`
`
`
`Butler
`
`
`
`
`
`
`
`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
`General Email: TTABInfo@uspto.gov
`
`August 14, 2023
`
`Concurrent Use No. 94003140
`
`Sparks Law, LLC (RI)
`(Application Serial No. 87709845)
`
`v.
`
`Sparks Law, LLC (GA)
`(Registration No. 5668170)
`(Application Serial No. 90188648)
`
`
`
`By the Trademark Trial and Appeal Board:
`
`Sparks Law, LLC of Rhode Island (Sparks RI) filed an application seeking
`
`concurrent use registration of the standard character mark SPARKS LAW for “Legal
`
`services” in Class 45.1 Sparks RI recited its territory of use as “the entire United
`
`States and its territories except the entire state of Georgia.”
`
`Sparks RI named Sparks Law, LLC of Georgia (Sparks GA), and its registration,
`
`as the sole exception to its exclusive right to use its mark. Sparks GA owns a
`
`geographically unrestricted registration for the mark
`
`
`
`
`1 Application Serial No. 87709845 was filed on December 6, 2017 claiming a date of first use
`anywhere and in commerce of September 1, 2012.
`
`
`
`
`
`Concurrent Use No. 94003140
`
`
`for “Legal services” in Class 45.2 Sparks GA also filed a concurrent use application
`
`for the standard character mark SPARKS LAW for “Legal services” in Class 45. 3
`
`Sparks GA recites its territory of use as “the entire United States and its territories
`
`except the entire state of Rhode Island and the entire state of Massachusetts .”
`
`This case now comes up for consideration of the parties’ executed Amendment to
`
`Trademark Settlement and Concurrent Use Agreement (Amended Agreement), filed
`
`June 6, 2023, by Sparks RI.
`
`Background
`
`In the May 8, 2023 order instituting this concurrent use proceeding, the Board
`
`considered the parties original agreement submitted in resolution of their dispute.
`
`The Board was not persuaded that, based on the terms of the original agreement, no
`
`likelihood of confusion would arise from the parties use of identical marks for similar
`
`services in their respective territories. In addition, the Board found that
`
`inconsistencies existed as to the recited territories of use in each party’s application
`
`as compared to the territories as identified in the original agreement. The Board also
`
`required additional provisions to cooperate and avoid confusion, as well as ad ditional
`
`information about lack of actual confusion.
`
`
`2 Registration No. 5668170 issued on February 5, 2019 claiming a date of first use anywhere
`and in commerce of March 29, 2016.
`
` 3
`
` Application Serial No. 90188648 was filed on September 17, 2020 claiming a date of first
`use anywhere and in commerce of November 5, 2015.
`
`
`
`2
`
`
`
`Concurrent Use No. 94003140
`
`
`Amended Agreement
`
`By way of the Amended Agreement, the parties address the delineation of their
`
`territory, set out the length of time of contemporaneous use without awareness of
`
`actual confusion, and provide additional actions they will undertake to reduce or
`
`eliminate actual and likelihood of confusion.
`
`1. Provisions addressing concurrent use by the parties
`
`In the Amended Agreement, the parties indicate they have been using their
`
`respective marks contemporaneously since Sparks GA commenced use in at least
`
`November 2015 with no known instances of actual confusion. 3 TTABVUE 3, ¶2. The
`
`parties express their belief that, in view of the differences in the legal services,
`
`channels of trade and geographic limitations, confusion is unlikely. Id., ¶3. Each
`
`party agrees not to advertise in the territory of the other party; that they shall
`
`indicate on their websites they are not affiliated with the other party; and they will
`
`take steps to ensure their respective advertising and marketing is distinguishable.
`
`Id., ¶¶4 and 5. The Amended Agreement also provides that, should either party
`
`become aware of an instance of actual confusion or be contacted about an inquiry of
`
`the other, it will direct the inquiry to the other; and the parties will further cooperate
`
`to take reasonable steps to prevent further instances of misdirected inquiry or
`
`confusion. Id. at 4, ¶6.
`
`The provisions of the Amended Agreement are of the type that support concurrent
`
`use registration to each party. However, as discussed below, there is an overlap in
`
`the parties’ recited territories and an unaddressed geographical area. In addition, it
`
`
`
`3
`
`
`
`Concurrent Use No. 94003140
`
`
`is unclear from the provisions of the Amended Agreement whether each party is
`
`seeking to amend its recitation of legal services to identify the specialty of the legal
`
`services in order to further distinguish each party’s use of its mark from that of the
`
`other party.
`
`2. The parties’ territories need clarification; legal specialties addressed
`
`The Amended Agreement recites the parties’ respective territories and further
`
`explains each party’s legal specialty.
`
`Sparks RI is using its mark limited to personal injury law in the states of New
`
`York, Washington, Connecticut, Main, Massachusetts, New Hampshire, Rhode
`
`Island, and Vermont. 3 TTABVUE 3, ¶1(a)
`
`Sparks GA is using its mark limited to business transactional and intellectual
`
`property law in the states of Georgia, Florida, Tennessee, North Carolina, South
`
`Carolina, Texas, New York, and California. Id., ¶1(b).
`
`Each party’s proposed amended territory is limiting in nature, and by the
`
`provisions of the Amended Agreement, each party consents to the amended territory
`
`of the other party. 37 C.F.R. 2.133(a) and (c). To be clear, the proposed amended
`
`territories do not represent an expansion of the territories as recited in each party’s
`
`pending application. However, each party claims the State of New York with limited
`
`explanation as to how confusion would not be likely in this overlapping territory given
`
`the identical marks and same services as recited in the applications and registration.
`
`Aside from the territory claimed by each party, no provision is made for the remainder
`
`of the United States. For example, do the parties consider the geographic area
`
`
`
`4
`
`
`
`Concurrent Use No. 94003140
`
`
`consisting of the remainder of the United States to be a buffer zone where neither
`
`party may expand? Have the parties contemplated a third party seeking a
`
`registration in which it claims such territory in the future?
`
`In view of these outstanding matters, approval of the parties’ proposed
`
`amendments to their territories of use is deferred.
`
`Each party also states their legal specialty. However, it is unclear that the parties
`
`are seeking to amend the recitation in their applications and registration to
`
`emphasize the differences in the legal services in order to further distinguish their
`
`services for purposes of concurrent use registration. E.g., “Legal services in the field
`
`of personal injury law” for Sparks RI and “Legal services in the field of business
`
`transactional and intellectual property law” for Sparks GA.
`
`Next steps
`
`1. Statement of territories
`
`The parties are allowed until THIRTY DAYS from the mailing date of this order
`
`in which to inform the Board if both parties are claiming the State of New York as
`
`part of their areas of use.
`
`If not, the parties are to inform the Board which party is retaining New York and
`
`which is deleting New York. In this case, there is no need to amend again the
`
`settlement agreement.
`
`If so, the parties are to provide additional steps they plan to put in place to avoid
`
`a likelihood of confusion over this contemporaneous use of the same marks in the
`
`
`
`5
`
`
`
`Concurrent Use No. 94003140
`
`
`same territory for the same services. In this case, the parties may need to amend
`
`again the settlement agreement.
`
`The parties are to inform the Board of their intention for the remainder of the
`
`United States.4 If they seek to amend their respective areas of use with respect to the
`
`remainder of the United States (that is, divide between them additional states and
`
`territory), they may file a consented motion and need not amend the provisions of
`
`their Amended Agreement unless they believe it is in their best interests to do so.
`
`2. The parties’ recitation of services
`
`If the parties intended to amend their recitation of services as discussed above,
`
`and touched upon in the Amended Agreement, they are allowed until THIRTY DAYS
`
`from the mailing date of this order in which to do so. Otherwise, the recitation of
`
`services for each party will remain “legal services.” It may be in the parties’ best
`
`interests to further distinguish their contemporaneous use of the identical marks for
`
`the now currently identified and identical “legal services.”
`
`The recitations for each party’s application may be amended by filing a consented
`
`motion.
`
`The recitation of Sparks GA’s registration may be amended by filing a consented
`
`motion with the Board. Sparks GA is referred to TBMP § 514.01 to review the other
`
`requirements for amending a registration, e.g., a fee, a verification and signature.
`
`
`4 Currently, Sparks RI’s identified area of use is “the entire United States and its territories
`except the entire state of Georgia” while Sparks GA’s identified area of use is “the entire
`United States and its territories except the entire state of Rhode Island and the entire state
`of Massachusetts.” Thus each party may amend their recitation of its territory to be broader
`than the proposed, not-yet-approved amendments.
`
`
`
`6
`
`
`
`Concurrent Use No. 94003140
`
`
`Proceedings remain suspended
`
`Proceedings remain suspended pending resolution of these matters.
`
`
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
