The Board denied TMC's motion to re-open this 1997
concurrent use proceeding involving the mark ON THE
RUN for retail convenience store services. TMC obtained a
concurrent use registration for the entire United States except for
the state of Oklahoma. It sought to remove that geographical
restriction from its registration on the ground that, according to
its evidence, Ronald D. Donohue, the excepted concurrent user, is
no longer using his common law mark.
TMC Franchise Corp. v. Ronald D. Donohue, Concurrent Use
No. 94001076 (August 20, 2020) [not precedential].
The Board observed that a party may seek an amendment to the
concurrent use restriction in its registration only through a new
concurrent use proceeding, or by court order. However, removal may
be permitted if the excepted user has assigned its rights to
registrant. See In re Alfred Dunhill, 4 USPQ2d 1383,1384
(Comm'r 1987).
