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Trademark Consent Agreements May Not Always Prevent a Likelihood of Confusion According to US Patent and Trademark Office TTAB

time traveler blondeThe US Patent and Trademark Office Trademark Trial and Appeal Board (TTAB) held in In re Bay State Brewing Company, Inc., Serial No. 85826258 (TTAB, February 25, 2016) that a consent agreement may not necessarily overcome a likelihood of confusion rejection by trademark examining attorney.

At issue in the case was whether TIME TRAVEL BLONDE for beer was likely to cause confusion with TIME TRAVELER also for beer, where the applicant for TIME TRAVELER BLONDE had entered into a consent agreement with the owner of the registered mark TIME TRAVELER (Registration No. 4,378,877).
The TTAB first reviewed the du Pont factors to evaluate whether a likelihood of confusion existed between the two marks and found that a likelihood of confusion existed based on the similarity of the marks, identical goods, channels of trade and low cost of goods.

The Federal Circuit has held that consent agreements are entitled to great weight, but it is not a “given” that experienced businessmen, in all cases, make an agreement countenancing each others concurrent use of the same or similar marks only in recognition of no likelihood of confusion of the public. In re Mastic Inc., 829 F.2d 1114, 4 USPQ 2d 1292 (Fed. Cir. 1987). Further, a consent is simply evidence which enters into the likelihood of confusion determination and may or may not tip the scales in favor of registered ability, depending upon the entirety of the evidence. Id. The TTAB held that the Mastic case teaches that there is no per se rule that a consent, whatever its terms, will always tip the balance to finding no likelihood of confusion, and it follows that the content of each agreement must be examined.

The consent agreement entered into included a geographic limitation clause which limited the TIME TRAVELER BLONDE owner to use of the mark only in New England and the state of New York but imposed no geographic restrictions on the TIME TRAVELER owner. This created a problem for the TTAB because the owner of the TIME TRAVELER BLONDE mark was not seeking a geographically restricted trademark registration. Moreover, there is a presumption by searchers and attorneys that a trademark registration is geographically unrestricted.

The consent agreement also included a restriction that the owner of the TIME TRAVELER BLONDE mark and the owner of the TIME TRAVELER mark must use their respective house marks in connection with the marks at issue. Because of the absence of geographical restrictions, this restriction was considered to be an effective, especially considering the purchasers may still be confused based on the similarity of marks and goods.

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