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.