A precedential decision from earlier this year reinforces the fact that Consent Agreements may not always tip the scales in favor of trademark registration. A consent agreement is a type of coexistence agreement submitted to Examining Attorneys at the United States Patent & Trademark Office (“USPTO”) in an attempt to demonstrate that confusion will not occur in the marketplace. See In re Bay State Brewing Company, Inc., 117 USPQ2d 1958 (TTAB 2016) [precedential], where the Board determined that the consent agreement was not sufficient to avoid confusion and affirmed the 2(d) refusal on likelihood of confusion grounds. Typically consent agreements are given great weight in a likelihood of confusion analysis, see our web page entitled, Is A Co-Existence Agreement The Right Choice For Your Brand , where we discuss the pros and cons of entering into this type of agreement.
Bay State Brewing Company (the “Applicant”) filed a trademark application to register the mark, TIME TRAVELER BLONDE, in standard character format for beer. The application was refused based on a prior registered mark for TIME TRAVELER also for beer, ale and lager. The Applicant appealed to the Trademark Trial and Appeal Board (“TTAB” or the “Board”). Although the Applicant admitted that there is a likelihood of confusion between the sources of the marks, Applicant argued that it entered into a consent agreement that would lessen the likelihood of confusion between the marks. It is well settled precedent that a consent agreement relates to the market interface between the parties (du Pont factor number ten).
Other du Pont factors were considered, such as the relatedness of the goods. The goods were identical. Both parties used its respective mark to brand beer. Regarding trade channels, because the goods were in part identical, there is a presumption that the classes of consumers and trade channels are the same. See In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721 (CCPA 1968). Regarding, the sophistication of the consumers, it was noted that beer is inexpensive and often purchased on impulse. Therefore, the risk of confusion among consumers is increased. In comparing the marks’ similarities, the marks are identical except for the term, “blonde”. In the beer industry, the term “blonde” is generic or at least highly descriptive. The Examiner required a disclaimer of the term “blonde”. The Board concluded that the commercial impression of the Applicant’s mark is that it is the blonde brew of TIME TRAVELER. Also weighing in favor of confusion is the fact that the mark TIME TRAVELER is an arbitrary mark entitled to a broad scope of protection.
It appears that many du Pont factors favor a likelihood of confusion in this case. However, the consent agreement submitted into evidence by the Applicant must be carefully evaluated. The Board made a point to state that “[t]his agreement should be given the substantial and great weight as required by the Federal Circuit”. Regarding a geographic limit, the agreement permitted the Registrant to use its mark without restrictions but limited the Applicant’s use of its mark to New York State and to the New England area. The Board held that without a concurrent use proceeding the geographic limit would not be reflected in the trademark registration. Moreover, the restriction on use only limits one party which effectively then allows for simultaneous use by both parties in the same regions.
The parties also agreed that they would use their house marks along with their trademarks. The Board held that adding a house mark does not obviate confusion. In addition, the parties agreed to use different trade dress, but the Board found this to be an ineffective restriction as well because both marks sought standard character format. This format allows use of a mark in any manner of presentation, not restricted to the use in the specific trade dress. The parties were requesting that the Board determine likelihood of confusion based on a mark (promised) not one existing in the registration or application. This request violates one of the objectives of trademark registration, notifying the public of mark registration, specifically the manner of use and any restrictions of use. Since the registrations would not reflect the terms agreed to in the consent agreement, there would be a failure to notify the public.
The Board concluded that the restrictions set forth in the parties’ consent agreement would not eliminate confusion in the marketplace. The consent agreement is outweighed by other likelihood of confusion factors. The Board affirmed the refusal to register the Applicant’s mark. If you have questions about a consent or coexistence agreement, please contact our office for a courtesy consultation.