One of the basic principles of trademark law in the United States is that the first party to adopt and use a mark has the right to continued, exclusive use of that mark in connection with their goods and/or services, and as such, they may prevent others from using the same mark or something similar that may cause confusion among prospective customers. However, the Lanham Trademark Act contains a provision under which an eligible trademark applicant may request issuance of a registration concurrent with the registration of a conflicting mark. This is known as a “concurrent use registration.”
While fairly rare, concurrent use registrations may be helpful for potential trademark applicants who seek the benefits of federal trademark registration, but whose use may potentially infringe on someone else’s trademark rights. In a typical concurrent use situation, the first user has limited its use of the mark to a geographically restricted area, or to a particular channel of trade (e.g., airports, hospitals, in-house) and the second user subsequently and innocently adopted the same mark or a confusingly similar mark, and began its use in a geographically distant area, on dissimilar goods or in a different market. A concurrent use registration permits both users to obtain federal trademark registration, with each registration being limited in such a manner as to prevent any significant likelihood of confusion among potential customers. In short, the parties agree to stay out of each other’s way and actively avoid stepping into the other’s territory (whether it’s the goods or geographically speaking).
An application for registration as a lawful concurrent user is generally examined in the same manner as any other trademark application. The USPTO Examining Attorney must examine the application to determine whether it complies with the basic requirements for registration, but the applicant must also comply with the following requirements for a concurrent use registration to issue:
1. The applicant must specify the goods and/or services, and the geographic area for which the applicant seeks registration of the mark.
2. The applicant must specify, to the extent of its knowledge, any exceptions to its claim of exclusive use, including any known concurrent use by others, the relevant goods or services offered, the geographic area, scope and period of said use.
3. The applicant must also list the names and addresses of the concurrent users, the registrations issued to or applications filed by them (if any), and the modes of use of the mark(s).
4. The verification for concurrent use should be modified to indicate an exception that no one else, except as specified in the application, has the right to use the mark.
In addition to the requirements noted above, which apply to all applications for concurrent use registration, concurrent use applicants may have to meet other conditions, depending on whether the application is subject to a concurrent use action before the Trademark Trial and Appeal Board (TTAB), or pursuant to a court decree.
For more information on concurrent use trademark registrations, or to discuss your specific concerns in more detail, contact us for a complimentary consultation with one of our trademark attorneys, (800) 769-7790.
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