On August 10, 2015 Scott Slavick's article, "Far from heaven, too near on earth" was originally published by InsideCounsel.com.
Slavick Questions Viability of Concurrent Use
Registration in Internet Age
With media coverage playing such a large role in consumers'
understanding of brands, do geographic limitations really work to
avoid consumer confusion, or are they outmoded? That's an open
question in light of the TTAB's precedential decision in
Southwestern Management, Inc. v. Ocinomled, Ltd. and
Emeril's Food of Love Productions, LLC, says Brinks'
Scott Slavick in his recent article for
InsideCounsel.com.
Southwestern Management, which operates restaurants in upstate New
York, applied for concurrent use registration of the Delmonico
mark, which is used for restaurant services by Ocinomled in
Manhattan and by celebrity chef Emeril Lagasse in New Orleans and
Las Vegas. Concurrent use registrations allow for similar
trademarks to be registered by unrelated parties when co-existence
would not cause consumer confusion.
According to the Board, the Delmonico mark has substantial renown
throughout much of the U.S. It concluded that even if
Southwestern's territory were limited to upstate New York,
confusion would likely arise from the concurrent use of the
involved marks. It refused to grant Southwestern a concurrent use
registration.
Restricting a trademark to a specific geographic region seems
anachronistic when consumers are likely to see search-engine
results from multiple sources for any one term, notes Slavick,
adding that the case calls into question the viability of
concurrent use registrations in the Internet age.
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