Consent Agreements will be considered in a likelihood of confusion analysis. These are agreements between the registrant of a trademark and another party, where the registrant agrees to the registration of a similar or identical trademark. See our webpage entitled, Resolving Trademark Disputes Without Litigation for a detailed discussion on Consent Agreements and other types of agreements that can avoid litigation. The trademark applicant can submit a Consent Agreement to overcome a refusal of registration based on likelihood of confusion with a prior registered mark. The Examining Attorney will consider the Consent Agreement along with the other evidence in the record.
See In re Intuity Medical Inc., Serial Nos. 77416484 & 77416487 (July 26, 2011), where the Trademark Trial and Appeal Board (hereinafter the “Board”) held that the Applicant’s two marks were identical (ONE STEP & ONE-STEP – standard character marks) with the several marks that the Registrant owned (ONE-STEP in stylized formats and in standard character). Applicant identified his goods as “blood glucose monitoring systems including the devices, and parts and accessories thereof”. The Registrant’s goods were for “blood sampling prickers and parts therefore”.
The Board determined that the goods were related because blood drawing devices are a component of blood glucose monitoring systems. Essentially, the Board’s argument was that the Registrant’s identification was broad enough to include the goods of the Applicant (blood drawing devices used in connection with monitoring blood glucose levels). In conjunction with finding a relationship between the goods, the Board also held that the goods moved in the same channels of trade and were sold to the same classes of consumers.