Naked or Not: Crafting Trademark Consent Agreements in Light of Recent TTAB Precedent, 0317 COBJ, Vol. 46 No. 3 Pg. 55
| Author | Suzanna M. M. Morales, J. |
Intellectual Property Law
Suzanna M. M. Morales, J.
Reproduced with permission from BNA ’s Patent, Trademark & Copyright Journal, 92 PTCJ 791 (July 15, 2016). Copyright 2016 by the Bureau of National Affairs, Inc.—(800) 372-1033, www.bna.com.
In light of the TTAB’s rejection of a trademark registration application based on a finding of likelihood of confusion despite the existence of a consent agreement between the relevant trademark holders, lawyers should take care in constructing such agreements.Nakedness was an issue before the Trademark Trial and Appeal Board recently.
No, this article is not about the ongoing and highly publicized battles over the “immoral and scandalous” clause of the Lanham Trademark Act of 1946.
In In re Bay State Brewing Co., Inc., 1 the TTAB issued a precedential decision on an ex parte examination that the applied-for mark was likely to cause confusion with a cited registration, despite the existence of a consent agreement between the applicant and the owner of the cited registration (38 PTD, 2/26/16).
So where does nakedness come in? In the seminal DuPont case, the Court of Customs and Patent Appeals held that detailed consent agreements between parties should be given substantial weight.2 The CCPA found:
When those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain the subjective view that confusion will occur when those directly concerned say it won’t.
The reason for this deference, according to the DuPont decision, is that the parties in the marketplace have a monetary incentive to avoid confusion.
Since that time, this principle has been cited in numerous decisions finding that consent agreements may weigh against other evidence of likelihood of confusion, some of which will be discussed below.
The Trademark Manual of Examining Procedure follows the precedent of DuPont and subsequent cases, instructing examining attorneys to “give substantial weight to a proper consent agreement.”3 The TMEP notes that, “when an applicant and registrant have entered into a credible consent agreement and, on balance, the other factors do not dictate a finding of likelihood of confusion, an examining attorney should not interpose his or her own judgment that confusion is likely.”
On the other hand, DuPont noted that “a naked ‘consent’ may carry little weight.” The point of contention, then, in cases involving consent agreements, often comes down to whether the agreement is “naked” or “clothed.”
History of the Bay State Application
Application to Register “Time Traveler Blonde,” and the Consent Agreements
On Jan. 17, 2013, Bay State Brewing Co. applied to register the mark “Time Traveler Blonde” for beer.
Initially...
To continue reading
Request your trial