Articles Tagged with Trademark Consent Agreements

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Since the precedential decision of  In re Bay State Brewing Co., 119 USPQ2d 1958 (TTAB 2016), the Board has more carefully reviewed Consent Agreements. Some may say the TTAB has since been scrutinizing Consent Agreements, seeking to find very detailed reasons for why confusion will not occur between two sources in the marketplace. For more on the influential case of In re Bay State Brewing Co., see our blog post entitled, A Recent TTAB Decision Impacting Consent And Coexistence Agreements. After the issuance of this decision, other decisions followed in the trend of rejecting Consent Agreements. The latest in this line is In re 8-Brewing LLC, Serial No.86760527 (October 30, 2017) [not precedential]. This decision affirmed the refusal of the Applicant’s mark and stated that the restrictions set forth in the parties’ Consent Agreement would not eliminate confusion in the market place.

8-Brewing LLC, (the “Applicant”) was seeking registration on the Principal Register of the mark, 8-BIT ALEWORKS, for beer in standard characters. The mark was refused due to a likelihood of confusion with the registered mark 8 BIT Brewing Company (a word mark and also a design mark with the same literal terms) for beer, ale, lager, stout and porter, malt liquor and pale beer. The parties submitted a Consent Agreement as part of the record of evidence. A Consent Agreement is evaluated under du Pont factor ten, the market interface between the Applicant and the owner of a prior mark.

The Board commenced its review with the goods identified in the trademark application and registrations. Part of the parties’ identifications is identical, “beer”. Because there is an overlapping identical good, it is presumed that the channels of trade and classes of purchasers are the same. Another presumption that attaches when the goods are identical is the “degree of similarity necessary to support a conclusion of likely confusion declines”. See Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). The relatedness of the goods as described in the application and registrations, weigh in favor of finding a likelihood of confusion.

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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.

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