A concurrent use registration may also be based on a final determination by the Trademark Trial and Appeal Board, in a prior concurrent use proceeding, that applicant is entitled to a concurrent use registration of its mark. TBMP §1103.02.

When examining an application for a concurrent use registration based on a final Board decision in a prior concurrent use proceeding, the examining attorney must determine whether the application complies with the specific requirements for concurrent use applications (see TMEP §1207.04(d)(i)-(ii)) and all other requirements that would apply to an unrestricted application.

In addition, pursuant to TBMP §1103.02, the following conditions must be met:

1. (1) The applicant is entitled to registration subject only to the concurrent lawful use of a party or parties to the prior concurrent use proceeding;
2. (2) The Board’s prior decision specifies applicant’s right to concurrent use registration;
3. (3) A copy of the Board’s prior decision is submitted to the examining attorney;
4. (4) The concurrent use application complies with the Board’s prior decision, in that it seeks registration for the same, or a more limited, geographic area or mode of use than granted to the applicant in the prior decision; seeks registration for substantially the same mark or one less confusingly similar to those of the other party or parties in the prior proceeding; and seeks registration for substantially the same goods/services/collective membership organization as, or more limited goods/services/collective membership organization than those listed in the Board’s prior specification of the applicant’s entitlement to concurrent registration; and
5. (5) The excepted use specified in the concurrent use application does not involve a registration, or any involved registration has been restricted by the Director in accordance with the Board’s prior decision.

If the conditions listed above are satisfied, the examining attorney must ensure that the appropriate concurrent use statement for registration based on a final determination by the Board in a prior concurrent use proceeding is entered into the Trademark database (see TMEP §1207.04(g)(i)) and approve the application for publication. See TBMP §1103.02.

If any of the conditions listed above are not satisfied, the examining attorney will approve the application for publication subject to a new concurrent use registration proceeding before the Board (see TMEP §§1207.04(e), (e)(i)), rather than pursuant to a final decision of the Board in a prior concurrent use proceeding. See TBMP §1103.02.

If the application satisfies all the conditions listed in TMEP §1207.04(g), complies with all other relevant requirements, and is otherwise entitled to registration, the examining attorney will approve the application for publication of the mark. The application must contain a concurrent use statement to be printed in the Official Gazette. The statement may be submitted by the applicant or prepared by the examining attorney. Pursuant to TBMP §1103.02, the statement must delineate the concurrent rights of the parties as determined by the Board, in the following form:

Registration limited to the area comprising __________ [indicating the area specified in the Board’s prior decision as the area for which applicant is entitled to registration and any other restriction designated by the Board] pursuant to Concurrent Use Proceeding No. ______________ [specifying the number of the prior concurrent use proceeding]. Concurrent registration with ________________ [specifying the application serial number(s) or registration number(s), if any, of each other party involved in the prior concurrent use proceeding; otherwise, the name and address of each other party].

After publication, if no opposition is filed, or if any opposition that is filed is dismissed or withdrawn, the application will mature into a registration.