TTAB Denies Motion to Re-open Concurrent Use Proceeding to Remove Geographical Restriction

The Board denied TMC's motion to re-open this 1997 concurrent use proceeding involving the mark ON THE RUN for retail convenience store services. TMC obtained a concurrent use registration for the entire United States except for the state of Oklahoma. It sought to remove that geographical restriction from its registration on the ground that, according to its evidence, Ronald D. Donohue, the excepted concurrent user, is no longer using his common law mark. TMC Franchise Corp. v. Ronald D. Donohue, Concurrent Use No. 94001076 (August 20, 2020) [not precedential].

The Board observed that a party may seek an amendment to the concurrent use restriction in its registration only through a new concurrent use proceeding, or by court order. However, removal may be permitted if the excepted user has assigned its rights to registrant. See In re Alfred Dunhill, 4 USPQ2d 1383,1384 (Comm'r 1987).

Here, Donahue did not assign his rights, and so the Board denied the motion to re-open. However, it stated that TMC may file a new application for an unrestricted registration of the mark. See TBMP Section 1114.

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TTABlogger comment: In Boston, convenience stores are called "spas."

Text Copyright John L. Welch 2020.