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

In this concurrent use proceeding, Hanscomb Consulting, Inc. (“HCI”) sought a concurrent use registration for the mark HANSCOMB CONSULTING & Design (shown below) for various business services, covering the entire United States except for two geographical areas (Hinsdale, Illinois and Los Angeles, California). HCI conceded that Hanscomb Limited (“HL”) owns an application to register HANSCOMB for identical services and that HL may have common law rights in those two locations. The Board, however, found that HC has prior rights in “many more locales throughout the country” and therefore that HCI was not entitled to the concurrent use registration it sought. Hanscomb Consulting, Inc. v. Hanscomb Limited, Concurrent Use No. 94002720 (February 26, 2020) [precedential] (Opinion by Judge Thomas W. Wellington).

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 it 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).

HCI established that it began using its mark prior to the filing date of HL’s application to register HANSCOMB. HCI then had the burden of proving 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 HL filed an unrestricted application and was listed as an excepted user in HCI’s concurrent use application, HL was entitled to a presumption that it is entitled 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.

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TTABlog comment: Why is this precedential?