CHAPTER 1100  CONCURRENT USE PROCEEDINGS

1101  In General

1102  Generation of Proceeding

1103  Parties to Proceeding; Involved Applications,
      Registrations

1104  Applications and Registrations Not Subject to
      Proceeding

1105  Commencement of Proceeding

1106  Answer

1107  Issue; Burden of Proof

1108  Conduct of Proceeding

1109  Settlement Providing for Concurrent Registration

1110  Effect of Abandonment of Involved Application

1111  Effect of Adverse Decision in Opposition or
      Cancellation

1112  "Conversion" of Opposition to Concurrent Use
      Proceeding

1113  Alteration of Limitations on Concurrent Registration

1101  In General

15 U.S.C.1052.  No trademark by which the goods of the
applicant may be distinguished from the goods of others
shall be refused registration on the principal register on
account of its nature unless it --

                        *     *     *
                              
(d) Consists of or comprises a mark which so resembles a
mark registered in the Patent and Trademark Office, or a
mark or trade name previously used in the United States by
another and not abandoned, as to be likely, when used on or
in connection with the goods of the applicant, to cause
confusion, or to cause mistake, or to deceive:  Provided,
That if the Commissioner 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 (1) the earliest of the filing dates of the
applications pending or of any registration issued under
this Act; (2) July 5, 1947, in the case of registrations
previously issued under the Act of March 3, 1881, or
February 20, 1905, and continuing in full force and effect
on that date; or (3) July 5, 1947, in the case of
applications filed under the Act of February 20, 1905, and
registered after July 5, 1947.  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 Commissioner 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 Commissioner 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.

15 U.S.C. 1067.  In every case of interference, opposition
to registration, application to register as a lawful
concurrent user, or application to cancel the registration
of a mark, the Commissioner shall give notice to all parties
and shall direct a Trademark Trial and Appeal Board to
determine and decide the respective rights of registration.
...

15 U.S.C. 1068.  In such proceedings the Commissioner may
refuse to register the opposed mark, may cancel the
registration, in whole or in part, may modify the
application or registration by limiting the goods or
services specified therein, may otherwise restrict or
rectify with respect to the register the registration of a
registered mark, may refuse to register any or all of
several interfering marks, or may register the mark or marks
for the person or persons entitled thereto, as the rights of
the parties hereunder may be established in the proceedings:
Provided, That in the case of the registration of any mark
based on concurrent use, the Commissioner shall determine
and fix the conditions and limitations provided for in
subsection (d) of section 2 of this Act.  ...

1101.01  Nature of Proceeding

A concurrent use registration proceeding (hereafter referred
to as a "concurrent use proceeding") is an inter partes
proceeding in which the Board determines whether one or more
applicants is entitled to a concurrent registration, that
is, a registration with conditions and limitations, fixed by
the Board, as to the mode or place of use of the applicant's
mark or the goods and/or services on or in connection with
which the mark is used.  See, for example, Sections 2(d),
17, and 18 of the Act, 15 U.S.C. 1052(d), 1067, and 1068;
Houlihan v. Parliament Import Co., 921 F.2d 1258, 17 USPQ2d
1208 (Fed. Cir. 1990); Gray v. Daffy Dan's Bargaintown, 823
F.2d 522, 3 USPQ2d 1306 (Fed. Cir. 1987); Weiner King, Inc.
v. Wiener King Corp., 615 F.2d 512, 204 USPQ 820 (CCPA
1980); Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587
(TTAB 1995); Georgia-Southern Oil Inc. v. Richardson, 16
USPQ2d 1723 (TTAB 1990); Pinocchio's Pizza Inc. v. Sandra
Inc., 11 USPQ2d 1227 (TTAB 1989); Women's World Shops Inc.
v. Lane Bryant Inc., 5 USPQ2d 1985 (TTAB 1988); Over the
Rainbow, Ltd. v. Over the Rainbow, Inc., 227 USPQ 879 (TTAB
1985); and Ole' Taco Inc. v. Tacos Ole, Inc., 221 USPQ 912
(TTAB 1984).

The Board's determination of registrability in a concurrent
use proceeding is governed by Section 2(d) of the Act.  That
section provides, in part, that if the Commissioner (acting
through the Board--see Section 17 of the Act, 15 U.S.C.
1067):
     ... 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 ...

a certain specified date (normally, prior to the earliest
application filing date of the application(s), or 1946 Act
registration(s) (if any), involved in the proceeding, or
prior to July 5, 1947, in the case of an involved
registration under the Acts of 1881 or 1905--see:  TBMP
1102.02(a)(2)).  See, for example, Fleming Companies v.
Thriftway Inc., 26 USPQ2d 1551 (S.D.Ohio 1992); Houlihan v.
Parliament Import Co., 921 F.2d 1258, 17 USPQ2d 1208 (Fed.
Cir. 1990); Gray v. Daffy Dan's Bargaintown, 823 F.2d 522, 3
USPQ2d 1306 (Fed. Cir. 1987); In re Beatrice Foods Co., 429
F.2d 466, 166 USPQ 431 (CCPA 1970); Tamarkin Co. v. Seaway
Food Town Inc., 34 USPQ2d 1587 (TTAB 1995); DataNational
Corp. v. BellSouth Corp., 18 USPQ2d 1862 (TTAB 1991);
Georgia-Southern Oil Inc. v. Richardson, 16 USPQ2d 1723
(TTAB 1990); and Over the Rainbow, Ltd. v. Over the Rainbow,
Inc., 227 USPQ 879 (TTAB 1985).

1101.02  Context for PTO Determination of Concurrent Rights

37 CFR 2.99(h) The Trademark Trial and Appeal Board will
consider and determine concurrent use rights only in the
context of a concurrent use registration proceeding.

37 CFR 2.133(c) Geographic limitations will be considered
and determined by the Trademark Trial and Appeal Board only
in the context of a concurrent use registration proceeding.

Within the PTO, the right to concurrent registration is
determined by the Board.  See Sections 2(d), 17, and 18 of
the Act, 15 U.S.C. 1052(d), 1067, and 1068.  Concurrent
rights are considered and determined by the Board only in
the context of a concurrent use proceeding.  See, for
example, 37 CFR 2.99(h) and 2.133(c); Stock Pot
Restaurant, Inc. v. Stockpot, Inc., 737 F.2d 1576, 222 USPQ
665 (Fed. Cir. 1984); Mother's Restaurant Inc. v. Mama's
Pizza, Inc., 723 F.2d 1566, 221 USPQ 394 (Fed. Cir. 1983);
Rosso & Mastracco, Inc. v. Giant Food Inc., 720 F.2d 1263,
219 USPQ 1050 (Fed. Cir. 1983); Selfway, Inc. v. Travelers
Petroleum, Inc., 579 F.2d 75, 198 USPQ 271 (CCPA 1978);
American Security Bank v. American Security and Trust Co.,
571 F.2d 564, 197 USPQ 65 (CCPA 1978); Giant Food Inc. v.
Malone & Hyde, Inc., 522 F.2d 1386, 187 USPQ 374 (CCPA
1975); Hollowform, Inc. v. Delma AEH, 515 F.2d 1174, 185
USPQ 790 (CCPA 1975); Snuffer & Watkins Management Inc. v.
Snuffy's Inc., 17 USPQ2d 1815 (TTAB 1990); In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Village Inn Pizza
Parlors, Inc. v. Los Tios Mexican Restaurants, Inc., 215
USPQ 476 (TTAB 1982); U.S. Soil, Inc. v. Colovic, 214 USPQ
471 (TTAB 1982); May Department Stores Co. v. Prince, 200
USPQ 803 (TTAB 1978); and Zimmerman v. Holiday Inns of
America, Inc., 123 USPQ 86 (TTAB 1959).

A registration cannot be restricted territorially by
amendment under Section 7(e) of the Act, 15 U.S.C. 1057(e),
and 37 CFR 2.173(a), nor may a Section 7(e) amendment
generally be used to remove a concurrent use restriction
from a registration.  However, removal of a concurrent use
restriction by amendment under Section 7(e) may be permitted
where an entity which was the only exception to registrant's
right to exclusive use of its registered mark assigns its
rights in its mark to registrant, so that all rights in the
mark are merged in registrant.  See TBMP 1113, and cases
cited therein.

1101.03  Bases for Concurrent Registration

There are two bases upon which a concurrent registration may
be issued.

First, a concurrent registration may be issued when the
Board has determined, in a concurrent use proceeding, that
an applicant for concurrent registration is entitled
thereto.  See TBMP 1101.01, and authorities cited therein.

Second, a concurrent registration may be issued "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."  See Section 2(d) of the Act, 15 U.S.C.
1052(d).  See also 37 CFR 2.99(f); Holiday Inn v. Holiday
Inns, Inc., 534 F.2d 312, 189 USPQ 630 (CCPA 1976); Alfred
Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc.,
293 F.2d 685, 130 USPQ 412 (CCPA 1961), cert. denied, 369
U.S. 864, 133 USPQ 702 (1962); Morgan Services Inc. v.
Morgan Linen Services Inc., 12 USPQ2d 1841 (TTAB 1989); In
re Forbo, 4 USPQ2d 1415 (Comm'r 1984); In re Alfred Dunhill
Ltd., 4 USPQ2d 1383 (Comm'r 1987); and Chichi's, Inc. v. Chi-
Chi's, Inc., 222 USPQ 831 (Comm'r 1984).

1102  Generation of Proceeding

1102.01  Means of Generation

A concurrent use proceeding before the Board may be
generated only by way of an application for registration as
a lawful concurrent user (hereafter referred to as a
"concurrent use application").  See Chichi's, Inc. v. Chi-
Chi's, Inc., 222 USPQ 831 (Comm'r 1984); Inland Oil &
Transport Co. v. IOT Corp., 197 USPQ 562 (TTAB 1977);
Hollowform, Inc. v. Delma AEH, 180 USPQ 284 (TTAB 1973),
aff'd, 515 F.2d 1174, 185 USPQ 790 (CCPA 1975); Janet E.
Rice, TIPS FROM THE TTAB:  Concurrent Use Applications and
Proceedings, 72 Trademark Rep. 403 (1982); and Rany L.
Simms, TIPS FROM THE TTAB:  The Concurrent User as Opposer,
67 Trademark Rep. 654 (1977).  A concurrent use application
is an application in which applicant (1) concedes that its
use is not exclusive, (2) specifies the goods and/or
services and area or mode of use for which it desires
registration, (3) identifies, as exceptions to its claim of
exclusive use, one or more persons (unrelated to applicant)
which use the same or similar mark, for the same or similar
goods or services, concurrently with applicant, and (4)
provides, to the extent of the applicant's knowledge,
certain information concerning use of the mark by each
listed concurrent user.  See Sections 1(a)(1)(A) and 2(d) of
the Act, 15 U.S.C. 1051(a)(1)(A) and 1052(d); 37 CFR
2.42; and TMEP 202.04(c); 1207.04(b); and 1207.04(d).
For further information concerning the requirements for a
concurrent use application, see TBMP 1102.02.

There are two types of concurrent use applications, namely,
the application seeking concurrent registration on the basis
of a Board determination, in a prior or to-be-instituted
concurrent use proceeding, of registrability; and the
application seeking concurrent registration on the basis of
a prior court determination of concurrent rights.  These two
types of concurrent use applications are the only means by
which a geographically restricted registration may be
obtained.  See TBMP 1101.02 and 1101.03.  Thus, for
example, an applicant may not, by including a geographical
restriction in its identification of goods and/or services,
obtain a geographically restricted registration without a
concurrent use proceeding.  See In re Home Federal Savings &
Loan Ass'n, 213 USPQ 68 (TTAB 1982).

If an application seeking concurrent registration on the
basis of the Board's decision in a prior concurrent use
proceeding meets certain requirements (in addition to those
necessary for all concurrent use applications--see 37 CFR
52.42, and TBMP 1102.02), the registration sought, if
otherwise appropriate, will be issued based on the Board's
prior decision.  A new concurrent use proceeding before the
Board will not be necessary, because of the legal principles
of res judicata and stare decisis.  Cf. 37 CFR 2.99(f).
For information concerning the requirements for an
application seeking concurrent registration on the basis of
the Board's decision in a prior concurrent use proceeding,
see TBMP 1102.02(a)(4).

Similarly, if an application seeking concurrent registration
on the basis of a prior court determination of concurrent
rights meets certain requirements, in addition to those
necessary for all concurrent use applications, the
registration sought, if otherwise appropriate, will be
issued based on the court determination, without any
concurrent use proceeding before the Board.  See 37 CFR
2.99(f).  For information concerning the requirements for
an application seeking concurrent registration on the basis
of a prior court determination of concurrent rights, see
TBMP 1102.02(b).

1102.02  Requirements for Concurrent Use Application

15 U.S.C. 1051(a) The owner of a trademark used in commerce
may apply to register his or her trademark under this Act on
the principal register hereby established:
     (1) By filing in the Patent and Trademark Office--
          (A) a written application, in such form as may be
prescribed by the Commissioner, ... Provided, That in the
case of every application claiming concurrent use the
applicant shall state exceptions to his claim of exclusive
use, in which he shall specify, to the extent of his
knowledge, any concurrent use by others, the goods on or in
connection with which and the areas in which each concurrent
use exists, the periods of each use, and the goods and area
for which the applicant desires registration; ...

15 U.S.C.1052.  No trademark by which the goods of the
applicant may be distinguished from the goods of others
shall be refused registration on the principal register on
account of its nature unless it --

                        *     *     *
                              
(d) Consists of or comprises a mark which so resembles a
mark registered in the Patent and Trademark Office, or a
mark or trade name previously used in the United States by
another and not abandoned, as to be likely, when used on or
in connection with the goods of the applicant, to cause
confusion, or to cause mistake, or to deceive:  Provided,
That if the Commissioner 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 (1) the earliest
of the filing dates of the applications pending or of any
registration issued under this Act; (2) July 5, 1947, in the
case of registrations previously issued under the Act of
March 3, 1881, or February 20, 1905, and continuing in full
force and effect on that date; or (3) July 5, 1947, in the
case of applications filed under the Act of February 20,
1905, and registered after July 5, 1947.  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 Commissioner 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
Commissioner 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.

37 CFR 2.42 Concurrent use.
An application for registration as a lawful concurrent user
shall specify and contain all the elements required by the
preceding sections.  The applicant in addition shall state
in the application the area, the goods, and the mode of use
for which applicant seeks registration; and also shall
state, to the extent of applicant's knowledge, the
concurrent lawful use of the mark by others, setting forth
their names and addresses; registrations issued to or
applications filed by such others, if any; the areas of such
use; the goods on or in connection with which such use is
made; the mode of such use; and the periods of such use.

37 CFR 2.73(b) An application under section 1(b) of the Act
may not be amended so as to be treated as an application for
a concurrent registration until an acceptable amendment to
allege use under 2.76 or statement of use under 2.88 has
been filed in the application, after which time such an
amendment may be made, provided the application as amended
satisfies the requirements of 2.42.  The examiner will
determine whether the application, as amended, is
acceptable.

37 CFR 2.99 Application to register as concurrent user.
(a) An application for registration as a lawful concurrent
user will be examined in the same manner as other
applications for registration.

(b) When it is determined that the mark is ready for
publication, the applicant may be required to furnish as
many copies of his application, specimens and drawing as may
be necessary for the preparation of notices for each
applicant, registrant or user specified as a concurrent user
in the application for registration.

(c) Upon receipt of the copies required by paragraph (b) of
this section, the examiner shall forward the application for
concurrent use registration for publication in the Official
Gazette as provided by 2.80.  If no opposition is filed, or
if all oppositions that are filed are dismissed or
withdrawn, the Trademark Trial and Appeal Board shall
prepare a notice for the applicant for concurrent use
registration and for each applicant, registrant or user
specified as a concurrent user in the application.  The
notices for the specified parties shall state the name and
address of the applicant and of the applicant's attorney or
other authorized representative, if any, together with the
serial number and filing date of the application.

(d)(1) The notices shall be sent to each applicant, in care
of his attorney or other authorized representative, if any,
to each user, and to each registrant.  A copy of the
application shall be forwarded with the notice to each party
specified in the application.

(2) An answer to the notice is not required in the case of
an applicant or registrant whose application or registration
is specified as a concurrent user in the application, but a
statement, if desired, may be filed within forty days after
the mailing of the notice; in the case of any other party
specified as a concurrent user in the application, an answer
must be filed within forty days after the mailing of the
notice.

(3) If an answer, when required, is not filed, judgment will
be entered precluding the specified user from claiming any
right more extensive than that acknowledged in the
application(s) for concurrent use registration, but the
applicant(s) will remain with the burden of proving
entitlement to registration(s).

(e) The applicant for a concurrent use registration has the
burden of proving entitlement thereto.  If there are two or
more applications for concurrent use registration involved
in a proceeding, the party whose application has the latest
filing date is the junior party.  A party whose application
has a filing date between the filing dates of the earliest
involved application and the latest involved application is
a junior party to every party whose involved application has
an earlier filing date.  If any applications have the same
filing date, the application with the latest date of
execution will be deemed to have the latest filing date and
that applicant will be the junior party.  A person specified
as an excepted user in a concurrent use application but who
has not filed an application shall be considered a party
senior to every party that has an application involved in
the proceeding.

(f) When a concurrent use registration is sought on the
basis that a court of competent jurisdiction has finally
determined that the parties are entitled to use the same or
similar marks in commerce, a concurrent use registration
proceeding will not be instituted if all of the following
conditions are fulfilled:
     (1) The applicant is entitled to registration subject
only to the concurrent lawful use of a party to the court
proceeding; and
     (2) The court decree specifies the rights of the
parties; and
     (3) A true copy of the court decree is submitted to the
examiner; and
     (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 Commisssioner in
accordance with the court decree.
If any of the conditions specified in this paragraph is not
satisfied, a concurrent use registration proceeding shall be
prepared and instituted as provided in paragraphs (a)
through (e) of this section.

(g)Registrations and applications to register on the
Supplemental Register and registrations under the Act of
1920 are not subject to concurrent use registration
proceedings.  Applications to register under section 1(b) of
the Act of 1946 are subject to concurrent use registration
proceedings only after an acceptable amendment to allege use
under 2.76 or statement of use under 2.88 has been filed.

(h) The Trademark Trial and Appeal Board will consider and
determine concurrent use rights only in the context of a
concurrent use registration proceeding.

1102.02(a)  Application Based on Board Determination

1102.02(a)(1)  Application Must Assert Use in Commerce

A basic requirement for any concurrent use application
(whether it is to be based on a Board determination, through
a concurrent use proceeding, of applicant's right to
concurrent registration, or whether it is based on a prior
court determination of applicant's concurrent use rights) is
that it must assert use in commerce of the mark sought to be
registered.  Section 2(d) of the Act, 15 U.S.C. 1052(d),
provides, in pertinent part:

     [I]f the Commissioner 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 (1) the earliest of the filing dates of the applications
     pending or of any registration issued under this Act; ...
     Concurrent registrations may also be issued by the
     Commissioner 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." (emphasis added)

See also 37 CFR 2.99(g), and Fleming Companies v. Thriftway
Inc., 26 USPQ2d 1551 (S.D.Ohio 1992) (use must be lawful).

If a concurrent use application is filed as an intent-to-use
application under Section 1(b) of the Act, 15 U.S.C.
1051(b), rather than as a use application under Section
1(a) of the Act, 15 U.S.C. 1051(a), the application is
void.  See 37 CFR 2.99(g); TMEP 1207.04(b); and Marc A.
Bergsman, TIPS FROM THE UNITED STATES PATENT AND TRADEMARK
OFFICE TTAB:  Concurrent Use and Intent-to-Use Applications,
83 Trademark Rep. 416 (1993).  However, an intent-to-use
application for an unrestricted registration may be amended
to seek concurrent registration when an acceptable amendment
to allege use under 37 CFR 2.76, or an acceptable statement
of use under 37 CFR 2.88, has been filed in the
application.  See 37 CFR 2.73(b), and Marc A. Bergsman,
TIPS FROM THE UNITED STATES PATENT AND TRADEMARK OFFICE
TTAB:  Concurrent Use and Intent-to-Use Applications, supra.

An application for registration under the provisions of
Section 44 of the Act, 15 U.S.C. 1126, may not seek
concurrent registration unless the application also
includes, as a second basis for registration, an allegation
of use in commerce pursuant to Section 1(a) of the Act.  See
TMEP 1207.04(b).

1102.02(a)(2)  Jurisdictional Requirement

An application seeking concurrent registration based on a
Board determination, through a concurrent use proceeding, of
applicant's right thereto, must allege use in commerce
"prior to (1) the earliest of the filing dates of the
applications pending or of any registration issued under
this Act [of 1946]; (2) July 5, 1947, in the case of
registrations previously issued under the Act of March 3,
1881, or February 20, 1905, and continuing in full force and
effect on that date; or (3) July 5, 1947, in the case of
applications filed under the Act of February 20, 1905, and
registered after July 5, 1947."  See Section 2(d) of the
Act, 15 U.S.C. 1052(d).  See also Gray v. Daffy Dan's
Bargaintown, 823 F.2d 522, 3 USPQ2d 1306 (Fed. Cir. 1987);
In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431 (CCPA
1970); Morgan Services Inc. v. Morgan Services Inc., 12
USPQ2d 1841 (TTAB 1989); My Aching Back Inc. v. Klugman, 6
USPQ2d 1892 (TTAB 1988); Over the Rainbow, Ltd. v. Over the
Rainbow, Inc., 227 USPQ 879 (TTAB 1985); and In re Home
Federal Savings & Loan Ass'n, 213 USPQ 68 (TTAB 1982).  As a
practical matter, this means that an application seeking
concurrent registration through a concurrent use proceeding
normally must assert a date of first use in commerce prior
to the earliest application filing date of the
application(s), or 1946 Act registration(s) (if any),
involved in the proceeding (or prior to July 5, 1947, in the
case of an involved registration under the Acts of 1881 or
1905).

This requirement is jurisdictional in nature.  See Gray v.
Daffy Dan's Bargaintown, 823 F.2d 522, 3 USPQ2d 1306 (Fed.
Cir. 1987); In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ
431 (CCPA 1970); Tamarkin Co. v. Seaway Food Town Inc., 34
USPQ2d 1587 (TTAB 1995); Morgan Services Inc. v. Morgan
Services Inc., 12 USPQ2d 1841 (TTAB 1989); My Aching Back
Inc. v. Klugman, 6 USPQ2d 1892 (TTAB 1988); and Over the
Rainbow, Ltd. v. Over the Rainbow, Inc., 227 USPQ 879 (TTAB
1985).  If it is not met, applicant normally is not entitled
to a concurrent registration, and the Trademark Examining
Attorney in charge of the application should refuse
registration.

However, an application for concurrent registration need not
meet the jurisdictional requirement, that is, need not
assert use in commerce prior to the earliest application
filing date of the application(s), or registration(s) (if
any), involved in the proceeding if the owner of such
application(s) or registration(s) consents to the grant of a
concurrent registration to the applicant.  See Section 2(d)
of the Act, 15 U.S.C. 1052(d).

In addition, the jurisdictional requirement does not apply
to an application seeking concurrent registration based on a
final determination, by a court of competent jurisdiction,
that applicant is entitled to concurrently use its mark.
See TBMP 1102.02(b), and authorities cited therein.

1102.02(a)(3)  Other Requirements

A concurrent use application must specify and contain all
the elements required by those of the rules of practice in
trademark cases preceding 37 CFR 2.42.  See 37 CFR 2.42.

In addition, the applicant must:

(1) State in the application the area, goods and/or
services, and (if applicable) mode of use for which
applicant seeks registration--see 37 CFR 2.42.  See also
Section 1(a) of the Act, 15 U.S.C. 1051(a).

The statement in the application of the area, goods and/or
services, and (if applicable) mode of use for which
applicant seeks registration serves to give notice, both
when the mark is published for opposition (assuming it is
approved for publication) and when a concurrent use
proceeding is thereafter instituted (if no opposition is
filed, or if all oppositions filed are dismissed), of the
scope of the registration sought by applicant, and the
extent of applicant's acknowledgment of the concurrent
rights of others.  See 37 CFR 2.99(d)(1) and 2.99(d)(3);
In re Wells Fargo & Co., 231 USPQ 95 (TTAB 1986); and In re
El Chico Corp., 159 USPQ 740 (TTAB 1968).  See also Pro-Cuts
v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224 (TTAB
1993).

The vast majority of concurrent use applications seek a
registration which is restricted geographically.  The area
for which registration is sought is usually more extensive
than the area in which the applicant is actually using its
mark.  For example, if applicant believes that it is the
prior user as against the other party or parties to the
proceeding, applicant is likely, as the prior user, to seek
registration for all of the United States except for the
subsequent user's area of actual use and (possibly) natural
expansion.  If applicant is not the prior user, but believes
that the prior user, through its failure to expand over a
long period of time, has abandoned its right as prior user
to expand into all of the United States except for the
subsequent user's area of actual use and natural expansion,
applicant may seek registration for all of the United States
except for the prior user's area of actual use.  See, for
example, Weiner King, Inc. v. Wiener King Corp., 615 F.2d
512, 204 USPQ 820 (CCPA 1980), and Pinocchio's Pizza Inc. v.
Sandra Inc., 11 USPQ2d 1227 (TTAB 1989).  If the concurrent
use applicant is a subsequent user, it normally will seek
registration not only for its area of actual use but also
for its area of natural expansion.  If another party to the
proceeding owns a registration of its mark, the right to use
of which has become incontestable, any registration issued
to applicant will be limited (even if applicant is the prior
user) to applicant's area of actual use prior to actual or
constructive notice of registrant's rights, unless the
parties stipulate otherwise.  See Sections 15 and 33(b)(5)
of the Act, 15 U.S.C. 1065 and 1115(b)(5); Holiday Inn v.
Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630 (CCPA 1976);
and Thriftimart, Inc. v. Scot Lad Foods, Inc., 207 USPQ 330
(TTAB 1980).

In very rare instances, a concurrent use applicant may seek
concurrent registration based only on conditions or
limitations as to the mode of use of its mark or as to the
goods and/or services on or in connection with which the
mark is used, i.e., a restriction as to the form in which it
may use its mark; a limitation as to the trade channels in
which its goods are sold; a requirement that the mark always
be used in conjunction with a particular trade dress or
house mark, or a specified disclaimer of affiliation; etc.
See, for example, Holiday Inn v. Holiday Inns, Inc., 534
F.2d 312, 189 USPQ 630 (CCPA 1976); Alfred Dunhill of
London, Inc. v. Dunhill Tailored Clothes, Inc., 293 F.2d
685, 130 USPQ 412 (CCPA 1961), cert. denied, 369 U.S. 864,
133 USPQ 702 (1962); Tamarkin Co. v. Seaway Food Town Inc.,
34 USPQ2d 1587 (TTAB 1995); and In re Wells Fargo & Co., 231
USPQ 95 (TTAB 1986).  Usually, "mode of use" cases arise
before the Federal district courts, which, for equitable
reasons, may permit a continuation of concurrent use even if
there is some resulting confusion.  Notwithstanding the
likelihood of confusion, a party to the court proceeding may
obtain concurrent registration on the basis of such a court
determination, if its application is otherwise acceptable.
See, for example, Section 2(d) of the Act, 15 U.S.C.
1052(d); Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312,
189 USPQ 630 (CCPA 1976); and Alfred Dunhill of London, Inc.
v. Dunhill Tailored Clothes, Inc., 293 F.2d 685, 130 USPQ
412 (CCPA 1961), cert. denied, 369 U.S. 864, 133 USPQ 702
(1962).  In contrast, when concurrent registration is sought
by way of a concurrent use proceeding before the Board, the
Board cannot allow registration if it finds that there would
be likelihood of confusion from the continued concurrent use
of the marks.  See Section 2(d) of the Act, 15 U.S.C.
1052(d); Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312,
189 USPQ 630 (CCPA 1976); and Tamarkin Co. v. Seaway Food
Town Inc., 34 USPQ2d 1587 (TTAB 1995).

An applicant seeking registration on the basis of "mode of
use" conditions or limitations should request concurrent
registration only if its application includes a condition or
limitation not capable of being incorporated into the
applicant's drawing of its mark and/or identification of
goods or services, and into the drawing and/or
identification of any conflicting application or
registration which may be owned by another.  See Tamarkin
Co. v. Seaway Food Town Inc., 34 USPQ2d 1587 (TTAB 1995).

Where an applicant seeks registration on the basis of "mode
of use" conditions or limitations which are incorporated, or
are capable of being incorporated, into the applicant's
drawing of its mark and/or identification of goods or
services, and into the drawing and/or identification of any
conflicting application or registration which may be owned
by another, a concurrent use proceeding is unnecessary and
will not be instituted by the Board.  The application should
be presented as a regular application, not as a concurrent
use application.  See Tamarkin Co. v. Seaway Food Town Inc.,
34 USPQ2d 1587 (TTAB 1995).  If an applicant which has
incorporated mode of use conditions or limitations into its
drawing and/or identification is unable to obtain a
registration in the absence of corresponding conditions or
limitations in a conflicting application or registration,
and the owner thereof is not willing to amend its
application or registration to include the conditions or
limitations, applicant's remedy lies in an opposition or a
petition for cancellation, respectively, to restrict the
application or registration appropriately.  See Tamarkin Co.
v. Seaway Food Town Inc., 34 USPQ2d 1587 (TTAB 1995).  For
information concerning a claim for partial opposition or
partial cancellation, i.e., a request to restrict, see TBMP
311.

(2) State in the application, to the extent of applicant's
knowledge, the concurrent lawful use of the mark by others,
setting forth their names and addresses; their areas of use;
the goods and/or services on or in connection with which
their use is made; the mode of their use; the periods of
their use; and the registrations issued to or applications
filed by them, if any--See 37 CFR 2.42.  See also Section
1(a) of the Act, 15 U.S.C. 1051(a); Gallagher's Restaurants
Inc, v. Gallagher's Farms Inc., 3 USPQ2d 1864 (TTAB 1986);
In re Wells Fargo & Co., 231 USPQ 106 (TTAB 1986); and In re
El Chico Corp., 159 USPQ 740 (TTAB 1968).

It is not necessary that an applicant for concurrent
registration list, as exceptions to its claim of exclusive
use, every entity known to it to be using the same or
similar mark for the same or similar goods or services.
Rather, applicant's duty is to list any entity known to it
to be a senior user of a clearly conflicting mark, as well
as any junior user known to it to have clearly conflicting
rights which are clearly established, as, for example, by
court decree, by settlement agreement, or by a registration.
See Rosso & Mastracco, Inc. v. Giant Food Inc., 720 F.2d
1263, 219 USPQ 1050 (Fed. Cir. 1983), and Pennsylvania
Fashion Factory, Inc. v. Fashion Factory, Inc., 215 USPQ
1133 (TTAB 1982).  See also In re Sun Refining & Marketing
Co., 23 USPQ2d 1072 (TTAB 1991).  Cf. SCOA Industries Inc.
v. Kennedy & Cohen, Inc., 188 USPQ 411 (TTAB 1975).

(3) When it is determined that applicant's mark is ready for
publication, applicant may also be required to furnish a
copy of its application, specimens and drawing for each
applicant, registrant or user specified in the application
as a concurrent user--see 37 CFR 2.99(b).  Cf.:  37 CFR
2.99(c).

The additional application copies required by 37 CFR
2.99(b) are used by the Board, when it institutes a
concurrent use proceeding, to provide each specified
concurrent user with information concerning the scope of the
concurrent registration sought by each concurrent use
applicant, and the extent of each concurrent use applicant's
acknowledgment of the concurrent rights of others.  See TBMP
1105.

When an application seeking concurrent registration by way
of a concurrent use proceeding before the Board is approved
for publication, it is marked (by the Trademark Examining
Attorney) with the following statement:  SUBJECT TO
CONCURRENT USE PROCEEDING WITH              .  APPLICANT
CLAIMS EXCLUSIVE RIGHT TO USE THE MARK IN THE AREA
COMPRISING
             .  The first blank is filled in with the
number(s) of the involved application(s) or registration(s)
owned by the other party or parties to the proceeding.  If
any such party does not own an application or registration
of its involved mark, then the name and address of the party
is inserted in the first blank space.  The second blank is
filled in with the area for which applicant seeks
registration.

For information concerning the examination, by the Trademark
Examining Attorney, of a concurrent use application, see
TMEP 1207.04(d)(i) and 1207.04(d)(ii).

1102.02(a)(4)  Application Based on Prior Board Decision

An application seeking concurrent registration on the basis
of the Board's final decision in a prior concurrent use
proceeding (see TBMP 1102.01) must assert use in commerce
of the mark sought to be registered.  See TBMP
1102.02(a)(1), and authorities cited therein.  The
application must also specify and contain all the elements
required by those of the rules of practice in trademark
cases preceding 37 CFR 2.42; and must comply with the
requirements of 37 CFR 2.42 (described in TBMP
1102.02(a)(3)), namely, the requirements that applicant
state in the application the area, goods and/or services,
and (if applicable) mode of use for which applicant seeks
registration, and also state, to the extent of applicant's
knowledge, the concurrent lawful use of the mark by others,
setting forth their names and addresses, their areas of use,
the goods and/or services on or in connection with which
their use is made, the mode of their use, the periods of
their use, and the registrations issued to or applications
filed by them, if any.  See 37 CFR 2.42.  In addition, the
applicant should, of course, submit a copy of the Board
decision upon which it relies.

When an application for concurrent registration is based on
a final determination by the Board, in a prior concurrent
use proceeding, that applicant is entitled to a concurrent
registration of its mark, a new concurrent use proceeding
will not be instituted, that is, the application (if found
otherwise acceptable, published, and not opposed, or opposed
unsuccessfully) will be forwarded to issue without having to
go through a new concurrent use proceeding, provided that
the following conditions are met:
     (1) The applicant is entitled to registration subject
only to the concurrent lawful use of a party or parties to
the prior concurrent use proceeding; and
     (2) The Board's prior decision specifies applicant's
right to concurrent registration; and
     (3) A copy of the Board's prior decision is submitted
to the Trademark Examining Attorney; and
     (4) The concurrent use application complies with the
Board's prior decision (that is, seeks registration for the
same or a more limited geographic area, or mode of use, and
for substantially the same mark and substantially the same
goods and/or services as, or more limited goods and/or
services than, those listed in the Board's prior
specification of applicant's entitlement to concurrent
registration), or seeks registration for the same or a more
limited area, or mode of use, than that accorded to
applicant in the prior decision, and for a mark and goods
and/or services less similar to those of the other party or
parties than applicant's mark and goods and/or services in
the prior proceeding (cf. Missouri Silver Pages Directory
Publishing Corp. v. Southwestern Bell Media, Inc., 6 USPQ2d
1028 (TTAB 1988); Carl Karcher Enterprises, Inc. v. Gold
Star Chili, Inc., 222 USPQ 979 (TTAB 1983), recon. denied,
222 USPQ 727 (TTAB 1983); and Place for Vision, Inc. v.
Pearle Vision Center, Inc., 218 USPQ 1022 (TTAB 1983)); and
     (5) The excepted use specified in the concurrent use
application does not involve a registration, or any involved
registration has been restricted in accordance with the
Board's prior decision.

If an application seeking concurrent registration on the
basis of the Board's determination, in a prior concurrent
use proceeding, of applicant's entitlement thereto, meets
all of the conditions specified above, a new concurrent use
proceeding is unnecessary, because of the legal principles
of res judicata and stare decisis.  Cf. 37 CFR 2.99(f).  If
any of the conditions is not satisfied, a new concurrent use
proceeding will be prepared and instituted.  In the event
that the first four conditions are met, but an involved
registration, through some happenstance, has not already
been restricted in accordance with the Board's prior
decision, a new concurrent use proceeding will be instituted
solely for the purpose of restricting the involved
registration in accordance with the Board's decision.  In
such cases, the Board sends out, with the notice of
institution, an order to the registrant to show cause why
its registration should not be restricted in accordance with
the Board's prior decision.  If no good cause is shown, the
registration is ordered restricted, applicant is found
entitled to the registration sought, and the concurrent use
proceeding is dissolved.

If all of the five conditions specified above are satisfied,
so that a new concurrent use proceeding is not necessary,
there is no need for applicant to furnish the extra copies
of its application, specimens and drawing referred to by 37
CFR 2.99(b) (cf. TBMP 1102.02(a)(3)).  When and if the
application is approved for publication, it is marked (by
the Trademark Examining Attorney) with the following
statement:  REGISTRATION LIMITED TO THE AREA COMPRISING
PURSUANT TO CONCURRENT USE PROCEEDING NO.        .
CONCURRENT REGISTRATION WITH              .  The area
specified in the Board's decision as the area for which
applicant is entitled to registration is inserted in the
first blank, together with any other conditions or
limitations imposed by the Board.  The second blank is
filled in with the number of the prior concurrent use
proceeding.  The third blank is filled in with the number(s)
of the involved application(s) or registration(s) owned by
the other party or parties to the prior concurrent use
proceeding.  If any such party does not own an application
or registration of its involved mark, then the name and
address of the party is inserted in the third blank space.

If the five conditions are not all satisfied, so that a new
concurrent use proceeding is necessary, applicant normally
will be required, at least if its mark is determined to be
ready for publication, to furnish as many copies of its
application, specimens and drawing as may be necessary for
the preparation of notices for each applicant, registrant or
user specified as a concurrent user in the application.  See
37 CFR 2.99(b).  When and if the application is approved
for publication, it is marked (by the Trademark Examining
Attorney) with the following statement:  SUBJECT TO
CONCURRENT USE PROCEEDING WITH              .  APPLICANT
CLAIMS EXCLUSIVE RIGHT TO USE THE MARK IN THE AREA
COMPRISING
             .  The first blank is filled in with the
number(s) of the involved application(s) or registration(s)
owned by the other party or parties to the proceeding.  If
any such party does not own an application or registration
of its involved mark, then the name and address of the party
is inserted in the first blank space.  The second blank is
filled in with the area for which applicant seeks
registration.

The Board does not determine, in a concurrent use
proceeding, the right to concurrent registration of a party
which is included in the proceeding only as a common law
concurrent user, i.e., a party which does not own an
involved application or registration.  See TBMP 1107, and
cases cited therein.  A party which was included in a prior
concurrent use proceeding only as a common law concurrent
user may not thereafter obtain a concurrent registration, on
the basis of the Board's decision in the prior proceeding,
without going through a new concurrent use proceeding.

1102.02(b)  Application Based on Court Determination

An application for concurrent registration on the basis of a
final determination, by a court of competent jurisdiction,
that applicant is entitled to concurrently use its mark in
commerce, must assert use in commerce of the mark sought to
be registered.  See TBMP 1102.02(a)(1), and authorities
cited therein.  The application must also specify and
contain all the elements required by those of the rules of
practice in trademark cases preceding 37 CFR 2.42; and must
comply with the requirements of 37 CFR 2.42 (described in
TBMP 1102.02(a)(3)), namely, the requirements that
applicant state in the application the area, goods and/or
services, and (if applicable) mode of use for which
applicant seeks registration, and also state, to the extent
of applicant's knowledge, the concurrent lawful use of the
mark by others, setting forth their names and addresses,
their areas of use, the goods and/or services on or in
connection with which their use is made, the mode of their
use, the periods of their use, and the registrations issued
to or applications filed by them, if any.  See 37 CFR 2.42.
In addition, the applicant must, of course, submit a copy of
the court decree upon which it relies.

When an application for concurrent registration is based on
a final determination, by a court of competent jurisdiction,
that applicant is entitled to concurrently use its mark, a
concurrent use proceeding will not be instituted, that is,
the application (if found otherwise acceptable, published,
and not opposed, or opposed unsuccessfully) will be
forwarded to issue without having to go through a concurrent
use proceeding, provided that all of the following
conditions, specified in 37 CFR 2.99(f), are met:
     (1) The applicant is entitled to registration subject
only to the concurrent lawful use of a party or parties to
the court proceeding; and
     (2) The court decree specifies the rights of the
parties; and
     (3) A true copy of the court decree is submitted to the
Trademark Examining Attorney; and
     (4) The concurrent use application complies fully and
exactly with the court decree (see Holiday Inn v. Holiday
Inns, Inc., 534 F.2d 312, 189 USPQ 630 (CCPA 1976), and
Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes,
Inc., 293 F.2d 685, 130 USPQ 412 (CCPA 1961), cert. denied,
369 U.S. 864, 133 USPQ 702 (1962)); 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 Commissioner in
accordance with the court decree.

If any of the five conditions specified above is not
satisfied, a concurrent use registration proceeding will be
prepared and instituted.  See 37 CFR 2.99(f), and T.
Jeffrey Quinn, TIPS FROM THE TTAB:  The Rules Are Changing,
74 Trademark Rep. 269 (1984).  If the first four conditions
are met, but an involved registration has not already been
restricted by the Commissioner in accordance with the court
decree, a concurrent use proceeding will be instituted
solely for the purpose of restricting the involved
registration in accordance with the court decree.  In such
cases, the Board sends out, with the notice of institution,
an order to the registrant to show cause why its
registration should not be restricted in accordance with the
court decree.  If no good cause is shown, the registration
is ordered restricted, applicant is found entitled to the
registration sought, and the concurrent use proceeding is
dissolved.

If all of the five conditions specified above are satisfied,
so that a concurrent use proceeding is not necessary, there
is no need for applicant to furnish the extra copies of its
application, specimens and drawing referred to by 37 CFR
2.99(b) (cf. TBMP 1102.02(a)(3)).  When and if the
application is approved for publication, it is marked (by
the Trademark Examining Attorney) with the following
statement:  REGISTRATION LIMITED TO THE AREA COMPRISING
PURSUANT TO THE DECREE OF              .  CONCURRENT
REGISTRATION WITH              .  The area granted to
applicant by the court is inserted in the first blank,
together with any other conditions or limitations imposed by
the court.  The second blank is filled in with the name of
the court, proceeding number, and date of decree.  The third
blank is filled in with the number(s) of the involved
application(s) or registration(s) owned by the other party
or parties to the court proceeding.  If any such party does
not own an application or registration of its involved mark,
then the name and address of the party is inserted in the
third blank space.

If the five conditions are not all satisfied, so that a
concurrent use proceeding is necessary, applicant normally
will be required, at least if its mark is determined to be
ready for publication, to furnish as many copies of its
application, specimens and drawing as may be necessary for
the preparation of notices for each applicant, registrant or
user specified as a concurrent user in the application.  See
37 CFR 2.99(b).  When and if the application is approved
for publication, it is marked (by the Trademark Examining
Attorney) with the following statement:  SUBJECT TO
CONCURRENT USE PROCEEDING
WITH              .  APPLICANT CLAIMS EXCLUSIVE RIGHT TO USE
THE MARK IN THE AREA COMPRISING              .  The first
blank is filled in with the number(s) of the involved
application(s) or registration(s) owned by the other party
or parties to the proceeding.  If any such party does not
own an application or registration of its involved mark,
then the name and address of the party is inserted in the
first blank space.  The second blank is filled in with the
area for which applicant seeks registration.

An application for concurrent registration on the basis of a
court determination of applicant's right to concurrently use
its mark in commerce does not need to meet the
jurisdictional requirement of use in commerce prior to the
applicable date specified in Section 2(d) of the Act, 15
U.S.C. 1052(d) (for information concerning the dates
specified in Section 2(d) of the Act, see TBMP
1102.02(a)(2)).  Similarly, such an application is not
subject to the requirement that the Commissioner determine,
prior to issuance of a concurrent registration, that
confusion, mistake, or deception is not likely to result
from the continued concurrent use by the parties of their
marks.  These two requirements are conditions precedent to
the issuance of a concurrent registration by way of a
concurrent use proceeding before the Board, but they are not
conditions precedent to the issuance of a concurrent
registration on the basis of a court decree.  The sentence
in Section 2(d) permitting the Commissioner to issue
concurrent registrations 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, is wholly independent of these two provisions.
Thus, a concurrent registration may (and should, if
otherwise appropriate) be issued on the basis of a court
decree even though the application for registration does not
claim use in commerce prior to the applicable date specified
in Section 2(d), and even though there is likelihood of
confusion by reason of the concurrent use of the marks of
the parties to the court proceeding.  See Holiday Inn v.
Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630 (CCPA 1976),
and TMEP 1207.04(d)(ii).  Cf. Alfred Dunhill of London,
Inc. v. Dunhill Tailored Clothes, Inc., 293 F.2d 685, 130
USPQ 412 (CCPA 1961), cert. denied, 369 U.S. 864, 133 USPQ
702 (1962).

For information concerning the examination, by the Trademark
Examining Attorney, of a concurrent use application, see
TMEP 1207.04(d)(i) and 1207.04(d)(ii).

1103  Parties to Proceeding; Involved Applications,
Registrations

The parties to a concurrent use proceeding are the
concurrent use applicant(s), and all of those persons listed
in the concurrent use application(s) as exceptions to
applicant's claim of exclusive use.  The persons listed as
exceptions may themselves own one or more Federal
applications (either for concurrent registration, or for an
unrestricted registration) or Federal registrations for a
conflicting mark, or may simply be common law users of a
conflicting mark.  Thus, a concurrent use proceeding may
involve the concurrent use applicant(s) and one or more
other applicants (either for concurrent registration or for
unrestricted registration), and/or one or more registrants,
and/or one or more common law concurrent users which do not
own an involved application or registration.  Often, the
only parties to a concurrent use proceeding are the
concurrent use applicant, and a common law user which does
not own an involved application or registration.  See
Newsday, Inc. v. Paddock Publications, Inc., 223 USPQ 1305
(TTAB 1984).

If, after the commencement of a concurrent use proceeding,
the concurrent use applicant learns of another person with
conflicting concurrent rights, the applicant may file a
motion to amend its application to list that person as an
additional exception to applicant's claim to exclusive use.
If the motion is granted, the person listed in the amendment
will be added as a party to the proceeding.  See Gallagher's
Restaurants Inc. v. Gallagher's Farms Inc., 3 USPQ2d 1864
(TTAB 1986).  Similarly, if the concurrent use applicant
learns that a person listed as an exception to applicant's
claim of exclusive use has abandoned its mark, or if the
person assigns its rights in its mark to the applicant, the
applicant may file a motion to amend its application to
delete reference to that person.  The motion should include
an explanation of the facts which serve as the basis for the
motion.  If the motion is granted, the amendment will be
entered, and the person in question will be dropped as a
party to the proceeding.

The applications and/or registrations involved in a
concurrent use proceeding include the concurrent use
application(s); every conflicting unrestricted application
which is identified in the concurrent use application(s) as
being owned by a person listed as an exception to the
concurrent applicant's claim of exclusive use, and which has
a filing date prior to the filing date of the concurrent use
application(s); every conflicting registration identified in
the concurrent use application(s) as being owned by a person
listed as an exception to the concurrent applicant's claim
of exclusive use; and every registration claimed by the
concurrent use applicant(s) in the concurrent use
application(s), unless there is no conflict between the
mark(s) in such registration(s) and the mark(s) of the other
party or parties to the proceeding (see Morgan Services Inc.
v. Morgan Linen Services Inc., 12 USPQ2d 1841 (TTAB 1989)).
Further, when the Board institutes the concurrent use
proceeding, inquiry will be made as to whether any party
owns any other application or registration which is for the
same or similar mark, and same or similar goods and/or
services, and thus should be added to the proceeding.  A
conflicting application or registration identified in
response to this inquiry normally will be added to the
proceeding.

However, if a party to the proceeding owns a conflicting
application which seeks an unrestricted registration, and
which was not filed until after the concurrent use
application(s), action on the subsequent unrestricted
application will be suspended by the Trademark Examining
Attorney (once the application is otherwise in condition for
approval for publication) pending disposition of the
concurrent use application(s).  See Pro-Cuts v. Schilz-Price
Enterprises Inc., 27 USPQ2d 1224 (TTAB 1993), and Georgia-
Southern Oil Inc. v. Richardson, 16 USPQ2d 1723 (TTAB 1990).
In the event that the concurrent use application(s) matures
into concurrent registration(s), the concurrent
registration(s) will be cited, under Section 2(d) of the
Act, as a reference(s) against the subsequent unrestricted
application.  See Georgia-Southern Oil Inc. v. Richardson,
supra.  Alternatively, if the owner of the subsequent
unrestricted application amends it to seek concurrent
registration, the application will be published for
opposition and, if no opposition is filed, or if all
oppositions filed are dismissed, the application will be
added to the concurrent use proceeding, if the amendment is
filed early enough so that addition to the concurrent use
proceeding is feasible, or will be the subject of a new
concurrent use proceeding, if the amendment is not filed
early enough.  See Pro-Cuts v. Schilz-Price Enterprises
Inc., supra, and Georgia-Southern Oil Inc. v. Richardson,
supra.

1104  Applications and Registrations Not Subject to
Proceeding

37 CFR 2.73(b) An application under section 1(b) of the Act
may not be amended so as to be treated as an application for
a concurrent registration until an acceptable amendment to
allege use under 2.76 or statement of use under 2.88 has
been filed in the application, after which time such an
amendment may be made, provided the application as amended
satisfies the requirements of 2.42.  The examiner will
determine whether the application, as amended, is
acceptable.

37 CFR 2.99(g) Registrations and applications to register
on the Supplemental Register and registrations under the Act
of 1920 are not subject to concurrent use registration
proceedings.  Applications to register under section 1(b) of
the Act of 1946 are subject to concurrent use registration
proceedings only after an acceptable amendment to allege use
under 2.76 or statement of use under 2.88 has been filed.

Applications for registration on the Supplemental Register,
registrations on the Supplemental Register, and
registrations issued under the Act of 1920 are not subject
to concurrent use proceedings.  See Sections 26 and 46(b) of
the Act of 1946; 37 CFR 2.99(g); and T. Jeffrey Quinn, TIPS
FROM THE TTAB:  The Rules Are Changing, 74 Trademark Rep.
269 (1984).

Applications to register under Section 1(b) of the Act, 15
U.S.C. 1051(b), i.e., intent-to-use applications, are
subject to concurrent use proceedings only after an
acceptable amendment to allege use under 37 CFR 2.76, or an
acceptable statement of use under 37 CFR 2.88, has been
filed.  See 37 CFR 2.99(g).  Cf. 37 CFR 2.73(b), and TBMP
1102.02(a)(1).  If a concurrent use application is filed as
an intent-to-use application under Section 1(b) of the Act,
15 U.S.C. 1051(b), rather than as a use application under
Section 1(a) of the Act, 15 U.S.C. 1051(a), the application
is void.  See 37 CFR 2.99(g); TMEP 1207.04(b); and Marc A.
Bergsman, TIPS FROM THE UNITED STATES PATENT AND TRADEMARK
OFFICE TTAB:  Concurrent Use and Intent-to-Use Applications,
83 Trademark Rep. 416 (1993).

An "incontestable registration," that is, a registration of
a mark the right to use of which has become incontestable
pursuant to Section 15 of the Act, 15 U.S.C. 1065, is
subject to a concurrent use proceeding.  However, any
registration issued to the concurrent use applicant as
against the owner of an incontestable registration will be
limited (even if applicant is the prior user) to applicant's
area of actual use prior to actual or constructive notice of
registrant's rights, unless the parties stipulate otherwise.
See Sections 15 and 33(b)(5) of the Act, 15 U.S.C. 1065
and 1115(b)(5); Holiday Inn v. Holiday Inns, Inc., 534 F.2d
312, 189 USPQ 630 (CCPA 1976); and Thriftimart, Inc. v. Scot
Lad Foods, Inc., 207 USPQ 330 (TTAB 1980).

1105  Commencement of Proceeding

When an application seeking concurrent registration by way
of a concurrent use proceeding before the Board is approved
for publication, it is marked (by the Trademark Examining
Attorney) with the following statement:  SUBJECT TO
CONCURRENT USE PROCEEDING WITH              .  APPLICANT
CLAIMS EXCLUSIVE RIGHT TO USE THE MARK IN THE AREA
COMPRISING
             .  The first blank is filled in with the
number(s) of the involved application(s) or registration(s)
owned by the other party or parties to the proceeding.  If
any such party does not own an application or registration
of its involved mark, then the name and address of the party
is inserted in the first blank space.  The second blank is
filled in with the area for which applicant seeks
registration.

If an application approved for publication seeks concurrent
registration on the basis of the Board's determination, in a
prior concurrent use proceeding, of applicant's entitlement
thereto, and meets the conditions described in TBMP
1102.02(a)(4), so that a new concurrent use proceeding is
unnecessary, the application is marked with the following
statement:  REGISTRATION LIMITED TO THE AREA COMPRISING
PURSUANT TO CONCURRENT USE PROCEEDING NO.        .
CONCURRENT REGISTRATION WITH              .  The area
specified in the Board's decision as the area for which
applicant is entitled to registration is inserted in the
first blank, together with any other conditions or
limitations imposed by the Board.  The second blank is
filled in with the number of the prior concurrent use
proceeding.  The third blank is filled in with the number(s)
of the involved application(s) or registration(s) owned by
the other party or parties to the prior concurrent use
proceeding.  If any such party does not own an application
or registration of its involved mark, then the name and
address of the party is inserted in the third blank space.

If an application approved for publication seeks concurrent
registration on the basis of a court determination of
concurrent rights, and meets the conditions of 37 CFR
2.99(f) (see TBMP 1102.02(b)), so that a concurrent use
proceeding is unnecessary, the application is marked with
the following statement:  REGISTRATION LIMITED TO THE AREA
COMPRISING             PURSUANT TO THE DECREE OF
.  CONCURRENT REGISTRATION WITH           .  The area
granted to applicant by the court is inserted in the first
blank, together with any other conditions or limitations
imposed by the court.  The second blank is filled in with
the name of the court, proceeding number, and date of
decree.  The third blank is filled in with the number(s) of
the involved application(s) or registration(s) owned by the
other party or parties to the court proceeding.  If any such
party does not own an application or registration of its
involved mark, then the name and address of the party is
inserted in the third blank space.

The application is then published, with the indicated
statement, in the Official Gazette for opposition.  If the
application seeks concurrent registration on the basis of a
court decree, meets the requirements of 37 CFR 2.99(f), and
is not opposed, or all oppositions filed are dismissed, the
application goes to issue without a concurrent use
proceeding.  See 37 CFR 2.99(f), and TBMP 1102.02(b).
Similarly, if the application seeks concurrent registration
on the basis of the Board's determination, in a prior
concurrent use proceeding, of applicant's entitlement
thereto; meets the conditions described in TBMP
1102.02(a)(4); and is not opposed, or all oppositions filed
are dismissed, the application goes to issue without a new
concurrent use proceeding.  See TBMP 1102.02(a)(4).  Cf. 37
CFR 2.99(f), and TBMP 1102.02(b).

If the application seeks concurrent registration by way of a
concurrent use proceeding before the Board, and is not
opposed, or all oppositions filed are dismissed, a
concurrent use proceeding is instituted.  See 37 CFR
2.99(c).  Similarly, if the application seeks concurrent
registration on the basis of a court decree but does not
meet the requirements of 37 CFR 2.99(f), or seeks
concurrent registration on the basis of the Board's decision
in a prior concurrent use proceeding but does not meet the
conditions described in TBMP 1102.02(a)(4), and the
application is not opposed, or all oppositions filed are
dismissed, a concurrent use proceeding is instituted.  See
37 CFR 2.99(c) and 2.99(f), and TBMP 1102.02(a)(4) and
1102.02(b).

After the opposition period has expired, and no opposition
is filed, or all oppositions filed are dismissed, the file
of a concurrent use application which must go through a
concurrent use proceeding before the Board is forwarded to
the Board for institution of the proceeding.  There is no
fee for the institution of a concurrent use proceeding.

The Board obtains the files of all of the other applications
and registrations, if any, to be included in the proceeding.
If any such application has not yet been published in the
Official Gazette, or has been published but has not yet
cleared the opposition period, the proceeding will be
instituted, with the owner of that application being
included as a common law user, rather than as an applicant.
The Board may, in its discretion, suspend proceedings in the
concurrent use proceeding until the unpublished application
either becomes abandoned, or is published in the Official
Gazette and survives the opposition period; and then, if the
application is published and survives the opposition period,
add it to the proceeding, and change the proceeding position
of its owner from that of common law user to applicant (cf.
TBMP 1103 and 1107).

When the Board has obtained the files of all other
applications and registrations, if any, to be included in
the proceeding, the Board prepares a notice for each party
advising the party that the concurrent use proceeding is
thereby instituted; supplying information concerning the
filing of an "answer" to the notice and specifying a due
date therefor (for information concerning the "answer" in a
concurrent use proceeding, see TBMP 1106); and allowing the
party until a specified time to advise the Board of any
relevant, but as yet uninvolved, application(s) and/or
registration(s), which should be included in the proceeding.
The notice to each party listed as an exception to a
concurrent use applicant's claim of exclusive use also
specifies the name and address of the concurrent use
applicant and the concurrent use applicant's attorney or
other authorized representative, if any, together with the
concurrent use applicant's mark, goods and/or services,
application filing date and serial number, and claimed
territory (see 37 CFR 2.99(c)); the name and address of any
other involved applicant or registrant; the name and address
of any other involved applicant's attorney or other
authorized representative, if any; the mark, goods and/or
services, application filing date, application serial
number, and claimed territory of any other involved
applicant, as reflected in its involved application (if the
application is unrestricted, the claimed territory will be
described in the notice as "The entire United States"); the
mark, goods and/or services, registration filing and issue
date, registration number, and claimed territory of any
other involved registrant, as reflected in its involved
registration; and the name and address of any other involved
party which is simply a common law concurrent user, i.e.,
does not own an involved application or registration of its
mark.

The notices are sent to each involved applicant, in care of
the applicant's attorney or other authorized representative,
if any; to any involved user; and to any involved
registrant.  A copy of each concurrent use applicant's
involved application(s) is forwarded with the notice to each
party specified in the concurrent use application as an
exception to applicant's claim of exclusive use.  See 37 CFR
2.99(d)(1).

The concurrent use proceeding commences when the Board mails
the notices to the parties.  Cf. 37 CFR 2.93.

It is the responsibility of the concurrent use applicant,
which has the burden of proving its entitlement to
concurrent registration, to provide information concerning
the current address of each specified excepted user, as well
as information concerning each user's use of its particular
mark in its particular area or mode of use.  See 37 CFR
2.42 and 2.99(e).  See also TBMP 1102.02(a)(3) and 1107.
The address used by the Board in mailing the notice to a
specified excepted user is the address provided by the
concurrent use applicant in its application, unless the user
itself owns an involved application or registration which
includes an address more current than the one provided by
the concurrent use applicant.  If a notice or other
communication sent by the Board to a specified excepted user
is returned as undeliverable, the concurrent use applicant
will be required to investigate further and furnish the
correct address.  Unless and until the concurrent use
applicant does so, the proceeding cannot go forward.
Alternatively, if, upon further investigation, the
concurrent use applicant learns that a specified excepted
user has abandoned its use of its mark, the concurrent use
applicant may file a motion to amend its application to
delete reference to that user.  See TBMP 1103.

1106  Answer

There is no complaint in a concurrent use proceeding.  Cf.
TBMP 1003.  Instead, there is a notice which informs the
parties to the proceeding of the institution thereof,
supplies information concerning the filing of an "answer" to
the notice, and specifies a due date therefor.  In addition,
the notice, (including the copy of each involved concurrent
use application, which is mailed with the notice to every
person specified in the application) takes the place of a
complaint to the extent that it informs every specified
person of the scope of the concurrent registration sought by
each concurrent use applicant, and the extent of each
concurrent use applicant's acknowledgment of the concurrent
rights of others--i.e., the essence of what each concurrent
use applicant intends to prove at trial.  See TBMP
1102.02(a)(3) and 1105.

The "answer" in a concurrent use proceeding is a response to
the notice.  In the "answer," the answering party sets forth
its position with respect to the registration(s) sought by
the concurrent use applicant(s).  See, for example, Pro-Cuts
v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224 (TTAB
1993); Fleming Companies v. Thriftway Inc., 21 USPQ2d 1451
(TTAB 1991), aff'd, 26 USPQ2d 1551 (S.D.Ohio 1992); Georgia-
Southern Oil Inc. v. Richardson, 16 USPQ2d 1723 (TTAB 1990);
Newsday, Inc. v. Paddock Publications, Inc., 223 USPQ 1305
(TTAB 1984); Ole' Taco Inc. v. Tacos Ole, Inc., 221 USPQ 912
(TTAB 1984); T. Jeffrey Quinn, TIPS FROM THE TTAB:  The
Rules Are Changing, 74 Trademark Rep. 269 (1984); and Janet
E. Rice, TIPS FROM THE TTAB:  Concurrent Use Applications
and Proceedings, 72 Trademark Rep. 403 (1982).

An answer to the notice is not required of an applicant or
registrant whose application or registration is involved in
the proceeding (for information concerning which
applications and registrations are involved in a concurrent
use proceeding, see TBMP 1103), but such a party may file
an answer if it so desires.  Any other party specified as a
concurrent user in an involved concurrent use application
must file an answer to avoid default.  See 37 CFR 2.99
(d)(2).  See also Newsday, Inc. v. Paddock Publications,
Inc., 223 USPQ 1305 (TTAB 1984), and T. Jeffrey Quinn, TIPS
FROM THE TTAB:  The Rules Are Changing, 74 Trademark Rep.
269 (1984).  Any answer filed must be filed within 40 days
after the mailing date of the notice, or within an extension
of time for the purpose.  See 37 CFR 2.99(d)(2).  See also
TBMP 501 and 509.  Cf. TBMP 316.

If a party which is required, under 37 CFR 2.99(d)(2), to
file an answer fails to do so, judgment will be entered
against that party precluding the party from claiming any
right more extensive than that acknowledged in the involved
concurrent use application(s).  However, each concurrent use
applicant still will have the burden of proving its
entitlement to the registration(s) sought as against every
party specified in its application(s), including any party
against which default judgment for failure to answer has
been entered.  That is, the concurrent use applicant still
will have to prove that there will be no likelihood of
confusion by reason of the concurrent use by the parties of
their respective marks, and, where necessary (see TBMP
1102.02(a)(2)), that the parties have become entitled to
use their marks as a result of their concurrent lawful use
in commerce prior to the applicable date specified in
Section 2(d) of the Act, 15 U.S.C. 1052(d) [usually, this
means use in commerce prior to the earliest application
filing date of the application(s), or 1946 Act
registration(s) (if any), involved in the proceeding (or
prior to July 5, 1947, in the case of an involved
registration under the Acts of 1881 or 1905)].  See 37 CFR
2.99(d)(3).  See also Pro-Cuts v. Schilz-Price Enterprises
Inc., 27 USPQ2d 1224 (TTAB 1993); Precision Tune Inc. v.
Precision Auto-Tune Inc., 4 USPQ2d 1095 (TTAB 1987);
Newsday, Inc. v. Paddock Publications, Inc., 223 USPQ 1305
(TTAB 1984); and T. Jeffrey Quinn, TIPS FROM THE TTAB:  The
Rules Are Changing, 74 Trademark Rep. 269 (1984).  Moreover,
if, after the entry of default judgment against a party for
failure to answer, the concurrent use applicant seeks to
amend its application to narrow the extent of the concurrent
rights conceded therein to the defaulting party, the
defaulting party will be allowed an opportunity to object
thereto.  If the amendment is permitted, the defaulting
party will be allowed to contest the registration sought by
the applicant, to the extent that the applicant claims a
greater right, as against the defaulting party, than that
previously claimed.

If a concurrent use proceeding involves only a concurrent
use applicant and one or more specified common law
concurrent users which do not have an involved application
or registration, and default judgment for failure to answer
is entered against every specified user, or applicant has
entered into a persuasive settlement agreement with every
party against which default judgment has not been entered,
applicant may prove its entitlement to registration as
against the defaulting users by an "ex parte" type of
showing.  That is, applicant may prove its entitlement to
registration by less formal procedures (such as by the
submission of affidavit evidence) than those (such as
depositions upon oral examination) normally required for the
introduction of evidence in an inter partes proceeding.  See
Precision Tune Inc. v. Precision Auto-Tune Inc., 4 USPQ2d
1095 (TTAB 1987).  See also Fleming Companies v. Thriftway
Inc., 21 USPQ2d 1451 (TTAB 1991), aff'd, 26 USPQ2d 1551
(S.D.Ohio 1992).  In such a case, the Board, instead of
setting formal trial dates, simply allows the concurrent use
applicant time (usually 60 days) in which to submit proof of
its entitlement to registration.  For an example of proof of
entitlement to concurrent registration in such a situation,
see Precision Tune Inc. v. Precision Auto-Tune Inc., supra.

When default judgment for failure to file an answer is
entered against a party to a concurrent use proceeding, the
Board does not continue to send to that party copies of all
of the communications issued by the Board in the proceeding,
nor do the other parties to the proceeding need to continue
serving on the defaulting party copies of all papers which
they file in the proceeding.  However, a copy of the Board's
final decision in the case is mailed to the defaulting
party.  Moreover, any request by the concurrent use
applicant to amend its application to narrow the extent of
the concurrent rights conceded therein to the defaulting
party must be served upon that party.  If the amendment is
permitted, the Board's action on the request, and copies of
all further communications issued by the Board in the
proceeding, will be sent to the defaulting party by the
Board.  Similarly, after approval of such an amendment,
copies of all further papers filed by the other parties to
the proceeding should be served on the defaulting party.

1107  Issue; Burden of Proof

37 CFR 2.99(e) The applicant for a concurrent use
registration has the burden of proving entitlement thereto.
If there are two or more applications for concurrent use
registration involved in a proceeding, the party whose
application has the latest filing date is the junior party.
A party whose application has a filing date between the
filing dates of the earliest involved application and the
latest involved application is a junior party to every party
whose involved application has an earlier filing date.  If
any applications have the same filing date, the application
with the latest date of execution will be deemed to have the
latest filing date and that applicant will be the junior
party.  A person specified as an excepted user in a
concurrent use application but who has not filed an
application shall be considered a party senior to every
party that has an application involved in the proceeding.

37 CFR 2.116(b) ... A party that is a junior party in an
interference proceeding or in a concurrent use registration
proceeding shall be in the position of plaintiff against
every party that is senior, and the party that is a senior
party in an interference proceeding or in a concurrent use
registration proceeding shall be a defendant against every
party that is junior.

The issue to be determined in a concurrent use proceeding is
the entitlement of the concurrent use applicant(s) to the
registration(s) sought, and the extent, if any, to which
every other involved application or registration should be
restricted as a result thereof.  The Board does not
determine the right to registration of a party which is
included in the proceeding only as a common law concurrent
user, i.e., a party which does not own an involved
application or registration (for information concerning the
parties to a concurrent use proceeding, and the applications
and registrations involved therein, see TBMP 1103).  See
Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224
(TTAB 1993), and Georgia-Southern Oil Inc. v. Richardson, 16
USPQ2d 1723 (TTAB 1990).  See also Fleming Companies v.
Thriftway Inc., 21 USPQ2d 1451 (TTAB 1991), aff'd, 26 USPQ2d
1551 (S.D.Ohio 1992).

Each applicant for concurrent registration has the burden of
proving its entitlement thereto as against every other party
specified in its application as an exception to its claim of
exclusive right to use.  That is, a concurrent use applicant
must prove that there will be no likelihood of confusion by
reason of the concurrent use by the parties of their
respective marks, and, where necessary (see TBMP
1102.02(a)(2)), that the parties have become entitled to
use their marks as a result of their concurrent lawful use
in commerce prior to the applicable date specified in
Section 2(d) of the Act, 15 U.S.C. 1052(d) [usually, this
means use in commerce prior to the earliest application
filing date of the application(s), or 1946 Act
registration(s) (if any), involved in the proceeding (or
prior to July 5, 1947, in the case of an involved
registration under the Acts of 1881 or 1905)].  See, for
example, Section 2(d) of the Act, 15 U.S.C. 1052(d); 37 CFR
2.99(e); Gray v. Daffy Dan's Bargaintown, 823 F.2d 522, 3
USPQ2d 1306 (Fed. Cir. 1987);  Fleming Companies v.
Thriftway Inc., 21 USPQ2d 1451 (TTAB 1991), aff'd, 26 USPQ2d
1551 (S.D.Ohio 1992); Georgia-Southern Oil Inc. v.
Richardson, 16 USPQ2d 1723 (TTAB 1990); Faces, Inc. v.
Face's, Inc., 222 USPQ 918 (TTAB 1983); Ole' Taco Inc. v.
Tacos Ole, Inc., 221 USPQ 912 (TTAB 1984); Inland Oil &
Transport Co. v. IOT Corp., 197 USPQ 562 (TTAB 1977); Handy
Spot Inc. v. J. D. Williams Co., 181 USPQ 351 (TTAB 1974);
Janet E. Rice, TIPS FROM THE TTAB:  Concurrent Use
Applications and Proceedings, 72 Trademark Rep. 403 (1982);
and Rany L. Simms, TIPS FROM THE TTAB:  The Concurrent User
as Opposer, 67 Trademark Rep. 654 (1977).

Any other party may attempt to prove any ground for refusal
of registration which might be asserted with respect to an
application for an unrestricted registration, as well as
other matters, such as, that the concurrent use applicant is
entitled to a concurrent registration covering only some of
the area specified in its application; that the concurrent
use applicant is not entitled to registration at all because
it is a bad faith junior user; that applicant does not meet
the jurisdictional requirement of use of its involved mark
prior to the applicable date specified in Section 2(d) of
the Act, 15 U.S.C. 1052(d) (see TBMP 1102.02(a)(2)); that
applicant's use of its mark is unlawful; etc.  See Person's
Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477 (Fed. Cir.
1990); Fleming Companies v. Thriftway Inc., 21 USPQ2d 1451
(TTAB 1991), aff'd, 26 USPQ2d 1551 (S.D.Ohio 1992); Women's
World Shops Inc. v. Lane Bryant Inc., 5 USPQ2d 1985 (TTAB
1988); Faces, Inc. v. Face's, Inc., 222 USPQ 918 (TTAB
1983); Pagan-Lewis Motors, Inc. v. Superior Pontiac, Inc.,
216 USPQ 897 (TTAB 1982); Inland Oil & Transport Co. v. IOT
Corp., 197 USPQ 562 (TTAB 1977); Janet E. Rice, TIPS FROM
THE TTAB:  Concurrent Use Applications and Proceedings, 72
Trademark Rep. 403 (1982); and Rany L. Simms, TIPS FROM THE
TTAB:  The Concurrent User as Opposer, 67 Trademark Rep. 654
(1977).

In a concurrent use proceeding, a junior party stands in the
position of plaintiff, and a senior party stands in the
position of defendant.  See 37 CFR 2.116(b).  When there
are two or more concurrent use applications involved in a
concurrent use proceeding, the party whose application has
the latest filing date is the junior party.  A party whose
application has a filing date between the filing dates of
the earliest involved application and the latest involved
application is a junior party to every party whose involved
application has an earlier filing date.  If any applications
have the same filing date, the application with the latest
date of execution will be deemed to have the latest filing
date, and that applicant will be the junior party.  A party
which is specified in an involved concurrent use application
as an excepted user, but which does not have an involved
application, shall be considered a party senior to every
party that has an application involved in the proceeding.
See 37 CFR 2.99(e).  See also Janet E. Rice, TIPS FROM THE
TTAB:  Concurrent Use Applications and Proceedings, 72
Trademark Rep. 403 (1982).

1108  Conduct of Proceeding

Once commenced (see TBMP 1105), a concurrent use proceeding
is conducted in the same general manner as an opposition or
cancellation proceeding, except that, inter alia, there is
no complaint (see TBMP 1106), and thus no motions relating
to the complaint; the "answer" is not an answer in the usual
sense of the word, and is not always required (see TBMP
1106); if an answer, when required, is not filed, default
judgment is entered against the nonanswering party
precluding that party from claiming any right more extensive
than that acknowledged in the involved concurrent use
application(s), but each concurrent use applicant will still
have the burden of proving its entitlement to the
registration(s) sought (see TBMP 1106); the issue is the
entitlement of the concurrent use applicant(s) to the
registration(s) sought, and the extent, if any, to which
every other involved application or registration should be
restricted as a result thereof (see TBMP 1107); the order
in which the parties offer evidence depends upon whether or
not they own an involved application or registration, and,
if two or more parties own an involved concurrent use
application, the filing dates of such applications (see TBMP
1107); and in certain cases, where default judgment is
entered for failure to answer, a concurrent use applicant
may be permitted to prove its entitlement to registration by
less formal procedures than those normally required for the
introduction of evidence in an inter partes proceeding (see
TBMP 1106).

In addition, the trial and briefing schedule in a concurrent
use proceeding involving three or more parties differs,
because of the multiplicity of parties, from that in an
opposition or cancellation proceeding.  After the time for
answer has passed, the Board sends out an order setting
trial and briefing dates in the case (except in those
default judgment situations where the concurrent use
applicant is permitted to prove its entitlement to
registration by less formal procedures than those normally
required for the introduction of evidence in an inter partes
proceeding--see TBMP 1106).  Specifically, the Board sets a
closing date for discovery (which opens when the notices of
institution are served by the Board upon the parties), and
schedules testimony periods so that each party in the
position of plaintiff will have a period for presenting its
case in chief against each party in the position of
defendant, each party in the position of defendant will have
a period for presenting its case and meeting the case of
each plaintiff, and each party in the position of plaintiff
will have a period for presenting evidence in rebuttal.  See
37 CFR 2.121(b)(2).  See also TBMP 701.  The testimony
periods are separated from the discovery period and from
each other by 30-day intervals.  Similarly, the Board
schedules briefing periods so that each party in the
position of plaintiff will have a period for filing a main
brief on the case, each party in the position of defendant
will have a period for filing a main brief and meeting the
main brief of each plaintiff, and each party in the position
of plaintiff will have a period for filing a reply brief.
See TBMP 801.02(e).

Set forth below is a sample trial and briefing schedule for
a concurrent use proceeding involving parties A, B, C, D,
and E, where A, B, C, and D are all concurrent use
applicants, A's application has the latest filing date, B's
application has the next-latest filing date, C's application
has the next-latest filing date, D's application has the
earliest filing date, and E is a specified concurrent user
which does not own an involved application or registration
(the trial and briefing schedule would look the same if E
were a concurrent use applicant whose application had the
earliest filing date, or if E owned an involved
registration):

     THE PERIOD FOR DISCOVERY TO CLOSE       :  July 2, 1984

     Testimony period for A to close         :  August 31, 1984
     (opening 30 days prior thereto)

     Testimony period for B to close         :  October 30, 1984
     (opening 30 days prior thereto)

     Testimony period for C to close         :  December 31, 1984
     (opening 30 days prior thereto)

     Testimony period for D to close         :  March 1, 1985
     (opening 30 days prior thereto)

     Testimony period for E to close         :  April 30, 1985
     (opening 30 days prior thereto)

     Rebuttal testimony period for
     A to close                              :  June 14, 1985
     (opening 15 days prior thereto)

     Rebuttal testimony period for
     B to close                              :  July 29, 1985
     (opening 15 days prior thereto)

     Rebuttal testimony period for
     C to close                              :  September 12, 1985
     (opening 15 days prior thereto)

     Rebuttal testimony period for
     D to close                              :  October 28,
1985
     (opening 15 days prior thereto)

     Briefs on final hearing (37 CFR 2.128) shall become due as follows:

     Brief for A shall be due                :  December 27, 1985

     Brief for B shall be due                :  January 26, 1986

     Brief for C shall be due                :  February 25, 1986

     Brief for D shall be due                :  March 27, 1986

     Brief for E shall be due                :  April 26, 1986

     Reply briefs, if any, shall be due as follows:

     Reply brief for A shall be due          :  May 11, 1986

     Reply brief for B shall be due          :  May 26, 1986

     Reply brief for C shall be due          :  June 10, 1986

     Reply brief for D shall be due          :  June 25, 1986

Set forth below is another sample trial and briefing
schedule for a concurrent use proceeding involving parties
X, Y, and Z, where X is a concurrent use applicant, Y owns a
registration which is involved in the proceeding, and Z is a
specified concurrent user which does not own an involved
application or registration:

     THE PERIOD FOR DISCOVERY TO CLOSE       :  May 21, 1991

     Testimony period for X to close         :  July 22, 1991
     (opening 30 days prior thereto)

     Testimony period for Y to close         :  September 20, 1991
     (opening 30 days prior thereto

     Testimony period for Z to close         :	November 19, 1991
     (opening 30 days prior thereto)

     Rebuttal testimony period for
     X to close                              :  January 3, 1992
     (opening 15 days prior thereto)

     Briefs on final hearing (37 CFR 2.128) shall become due as follows:

     Brief for X shall be due                :  March 3, 1992

     Brief for Y shall be due                :  April 2, 1992

     Brief for Z shall be due                :  May 4, 1992

     Reply briefs, if any, shall be due as follows:

     Reply brief for X shall be due          :  May 19, 1992

The trial and briefing schedule set forth immediately above
would look the same if Y and Z were both specified
concurrent users which did not own an involved application
or registration.  If X, Y, and Z were all concurrent use
applicants, there would be a separate testimony period for
each party, and X and Y would each have a separate rebuttal
testimony period; each party would also be allowed time to
file a brief on the case, but only X and Y would be allowed
time in which to file a reply brief.

With the exceptions noted above, the practices and
procedures for taking discovery, filing motions, introducing
evidence, briefing the case, presenting oral arguments at
final hearing, and seeking review of a decision of the
Board, are essentially the same in a concurrent use
proceeding as in an opposition or cancellation proceeding.

1109  Settlement Providing for Concurrent Registration

Most concurrent use proceedings before the Board are not
litigated to final decision on the merits, but rather are
settled on the basis of an agreement between the parties
which provides for the issuance to the concurrent use
applicant(s) of the concurrent registration(s) sought.  Such
an agreement is usually filed by the concurrent use
applicant(s) together with a request for issuance of the
concurrent registration(s) sought.

The Board will not enter judgment in behalf of the
concurrent use applicant(s), and find such applicant(s)
entitled to concurrent registration, on the basis of a
settlement agreement, unless the terms of the agreement are
sufficient to persuade the Board that confusion, mistake, or
deception is not likely to result from the continued
concurrent use by the parties of their marks.  See Section
2(d) of the Act, 15 U.S.C. 1052(d); Meijer, Inc. v. Purple
Cow Pancake House, 226 USPQ 280 (TTAB 1985); Handy Spot Inc.
v. J. D. Williams Co., 181 USPQ 351 (TTAB 1974); and Janet
E. Rice, TIPS FROM THE TTAB:  Concurrent Use Applications
and Proceedings, 72 Trademark Rep. 403 (1982).  For
information concerning settlement agreements offered in a
concurrent use proceeding as a basis for the issuance of the
concurrent registration(s) sought, see Amalgamated Bank of
New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270,
6 USPQ2d 1305 (Fed. Cir. 1988); In re Beatrice Foods Co.,
429 F.2d 466, 166 USPQ 431 (CCPA 1970); Meijer, Inc. v.
Purple Cow Pancake House, supra; Handy Spot Inc. v. J. D.
Williams Co., supra; and Janet E. Rice, TIPS FROM THE TTAB:
Concurrent Use Applications and Proceedings, supra.  See
also Houlihan v. Parliament Import Co., 921 F.2d 1258, 17
USPQ2d 1208 (Fed. Cir. 1990).

If a settlement agreement does not include every party to
the proceeding, each concurrent use applicant still will
have the burden of proving its entitlement to registration
as against every party to the proceeding which is not also a
party to the agreement, even if a default judgment for
failure to answer has been entered against a nonincluded
party.  See Precision Tune Inc. v. Precision Auto-Tune Inc.,
4 USPQ2d 1095 (TTAB 1987).

1110  Effect of Abandonment of Involved Application

For information concerning the effect of the abandonment of
an application which is a subject of a concurrent use
proceeding, see TBMP 603.

1111  Effect of Adverse Decision in Opposition or
Cancellation

A party which receives an adverse decision, in an
opposition, cancellation, or interference proceeding, on the
issue of priority of use is not precluded thereby from
seeking concurrent registration, unless its first use in
commerce was subsequent to the earliest application filing
date of any conflicting application or registration owned by
another party to the opposition, cancellation, or
interference proceeding; that other party does not consent
to the grant of a concurrent registration to the applicant;
and concurrent registration is sought by way of a concurrent
use proceeding before the Board.  See Section 2(d) of the
Act, 15 U.S.C. 1052(d); Chichi's, Inc. v. Chi-Chi's, Inc.,
222 USPQ 831 (Comm'r 1984); U.S. Soil, Inc. v. Colovic, 214
USPQ 471 (TTAB 1982); Home Federal Savings & Loan Ass'n v.
Home Federal Savings & Loan Ass'n of Chicago, 205 USPQ 467
(TTAB 1979); and Cook's Pest Control, Inc. v. Sanitas Pest
Control Corp., 197 USPQ 265 (TTAB 1977).  For information
concerning the jurisdictional requirement of Section 2(d) of
the Act, see TBMP 1102.02(a)(2).

1112  "Conversion" of Opposition to Concurrent Use
Proceeding

In certain situations, an opposition proceeding may be
"converted" into a concurrent use proceeding.  In these
cases, the opposition proceeding is not actually transformed
into a concurrent use proceeding.  Rather, the opposition is
terminated, usually by dismissal without prejudice, in favor
of the concurrent use proceeding.  The concurrent use
proceeding, in turn, is instituted immediately.  In fact,
notice of the institution of the concurrent use proceeding
is normally included in the decision terminating the
opposition proceeding.  See Janet E. Rice, TIPS FROM THE
TTAB:  Newest TTAB Rule Changes; More Tips on Concurrent Use
Proceedings, 76 Trademark Rep. 252 (1986).  Cf. 37 CFR
2.99(c) (in effect providing, inter alia, that when a
concurrent use application has been published in the
Official Gazette for opposition, a concurrent use proceeding
will not be instituted unless no opposition is filed, or
unless all oppositions that are filed are dismissed).

An opposition may be terminated in favor of a concurrent use
proceeding in the situations described below:
     (1) When an opposition to a concurrent use application
is filed by a party specified in the application as an
exception to applicant's claim of exclusive use, the
opposition may be dismissed without prejudice in favor of a
concurrent use proceeding.  See Inland Oil & Transport Co.
v. IOT Corp., 197 USPQ 562 (TTAB 1977).  This action may be
taken by the Board upon its own initiative, or upon motion.
     (2) When an opposition to a concurrent use application
is filed by a party which is not specified in the
application as an exception to applicant's claim of
exclusive use, the Board may grant a motion to dismiss the
opposition without prejudice in favor of a concurrent use
proceeding if opposer files an application for concurrent
registration, naming applicant as an exception to its claim
of exclusive use.  However, the opposition will not be
dismissed, and the concurrent use proceeding instituted,
unless opposer's concurrent use application is published in
the Official Gazette for opposition, and no opposition is
filed, or all oppositions filed are dismissed.
     (3) When an opposition to a concurrent use application
is filed by a party which is not specified in the
application as an exception to applicant's claim of
exclusive use, the Board may grant a motion to dismiss the
opposition without prejudice in favor of a concurrent use
proceeding if applicant amends its application to specify
the opposer as an additional exception to its claim of
exclusive use.
     (4) When an opposition is filed against an application
for an unrestricted registration, the applicant may file a
motion to amend its application to one for concurrent
registration, reciting opposer as an exception to
applicant's claim of exclusive use, together with a motion
to terminate the opposition in favor of a concurrent use
proceeding.  If opposer consents to the amendment, the
opposition will be dismissed without prejudice, and the
concurrent use proceeding will be instituted.  If opposer
does not consent to the amendment, but applicant consents to
entry of judgment against itself with respect to its right
to an unrestricted registration, judgment will be entered
against applicant, in the opposition, with respect to
applicant's right to an unrestricted registration; the
amendment will be approved; and a concurrent use proceeding
involving the amended application will be instituted, all in
one Board action.  See Pro-Cuts v. Schilz-Price Enterprises
Inc., 27 USPQ2d 1224 (TTAB 1993); Faces, Inc. v. Face's,
Inc., 222 USPQ 918 (TTAB 1983); Marc A. Bergsman, TIPS FROM
THE UNITED STATES PATENT AND TRADEMARK OFFICE TTAB:
Concurrent Use and Intent-to-Use Applications, 83 Trademark
Rep. 416 (1993); and Janet E. Rice, TIPS FROM THE TTAB:
Newest TTAB Rule Changes; More Tips on Concurrent Use
Proceedings, 76 Trademark Rep. 252 (1986).  See also Janet
E. Rice, TIPS FROM THE TTAB:  Concurrent Use Applications
and Proceedings, 72 Trademark Rep. 403 (1982), and Rany L.
Simms, TIPS FROM THE TTAB:  The Concurrent User as Opposer,
67 Trademark Rep. 654 (1977) (NOTE:  these two articles were
written at earlier stages in the development of the Board's
practice concerning termination of an opposition in favor of
a concurrent use proceeding).

For information concerning the possible "conversion" of an
opposition to a concurrent use proceeding when the opposed
application is an intent-to-use application in which an
amendment to allege use has not been filed, see Marc A.
Bergsman, TIPS FROM THE UNITED STATES PATENT AND TRADEMARK
OFFICE TTAB:  Concurrent Use and Intent-to-Use Applications,
83 Trademark Rep. 416 (1993).

In appropriate situtations, a cancellation proceeding may
also be terminated in favor of a concurrent use proceeding,
if one party has a concurrent use application reciting the
adverse party in the cancellation proceeding as an exception
to its claim of exclusive use; the application is published
in the Official Gazette for opposition; and no opposition is
filed, or all oppositions filed are dismissed.

1113 Alteration of Restrictions on Concurrent Registration

A concurrent registration may be issued only pursuant to the
decision of the Board in a concurrent use proceeding, or on
the basis of a final determination, by a court of competent
jurisdiction, that more than one person is entitled to use
the same or similar marks in commerce.  See TBMP 1101.03,
and authorities cited therein.  A registration cannot be
restricted territorially by amendment under Section 7(e) of
the Act, 15 U.S.C. 1057(e), and 37 CFR 2.173(a).  See
Morgan Services Inc. v. Morgan Linen Services Inc., 12
USPQ2d 1841 (TTAB 1989); In re Forbo, 4 USPQ2d 1415 (Comm'r
1984); and In re Alfred Dunhill Ltd., 4 USPQ2d 1383 (Comm'r
1987).

Further, a concurrent registrant which wishes to alter the
restriction to its registration ordinarily may do so, if at
all, only through an appropriate decision in a new
concurrent use proceeding before the Board, or a new civil
action before a court of competent jurisdiction; a Section
7(e) amendment cannot be used to alter a concurrent use
restriction.  See Morgan Services Inc. v. Morgan Linen
Services Inc., 12 USPQ2d 1841 (TTAB 1989); In re Forbo, 4
USPQ2d 1415 (Comm'r 1984); and In re Alfred Dunhill Ltd., 4
USPQ2d 1383 (Comm'r 1987).

However, removal of such a restriction by amendment under
Section 7(e) may be permitted where an entity which was the
only exception to registrant's right to exclusive use of its
registered mark assigns its rights in its mark to
registrant, so that all rights in the mark are merged in
registrant.  See In re Alfred Dunhill Ltd., 4 USPQ2d 1383
(Comm'r 1987).

In addition, if every concurrent user specified in a
concurrent registration abandons its use of its involved
mark, and owns no subsisting registration thereof, the owner
of the remaining concurrent registration may file a new
application for an unrestricted registration of the mark.