Thursday, February 27, 2020

Precedential No. 8: TTAB Dissolves Concurrent Use Proceeding Because Plaintiff's Proposed Territory Overlapped With Defendant's Use

Hanscomb Consulting, Inc. (“HCI”) sought a concurrent use registration for the mark HANSCOMB CONSULTING & Design (shown below) for various business consultation and project management services, covering the entire United States except for two geographical areas (Hinsdale, Illinois, and Los Angeles, California). HCI conceded that its use of the mark was not exclusive, that Defendant Hanscomb Limited (“HL”) owns an application to register HANSCOMB for identical services and that HL may have established common law rights in those two locations. The Board, however, found that HL has prior rights in “many more locales throughout the country” and therefore that Plaintiff HCI was not entitled to the concurrent use registration it sought. Hanscomb Consulting, Inc. v. Hanscomb Limited, 2020 USPQ2d 10085 (TTAB 2020) [precedential] (Opinion by Judge Thomas W. Wellington).

Although Defendant HL filed its application prior to HCI’s filing date and although it claimed dates earlier than those claimed by HCI, HCI’s acknowledgment in its concurrent use application that HL was an exception to HCI’s rights and the allegation by HCI of first use before HL’s filing date allowed the USPTO to approve HCI’s application for publication. HL filed an opposition to that application and the Board then instituted this concurrent use proceeding and dismissed the opposition.

In an earlier proceeding HL had opposed HCI’s application for a nationwide registration for HANSCOMB CONSULTING & Design, on the ground of priority and likelihood of confusion. HCI moved to amend that application to one seeking a concurrent use registration, but the Board denied the motion because HCI’s application was based on intent-to-use, not actual use, and therefore could not be so amended. [See TTABlog post here]. HCI then withdrew its application and the opposition was sustained.

The entry of judgment against HCI in that opposition "prevents consideration of any assertion by either party that no likelihood of confusion exists based on the parties' use of their marks in overlapping geographic areas." See Over the Rainbow, Ltd. v. Over the Rainbow, Inc., 227 USPQ 879, 882-83 (TTAB 1985).

Turning back to the concurrent use proceeding, Defendant HL claimed that it used its HANSCOMB mark throughout the United States for many years and that it was entitled to a geographically unrestricted registration for its mark. HCI had the burden of proving, by a preponderance of that evidence, its entitlement to registration for its proposed geographic territory, that HL’s territory should be correspondingly restricted, and that such restrictions would avoid a likelihood of confusion arising from the parties’ concurrent use of their marks.

Because Defendant HL filed an unrestricted application and was listed as an excepted user in HCI’s concurrent use application, HL enjoyed a presumption of entitlement to a nationwide registration. It was therefore the Board’s role to "determine the extent of HL’s use of its mark prior to HCI’s established use dates and whether HCI has carried its burden of proving that it is entitled to geographically restrict HL’s use of its mark." Based on HL’s declaration and deposition testimony, the Board ruled against HCI.

We find, based on the record before us, that HL’s use of its HANSCOMB mark in connection with its services has not, as contended by HCI, been confined to the two postal area zip codes identified in HCI’s application. To the contrary, we find that HL has demonstrated prior and continuous use of its HANSCOMB mark in many locations throughout the U.S.

This finding of fact by the Board "invalidates HCI's proposed geographic restriction on the use of HL's mark in connection with the services." And so the Board dissolved the concurrent use proceeding. HCI's application was deemed abandoned.

Read comments and post your comment here.

TTABlog comment: Why is this precedential?

Text Copyright John L. Welch 2020.


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