ProStar Adjusting LLCv.Revived Exteriors

Trademark Trial and Appeal Board

Jan 27, 2022

94002940 (T.T.A.B. Jan. 27, 2022)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: January 27, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ ProStar Adjusting LLC v. Revived Exteriors _____ Concurrent Use No. 94002940 _____ Charles Wallace of Creedon PLLC, for ProStar Adjusting LLC. Jennifer K. Schwendener of Law Offices of Jennifer K. Schwendener LLC, for Revived Exteriors. _____ Before Shaw, Pologeorgis, and Allard, Administrative Trademark Judges. Opinion by Allard, Administrative Trademark Judge: ProStar Adjusting LLC (“ProStar” or “Applicant”) seeks a concurrent use registration for the standard character mark THE CALM AFTER YOUR STORM for “insurance carrier services” in International Class 36 for the area comprising the states of Arkansas, Arizona, Colorado, Florida, Georgia, Illinois, with the exception of the city of Chicago, Indiana, Kansas, Kentucky, Louisiana, Missouri, North Concurrent Use No. 94002940 - 2 - Carolina, Nebraska, New Mexico, Ohio, Oklahoma, South Carolina, Texas, and Tennessee.1 For the reasons set forth below, registration to Applicant is refused. I. BACKGROUND Applicant initially filed an application seeking a geographically unrestricted registration for the mark THE CALM AFTER YOUR STORM. The Office refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the standard character mark YOUR CALM AFTER THE STORM, registered to Revived Exteriors (also referred to as “Registrant”) for “Roofing contracting; Roofing installation; Roofing services; Installation of doors and windows; Installing siding” in International Class 37.2 In response to the denial of Applicant’s request for reconsideration of the Section 2(d) refusal, ProStar amended its application to seek a concurrent use registration.3 1 Application Serial No. 88221201 was filed on December 7, 2018, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as October 15, 2012. Citations in this opinion to the briefs, the record, and other filings in the case refer to TTABVUE, the Board’s online docket system. Specifically, the number preceding TTABVUE corresponds to the docket entry number, and any number following TTABVUE refers to the page and paragraph references, if applicable. References to Applicant’s application record are to the downloadable .pdf version of the USPTO’s Trademark Status & Document Retrieval (TSDR) system. 2 Registration No. 5540564; issued on August 14, 2018 from an application filed on January 11, 2018 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on a claim of first use and first use in commerce of December 1, 2011. 3 Applicant’s response of February 7, 2020. Concurrent Use No. 94002940 - 3 - In its amendment (repeated below but reformatted for easier reading), Applicant made the following verified statement pursuant to 37 C.F.R. § 2.42: Applicant respectfully requests that its application be amended to a concurrent use basis and accordingly provides the following concurrent use information pursuant to 37 C.F.R. §§ 2.42, 2.73; TMEP § 1207.04(c), (d)(i). Applicant respectfully requests that its application be amended to a concurrent use basis, as Applicant’s date of first use of Applicant’s mark in commerce is October 15, 2012, which is prior to the filing date of any pending applications or any applications that have matured into registrations. 15 U.S.C. § 1052(d); TMEP § 1207.04(c). There are no trademarks identical to Applicant’s mark. The cited mark’s filing date is January 11, 2018-more than five years following Applicant’s first use of Applicant’s mark in commerce. Applicant is thus entitled to use Applicant’s mark as a result of its concurrent lawful use pursuant to 15 U.S.C. § 1052(d). “An application that includes section 1(a) of the Trademark Act as a filing basis . . . may be amended to an application for concurrent use registration, provided that the application as amended meets the requirements of [37 C.F.R.] § 2.42.” 37 C.F.R. § 2.73. The requirements of 37 C.F.R. § 2.42(b), as well as Applicant’s verified statements thereof, to the extent of Applicant’s knowledge, follow: (1) The geographic area in which the applicant is using the mark in commerce: Prior to Applicant’s mark’s filing date, and continuing to- date, Applicant has been using Applicant’s mark in commerce in connection with insurance carrier services in the following states: Arkansas, Arizona, Colorado, Florida, Georgia, Illinois, Indiana, Kansas, Kentucky, Louisiana, Missouri, North Carolina, Nebraska, New Mexico, Ohio, Oklahoma, South Carolina, Texas, and Tennessee. (2) The applicant’s goods or services: Applicant’s services consist of the services covered by Applicant’s mark: “Insurance carrier services.” (3) The mode of use for which the applicant seeks registration: Applicant uses Applicant’s mark to promote its insurance carrier services on its web site, on promotional banners at national trade shows and exhibitions, and in promotional brochures. Concurrent Use No. 94002940 - 4 - (4) The concurrent users’ names and addresses: To the extent of Applicant’s knowledge, the concurrent user’s name is Revived Exteriors Inc. (“RE”), an Illinois corporation with an address at 925 E. Rand Road, Suite 207, Arlington Heights, Illinois 60004. (5) The registrations issued to or applications filed by such concurrent users: To the extent of Applicant’s knowledge, the only registration issued to RE is the cited mark, U.S. Registration No. 5540564 for the mark YOUR CALM AFTER THE STORM. To the extent of Applicant’s knowledge, RE has not filed any other trademark applications. (6) The geographic areas in which the concurrent user is using the mark in commerce: To the extent of Applicant’s knowledge, RE is making use of the cited mark in commerce only in the Chicago, Illinois area. (7) The concurrent user’s goods or services: To the extent of Applicant’s knowledge, RE’s services consist only of the services covered by the cited mark: “Roofing contracting; Roofing installation; Roofing services; Installation of doors and windows; Installing siding.” (8) The mode of use by the concurrent users: To the extent of Applicant’s knowledge, RE only uses the cited mark on its web site, immediately beneath its company name and the words “Serving Chicago, IL and surrounding areas.” (9) The time periods of such use by the concurrent users: To the extent of Applicant’s knowledge, RE has been using the cited mark in the Chicago, Illinois area since December 1, 2011-more than six years prior to filing an application for the cited mark with the USPTO. In addition, Applicant believes Applicant is the owner of Applicant’s mark; that Applicant’s mark is in use in commerce; that to the best of Applicant’s knowledge and belief, no other person except as specified in Applicant’s mark’s application has the right to use Applicant’s mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods or services of such other person, to cause confusion or mistake, or to deceive; that the specimens submitted by Applicant show Applicant’s mark as used on or in connection with the applied-for services; and that the facts set forth in Applicant’s mark’s application are true. 37 C.F.R. § 2.33(a), (f). Applicant has expended significant time, resources, and effort in developing and promoting Applicant’s mark since at least as early as 2012, consumers seeking insurance-related services have come to associate Applicant’s mark with Applicant, and Applicant’s mark has thus accumulated substantial Concurrent Use No. 94002940 - 5 - goodwill over the years. Accordingly, Applicant attributes tremendous value to Applicant’s mark and the rights it owns in Applicant’s mark, and thus respectfully requests that its application be amended to a concurrent use basis.4 The application was published for opposition and, on May 5, 2020, this concurrent use proceeding was instituted.5 Subsequently, on May 22, 2020, Revived Exteriors filed a Notice of Opposition seeking to oppose registration of ProStar’s mark. However, by Board Order dated July 2, 2020, the Opposition was not instituted inasmuch as Revived Exteriors is specified in ProStar’s application as the exception to ProStar’s exclusive right to use the mark. Revived Exteriors filed an Answer in the present concurrent use proceeding, contesting the restriction of its rights, alleging that the parties’ marks are similar, that the services are closely related, that the parties’ services have been or are intended to be sold or provided in the same channels of trade, and that, consequently, confusion is likely. 6 Revived Exteriors also alleged that it provides services throughout the entire state of Illinois (not just the Chicago area), and also in Indiana and Wisconsin,7 which overlaps with the territory set out in Applicant ProStar’s concurrent use application.8 Although Registrant itself did not submit any testimony 4 Feb. 7, 2020 Response to Office Action at TSDR 1. 5 1 TTABVUE. 6 Revived Exteriors Answer, paras. 14-16 (4 TTABVUE 4-5). 7 Id. at paras. 18-19 (4 TTABVUE 5). 8 1 TTABVUE. Concurrent Use No. 94002940 - 6 - or evidence to support its arguments regarding the geographical scope of use of its mark, Applicant submitted screen shots of Registrant’s website to show that Registrant’s use is limited to Chicago, Illinois and the surrounding area.9 Although the parties disagree about the exact geographical scope of Revived Exteriors’ use of its mark, the parties agree that Revived Exteriors is using its mark at least in Chicago, Illinois and the surrounding area.10 Although ProStar filed testimony and documentary evidence during its trial period, Registrant Revived Exteriors did not. Both parties filed a brief. II. THE RECORD The record consists of:  Applicant’s involved application and Registrant’s geographically unrestricted registration. Trademark Rule 2.122(b)(1), 37 C.F.R. §2.122(b)(1).  Registrant Revived Exteriors’ Answer.11  Applicant’s testimony declaration of Brandy Helms, President of Applicant, and attached exhibits: website screenshots of ProStar’s website (Exhibit 1), and website screenshots of Revived Exteriors’ website (Exhibit 2), each showing the geographical scope of use of respective party’s mark.12  Applicant’s notice of reliance evidence: 9 5 TTABVUE 82-84. 10 5 TTABVUE 82-84; 6 TTABVUE 5, 10-12; Registrant’s Answer, para. 18 (4 TTABVUE 5). 11 4 TTABVUE. The copy of Revived Exteriors’ certificate of registration and the TSDR status printout showing the registration’s current status, which were attached as exhibits A and B to Revived Exteriors’ Answer, are not considered evidence by virtue of their attachment to the pleading (Trademark Rule 2.122(c), 37 C.F.R. §2.122(c)); however, as mentioned above, the involved registration is automatically of record. 12 6 TTABVUE 6-12. Concurrent Use No. 94002940 - 7 - o TSDR printout for ProStar’s involved application and the application itself (Exhibit A);13 o TSDR printout for Revived Exteriors’ involved registration, together with a printout of the underlying application (Exhibit B);14 o TESS printouts of various registered marks, seeking to demonstrate that the PTO has allowed similar marks in the name of different entities to register for use with roofing-related services on the one hand and insurance-related services on the other hand (Exhibit C);15 o Screenshots of ProStar’s website showing a map indicating ProStar’s geographical scope of use of its mark (Exhibit D).16 o Screenshots of Revived Exteriors’ website showing that Revived Exteriors’ use of its mark is limited to Chicago, Illinois and surrounding areas (Exhibit E).17 III. THE PARTIES A. Applicant Brandy Helms, Applicant’s President, testified that she formed Applicant on October 15, 2012 in Texas18 and that Applicant began using its mark THE CALM 13 5 TTABVUE 7-19. ProStar’s submission of evidence of its involved application under a Notice of Reliance is unnecessary, as the involved application is automatically of record. Trademark Rule 2.122(b)(1), 37 C.F.R. §2.122(b)(1). 14 5 TTABVUE 20-28. ProStar’s submission of evidence of Revived Exteriors’ involved registration under a Notice of Reliance is unnecessary, as the involved registration is automatically of record. Trademark Rule 2.122(b)(1), 37 C.F.R. §2.122(b)(1). 15 5 TTABVUE 29-77. 16 5 TTABVUE 78-81. 17 5 TTABVUE 82-84. These documents constitute hearsay and are admissible for what they show on their face. However, Registrant Revived Exteriors did not object to this evidence but rather relied on these printouts in its brief in support of its position. Revived Exteriors’ brief, p. 8 (10 TTABVUE 9). 18 Declaration of Brandy Helms (“Helms Decl.”), para. 3 (6 TTABVUE 2). Concurrent Use No. 94002940 - 8 - AFTER YOUR STORM for “insurance carrier services” immediately upon formation.19 Ms. Helms further testified that Applicant has expanded its use of its mark in connection with the pertinent insurance carrier services to the following states: Arkansas, Arizona, Colorado, Florida, Georgia, Illinois, Indiana, Kansas, Kentucky, Louisiana, Missouri, North Carolina, Nebraska, New Mexico, Ohio, Oklahoma, South Carolina, Texas and Tennessee and that such use in each of these states has been continuous since at least as early as 2015.20 In support of her testimony, Ms. Helms attached screenshots of Applicant’s website showing its service locations. 21 Notably, the attached map shows that ProStar is currently offering its services throughout the state of Illinois, including the Chicago area.22 There is no evidence of record that ProStar’s adoption of its mark was not in good faith, or that ProStar had knowledge of Revived Exteriors’ use of its mark when ProStar adopted its mark. We also note that there is no evidence of record that there has been any actual confusion between the parties’ marks. 19 Id. 20 Id. 21 Exhibit 1 to Helms Decl. (6 TTABVUE 7). 22 Id. Concurrent Use No. 94002940 - 9 - B. Registrant Registrant is the owner of the registered mark YOUR CALM AFTER THE STORM for “Roofing contracting; Roofing installation; Roofing services; Installation of doors and windows; Installing siding” in International Class 37. 23 Registrant alleged that it first used its mark as early as December 1, 2011 with the services recited in its registration, and that such use has been continuous since that time.24 Applicant does not dispute this.25 As to the geographical scope of use of Registrant’s mark, Registrant asserted in its Answer that it “has and currently provides services throughout the entire States of Illinois, Indiana, [and] Wisconsin.”26 It also alleged that it is “in the process of and intends to expand its business to multiple other states throughout the United States, specifically all states identified by ProStar in its proposed territory of use.” 27 However, Registrant did not submit any evidence or testimony to support these allegations regarding its territory of use, and Applicant disputes them.28 Applicant acknowledges that Registrant is using its mark in the area comprising Chicago, Illinois29 but contends that Registrant only offers its services in Chicago, 23 Registrant’s Answer, paras. 4-5 (4 TTABVUE 3) 24 Id. at paras. 2, 4 (4 TTABVUE 2, 3). 25 8 TTABVUE. 26 Registrant’s Answer, para. 19 (4 TTABVUE 5) (emphasis in original). 27 Id. (4 TTABVUE 5) (emphasis in original). 28 8 TTABVUE 6-7. 29 1 TTABVUE 2. Concurrent Use No. 94002940 - 10 - Illinois and the surrounding area. 30 Regardless of the exact scope of use of Registrant’s mark, the parties agree that Registrant is using its mark at least in Chicago, Illinois and the surrounding area. IV. ANALYSIS As we stated in America’s Best Franchising Inc. v. Abbott, 106 USPQ2d 1540 (TTAB 2013), concurrent use proceedings are governed by the following proviso of Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d): [I]f the Director 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 the 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 chapter . . . . America’s Best Franchising, 106 USPQ2d at 1547 (citing 15 U.S.C. § 1052(d)) (emphasis added). ProStar is in the position of plaintiff in this concurrent use proceeding and thus bears the burden of proving it is entitled to a concurrent use registration by a preponderance of the evidence. Stawski v. Lawson, 129 USPQ2d 1036, 1036 (TTAB 30 5 TTABVUE 28, 82-84; Revived Exteriors’ Brief, p. 8 (10 TTABVUE 9); Feb. 7, 2020 Response to Office Action, p 4 (at TSDR 12)(“To the extent of Applicant’s knowledge, [Revived Exteriors] is making use of [its] Mark in commerce only in the Chicago, Illinois area.”) and Exhibit E (at TSDR 34). To the extent that Applicant admits under oath in its concurrent use application that Registrant is using its mark “in the area comprising Chicago, Illinois,” this statement constitutes an admission. See, Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *4 (TTAB 2019) (statements in application file declaration and brief, taken together, were considered admissions). Concurrent Use No. 94002940 - 11 - 2018); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1478 (TTAB 2014); Trademark Rules 2.99(e) and 2.116(b), 37 C.F.R. §§ 2.99(e) and 2.116(b). To satisfy the concurrent use provision under Section 2(d), ProStar must show that: (1) it made lawful use of its mark in commerce before Revived Exteriors filed its application; and (2) the concurrent use of ProStar’s mark and Revived Exteriors’ mark is not likely to cause confusion “under [the] conditions and limitations as to the mode or place of use of the marks” proposed in ProStar’s concurrent use application. See 15 U.S.C. § 1052(d); Hanscomb Consulting, Inc. v. Hanscomb Ltd., 2020 TTAB Lexis 11, at *11 (TTAB 2020). Turning first to the issue of likelihood of confusion, ProStar has not made of record any probative evidence to supports its claim that there is no likelihood of confusion between the parties’ marks, only attorney arguments. EnzoBiochem, Inc. v. Gen- Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005) (“Attorney argument is no substitute for evidence.”). That is, ProStar argues that the marks are dissimilar, that the parties’ services are unrelated, that the channels of trade are different, and that the parties target different consumers.31 Citations by ProStar to the record are to website screenshots that show each party’s services, but this evidence does not establish, for example, that the services are unrelated. Applicant did submit some third-party registrations in support of its position that the parties’ services are unrelated, 32 but Applicant characterizes the insurance 31 ProStar’s brief, pp. 9-12 (8 TTABVUE 10-13). 32 5 TTABVUE 29-77. Concurrent Use No. 94002940 - 12 - services offered under each of these registrations generally as “insurance services,” when in fact some of the registrations cover insurance services that are completely unrelated to those offered by Applicant, such as Reg. No. 4848739 for “claims administration services in the field of health and dental insurance; insurance administration; insurance claims administration,” 33 and Reg. No. 4494277 for “insurance services, namely, underwriting, insurance and administration of automobile insurance; insurance claims processing; insurance claims administration.”34 As is often stated, each case must stand on its own record and, in any event, the Board must make its decision in each case on its own merits. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to [Applicant’s] application, the PTO’s allowance of such prior registrations does not bind the Board. . . .”). As such, these third-party registrations are of little probative value. By converting its geographically unrestricted application to a concurrent use application and naming Revived Exteriors as an excepted user, and absent evidence to the contrary, ProStar has tacitly conceded that there is a likelihood of confusion between the parties’ marks absent some geographic restrictions. Indeed, ProStar’s verified statement indicates that Revived Exteriors is entitled to use its mark in Revived Exteriors’ territory. 35 Registrant Revived Exteriors, on the other hand, 33 5 TTABVUE 5. 34 5 TTABVUE 46. 35 Feb. 7, 2020 Response to Office Action at TSDR 1. Concurrent Use No. 94002940 - 13 - expressly acknowledges in its Answer that confusion between the parties’ marks is likely.36 Therefore, we review the record to determine if the parties could coexist with the geographical restrictions as proposed by ProStar. In a concurrent use registration, the “conditions and limitations as to the mode or place of” use almost always take the form of a geographic restriction, especially where the Board, rather than a court, approves registration based on evidence regarding the actual conditions and limitations. See Holmes Oil Co. v. Myers Cruizers of Mena, Inc., 101 USPQ2d 1148, 1149 (TTAB 2011). When assessing each party’s respective rights, the respective rights of the parties to registration are determined on the basis of the facts as they exist up to and until the close of the testimony period. Nark, Inc. v. Noah’s, Inc., 212 USPQ 934, 944 (TTAB 1981). Here, the first condition to issuance of a concurrent use registration, which is “primarily jurisdictional in nature,” see, e.g., Stawski, 129 USPQ2d at 1041, has been met. The evidence of record, which consists of the testimony of Ms. Helms, is uncontroverted, and we find, that Applicant adopted its mark in good faith, in its own geographic area of Texas, and without knowledge of Registrant’s use of its mark. Moreover, the record demonstrates that Applicant began using its mark for its services prior to the filing date of the application underlying Registrant’s geographically unrestricted registration. See Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987); Olé Taco Inc. v. Tacos Ole, Inc., 221 36 Revived Exteriors’ Answer, paras. 14-17 (4 TTABVUE 4-5). Concurrent Use No. 94002940 - 14 - USPQ 912, 915 (TTAB 1984) (where uncontroverted evidence established the concurrent use applicant’s use before the excepted registrant’s filing date, “[w]e have no reason to assume that this was other than an innocent use without notice of registrant’s use and activity under the [involved] mark[ ]”). Under circumstances such as those presented here, “it is settled law that each party has a right to use its mark in its own initial [geographic] area of use.” Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 204 USPQ 820, 829 (CCPA 1980). While the parties’ rights to use their respective marks in their initial areas of use are thus established, here, as in Wiener King, what remains “[i]n dispute … are the registrable rights to the remainder of the United States possessed by each party.” Wiener King, 204 USPQ at 829 (emphasis added). The central question in this case is whether both parties are using their marks in the same territory. Gray, 3 USPQ2d at 1309 (“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.”); CDS Inc. v. I.C.E.D. Mgmt. Inc., 80 USPQ2d 1572, 1580-81 (TTAB 2006). It is well established that where the trading territories of concurrent users overlap in actual use, that fact precludes the granting of concurrent use registrations. See Gray, 3 USPQ2d at 1308; In re The Place for Vision, Inc., 196 USPQ 267 (TTAB 1977). In Applicant’s concurrent use application, in the first numbered paragraph, Applicant identifies Illinois as part of the geographic territory in which Applicant is Concurrent Use No. 94002940 - 15 - currently using its mark in commerce.37 However, Applicant expressly excludes “the area comprising Chicago, Illinois” from its trading area for purposes of the concurrent use application.38 While Applicant is willing to expressly exclude the city of Chicago, the evidence of record shows that Applicant is already offering its services in Chicago. For example, Ms. Helms, Applicant’s President, testified that Applicant is using its mark in Illinois and that the mark has been continuously used there since 2015.39 Additionally, Applicant made of record website screenshots, which include a map; on the map, a pin drop indicates Applicant’s services are offered in Chicago.40 Applicant also made of record another map showing the locations where its services are offered; this second map is color-coded and shows that Applicant offers its services throughout the entire state of Illinois, including the city of Chicago and the surrounding area.41 Concurrent use proceedings are proper, and necessary, in cases where the proposed conditions and limitations are as to the “place of use” of the marks. “Indeed, review of the legislative history of the concurrent use proviso reveals that the primary, if not the sole, purpose of concurrent use proceedings is to allow for issuance of a geographically restricted registration in situations where registration would otherwise be barred under the main clause of Section 2(d).” The Tamarkin Co. v. 37 5 TTABVUE 7, part (1). 38 1 TTABVUE 2. 39 Helms Decl., para. 3 (6 TTABVUE 2). 40 Exhibit A to Applicant’s Notice of Reliance (5 TTABVUE 19). 41 Exhibit D to Applicant’s Notice of Reliance (5 TTABVUE 79). Concurrent Use No. 94002940 - 16 - Seaway Food Town Inc., 34 USPQ2d 1587 n.9 (TTAB 1995). That is, concurrent use proceedings are for territorial cases and are not proper, for example, for two parties using a similar mark in the same territory but on different services. The present case is very similar to Gray. In Gray, Daffy Dan’s Bargaintown (DDB) filed an application on October 14, 1980 seeking an unrestricted registration of the service mark DAFFY DAN’S for retail clothing store services, claiming use of its mark since 1961. Gray, 3 USPQ2d at 1306. Gray opposed DDB’s application, asserting “concurrent rights” in the mark for the same services, and filed its own application on June 28, 1982 seeking a registration for an identical mark for the same and closely related services for all of the United States, except New Jersey, in which Gray acknowledged DDB’s prior rights. Id. The opposition was suspended pending examination of Gray’s application and, thereafter, the concurrent use proceeding was instituted. Id. During discovery, Gray admitted that he was using his mark in connection with related services in New Jersey. Id. Based on Gray’s admission of overlapping geographical use of the marks, DDB moved for summary judgment, asserting that Gray could not establish entitlement to a concurrent use registration inasmuch as the respective uses of the parties’ marks were likely to cause confusion. Id. 1306-07. The Board agreed and granted summary judgment. Id. at 1307. On appeal, the issue was whether the Board erred in refusing to grant a concurrent use registration where the junior party admitted to use of his mark in the senior party’s trading area. Id. The Court of Appeals for the Federal Circuit affirmed Concurrent Use No. 94002940 - 17 - the Board’s decision, stating, “We agree with the board that, because of Gray's admission of conflicting use of the mark DAFFY DAN'S in the acknowledged trading area of DDB, no genuine issue of material fact is present which precludes the grant of summary judgment and that DDB is entitled to a final judgment as a matter of law in this proceeding.” Id. (emphasis added). On appeal, Gray argued that “the issue of likelihood of confusion in a concurrent use proceeding is to be determined with respect to the geographic area which the concurrent use applicant ‘claims’ in its application for registration and not on the basis of actual territorial use of the respective marks.” Id. at 1307. The Gray court disagreed. Id. at 1310. The area of actual use by Gray was greater than the area of use specified in his application. Id. at 1308. The Gray Court held: “Where the trading territories of the concurrent users overlap in actual use, the board has uniformly been of the opinion that that fact precludes the granting of concurrent use registrations.” Id. (citing In re Place for Vision, Inc., 196 USPQ 267, 269-70 (TTAB 1977); Tex. Meat Packers, Inc. v. Rueckert Meat Co., 143 USPQ 325, 329 (TTAB 1964); Cent. W. Oil Corp. v. Cont’l Oil Co., 135 USPQ 469, 472 (TTAB 1962)); Turdin, 109 USPQ2d at 1478 (“It is well established that where the trading territories of concurrent users overlap in actual use, that fact precludes the granting of concurrent use registrations.”). Continuing, the Gray Court wrote: 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 Concurrent Use No. 94002940 - 18 - 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 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. Id. at 1309 (emphasis added). As in the Gray case, we find that the evidence of record shows that Applicant ProStar is using its mark in the Chicago, Illinois and surrounding area. Having found that Applicant is currently using its mark in Chicago, Illinois and the surrounding area, which overlaps with Registrant’s geographic area of use of its mark, Applicant is therefore not entitled to the concurrent use registration it seeks and Applicant’s claim to exclude the Chicago, Illinois and the surrounding area is insufficient to render it so entitled. V. CONCLUSION Applicant ProStar has not carried its burden of proof and shown that it is entitled to a concurrent registration. ProStar has not established that there is no likelihood of confusion between the marks. Further, ProStar seeks a concurrent use registration that includes all of the state of Illinois. However, Revived Exteriors is already offering services in the same geographic territory. Because there is no evidence that confusion Concurrent Use No. 94002940 - 19 - between the parties’ marks is unlikely and because there is evidence that the parties’ territories overlap, ProStar’s concurrent use application must fail. VI. DECISION The concurrent use registration to Applicant is refused, and the concurrent use proceeding is dissolved.