Future Wolf Greenfield associate and soon-to-be Notre Dame Law School graduate Kira-Khan McCarthy is enjoying an externship this semester at the Trademark Trial and Appeal Board. Here are two concurrent use decisions/orders for which Kira provided her assistance to the TTAB’s Cheryl Butler.

Birth to Three & Beyond Pediatric Therapies, LLC, dba The Therapy Tree, LLC v. Therapy Tree PLLC, Concurrent Use No. Concurrent Use No. 94002929 (April 21, 2020) (Order by McCarthy/Butler). The Board granted a petition to convert a cancellation proceeding brought by Birth to Three into a concurrent use proceeding. Birth to Three seeks registration of the marks shown above for various therapy services in the geographic area comprising the states of Illinois, Wisconsin, Iowa, Michigan, Minnesota, Indiana, and Ohio. Its adversary owns a registration for the mark THERAPY TREE for “Speech, occupational and physical therapy.” The Board then reviewed and accepted a concurrent use agreement submitted by the parties.

Substantively, the Agreement provides that the parties are unaware of any instance of actual confusion even though they have coexisted for approximately six years; that, because the nature of the services attract localized clientele, concurrent use of the parties’ respective marks is unlikely to create consumer confusion as to the source of the parties’ respective services; that the parties will use their respective marks to avoid confusion and that should one party become aware of an actual instance of consumer confusion, it will promptly notify the other so that both shall discuss and cooperate to eliminate the confusion; that the parties agree not to use or directly advertise their services under their respective marks in the other’s geographic region, but acknowledges that the parties have limited rights regarding promotions at conferences and publications; and that future applications by each party to register the THERAPY TREE mark will contain the same geographic restrictions. Id. at 6-8. The parties also acknowledge that each may maintain online and social media use. Id.

CareFreeEnzymes Inc. v. Michael Meyhoefer and Naproco, LLC by change of name fromGarden Girls Repellants and Mosquito Free LLC, Concurrent Use Proceeding No. 94002836 (April 21, 2020). CareFreeEnzymes Inc. sought a concurrent use registration for the mark MOSQUITO FREE WATER for, inter alia, water treatment products and “insecticides and pesticides for home and garden use and professional use,” naming three other users as exceptions to its exclusive rights. CareFreeEnzymes moved to remove the geographical restrictions in its application because,  Mosquito failed to appear or respond to the motion, and because the other two parties agreed with CareFreeEnzymes that there is no likelihood of confusion. CareFreeEnzymes was then forwarded to the Publication Division of this Office for republication as an unpublished application

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TTABlogger comment: Kira now knows more than I do about concurrent use.

Text Copyright John L. Welch 2020.