Although consent agreements are frequently entitled to great weight in its likelihood of confusion analysis, the Board was unmoved by a consent agreement in its affirmance of a Section 2(d) refusal of the mark TIME TRAVELER BLONDE for "beer" [BLONDE disclaimed], in view of the registered mark TIME TRAVELER for "beer, ale and lager." According to the Board, the agreement between applicant and registrant "does not comprise the type of agreement that is properly designed to avoid confusion and does not fully contemplate all reasonable circumstances in which the marks may be used by consumers calling for the goods." In re Bay State Brewing Company, Inc., Serial No. 85826258 (February 25, 2016) [precedential].
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The Board first found that the virtual identity of the marks, the identity of the goods, trade channels, and purchasers, and the "impulse nature" of purchases of beer, made for a "compelling case for finding a likelihood of confusion." It then turned to consideration of the consent agreement between applicant and registrant and the impact of same on the likelihood of analysis.
The Board pointed out that, according to In re du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), a consent agreement is simply evidence to be included in the likelihood of confusion determination, and "it may or may not tip the scales in favor of registrability, depending upon the entirety of the evidence." Each consent agreement must be examined and it is not a foregone conclusion that every such agreement will be determinative.
In the consent agreement at hand, applicant and registrant included the usual statement that they “wish to avoid any conflict with one another and consent to co-exist” under certain terms and conditions, and they "agree to cooperate in good faith to resolve such actual confusion and to develop measures sufficient to avoid a likelihood."
The agreement required that each party use its mark in connection with its house mark, that applicant use TIME TRAVELER or the word TRAVELER only in the mark TIME TRAVELER BLONDE, that the word BLONDE be displayed in at least equal prominence with TIME TRAVELER, and that each party use a trade dress not confusingly similar to the trade dress of the other.
The "Geographical Limitation" provision in the agreement states that applicant will not use its applied-for mark “outside of New England and the State of New York,” while registrant’s use is not geographically limited. (Applicant Bay State is located in Massachusetts; Registrant A&S Brewing Collaborative is based in Vermont). The Board found that this provision creates two problems.
First, "the parties have agreed to allow use of their respective marks in the same territories, because Registrant will be free to use its mark in the entirety of Applicant’s territory." However, "[a]pplicant is not seeking a concurrent use registration (with a corresponding geographical restriction in Registrant’s registration), but rather a nationwide registration. Nor is Applicant seeking a geographically restricted registration as part of the consideration provided to Registrant for entering into a consent agreement." Compare Holmes Oil Co. v. Myers Cruizers of Mena Inc., 101 USPQ2d 1148 (TTAB 2011) (TTAB accepted a geographical restriction in a consent agreement despite overlap in territories, without requiring a concurrent use proceeding, because the restriction was "part and parcel of the consent agreement" and not because a geographic restriction in the application was necessary.) [TTABlogged here].
Second, the registration that applicant seeks would not reflect the geographical limitation that it has voluntarily accepted, and thus would be misleading.
We recognize that a mark shown in an unrestricted registration may actually be used in a smaller territory than that which it can be used. However, when marks are being searched and cleared, there is a presumption by searchers and attorneys afforded to an unrestricted registration that Applicant’s registration would not and should not be entitled to.
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In light of the geographical overlap, the effectiveness of the remaining provisions in the agreement is diminished. The addition of each party's house mark to these virtually identical marks used on identical goods does not necessarily eliminate confusion. As to trade dress, each party agrees not to use trade dress confusingly similar to the other's, but there is no specification as to what trade dress each will use. "[I]f each used minimal trade dress and smaller font displays of the house marks, then the essence of the agreement would be met, but would not aid in the avoidance of confusion."
The Board noted that applicant's mark is not yet in use, and so applicant is seeking a determination "based on its mark, not as applied for, but rather as promised."
These promises as to trade dress and house mark usage represent another deviation from the parameters of the application and registration, and thus would result in a failure of the public notice function of registrations.
The Board remained convinced that there remained a likelihood of confusion arising from the use of these virtually identical marks for identical goods, subject to purchase on impulse by ordinary consumers, in the same geographical area.
In sum, while we unmistakably recognize the Federal Circuit’s instruction that consent agreements are frequently entitled to great weight, we find that the specific consent agreement in this case is outweighed by the other relevant likelihood of confusion factors, namely that the marks are virtually identical, and the goods, trade channels and purchasers are identical. Further, the goods are subject to impulse purchase. Notwithstanding the consent agreement, we are persuaded that patrons in New York and New England are likely to be confused as to source upon encountering the marks TIME TRAVELER and TIME TRAVELER BLONDE, even when these marks are used within the constraints set forth in the consent agreement.