Significance of concurrent use registrations capped by Internet use

In Hubcap Heaven LLC v Hubcap Heaven Inc, the US Patent and Trademark Office's Trademark Trial and Appeal Board has as part of its determination made a significant acknowledgement that, in the age of the Internet, the practice of concurrent use registration may be of diminishing legal significance.

A concurrent use proceeding is initiated by an applicant who desires a registration that is to be limited in territory. In addition to the regular elements required in any application, the applicant must state:

  • the extent of the concurrent use by others;

  • any registrations or applications filed by such other persons;

  • the goods in relation to which use is made; and

  • time periods of use.

The TTAB found that Hubcap Heaven LLC (HH LLC), operating primarily in three cities in the Maryland/Virginia area of the United States, was entitled to nearly nationwide use of the service mark HUBCAP HEAVEN (with the word 'hubcap' disclaimed) for "wholesale and retail store, mail order, and online electronic catalogue sales order services in the field of new, reconditioned, and used automotive parts". The only exclusion was a 50-mile radius around each of Hubcap Heaven Inc's (HH Inc) four cities of operation (all different from HH LLC's cities of operation). The TTAB further held that HH LLC's previously registered mark HUBCAP HEAVEN for various automotive goods should be similarly limited geographically.

HH Inc did not have a federal application or registration, thereby making priority a non-issue. In its likelihood of confusion analysis, the TTAB noted that neither HH LLC nor HH Inc had provided any evidence of conflicting concurrent use by the parties in any common territories. In its use in commerce analysis, regarding the non-conflicting areas, the TTAB noted that HH LLC had properly shown use in commerce prior to HH Inc's pleaded date. However, there was one complication: HH LLC's use of the Internet to advertise its business nationwide (and worldwide for that matter).

The TTAB acknowledged the troubling conclusion that geographically restricted registrations could nevertheless be used on the Internet for nationwide distribution, thereby making a concurrent use registration a legal fiction. It further acknowledged the lack of judicial precedent or guidance on this matter. The TTAB then cited a US Court of Appeals for the Sixth Circuit decision discussing the possibility of looking to decisions regarding nationwide advertising by parties with concurrent trademark rights, but did not discuss it any further. The TTAB declined to establish an absolute prohibition on the issuance of geographically restricted registrations when the evidence shows that one or more of the parties to a concurrent use proceeding does business on the Internet. Cases must be decided on the basis of their individual facts. It did note, however, that consumers are becoming more Internet-savvy, and their increasing familiarity may lead them to understand that the fact that a business has an internet site does not necessarily mean that the business is conducted nationwide.

Howard J Shire and Sumit Bhattacharya, Kenyon & Kenyon, New York

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