Paper Correspondence Outgoing

United States Patent and Trademark Office (USPTO)

POST PUBLICATION AMENDMENT DECISION

Issue date:  August 20, 2019

The assigned paralegal has reviewed the requested post publication amendment filed on

July 25, 2019 and determined the following.

The applicant asserts a concurrent use claim in the amendment; however, applicant has not shown how applicant is eligible for concurrent use registration under Trademark Act Section 2(d).  See 15 U.S.C. §1052(d); 37 C.F.R. §§2.42 and 2.99(e)-(f); TMEP §1207.04(c).  Therefore, the applicant must satisfy one or more of the following criteria:

(1)  Applicant must provide a true copy of a decree from a court of competent jurisdiction reflecting a final determination regarding the rights of the concurrent user.  37 C.F.R. §2.99(f); TMEP §1207.04(f); see 15 U.S.C. §1052(d). 

(2)  Applicant must provide a copy of a decision by the Trademark Trial and Appeal Board (Board) in a prior concurrent use proceeding reflecting a final determination regarding the rights of the concurrent user.  TBMP §1103.02; TMEP §1207.04(g); see 15 U.S.C. §1052(d); 37 C.F.R. §2.99(f). 

(3)  Applicant must provide a copy of a written consent signed by the owner of the conflicting registration who is consenting to the grant of a concurrent use registration to the applicant.  TMEP §1207.04(c); see 15 U.S.C. §1052(d).

(4)  Applicant must specify that the applicant’s date of first use in commerce is prior to the filing date of (a) any pending applications or (b) any applications that have matured into registrations issued under the Trademark Act of 1946.  15 U.S.C. §1052(d); 37 C.F.R. §2.99(e); TMEP §1207.04(c).  If an excepted user has not yet filed an application or does not own a registration, then applicant’s date of first use in commerce must be prior to the filing date of any application that may be filed by the excepted user.  37 C.F.R. §2.99(e); TMEP §1207.04(c). 

If applicant can satisfy one of the four eligibility criteria above, applicant must also satisfy the following administrative requirements:

·       Specify the goods and/or services and the geographic area(s) for which applicant seeks registration of the mark.

·       Set forth the mode of use of the mark.

·       Specify the exceptions to the claim of exclusive use, listing any concurrent use by others and the relevant goods and/or services, geographic areas and periods of this use.

·       List the names and addresses of the concurrent users, the registrations issued to or applications filed by them (if any), and the mode of such use.

·       Provide a verified statement that no one else except as specified in the application has the right to use the mark. This statement must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20.

TMEP §1207.04(d); see 15 U.S.C. §§1051(a)(3)(D), 1052(d); 37 C.F.R. §2.42.

Therefore, the application will be returned to processing without entry of the requested amendment. 

Applicant may file a subsequent post-publication amendment that includes the required eligibility and administrative elements set forth above. 

In the alternative, applicant may file a petition to the Director to restore jurisdiction of the application to the examining attorney to consider the amendment.  37 C.F.R. §§2.84 and 2.146; Trademark Manual of Examining Procedure (TMEP) §§1702, 1703, and 1705.  The requirements for filing a petition include a $100 petition fee and a verified statement of the facts signed by a proper party.  37 C.F.R. §§2.146(c) and 2.193(e)(5); TMEP §1705.07.   If you wish to file a petition to the Director, you may do so electronically using the Petition to the Director under Trademark Rule 2.146 form, which is available at http://www.gov.uspto.report/trademarks/teas/petition_forms.jsp.  However, if the petition does not include the required elements listed above, it is likely that the examining attorney will deny the amendment even if the petition is granted and jurisdiction is restored. 

Please note that the Trademark Trial and Appeal Board (TTAB) has jurisdiction over any application in which an opposition has been filed.  37 C.F.R. §2.133.  Therefore, if a supplemental post-publication amendment or petition is submitted after the filing of an opposition, the contents of the amendment will not be reviewed or the petition will be dismissed without consideration on the merits.  Applicant’s only recourse will be to submit the amendment to the TTAB either on paper or through the Electronic System for Trademark Trials and Appeals (ESTTA) at http://estta.gov.uspto.report/.  See the Trademark Trial and Appeal Board Manual of Procedure (TBMP) §§514 et seq. for further information about amendment of an application during an opposition.

/Karen Hilaski/

Paralegal Specialist

Office of the Deputy Commissioner

For Trademark Examination Policy

571-272-2873