Thursday, December 15, 2011

Precedential No. 34: TTAB Approves Geographic Restriction in Concurrent Use Proceeding Despite Overlap of Parties' Territories

This concurrent use proceeding grew out of a prior opposition between the parties, involving Holmes' mark CRUIZERS in the logo form shown immediately below, for "retail store services featuring convenience store items and gasoline." Myers claimed likelihood of confusion with its registered mark MYERS CRUIZERS DRIVE-IN for "restaurant services." The parties filed a consent motion to terminate that proceeding in favor of this concurrent use proceeding, and then requested entry of an amendment to Holmes's application to restrict the services to the geographical area that comprises the United States except for Arkansas. Holmes Oil Company, Inc. (by assignment from R. Dwayne Meadows) v. Myers Cruizers of Mena, Inc., 101 USPQ2d 1148 (TTAB 2011) [precedential].

Myers promptly filed a motion to implement the parties' settlement agreement, which provided that Holmes would obtain a registration that excluded Arkansas, while the registration owned by Myers would remain unrestricted.

The Board noted that in the usual concurrent use proceeding, each party seeks a different geographical area for its mark. By way of contrast, if a consent agreement is involved, rather than a concurrent use agreement, generally there is no geographical restriction on either mark. This case is only "nominally" a concurrent use proceeding since the agreement provides for use of the involved marks in overlapping territories [i.e., the territory of Not-Arkansas - ed.]. However, according to Trademark Rule 2.99(h), the TTAB may consider concurrent use rights "only in the context of a concurrent use registration proceeding."

The question for the Board was whether the parties can co-exist under the agreement, without there being a likelihood of confusion. A consent agreement is entitled to great weight on that issue if it "includes information as to why the parties' believe confusion is unlikely, ... evidences the parties' business-driven belief and conclusion that there is no likelihood of confusion, and ... includes provisions to avoid any potential confusion."

The parties' agreement was confidential, but the Board noted that it was intended to resolve trademark claims, it included provisions to address actual confusion that might arise, and it indicated the nature of each party's use and included restrictions on use. The agreement, however, could have been improved if it included more details regarding the steps to be taken in the case of actual confusion, and an explanation of why the parties think that confusion is not likely.

The Board concluded that this agreement between parties knowledgeable as to the relevant trade and market practices is "adequate evidence that confusion is not likely and supports Holmes' right to register the mark in question." It therefore approved the proposed geographical restriction to Holmes' application.

Map of Not-Arkansas

Text Copyright John L. Welch 2011.


At 3:59 PM, Anonymous Anonymous said...

I love the map of "not Arkansas" Thanks for the laugh.

At 4:51 PM, Anonymous Anonymous said...

I guess this issue comes up so often we really needed this decision to be precedential.

At 4:58 PM, Blogger John L. Welch said...


At 9:38 PM, Anonymous Anonymous said...

You laugh, but here we are a year later and my firm is bringing a federal action to undo a series of registrations where the settlement agreement simply failed to address the likelihood of confusion issue (but where the TTAB simply accepted the agreement without comment).


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