Commissioner of Patents and Trademarks

Patent and Trademark Office (P.T.O.)

RE: TRADEMARK REGISTRATION OF FORBO NORTH AMERICA, INC.

84-38

August 31, 1984

For: PARIS WALL

Registration No: 1,190,087

*1 Registered: February 16, 1982

Attorney for Petitioner

David Toren

Toren, McGeady & Stanger

Margaret M. Laurence

Assistant Commissioner for Trademarks

On Petition

Forbo North America, Inc. has petitioned the Commissioner under Section 7(d) of the Trademark Act of 1946 and Trademark Rule 2.173 of the Trademark Rules of Practice to restrict territorially the above identified registration. On December 9, 1983, petitioner filed an application for partial disclaimer of the exclusive rights to the registration within the territory of the States of New York, Connecticut and New Jersey. On March 21, 1984, the request was refused.

Registrations are territorially restricted pursuant to concurrent use or court proceedings in which territorial rights are judicially determined; a registrant may not make this determination itself or request it in the same way that a registration is restricted as to goods. Section 7(d) and Trademark Rule 2.173 are therefore not appropriate basis for petitioner to request this relief.

Petitioner calls attention to the fact that Trademark Registration No. 851,307 contains the following statement:

'Concurrent use restricted to New York, New Jersey, and Connecticut. Concurrent use with Ser. No. 250,258.'

The above was the subject of Concurrent Use No. 306 Enterprise Paint Manufacturing Co. vs. Paris Paint & Varnish Co., Inc. involving Ser. Nos. 348,398 and 250,258. The applications matured into concurrent use registrations. Registration No. 1,190,087 was not a party involved in Concurrent Use No. 306.

The petition is denied.

4 U.S.P.Q.2d 1415

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