Bringing a Concurrent Use Proceeding: A Practitioner's Guide to Territory, Consent, and the Board's Jurisdiction
By Casey Scott McKay ·
A working guide to the rarest inter partes proceeding at the Board, written from both chairs. It starts with the four jurisdictional prerequisites that eliminate most would-be applicants and shows how to test them in an afternoon rather than a year. It then covers the territorial description - the single hardest piece of drafting in this practice - with model language, and the evidence file that proves a trade area, including the ZIP-code customer analysis that does most of the work. The middle stages run the proceeding itself: institution, pleadings, discovery, testimony, and the Board's allocation under the Weiner King factors. The last stages cover the far more common outcome, a negotiated map with a consented application, and supply the online conduct terms, joint enforcement clause, and confusion protocol that a modern coexistence agreement needs. One invented matter, Corvid Roasting v. Corvid Coffee Roasters, runs throughout.
IP and Technology > Trademarks | Guide | Published 24 March 2024 - Updated 26 September 2024 | Casey Scott McKay - marksy.us
Summary. A working guide to the rarest inter partes proceeding at the Board, written from both chairs. It starts with the four jurisdictional prerequisites that eliminate most would-be applicants and shows how to test them in an afternoon rather than a year. It then covers the territorial description — the single hardest piece of drafting in this practice — with model language, and the evidence file that proves a trade area, including the ZIP-code customer analysis that does most of the work. The middle stages run the proceeding itself: institution, pleadings, discovery, testimony, and the Board's allocation under the Weiner King factors. The last stages cover the far more common outcome, a negotiated map with a consented application, and supply the online conduct terms, joint enforcement clause, and confusion protocol that a modern coexistence agreement needs. One invented matter, Corvid Roasting v. Corvid Coffee Roasters, runs throughout.
Keywords: concurrent use application drafting · 37 cfr 2.99 · jurisdictional prerequisites · use prior to filing date · territorial description drafting · weiner king factors evidence · trade area proof · zip code customer data · good faith adoption evidence · consented concurrent application · amendment to seek concurrent use · ttab discovery and testimony · board territorial award · court decree route · coexistence agreement drafting · online conduct terms · joint enforcement clause · notice and cure confusion protocol · successors and assigns · registration certificate restriction
This is premium Marksy content — the full document is available to subscribers.