Will A Consent Agreement Overcome A Likelihood of Confusion Refusal?

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.

Next the Board considered the letter of consent offered into evidence by the Applicant and signed by the Registrant. The letter merely indicated that the Registrant did agree to the Applicant’s use of the mark ONE STEP for the goods indicated in the trademark application, but did not set forth the reasons why the parties believed that there would be no likelihood of confusion. In addition, the letter did not describe any steps that would be taken by the parties to avoid consumer confusion in the marketplace. The Board considered the letter to be a “naked consent”. See also In re Permagrain Products, Inc., 223 USPQ 147, 1984 WL 62813 (TTAB 1984), where it was held that the consent agreement introduced into evidence by the parties was a naked consent, because the parties failed to restrict the market in such a way to avoid confusion. The Board determined that little probative weight would be given to the consent letter, and when weighing the other DuPont factors found in favor of affirming the refusal to register Applicant’s ONE STEP marks.

The Board will consider several matters when determining if a consent letter or agreement is sufficient to overcome a likelihood of confusion refusal. These include: (1) do the goods move in different trade channels; (2) did the parties agree to restrict their fields of use in some manner; (3) did the parties agree to take steps to avoid confusion and are these detailed in the agreement; and (4) the extent the marks have been used without any reported incidents of actual confusion. It is always wise to address the relevant du Pont factors in your letter of consent and explain in as much detail as possible why confusion as to source or affiliation will not occur.

The Courts and the Board will give very little probative weight to a consent agreement if it appears to merely serve the interests of the parties, but does not avoid confusion in the marketplace. However, the Court of Appeals for the Federal Circuit has made it clear that consent agreements should be given great weight if they detail the reasons why confusion will not occur. The Courts have stated that the USPTO should not substitute its judgment with regard to confusion for the judgment of real parties with vested interests without good reason, unless the other du Pont factors dictate a finding of source confusion. In order to avoid the finding of a “naked” consent agreement, trademark counsel should be consulted prior to submitting such agreements to the Board. Kindly contact our offices and we would be happy to provide you with a courtesy consultation, if you have any questions regarding consent agreements or any other trademark related matter.