Marketing on the Internet alone may not prevent a concurrent use registration if the services are geographic-specific services.

America’s Best Franchising sought a concurrent use registration for its 3 PALMS mark in connection with hotel services for use everywhere in the United States, except Arizona where registrant Roger Abbott used his 3 PALMS mark in connection with hotel services at a single hotel. Concurrent use registrations may be granted for the same or similar marks, each of which is restricted to certain parts of the United States. Use of the mark, always central in United States trademark law, is one necessary element prior to seeking a concurrent use registration. Applicants of U.S. trademark applications that rely solely on a foreign registration as a basis for the application are not eligible to initiate concurrent use proceedings without first establishing use in the United States.

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Abbott argued that his rights should not be limited to Arizona because his primary source of reservations was through the Internet by individuals not from Arizona. America’s Best Franchising argued that Abbott’s mark was weak because use of the word PALMS in connection with hotel services is ubiquitous and that confusion between the marks would be unlikely if the services tied to the marks are geographically restricted.

The TTAB considered whether a geographic restriction would result in no likelihood of confusion between the marks. The Board concluded that there would be no likelihood of confusion where such geographic restrictions existed because the PALMS element of the marks was weak, hotel services by definition are confined to a specific location, Abbott had used his mark only in Arizona and not expanded his use outside of Arizona, and there was no evidence of actual confusion.

This decision reaffirms the viability of the concurrent use doctrine in U.S. trademark law, even in the Internet age. The owner of a mark for geographic-specific services must do more than use the Internet to market the availability of those services in one location in order to avoid a concurrent use registration for other geographic areas in the United States.

As a result of this decision, the owners of marks for use in connection with geographic-specific services should monitor the marketplace and review their vulnerability to concurrent use registrations by third parties that are using similar marks elsewhere in the United States.