The Board affirmed a Section 2(d) refusal of the mark shown below left, for "arranging and conducting ice hockey programs for injured and disabled members and veterans," finding it likely to cause confusion with the mark shown below right, entertainment and association services related to hockey. Applicant did not dispute that the marks are similar and the services related. Instead it contended that the registrant had consented to registration of the applied-for mark, and that under In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012), the 13th du Pont factor should be considered in light of applicant's ownership of the slightly different color logo mark shown farther below, for the same services. In re USA Warriors Ice Hockey Program, Inc., Serial No. 86489116 (May 16, 2017) [precedential] (Opinion by Judge Bergsman).
Du Pont 13: Applicant argued that this case is analogous to Strategic Partners [TTABlogged here], where the Board reversed a Section 2(d) refusal based on applicant's ownership of a substantially similar mark that had co-existed with the cited registered mark for more than five years. The Board there observed that the thirteenth du Pont factor (i.e., any other established fact probative of the effect of use) "accommodates the need for flexibility in assessing each unique set of facts." It concluded that the thirteenth factor "outweighs the others and leads us to conclude that confusion is unlikely." Id. at 1400.
The Board pointed out, however, that in Strategic Partners, the co-existing registrations were each more than fife years old and thus immune to attach under Section 2(d). See Section 14 of the Trademark Act. [Note: the Board did not call the registrations "incontestable." Hooray for that! - ed./]. Here, however, applicant's existing registration has co-existed with the cited registration for less than five years, and is still subject to possible cancellation under Section 2(d). This is a "key factual distinction from Strategic Partners. While the 3 and one-half year co-existence of the involved registrations is a relevant consideration, it does not outweigh the other du Pont factors here.
Finally, the Board noted once again that the issuance of the registration to applicant does not require approval of the second mark. The Board is not bound by the decision of a Trademark Examining Attorney in another case.
Consent: Applicant pointed to display of its registered mark on opposer's website, accompanied by a short discussion of applicant's organization. However, there was no written consent agreement, and the Board will not infer that the registrant consented to registration based on its apparent knowledge of the previously-registered, slightly different mark.
The Board pointed to In re Opus One Inc., 60 USPQ2d 1812, 1821 (TTAB 2001), where there was likewise no indication that applicant sought a consent to register, or that applicant was even aware of the application to register:
registrant’s conduct, particularly the fact that registrant has not objected to applicant’s use of the mark, reasonably might also be attributable to a belief on registrant’s part that applicant is using the mark pursuant to registrant’s approval and permission, and that registrant has the right to require applicant to cease using the mark in the event that the quality, nature or extent of applicant’s restaurant services were to change in a way detrimental to registrant’s interests.
The Board concluded that, because "Applicant's evidence lacks the weight Applicant attributes to it without an actual written consent to registration," applicant failed to prove registrant's consent to registration.
And so the Board affirmed the Section 2(d) refusal.