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. 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.