Geographic Divisions
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.
The TTAB succinctly describes its territorial analysis in Weiner King, Inc. v. Wiener King Corp.:
| “ | Turning to the fundamental question in this case, i.e., who gets what territory, this court has suggested certain criteria which are helpful in resolving this question. In In re Beatrice Foods Co.... this court noted that actual use in a territory was not necessary to establish rights in that territory, and that the inquiry should focus on the party’s (1) previous business activity; (2) previous expansion or lack thereof; (3) dominance of contiguous areas; (4) presently-planned expansion; and, where applicable (5) possible market penetration by means of products brought in from other areas. | ” |
The TTAB has found that in concurrent use proceedings, "he area for which registration is sought is usually more extensive than the area in which applicant is actually using the mark." "As a general rule, a prior user of a mark is entitled to a registration covering the entire United States limited only to the extent that the subsequent user can establish that no likelihood of confusion exists and that it has concurrent rights in its actual area of use, plus its area of natural expansion."
Between lawful concurrent users of the same mark in geographically separate markets, the senior registrant has the right to maintain his registration for at least those market areas in which it is using the mark. However, the senior registrant does not always maintain the right to use the mark in territories not yet occupied by either party. In Pinocchio's Pizza, for example, the first applicant (but the junior user of the mark in commerce) owned one small restaurant in Maryland and had expressed no plans for expansion, while the second applicant (but senior user of the mark in commerce) owned multiple restaurants in Texas and was planning aggressive expansion. The TTAB held that "purpose of the statute is best served by granting applicant a registration for the entire United States except for registrant’s trading area." The TTAB therefore restricted the first applicant’s registration to permit exclusive use in Maryland, and within 50 miles of the first applicant’s restaurant in areas crossing into other states.
Furthermore, although the general rule provides that the entire United States should be covered by the respective registrations, it is permissible for parties to a proceeding to resolve the issue of territorial rights in a way that leaves some part of the country uncovered entirely. In a contested proceeding In re Beatrice Foods Co., the court held that the senior user of a mark was entitled to a registration covering the entire United States, outside of the junior user's area of actual use. However, the court went on to say:
| “ | The foregoing is not intended to imply that the Patent Office is required to issue registrations covering the whole of the United States in all circumstances. Certainly the applicant or applicants may always request territorially restricted registrations. In addition, in carrying out the Commissioner's duty under the proviso of § 2(d) of determining whether confusion, mistake or deception is likely to result from the continued concurrent use of a mark by two or more parties, it may be held that such likelihood will be prevented only when each party is granted a very limited territory with parts of the United States granted to no one. | ” |
The few courts that have considered the antitrust implications of concurrent use registration have determined that it does not raise any violation of antitrust laws. Although it is considered a violation of such laws for companies to agree to divide up geographic territories for the sale of goods, concurrent use agreements dividing up trademark territories are specifically provided for by Congress. Furthermore, even with such an agreement in place, a company can still sell competing products in the trademark territory of another company, so long as the intruding party sells that product under a different mark.
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