January, 16th, 2018

WHIPgroup filed a concurrent use application on behalf of its client Subway IP Inc. (“SIP”) seeking to register FLATIZZA for sandwiches in the entire United States with the exception of Snohomish County and King County, Washington. The TTAB held the evidence submitted by SIP established that confusion is unlikely and that SIP is entitled the concurrent use registration.

A concurrent use registration is a federal trademark registration that recognizes rights to a trademark to two or more unrelated parties, with each party having a limited distinct geographic area. Such a registration is achieved by filing a concurrent use application. The applicant must then prove that there will be no likelihood of confusion by reason of the concurrent use by the parties of their respective marks and that the parties have become entitled to use their marks as a result of their concurrent lawful use in commerce prior to the application filing date.

In this case, the concurrent use application identified Janco, LLC as the sole exception to SIP’s exclusive right to use the mark in the US based on common law use by Janco in two counties in Washington state prior to SIP’s national use. SIP further submitted evidence that it was unaware of any actual confusion during the two and a half year period that SIP has used the mark on a national basis. In view of the evidence, the Board granted the concurrent use registration in favor of SIP.

WHIPgroup had previously represented SIP in successfully opposing registration of Janco’s prior application for the FLATIZZA mark on the basis that Janco had failed to use the mark in commerce.

WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.

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