Two recent decisions illustrate when an applicant may, and when it may not, successfully move to amend its opposed, geographically unrestricted application to one for concurrent use registration. In the first, the Board granted the motion and instituted a concurrent use proceeding. In the second the Director of the USPTO upheld the Board's denial of the motion to amend.
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Renata Foucré, Erin Hartman and Heather Marlow v. Early Recognition Is Critical, Inc., Opposition No. 91225035 (July 22, 2015) [not presidential]. In this Section 2(d) opposition to registration of the mark HUCK CANCER for "organizing and conducting flying disc tournaments to raise awareness for cancer," Applicant Early Recognition moved to amend the opposed application to one seeking concurrent use registration. The Board observed that:
An applicant whose geographically unrestricted use-based application is the subject of an opposition proceeding may file a motion to amend its application to one for a concurrent use registration, reciting oppose(s) as exception(s) to the applicant’s claim of exclusive use, together with a motion to terminate the opposition in favor of a concurrent use proceeding. If the opposer does not consent to the amendment, the amendment may be approved and entered, and a concurrent use proceeding instituted, provided that applicant consents to entry of judgment against itself in the opposition with respect to its right to a geographically unrestricted registration. TBMP §§ 514.03 and 1113. In such cases, judgment will be entered against the 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 in one Board action. TBMP § 1113.01.
Early Recognition claimed the right to exclusive use of the subject mark for the entire United States, except for the County of San Francisco within the state of California. It consented to entry of judgment against itself as to an unrestricted registration, and moved to terminate the opposition in favor of a concurrent use proceeding.
Concluding that Early Recognition met the jurisdictional and procedural requirements for a concurrent use proceeding, the Board granted the motion, entered judgment against it in the opposition, dismissed the opposition with prejudice, and instituted a concurrent use proceeding.
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Hanscomb Limited v. Hanscomb Consulting, Inc., Opposition No. 91216132 (Director of USPTO, June 29, 2016). On the eve of the testimony period, Applicant Hanscomb Consulting's moved to amend its application to register the mark HANSCOMB CONSULTING for certain business consultation services, in order to seek a concurrent use registration. The Board denied the motion because the opposed application was based on intent-to-use, not actual use. Said the Board (here):
[I]ntent-to-use applications, are subject to concurrent use proceedings only after an acceptable allegation of use under Trademark Rules 2.76 or 2.88 has been filed. See Trademark Rule 2.99(g); see also TBMP §1103.01(a) (2015) (emphasis added). Further, applicants may not file an amendment to allege use in an application under Trademark Act § 1(b) that is the subject of an opposition in an effort to qualify for concurrent use registration. TBMP § 1105.
Hanscomb Consulting then filed a petition to the Director, seeking waiver of Rule 2.76(a)(1), so that it could file its amendment to allege use. The Director observed that a provision of the Rules may be waived when (1) an extraordinary situation exists, (2) justice requires, and (3) no other party is injured. The Director concluded that none of the conditions was met here.
This was not an extraordinary situation because established procedures govern the conversion of an opposition to a concurrent use proceeding. Those procedures do not apply here. The appropriate course is for the applicant to abandon the application and file a new application seeking concurrent use registration. Judgment will be entered against applicant in the opposition, but would not preclude such a restricted new filing,
The Director rejected applicant's claim that it would be severely prejudiced by the Board's ruling, pointing out that the loss of applicant's "priority date" based on its filing is irrelevant, since applicant admitted that it was not entitled to nationwide rights and since applicant's constructive use date "has little (if any) significance in a concurrent use proceeding," where applicant must demonstrate actual use of its mark.
Finally, the Director determined that opposer would be prejudiced should the petition be granted: "the delay required by examination of the AAU, and resolution of any use-based refusals or requirements, would affect opposer as well as petitioner."
And so the petition was denied.