Concurrent use registration

A concurrent use regisation, in United States trademark law, is a federal registration of a mark already registered by another party based on the assertion that the existing registration can co-exist with the new one, if each mark is limited to a non-overlapping geographic area. The authority of the United States Patent and Trademark Office ("USPTO") to issue a concurrent use registration is set forth in the Lanham Act, section 2 (d) (15 U.S.C. § 1052 (d)), which states in relevant part:

Provided: That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to

(1) the earliest of the filing dates of the applications pending or of any registration issued under this Act;

(2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or

(3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947.

Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director 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. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.

Through these provisions, the Act effectively places three requirements on marks for which a later applicant seeks a concurrent use registration:

1) the mark for which the later applicant seeks registration must have been used in commerce prior to another party filing an application for registration of the similar mark;

2) the later applicant’s use in commerce must have been lawful

3) concurrent use of the marks may not result in a likelihood of confusion.

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 another registrant. In other words, "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." Trademark Trial and Appeal Board Manual of Procedure, ("TBMP") § 1103.01(b) (2004).

To acquire such a registration, a concurrent use application is submitted to the United States Patent and Trademark Office ("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 proceeding 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 registratant 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. The senior registrant 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 therefore carves out some geographic territory from the senior registrant's control.

A concurrent use registration may also be based on 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 settlement between the parties, which the USPTO will honor if the settlement stipulates to facts which show that no confusion is likely.

A concurrent use registration can be very detailed in the geographic divisions laid down. It may, for example, allow one party to own the right to use a mark within a fifty mile radius around a handful of selected cities or counties, while the other party owns the right to use the same mark everywhere else in the country. It may even divide the rights to use a mark within a particular city by reference to roads or other landmarks in that city.