TTAB - Trademark Trial and Appeal Board - *1 THE TAMARKIN COMPANY v. SEAWAY FOOD TOWN, INC. Opposition No. 87,637 March 21, 1995

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)

 

*1 THE TAMARKIN COMPANY

v.

SEAWAY FOOD TOWN, INC.

Opposition No. 87,637

March 21, 1995

 

J.D. Sams, J.E. Rice and R.L. Simms

 

 

Administrative Trademark Judges

 

 

 This case now comes up on applicant's consented motion to amend its application to one seeking a concurrent registration. For the reasons discussed below, applicant's motion is denied.

 

 

 Applicant Seaway Food Town, Inc. (hereinafter sometimes referred to as Seaway), an Ohio corporation, has filed an application seeking registration of the mark FLORAL PLUS and design, depicted immediately below,

 

 

 

 

for "retail store services in the field of flowers and plants." [FN1] Registration has been opposed by another Ohio corporation, The Tamarkin Company (hereinafter sometimes referred to as Tamarkin). In its notice of opposition, Tamarkin alleges that, since prior to Seaway's claimed date of first use, Tamarkin has used the mark FLORAL PLUS in interstate commerce in connection with "products and services relating to wholesale floral and plant sales." [FN2] Seaway has filed an answer denying the salient allegations of the notice of opposition.

 

 

 We turn first to Seaway's proposed amendment of the application involved in this opposition proceeding. By the proposed amendment, Seaway seeks to amend its application from one seeking an unrestricted registration to one seeking a concurrent registration. The proposed amendment reads as follows:

   An exception of applicant's right to exclusive use of its mark FLORAL PLUS  (and design), for use in connection with retail store services in the field of flowers and plants set forth in the present application, is use by The Tamarkin Company, a company doing business at 5635 South Ave., Boardman, Ohio 44512, which is using the mark FLORAL PLUS for wholesale distributorship of floral products, namely, flowers and plants, and is the owner of application Serial No. 74/342,667, filed December 23, 1992, for the mark FLORAL PLUS for wholesale distributorship of floral products, namely, flowers and plants. Upon information and belief, the Tamarkin Company has used its mark FLORAL PLUS in at least the states of Ohio and Pennsylvania since at least as early as September 1987 to the present, by using the mark on promotional literature and advertising, and other ways customary in the wholesale trade. [FN3]

 

 

 Applicant's proposed amendment of its application to one seeking concurrent use registration is rejected. It appears that the sole basis for applicant's request for institution of a concurrent use proceeding and issuance of concurrent registrations is the asserted dissimilarity in the trade channels in which the parties' services are offered. Applicant contends that there is no likelihood of confusion because applicant's recitation of services limits applicant's services to retail trade channels, while opposer's recitation limits opposer's services to wholesale trade channels. For the reasons discussed below, the Board finds that it is unnecessary to institute a special concurrent use proceeding to determine the validity of applicant's contention regarding the effect of the trade channel limitations on the likelihood of confusion, and thus declines to institute concurrent use proceedings in this case.

 

 

  *2 In relevant part, Section 2(d) of the Trademark Act provides as follows:

   Sec. 2. No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--

   (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Commissioner determines that confusion, mistake or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce ... Concurrent registrations may also be issued by the Commissioner when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Commissioner shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.

 

 

 The purpose of a concurrent use proceeding is to provide a forum for determining whether an applicant, whose right to an unrestricted registration is barred by the main clause of Section 2(d) due to the likelihood of confusion which would result from his unrestricted use of the mark on the identified goods, might nonetheless be entitled to a specially restricted "concurrent" registration which imposes conditions and limitations on the applicant's use of the mark. [FN4] In cases where confusion is likely to result from an applicant's unrestricted use of the mark, but confusion is not likely to result from applicant's use of the mark in accordance with specified conditions and limitations, then a registration incorporating those conditions and limitations may be issued pursuant to the concurrent use proviso of Section 2(d). [FN5]

 

 

 That portion of Section 2(d) dealing with concurrent use was enacted as a proviso to the main clause of Section 2(d), and must be considered in conjunction therewith. The concurrent registration it contemplates is not an alternative type of registration which is available to every applicant independent of and without reference to the main clause of Section 2(d), nor is the concurrent use proceeding an independent, alternative route to registration open to all applicants. Rather, concurrent use proceedings are appropriate only in those relatively rare circumstances where the issue of whether a likelihood of confusion exists cannot be fully or accurately adjudicated, under the main clause of Section 2(d), by means of the Office's usual ex parte and inter partes proceedings.

 

 

  *3 Furthermore, the statute does not provide for issuance of concurrent registrations as a matter of right. Compare the main clause of Section 2(d), which in essence provides that, insofar as the issue of likelihood of confusion is concerned, a registration shall issue if confusion is unlikely to result from applicant's use of its mark on its goods, to the concurrent use proviso's permissive statement that a concurrent registration may be issued in certain circumstances. Because the issuance of concurrent registrations is permissive, not mandatory, the Board has the discretion to decline to institute concurrent use proceedings in a particular case. [FN6]

 

 

 Any "conditions and limitations" as to the parties' marks and/or goods which are incorporated into the parties' respective drawings and identifications of goods and/or services can and must be considered as part of the basic likelihood of confusion analysis under the main clause of Section 2(d). That analysis requires, and indeed is essentially based upon, a comparison of the parties' respective marks and goods, as reflected in their drawings and identifications. It is wholly unnecessary to institute a special concurrent use proceeding to determine whether conditions and limitations pertaining solely to the parties' marks and/or goods, and incorporated into their drawings and/or identifications, might be sufficient to avoid a likelihood of confusion.

 

 

 Accordingly, where the purported concurrent use "conditions and limitations" which are said to eliminate the likelihood of confusion between the parties' respective marks and goods are incorporated, or are capable of being incorporated, into the applicant's drawing of its mark and/or identification of goods or services, and into the drawing and/or identification of any involved application or registration which may be owned by the excepted user or users named by the applicant, the Board will decline to institute a concurrent use proceeding. The effect of such conditions or limitations on the determination of whether confusion is likely may instead be analyzed under the main clause of Section 2(d), and in the context of the Office's usual ex parte and inter partes proceedings. [FN7] Concurrent use proceedings shall be reserved for those situations where the proposed conditions and limitations cannot be incorporated into the drawing of the mark or the identification of goods, and cannot be considered under the main clause of Section 2(d).

 

 

 We recognize that this interpretation of the statute, and resulting statement of policy, might appear to be at odds with the language of the statute itself, which expressly contemplates the possibility of issuance of concurrent registrations based on "conditions and limitations ... as to the goods on or in connection with which the marks are used." However, we cannot find any way, consistent with the statutory scheme as a whole, to give logical effect to that statutory language. [FN8] The facts of this case are illustrative.

 

 

  *4 The concurrent use "conditions and limitations" proposed by applicant consist solely of the trade channel limitations the parties have incorporated into their respective recitations of services. Certainly, such trade channel limitations might constitute "conditions and limitations as to ... the goods on which the marks are used," within the strict language of the concurrent use proviso. However, the redundancy of that particular statutory language, when viewed in the context of Section 2(d) as a whole, is apparent when we consider that those trade channel limitations, when incorporated into the parties' respective identifications of services, are already a necessary part of the basic likelihood of confusion analysis required under the main clause of Section 2(d), and that their effect on the likelihood of confusion will already have been determined by the Trademark Examining Attorney during ex parte examination of the application, or by the Board on ex parte appeal. Institution of a special concurrent use proceeding for the sole purpose of determining whether those trade channel limitations are sufficient to eliminate likelihood of confusion would be superfluous, because that determination will already have been made.

 

 

 If, as applicant contends, the trade channel limitations set forth in the parties' respective recitations of services are sufficient to eliminate any likelihood of confusion, then applicant is entitled to registration of its mark, and institution of a special concurrent use proceeding would be unnecessary. Conversely, if confusion is likely despite the trade channel limitations, then instituting a special concurrent use proceeding solely for the purpose of considering those trade channel limitations would be futile. That is, if the trade channel limitations are not sufficient to eliminate the likelihood of confusion when they are considered as part of the applicant's "goods" under the main clause of Section 2(d), then merely recasting them as "conditions and limitations as to ... the goods" under the concurrent use proviso will not be sufficient to entitle applicant to registration. The likelihood of confusion remains, and bars issuance of a registration under the concurrent use proviso just as it bars issuance of a registration under the main clause of Section 2(d).

 

 

 Thus, as demonstrated by the facts of this case, it would be either unnecessary or futile to institute a special concurrent use proceeding in cases where the proposed concurrent use "conditions and limitations" pertain solely to differences in the parties' goods, including the trade channels therefor, which can be incorporated into the identification of goods and services. Regardless of the admittedly contrary language of the concurrent use proviso, it is clear that institution of concurrent use proceedings makes sense only in cases where the proposed concurrent use conditions and limitations are extrinsic to, and cannot be considered in connection with, the basic likelihood of confusion analysis of the parties' marks and goods which is required under the main clause of Section 2(d). [FN9]

 

 

  *5 Accordingly, and in the exercise of the discretion granted us by the statute, the Board declines to institute the concurrent use proceeding requested by applicant in this case. The determination of whether applicant is entitled to register its mark for the services recited in its application, including the trade channel limitations set forth therein, can and should be made in the context of the Office's normal ex parte and inter partes proceedings, under the basic likelihood of confusion analysis set forth in the main clause of Section 2(d). [FN10] See Rohm & Haas Company v. The C.P. Hall Company, 91 USPQ 69, (Ch.Exam.1951); Ford Motor Company v. Lincoln Radio & Television Corporation, 99 USPQ 60 (Ch.Exam.1953).

 

 

 In view of our rejection of applicant Seaway's proposed amendment, this opposition will go forward on opposer Tamarkin's Section 2(d) ground of opposition to issuance of a registration of Seaway's mark for the services recited in Seaway's application.

 

 

 Seaway has also moved, with Tamarkin's consent, to suspend proceedings herein pending either the institution of concurrent use proceedings, "or until either of said applications [Seaway's or Tamarkin's] is finally rejected or abandoned." Because Seaway's proposed amendment to concurrent use has been rejected, concurrent use proceedings will not be instituted. Seaway's motion to suspend pending institution of such proceedings therefore is denied.

 

 

 However, we grant Seaway's motion to suspend proceedings herein pending the outcome of ex parte prosecution of Tamarkin's application Serial No. 74/342,667. It is apparent that the parties have resolved their dispute, in principle. Although Tamarkin had failed to prosecute this opposition, having presented no testimony during its testimony period (which closed on March 22, 1993) and having failed to file its trial brief (which was due on August 7, 1993), Seaway did not file a motion to dismiss the opposition. Instead, Seaway filed its proposed concurrent use amendment and its motion to suspend proceedings herein.

 

 

 In view thereof, this opposition proceeding is suspended pending the outcome of ex parte prosecution of Tamarkin's application Serial No. 74/342,667, subject to the right of either party to request resumption of proceedings at any time prior thereto. See Trademark Rule 2.117(c). If, upon remand, the Trademark Examining Attorney reinstates the potential Section 2(d) refusal of Tamarkin's application, and Tamarkin is unable to overcome that potential refusal (e.g., by submitting a properly drafted and persuasive consent agreement between Tamarkin and Seaway), [FN11] then proceedings herein will be resumed and Tamarkin will be allowed time to show cause why the opposition should not be dismissed in view of its failure to present any evidence in support of its claim. Conversely, if the potential Section 2(d) refusal of Tamarkin's application is not reinstated by the Trademark Examining Attorney upon remand, or if the potential refusal is overcome by Tamarkin and its mark is approved for publication, it is likely that the parties may agree that this opposition proceeding can be dismissed, resulting in registration of Seaway's mark for the services recited in the application, including trade channel limitations incorporated therein.

 

 

  *6 If, during the suspension period, either of the parties or their attorneys should have a change of address, the Board should be so informed.

 

 

 In summary, IT IS HEREBY ORDERED THAT: [FN12]

 

 

 1. Applicant's motion to amend its application Serial No. 74/186,692 to one seeking a concurrent registration is denied, and the proposed amendment is rejected.

 

 

 2. Proceedings herein are suspended pending the outcome of ex parte prosecution of opposer's application Serial No. 74/342,667, subject to the right of either party to request resumption of proceedings at any time prior thereto.

 

 

J.D. Sams

 

 

J.E. Rice

 

 

R.L. Simms

 

 

Administrative Trademark Judges, Trademark Trial and Appeal Board

 

 

FN1. Application Serial No. 74/186,692, filed July 19, 1991. Seaway identifies December 26, 1990 as its date of first use of the mark and first use of the mark in commerce. The mark consists of the words FLORAL PLUS, in stylized script, along with a rose, contained within an oval single line carrier.

 

 

FN2. Opposer is the owner of application Serial No. 74/243,667, filed December 23, 1992, by which opposer seeks registration of the mark FLORAL PLUS for "wholesale distributorship of floral products, namely flowers and plants." Opposer's application is discussed further in footnote 3, infra.

 

 

FN3. Opposer Tamarkin's application Serial No. 74/342,667, referenced in Seaway's proposed amendment, was amended to a concurrent use application on July 26, 1993, in response to the Trademark Examining Attorney's notification that the application potentially would be refused registration under Section 2(d) in the event that Seaway's application involved herein, Serial No. 74/186,692, matured to registration. Tamarkin's concurrent use amendment, which appears to parallel Seaway's proposed amendment, is as follows:

   An exception of Applicant's right to exclusive use of its mark FLORAL PLUS, for use in connection with the wholesale distribution of floral products set forth in the present application, is use by Seaway Food Town, Inc., a company doing business at 1020 Ford Street, Maumee, Ohio 43537, which is using the mark FLORAL PLUS and design for retail store services in the field of flowers and plants and is the owner of application Serial No. 74/186,692, filed July 19, 1991 for the above-mentioned mark and services. Upon information and belief, Seaway Food Town, Inc. has used its mark FLORAL PLUS and design in at least the states of Ohio and Pennsylvania since at least as early as December 26, 1990 (date of first use and first use in interstate commerce) to the present, by using its mark on advertising and store literature and other ways customary in the retail trade.

 Tamarkin's amendment was accepted by the Trademark Examining Attorney. However, Tamarkin's mark was published for opposition on September 27, 1994 with the following concurrent use statement:

   Subject to concurrent use proceedings with Serial Number 74/186,692. Applicant claims the exclusive right to use the mark in the entire United States except for the states of Ohio and Pennsylvania.

The Board notes that this geographic restriction does not appear in the concurrent use amendment as filed by Tamarkin, and it is not clear how the restriction came to be incorporated into the published concurrent use statement. Indeed, inasmuch as Tamarkin is an Ohio corporation, it is unlikely that Tamarkin intended that its concurrent registration exclude its right to use the mark in Ohio.

 It is the understanding of the Board that the Trademark Examining Attorney is requesting restoration of jurisdiction of Tamarkin's application from the Assistant Commissioner for Trademarks for further examination, in view of this error in the publication of Tamarkin's mark. Additionally, the Board notes that Tamarkin's proposed concurrent use amendment, as filed, is unacceptable for the same reasons (discussed in this order) that Seaway's proposed amendment is unacceptable.

 

 

FN4. The concurrent use proviso identifies three types of "conditions and limitations" which might entitle an applicant to a concurrent registration, i.e., conditions and limitations as to the mode of use of the marks, as to the place of use of the marks, and as to the goods on or in connection with which the marks are used.

 The most commonly applied "condition or limitation" in concurrent use cases is the "place of use" restriction, i.e., a restriction as to the geographic territory of use of the mark. If likelihood of confusion would result if the applicant's mark and the prior mark are used in the same territories, but the likelihood of confusion can be eliminated if the parties' respective territories of use are restricted to avoid overlap, then a concurrent registration which incorporates those geographic restrictions may be issued. See, e.g., Houlihan v. Parliament Import Co., 921 F.2d 1258, 17 U.S.P.Q.2d 1208 (Fed.Cir.1990); In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431 (CCPA 1970); Precision Tune Inc. v. Precision Auto-Tune Inc., 4 U.S.P.Q.2d 1095 (1987).

 The second type of "condition or limitation" identified in the concurrent use proviso of Section 2(d) is a restriction as to the "mode of use" of the mark. "Mode of use" refers to the manner of displaying the mark, e.g., where the mark is displayed only in a certain stylization, or only in conjunction with a particular trade dress or house mark, or only in conjunction with a disclaimer of affiliation. See, e.g., Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630 (CCPA 1976); Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 293 F.2d 685, 130 USPQ 412 (CCPA 1962), cert. denied 396 U.S. 864, 133 USPQ 702 (1962); In re Wells Fargo & Company, 231 USPQ 95, 101- 06 (TTAB 1986). Concurrent registrations involving "mode of use" conditions and limitations generally only arise as a result of a court's order or decision, wherein the court, as part of its equitable resolution of the parties' dispute, imposes conditions and limitations on a party's right to use and register its mark.

 The final type of concurrent use restriction mentioned in the proviso to Section 2(d) is a restriction as to "the goods on or in connection with which" the mark is used. Such conditions and limitations conceivably might include trade channel restrictions, or, on a more basic level, the deletion or omission of certain goods or services from the application's identification of goods and services. This category of "condition or limitation" is discussed more fully, infra.

 

 

FN5. Of course, the proviso's jurisdictional requirements pertaining to the parties' dates of first use of their marks must also be satisfied before a concurrent use proceeding will be instituted or a concurrent registration issued.Seeu ugenerally Gray v. Daffy Dan's Bargaintown, 823 F.2d 522, 3 U.S.P.Q.2d 1306 (Fed.Cir.1987); In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431 (CCPA 1970); Morgan Services Inc. v. Morgan Linen Services Inc., 12 U.S.P.Q.2d 1841 (TTAB 1989); My Aching Back Inc. v. Klugman, 6 U.S.P.Q.2d 1892 (TTAB 1988); Over the Rainbow, Ltd. v. Over the Rainbow, Inc., 227 USPQ 879 (TTAB 1985); and In re Home Federal Savings and Loan Ass'n, 213 USPQ 68 (TTAB 1982).

 It should also be noted that, in addition to concurrent registrations obtained by means of an inter partes concurrent use proceeding before the Board, a concurrent registration may be issued where a court of competent jurisdiction has finally determined, usually based on the equities involved in a particular case, that more than one party is entitled to use the same or similar marks in commerce, even if there is some resulting confusion. See the penultimate sentence of Section 2(d). However, in the context of an inter partes concurrent use proceeding before the Board, i.e., in cases which do not involve a court decree, the absence of a likelihood of confusion is a prerequisite to issuance of a concurrent registration. See Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630 (CCPA 1976).

 

 

FN6. The Board's discretion in the area of concurrent use proceedings is similar to the Commissioner's discretion with respect to interference proceedings. Pursuant to Trademark Act 16, U.S.C. Section 1066, in cases involving a Section 2(d) likelihood of confusion, the Commissioner "may declare that an interference exists." The Commissioner has the discretion to refuse to declare an interference in cases where the entitlement to registration, including a determination of whether a likelihood of confusion exists, can be adjudicated by means of ordinary opposition or cancellation proceedings. See Trademark Rule 2.91.

 

 

FN7. If the mark and/or goods conditions or limitations which might avoid a finding of likelihood of confusion are not already present in a conflicting registration, and the owner of the registration is not willing to amend its registration to incorporate the conditions or limitations, applicant's remedy lies in a petition for partial cancellation to restrict the registration.

 

 

FN8. Moreover, we again emphasize that we believe that we have the discretion to decline to institute concurrent use proceedings under these circumstances, just as the Commissioner, for example, long has declined to declare an interference proceeding between an application and a registration, even though Section 16 of the Act provides that the Commissioner may declare an interference between an application and a registration. See In re Kimball Foods, Inc., 184 USPQ 172 (Comm'r 1974), and Ex parte H. Wittur & Co., 153 USPQ 362 (Comm'r 1966).

 

 

FN9. For example, concurrent use proceedings are proper, and necessary, in cases where the proposed conditions and limitations are as to the "place of use" of the marks. Indeed, review of the legislative history of the concurrent use proviso reveals that the primary, if not the sole, purpose of concurrent use proceedings is to allow for issuance of a geographically restricted registration in situations where registration would otherwise be barred under the main clause of Section 2(d). Because the normal federal trademark registration is nationwide in scope and effect, the proposed geographic restrictions cannot be incorporated into the identification of the applicant's goods or services, and cannot be considered under the basic likelihood of confusion analysis set forth in the main clause of Section 2(d). The only mechanism for determining whether imposition of geographic restrictions might be sufficient to eliminate the likelihood of confusion is the concurrent use proceeding.

 Similarly, concurrent use proceedings conceivably might be appropriate when the proposed conditions and limitations consist of certain "mode of use" restrictions which are not part of the mark itself, and thus cannot be incorporated into the drawing of the mark or considered as part of the basic likelihood of confusion analysis under the main clause of Section 2(d). Examples include situations where the applicant agrees to use its mark only in conjunction with specified trade dress, or in conjunction with a house mark which can't be incorporated into the drawing of the mark, or in conjunction with an affiliation disclaimer. The only way to consider the effect of these restrictions on the mode of use of applicant's mark is in the context of a concurrent use proceeding. However, it should be noted that concurrent registrations involving "mode of use" restrictions are relatively uncommon, and almost always are issued as the result of a court's equitable decree. See cases cited supra at footnote 4.

 Also, distinguish those situations where the proposed "mode of use" restriction can be incorporated into the mark itself and depicted in the application's drawing of the mark, e.g., where the restriction pertains solely to the stylization of the mark. If applicant believes that confusion can be avoided if it uses its mark only in a particular stylization, then the applicant can, and must, incorporate that stylization of the mark directly into the drawing of the mark so that it can be considered as part of the basic likelihood of confusion analysis under the main clause of Section 2(d). It is unnecessary to institute a concurrent use proceeding solely to determine whether the applicant's stylization of the mark might be sufficient to eliminate the likelihood of confusion.

 

 

FN10. In this case, the determination of whether the parties' respective trade channel limitations are sufficient to eliminate the likelihood of confusion, and thus whether either or both parties are entitled to registration of their respective marks, will be made in the context of this opposition proceeding (with respect to Seaway's application), and the ex parte examination and appeal process (with respect to opposer Tamarkin's application Serial No. 74/342,667).

 

 

FN11. See, e.g., In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); Bongrain International (American) Corp. v. Delice de France, Inc., 811 F.2d 1479, 1 U.S.P.Q.2d 1775 (Fed.Cir.1987).

 

 

FN12. This decision is interlocutory in nature. Appeal may be taken within two months after the entry of a final decision in the case. See Copelands' Enterprises Inc. v. CNV Inc., 887 F.2d 1065, 12 U.S.P.Q.2d 1562 (Fed.Cir.1989).

 

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