

  • (1) The applicant is entitled to registration subject only to the concurrent lawful use of a party to the court proceeding;
  • (2) The court decree specifies the rights of the parties;
  • (3) A true copy of the court decree is submitted to the examining attorney;
  • (4) The concurrent use application complies fully and exactly with the court decree; and
  • (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 listed above are not satisfied, the examining attorney will approve the application for publication subject to a concurrent use registration proceeding before the Board (see TMEP §§1207.04(e), (e)(i)), rather than pursuant to the court decree. See 37 C.F.R. §2.99(f).