Application for Concurrent Use Registration Pursuant to Court Decree

The USPTO may issue a concurrent use registration

pursuant to the final determination of a court of competent jurisdiction that

more than one person is entitled to use the same or similar marks in commerce.

15 U.S.C. §1052(d)

.  An applicant who

seeks a concurrent use registration on the basis of a court determination does

not have to be a prior user or obtain the consent of the owner of the involved

mark.

See Holiday Inn v. Holiday

Inns, Inc.

, 534 F.2d 312, 317-18, 189 USPQ

630, 633-34 (C.C.P.A.1976);

cf. Alfred Dunhill of London, Inc. v. Dunhill Tailored

Clothes, Inc.

, 293 F.2d 685, 690-94, 130

USPQ 412, 417-20 (C.C.P.A.1961);

TBMP §1103.03

.

When examining an application for concurrent use

registration pursuant to the decree of a court, the examining attorney must

determine whether the application complies with the specific requirements for

concurrent use applications (see

TMEP §1207.04(d)(i)-(ii)

) and the requirements that

would apply to an unrestricted application (see

TMEP

§§801-806.01(e)

for trademarks and service marks,

1303.01

for collective trademarks and

collective service marks,

1304.02

for

collective membership marks, and

1306.02

for certification marks).

In addition, under

37 C.F.R.

§2.99(f)

, all the following conditions must be met, or a

concurrent use proceeding before the Board must be prepared and instituted:

(1) The applicant is entitled to registration

subject only to the concurrent lawful use of a party to the court

proceeding;

(2) The court decree specifies the rights of

the parties;

(3) A true copy of the court decree is

submitted to the examining attorney;

(4) The concurrent use application complies

fully and exactly with the court decree; and

ing before the Board must be prepared and instituted:

(1) The applicant is entitled to registration

subject only to the concurrent lawful use of a party to the court

proceeding;

(2) The court decree specifies the rights of

the parties;

(3) A true copy of the court decree is

submitted to the examining attorney;

(4) The concurrent use application complies

fully and exactly with the court decree; and

(5) The excepted use specified in the

concurrent use application does not involve a registration, or any

involved registration has been restricted by the Director in accordance

with the court decree.

If any of the conditions listed above are

not

satisfied, the examining attorney will approve the

application for publication subject to a concurrent use registration proceeding

before the Board (

see

TMEP

§§1207.04(e)

,

(e)(i)

), rather than pursuant to the court decree.

See

37 C.F.R. §2.99(f)

.