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 15 U.S.C. § 1052, 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
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 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 may 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. 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. 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. 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. 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.
Read more about this topic: Concurrent Use Registration
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