Cops & Robbers, LLCv.Eastern Penitentiary Historic Site, Inc.

Trademark Trial and Appeal Board

Sep 18, 2020

94002954 (T.T.A.B. Sep. 18, 2020)

Mailed: September 18, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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Cops & Robbers, LLC

v.

Eastern State Penitentiary Historic Site, Inc.
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Concurrent Use No. 94002954
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Before Bergsman, Adlin and Heasley,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Cops & Robbers, LLC (“C&R”) seeks a concurrent use registration for the mark
ALCATRAZ EAST, in standard characters (ALCATRAZ disclaimed), for “museum
services” in International Class 41, specifically claiming the exclusive right to use the
mark in “Pigeon Forge, Tennessee and the surrounding seventy-five mile radius” (the
“C&R Territory”).1 The application identifies Eastern State Penitentiary Historic

1 Application Serial No. 86884950, filed January 25, 2016 without geographic restriction,
based on an alleged bona fide intent to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b). C&R later amended the application to seek a concurrent
use registration and allege first use dates of December 16, 2016. 15 U.S.C. § 1051(a).
This Opinion is not a
Precedent of the TTAB
Concurrent Use No. 94002954
2
Site, Inc. (“ESP”) as an exception to C&R’s exclusive right to use the mark in
commerce.
When filed, C&R’s application was geographically unrestricted, and ESP opposed
registration, alleging prior use of ALCATRAZ OF THE EAST for museum services
and that use of C&R’s mark was likely to cause confusion with ESP’s mark
(Opposition No. 91233404). In its answer, C&R denied that confusion is likely.
According to the parties’ Joint Notice of Concurrent Use Settlement Agreement
and Motion for Issuance of Concurrent Use Registration filed in this proceeding, 3
TTABVUE, the parties entered into a January 11, 2019 Concurrent Use Settlement
Agreement (“Agreement”) which led to ESP withdrawing the opposition. 3 TTABVUE
2. C&R’s application was then amended to one seeking concurrent use as indicated
above. The parties now jointly request, pursuant to the Agreement, that C&R be
granted the concurrent use registration it seeks.
By way of background, and according to the Agreement, since 2013 ESP has used
its ALCATRAZ OF THE EAST mark “throughout the 75-mile radius area of
Philadelphia” (the “ESP Territory”) in connection with its Philadelphia museum “in
the historic penitentiary that once housed notorious criminals, including Al Capone.”
3 TTABVUE 7. C&R uses its mark for its Pigeon Forge museum “dedicated to law
enforcement, forensic science, and the history of crime.” It is “designed as a
combination of Tennessee’s first state prison and the guard towers inspired by the
Alcatraz lighthouse.” Id. According to the Agreement, the parties’ museums are
geographically separate, different “physically, in content, and in name,” and use
Concurrent Use No. 94002954
3
“substantially different trade dress, at different price points.” Id. As a result, “the
parties believe they can continue to coexist without any likelihood of confusion.” Id.
at 8.
The Agreement provides a number of additional reasons confusion is unlikely, and
imposes on the parties a number of restrictions and requirements, including:
ESP will only use its mark in the ESP Territory and C&R
will only use its mark in the C&R Territory. Agreement
¶¶ 1(a) and (b).

Other geographic locations (the “Unclaimed Area) may be
claimed by whichever party first and continuously uses its
mark there for museum services for at least one year, and
provides written notice and evidence of its continuous use
to the other. The previously Unclaimed Area would then be
incorporated into the party’s Territory pursuant to the
Agreement. Id. at ¶ 1(c).

Neither party will object to the other’s use of its mark in
accordance with the Agreement, ESP consents to issuance
of the concurrent use registration sought in C&R’s involved
application, and each party consents to additional
concurrent use registrations of the other’s mark consistent
with the Agreement. Id. at ¶¶ 2-3.

The parties agree that confusion is unlikely as a result of
the Agreement and their mutual assurances that each “will
take reasonable measures under the circumstances to
market and promote its respective services in such a
manner as to mitigate any likelihood of confusion ….” Id.
at ¶ 4.

If confusion occurs, the parties “agree to cooperate
promptly in good faith” to remedy it and “to take any
further actions and execute any further agreements …
needed to carry out the spirit and intent of this
Agreement.” Id. at ¶¶ 5(a) and (b).

Concurrent Use No. 94002954
4
We find, based on the Agreement, that concurrent use of the involved marks is not
likely to cause confusion, mistake or deception under 15 U.S.C. § 1052(d). The parties,
who are most knowledgeable about their respective businesses and the use of their
respective marks, agree that confusion is unlikely based on the geographic limitations
and other conditions set forth in the Agreement. Amalgamated Bank of New York v.
Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305 (Fed. Cir. 1988);
Bongrain Int’l Corp. v. Delice de France Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed.
Cir. 1987). Should confusion or a dispute arise, the parties agree to cooperate to
address it. Moreover, although the parties contemplate using their marks on their
websites, given the obligations and restrictions in the Agreement, this does not
require a different conclusion. See CDS, Inc. v. I.C.E.D. Mgmt., Inc., 80 USPQ2d 1572,
1583 (TTAB 2006).
For all of these reasons, the parties’ request for issuance of a concurrent use
registration to C&R is hereby GRANTED. C&R is entitled to concurrent use
registration of the mark ALCATRAZ EAST (Serial No. 86884950) for “museum
services” in Pigeon Forge, Tennessee and the surrounding seventy-five mile radius.2

2 In the vast majority of concurrent use proceedings, parties divide the entire United States,
and do not leave gaps in territory. However, the USPTO is not required to issue “registrations
covering the whole of the United States in all circumstances.” In re Beatrice Foods Co., 429
F.2d 466, 166 USPQ 431, 436 (CCPA 1970). Here, because the parties’ Agreement specifically
contemplates “Unclaimed Area” in the United States, Agreement ¶ 1(c), and provides a
means for each party to claim additional areas under certain circumstances, we find that the
parties’ Agreement justifies an exception to the general rule.