Concurrent Use Office Action: What Works and What Doesn't

What This Refusal Means

The examiner has found a likelihood of confusion under Section 2(d), but the underlying facts involve marks that have been or are currently used concurrently in the marketplace. Under TMEP 1207.04, concurrent use situations raise distinct questions: if two marks have coexisted without evidence of actual confusion, that fact can weigh against a finding of likelihood of confusion under DuPont Factor 8. However, the examiner may still refuse registration if the goods, services, or trade channels overlap enough that confusion is probable despite prior coexistence.

This is a smaller dataset (over 50 cases), but the strategies differ meaningfully from standard Section 2(d) cases.

Your Options at a Glance

Strategy	Type	Usage	When It Works	When It Doesn't
Goods amendment	Comply	24%	Broad ID can be narrowed to reflect actual use	Goods are already narrow
Commercial impression	Argue	15%	Composite marks create distinct impressions despite shared element	Marks are identical or near-identical
Goods coexistence	Argue	11%	Goods serve different markets despite shared mark	Goods directly compete
Mark distinction	Argue	9%	Structural or visual differences differentiate	Marks are textually identical
Cited mark abandoned	Argue	5%	Cited mark is no longer in use	Cited mark is actively used
Third-party registrations	Argue	5%	Similar marks coexist for related goods	Few comparable examples
Weakness of cited mark	Argue	5%	Cited mark is descriptive or widely used	Cited mark is distinctive
Consent agreement	Comply	4%	Owner agrees to formal coexistence	Owner is unresponsive
Disclaimer	Comply	4%	Disclaim a descriptive or generic element	Nothing remains after disclaimer

Top Argue Strategies

Commercial Impression

Use when: The marks share a common element but your composite mark creates a distinct overall impression. In concurrent use situations, the fact that both marks already exist in the marketplace strengthens this argument -- if consumers have encountered both without confusion, the distinct impressions are working.

Strengthens your case:

• Evidence of actual concurrent use without confusion (DuPont Factor 8)
• Your mark includes additional elements that change the overall impression
• Duration of concurrent use is substantial (years, not months)
• No evidence of actual confusion in the marketplace
• Both marks have established independent brand recognition in their respective markets

Weakens your case:

• Concurrent use is recent or limited in scope
• There IS evidence of actual confusion (customer complaints, misdirected orders)
• Goods have recently expanded into overlapping channels
• The marks are used in the same online advertising channels, increasing consumer exposure to both

Example: MARKETING SECRETS (SN 88815599) -- Demonstrated that the mark's commercial impression was distinct from the cited mark despite concurrent marketplace presence. The response included evidence of the duration and scope of concurrent use to reinforce the commercial impression argument. Registered in 294 days.

Example: ESTEAM HEALTH (SN 90271164) -- Argued a distinct commercial impression supported by evidence of marketplace coexistence. The applicant documented years of side-by-side use with no reported instances of confusion. Registered in 305 days.

Goods Coexistence

Use when: The concurrent use has involved different goods or markets, and you can demonstrate that the coexistence has been confusion-free. This combines DuPont Factor 2 (goods relatedness) with Factor 8 (concurrent use without confusion).

Strengthens your case:

• Documented history of both marks in the marketplace without consumer confusion
• Goods serve distinct customer segments
• Geographic separation of primary customer bases
• Different pricing tiers or purchase contexts

Weakens your case:

• Goods are expanding into each other's markets
• Concurrent use has been in different geographies, but you're now going national
• Evidence of any actual confusion

Example: TIFFANY T (SN 99080745) -- Established goods coexistence based on distinct market segments. The response mapped each party's distribution channels to show no meaningful overlap during the coexistence period. Registered in 133 days.

Example: GREENS AND GRAINS PLANT BASED FOOD FOR EVERYONE (SN 97765239) -- Demonstrated that goods coexisted in the marketplace without confusion. The applicant provided sales data and customer demographics showing the products reached different consumer populations. Registered in 158 days.

Cited Mark Abandoned

Use when: The concurrent use situation has resolved itself because the cited mark owner has stopped using the mark. Check the cited registration's maintenance filings and marketplace presence -- if the mark is no longer active, this is the cleanest path to registration.

Strengthens your case:

• Cited registration missed Section 8/9 maintenance deadlines
• No evidence of the cited mark in current commerce
• Cited mark owner's business has closed or pivoted away from the goods

Weakens your case:

• Cited mark is still actively used, just in a different channel
• Maintenance filings are current even if marketplace presence is reduced

Example: YOUTHBIZ (SN 99183379) -- Showed that the cited mark was abandoned. Registered in 159 days.

Example: MONKEY KNIFE FIGHT (SN 99271950) -- Demonstrated that the blocking mark was no longer in use. Registered in 88 days.

Top Comply Strategies

Goods Amendment

Use when: Your identification is broader than your actual use, and narrowing it would more accurately reflect the concurrent use that has occurred without confusion.

How to execute: Align your identification with the goods as actually used in commerce alongside the cited mark. If the concurrent use has been confusion-free for specific goods, narrowing your identification to those goods makes your DuPont Factor 8 argument stronger -- you can point to the specific marketplace coexistence as evidence.

The DuPont Factor 8 Argument

The strongest unique argument available in concurrent use cases is DuPont Factor 8: "the length of time during and conditions under which there has been concurrent use without evidence of actual confusion." This factor is not a standalone strategy in our taxonomy, but it should be woven into every argue strategy in a concurrent use response.

Building the Factor 8 record:

• Document the timeline of concurrent use with specific dates
• Show the geographic and market overlap during the concurrent period
• Provide a declaration from a business principal stating that no instances of actual confusion have been reported
• Include any customer communications, sales records, or market data supporting the absence of confusion
• Submit evidence of overlapping advertising exposure (trade shows, online ads, social media) without resulting confusion
• If available, include website analytics or call center logs showing that misdirected inquiries have not occurred

Under In re Majestic Distilling Co., 315 F.3d 1311 (Fed. Cir. 2003), the absence of actual confusion is entitled to little weight if the marks have been used concurrently for only a short time or in limited channels. The longer and more extensive the concurrent use, the stronger this argument becomes.

Evidence Gathering Checklist

Before drafting a concurrent use response, assemble the following documents. The strength of a concurrent use argument depends almost entirely on the quality of the evidentiary record.

• Timeline documentation. Collect first-use dates, marketing launch records, domain registration dates, and any dated materials showing when each mark entered the marketplace. A clear timeline establishes the duration element that Majestic Distilling requires.
• Sales and distribution records. Gather invoices, purchase orders, or sales reports that show geographic and channel overlap during the concurrent period. The goal is to prove that consumers had the opportunity to encounter both marks and did not confuse them.
• Customer-facing communications. Compile customer service logs, call center records, and any correspondence that would reveal confusion if it existed. A declaration from a customer service manager stating "we have received zero inquiries intended for [cited mark owner]" is direct evidence.
• Advertising and media exposure. Collect examples of advertising placements, trade show participation, press coverage, and social media presence that demonstrate both marks were visible in the same markets during the concurrent period.

Key Takeaways

1. Build the DuPont Factor 8 record. The length of concurrent use without confusion is the unique weapon in these cases. Document the timeline, geographic overlap, and absence of any confusion evidence.
2. A declaration of no confusion is direct evidence. Have a business principal state that no misdirected inquiries or confused customers have been reported during the concurrent use period.
3. The longer the concurrent use, the stronger the argument. Under Majestic Distilling, short or limited concurrent use gets little weight. Years of confusion-free coexistence in overlapping markets is the strongest foundation.
4. Always check if the cited mark has been abandoned. If the concurrent use has ended because the cited mark owner stopped using it, this is the cleanest path to registration.

Try It With Your Next Office Action

GleanMark analyzes your concurrent use refusal against over 50 resolved cases to recommend strategies that leverage your marketplace coexistence -- from DuPont Factor 8 evidence to goods narrowing and cited mark status.

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Related

• Winning Strategies for Section 2(d) Office Actions -- parent guide covering all 2(d) strategies
• Identical Marks Office Action Strategies -- when the marks themselves are identical
• Foreign Equivalents Office Action Strategies -- when the examiner applies the doctrine of foreign equivalents
• Related Goods Office Action Strategies -- when different-class goods are found related
• How Trademark Applicants Actually Win Office Actions -- full statistical overview

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Data: Over 50 winning cases analyzed. Smaller dataset -- interpret patterns directionally. Principal Register wins only. Current as of April 2026.