Michael W. Wyckoffv.Rick E. Briggs

Trademark Trial and Appeal Board

Feb 24, 1998

No. 94001007 (T.T.A.B. Feb. 24, 1998)

Oral Hearing: Paper No. 29
May 8, 1997 GDH/gdh
THIS DISPOSITION IS NOT CITABLE AS PRECEDENT
OF THE TTAB FEB. 24, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Michael W. Wyckoff
v.
Rick E. Briggs
_____
Concurrent Use No. 1,007
_____
James C. Wray and Paul J. Riley, Esqs. for Michael W. Wyckoff.
Thomas A Briggs of Jones, Day, Reavis & Pogue for Rick E. Briggs.
_____
Before Quinn, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Michael W. Wyckoff has filed an application for
concurrent use registration of the mark "RENT-A-NERD" for
"temporary employment services for computer specialists".1 The
application, which seeks registration for the geographical area
consisting of all of the United States except for the State of
Ohio, sets forth registrant, Rick E. Briggs, doing business as
Rent-A-Nerd, as the exception to applicant’s claim of the

1 Ser. No. 74/119,509, filed on November 30, 1990, which alleges dates
of first use of March 15, 1989. The application was amended to one
seeking a concurrent use registration on April 14, 1993.
Concurrent Use No. 1,007
2
exclusive right to use his mark in commerce. Registrant
presently is the owner of a territorially unrestricted
registration on the Principal Register for the mark "RENT-A-NERD"
and design, as reproduced below,
for "consulting services rendered regarding the use and
application of computers."2
Registrant, in his statement in response to the notice
instituting this proceeding on February 6, 1995, has alleged
among other things that, prior thereto, "the only contact between
applicant and registrant known to registrant was a telephone
contact initiated by applicant in late summer-early fall 1989, in
which applicant asked registrant for permission to use the mark
RENT-A-NERD, which was denied," and has denied that applicant is
entitled to a concurrent use registration.
The record consists of registrant’s statement; the
application and registration files; the testimony, with exhibits,
of applicant’s witnesses Michael Wyckoff, Sharon Harshbarger and
Gerry Datlow, all of which were submitted as applicant’s case-in-
chief;3 and the testimony, with exhibits, of registrant’s

2 Reg. No. 1,603,102, issued on June 19, 1990 on the basis of an
application filed on September 12, 1989, which sets forth dates of
first use of April 15, 1989; affidavit §8 accepted.
3 It is noted that while applicant's counsel, at the conclusion of Mr.
Wyckoff's deposition, "offer[ed] into evidence Exhibits 1 through 49"
(Wyckoff dep. at 39), exhibits 45 through 49 thereof were never
identified or otherwise testified to by the witness. Nevertheless,
inasmuch as registrant, in his brief, has specifically referred to and
treated applicant's exhibits 48 and 49 as being of record, we deem
such exhibits to have been stipulated into the record pursuant to
Trademark Rule 2.123(b). Accordingly, we have considered all of the
exhibits offered by applicant with the exception of exhibits 45, 46
and 47. We hasten to add, however, that even if exhibits 45, 46 and
Concurrent Use No. 1,007
3
witness, Rick Eugene Briggs,4 together with applicant’s responses
to certain of registrant’s discovery requests, all of which were

47 were considered to form part of record, our ultimate decision in
this proceeding would be the same.
4 Applicant, in his initial brief, has reiterated the request, which he
first raised in a motion to strike filed on March 6, 1996, that "[t]he
entire Briggs Deposition Transcript and Exhibits ... be disregarded."
While the Board, in its April 19, 1996 order partially granting the
motion to strike, did indeed find that providing notice of only two
and one half days (essentially two business days) of Mr. Briggs’
deposition was not reasonable, the Board allowed applicant until May
20, 1996 to request recall of the witness, at registrant’s expense,
for the purpose of cross-examination and redirect, thereby rectifying
any prejudice to applicant as the result of the inadequate notice.
With respect to specific objections raised by applicant, in his motion
to strike, to the direct examination of Mr. Briggs, the Board’s order
stated that "[i]f Wyckoff still believes that any questions put to the
witness during direct [examination] were objectionable, he may assert
those objections on the record at the commencement of the rescheduled
deposition." However, due to an obstinate dispute by the parties over
who was to bear the expenses associated with recalling the witness for
completion of his deposition as so ordered, the Board in an order
issued on June 25, 1996 extended the period for such deposition,
stating among other things that:
Accordingly, Wyckoff is allowed until July 25, 1996 in
which to [request] recall [of] the witness for the purpose
of cross-examination and redirect. Wyckoff’s objections to
Briggs’ direct examination (filed March 6, 1996) are [again]
noted. If Wyckoff still believes that any questions put to
the witness during direct examination were objectionable, it
must reassert those objections on the record at the
commencement of the rescheduled deposition. Objections to
the cross-examination or redirect examination must be
asserted on the record at the proper time. The Board will
rule on all objections at final hearing.
Applicant, in a communication received on July 3, 1996, asserted
(but without requesting reconsideration) that "[t]he solution proposed
by the ... Board was simply not a fair or workable solution" and that,
"[a]s a consequence[,] Wyckoff has elected not to notice or take the
continued Briggs deposition ... because Briggs would not agree to
limit the redirect testimony to the scope of cross-examination."
Applicant’s mere speculation, however, that "[t]he net result of ...
cross-examining Briggs ... would have been Wyckoff paving the way for
Briggs to introduce new, albeit objectionable, testimony beyond the
scope of cross-examination" not only appears to be unfounded, but, in
any event, would have been easily remedied by applicant simply
asserting an objection to any redirect testimony which improperly
exceeded the scope of cross-examination. Consequently, in light of
applicant’s failure to avail himself of the full and fair opportunity
provided by the Board to raise on the deposition record any objections
to the direct examination of the witness and/or to cross-examine Mr.
Briggs, the reiterated request in applicant’s initial brief to strike
Concurrent Use No. 1,007
4
submitted as registrant’s case-in-chief. Briefs have been filed
and an oral hearing, attended by counsel for the parties, was
held.
The principal issues to be determined herein are
whether applicant, as the party having the burden of proof,5 has
met the jurisdictional requirement for a concurrent use
proceeding;6 and, if so, whether applicant, in order to be
entitled to a concurrent use registration and a restriction of

such deposition and the exhibits thereto is denied and the specific
objections reasserted in such brief will not be given further
consideration. Furthermore, and in any event, we agree with
registrant that most of such objections are meritless and, even if we
were to sustain the few remaining objections, our ultimate decision in
this proceeding would be the same.
5 Contrary to the contentions in applicant’s initial brief, Trademark
Rule 2.99(e) plainly provides that "[t]he applicant for a concurrent
use registration has the burden of proving entitlement thereto" and
that "[a] person specified as an excepted user in a concurrent use
application but who has not filed an application shall be considered a
party senior to every party that has an application involved in the
proceeding." Trademark Rule 2.116(b) further provides that "[a] party
that is a junior party ... in a concurrent use registration proceeding
shall be in the position of plaintiff against every party that is
senior, and the party that is a senior party ... in a concurrent use
registration proceeding shall be a defendant against every party that
is junior." Thus, inasmuch as applicant is the only party herein who
has filed a concurrent use application, and since such application
names registrant as an excepted user, it is clear that applicant is
the junior party and, as the plaintiff, has the burden of proof, while
registrant is the senior party and is in the position of defendant.
See TBMP §1107.
6 Section 2(d) of the Trademark Act states, in relevant part, that
(emphasis added):
Provided, That if the Commissioner determines that
confusion, mistake, or deception is not likely to result
from the continued use by more than one person of the same
or similar marks under conditions and limitations as to the
mode or place of use of the marks or the goods on or in
connection with which such marks are used, concurrent
registrations may be issued to such persons when they have
become entitled to use such marks as a result of their
concurrent lawful use in commerce prior to (1) the earliest
of the filing dates of the applications pending or of any
registration issued under this Act ....
Concurrent Use No. 1,007
5
registrant’s registration, has satisfied his burden of showing
that there will be no likelihood of confusion as a result of
contemporaneous use by the parties of their respective marks for
their respective services in their respective geographical areas.
According to the record, applicant is the self-
described "[h]ead nerd of a company" which he owns "called ’Rent-
A-Nerd’." (Wyckoff dep. at 3.) Such company, through which
applicant and his staff of so-called "nerds"7 currently provide
computer consulting services on a temporary basis under the
service mark "RENT-A-NERD," has been in existence since January
1989.8 Formerly located in Falls Church, Virginia, applicant’s
company is presently based in Vienna, Virginia.

7 The Board, we note, may properly take judicial notice of dictionary
definitions. See, e.g., Hancock v. American Steel & Wire Co. of New
Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ
594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983). In this regard, we judicially notice that the term "nerd" is
defined, for example, in The Random House Dictionary of the English
Language (2d ed. 1987) at 1289 as slang meaning: "1. a stupid,
irritating, ineffectual, or unattractive person. 2. an intelligent
but single-minded person obsessed with an nonsocial hobby or pursuit:
a computer nerd." Thus, while principally used as a pejorative or
self-deprecating term, both applicant and registrant use the word
"nerd" in the sense of its latter definition in a effort to convey an
image of a person with a high degree of computer expertise.
8 Although applicant testified that he operated his business as a sole
proprietorship until sometime in 1990 and further indicated, among
other things, that on June 20, 1989 he "registered a trading as Rent-
A-Nerd [with the Arlington County, Virginia, Circuit Court] to change
the county records from Michael Wyckoff to trading as Rent-A-Nerd"
(Wyckoff dep. at 17) and that within a month later he had had an
attorney register such name with the Virginia State Corporation
Commission, it appears from a June 12, 1991 newspaper article that an
increase in business brought about by the change of name from Michael
Wyckoff Consulting to Rent-A-Nerd "led the small company to become
incorporated as a temporary agency." (Applicant’s Ex. 42.) In view
thereof, and provided that applicant ultimately prevails herein, the
application is remanded to the Examining Attorney for determination of
how applicant maintains control over the nature and quality of the
Concurrent Use No. 1,007
6
Applicant claims to have first used the mark "RENT-A-
NERD" on March 14, 1989, which is after he adopted the mark9 and
the day on which he began distribution of a computer-printed
brochure he had just finished creating to provide prospective
customers with information regarding the nature of his consulting
business. Such marketing literature, which listed two telephone
numbers (one in Virginia and the other in Maryland) covering the
Washington, D.C. metropolitan area, basically advertised the
availability of applicant’s "new concept" in consulting services
on an "as-needed basis." (Applicant’s Ex. 5.)
In particular, applicant insists that he first used the
brochure when he handed a copy thereof to Alex Kosorukov, "a man
who was a potential client" (emphasis added), during a luncheon
meeting at a restaurant on March 14, 1989 for the purpose of
"discussing his needs and requirements." (Wyckoff dep. at 10.)
Applicant’s testimony, however, is silent as to the particulars
of his discussion with Mr. Kosorukov, including whether any
computer consulting services were actually rendered by applicant,

services rendered under the mark and/or is otherwise the owner
thereof. Trademark Rule 2.131.
9 One of applicant’s witnesses, Sharon Harshbarger, testified with
respect to applicant’s adoption of his mark that, in the early Spring
of 1989, she was dating applicant, who she had met while "doing
ballroom dancing"; that they "had volunteered to be in the Fairfax
dance program"; that, during the course of "putting together a
routine," they "were discussing Mike’s company"; that, in particular,
"he asked me to look over some text" for his original brochure; and
that "the dance program was on the 14th of March and this [brochure]
would have preceded it." (Harshbarger dep. at 4.) Specifically, and
while plainly hearsay in part, Ms. Harshbarger further testified that
"[w]e were working on the dance program and I remember being surprised
prior to that day when Mike told me he had chosen the name Rent-A-Nerd
and he insisted that was what he wanted to call it." (Id. at 4-5.)
Concurrent Use No. 1,007
7
and further testimony by applicant regarding subsequent meetings
on March 21 and 27, 1989 likewise fails to disclose the substance
of the conversations, other than the vague indication that "RENT-
A-NERD" was discussed. Instead, as evidenced by a copy of an
invoice introduced by applicant, the record shows that the
earliest documented date on which applicant actually rendered any
computer consulting services was May 21, 1989,10 when for a fee of
$60.00 he provided Alex Kosorukov with a one-hour consultation
concerning the selection of a personal computer.11 Other invoices
introduced by applicant demonstrate sales of computer consulting
services in 1989 to Mr. Kosorukov on May 28, November 21 and

10 Applicant, ostensibly to substantiate the first use of his original
brochure, offered the following testimony by Gerry Datlow:
Q. Are you familiar with Rent-A-Nerd and Michael
Wyckoff?
A. Yes.
Q. Under what occasion did you first become aware of
Rent-A-Nerd?
A. To the best on my recollection[,] sometime in
March or early April of 1989 I was having computer problems
and I bumped into a fellow I knew and I asked him does he
know anyone that could help me and he showed me a brochure
and it said Rent-A-Nerd and I looked at it and I wrote down
the phone number. I called and the person who answered was
Michael Wyckoff and he fixed my problem over the phone and
that was late March or early April of 1989.
I remember the time because I was working on my income
tax and I had just gotten a new computer at the end of that
last year and I had that note in my file.
(Datlow dep. at 3-4.) We observe, however, that neither the "note"
referred to by the witness as refreshing his recall, nor any other
documents--such as a sales invoice--pertaining to the time frame in
which the witness assertedly received assistance from applicant, were
introduced by applicant in connection with Mr. Datlow’s testimony.
11 Counsel for registrant, at the oral hearing, conceded that May 21,
1989 is the earliest date proven by applicant with respect to an
actual sale of applicant’s services under the "RENT-A-NERD" mark.
Concurrent Use No. 1,007
8
December 12 as well as additional sales, commencing in mid-August
and prior to December 9, of such services to various individuals
and businesses located in Washington, D.C., the northern Virginia
localities of Alexandria, Annandale, Arlington, Fairfax and Falls
Church, and the suburban Maryland areas of Bethesda, Laurel and
Rockville.
Applicant’s first newspaper advertising of his computer
consulting services began on July 6, 1989, when applicant ran an
ad, prominently featuring the mark "RENT-A-NERD," under the
listing of "Consulting" in the "Computer Services Directory" of
the business section of the Washington Post. Since that time,
applicant has continuously run the same or a substantially
identical ad, which typically appears in the "Washington
Business" section of such newspaper, on a weekly basis.
Applicant has also advertised his "RENT-A-NERD" computer
consulting services in other metropolitan Washington newspapers,
including display ads in the October 16, 1989 issue of the Legal
Times, the January 29, 1990 edition of the Washington Times, the
November 25, 1990 issue of the Arlington Sun Gazette and the
December 5 through 26, 1990 editions of the Sentinel. In
addition, on October 3, 1989, applicant engaged the services of a
commercial printer to produce a brochure for his "RENT-A-NERD"
services. Like the graphic elements comprising registrant’s
mark, applicant’s brochure, which is still in use, displays the
term "RENT-A-NERD" adjacent to a drawing of a "nerd" figure,
wearing eyeglasses and a pocket protector, who stands next to a
computer terminal. Other promotional activity by applicant under
Concurrent Use No. 1,007
9
the "RENT-A-NERD" mark has consisted of running a full-page
advertisement for his computer consulting services in the program
for the Arlington Dance Theatre’s production of The Nutcracker on
December 16, 17 and 18, 1994.
Applicant and his "RENT-A-NERD" computer consulting
services have received free publicity due, primarily, to the
stereotypically humorous and catchy nature of the name. Besides
an acknowledgment of "special thanks" to "Michael Wyckoff, our
computer expert of Rent-A-Nerd in Vienna," which appeared in the
program for a June 2 and 3, 1995 production by the Arlington
Dance Theatre (applicant’s Ex. 28), applicant and his business
received nationwide publicity when they were mentioned in an
article in the April 10, 1991 issue of the Wall Street Journal on
the importance to a small company of selecting a memorable name
for the business. Additional exposure for the "RENT-A-NERD" name
beyond the Washington, D.C. metropolitan area was received during
the period of October 8 through 10, 1992, when an Associated
Press story on applicant and his "RENT-A-NERD" computer
consulting business12 appeared in such newspapers as the Lock
Haven, Pennsylvania Express, the Baltimore, Maryland Evening Sun,
the Saginaw, Michigan News, the State College, Pennsylvania
Centre Daily Times and the Wilmington, North Carolina Morning
Star, and was broadcast on radio station KPIX.

12 According to Mr. Wyckoff, the story was written by a reporter who
contacted applicant after having seen applicant’s display ad for his
"RENT-A-NERD" services in the Washington Post.
Concurrent Use No. 1,007
10
In the Washington, D.C. metropolitan area, the same
Associated Press story ran in the October 9, 1992 edition of the
Washington Times. Prior thereto, articles about applicant and
his "RENT-A-NERD" computer consulting services had appeared in
the business section of the Journal newspaper on both June 12,
1991 and June 2, 1992, while other stories ran in such regional
publications as the March 23, 1992 issue of the Montgomery County
Business Record and the September 1992 edition of Virginia
Business. Applicant and the name of his business have also been
mentioned in connection with an advertising testimonial
distributed by the Washington Post and in local newspaper stories
appearing in the September 12, 1991 issue of the Arlington Sun
Gazette and the December 1992 edition of Computer Digest.
Applicant, as shown by copies of additional invoices
which he submitted as an exhibit, has expanded his business under
the "RENT-A-NERD" mark to include customers outside of the
Washington, D.C. metropolitan area in which he initially rendered
his services. Specifically, in late 1991, applicant had sales to
customers in California and South Carolina. Applicant’s sales in
1993 encompassed customers in Arkansas, California, Colorado,
Connecticut, Illinois, Kentucky, Maine, New York, Pennsylvania,
Tennessee, Texas, the U.S. Virgin Islands and West Virginia.
During 1994, applicant’s sales included customers in California,
Connecticut, Illinois, Missouri, New Hampshire, New Jersey, New
York, Ohio, Oregon and Vermont.13 In particular, as to the

13 Applicant’s August 28, 1995 response to registrant’s Interrogatory
No. 1, however, lists only the following as "other states" (besides
Concurrent Use No. 1,007
11
services rendered by applicant in Ohio, it is notable that while
applicant, on April 14, 1993, amended his application from a
territorially unrestricted one to one in which he acknowledged
registrant to have the exclusive right to use of the registered
mark in Ohio, applicant nevertheless billed a customer in Toledo,
Ohio for computer consulting services which he provided in the
amount of $10.00 on November 1, 1994 and received payment
therefor on November 14, 1994. Applicant, however, clearly had
not only constructive notice of registrant’s rights in the "RENT-
A-NERD" and design mark as of the June 19, 1990 date of issuance
of the registration involved herein,14 but also had actual
knowledge of registrant’s rights in the "RENT-A-NERD" designation
as a result of both a December 9, 1989 search of a commercial

Virginia, Maryland and the territory of the District of Columbia) in
which applicant has used the "RENT-A-NERD" mark: North Carolina, New
York, Massachusetts, Connecticut, Texas, California, Arizona, Alaska
and the U.S. Virgin Islands. Although, for each of such geographic
areas, the date and manner of first use, as also requested, was not
indicated, applicant’s response to registrant’s Interrogatory No. 14,
which requested the identification of "each separate geographic area
in which Applicant has used the mark ’RENT-A-NERD’ related to
Applicant’s services before [registrant applied for registration on]
September 12, 1989," simply states "see number one above". There is,
however, no documentary or other evidentiary support in the record for
applicant’s stated use of his mark in North Carolina, Massachusetts
and Alaska, and there is no such evidence which shows that, prior to
September 12, 1989, applicant had ever expanded use of his mark beyond
the Virginia and Maryland suburban areas of Washington, D.C.
Specifically, and since no address was indicated with respect to any
of the instances in which services were rendered to Mr. Kosorukov, the
sequential invoices furnished by applicant establish only that, as of
September 12, 1989, applicant had rendered his services under his mark
to an individual in Alexandria, Virginia on August 12, 1989 and to a
firm in Rockville, Maryland on August 17, 1989. The earliest
documented sale of such services in Washington, D.C. is an invoice to
a firm which is dated November 16, 1989.
14 Section 22 of the Trademark Act provides in pertinent part that
"[r]egistration of a mark on the principal register ... shall be
constructive notice of the registrant’s claim of ownership thereof."
Concurrent Use No. 1,007
12
trademark database15 and a December 11, 1989 telephone call placed
to registrant’s Akron, Ohio business number.16
Registrant, on the other hand, testified that he
"created the concept of Rent-A-Nerd back in the late ’80s."
(Briggs dep. at 6.) As of his February 1, 1996 deposition,
however, Mr. Briggs’ involvement therewith was limited to being
the owner of the registered "RENT-A-NERD" mark, which he licenses
to the user thereof,17 and the preparation of a uniform franchise
offering circular and franchise agreement for use in connection
with his plans for a national franchise offering.
Registrant’s current occupation consists of being the
owner of three small businesses: (i) Briggs Gift Company
(hereinafter "BGC"), which is a manufacturer of novelty gifts and
party supplies; (ii) Focus One Marketing Group, which does
graphic design work; and (iii) Stellar Private Cable TV Systems,
which builds and sells communications products, satellite dishes
and other commercial installations. Although the latter business

15 Specifically, applicant’s response to registrant’s Interrogatory No.
18 refers to applicant’s first becoming aware of registrant’s use
thereof through a "12.9.89 Trademark Scan on Compuserve".
16 The 216 633-8545 number which is listed on applicant’s long distance
telephone bill (see Applicant’s Ex. 49) is the same number which
appears on registrant’s early advertising and promotional materials
(see Registrant’s Exs. B, G, L, M and N) and his initial yellow pages
ad for the computer consulting business (see Registrant’s Ex. S).
Applicant’s response to respondent’s Interrogatory No. 24, however,
further indicates that the telephone call to respondent was the sole
communication between the parties prior to the commencement of this
proceeding.
17 Although applicant makes much of the fact that a written license
agreement was never produced and offered into evidence by registrant,
we note that the lack thereof is not dispositive since it is settled
that a written license agreement is not required. See, e.g., Nestle
Co. Inc. v. Nash-Finch Co., 4 USPQ2d 1085, 1089 (TTAB 1987) and Basic
Inc. v. Rex, 167 USPQ 696, 697 (TTAB 1970).
Concurrent Use No. 1,007
13
presently is his primary one, it is the other two businesses, as
originally operated, which are relevant to the issues in this
proceeding.
Specifically, Mr. Briggs indicated that Focus One
Marketing Group was formed sometime around 1990 following the
dissolution of the advertising agency business of MarTech
Marketing (hereinafter "MarTech"), a partnership which registrant
and his wife started in 1983 and which later took in another
partner prior to dissolving. While MarTech was in operation,
registrant was also operating his BGC business. Both businesses
were based in Akron, Ohio. Sometime during the late 1980s,
registrant decided to computerize the bookkeeping for BGC and
hired a consultant to assist with such task, including buying the
necessary computer hardware. Registrant, however, was not
pleased with the cost and services of the consultant he had hired
and, as a result, subsequently hired Don Abbott, "a high school
student who was a computer whiz[,] to come in and help us, and he
was the nerd, and through that effort ... we learned about
computerization of accounting functions and felt [that] there was
a need to offer this for other small businesses that wanted to do
it on a low cost basis, and that’s how the idea for Rent-A-Nerd
started." (Id. at 7.) Although "not clear" as to the exact date
on which he hired Mr. Abbott, registrant "guess[ed] [that] it
would have been summer of 1988, probably July or August
[thereof]." (Id. at 7-8.) Mr. Briggs testified that he
conceived the idea of "RENT-A-NERD" as the name for a computer
consulting service "in the fall of 1988," which he indicated was
Concurrent Use No. 1,007
14
approximately three to four months after Mr. Abbott started
working for BGC and got its "situation squared away." (Id. at
8.)
Registrant further testified that, initially, he was
actively involved in the day-to-day business of his new venture.
Through MarTech, which also did the design work for registrant’s
promotional materials, a commercial printer was engaged on
October 25, 1988 to print 2,000 "RENT-A-NERD" fliers and 300
"RENT-A-NERD" statement stuffers for use in advertising
registrant’s computer consulting business. According to Mr.
Briggs, MarTech "was kind of operating as the umbrella for Rent-
A-Nerd at the time because it was really not a full-fledged
business, so the billing for the Rent-A-Nerd fliers came to
MarTech because we had credit and so forth ...." (Id. at 9-10.)
Both MarTech and BGC, at that time, were located in the same
offices and shared the same employees.18
To test the market for his computer consulting
services, registrant began distributing his "RENT-A-NERD" fliers
in November 1988 by placing one in each package of gifts shipped
by BGC and including one with each invoice sent by BGC.
Registrant utilized such distribution methods, which covered "the
greater portion of the country," since no additional marketing

18 Applicant contends that registrant is not the owner of the "RENT-A-
NERD" and design mark since the evidence presented by registrant shows
MarTech and BGC to have been initially using such mark. However, not
only has registrant presented an explanation in his testimony for such
use, but in any event applicant, while he could have done so, did not
pay the required fee and timely petition to cancel the registration on
the ground of registrant’s alleged lack of ownership of the mark. In
consequence thereof, applicant’s assertion that registrant is not the
owner of the registered mark will not be given further consideration.
Concurrent Use No. 1,007
15
costs were involved. (Id. at 18.) Additional advertising and
promotional items utilized in connection with publicizing the new
venture included a dozen T-shirts imprinted with the "RENT-A-
NERD" designation, which registrant ordered through MarTech on
November 20, 1988. Such shirts were worn by "[s]ome of the
office staff" and "a few" may have been "given to customers."
(Id. at 19-20.) Again, through MarTech, 3,000 two-color "RENT-A-
NERD" brochures were ordered from a commercial printer on January
20, 1989. The brochures were "handed out informally" and, like
the earlier fliers, "some" were mailed to BGC customers with
their orders. (Id. at 22-23.) During "the same time frame as the
two-color brochure," registrant also utilized, as a promotional
item, "a very high quality Rent-A-Nerd official pocket
protector," which according to Mr. Briggs "was passed out at
random to anybody that we thought would be a candidate for our
services," including mailings of such an item to the accounting
departments of BGC customers. (Id. at 23.) Registrant, by
December 1988, also had arranged to have listed the 633-8545
telephone number for the "RENT-A-NERD" business, which listing
subsequently appeared in the business section of the 1989 Akron,
Ohio telephone directory and set forth the same address (920 E.
Tallmadge) as that for MarTech.
The earliest documented instance, however, as to when
registrant first actually rendered computer consulting services
to a client under the mark "RENT-A-NERD" is a barter invoice, in
the amount of $285.00, sent by MarTech to John Kordic Co. of St.
Augustine, Florida, on April 15, 1989 concerning the creation of
Concurrent Use No. 1,007
16
a spreadsheet to track an Akron, Ohio automobile dealership’s
sales and inventory in exchange for a credit with respect to
landscaping design services.19 According to registrant, the
services were billed by MarTech because, as testified to earlier,
"Rent-A-Nerd ... was operating under the umbrella" of MarTech
since "it really wasn’t a full-fledged company".20 (Id. at 25.)
Moreover, as to the status of his "RENT-A-NERD" business during
the initial stages thereof in 1989, registrant gave the following
testimony:
Q. The April, May, 1989 time period,
what was the state of the Rent-A-Nerd
business?
A. We were operating in the same
office as MarTech Marketing and Briggs Gift
Company, had the same office staff. ....
[I]t was basically part of that company. It
wasn’t its own entity.
Q. When did that change as far as how
the business was operated?
A. In early July of ’89 we felt that
there was a market for this service and that
it could be expanded and that it was
something to pursue, so we decided to create
its own entity, its own checking account and
so forth.
....

19 A copy of a January 31, 1996 letter faxed to Mr. Briggs from a John
Kordic or Kordick of Florida Landscape and Nursery Co. in St.
Augustine, Florida, which registrant introduced as part of his Exhibit
I, states that the writer "couldn’t locate any of the Rent-A-Nerd
things you guys did for me when I was selling cars, but I did manage
to find the barter invoice stuck inside my tax return papers."
20 Mr. Briggs added that he claimed April 15, 1989 as the stated date
of first use in the application which matured into his registration
because "that was the first time that we had billed for services that
was [sic] out of the state of Ohio." (Briggs dep. at 25.) Such
services, Mr. Briggs further noted, were not only paid for, but were
provided under the mark in the form of "a disk that had the
information on it and the disk had our logo on it." (Id. at 27.)
Concurrent Use No. 1,007
17
So I would say that the business of
Rent-A-Nerd as a consulting service began in
July with, you know, operating itself. We
had been doing the consulting servicing all
along, but in July we really made an effort
to promote it.
(Id. at 27.)
Registrant and his "RENT-A-NERD" computer consulting
services first received publicity through a newspaper article in
the Akron, Ohio Beacon Journal on July 24, 1989. As was the case
with applicant, the article reports, among other things, that
registrant’s computer consulting business "is catching on ...
because people seem to associate the self-deprecating name with
the kind of service it suggests: computer wizardry from people
completely lacking in social skills, much less marketing savvy;
the kind of experts who’ll work all night to get a computer or
program running right, then neglect to put on fresh shirts in the
morning." (Registrant’s Ex. K.) Registrant has publicized his
computer consulting business by distributing brochures, bearing
his registered mark, during trade shows, which were held in such
cities as New York, Atlanta and Kansas City, at which BGC
exhibited products to retailers in the novelty gift trade.21 At
such shows, registrant also sold "RENT-A-NERD" pocket protectors
for a quarter each.
In addition, at trade shows known as "computer fairs,"
registrant has advertised his computer consulting services by
passing out copies of a "Federal Nerd Note" handbill. (Id. at

21 As was the case with the sending of "RENT-A-NERD" advertising fliers
to customers of BGC, registrant distributed "RENT-A-NERD" brochures at
Concurrent Use No. 1,007
18
31.) The handbill, created by MarTech in July 1989 as an obvious
take-off on a two dollar bill, refers to "Head Nerd: Don Abbott"
and offers the bearer thereof a two-hour computer training
session from "RENT-A-NERD" for $25.00. (Registrant’s Ex. M.)
Registrant, as of July 1989, has also advertised his registered
mark by using it on a catalog for software compatible accounting
forms and on advertising literature for computer furniture. Such
products were offered through the "RENT-A-NERD" business as
adjuncts to the computer consulting services. Moreover, by 1990,
the Akron, Ohio business section of the Ohio Bell telephone
directory, along with a 1990 yellow pages listing, listed the
"RENT-A-NERD" business under a new number, 896-1534, although a
different address from that formerly used is set forth in each
instance.22
The arrangement whereby registrant basically supervised
the operation of the "RENT-A-NERD business while Don Abbott did
the actual "on-site work" of "handling the computer end of it"
lasted until about July 1990. (Briggs dep. at 34.) Mr. Briggs
testified, however, that "because of my involvement with the
other businesses, I wasn’t able to spend as much time with this
as I would like, so I licensed the use of the trademark to Don
Abbott and he operated the company independently as a licensee"
until he graduated from college. (Id.) Although registrant did

trade shows attended by BGC since no additional marketing costs were
incurred.
22 While the differences in business address were not explained, Mr.
Briggs stated that the reason for the change in telephone number was
that "at this time the business was run by a licensee." (Briggs dep.
at 42.)
Concurrent Use No. 1,007
19
not recall exactly when Don Abbott graduated, registrant
indicated that, upon graduation, Mr. Abbott was offered a job
opportunity at another company and "opted to take that job of
full-time employment instead of remaining self-employed as the
Rent-A-Nerd licensee operating the office." (Id.) With respect
to the status of such business thereafter, registrant gave the
following testimony:
Q. Who continued the Rent-A-Nerd
business after Don Abbott left?
A. Don Abbott sold the business to one
of the Nerds that worked for him called Brian
Bobo.
Q. Did you give him consent to do
that?
A. Yes, we had a meeting and
determined all that, and the license was
transferred.
Q. And Brian Bobo is now licensed to
operate the Rent-A-Nerd business?
A. Yes.
(Id. at 35.)
As to his plans for expanding the "RENT-A-NERD"
business, registrant noted that:
For the past few years, I have been
working on a uniform franchise offering; in
particular, a franchise agreement. I feel
that it is a concept and a marketing
advantage ... that can go on a national
basis, so all of my efforts have been
concentrating on putting together a franchise
offering.
(Id.) Although, in view of the pendency of this proceeding, no
franchises have yet been offered, registrant, as of December

Concurrent Use No. 1,007
20
1993, had completed a draft copy of a uniform franchise offering
circular for use in connection therewith and intended to form a
corporation for his franchising activities. During the last
quarter of 1993, registrant, in conjunction with his plans for
franchising, contacted an insurance agency regarding language for
insurance requirements for franchisees to be included in the
franchise agreements and had run newspaper ads, for which
responses had been received, seeking experienced individuals to
develop and market the "RENT-A-NERD" franchising program.
Although it appears that nothing further has since
happened with such program, the "RENT-A-NERD" and design mark,
and the services offered in connection therewith, continue to be
advertised and promoted. By 1994, a display ad in the Ohio
yellow pages lists both a "NATIONAL 1-800-800-NERD" and a "LOCAL
(216) 785-040" as telephone numbers for the computer consulting
services offered by registrant’s licensee, due to an expansion of
the geographical area served by the business.23 (Registrant’s Ex.
V.) Registrant, in particular, indicated that telephone calls
are received from all over the United States on the 800-number.
Moreover, registrant’s licensee has received publicity by being
mentioned in a May 1994 article in the nationally circulated
publication CashSaver, which states that Brian Bobo and Don
Abbott are "business partners" and "the owners of Rent-A-Nerd".
(Registrant’s Ex. W.) Registrant, when asked if "Rent-A-Nerd

23 Curiously, despite the changes in telephone numbers and address
which have taken place, Mr. Briggs also testified that the "RENT-A-
NERD" business continues to distribute the same brochure which was
first utilized in November 1988.
Concurrent Use No. 1,007
21
[is] still active today," replied "[y]es, very much so," and
further indicated that:
The licensee operates his own business,
and I’m not familiar with every promotional
activity or what business they are doing
because ... I am not affiliated in this
business, it is a separate entity. They do
promote nationally, [and] I know they do
business ... [in] Chicago, they have clients
up there, [and] they have clients down in
Texas.
(Briggs dep. at 44-45.)
Turning to the threshold issue of whether applicant, as
the party having the burden of proof in this case, has met the
jurisdictional requirement for a concurrent use proceeding, we
find that, as evidenced by the earliest of the invoices to Mr.
Kosorukov (and as conceded by registrant’s counsel at the oral
hearing), applicant’s concurrent lawful use in commerce of the
mark "RENT-A-NERD" in connection with the actual rendering of
"temporary employment services for computer specialists," in the
form of computer consulting services provided on a temporary
basis,24 first occurred on May 21, 1989. Such date plainly is
prior to the September 12, 1989 filing date of the application
which matured into registrant’s registration, although we further
find that, as proven by the invoice sent by MarTech to the John
Kordic Co., it is subsequent to registrant’s first use of the
mark "RENT-A-NERD" in conjunction with the actual rendering of
his "consulting services ... regarding the use and application of

24 It is clear from the record that any difference between applicant’s
services as described in the application and those which he actually
renders is essentially one of semantics and not substance.
Concurrent Use No. 1,007
22
computers," which took place on April 15, 1989.25 Nevertheless,
as stated by the Board in Pagan-Lewis Motors, Inc. v. Superior
Pontiac, Inc., 216 USPQ 897, 899 (TTAB 1982):
It is well-settled that concurrent
rights arise where a party, in good faith and
without knowledge of a prior party’s use in
another area of the country, adopts and uses
the same or a similar mark for the same or
like goods or services within its own
geographical area with a measure of
commercial success and public recognition and
without any confusion as to source. See:
Weiner King, Inc. v. Wiener King Corp., 201

25 Both parties assert that, for priority purposes, they are entitled
to rely upon their earlier advertising uses of their respective "RENT-
A-NERD" marks. Specifically, applicant in effect seeks to tack the
March 14, 1989 use of his "RENT-A-NERD" mark on brochures which he
printed and began distributing to the date upon which he actually
started rendering his services under the mark. Likewise, registrant
essentially seeks to defeat the earliest date asserted by applicant by
tacking the use on fliers of the "RENT-A-NERD" and design mark, which
registrant commenced in November 1988, to the proven date of the first
sale of his services under such mark. However, in order for a party
to rely upon advertising or other analogous service mark use for
purposes of tacking such usage to the date of its actual or technical
service mark use, a party must establish that its advertising or other
analogous use was "of such a nature and extent as to create public
identification of the ... term with the .. . [party’s] service."
T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1881
(Fed. Cir. 1996). Here, the evidence presented by applicant utterly
fails to support the necessary inference of the creation of a public
identification of the mark "RENT-A-NERD" with the services offered by
applicant, since the evidence shows that applicant’s initial brochure
was distributed, as of May 21, 1989, to only two potential customers
(Mr. Kosorukov and Mr. Datlow). Plainly, no showing has been made
from which it can be inferred that a substantial share of the
consuming public for applicant’s services had been reached.
Similarly, while registrant’s efforts at advertising appear to be
considerably more extensive, it still seems problematic at best to
infer that, as of April 15, 1989 (or even as late as May 20, 1989),
the distribution of fliers inside packages sent to BGC customers
constituted anything more than a negligible portion of the relevant
market for computer consulting services or that the consuming public
had come to identify the "RENT-A-NERD" and design mark with the
provision of such services by registrant. Accordingly, because, under
PacTel, "activities claimed to constitute analogous use must have
[had] substantial impact on the purchasing public," 37 USPQ2d at 1882,
neither applicant nor registrant has presented legally sufficient
evidence to support his claim that he is entitled to rely on analogous
service mark use to establish priority.
Concurrent Use No. 1,007
23
USPQ 894 (TTAB 1979), modified, 204 USPQ 820
(CCPA 1980); and Tie Rack Enterprises, Inc.
v. Tie Rak Stores, 168 USPQ 441 (TTAB 1970).
Here, nothing indicates that applicant’s adoption and actual
Concurrent Use No. 1,007
24
first use of the "RENT-A-NERD" mark for his services in the
Washington, D.C. metropolitan area, prior to September 12, 1989,
was anything other than in good faith and without knowledge of
registrant’s prior use of basically the same mark for essentially
the same services in Akron, Ohio. In view thereof, and since
applicant’s earliest actual use of his mark clearly was followed
by a measure of commercial success and public recognition in his
localized trading area, with no indication of any instances of
actual confusion, we hold that applicant has met the
jurisdictional requirement for a concurrent use registration as
set forth in Section 2(d) of the Trademark Act.26
This brings us to consideration of whether applicant,
in order to be entitled to a concurrent use registration and a
restriction of registrant’s registration, has satisfied his
burden of showing that there will be no likelihood of confusion
from contemporaneous use by the parties of their respective marks
in their respective geographical areas. Plainly, in light of the
substantial similarity between such marks in appearance, their
identity in sound, meaning and commercial impression, and the
virtual identity of the computer consulting services provided in
connection therewith, confusion as to source or sponsorship would
be likely if the parties were to render their services under
their marks in the same territory.
As our principal reviewing court, citing In re Beatrice
Foods Co., 429 F.2d 466, 166 USPQ 431 (CCPA 1970), indicated in
Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 3 USPQ2d 1306,

26 See footnote 6.
Concurrent Use No. 1,007
25
1308-09 (Fed. Cir. 1987),27 a concurrent use applicant must not
only meet the statutory jurisdictional requirement, but it must
also demonstrate that there will be no likelihood of confusion
resulting from the parties’ contemporaneous use of their
respective marks in their respective geographical areas:
In Beatrice Foods, the court spoke of
the requirement for an applicant’s lawful use
in commerce outside of the conflicting
claimant’s area as being "jurisdictional in
nature." 429 F.2d at 473; 166 USPQ at 436.
Gray construes "jurisdictional" to mean that,
by showing such use, his "entitlement" to a
concurrent use registration is established.
Clearly, that is not the import of the
court’s statement. A valid application
cannot be filed at all for registration of a
mark without "lawful use in commerce," and,
where a claim is made of concurrent rights,
such use must begin prior to the filing date
of any application by a conflicting claimant
to the mark. In this sense, the requirement
is "jurisdictional." 15 U.S.C. §1052(d) ....
Beatrice Foods itself goes on to recognize
that this "jurisdictional" requirement is
only one of the "conditions precedent" which
muse [sic] be satisfied to establish
"entitlement" to a concurrent use
registration:
The touchstone, however, is the
requirement that there be no
likelihood of confusion, mistake or
deception in the market place as to
the source of the goods resulting
from the continued concurrent use
of the trademark. Only in
satisfying this standard, can the
Patent Office be sure that both the
rights of the individual parties
and those of the public are being
protected.

27 In such case, the junior party and later user, Daniel R. Gray,
sought concurrent use registration of a substantially identical mark
for identical and closely related services to those of the senior
party and prior user, Daffy Dan’s Bargaintown (referred to by the
court as "DDB").
Concurrent Use No. 1,007
26
Id. at 473-74, 166 USPQ at 436. Thus, the
determination that Gray met the
"jurisdictional" requirement does not
establish his "entitlement" to a concurrent
use registration. Gray was not "entitled" to
such registration unless he also satisfied
the "touchstone" requirement of no likelihood
of confusion with DDB’s use. Entitlement
here turns on whether the board properly took
into consideration the admitted current area
of actual use by the parties or whether the
board was required, as Gray asserts, to
disregard Gray’s actual use because Gray does
not seek registration for his entire trading
area.
Beatrice Foods did not address that
issue. In Beatrice Foods, there had been an
overlap in use by the parties. However,
there, the parties worked out a settlement
under which each agreed to recognize and
honor the exclusive rights of the other in
separate areas of use. In other words, one
party obtained rights in the "overlap" area,
and the other party expressly withdrew from
that area to avoid confusion of the public.
In contrast, the record here shows, not
merely that the junior party inadvertently or
temporarily entered into the senior party’s
territory, but that such use was continuing
at the time of the board’s decision with no
agreement between the parties that it would
cease.
....
We conclude that the board’s
interpretation of the statutory provision is
correct. The issue of likelihood of confusion
in this concurrent use proceeding was
properly resolved by looking at the
concurrent use applicant’s area of actual
use, not merely the area "claimed" in his
application. Thus, the exclusion of some
geographic territory of use from a concurrent
use application does not restrict the
likelihood of confusion inquiry required by
the statute. As this case illustrates, the
mere statement by an applicant that a
registration is not sought for a particular
state or geographic area cannot be equated
with a representation that the applicant does
Concurrent Use No. 1,007
27
not and will not use its mark in the area.
Here, there is no representation by Gray that
he will limit the scope of geographic use of
his mark or will take steps to prevent
confusion of the public. What is attempted
here is simply a manipulative use of the
registration system to secure to Gray the
advantages of registration with no
undertaking whatsoever to protect the public
from confusion. We see nothing in the
statute, nor in the "equities" to be resolved
in a concurrent use proceeding, which
requires the Commissioner to limit the
likelihood of confusion inquiry to the area
"claimed" by a concurrent use applicant.
Applying the above legal principles to the facts in
this proceeding, we concur with registrant that applicant, by
using his "RENT-A-NERD" mark in the State of Ohio in connection
with essentially the same services as registrant’s licensee
provides in the State of Ohio under registrant’s "RENT-A-NERD"
and design mark, is precluded from establishing his entitlement
to a concurrent use registration.28 Similarly, and aside from
registrant’s testimony that telephone calls are received from all
over the United States on the 800-number used by his licensee, it
is plain that the licensee’s use of registrant’s mark in
connection with the business which it does for its clients in
Chicago and Texas and applicant’s expansion of his sales under
his mark to include the States of Illinois and Texas make it

28 Registrant, in his brief, raises the additional argument that
applicant "has not and cannot meet his burden of proof that no
likelihood of confusion exists" because the record shows that
applicant "admits that a likelihood of confusion does exist."
Specifically, registrant stresses that applicant answered "yes" in
response to registrant’s Interrogatory No. 11, which asks: "Do you
contend that there is a likelihood of confusion among consumers of the
services of the Applicant using the Applicant’s mark and the
Registrant using the Registrant’s mark?" Registrant’s heavy reliance
thereon is devoid of any merit since the interrogatory, in view of its
Concurrent Use No. 1,007
28
impossible for applicant to show entitlement to the concurrent
use registration he seeks. Applicant, as the party having the
burden of proof, has moreover neither demonstrated that his
rendering of services under his mark in Toledo, Ohio was an
inadvertent or temporary occurrence which will not be repeated,
nor has he shown that registrant’s licensee, for example, has
ceased doing business under registrant’s mark in Chicago and
Texas. We hold, therefore, that this concurrent use proceeding
must be dissolved. See, e.g., My Aching Back Inc. v. Klugman, 6
USPQ2d 1892, 1894 (TTAB 1988) [applicant failed to demonstrate
that confusion would not be likely since, among other things,
"there is no indication in the record that applicant would not
use or advertise the mark in the territory of the registrant and,
in fact, the record demonstrates that applicant has made some
sales in ... two states that applicant concedes should be
reserved for the registrant"].
Nevertheless, in the event that our holding that
applicant cannot establish his entitlement to a concurrent use
registration as a matter of law is reversed on appeal, we further
hold that, at most, applicant would be entitled, as a subsequent
user, to a concurrent use registration only for the Washington,
D.C. metropolitan area and not, as specified in his application,
the entire United States with the exception of the State of Ohio.
We recognize, in this regard, that "a subsequent user’s rights
may not [necessarily] be limited to the area of actual use prior

lack of any territorial limitations, is clearly ambiguous.
Applicant’s answer thereto is thus of no probative value whatsoever.
Concurrent Use No. 1,007
29
to notice of the senior user’s rights (regardless of when that
may be deemed to have occurred in this case) and that territorial
expansion by the later user even after learning of the senior
user is not [necessarily] precluded as a matter of law". Over
the Rainbow, Ltd. v. Over the Rainbow, Inc., 227 USPQ 879, 883
(TTAB 1985), citing Weiner King, Inc. v. Wiener King Corp., 615
F.2d 512, 204 USPQ 820, 829 (CCPA 1980) and Ole’ Taco Inc. v.
Tacos Ole, Inc., 221 USPQ 912, 915 (TTAB 1984).
However, "a party’s use in an expanded area after
issuance of an existing registration for that area constitutes
... bad faith or unlawful use in the expanded area" and such
party "is not entitled, as a matter of law, to registration for
the expanded area." Fleming Companies Inc. v. Thriftway Inc., 21
USPQ2d 1451, 1455 (TTAB 1991), aff’d, 809 F. Supp. 38, 26 USPQ2d
1551, 1552-53 (S.D. Ohio 1992). Specifically, as pointed out by
the district court (italics in original):
This case concerns the scope of
concurrent registration, and the effect of
exclusive rights. The law is clear that once
a party obtains federal registration with
respect to a given mark, the registrant has
the exclusive right to use to the mark
throughout the entire United States without
regard to the geographic area in which the
registrant actually uses the mark. Old Dutch
Foods, Inc. v. Dan Dee Pretzel & Potato Chip
Co., 477 F.2d 150, 156 [177 USPQ 469] (6th
Cir. 1973); See In re Beatrice Foods Co.,
429 F.2d 466, 472-73 [166 USPQ 431] (CCPA
1970); Dawn Donut v. Hart’s Food Stores,
Inc., 267 F.2d 358, 362-63 [121 USPQ 430 ]
(2d Cir. 1959) .... Thus, a registrant has
rights to the exclusive use of the mark even
in areas where it does not conduct any
business. Old Dutch Foods, 477 F.2d at 156;
Dawn Donut, 267 F.2d at 362-63 ....
Consequently, a junior user in a territory
Concurrent Use No. 1,007
30
subject to another’s registration, could not
obtain registration for the mark in that area
while the registrant’s federal registration
was in effect. Action Temporary Services v.
Labor Force, Inc., 870 F.2d 1563, 1565 [10
USPQ2d 1307] (Fed. Cir. 1989); Old Dutch
Foods, 477 F.2d at 156, 157; In re Beatrice
Foods Co., 429 F.2d 466, 472-73 [166 USPQ
431] (CCPA 1970); John R. Thompson Co. v.
Holloway, 366 F.2d 108, 114-116 [150 USPQ
728] (5th Cir. 1966); see Dawn Donut, 267
F.2d at 362.
Although the registration of a mark
grants the registrant nationwide protection,
a party who qualifies may obtain concurrent
use registration for the same mark under ...
Section 2(d) of the Lanham Act .... ....
In applying this section and the applicable
precedent to the facts of this case, we must
conclude that the Plaintiff is not entitled
to registration in the expanded territory.
A party is entitled to concurrent use
registration covering a given territory, if
that party has "lawfully" used the mark in
that territory from a period prior to any
other registration of that mark. Id; Action
Temporary Services v. Labor Force, Inc., 870
F.2d 1563, 1565 [10 USPQ2d 1307] (Fed. Cir.
1989). Thus, unless the Plaintiff has been
"lawfully using" the mark in the expanded
territories since before the Defendant
obtained federal registration covering that
area, it is not entitled to concurrent
registration there. We conclude that the
Plaintiff’s use was not a "lawful" use within
the meaning of the Lanham Act, and thus, the
Plaintiff is not entitled to concurrent
registration in the expanded area.
A "lawful use" is the use of a mark in
connection with goods or services in a
territory not covered by another party’s
registration. Id. at 1566. As the TTAB
concluded, the Plaintiff "commenced use in
the expanded territory, after issuance of
[the Defendant’s] registration which included
the expanded territory." Fleming Companies
v. Thriftway, Inc., 21 U.S.P.Q.2d (BNA) 1451,
1455 (1991). Giving the TTAB due deference
on such questions of fact, ... we conclude
that the Plaintiff did not use the mark in
Concurrent Use No. 1,007
31
the expanded territory at any time prior to
the Defendant’s registration. The Plaintiff
is thus, not a "lawful user" within the
meaning of the Lanham Act, and does not
qualify for concurrent registration in the
expanded territory. ....
The same is likewise true with respect to the parties
in this proceeding. Registrant received his registration on June
19, 1990, yet the record shows that applicant did not expand his
sales beyond his initial customers in the Washington, D.C.
metropolitan area until, at the earliest, late 1991, when his
business rendered computer consulting services on a temporary
basis to customers in California and South Carolina.
Finally, aside from the above, the equitable
considerations in this proceeding strongly favor allowing
registrant to retain his registration for all of the United
States, with the exception of the Washington, D.C. metropolitan
area in which applicant, in good faith and without knowledge of
registrant’s rights, first used and established a business under
the "RENT-A-NERD" mark. Registrant, as shown by the record, was
the first to adopt and use the term "RENT-A-NERD" as part of his
mark; he was the first to advertise and promote his mark; he was
the first to register his mark; he was the first to receive
publicity for his business under the mark; he has formulated
definite plans to franchise such a business nationally; and his
licensee has expanded the use of the mark.
Applicant, by contrast, is not only the subsequent user
(although by just slightly over one month) of his "RENT-A-NERD"
mark, but he has primarily limited the advertising of his
Concurrent Use No. 1,007
32
services under such mark to weekly display ads in the Washington
Post and occasional advertisements in other newspapers and
publications in the Washington, D.C. metropolitan area. Although
applicant, due to the self-deprecating or stereotypically
humorous nature of his mark, has fortuitously received national
publicity for his business in an article which ran in the Wall
Street Journal on April 10, 1991 and has similarly garnered
further regional exposure for the "RENT-A-NERD" name beyond the
Washington, D.C. metropolitan area as a result of an Associated
Press story which appeared in the media during the period from
October 8 through 10, 1992, such instances have been isolated and
limited occurrences which took place more than six years ago. By
comparison, the bulk of the publicity received by applicant for
his "RENT-A-NERD" temporary computer consulting services has
taken the form of articles which have appeared in newspapers and
other publications originating in the Washington, D.C.
metropolitan area.
Furthermore, while applicant, like registrant, has also
expanded his territory of use, there is virtually no information
as to the extent of the parties’ sales under their respective
marks and, in the absence thereof, there is nothing which
indicates that applicant’s subsequent expansion of his sales
outside of the Washington, D.C. metropolitan area has amounted to
anything other than occasional, sporadic or haphazard
occurrences. Clearly, nothing has been shown which would tend to
establish the existence of a natural area of expansion for
applicant’s services under his mark. Thus, the equities, as well
Concurrent Use No. 1,007
33
as the law, dictate that applicant, had he otherwise demonstrated
that no likelihood of confusion would result from contemporaneous
use of the parties’ marks for their computer consulting services,
would be entitled at most to a concurrent use registration which
is limited to the Washington, D.C. metropolitan area, with
registrant’s registration being correspondingly restricted to all
of the United States with the exception of such area.
Decision: This concurrent use proceeding is dissolved
with prejudice and issuance of a concurrent use registration to
applicant is refused.
T. J. Quinn
G. D. Hohein
P. T. Hairston
Administrative Trademark Judges,
Trademark Trial and Appeal Board