Key Takeaways

  • A concurrent use trademark registration allows multiple parties to register the same or similar trademark, typically divided by geographic regions.
  • The USPTO heavily scrutinizes these applications to avoid consumer confusion.
  • Parties may submit concurrent use agreements or be required to litigate the matter before the Trademark Trial and Appeal Board.
  • Common law rights are critical in determining priority of use and eligibility for concurrent registration.
  • A concurrent use proceeding must demonstrate that the concurrent use will not cause confusion, mistake, or deception.
  • Successful concurrent use registrations often require substantial evidence, legal expertise, and potential negotiations or settlements.Concurrent use trademark registration occurs when an applicant with an eligible trademark requests issuance of a registration concurrent with the registration of a conflicting mark.

Why Apply for Concurrent Use Trademark Registration?

For trademark applicants seeking the benefits that come from federal trademark registration, concurrent use registration may yield advantages despite potentially infringing on another entity's trademark rights.

One of the most significant principles of trademark regulation in the U.S. is that the initial entity to establish and utilize a trademark has the exclusive right to its continued usage in relation to their products or services. In that regard, they likewise have the right to stop others from using their trademark or anything that closely resembles it in order to prevent consumer confusion.

Concurrent use registration allows the owners of both trademarks the protection of federal registration, with each one limited in certain ways to reduce the chance of any confusion among members of the public. Essentially, both trademark owners agree to do their best to stay out of the other brand's way, whether it be through the industries they are competing in or the local areas in which they are operating.

In a typical concurrent use scenario, one entity limits its use of the trademark to a specific geographic area or industry when the second trademark user later, and often innocently, adopts the same or a very similar trademark. The second user, then, typically uses the mark in an area geographically removed from the first. Alternatively, the second user might sell goods in a different industry or product segment to avoid trademark infringement.

Application Requirements for Concurrent Use Trademark Registration

Applications for concurrent use are considered in a similar manner to other trademark applications. Attorneys at the United States Patent and Trademark Office review all applications to determine their compliance with registration requirements. Applications must conform to four criteria in order to receive registration for concurrent use:

  • Applicants must specifically list their goods and services, as well as the physical locations and geographic scope in which they will operate with their trademark.
  • Applicants must also specify exceptions to their claim of use, including any knowledge they have of others currently using said trademark, the products involved, the location, and timeframe of the trademark's usage.
  • Applicants must likewise list all known concurrent users along with their addresses, any registrations or applications they own or have filed, and the manner in which the mark is used.
  • The approved concurrent use will be constructed in such a way that assures only the concurrent registrant will have the right to the trademark's usage, as the sole exception to the rights of the other registrants.

Concurrent use applicants may also be obliged to meet additional conditions, depending on whether the application is submitted to the Trademark Trial and Appeal Board or is resulting from a court order.

How Concurrent Use Proceedings Work

When a concurrent use trademark application is filed, it may trigger a legal process known as a concurrent use proceeding, overseen by the Trademark Trial and Appeal Board (TTAB). This process determines whether two or more parties can simultaneously hold rights to the same or similar mark in different geographic areas.

To succeed in a concurrent use proceeding, an applicant must show:

  • Lawful use of the trademark in commerce before the registrant's application date.
  • Continuous use without abandonment.
  • That the applicant’s use is geographically distinct and not likely to cause consumer confusion.
  • That there is no bad faith or attempt to trade on the senior user’s goodwill.

The TTAB considers evidence such as sales records, advertising, geographic reach, and customer base. If the board finds concurrent use will not confuse the public, it may issue a geographically restricted registration.

Concurrent Use Agreements

In certain circumstances, two entities may choose to forge concurrent agreements, also known as co-existence or consent agreements, in which they mutually allow for trademark use.

Concurrent use agreements are an effective way to resolve disputes over trademarks when chances are low for customer confusion or an adverse effect on either group's brand. However, in these types of agreements, the power is almost exclusively with the original trademark holder.

Alternatives to Litigation: Settlement and Consent Agreements

In many cases, concurrent use disputes are resolved without litigation through:

  • Consent Agreements: Where the senior user agrees to let the junior user register a similar mark with specific restrictions (e.g., geographic limits or market segmentation).
  • Settlement Agreements: Parties agree on boundaries and conditions for trademark use and may jointly request the TTAB to enter a judgment based on the agreement.

These documents must clearly define the scope of each party’s use and address how confusion will be avoided. The USPTO examines these agreements for clarity, mutual benefit, and their ability to prevent confusion.

Common Law Trademark Rights and the Trademark Act

Common law can help establish trademark protection for the first user of a mark within a given territory, regardless of registration status. In order to discern which party has the right to trademark use, a close examination must be undertaken to explore who used the mark first in that territory, how it was used, what records exist of its first use, and so forth. Disputing a trademark requires knowledgeable legal discernment and frequently involves complex sets of facts.

The safest practice is to be the first to both register and use a trademark in order to maintain exclusive rights to the mark. Under the Trademark Act, the application filing date establishes the date of a trademark's “constructive use,” regardless of whether the date coincides with actual or intended use of the trademark. This gives the applicant nationwide priority in most cases, except for entities who began to use the mark, or applied for the mark, before that date. Under these circumstances, common law may also be used to sort through the facts and establish who holds proper claim to the trademark.

Limitations and Risks of Concurrent Use

While concurrent use allows for trademark coexistence, it comes with risks:

  • Narrow Scope of Protection: Each party’s trademark rights are geographically limited, meaning neither has nationwide exclusivity.
  • Enforcement Challenges: Monitoring unauthorized expansion or infringement outside a party’s designated territory can be difficult.
  • Business Growth Constraints: Future expansion into the other party’s region may be restricted, complicating growth strategies or franchising.

Due to these limitations, businesses must carefully weigh the long-term implications before pursuing concurrent use registration.

Frequently Asked Questions

1. Can two companies legally use the same trademark? Yes, under a concurrent use registration, two companies can legally use the same or similar trademark in different geographic regions, provided there is no likelihood of consumer confusion.

2. What triggers a concurrent use proceeding? A concurrent use proceeding is typically initiated when a trademark applicant seeks registration for a mark already in use by another party in a different region, and the USPTO requires a legal determination of whether coexistence is possible.

3. How long does a concurrent use proceeding take? These proceedings can take several months to years depending on the complexity of the case, the volume of evidence, and whether parties reach a settlement.

4. What is the role of the TTAB in concurrent use cases? The Trademark Trial and Appeal Board conducts hearings, reviews evidence, and determines whether concurrent use will cause confusion, ultimately approving or denying the registration.

5. Is it better to pursue a concurrent use registration or rebrand? It depends. If your business is well-established in a distinct geographic area and unlikely to overlap with the senior user, concurrent use may be feasible. However, if future expansion is a goal, rebranding might offer fewer long-term limitations.

If you need help with concurrent use trademark registration, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.