The Trademark Trial and Appeal Board (TTAB) recently decided that a consent agreement between parties is not dispositive when determining whether a trademark is likely to cause confusion. Instead, the determining entity needs to look at the entirety of the relevant factors and determine whether other factors for likelihood of confusion outweigh the existence of the consent agreement.

Facts

Massachusetts-based Bay State Brewing Company sought to register the mark 'Time Traveler Blonde' in standard characters for "beer", with the term 'Blonde' disclaimed. The trademark examining attorney refused registration of the mark for likelihood of confusion with the previously registered mark TIME TRAVELER in standard characters, for "beer, ale and lager". The previously registered mark was owned by A&S Brewing Collaborative (trading as Alchemy & Science).

Bay State and A&S had a previously signed consent agreement involving the marks at issue. The agreement contained provisions such as geographic limitations restricting use, governance of use of house marks (ie, the marks of the brewing companies themselves, such as Bay State Brewing) and governance of use of trade dress.

Bay State argued that the terms of its consent agreement with A&S made likelihood of confusion between the two marks at issue highly unlikely. The examiner disagreed, finding the pertinent terms of the agreement "inaccurate… irrelevant… or legally insignificant". Specifically, the examiner took issue with the claims by Bay State that 'Blonde' would be shown more prominently than 'Time Traveler' on Bay State's product, as both terms were in standard form in the application. The examiner also took issue with the relevancy of house marks and the fact that A&S was free to use its mark in Bay State's territory. Bay State appealed.(1)

Decision

The TTAB considered the relevant factors set forth In re EI du Pont de Nemours & Co,(2) before turning to the consent agreement. Bay State and A&S's marks were identical as to both the identifications in the application and the registration: both included the word 'beer' and types of beer. Because the identified goods were "at least in-part identical", the channels of trade and purchasers were also presumed to be the same.

Moreover, the TTAB took judicial notice that beer is "often relatively inexpensive, subject to impulse purchase, and often ordered orally in a bar or restaurant", indicating a lower standard of purchasing care and, correspondingly, a higher potential for confusion.

The TTAB also considered the similarity between the marks, noting that "[t]he appropriate emphasis is on the recollection of the average customer". The disclaimed term 'Blonde' was highly descriptive of the product and likely to be dropped by consumers when ordering, leaving just the identical 'Time Traveler' portion of the mark. Therefore, the marks were virtually identical.

Turning to the consent agreement, the TTAB first revisited In re Mastic Inc,(3) and found that Mastic taught that there is "no per se rule" that a consent always tips the scale to finding no likelihood of confusion. According to Mastic, a consent agreement should "reflect the reality of no likelihood of confusion in the marketplace" and it must be determined whether the parties crafted an agreement beneficial to them alone, regardless of any confusion to the public.

Reviewing the actual agreement between A&S and Bay State, the TTAB took issue with the geographical limitation provision in the agreement, as Bay State was limited in its geographical scope of use, while A&S was not. This disparity would allow both parties to use their marks in the same territories. Additionally, Bay State's registration was for a nationwide registration, not a geographically limited registration; therefore, the restrictions in the consent agreement would not be reflected in any registration by Bay State. Even if Bay State used its mark only in the territory outlined in the consent agreement, searchers and attorneys who saw Bay State's registration would assume that Bay State was using its product nationwide.

In regards to Bay State's argument that house marks and differing trade dress would be used, the TTAB found that use of those identifiers did not dispel confusion. The use of a house mark generally does not prevent confusion. Furthermore, the agreement did not require a particular trade dress use by either party, but simply required that the parties not use the same trade dress. By asking for protection based on intent to use different house marks and different trade dress, Bay State was essentially asking for a determination of likelihood of confusion based on an overall mark that was:

  • not being registered;
  • not in use at the time; and
  • not required to be used by Bay State.

The TTAB could not comply with this request.

Comment

Despite the fact that both parties purported to conclude that their consent agreement would abrogate any potential likelihood of confusion, the TTAB decided that the consent agreement did not hold enough sway to preclude a finding that Bay State's mark was likely to cause confusion. This ruling means that parties attempting to contract away any potential trademark registrability issues – such as likelihood of confusion – need to take a careful look at their contracts. The contract should not only be beneficial to the contracting parties, but also take into account whether the contractual provisions protect the public against any potential likelihood of confusion. Failure to do so could mean that the consent agreement plays a negligible role in supporting registration.

For further information on this topic please contact Timothy J Kelly, Rachael Million-Perez or Kathryn E Easterling by telephone (+1 212 218 2100) or email (tkelly@fchs.com, rperez@fchs.com or keasterling@fchs.com). The Fitzpatrick, Cella, Harper & Scinto website can be accessed at www.fitzpatrickcella.com.

Endnotes

(1) In re Bay State Brewing Co, Inc (Serial No 85826258).

(2) In re EI du Pont de Nemours & Co, 476 F2d 1357, 177 USPQ 563 (CCPA 1973).

(3) In re Mastic Inc, 829 F2d 1114 (Fed Cir 1987).

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