Concurrent Use Agreements For Trademark Registration

Trademark law in the United States provides that the first party to adopt and use a trademark has the right to continued, exclusive use of that mark in connection with their designated goods and/or services. Accordingly, they may prevent others from using the same mark or something similar in connection with related goods or service which may cause confusion among prospective customers.

This is the general rule. However, the Lanham Trademark Act contains a provision that permits an eligible trademark applicant to request issuance of a “concurrent use registration,” which effectively permits registration of a mark that otherwise conflicts with a similar registered mark, but the applicant meets the requirements for dual, or concurrent use, as explained herein.

In a typical concurrent use situation, the first trademark owner 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 trademark 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, each party agrees to stay out of the other party’s way and they both actively avoid stepping into the other’s territory (whether it’s the goods or geographically speaking).

Once filed at the USPTO, an application for concurrent use registration is generally examined in the same manner as any other trademark application. The USPTO Examiner must assess 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, 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.