CDS,Incorporatedv.I.C.E.D. Manage-ment, Inc.

Trademark Trial and Appeal Board

Jul 6, 2006

No. 94001250 (T.T.A.B. Jul. 6, 2006)

Mailed:
6 July 2006
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

CDS, Incorporated
v.
I.C.E.D. Management, Inc.
_____

Concurrent Use No. 94001250

_____

I. Edward Marquette of Sonnenschein Nath & Rosenthal, LLP
for CDS, Incorporated.

Brian G. Bodine of Davis Wright Tremaine, LLP for I.C.E.D.
Management, Inc.
______

Before Seeherman, Drost, and Walsh, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On March 11, 1997, CDS, Incorporated (applicant or CDS)
filed a concurrent use application to register on the
Principal Register the mark THE COPY CLUB, in typed or
standard character form for the following services:
Document copying services for others; record and
document management services for others, namely,
indexing, cataloging, inventory, assembly, and
distribution of documents, and storage of frequently
repeated or updated documents; word processing for
others; layout and pre-production of business documents
and business cards for others, namely, logo creation
THIS DISPOSITION
IS CITABLE
AS PRECEDENT OF
THE TTAB
Concurrent Use No. 94001250
2
typesetting, and selection of paper stock, typestyles
and ink colors; and typing services for others in Class
35.

Document processing for others, namely, binding,
collating, sorting, cutting, punching, perforating,
stapling, stitching, numbering of pages, packaging,
drilling, scoring and folding services; and color
separation services; electronic document imaging
services for others; and the receipt of digitized
information and the conversion thereof to a printed
document for others in Class 40.

Electronic publishing services for others, namely, the
design, text and graphic layout, editing, and
publication of the business publications of others on
print and magnetic media in Class 41.

Desktop publishing for others; graphic design services;
typesetting services; composition services; compilation
services; color proofing, halftone, paste up, and
keylining pre-reproduction services for others in Class
42.1

The application claims a date of first use and first
use in commerce of April 29, 1993, for all the classes.
Applicant has also disclaimed the word “Copy.” Applicant
now seeks registration for the states of Utah, New Jersey,
New York, Connecticut, Pennsylvania, Kansas, and Missouri.2
On July 30, 2002, the Board instituted this concurrent
use proceeding with the party I.C.E.D. Management, Inc.
(excepted user or ICED), the owner of Registration No.
2,468,045, as the excepted user named in CDS's concurrent
use application, and therefore, it is in the position of

1 Serial No. 75255563.
2 Applicant originally also sought registration for the states of
Texas and California but, in an amendment dated August 16, 2002,
applicant deleted those states from its list of states for which
it seeks registration.
Concurrent Use No. 94001250
3
defendant. The registration is for the mark COPY CLUB, in
typed or standard character form, for the following
services:
Document copying services; record and document
management services; indexing and cataloging of
information and images for others; word processing;
scanning, layout, and other pre-reproduction document
processes for others; typing services; and rental and
leasing of business office equipment for use on and off
premises in Class 35.

Facsimile transmission services; and audio, video, and
data telecommunication services in Class 38.

Binding, collating, sorting, cutting, punching,
perforating, stapling, stitching, numbering of pages,
packaging, drilling, scoring and folding services;
color separation services, electronic document imaging
services; and the receipt of digitized information and
the conversion thereof to a printed document in Class
40.

Electronic publishing for others, namely designing,
laying out, editing and electronically producing a
business publication using a personal computer in Class
41.

Desktop publishing for others; graphic design services;
typesetting services; composition services; compilation
services; color proofing and paste up pre-reproduction
services for others; photography services; and rental
of computers for use on premises in Class 42.

The registration contains a disclaimer of the term
“Copy.” The underlying application was filed on July 18,
1994, and it contains an allegation of dates of first use
and first use in commerce for all the classes of November
2000.3

3 ICED’s president, Brian Gay, testified (p. 69) that it
“surprises me that it says first use, you know, 11/2000 for those
duties since we started Copy Club in 1993.”
Concurrent Use No. 94001250
4
Record
The record consists of the pleadings; the file of CDS’s
application; the telephonic testimony deposition, with
exhibits, of Brian Gay, excepted user’s president; the
discovery depositions from 1997 and 2003, with exhibits, of
Joel McGinnis, applicant’s president and the discovery
depositions from 1997 and 2003, with exhibits, of Marc
Wolfe, applicant’s vice-president, submitted by the parties’
stipulated notice of reliance;4 the discovery deposition,
with exhibits, of I. Edward Marquette, applicant’s counsel,
submitted by excepted user’s notice of reliance; and
excepted user’s registration, also submitted by notice of
reliance.
Background
This case involves applicant’s attempt to obtain a
concurrent use registration for seven states of the United
States and to restrict excepted user’s registration to the
rest of the United States.
On July 18, 1994, ICED filed an application (Serial No.
74550346) to register the mark COPY CLUB for various
services in Classes 35, 38, 40, 41, and 42.

4 The 2003 Wolfe and McGinnis depositions include as exhibits the
1997 Wolfe and McGinnis depositions from a prior board proceeding
between the same parties.
Concurrent Use No. 94001250
5
On June 24, 1996, after the application was published
for opposition, CDS filed its notice of opposition (No.
91102651).
On March 11, 1997, CDS filed its application for
registration of the mark THE COPY CLUB for services in 35,
40, 41, and 42.
On September 30, 1997, the application was amended to a
concurrent use application.
On September 29, 1998, the board dismissed CDS’s
opposition and granted ICED’s motion for summary judgment.
Corporate Document Services Inc. v. I.C.E.D. Management
Inc., 48 USPQ2d 1477 (TTAB 1998). The board also indicated
that:
As for opposer's pending concurrent use application, we
note that once opposer's application has successfully
passed the opposition stage, a concurrent use
proceeding will be set up, and applicant's application
(or registration, if it has already issued) will become
a part of that proceeding. Opposer's burden of proof
will be to prove its rights as a lawful concurrent user
and that concurrent use of the parties' marks is not
likely to cause confusion.

Id. at 1480.
On July 10, 2001, ICED’s registration (No. 2,468,045)
issued.
On July 30, 2002, this concurrent use proceeding was
instituted.
For purposes of determining the parties’ rights, July
18, 1994, the date ICED filed its application, is key
Concurrent Use No. 94001250
6
because, as more fully discussed below, that date
establishes “jurisdiction” for applicant to obtain a
concurrent use registration, i.e., CDS must show that it
began using its mark prior to the filing date of ICED’s
application.
Facts
CDS seeks a concurrent use registration for the states
of Utah, New Jersey, New York, Connecticut, Pennsylvania,
Kansas, and Missouri for the mark THE COPY CLUB for various
document copying, publishing, and similar services. ICED
presently is the owner of an unrestricted registration for
the mark COPY CLUB for similar and overlapping services.
ICED is the first user of the mark COPY CLUB because it
began using its COPY CLUB mark for document preparation and
handling services in 1992. McGinnis dep. Ex. 32. See also
Corporate Document Services, 48 USPQ2d at 1479 (ICED
established its use “by a predecessor-in-interest, at least
as early as June 1992”).
General information concerning CDS’s use
CDS was formed in February 1993. McGinnis 1997 dep. at
5. CDS began doing business under the mark The Copy Club
mark in 1993. McGinnis 2003 dep. at 164. See also McGinnis
Ex. 30 (Advertisement for THE COPY CLUB dated April 29,
1993). CDS used its mark for its duplication and copying
services. As will be discussed subsequently, CDS also
Concurrent Use No. 94001250
7
refers to its “association membership” activities, which
involve its attempt to expand its business by using business
partners. We now look at CDS’s activities in the states in
which CDS seeks concurrent use registration.
Kansas

In response to an interrogatory, CDS submitted the
following amended response:
Applicant has used “THE COPY CLUB” in the following
cities in Kansas: the greater Kansas City metropolitan
area, Topeka, Lawrence, Leavenworth, Fort Hayes,
Atchison, Chanute, Ottawa, Pittsburg, and El Dorado.

The record shows that CDS began its operations in
Kansas in 1993. McGinnis 1997 dep. at 5. It has advertised
in telephone directories, publications, and radio stations.
CDS’s office is located in the Kansas City area. McGinnis
1997 dep. at 12.
Specifically, CDS has advertised in the Kansas City
Yellow Pages. When asked if CDS “paid for a Yellow Pages ad
outside of the Kansas City metropolitan area,” its witness,
Marc Wolfe, responded: “I don’t know.” Wolfe 2003 dep. at
61. Applicant’s other witness, Joel McGinnis, confirmed
that prior to July 18th, 1994, all its advertisements were
limited to the Kansas City metropolitan area. McGinnis 2003
dep. at 40. CDS also advertises on Kansas City area radio
stations. Wolfe 2003 dep. at 61. CDS placed advertisements
Concurrent Use No. 94001250
8
in the College Boulevard News5 and The Squire magazine6 in
1993.7 McGinnis 2003 dep. at 106 and 126. All CDS’s
manufacturing facilities are in Kansas and its production
services are in the Kansas City area. Wolfe 2003 dep. at
86. CDS was originally located in Merriam, Kansas, but it
has moved to Lenexa, Kansas. McGinnis 2003 dep. at 21.
CDS also relied on the fact that it used a document
referred to as the “blue book” to advertise its services.
Wolfe 2003 dep. Ex. 3. However, while this document was
given to people outside of Kansas and Missouri, it was not
widely distributed. See, e.g., Wolfe 2003 dep. at 119 (“Q.
Can you tell me any location in Kansas City – in Kansas
outside of the metropolitan area where you distributed the
blue book prior to July 18th, 1994? A: When you say
distributed – Q. In any manner. A. It varies. At
this point I can’t give you specifics or names”).

5 This paper is located in Johnson County, Kansas. McGinnis 2003
dep. at 108. We take judicial notice that Johnson County is near
Kansas City, Kansas.
6 CDS’s witness was asked “And do you know if the Squire is a
local Kansas City metropolitan area publication?” The witness
responded: “I believe it is, yes.” McGinnis 2003 dep. at 126.
7 In 1997, CDS also ran an advertisement in Quik Print magazine,
an industry publication, and in Small Business Monthly in
December 1995. McGinnis 1997 dep. at 114; Wolfe 1997 dep. at 26.
The circulation areas of these publications is not clear and to
the extent that they may be nationwide, as discussed
subsequently, they do not significantly support CDS’s use in any
particular state nor would they support ICED’s position that
there is a likelihood of confusion despite the concurrent use
limitations.
Concurrent Use No. 94001250
9
Missouri

In response to an interrogatory, CDS submitted the
following amended response:
Applicant has used “THE COPY CLUB” in the following
cities in Missouri: the greater Kansas City
metropolitan area, greater St. Louis metropolitan area,
Springfield, and Jefferson City.

Applicant’s witness testified that prior to July 18,
1994, “in St. Louis we were promoting the mark by exploring
the possibilities of franchise, partnerships, or association
concepts with people in St. Louis.” McGinnis 2003 dep. at
32. However, the witness was unable to identify any
services that it provided in St. Louis, Springfield, or
Jefferson City, Missouri. McGinnis 2003 dep. at 34.
Regarding Missouri, CDS identified a single individual prior
to July 18, 1994, who received a “blue book” but CDS did not
provide that individual with any services. Wolfe 2003 dep.
at 117. However, by 1997, CDS’s president testified that
most of its business came from Missouri. McGinnis 1997 dep.
at 13. Therefore, it appears that this business in Missouri
is confined to the Kansas City, Missouri, area.
New York
Q. Do you currently conduct business in New York under
The Copy Club mark?

A. We’ve had a few transactions there. We’ve primarily
been preparing The Copy Club to be more of an
association operation going in Manhattan through
Westchester, Port Chester up to Rochester all being in
those areas.

Concurrent Use No. 94001250
10
McGinnis 2003 dep. at 44

Q. So up through July 18th, 1994, the use in New York
was with respect to franchising opportunities?

A. That’s –

Q. Or member – association memberships?

A. I can say that, correct.

McGinnis 2003 dep. at 46.

Q. So you can’t tell me how the mark was used with
respect to transactional work in any of these cities in New
York prior to July 18th, 1994?

A. In relation to services?

Q. In relation to services.

A. No.

McGinnis 2003 dep. at 49.8

New Jersey

Q. Can you tell me a single person who you had a
discussion with concerning association or memberships
in New York or in New Jersey prior to July 18th, 1994?

*****

A. Okay. One gentleman would be Frank …, okay in New
Jersey, Frank and I worked together at ….9

Q. Can you tell me the substance of your conversation
with Frank?

8 Mr. Wolfe, CDS’s other principal, offered the following
testimony:
Q. And any other customers in Illinois that you can think of?
A. No.
Ohio?
A. Not that I recall?
Q. Pennsylvania?
A. Not that I recall?
Q. New York?
A. None that I recall.
Wolfe 1997 dep. at 56.
9 Information that may be sensitive has been redacted.
Concurrent Use No. 94001250
11
A. Our – going back, Frank, was a guest at my home. I
explained to him what we were going to do, if this
worked out how we would have an opportunity to – Frank
and I worked at … together and he was aware and
interested in what The Copy Club could do and what it
would mean.

Q. You said he was a guest at your home?

A. Uh-huh.

Q. Your home here in Kansas City?

A. No, I was living in Connecticut at the time.

Q. Now, when did this occur?

A. ’92, late ’91, sometime around then.

Q. Were you using The Copy Club mark at that time?

A. No.

McGinnis 2003 dep. at 52-54.

Q. So as we sit here today you can’t tell me whether
you provided any of the services in New Jersey under
The Copy Club mark prior to July 18th, 1994?

A. Correct.

McGinnis 2003 dep. at 57.10

Connecticut

Q. Okay. Now, with respect to services listed in
interrogatory number 2 prior to July 18th, 1994, did

10 Mr. Wolfe in his earlier deposition indicated that he “would
assume we were doing lots of business with [a corporation] in New
Jersey. Wolfe 1997 dep. at 56. However, the witness further
testified as follows:
Q. So you are not aware, as you sit here today, whether in this
work for these companies that are located outside of the states
of Kansas or Missouri, you have ever sent an invoice with The
Copy Club?
A. As I am not aware how we get our leads, I can say in broad-
based terms I am not aware of any specifics that we would have
sent an invoice with The Copy Club.
Wolfe 1997 dep. at 64.
Concurrent Use No. 94001250
12
you provide any of those services in connection with
The Copy Club mark in the state of Connecticut?

A. Connecticut, I know I quoted business activity in
Connecticut using The Copy Club mark –

Q. Okay.

A. – to a training company and for I think a furniture
reseller or something like that, but the primary use of
the mark was as an association in the Hartford, Danbury
area.

Q. Now, when you say you provided a quote to someone in
Connecticut –

A. Right.

Q. – can you tell me when that occurred?

A. Oh, late ’93, early ’94.

Q: And—

A: We were up in – because this booklet had been sent
and the pricing was much more attractive than what they
had been paying locally.

*****

Q. When was the first transaction that you closed in
Connecticut and actually provided services?

A: I can’t answer that, I don’t know.

Q. Do you know how soon it was after that?

A. The quote?

Q: After that first quote.

A. No.

Q. And –

A. And, in fact, I don’t think – I think we quoted the
business and the individual that we quoted it for got
out of the business. I don’t think we ever delivered
the work.

Concurrent Use No. 94001250
13
McGinnis 2003 dep. at 59-61.

Q. In 1994, any time in ’94, did you receive any orders
from Connecticut for services provided under the mark?

A. I don’t know at this time.

Q. Do you know if there were any orders received for
services provided under The Copy Club mark in ’95 from
Connecticut?

A. I can only speculate yes, but I don’t know for sure.

Q. Okay. Would that be the same for 1996?

A. Yes

Q. And 1997?

A. Correct. And the reason being is when the company
started in ’93 it had two people. As things went on
our people were empowered, a lot of the transactions
and productions that took place were without my
knowledge, a lot of billing was without my knowledge.
And just to put it into perspective, in 1993 we did
$678 in revenue, this year I think we will grow to four
million. So the growth of the company, while we’ll
control certain practices and policies, I can’t tell
you what the transactions are. I mean, I’m surprised
who we’re doing business with on a daily basis…

McGinnis 2003 dep. at 68-69.11

11 In his earlier deposition, Mr. McGinnis described the
activities in Connecticut and New York as follows:
Q. What trips have you taken to solicit business for CDS?
A. Primarily, New York-Connecticut area.
Q. Were there particular customers?
A. Potentials.
Q. Why did you choose that area?
A. Several reasons. One, I combined it with some personal
activities – family back east. I know a lot of people on the
East Coast.
Q. From your work at [a corporation]?
A. Correct.
Q. Have you taken other trips to solicit business?
A. No, that’s primarily it.
Q. When you were soliciting business in your trip to New York and
the Connecticut area, did you leave literature with these
potential clients?
A. More conceptual.
Concurrent Use No. 94001250
14
Utah

Q. Okay. Are you aware of any business that’s
conducted in Utah under The Copy Club mark?

A. Prior to July.

Q. I’m just giving you the broadest question possible,
any time.

A. Yeah, we’ve done business in Utah.

Q. And you continue to do business in Utah?

A. We’re more of the association opportunity in Utah
than we are transactional, but we started
transactionally.

Q. Okay. Now, when did you start transactionally?

A. I guess late ’93, early ’94.

Q. And can you tell me what the goods or services
listed in –

A. Duplicating.

Q. – your –

A. And business cards.

*****

Q. And do you know where Mr. Pryor was living at the
time that these transactions occurred?

A. Kansas.

Q. So he was living in Kansas shipping things to Salt
Lake?

A. No. It was Bountiful, Utah. We were sending – as I
said, he at that point was an Omnitrition distributor.
He had agents working all over the country. We shipped
work to California, we shipped work to Utah, but I

Q. Just oral discussions?
A. Correct.
McGinnis 1997 dep. at 118-119.
Concurrent Use No. 94001250
15
can’t tell you where else because I didn’t handle all
the orders.

McGinnis 2003 dep. at 75-79.

Q. Okay. And when you filled this order in ’93 was
there a packing slip that went with it.

A. I don’t know if there was packing slip, but I know
there would be an invoice.

Q. And do you know whether the invoice had The Copy
Club on it?

A. I would believe it did.

Q. Well, that’s not the question. Do you know, can you
say that for a fact?

A. Without seeing the invoice, no.

Q. And you have no invoice – you have no copies of any
invoices you used in 1993, correct?

A. Don’t know that. We’re looking for them, but we’ve
not been able to locate them.

McGinnis 2003 dep. at 84.

Q. Can you explain how this [Ex. 29, a commercial
shipping receipt] is relevant to the case?

A. This is a shipping document that shows we were
shipping materials to Utah.

Q. And does it show what kind of services were shipped
to Utah?

A. No.

Q. Does it show what kind of materials were provided in
this shipping?

A. No.

Q. Do you know what kind of materials were provided?

A. Seeing how we were primarily doing duplicating, I
would say it was copying work.

Concurrent Use No. 94001250
16
Q. That’s speculation, correct?

A. We don’t make pizzas.
*****

Q. You can’t say for a fact that The Copy Club
trademark was used on any of the packaging material or
any of the materials that were included with this
shipment, can you?

A. No.

Q. And, in fact, the “received from” on Exhibit 29 says
Corporate Document Services, correct?

A. That was the UPS – the RPS designation to CDS at the
time.

Q. So there’s no evidence here that you used The Copy
Club trademark in this shipment reflected in Exhibit 29
to Camtec?

A. At this time no.

McGinnis 2003 dep. at 86 and 88 (quotation marks added).

Pennsylvania

Q. And when was the last time that you conducted
business in Pennsylvania under The Copy Club mark? And
I’m referring to transactional business.

A. I can’t answer that right now.

Q. Okay. Well now, I’d like to shift to a time before
July 18th, 1994, and you can tell me did you provide
any transactional work or services under The Copy Club
mark in Pennsylvania prior to that time?

A. I don’t know.

McGinnis 2003 dep. at 95.

Analysis
Section 2(d) of the Trademark Act (15 U.S.C. § 1052(d))
provides:
Concurrent Use No. 94001250
17
That if the Director determines that confusion,
mistake, or deception is not likely to result from the
continued use by more than one person of the same or
similar marks under conditions and limitations as to
the mode or place of use of the marks or the goods on
or in connection with which such marks are used,
concurrent registrations may be issued to such persons
when they have become entitled to use such marks as a
result of their concurrent lawful use in commerce prior
to (1) the earliest of the filing dates of the
applications pending or of any registration issued
under this Act…

The Court of Custom and Patent Appeals (CCPA) has
addressed the basic questions involved in determining
whether the parties are entitled to concurrent use
registrations:
We earlier pointed out the two requirements which the
proviso sets out as conditions precedent to the
issuance of concurrent registrations. The first, that
the parties be presently entitled to concurrently use
the mark in commerce, we view as being primarily
jurisdictional in nature. As with a single applicant,
we consider the extent of such actual use to be
irrelevant so long as it amounts to more than a mere
token attempt to conform with the requirement of the
statute. Cf. Fort Howard Paper Co. v. Kimberly-Clark
Corp., 55 CCPA 947, 390 F.2d 1015, 157 USPQ 55 (1968).
The touchstone, however, is the requirement that there
be no likelihood of confusion, mistake or deception in
the market place as to the source of the goods
resulting from the continued concurrent use of the
trademark. Only in satisfying this standard, can the
Patent Office be sure that both the rights of the
individual parties and those of the public are being
protected. Once there has been a determination that
both parties are entitled to a federal registration,
the extent to which those registrations are to be
restricted territorially must also be governed by the
statutory standard of likelihood of confusion.

Concurrent Use No. 94001250
18
In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 436
(CCPA 1970).12
Under 37 CFR § 2.99(e), an “applicant for a concurrent
use registration has the burden of proving entitlement
thereto.” The board has held that “[a]s a general rule, a
prior user of a mark is entitled to a registration covering
the entire United States limited only to the extent that the
subsequent user can establish that no likelihood of
confusion exists and that it has concurrent rights in its
actual area of use, plus its area of natural expansion.”
Pinocchio’s Pizza v. Sandra Inc., 11 USPQ2d 1227, 1228 (TTAB
1989).
Jurisdiction
We begin by noting that the evidence supports CDS’s
contention that it began using its mark for CDS’s services
prior to the filing date of ICED’s application (July 18,
2004). See McGinnis 1997 dep. at 29-38, Ex. 3; McGinnis
2003 dep. Ex. 30. CDS’s witness has testified, and we find,
that it began using its mark for its services in the Kansas
City area in 1993, which is before the filing date of ICED’s
application.

12 Priority is not normally an issue in concurrent use
proceedings. The question here is whether the concurrent use
applicant has met the jurisdictional requirement (or "condition
precedent") of establishing use in commerce prior to the
defendant’s application filing date. See Beatrice Foods, 166
USPQ at 435.
Concurrent Use No. 94001250
19
Use
ICED has not used its COPY CLUB mark in any of the
seven states that CDS seeks as its territory in its
geographically restricted application. See Gay dep. at 63-
66. Therefore, CDS has met the "jurisdictional requirement"
or "condition precedent" of its lawful use in commerce
outside of the conflicting claimant's area. Gray v. Daffy
Dan’s Bargaintown, 823 F.2d 522, 3 USPQ2d 1306, 1308 (Fed.
Cir. 1987).
There is some evidence that CDS and ICED did, at one
time, operate in overlapping territory, i.e, Texas and
California. See, e.g., McGinnis 1997 dep. at 57 and 58; and
Gay dep. at 8. However, when CDS was informed that ICED had
prevailed on the summary judgment motion in the opposition
proceeding, CDS stopped doing business in California and
Texas as well as other states. McGinnis 2003 dep. at 6.
CDS then included a disclaimer on its website that its
services are not available in Texas and California as well
as other states. Wolfe 2003 dep. Ex. 30. Later, CDS
changed the disclaimer to clarify that: “Services and
Association Memberships for The Copy Club are available in
Kansas, Missouri, Connecticut, New York, New Jersey,
Pennsylvania and Utah.” Gay Dep. Ex. 10. Therefore, we do
not have a situation where an applicant has simply attempted
to manipulate the application process by claiming less
Concurrent Use No. 94001250
20
territory than its actual territory of use in order to
appear “on paper” to have avoided confusion.
The issue of likelihood of confusion in this concurrent
use proceeding was properly resolved by looking at the
concurrent use applicant's area of actual use, not
merely the area "claimed" in his application. Thus,
the exclusion of some geographic territory of use from
a concurrent use application does not restrict the
likelihood of confusion inquiry required by the
statute. As this case illustrates, the mere statement
by an applicant that a registration is not sought for a
particular state or geographic area cannot be equated
with a representation that the applicant does not and
will not use its mark in the area. Here, there is no
representation by Gray that he will limit the scope of
geographic use of his mark or will take steps to
prevent confusion of the public. What is attempted
here is simply a manipulative use of the registration
system to secure to Gray the advantages of registration
with no undertaking whatsoever to protect the public
from confusion.

Daffy Dan’s, 3 USPQ2d at 1309.

Here, CDS has withdrawn from the overlapping territory
and thus its previous use in the territory does not preclude
a determination that there is no likelihood of confusion.
We add that while we look to the filing date of ICED’s
application to determine whether there is jurisdiction for a
concurrent use proceeding, we are not locked into that date
for making our determinations on the appropriate territory
for the parties and the likelihood of confusion question.
[I]t is both necessary and proper for the Patent Office
to determine the “conditions and limitations” with
which the marks are to be registered “on the basis of
facts as they exist at the time when the issue of
registrability is under consideration.” In the present
type of proceeding this would apparently mean up to the
close of the testimony period.

Concurrent Use No. 94001250
21
Beatrice Foods, 166 USPQ at 438 (citations omitted).

Therefore, CDS’s retreat from the overlapping territory
prior to the close of the testimony period is effective in
eliminating an area of potential likelihood of confusion.
Territory
Now that we have determined that CDS has met the
jurisdictional requirements for commencing a concurrent use
proceeding, we must determine the territory that is
appropriate for the parties. ICED as the registrant and
prior user “is entitled to a registration covering the
entire United States, including areas of its use and non-
use, subject only to the exception of geographic areas where
the junior user can prove prior use. The junior user is, in
effect, frozen in its area of prior use.” Enterprise Rent-
A-Car Co. v. Advantage Rent-A-Car Inc., 330 F.3d 1333, 66
USPQ2d 1811, 1818 (Fed. Cir. 2003). However, the area of
“prior use” includes more than areas of actual use. The
CCPA has held that:
actual use in a territory was not necessary to
establish rights in that territory, and that the
inquiry should focus on the party's (1) previous
business activity; (2) previous expansion or lack
thereof; (3) dominance of contiguous areas; (4)
presently-planned expansion; and, where applicable (5)
possible market penetration by means of products
brought in from other areas.

Weiner King, Inc. v. The Weiner King Corp., 615 F.2d 512,
204 USPQ 820, 830 (CCPA 1980). Furthermore, use in a
territory must be more “than a token attempt to conform with
Concurrent Use No. 94001250
22
the requirement of the statute.” Beatrice Foods, 166 USPQ
at 436.
Although there is no requirement that CDS show actual
use and although we both can and have considered CDS’s use
after ICED’s filing date, we cannot conclude that CDS has
shown use that would entitle it to a concurrent registration
that would include the states of Utah, New Jersey, New York,
Connecticut, and Pennsylvania. CDS’s use of THE COPY CLUB
in these states can be best described as de minimis and
nebulous. Much of the described business activity involved
discussion about “association” activities and not the
identified services themselves. These association
opportunities may loosely be described as franchise-type
activities. The following is CDS’s explanation of
association activities:
Let me define The Copy Club association for you. Your
client, albeit I’m sure something that you since told
me you don’t want to discuss, your client is in the
business of offering franchises. Franchises in my
estimation are a way for those who have been displaced
by corporate America, you know, those middle managers
that have been outsourced… they turned down those
opportunities to become entrepreneurs when they were
younger but they’re faced with an opportunity by
becoming an entrepreneur by buying a franchise and
plunking down a quarter of a million dollars to have
somebody teach them how to run a business. I call
those entrepreneurial wannabes, it’s a big difference
between The Copy Club association members.

The Copy Club association membership traditionally is
made up of entrepreneurs, those of us who took the
risk, those of us who had the ability to start a
business on our own. We didn’t need the guidance of a
corporation, we didn’t need to plunk down a quarter of
Concurrent Use No. 94001250
23
a million dollars, didn’t need somebody to give us a
training manual and teach us how to start the print
button on a Xerox duplicator. So if you look at the
demographic makeup of potential copy association
membership, you look at us, someone who might have been
a very successful printing business, duplicating
business, litigation business … but why they have not
tapped into the retail business…

We’ve built a model in Kansas City, we’ve built a model
in a company that now is approaching $4 million in
revenue. That gives us the ability of selling off our
excess capacity through a retail entity called The Copy
Club to small business, large business that may come to
us through The Copy Club individuals.

Wolfe 2003 dep. at 26-27.
The witness then went on to explain the results of
these activities.
We’ve not put any of these transactions into place
because we felt there was a legitimate reason based on
these proceedings to slow down…

Wolfe 2003 dep. at 28.

Q. So there are no The Copy Club association members as
we sit here today?

A. Brian, that’s just what I told you.

Wolfe 2003 dep. at 29.13

As we stated previously, it is CDS’s burden to show
that it has made use of its mark for its identified services

13 We note that in a letter to an ICED subsidiary dated May 15,
1998, CDS advised ICED that while “it’s no secret, CDS intends to
form an association of approximately 1,100 industry related
companies to comprise The Copy Club network once the trademark
issue is resolved, we have refrained from advertising or
soliciting additional members until the trademark issue is
revolved.” McGinnis 2003 dep. Ex. 33. Although this letter
might provide some explanation as to why applicant refrained from
soliciting association members starting in 1998, applicant has
not provided a satisfactory explanation as to why its activities
from 1993 until that date bore no fruit in the five states.
Concurrent Use No. 94001250
24
in the areas claimed in its application. However, CDS has
fallen seriously short in meeting this burden with respect
to the states of New York, New Jersey, Connecticut,
Pennsylvania, and Utah. The evidence of CDS’s activity in
these five states consists almost entirely of the testimony
of its principals. “[O]ral testimony, if sufficiently
probative, is normally satisfactory to establish priority of
use in a trademark proceeding.” Powermatics, Inc. v. Globe
Roofing Products Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA
1965). Such testimony should “not be characterized by
contradictions, inconsistencies and indefiniteness but
should carry with it conviction of its accuracy and
applicability.” B.R. Baker Co. v. Lebow Bros., 150 F.2d
580, 66 USPQ 232, 236 (CCPA 1945). In this case, we cannot
say that the testimony of Mr. Wolfe and Mr. McGinnis is free
of indefiniteness. On the contrary, it simply does not
carry the conviction of accuracy and applicability.14 On
the basis of the record before us, we find that CDS has not
established its use in the states of Utah, New Jersey, New
York, Connecticut, and Pennsylvania, nor has it established
that it had any credible plans to expand its use into these
states.

14 Indeed, when Mr. Wolfe was asked (Wolfe 2003 dep. at 51) for
the first date that he handed out the “blue book” advertisement
that CDS was relying on for its use of the mark, he responded:
“I don’t remember what color socks I wore yesterday, let alone
what I did in 1993 on a day-to-day basis.”
Concurrent Use No. 94001250
25
In Terrific Promotions Inc. v. Vanlex Inc., 36 USPQ2d
1349, 1353 (TTAB 1995) (several parentheticals omitted), the
senior user alleged that it was planning to expand into the
Pittsburgh area:
During its testimony period, Mr. Braha testified that
Vanlex was looking into opening a DOLLAR BILL'S store
in Pittsburgh, but that Vanlex was "still undecided" as
to whether to open such a store. Even if we were to
consider the sur-rebuttal testimony which Vanlex has
submitted with its brief, this testimony, in the form
of a declaration from Allen Ades (president of Vanlex),
merely alleges that "Vanlex is now proceeding with the
construction of … a DOLLAR BILL'S store in Pittsburgh.
As of the date of Mr. Ades’ declaration (January 6,
1994), Vanlex had still not opened a DOLLAR BILL'S
store in Pittsburgh.

The board concluded that “the evidence presented by Vanlex
during its testimony period raises questions in our mind as
to whether Vanlex will ever open a DOLLAR BILL'S store in
Pittsburgh,” although, because Vanlex was the senior user,
in that case the board resolved doubts in favor of Vanlex.
Id. at 1354. In this case, many years have passed since
CDS, the junior user, undertook any association activities,
and yet CDS has provided no evidence of any expansion of
either its association activities or evidence of any
significant use of the mark for the identified services.
Therefore, we hold that CDS has not established its use in
the states of Utah, New Jersey, New York, Connecticut, and
Pennsylvania.
However, CDS has shown that it has used its mark in
Kansas. When we consider the Weiner King factors of its
Concurrent Use No. 94001250
26
previous business activity and the dominance of contiguous
areas, we determine that it is appropriate to award the
entire state of Kansas to CDS. Regarding Missouri, because
of applicant’s use in the Kansas City metropolitan area and
the testimony that a large percentage of its business comes
from Missouri, we conclude that CDS’s territory should
include that portion of the state of Missouri that lies
within fifty miles of Lenexa, Kansas. As the Weiner King
case demonstrates, there is no requirement that a concurrent
use applicant be awarded an entire state. See also Terrific
Promotions, 36 USPQ2d at 1354 (Senior user awarded only
counties in New York, Connecticut, and New Jersey and
Allegany county, Pennsylvania); Pinocchio’s Pizza, 11 USPQ2d
at 1229 (Senior user awarded only a territory within a
fifty-mile radius of its restaurant in Catonsville,
Maryland). CDS has not shown that the rest of Missouri is
within its reputation zone or its natural zone of expansion.
As we indicated earlier, ICED as the prior user is normally
entitled to a registration for the entire United States
except for areas where CDS can establish prior rights. We
do not find that CDS has established rights for the entire
state of Missouri, and thus we limit its area in Missouri to
the area near Lenexa, Kansas.

Concurrent Use No. 94001250
27
Likelihood of Confusion Factor
The next factor we must address is whether there would
be a likelihood of confusion if the parties received
registrations for the territories discussed above.
Obviously if the marks COPY CLUB and THE COPY CLUB were used
in association with the identified services without
geographic restrictions, there would be a likelihood of
confusion. The question now becomes whether, with the
geographic restrictions discussed above, there would still
be a likelihood of confusion. ICED argues that there would
be confusion inasmuch as both parties advertise on the
Internet.
Obviously, the concurrent use provision in the
Trademark Act existed long prior to the creation of the
Internet. We do not believe that the creation of the
Internet has rendered the concurrent use provision of the
Trademark Act moot. Indeed, in a case that predated the
Internet but nonetheless involved advertising and customer
solicitation in overlapping areas, the Federal Circuit
determined that concurrent registrations were still
acceptable. In Amalgamated Bank of New York v. Amalgamated
Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305 (Fed.
Cir. 1988), the parties had agreed that the New York bank
was entitled to nationwide registration with the exception
of the state of Illinois. However, the agreement
Concurrent Use No. 94001250
28
specifically noted that “nothing in this agreement will
preclude Amalgamated New York from conducting advertising
which might enter in the State of Illinois or from dealing
with customers who happen to be located in the State of
Illinois.” 6 USPQ2d at 1306. A similar provision applied
to the Illinois bank. While that case involved a consent
agreement, it is clear from the decision that overlapping
advertising and customer solicitation does not require a
determination that there is a likelihood of confusion. See
also Terrific Promotions, 36 USPQ2d at 1352 (Mention of
concurrent user in in-flight airline magazine and New York
magazine did not prevent issuance of concurrent use
registrations).
Also, in Allard Enterprises Inc. v. Advanced
Programming Resources, 249 F.3d 564, 58 USPQ2d 1710, 1717
(6th Cir. 2001), the Court stated the following:
We also vacate the district court's injunction against
Allard's use of the APR mark on the internet. Although
we have held that APR has superior rights to use the
mark, at a minimum, in central Ohio we decline to
affirm the district court's conclusion that an
injunction prohibiting Allard's use of the mark in a
specific geographic area necessarily precludes any use
of the mark by Allard on the internet…

We suggest that, due to the paucity of case law
addressing concurrent trademark rights and internet
use, the district court may want to consider cases
addressing the role of national advertising by parties
with concurrent trademark rights. Courts have held in
some cases that, despite a concurrent user with a
territory of exclusive use, an almost-national user
should be permitted some form of national advertising.

Concurrent Use No. 94001250
29
As we mentioned previously, CDS has a disclaimer on its
website that specifies that it does business under the mark
THE COPY CLUB in only seven identified states.15 The Sixth
Circuit has “found the existence of a disclaimer very
informative, and [it] held that there was no likelihood of
confusion, partly on that basis.” Taubman Co. v. Webfeats,
319 F.3d 770, 65 USPQ2d 1834, 1839 (6th Cir. 2003), citing,
In Holiday Inns, Inc. v. 800 Reservation, Inc., 86 F.3d 619,
39 USPQ2d 1181 (6th Cir. 1996). Here, too, in the context
of a concurrent use proceeding, and because of our view that
advertising on the Internet does not automatically preclude
concurrent use registration, we find that the presence of a
disclaimer on CDS's website is likewise helpful in avoiding
confusion in this case.
Therefore, we conclude that the specific evidence of
the parties’ simultaneous use on the Internet in this case
does not require us to find that there is a likelihood of
confusion.

15 We note that CDS does have another entity, Corporate Document
Services, which does business nationwide. CDS’s “intent is to
use The Copy Club as a retail organization. Corporate Document
Services is not a retail operation.” McGinnis 2003 dep. at 105.
On its webpage, CDS initially advises visitors that: “If you are
a corporate client, please visit us at
www.corporatedocumentservices.com.” Wolfe 2003 dep. Ex. 20. The
webpage goes on to advise potential customers that its services
under the mark THE COPY CLUB are only available in seven states.
The website is a compromise between CDS’s traditional desire to
route corporate customers regardless of their geographic origin
to its preferred corporate website and its desire to eliminate
overlapping territory for its services marketed under THE COPY
CLUB mark.
Concurrent Use No. 94001250
30
ICED also argues (Brief at 27) that “CDS’s current
position that there is no likelihood of confusion is
directly contrary to the position that it took in 1998.”
Obviously, this statement was made in a proceeding where
CDS, as opposer, was seeking to prevent ICED from receiving
an unrestricted nationwide registration, to which it
believed it was entitled. CDS responds (Reply Brief at 6)
that:
In the opposition proceeding, the ultimate right to
registration was at stake. Geographically remote uses
were not even theoretically relevant! Concurrent use
was not at issue in the earlier opposition proceeding,
and the nationwide registration that I.C.E.D. sought
would have inevitably encroached into states where CDS
clearly has prior rights. In that earlier proceeding,
yes, confusion was likely because the issue (the only
issue) was the potential clash of two assumed
nationwide users.

We agree that in the interval between the opposition and
concurrent use proceedings, CDS has withdrawn from any
overlapping territory and the question of likelihood of
confusion must be decided on the basis of the current
territorial alignment and not on whether there is a
likelihood of confusion if the marks were used in the same
territory.
In addition, ICED refers to actual confusion between
the marks. The specific incident is described as follows:
There was a Kansas City individual who was in Houston,
used The Copy Club in Houston, made a comparison to
that operation versus ours, and basically was somewhat
disappointed in the Houston operation and was trying to
understand why the difference.
Concurrent Use No. 94001250
31

McGinnis 2003 dep. at 152. This incident occurred several
years ago while both parties were still seeking nationwide
registrations. It appears to be an isolated incident that
is unlikely to repeat when the parties take normal business
precautions to avoid confusion in their separate geographic
areas.
Fraud
ICED also argues (Brief at 43) that CDS should be
denied concurrent use registration because it “fraudulently
attempted to obtain the registration by claiming exclusive
right to use the mark in Texas.” Our case law establishes
that fraud must be clearly proven.
Fraud implies some intentional deceitful practice or
act designed to obtain something to which the person
practicing such deceit would not otherwise be entitled.
Specifically, it involves a willful withholding from
the Patent and Trademark Office by an applicant or
registrant of material information which, if disclosed
to the Office, would have resulted in disallowance of
the registration sought or to be maintained. Intent to
deceive must be "willful." If it can be shown that the
statement was a "false misrepresentation" occasioned by
an "honest" misunderstanding, inadvertence, negligent
omission or the like rather than one made with a
willful intent to deceive, fraud will not be found.
Fraud, moreover, will not lie if it can be proven that
the statement, though false, was made with a reasonable
and honest belief that it was true or that the false
statement is not material to [the] issuance or
maintenance of the registration. It does appear that
the very nature of the fraud requires that it be proven
"to the hilt" with clear and convincing evidence.

Concurrent Use No. 94001250
32
Woodstock’s Enterprises Inc. (California) v. Woodstock’s
Enterprises Inc. (Oregon), 43 USPQ2d 1440, 1443 (TTAB 1997),
aff’d mem., 152 F.3d 942 (Fed. Cir. 1998).
CDS’s counsel testified that the inclusion of Texas in
its area of claimed use was a mistake.
After it was filed and after – again, not waiving the
attorney/client privilege – communicating with the
client, I learned that Texas should not have been
included on the list. I then asked Lisa [the attorney
who had handled the application earlier] why in the
world was Texas included on the list. So my
understanding was she said well, the way I understood
the rule was that for purposes of the pleading you put
down all the states including overlap states and then
you at a subsequent point identified which ones that
you claimed were exclusively yours and not yours. Now,
Lisa may frankly have been wrong on that and whether
she is or not I haven’t looked into that matter, but it
was a mistake factually to have ever put Texas on that
list.

Marquette dep. at 18-19.
Texas was a state in which CDS conducted some business
but CDS was also in the process of withdrawing from Texas in
response to the board’s adverse determination on summary
judgment. See McGinnis 1997 dep. at 57 and 58; and McGinnis
2003 dep. at 6. The record does not show that this
statement was an intentional deceitful practice. Rather it
occurred as a result of the confusion involved in
transitioning from its unrestricted application to a
concurrent use application. Therefore, the evidence does
not support ICED’s allegation of fraud.

Concurrent Use No. 94001250
33
Conclusion
We hold that CDS is entitled to a concurrent use
registration for the state of Kansas and that portion of the
state of Missouri located within 50 miles of Lenexa, Kansas.
ICED’s registration will be limited to the entire United
States except for the state of Kansas and that portion of
the state of Missouri located within 50 miles of Lenexa,
Kansas.
Decision:
Registration No. 2,468,045:
This registration, owned by ICED, for the mark COPY
CLUB for the identified services will be restricted to the
area comprising the entire United States except for the area
comprising the state of Kansas and for that portion of the
state of Missouri that is located within 50 miles of Lenexa,
Kansas (such area to include the city of Kansas City,
Missouri).

Application Serial No. 75255563:
CDS is entitled to the registration of its mark THE
COPY CLUB for the identified services for the area
comprising the state of Kansas and that portion of the state
of Missouri that is located within 50 miles of Lenexa,
Kansas.