The Premier Companies, Inc.v.Bridgestone Retail Operations, LLC

Trademark Trial and Appeal Board

Feb 14, 2014

CU (T.T.A.B. Feb. 14, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: February 14, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

The Premier Companies, Inc.
v.
Bridgestone Retail Operations, LLC
_____

Concurrent Use No. 94002581
Cancellation No. 92049361
_____

Marisa D. Faunce of Plave Koch PLC for The Premier Companies, Inc.

Danny M. Awdeh of Finnegan Henderson Farabow Garrett & Dunner, LLP for
Bridgestone Retail Operations, LLC.
_____

Before Wellington, Lykos and Greenbaum,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

The Premier Companies, LLC (“Premier”) has filed a concurrent use
application to register the mark WHEELWORKZ, in standard characters, for
“distributorships in the field of wheels and tires, retail store services featuring
wheels and tires” in International Class 35.1 The application contains a geographic
restriction to the entire United States except for the states of California, Oklahoma,

1 Application Serial No. 85574870, filed March 20, 2012, alleging first use in commerce on
February 14, 2000.
Concurrent Use No. 94002581
Cancellation No. 92049361

2

Kansas, and Arizona. Premier claims ownership of the geographically unrestricted
Registration No. 3219715 for the same mark and services.2
Premier identifies Bridgestone Retail Operations, LLC (“Bridgestone”) as a
concurrent user of the mark WHEEL WORKS and owner of concurrent use
application Serial No. 85245987 for the aforementioned mark, in standard
characters, for “retail tire and automobile parts and accessories store.”3 The
application contains a geographic restriction that corresponds to Premier’s
application; that is, Bridgestone seeks a registration that is geographically
restricted to an area solely comprising the states of California, Oklahoma, Kansas,
and Arizona.
Consolidation with Cancellation Proceeding No. 92049361
By way of background, the aforementioned concurrent use applications and
this concurrent use proceeding are essentially the fruit of an earlier-filed
cancellation proceeding (No. 92049361) involving Bridgestone, as plaintiff and
petitioner, seeking to cancel the aforementioned, geographically-unrestricted
registration owned by Premier. The cancellation proceeding has been suspended in
light of a stipulated “amendment of registration and withdrawal of cancellation”
filed by the parties. In the stipulation, Premier agreed to geographically restrict its
registration and, contingent on the amendment being entered, Bridgestone agreed
to withdraw the cancellation without prejudice. In the Board’s suspension order

2 Registration issued March 20, 2007.
3 Application filed on February 18, 2011, published for opposition on June 4, 2013.
Concurrent Use No. 94002581
Cancellation No. 92049361

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dated October 26, 2011, it was explained that a registration can only be restricted
territorially by the Board in the context of a concurrent use proceeding which is
instituted by filing an application for concurrent use (or the amendment of an
existing application to add a geographic restriction). The proceeding was thus
suspended to allow for the option of either party to file a concurrent use application.
As already noted, both parties have since filed concurrent use applications.
Because the cancellation proceeding is integrally related to this concurrent
use proceeding, the two proceedings are hereby consolidated. Jurisdiction over the
two concurrent use applications and the geographically unrestricted registration
now rests in this consolidated proceeding.
The Parties’ Concurrent Use Settlement Agreement
On January 22, 2014, Bridgestone filed a copy of the parties’ stipulated “joint
answer and request for issuance of concurrent use registrations,” (“Joint Answer”)
with attached exhibits that include a signed concurrent use settlement agreement
(“Settlement Agreement”); a copy the “amendment of registration and withdrawal of
cancellation” (filed February 2, 2011 in the cancellation proceeding); and a copy of
an unsigned “surrender of registration and withdrawal of cancellation.”
In addition to setting forth geographically restricted territories of use of their
marks, the Settlement Agreement contains provisions that the parties state are
“specifically designed to avoid a likelihood of confusion between the parties’ marks.”
Joint Answer, p. 2. This includes:
Premier will not use, register, apply to register, or cause to be
registered any term containing (a) both WHEEL and WORKS
Concurrent Use No. 94002581
Cancellation No. 92049361

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and/or (b) WHEEL and WORKZ as two separate words.
(Settlement Agreement ¶ 2A);

Bridgestone will not use, register, apply to register, or cause to be
registered any term containing (a) both WHEEL and WORKS
and/or (b) WHEEL and WORKZ as one word. (Settlement Agreement ¶ 2B);

[Premier and Bridgestone] may use [their respective mark] in any way to
promote, offer, sell, and/or render [their services] only in [their respective
territory] (Settlement Agreement ¶¶ 3A and 3B, emphasis added); and

Although the parties are not aware of any actual confusion between
their marks, should the parties become aware of consumer
confusion, they will notify each other of such confusion and work
together in good faith to eliminate or minimize it to ensure that no likelihood
of confusion exists (Settlement Agreement ¶¶ 1, 4).

Paragraph 5 of the Settlement Agreement also makes it clear that the parties
anticipated the Board not accepting the proposed geographic restriction of use
amendment to Premier’s unrestricted registration outside the context of a
concurrent use proceeding. The Settlement Agreement therefore provided Premier
the option to file a concurrent use application and, contingent on this application
maturing into a geographically-restricted registration, Premier would surrender its
unrestricted registration and the parties would agree to dismissal of the
cancellation proceeding without prejudice.
Decision – Concurrent Use Registrations Granted/ Cancellation Dismissed
Both Premier and Bridgestone, as applicants in the concurrent use
proceeding, have the burden of proof of demonstrating their entitlement to
concurrent use registrations. Over the Rainbow, Ltd. v. Over the Rainbow, Inc., 227
USPQ 879, 883 (TTAB 1985); Trademark Rule § 2.99(e), 37 C.F.R. § 2.99(e).
Concurrent Use No. 94002581
Cancellation No. 92049361

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For the reasons explained by the parties in their stipulated Joint Answer as
well as based on their concurrent use Settlement Agreement, we find that confusion
would not be likely given the proposed geographic restrictions of use of the parties’
respective marks. We also make this determination bearing in mind that the
parties voluntarily entered into a concurrent use agreement when it would be
clearly against their business interests to cause confusion on the part of the public.
See Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842
F.2d 1270, 6 USPQ2d 1305 (Fed. Cir. 1988) (with regard to permitting concurrent
use, the decisions of trademark owners “who stand to lose if wrong are normally
more reliable than those of examiners and judges … [such that] it can be safely
taken as fundamental that reputable businessmen-users of valuable trademarks
have no interest in causing public confusion.”).
Accordingly, it is HEREBY ORDERED:
1. Premier is granted a concurrent use registration for its recited services with
the following revised concurrent use statement:
Registration limited to the area comprising the entire
United States except the states of Arizona, California,
Kansas and Oklahoma.
Premier is allowed thirty (30) days from the date of this decision to
elect to have its existing unrestricted registration amended,
pursuant to this proceeding, to contain the above geographic
restriction, failing which the Board will cancel the existing
Concurrent Use No. 94002581
Cancellation No. 92049361

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registration and issue a new geographically-restricted registration
based on application Serial No. 85574870.4
2. Bridgestone is granted a concurrent use registration based on application
Serial No. 85245987 with the following concurrent use statement:
Registration limited to the area comprising the states of
Arizona, California, Kansas and Oklahoma.
3. Cancellation No. 92049361 is dismissed without prejudice.

4 The PTO does not allow duplicate registrations to exist on the Principal or Supplemental
Register. See Trademark Rule 2.48. Thus, it is not possible to amend Premier’s existing
registration and issue a second registration based on Premier’s concurrent use application.
It is already noted in this decision that the parties have apparently expressed a preference
to cancel the existing registration, pursuant to paragraph 5 of the Settlement Agreement,
and to allow Premier to obtain a new registration based on the concurrent use application.
Nevertheless, for the sake of certainty, we offer Premier the choice. Should Premier elect to
have its existing registration amended, its concurrent use application will be abandoned.