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A Precedential Board Decision Giving Great Weight To Consent Agreements

The applicant in this matter, American Cruise Lines, Inc. is seeking registration of the mark, AMERICAN CONSTELLATION (standard characters) for cruise ship services, transportation of passengers by ship and conducting cruises for others. The Examining Attorney refused the application based on a likelihood of confusion with the registrant’s marks, CONSTELLATION and CELEBRITY CONSTELLATION, both in standard characters for the same cruise ship services. The Examining Attorney requested that the word “American” be disclaimed, but applicant submitted evidence that it had acquired distinctiveness. The claim of distinctiveness was based on use in commerce with four U.S. registrations using the term “American” for cruise ship services. The Examiner accepted the evidence. The applicant voluntarily disclaimed the right to use the term “Constellation”. After refusing the application, the Examining Attorney denied applicant’s request for reconsideration, and the applicant appealed to the Trademark Trial and Appeal Board (the “Board” or the “TTAB”). See In re American Cruise LInes, Inc., 128 USPQ2d 1157 (TTAB 2018) [precedential].

The Examining Attorney as part of its review considered two consent agreements (agreeing to use and registration of the mark AMERICAN CONSTELLATION) submitted by the applicant. Consent agreements are relevant under the du Pont factors. It bears on the market interface between an applicant and a registrant. See our webpage entitled, Resolving Trademark Disputes Without Litigation, for general information on consent agreements, and other means used to resolve these types of disputes.

Typically, the Board addresses the other relevant du Pont factors first, then determines the importance of the consent agreement. Regarding services, those are identical in this matter so there is a presumption that trade channels and classes of consumers are the same, weighing in favor of confusion. Regarding conditions of purchase, applicant submitted affidavit evidence that purchasers of its services exercised a heightened degree of care when purchasing cruise ship services. Affidavit evidence is to be considered probative in nature in an ex parte proceeding, if the affidavit refers to matters known or observed by the affiant.

Regarding similarities between the marks, the marks share the common term, Constellation. This is an arbitrary word used in conjunction with cruise ship services, and will be given broad protection. There is no per se rule that calls for a finding of confusion when a junior user’s mark incorporates the entire mark of the senior user, but certainly this increases the likelihood of confusion. The Board determined the marks were very similar in sound, connotation, appearance and commercial impression.

The Board found the second consent agreement persuasive, even though the Examining Attorney determined that both consents were naked. The following factors were addressed in the consent agreements: (1) the parties provide services in different regions of the world; (2) applicant agrees to always refer to its services as AMERICAN CONSTELLATION and not abbreviate it to CONSTELLATION; (3) evidence was presented showing a heightened degree of care at the time of purchase; (4) consumers know the applicant as AMERICAN since it is its house mark; (5) there has been coexistence for ten years without any reports of actual confusion; and (6) there was evidence of similar marks being used for other cruise ship services where common terms are shared. With the exception of the first factor, the Board held the other factors were impactful.

However, the parties did not address measures to prevent confusion or what if any steps would be taken if confusion does occur. Currently, there is no precedent requiring such information be included in a consent agreement for it to be probative. Provisions addressing how to avoid confusion and steps to take if confusion occurs should be included, but it is not mandatory. The Board pointed out that the second consent agreement detailed multiple reasons why the parties insisted that there would not be confusion, and the reasons were corroborated by evidence of record. The Board concluded that the second consent agreement weighed heavily against finding a likelihood of confusion. The USPTO should not substitute its judgment for that of the business owners who have commercial interests at stake. The Board reversed the Examining Attorney’s refusal to register applicant’s mark AMERICAN CONSTELLATION. If you have a question pertaining to a consent agreement or another trademark inquiry, please contact the firm for a courtesy consultation.