A concurrent use registration, in United States trademark law, is a federal trademark registration of the same trademark to two or more unrelated parties, with each party having a registration limited to a distinct geographic area. Such a registration is achieved by filing a concurrent use application (or by converting an existing application to a concurrent use application) and then prevailing in a concurrent use proceeding before the Trademark Trial and Appeal Board ("TTAB"), which is a judicial body within the United States Patent and Trademark Office ("USPTO"). A concurrent use application may be filed with respect to a trademark which is already registered or otherwise in use by another party, but may be allowed to go forward based on the assertion that the existing use can co-exist with the new registration without causing consumer confusion.
The authority for this type of registration is set forth in the Lanham Act, which permits concurrent use registration where the concurrent use applicant made a good-faith adoption of the mark prior to the registrant filing an application for registration. Such registrations are most commonly achieved by agreement of the parties involved, although the USPTO must still determine that no confusion will be caused.
Statutory basis The authority of the USPTO to issue a concurrent use registration is set forth in the Lanham Act, section 2 (d), enacted in 1947 and coded at , which states in relevant part:
Through these provisions, the Act effectively places three requirements on marks for which a later applicant seeks a concurrent use registration: 1) the later applicant must have used the mark in commerce prior to the time that the earlier registrant filed its application for registration, unless the senior registrant consents to the junior user's registration; 2) the later applicant's use in commerce must have been lawful 3) concurrent use of the marks must not result in a likelihood of confusion.
The statute essentially codifies the Tea Rose-Rectanus doctrine, established by the United States Supreme Court in two cases decided in 1916 and 1918.Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916) (the "Tea Rose" case), and United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). The Court had established in those cases that a junior user of a mark that is geographically remote from the senior user of the mark may establish priority over a senior user's claim to the mark in the junior user's area.
Any party may voluntarily limit the geographic scope of its application while conceding the rights of another party to a different geographic territory.TMEP § 1207.04(a), Concurrent Use – In General. A concurrent use application may not be filed based on a party's intent to use a mark, but must rely on actual use in commerce.TMEP § 1207.04(b), Filing Basis of Application Seeking Concurrent Use. The concurrent use application must identify all other parties who are entitled to use the mark, and provide the names and addresses of the parties identified.TMEP § 1207.04(d)(i), Requirements for All Concurrent Use Applications. Instead of making the usual assertion that no other party has the right to use the mark, the applicant must assert that no other party "except as specified in the application" has such a right.
Where two or more geographically unrestricted applications are pending at the same time, and no registration has yet been issued, the USPTO will proceed with the earliest application, and put all later applications on hold pending a determination on the earliest.TMEP § 1208.01, Priority for Publication or Issue Based on Effective Filing Date.
Use in commerce prior to an adverse filing for registration By the terms of the Act, the critical dates with respect to concurrent registration are the date of the applicant's first use and the earliest filing date of any other registrant. In other words, as the Trademark Trial and Appeal Board Manual of Procedure ("TBMP") states, "an application seeking concurrent registration through a concurrent use proceeding normally must assert a date of first use in commerce prior to the earliest application filing date of the application(s)... involved in the proceeding."TBMP § 1103.01(b) (2004). The TBMP has twelve chapters, numbered 100 through 1200; Chapter 1100 is dedicated entirely to the subject of "Concurrent Use Proceedings".
The Lanham Act requires that an Applicant's use in commerce must have been lawful. The TTAB (and its predecessor, the United States Court of Customs and Patent Appeals ("CCPA")) has read this to mean that the applicant's use must not have infringed another party's use at the time that applicant adopted its mark. Therefore, one potential pitfall facing applicant is that "[g]enerally, concurrent rights arise when a party, in good faith, and without knowledge of a prior party's use in another geographic area, adopts and uses the same or similar mark for the same or similar goods or services within its own geographic area."TBMP § 1103.01(d)(2).
The mere fact that an applicant's use was geographically remote from a registrant or other opposer's use does not establish good faith, as "courts have generally held that the remote use defense... is unavailable where the junior user adopts a substantially identical mark in a remote geographic area with full knowledge of the senior user's prior use elsewhere."Woman's World Shops Inc. v. Lane Bryant Inc., 1988 TTAB LEXIS 72 (TTAB 1988). However, the TTAB has also previously held that "mere knowledge of the existence of the prior user should not, by itself, constitute bad faith."Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 522 (CCPA 1980) (applicant did not know of a prior use of the mark at the time it was adopted, but the applicant expanded the use of its mark after learning of the prior use).
Likelihood of confusion The factors under which the TTAB evaluates the likelihood of confusion were established in In re E. I. du Pont de Nemours & Co.,In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). and are commonly referred to as the "du Pont factors".
The thirteen du Pont factors are: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. (3) The similarity or dissimilarity of established, likely-to-continue trade channels. (4) The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing. (5) The fame of the prior mark (sales, advertising, length of use). (6) The number and nature of similar marks in use on similar goods. (7) The nature and extent of any actual confusion. (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion. (9) The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark). (10) The market interface between applicant and the owner of a prior mark: (a) a mere "consent" to register or use. (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party. (c) assignment of mark, application, registration and good will of the related business. (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion. (11) The extent to which applicant has a right to exclude others from use of its mark on its goods. (12) The extent of potential confusion, i.e., whether de minimis or substantial. (13) Any other established fact probative of the effect of use.In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973).
In many instances, only a few of the categories will be applicable to the facts of the case before the TTAB.
Procedure to acquire The procedures to acquire such a registration are set forth in the TBMP Chapter 1100. They are initiated when a concurrent use application is submitted to the USPTO, which will initiate a concurrent use proceeding to determine if the applicant is entitled to such registration. An existing application that has been denied registration because of a conflict with an existing mark may be converted into a concurrent use application against that existing mark. In either case, the applicant must assert that its mark was used in commerce before the owner of the existing registration, called the "senior registrant", had filed its own application for registration. The applicant must also demonstrate that the marks can both be used in their specific geographic areas without causing a likelihood of confusion.
The USPTO will contact the senior registrant to inform that party of the claim against their mark. The proceeding in which the respective rights of the parties are determined is like a trial in which the applicant must submit evidence showing that the applicant had adopted the mark in good faith, that the applicant had adopted the mark prior to the senior registrant's date of registration, and that the confusion is not likely. The senior registrant may present evidence to the contrary, in order to prevent the loss of control over the use of the registered mark in the applicant's claimed territory. Both parties may take discovery in the form of requests for admission, interrogatories, requests for production, and depositions. As with a regular trial, the TTAB may be called upon to resolve disputes over whether discovery requests are overbroad, and whether discovery responses are inadequate.
The senior registrant in such a proceeding has ample incentive to oppose the grant of a concurrent use registration, because a registered trademark is presumed to apply throughout the entire United States. Thus, the grant of a concurrent use registration carves out some geographic territory from the senior registrant's exclusive control.
As 15 U.S.C. § 1052 (d) indicates, a concurrent use registration may also be issued "when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce." As a matter of right, the TTAB will issue such a registration pursuant to a court order that an applicant has the right to use its mark in certain geographic area. Where a court has issued such an order, a concurrent use proceeding is not needed, as evidence has already been taken in the court proceeding, and the rights of the parties have already been determined.
Most concurrent use proceedings result in a legal settlement between the parties.Cheryl L. Slay, in Brian E. Banner, Trademark Infringement Remedies, 2007 Cumulative Supplement (2007) p. 35. Frequently, one party will surrender its concurrent use claim and instead receive a trademark license from the other party. In other situations, each party may agree to geographic limitations on its use of the mark at issue, which the TTAB will honor if the settlement stipulates to facts which show that no confusion is likely. A benefit of such an agreement is that the parties can agree to terms beyond the scope of the TTAB's decision, such as specific restrictions on time and place of advertising, or modifications to the appearance of either mark. However, irrespective of the agreement reached, the TTAB must still make an independent finding that no consumer confusion is likely to result from the concurrent use registration. Even if both parties assert that no confusion is likely, the TTAB may still make findings of fact which demonstrate that confusion is likely, and deny registration to the junior user of the mark.