United States: TTAB Rejects Consent Agreement In Finding Likelihood Of Confusion

In a recent decision that serves as a reminder that the U.S. Trademark Trial and Appeal Board (TTAB or Board) will not merely "rubber stamp" consent agreements, the TTAB recently scrutinized a coexistence agreement proffered by a trademark applicant and concluded that the agreement did not suffice to avert confusion between the applicant's mark and a previously registered mark.

In this case, In re Bay State Brewing Co., Serial No. 85826258 (TTAB Feb. 25, 2016), the applicant, Bay State Brewing Company, Inc., had applied to register the mark TIME TRAVELER BLONDE (in standard characters, with BLONDE disclaimed) for "beer" in International Class 32. The USPTO examining attorney refused registration on the ground that the mark was likely to cause confusion with the previously registered mark TIME TRAVELER, also in standard characters, for "beer, ale and lager" in International Class 32, and the applicant appealed to the TTAB.

On appeal, the applicant conceded that the marks were similar and the goods were related, but asserted that it was entitled to registration because it had entered into a consent agreement with the registrant that permitted registration of the applicant's mark. The TTAB acknowledged that the existence of a consent agreement is relevant to the analysis of likelihood of confusion under the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).

Applying the du Pont factors, the Board found that the goods at issue were identical, were distributed in the same channels of trade, and were sold to the same classes of purchasers; that the goods were relatively inexpensive and subject to impulse purchase—and, the Board emphasized, the goods were often requested verbally, such as at a bar or restaurant. As for the marks themselves, the TTAB discounted the significance of BLONDE (a type of beer) and found that the marks were virtually identical. Each of the foregoing factors therefore weighed in favor of a finding of likelihood of confusion.

The Board then reviewed in detail the consent agreement, noting that "there is no per se rule that a consent, whatever its terms, will always tip the balance to finding no likelihood of confusion." Here, the Board identified several reasons why the consent agreement would not obviate confusion. First, under the agreement, the parties could use their respective trademarks in some of the same geographic areas. Second, although the agreement provided that the parties would use their respective house marks with the marks at issue, "the addition of house marks to these virtually identical marks used on identical goods does not necessarily mean that purchasers are not likely to be confused." Third, although the parties agreed to refrain from using trade dress that was confusingly similar to one another, it did not require the use of any particular trade dress by either party, thus permitting the possibility that the parties could both use minimal trade dress with their house marks in small size, doing nothing to avert confusion. Despite the agreement's provisions, the Board concluded, "we remain convinced that there exists a likelihood of confusion because the circumstances bind us to consider the contemporaneous use of virtually identical marks on identical goods that are subject to impulse purchase by ordinary consumers in the same geographical area." Accordingly, the refusal to register was affirmed.

This article first appeared in the International Trademark Association Bulletin on May 1, 2016. Read the full article on INTA Bulletin (with subscription).

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