TMEP 1207.04(g): Application for Concurrent Use Registration Based on Final Board Decision in Prior Concurrent Use Proceeding

This is the October 2015 Edition of the TMEP

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1207.04(g)    Application for Concurrent Use Registration Based on Final Board Decision in Prior Concurrent Use Proceeding

A concurrent use registration may also be based on a final determination by the Trademark Trial and Appeal Board, in a prior concurrent use proceeding, that applicant is entitled to a concurrent use registration of its mark. TBMP §1103.02.

When examining an application for a concurrent use registration based on a final Board decision in a prior concurrent use proceeding, 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 all other requirements that would apply to an unrestricted application.

In addition, pursuant toTBMP §1103.02, the following conditions must be met:

  • (1) The applicant is entitled to registration subject only to the concurrent lawful use of a party or parties to the prior concurrent use proceeding;
  • (2) The Board’s prior decision specifies applicant’s right to concurrent use registration;
  • (3) A copy of the Board’s prior decision is submitted to the examining attorney;
  • (4) The concurrent use application complies with the Board’s prior decision, in that it seeks registration for the same, or a more limited, geographic area or mode of use than granted to the applicant in the prior decision; seeks registration for substantially the same mark or one less confusingly similar to those of the other party or parties in the prior proceeding; and seeks registration for substantially the same goods/services/collective membership organization as, or more limited goods/services/collective membership organization than those listed in the Board’s prior specification of the applicant’s entitlement to concurrent registration; 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 Board’s prior decision.

If the conditions listed above are satisfied, the examining attorney must ensure that the appropriate concurrent use statement for registration based on a final determination by the Board in a prior concurrent use proceeding is entered into the Trademark database (see TMEP §1207.04(g)(i)) and approve the application for publication. See TBMP §1103.02.

If any of the conditions listed above are not satisfied, the examining attorney will approve the application for publication subject to a new concurrent use registration proceeding before the Board (see TMEP §§1207.04(e), (e)(i)), rather than pursuant to a final decision of the Board in a prior concurrent use proceeding. See TBMP §1103.02.