Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 GALLAGHER'S RESTAURANTS, INC.
v.
GALLAGHER'S FARMS, INC.
Concurrent Use No. 626
November 6, 1986
By the Board:
J. E. Rice, R. F. Cissel and L. E. Rooney
Members
Gallagher's Restaurants, Inc., the junior party in this proceeding, filed by a certificate of mailing dated November 12, 1985 a motion for leave to file a substitute concurrent use application seeking to amend its involved application to designate additional concurrent users. The senior party, Gallagher's Farms, Inc., filed a brief in opposition to the motion by a certificate of mailing dated December 18, 1985. [FN1]
In its response, the senior party contends that its rights will be prejudiced by the granting of the motion in that the junior party knew of the three third-party users presently sought to be added at the time this proceeding was instituted but at that time disavowed the relevance of such third parties to this proceeding. The senior party notes, however, that the motion has been brought at the expiration of the junior party's time to file its brief on the case. The senior party also correctly points out that, since discovery has been completed and the testimony periods closed, the addition of these selected users, all of whom appear to be located within the senior party's geographic area, would require reopening of the extire proceeding, which would require additional time and expense to consider issues that could have been fully resolved earlier in the proceeding. [FN2]
The senior party further contends, and the Board agrees, that the proposed substitute concurrent use application [FN3] is severely deficient in that it fails to make a showing upon which a determination can be made as to whether the three users sought to be added to this proceeding have any concurrent rights. Specifically, the senior party notes that the junior party has provided only the names and addresses of the three alleged concurrent users and 'has failed to indicate the nature of any mark(s) used by such third parties, and has not indicated the goods and/or services with which putative marks are associated'. Consequently, since the junior party 'has not even alleged, nor made a showing to substantiate an allegation, that the three additional parties have used a mark so related as to provide a basis for inclusion in the present proceeding,' the senior party maintains that the junior party 'has not asserted, nor provided a basis for an assertion of, any concurrent usage of a related mark or right to use such mark'. The Board agrees.
In light of the foregoing deficiencies, further action on the motion is hereby deferred pending receipt from the junior party, by December 5, 1986, of a prima facie showing that the three users sought to be added have concurrent rights. The showing must be presented in affidavit form and set forth the putative mark(s), the goods and/or services associated with the marks, and the geographical areas acknowledged by the junior party to the alleged users. The prima facie showing must also establish that the user's dates of first use of the mark(s) precede the filing date of the senior party's application. Section 2(d) of the Trademark Act; and Trademark Rules 2.42(a) and (b).
*2 In the event that such a showing is not submitted, proceedings herein will be considered to have been resumed as of the mailing date of this order, with due dates for filing briefs on the case being rescheduled as follows: [FN4]
The junior party's brief shall be due: December 5, 1986.
The senior party's brief shall be due: January 5, 1987
The junior party's reply brief, if any, shall be due: January 20, 1987.
J. E. Rice
R. F. Cissel
L. E. Rooney
Members, Trademark Trial and Appeal Board
FN1. Because the junior party's motion was not accompanied by proof of service of a copy upon counsel for Gallagher's Farms, Inc., a copy was forwarded by the Board and the senior party was given until December 18, 1985 to respond thereto.
FN2. By stipulation approved by the Board, the parties have previously agreed that the testimony taken in Opposition No. 68,615, in which the parties were involved, would be used as the trial record in this proceeding.
FN3. The substitute application was submitted with the November 12, 1985 motion.
FN4. An oral hearing will be scheduled only upon request filed as provided by Trademark Rule 2.129(a).