Detailed Consent Agreements Play A Dominant Role In Likelihood Of Confusion Analysis

The Trademark Trial and Appeal Board (the “Board”) issued a precedential decision last week that will be helpful to applicants submitting either a Consent Agreement or a Coexistence Agreement to overcome a likelihood of confusion refusal. Dare Foods Inc. filed an application to register the proposed mark RAINCOAST DIP in standard characters with a disclaimer for “DIP” for snack foods. The Examining Attorney refused the application based on a registration for RAINCOAST TRADING, in standard characters with a disclaimer for “TRADING” for various seafood products.

The Board reversed the refusal stating, “clothed consent agreements where competitors have clearly thought out their commercial interests should be given great weight, and the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion.” See In re Dare Foods Inc., 2022 USPQ2d 291 (TTAB 2022) [precedential]; Four Seasons Hotels, 26 USPQ2d at 1073 (quoting In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985)); see also DuPont, 177 USPQ at 568; Am. Cruise Lines, 128 USPQ2d at 1163. See the firm’s blog post entitled, A Precedential Board Decision Giving Great Weight To Consent Agreements, where the Board again reversed a refusal to register while giving substantial weight to the consent agreement entered into between the parties. The Board for In re Dare Foods Inc., concluded a detailed, “clothed” consent agreement will play a dominant role in a likelihood of confusion analysis.

In this case, the Board reviewed the following DuPont factors, similarities of the marks, similarities of the goods, the trade channels and classes of consumers, and the market interface and co-existence agreement. Regarding the marks, it was a simple task. Both applicant’s and registrant’s mark use the identical term RAINCOAST, and both marks contain a descriptive element that was disclaimed in each respective mark. Not only is the dominant element shared, but RAINCOAST appears as the first element in both marks. The marks in their entireties are similar.

In connection with the goods, the Examining Attorney presented eight third party websites. Based on the evidence, the Board found that it was not uncommon for the snack food dip and the various seafood products to emanate from one source. Once there is ample evidence that applicant’s goods and registrant’s goods are offered under one mark from multiple companies, evidence of relatedness can be established. If there are no limitations as to trade channels or classes of consumers, there is a presumption that the goods move in all channels of trade normal for the products. The Board concluded that the same trade channels were utilized by the applicant and registrant and the classes of purchasers overlapped as well.

See our blog post entitled, Another Rejected Trademark Consent Agreement, for the five factors most important when evaluating a Consent Agreement for purposes of overcoming a likelihood of confusion refusal. Consent agreements are considered as part of the tenth DuPont factor, the market interface between the applicant and the owner of a prior mark. The parties had entered into a co-existence agreement 8 years ago. It was based on differences between the marks and the goods, and the lack of actual confusion in the marketplace. In addition, the applicant agreed not to register the shared term RAINCOAST as a standalone mark and would not use it in connection with the term “Trading”, nor would applicant use the shared term RAINCOAST in connection with seafood products.

The Board concluded that the Examining Attorney did not give proper weight to the co-existence agreement, and a “clothed” agreement should be given substantial weight in a likelihood confusion analysis. See In re Mastic Inc., 829 F.2d 1114, 4 USPQ2d 1292, 1117-18 (Fed. Cir. 1987). The Federal Circuit has consistently shown deference to consent or co-existence agreements that detail the plans agreed to by the parties to avoid confusion. In re Wacker Neuson SE, 97 USPQ2d 1408, 1411-13 (TTAB 2010) (discussion of history of case law regarding the weight accorded consent agreements in decision reversing Section 2(d) refusal of registration). The details are the additional elements that persuade the decisionmaker that the agreement is probative. A consent agreement does not have to discuss all five factors to be probative. If you have questions regarding likelihood of confusion or consent or co-existence agreements, please contact the firm for a courtesy consultation.