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Internet Usage Threatens Existence of Concurrent Use Registrations

By Kyle-Beth Hilfer

In a rare concurrent use decision, Hubcap Heaven, LLC v. Hubcap Heaven, Inc., Concurrent Use No. 94001147 (Jan. 25, 2005) [not citable], the Trademark Trial and Appeal Board (“TTAB”) questioned the continued viability of concurrent use registrations in the face of the Internet's global reach. Concurrent usage is based on the premise that two owners of the same trademark for competing goods and services can coexist by carving out strict geographic territories for each user. The Internet, however, has no geographic boundaries.

Hubcap Heaven, LLC (“Applicant”) filed a concurrent use application in 1995 to register the service mark HUBCAP HEAVEN in International Class 42 for “wholesale and retail store, mail order, and online electronic catalog sales order services in the field of new, reconditioned and used automotive parts.” Applicant also included in its application a request to restrict its existing registration, issued in 1993, for the same mark for “automotive hubcaps, wheel covers and wheels” in International Class 12. Applicant sought nationwide rights, excepting limited areas of use within four states where Hubcap Heaven, Inc. (“Excepted User”) used the same service mark for the sale of automotive hubcaps. Applicant claimed a date of first use in commerce of Jan. 1979 for both the service mark application and existing registration.

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