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`United States Patent and Trademark Office
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
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`Mailed: May 8, 2023
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`Cancellation No. 92072806
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`Sparks Law, LLC
`(Application Serial No. 87709845)
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`v.
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`Sparks Law, LLC
`(Registration No. 5668170 & Application
`Serial No. 90188648)
`
`
`
`Concurrent Use No. 94003140
`
`Sparks Law, LLC
`(Application Serial No. 87709845)
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`
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`Sparks Law, LLC
`(Registration No. 5668170 & Application
`Serial No. 90188648)
`
`v.
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`
`
`By the Trademark Trial and Appeal Board:
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`Sparks Law, LLC, a Georgia limited liability company (“Sparks GA”) owns
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`Registration No. 5668170 for the mark SPARKS LAW and design, shown below, for
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`“legal services” in International Class 45.1
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`1 The underlying application was filed on June 22, 2017, pursuant to Trademark Act Section 1(a), 15
`U.S.C. § 1056(a), with a claimed first use and first use in commerce date of March 29, 2016. “LAW” is
`disclaimed.
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`
`
`

`

`Cancellation No. 92072806 and Concurrent Use No. 94003140
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`
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`Sparks Law, LLC, a Rhode Island limited liability company (“Sparks RI”),
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`petitioner in the cancellation proceeding, sought to cancel Sparks GA’s registration
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`on the grounds of likelihood of confusion. See 1 TTABVUE.2 Sparks RI claims
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`ownership of application Serial No. 87709845 for the standard character mark
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`SPARKS LAW for “legal services” in International Class 45.3 Id. at 3.
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`During the pendency of these proceedings, Sparks GA filed its application Serial
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`No. 90188648 for the standard character mark SPARKS LAW for “legal services” in
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`International Class 45.4
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`On June 29, 2021, Sparks RI amended its application Serial No. 87709845 to
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`include a concurrent use claim, which names Sparks GA as the exception to Sparks
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`RI’s exclusive right to use its mark and recites its territory of use as the entire United
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`States and its territories except the entire state of Georgia. Serial No. 87709845,
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`Preliminary Amendment, June 29, 2021, at TSDR 1.5 Similarly, Sparks GA included
`
`
`2 Citations to the cancellation record refer to TTABVUE, the Board’s online docketing system. See
`Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the number
`preceding “TTABVUE” corresponds to the docket entry number, and any number(s) following
`“TTABVUE” refer to the page number(s) of the docket entry where the cited materials appear. The
`parties’ submissions, including trial briefs, motions, responses, and replies, should utilize citations to
`the TTABVUE record created throughout the proceeding and during trial to facilitate the Board’s
`review of the evidence throughout the proceeding and at final hearing. See TRADEMARK TRIAL AND
`APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 801.03 (2022).
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`3 Filed December 6, 2017, pursuant to Trademark Act Section 1(a), 15 U.S.C. § 1056(a), claiming a
`first use and first use in commerce date of September 1, 2012. “LAW” is disclaimed.
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`4 Filed September 17, 2020, pursuant to Trademark Act Section 1(a), 15 U.S.C. § 1056(a), claiming a
`first use and first use in commerce date of November 5, 2015. “LAW” is disclaimed.
`5 Citations to the examination record refer to the USPTO’s online Trademark Status and Document
`Retrieval system (TSDR), by page number.
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`- 2 -
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`

`

`Cancellation No. 92072806 and Concurrent Use No. 94003140
`
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`in its application Serial No. 90188648 a concurrent use claim, which names Sparks
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`RI as the exception to Sparks GA’s exclusive right to use its mark and recites its
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`territory of use as the entire United States and its territories except the entire state
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`of Rhode Island and the entire state of Massachusetts. Serial No. 90188648, TEAS
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`Plus New Application, September 17, 2020, at TSDR 1.
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`According to United States Patent & Trademark Office (USPTO) records, Sparks
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`RI’s application was published on August 24, 2021, and no oppositions were filed. See
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`Serial No. 87709845, OG Publication Confirmation, August 24, 2021, at TSDR 1. And
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`according to USPTO records, Sparks GA’s application was published on October 12,
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`2021, and no oppositions were filed. See Serial No. 90188648, OG Publication
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`Confirmation, October 12, 2021, at TSDR 1.
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`Sparks RI filed the parties’ trademark settlement and concurrent use agreement
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`(“Agreement”) and its motion to dismiss the cancellation proceeding in favor of a
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`concurrent use proceeding on January 27, 2023. See 27 TTABVUE.
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`Accordingly, the issue of concurrent use registration is now considered properly
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`before the Board. See TBMP § 1113.02. This proceeding now comes before the Board
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`for consideration of the Agreement and Sparks RI’s motion to dismiss the cancellation
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`proceeding in favor of a concurrent use proceeding.
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`I.
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`Cancellation Proceeding Terminated in Favor of Institution of a
`Concurrent Use Proceeding
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`A cancellation proceeding may be terminated in favor of a concurrent use
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`proceeding when one party has a concurrent use application reciting the adverse
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`party in the cancellation proceeding as an exception to its claim of exclusive use, the
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`- 3 -
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`

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`Cancellation No. 92072806 and Concurrent Use No. 94003140
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`application is published for opposition, and no opposition is filed or the filed
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`oppositions are all dismissed or withdrawn. See TBMP § 1113.02. In this case, Sparks
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`RI’s Serial No. 87709845 published on August 24, 2021, with no successful opposition
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`and with the following concurrent use statement:
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`Applicant is using and claims the right to exclusive use of the mark for
`the applied-for services in the entire United States and its territories
`except the entire state of Georgia. To the best of Applicant's knowledge
`and belief, no other person except as specified below has the right to use
`the mark in commerce. Applicant seeks registration of the mark fo r any
`mode of use subject to a concurrent use proceeding with Sparks Law,
`LLC, a Georgia limited liability company, with an address of 11877
`Douglas Road, Suite 102-210 Alpharetta GEORGIA 30005, the owner of
`Registration No. 5668170 the mark Sparks Law & design for “legal
`services”. Applicant believes Sparks Law, LLC has used the mark
`Sparks Law & design for the foregoing services since March 29, 2016, in
`the state of Georgia and that the mark is used by applying it to signage
`and advertisements associated with the foregoing services.
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`Additionally, Sparks GA’s Serial No. 90188648 published on October 12, 2021, with
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`no successful opposition and with the following concurrent use statement:
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`Applicant is using and claims the right to exclusive use of the mark for
`the applied-for services in the entire United States and its territories
`except the entire state of Rhode Island and the entire state of
`Massachusetts. To the best of Applicant's knowledge and belief, no other
`person except as specified below has the right to use the mark in
`commerce. Applicant seeks registration of the mark for any mode of use
`subject to a concurrent use proceeding with Sparks Law, LLC, a Rhode
`Island limited liability company, with an address of 285 Main St.
`Woonsocket RHODE ISLAND 0289, the owner of Serial No. 87709845
`for the mark Sparks Law for “legal services”. Applicant believes Sparks
`Law, LLC has used the mark Sparks Law for the foregoing services since
`September 1, 2012, in Rhode Island and Massachusetts, and that the
`mark is used by applying it to signage and advertisements associated
`with the foregoing services.
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`In accordance with the agreement between the parties, Cancellation No. 92072806
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`is dismissed with prejudice in favor of a concurrent use proceeding, which is hereby
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`- 4 -
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`

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`Cancellation No. 92072806 and Concurrent Use No. 94003140
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`instituted under the provisions of Section 2(d) of the Trademark Act, 15 U.S.C.
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`§ 1052(d).6 Sparks RI, as a concurrent use applicant, will remain the plaintiff in the
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`concurrent use proceeding. Sparks GA, as registrant and also a concurrent use
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`applicant, will remain the defendant in the concurrent use proceeding. See 37 CFR
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`§ 2.116(b); TBMP § 1108. Ordinarily, when a concurrent use proceeding is instituted,
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`separate notice thereof is sent to each party specified as a concurrent use exception
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`in the application. Such institution order sets disclosure, discovery and trial dates,
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`and each excepted user is allowed time to answer the concurrent use allegations,
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`though no answer is required of a registrant whose registration is involved in the
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`proceeding. See 37 CFR § 2.99(d)(2); TBMP § 1107. In this case, however, the parties’
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`executed agreement is of record.
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`II.
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`The Parties’ Settlement and Concurrent Use Agreement
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`The burden of proof in a concurrent use proceeding is on the parties seeking
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`concurrent use registrations to establish facts showing that there is no likelihood of
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`confusion arising from their concurrent use of similar marks in their respective
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`geographic areas. See In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431 (CCPA
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`1970); Handy Spot Inc. v. J.D. Williams Co., 181 USPQ 351 (TTAB 1974). Parties
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`often settle concurrent use proceedings based on an agreement that allows for the
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`concurrent use applicant to receive the sought-after concurrent use registration. See
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`TBMP § 1110. However, mere acknowledgement or consent to concurrent use
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`6 In view of the dismissal of the cancellation proceeding with prejudice, no further submissions
`should be filed in Cancellation No. 92072806. All subsequent submissions should use only the
`concurrent use portion of the case title listed at the top of this order, and should be filed in the
`concurrent use proceeding.
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`- 5 -
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`Cancellation No. 92072806 and Concurrent Use No. 94003140
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`registrations, which does not delineate measures to be taken to avoid likelihood of
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`confusion, is insufficient to establish that there is no likelihood of confusion arising
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`from the parties’ concurrent use of similar marks in their respective geographic areas.
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`A concurrent use agreement between the parties must include a recitation of facts
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`and conditions sufficient to persuade the Board that the concurrent use of the same
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`or highly similar marks by the parties for the same or highly similar goods in their
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`respective geographic areas is not likely to cause confusion. Id. Some of the
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`considerations that may be contemplated in such agreements are: (1) agreement by
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`each party not to use or advertise in the geographic area of the othe r party; (2)
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`agreement that the parties will take whatever steps are necessary to prevent actual
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`confusion; (3) establishment of a “buffer zone” between the geographic areas of the
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`parties, if appropriate; (4) recitation of any specific differences between the respective
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`marks and goods of the parties; (5) information concerning any particular aspects of
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`the goods or channels of trade which may help to preclude likelihood of confusion; (6)
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`agreement by the parties to use distinctly different signage or othe r marks in
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`association with the subject mark; and (7) information as to the length and extent of
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`concurrent use, and whether, in the experience of the parties, such concurrent use
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`has resulted in any actual confusion. Id. Parties also often address use of social media
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`in advertising. These considerations are not all inclusive, and the parties may include
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`any other relevant considerations to demonstrate that no likelihood of confusion will
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`arise from their concurrent use of similar marks in their respective geographic areas.
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`Id.
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`- 6 -
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`

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`Cancellation No. 92072806 and Concurrent Use No. 94003140
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`Here, the parties’ Agreement, as it currently reads, fails to persuade the Board
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`that there is no likelihood of confusion arising from the parties’ concurrent use of
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`identical marks for similar services in their proposed geographic areas. The
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`Agreement indicates that there have been no instances of actual confusion and
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`provides that the parties agree not use their respective marks “in the specified trade
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`territory for the specified area(s) of law reserved to the other” and “will take such
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`action as may be reasonably required to minimize, and, where practicable, to avoid
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`the likelihood of confusion between their respective marks and shall inform one
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`another of any instances of actual confusion that come to their attention.” 27
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`TTABVUE 3.
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`a. Inconsistent Geographic Restrictions Require Clarification
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`First, with respect to the geographic restrictions, there are inconsistencies
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`between the Agreement and the parties’ concurrent use claims in their respective
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`applications. In the Agreement, the parties state:
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`1. [Sparks GA] will consent not to use its SPARKS LAW marks for legal
`services in the area of personal injury law in the states of New York,
`Washington, Connecticut, Maine, Massachusetts, New Hampshire,
`Rhode Island, and Vermont.
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`2. [Sparks RI] will consent not to use its SPARKS LAW mark for Legal
`Services in the areas of business transactional and intellectual property
`law in the states of Georgia, Florida, Tennessee, North Carolina, South
`Carolina, Texas, New York, and California.
`
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`Id. In their respective applications, Sparks RI states “Applicant is using and claims
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`the right to exclusive use of the mark for the applied-for services in the entire United
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`States and its territories except the entire state of Georgia” and Sparks GA states
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`- 7 -
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`

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`Cancellation No. 92072806 and Concurrent Use No. 94003140
`
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`“Applicant is using and claims the right to exclusive use of the mark for the applied-
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`for services in the entire United States and its territories except the entire state of
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`Rhode Island and the entire state of Massachusetts.” These inconsistencies between
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`the Agreement and the parties’ respective applications need to be clarified before final
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`determination can be made on the parties’ request for concurrent use registrations.
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`The parties may adopt the statements in the Agreement, which further narrow the
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`use of the parties’ respective marks.
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`b. Additional Provisions to Cooperate and Avoid Confusion Required
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`The marks in this case contain the identical wording, SPARKS LAW, and the
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`services are identical in that they are listed as “legal services” in the respective
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`applications for registration and Sparks GA’s registration. Accordingly, the parties
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`must provide additional agreements to ensure that the use of these identical marks
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`on identical services is not likely to cause confusion. In particular, while the parties
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`have agreed to restrict the scope of their respective services in particular geographic
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`areas, the services remain unrestricted in all states and territories of the United
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`States other than in the fifteen states of New York, Washington, Connecticut, Maine,
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`Massachusetts, New Hampshire, Rhode Island, Vermont, Georgia, Florida,
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`Tennessee, North Carolina, South Carolina, Texas, and California. The parties have
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`not sufficiently explained how the use of identical marks for identical services in the
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`remaining states and territories of the United States will not be likely to cause
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`confusion or what steps the parties will take to avoid and/or rectify such confusion.
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`See TBMP § 1110.
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`- 8 -
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`Cancellation No. 92072806 and Concurrent Use No. 94003140
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`c. Additional Information About Lack of Actual Confusion Required
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`While the parties have indicated that there has been a period of concurrent use
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`without instances of actual confusion, the parties have failed to provide information
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`as to the length and extent of concurrent use. See TBMP § 1110.
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`III. Proceedings Suspended
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`In view of the foregoing, the parties are allowed until thirty (30) days from the
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`date of this order to submit an appropriate concurrent use agreement or otherwise
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`inform the Board how they wish to proceed.
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`Proceedings are otherwise suspended. In the event the Board receives no
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`communication from either party, the concurrent use proceeding will be resumed and
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`appropriate dates reset.
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`- 9 -
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