| Concurrent Use Statement | Applicant has in the past and currently markets its ISLAND CHOCOLATES products outside the Continental United States and specifically in the geographical area including Hawaii, Guam and Japan, since as early as June 29, 1994. On April 22, 2005 Island Desserts, LLC, a Rhode Island Limited Liability Corporation, with a principal place of business at 24 Walpole Park South, Walpole, MA 02801, (hereinafter referred to as "Island Desserts"), without knowledge of Hawaiian Sun or its products, filed application Serial No. 78/614,869 to register ISLAND CHOCOLATES for use on certain baked goods and confectionary, alleging use since February 15, 2005, which application was published for opposition on February 15, 2006. On March 8, 2006, Applicant opposed registration to Island Desserts of the ISLAND CHOCOLATES mark, alleging use of that name in connection with chocolate candy since as early as June 29, 1994. On August 28th, 2006, Applicant and Island Desserts entered into a Restricted Use and Consent Agreement ("Agreement", attached to the instant Application) under which each party consented to allow one another to market and sell its ISLAND CHOCOLATES goods in specific geographical areas. Specifally, the parties agreed that Island Desserts has a superior right to use ISLAND CHOCOLATES as a trademark for food products including baked goods and confectionary in the Continental United States; that Island Desserts may market and sell food products under the ISLAND CHOCOLATES name in the geographical area comprising North and South America and all countries, territories, mandates, protectorates and possessions in and boardering the Atlantic Ocean (hereinafter referred to as "Atlantic Area Countries"), and Hawaiian Sun shall refrain from marketing and selling food products in the Atlantic Area Countries; that Hawaiian Sun has a superior right to use ISLAND CHOCOLATES as a trademark for food products including nuts and candies in the area of Hawaii, Guam and Japan; and that Hawaiian Sun may market and sell food products including nuts and candies under the ISLAND CHOCOLATES name in the geographical area west of the Atlantic Area Countries comprising Hawaii and all countries, territories, mandates, protectorates and possessions in and boardering the Pacific Ocean and Indian Ocean (hereinafter referred to as "Pacific Area Countries"), and Island Desserts shall refrain from marketing and selling food products in Pacific Area Countries. Additionally, each party agreed that they would each consent to the filing of a concurrent use application for trademark registration under the principle register. |
