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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