Published on:

Consent Agreements And Their Effectiveness In Overcoming 2(d) Refusals

A Consent Agreement is a written agreement between two trademark owners where typically one party agrees that the other party can use and register its mark. It is usually triggered by a refusal issued in an Office Action by the USPTO. See our web page entitled, Resolving Trademark Disputes Without Litigation, for general information regarding how a Consent Agreement can aid in registering a trademark or in facilitating a resolution in a trademark dispute. In a recent case before the Trademark Trial and Appeal Board (the “Board”) it was determined that the parties’ Consent Agreement was not sufficient to avoid a likelihood of confusion between the sources of the trademarks. See In re Bay State Brewing Company, Inc., Serial No. 85826258 (TTAB February 25, 2016) [precedential], where the Board in a precedential decision determined that despite the parties’ Consent Agreement, consumer confusion was likely to occur.

Bay State Brewing Company, Inc. (the “Applicant”) filed an application for the mark TIME TRAVELER BLONDE in standard characters for beer. The Examining Attorney refused the application on the grounds that when the mark TIME TRAVELER BLONDE is used with the Applicant’s goods it causes a likelihood of confusion with a previously registered word mark, TIME TRAVELER for beer, ale, and lager. There was a final refusal issued and an appeal followed.

Under a 2(d) analysis, all the du Pont factors that are relevant to the facts in evidence are considered. The Applicant offered a Consent Agreement for consideration. It is relevant because it relates to the market interface between the Applicant and the Registrant. Regarding the relatedness of the goods, both parties are using the trademarks to brand beer. Therefore the goods are identical with respect to beer. Because the goods are in part identical, the trade channels and classes of consumers are presumed to be the same. Another factor weighing in favor of finding a likelihood of confusion is the condition of sale. Beer is inexpensive and often subject to impulse purchases.

Next, the Board considered the similarities of the marks. Since the goods were identical, the degree of similarity between the marks need not be as great. Applicant’s mark TIME TRAVELER BLONDE essentially incorporated Registrant’s entire mark TIME TRAVELER. Applicant simply added a descriptive term to the Registrant’s mark and this does not distinguish it in any way. The Board determined that the marks were virtually identical in sound, appearance, meaning and commercial impression. Without any other factors to consider the Board would find a likelihood of confusion. However, in this case the parties’ Consent Agreement must be reviewed and evaluated.

As du Pont holds a Consent Agreement is just one factor to consider among many factors. It is not always determinative of confusion. If the other du Pont factors strongly weigh in favor of no confusion then even a “naked” consent may be enough to register the mark. Conversely, if the majority of factors weigh against registration due to a likelihood of confusion, then a Consent Agreement may not be enough to register the mark.

Here, the Consent Agreement contained a number of restrictions for use of each party’s respective mark. However, the Board emphasized that their respective registrations would not reflect these restrictions. Thus, third parties using the USPTO database for trademark clearance would not receive accurate information. The Consent Agreement was requiring the Board to rely on marketplace realities instead of the language in the application and registration. This defeats the purpose of the registration constituting public notice of the extent of one’s trademark rights. Since the marks, the goods, and the trade channels as reflected in the application and registration are virtually identical a Consent Agreement cannot obviate the confusion. The Consent Agreement was outweighed by the relevant likelihood of confusion factors. Consent Agreements are not viewed in a vacuum. There is a misconception regarding the weight Consent Agreements carry in a likelihood of confusion analysis. If you have any questions concerning Consent Agreements, or other trademark inquiries, please contact our office for a courtesy consultation.