Crown Center Redevelopment Corporationv.Cumberland County, North Carolina

Trademark Trial and Appeal Board

Jul 22, 2014

No. 94002588 (T.T.A.B. Jul. 22, 2014)

Mailed: July 22, 2014

Concurrent Use No.
94002588

Crown Center
Redevelopment Corporation

v.

Cumberland County,
North Carolina1

Before Seeherman, Quinn and Lykos, Administrative Trademark
Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Crown Center Redevelpment Corporation (“Applicant”)
has filed four concurrent use applications for the marks
shown below for “providing facilities for exhibitions,
concerts, community festivals and other functions,” in
Class 43:

1 Previous papers erroneously identified the Excepted User as
“Cumberland County Commission, County Courthouse,” apparently
because Applicant, in naming the Excepted User, used the phrasing
“Cumberland County, North Carolina (Cumberland County Commission,
County Courthouse, 117 Dick Street, Fayetteville, NC 28301).”
Upon review, it appears that “Cumberland County Commission,
County Courthouse” is part of the address of the Excepted User.
We have therefore corrected the caption.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Concurrent Use No. 94002588
2
Serial No. 857056432 for

Serial No. 857056123 for

Serial No. 859794184 for

Serial No. 85705584 for CROWN CENTER in standard
characters.5

The applications were all filed on August 16, 2012. Each
application names Cumberland County, North Carolina, a
political and geographic subdivision of the state of North
Carolina (hereafter “Cumberland” or “Excepted User”), as an

2 This application also includes services in Class 36; during
the course of prosecution Applicant requested that the
application be divided, with Class 43 being placed into a child
application. The request to divide will be acted on at the
conclusion of this concurrent use proceeding.
3 This application is only for services in Class 43; no request
to divide was filed.
4 The application as originally filed (Serial No. 85705534)
included services in both Class 36 and Class 43. During the
course of prosecution Applicant filed a request to divide, and
the subject application in Class 43 became a “child” application,
Serial No. 85979418.
5 This application is only for services in Class 43; no request
to divide was filed.

Concurrent Use No. 94002588
3
exception to Applicant’s exclusive right to use the marks.
At the time that this proceeding commenced, Applicant
sought registration of its marks for the entire United
States outside of Cumberland County, North Carolina.
On July 3, 2014, Applicant filed a Settlement and
Coexistence Agreement, dated July 1, 2014, between
Applicant and Excepted User, by which the parties
“acknowledge that their respective services are primarily
geographic in nature, and that each Party’s services
emanate from a single, fixed physical location and
primarily serve consumers living or operating within
different geographic regions of the United States.”
Recital No. 4. Under the agreement, Applicant agrees that
it will not use its marks anywhere within Excepted User’s
territory, namely, the North Carolina counties of
Cumberland, Harnett, Sampson, Bladen, Robeson, Hoke and
Moore. ¶ 1.3. Excepted User, on the other hand, states
that, as of March 27, 2014, it has changed the name of its
“Crown Center” development, through which it provides
facilities for conventions, shows, concerts and other
business, entertainment and community functions, to “Crown
Complex,” recital No. 3, and that it will not use the mark
CROWN CENTER and design after November 15, 2014 in the
territory claimed by Applicant. ¶ 1.1. Excepted User
Concurrent Use No. 94002588
4
further consents to the use and registration by Applicant
of the subject marks in connection with Applicant’s
identified services in Class 43 throughout the United
States except in the named North Carolina counties. ¶¶
1.3, 1.4.6
As part of their efforts to avoid confusion, the
parties have agreed that they will cooperate to avoid any
possible confusion, including using commercially reasonable
efforts to identify themselves as the owners of the
respective marks when using the marks in commerce. ¶ 4.2.
Each further agrees to promptly notify the other of any
instance of actual confusion that comes to its attention,
and both parties will take reasonable steps to eliminate
such confusion and prevent any such instance of confusion
from recurring in the future. Id.
With the “Settlement and Coexistence Agreement”
Applicant has filed a Motion requesting amendment of its
applications in accordance with Section 1.4 of the
agreement, so that the services in Class 43 “pertain to the
entire United States except for the North Caolina counties
of Cumberland, Harnett, Sampson, Bladen, Robeson, Hoke, and
Moore.”

6 Cumberland consents to Applicant’s registration of its marks
for its Class 36 services throughout the United States, with no
restriction with respect to any North Carolina counties. ¶ 1.4.
Concurrent Use No. 94002588
5
Based on the provisions of the agreement, and the
amendment of Applicant’s applications, we find that
confusion is not likely with respect to the parties’ use of
their respective marks. Both have agreed that they will
not use the CROWN CENTER marks in the territory of the
other; that they will use reasonable efforts to identify
themselves as the owners of the respective marks when using
the marks in commerce; and that, if either party becomes of
aware of any instance of actual confusion, it will take
reasonable steps to eliminate such confusion and prevent
any such instance of confusion from recurring in the
future.
The parties agree that confusion is unlikely, noting
that their services are primarily geographic in nature, and
that each party’s services emanate from a single, fixed
physical location and primarily serve consumers living or
operating within different geographic regions of the United
States. We also recognize that it is the parties that are
most knowledgeable about their respective businesses and
the use of their respective marks, and therefore most able
to determine whether the conditions set forth in their
agreement will prevent confusion. See Amalgamated Bank of
New York v. Amalgamated Trust & Savings Bank, 842 F.2d
1270, 6 USPQ2d 1305 (Fed. Cir. 1988); Bongrain Int’l Corp.
Concurrent Use No. 94002588
6
v. Delice de France Inc., 811 F.2d 1479, 1 USPQ2d 1775
(Fed. Cir. 1987). In view thereof, we find that, based on
the geographic limitations and other conditions set forth
in the agreement, concurrent use of the CROWN CENTER marks
is unlikely to cause confusion or mistake or to deceive.
Therefore, Applicant’s request for amendment of its
applications, and the parties’ joint request for issuance,
with these amendments, of concurrent registrations to
Applicant for the marks CROWN CENTER and CROWN CENTER with
various designs, Serial Nos. 85705584, 85705643, 85705612
and 85979418, are hereby granted.
Decision:
Crown Center Redevelpment Corporation is entitled to
concurrent use registrations for the marks CROWN CENTER and
CROWN CENTER with various designs, Serial Nos. 85705584,
85705643, 85705612 and 85979418, for Applicant’s Class 43
services in its territory, namely, the entire United States
with the exception of the North Carolina counties of
Cumberland, Harnett, Sampson, Bladen, Robeson, Hoke and
Moore.
Application Serial No. 85705643 is hereby forwarded to
the ITU Division to act on the request to divide filed
June 6, 2013.