Admissions Against Interest In Board Proceedings

Trademark applicants should be mindful of the statements made during a trademark prosecution at the United States Patent & Trademark Office (“USPTO”). In fact, an applicant’s words may be used against them in a later proceeding before the Trademark Trial and Appeal Board (the “Board”) or in a court. A party may have made a statement during the prosecution that is inconsistent with a position later asserted before the Board. One scenario may include a party entering into a consent agreement, settlement agreement or consent judgment wherein the terms of the agreement or judgment are inconsistent with the position the party is currently asserting. This type of a prior inconsistent statement can constitute an admission against interest. Such statements become problematic in a future proceeding when the party is asserting likelihood of confusion against another party.

Often parties forget that any arguments or statements made in the prosecution of their trademark application become a public record. Statements made in a response to an Office Action can be particularly useful to an adversary. For this reason, a party should always scrutinize their opponent’s original trademark application and any responses submitted to an Examining Attorney.

The typical scenario will involve an Examining Attorney refusing an application based on likelihood of confusion with a prior trademark registration for the same or similar trademark. The applicant in response to the refusal will make statements attempting to overcome the refusal. Example arguments may include a term within the mark is suggestive or descriptive and thus weak, many similar marks co-exist on the trademark register indicating a crowded field, since the mark uses a suggestive or descriptive term it is entitled to a narrow scope of protection, and lastly slight differences between the marks will suffice to distinguish the trademarks. These statements often support the reasoning that the two trademarks can coexist because there is no likelihood of confusion between the sources of the marks. Such statements may constitute admissions against interest and they can serve to restrict the scope of protection of the applicant’s mark.

The Board and the United States Court of Appeals for the Federal Circuit have held that statements as the ones described in the prior paragraph are admissible as admissions against interest and can be considered along with the rest of the evidence in the record. Specifically, the statements will be used to assess the scope of protection to which the mark is entitled and to evaluate the strength or weakness of the plaintiff’s claim. See Plus Products v. General Mills, Inc., 188 USPQ 520 (TTAB 1975), where the Board evaluated statements made by the plaintiff in a response to a prior office action.

The plaintiff argued that its mark PLUS for vitamin products and food supplements did not cause a likelihood of confusion with the registered marks, MILK PLUS AND FOOD PLUS for food items. Subsequently, the same party filed an opposition against a party attempting to register the mark PROTEIN PLUS for breakfast cereals. In the Opposition proceeding, the Board found no likelihood of confusion and stated that its position was consistent with the position asserted by the plaintiff when prosecuting its trademark application.

Similarly admissions against interest can also be found in consent agreements. See Swedish Beer Export Co. Aktiebolag v. Canada Dry Corp., 469 F.2d 1096, 176 USPQ 59 (CCPA 1972), where the Board dismissed the opposition since it did not find likelihood of confusion between the mark SKOL for beer and the trademark SKOLA for soft drinks. They partially based their finding on an admission against interest found in a prior consent agreement between the marks SKOL for vodka and SKOL for beer. The Board’s reasoning was that if the owners of identical marks (SKOLA) agreed to co-exist in a circumstance where both marks were used in connection with alcoholic beverages, then similar marks not identical would not cause confusion where one product is an alcoholic beverage and one is nonalcoholic. The important lesson to be learned is that a trademark applicant should be cautious of the arguments made in an attempt to secure mark registration because such arguments may influence the enforceability of the trademark at a later date. If you have questions concerning your trademark, please contact our office to schedule a courtesy telephone consultation.