Blog
August 25, 2008
Follow-up from August Meeting
During the August CincyIP meeting with Lynne Beresford, Commissioner of Trademarks, a question was asked which she stated she would look into. Here is her response
“I wanted to respond to the Cincy IP question about concurrent use proceedings. First of all, the TTAB does not run a separate report on the average “age” of the cases in the concurrent use docket. That could be done if the USPTO wants to devote the resources to developing such a report. However, here is some information that David Sams was kind enough to share with me that might help answer some questions.
David checked the TTAB records back to FY2000 and found that, during those 8 years there were only 2 concurrent use cases that were contested and went all the way through to trial and a final decision by a panel. Both of those cases took approximately 4 years from the date of institution to a final decision.
In the time period between the fiscal years 2000 - 2007, 244 cases were settled before trial as uncontested or, if initially contested were settled, with the concurrent use applicant submitting an ex-parte type showing to the Board to establish the absence of likelihood of confusion and its entitlement to a concurrent use registration (or with a stipulation to that effect by both parties to the proceeding).
At this time there are 87 pending concurrent use proceedings at various stages of proceeding.
In addition, there is a small backlog of about 34 cases that have been sent to the TTAB for institution of concurrent us proceedings but that haven’t yet been instituted. (For the record, those 34 cases aren’t counted in the 87 “pending cases referenced above). Many of the applications that come to the TTAB for concurrent use proceeding have administrative issues that the TTAB paralegals--or interlocutory attorneys--have to sort out before a concurrent use proceeding can be instituted. And some of those 34 concurrent use applications are now long overdue for action. The TTAB paralegal supervisors have recently instituted a plan to move along all these older cases. The plan calls for institution of all of them by the end of September. At that point the TTAB will have a better system in place for prompt initial processing of concurrent use applications.
Additionally, David Sams tells me that he has no sense that there’s any movement in the direction of eliminating concurrent use proceedings.”
Lynne Beresford