| Concurrent Use Statement | 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. (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 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. |
