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Consent Agreements: An Out-of-the-Box Solution for Similar Trademarks

 


So, you decided you wanted to protect your brand, filled out the lengthy TEAS form, and submitted your application, just to get a response from the United States Patent and Trademark Office (USPTO) informing you that your mark is “confusingly similar” to an already registered mark. What do you do now? One potential option for redress is submitting a consent agreement to the USPTO, enabling holders of similar trademarks to coexist.



The USPTO holds that a “likelihood of confusion exists between trademarks when the marks are so similar and the services for which they are used are so related that consumers would mistakenly believe they come from the same source.”[1] When the USPTO looks at marks to determine if they are confusingly similar, they look at similarity in sound, in meaning, in appearance, and/or in the general commercial impression left by the mark.[2] The USPTO also looks at whether the goods are related. If the USPTO determines that an applied-for mark is confusingly similar to a registered mark, the applicant has a few options, including submitting further evidence in support of registration, looking to register through the supplemental register instead of the principal, and filing a consent agreement.

A consent agreement is an agreement in which two parties agree to have similar trademarks exist. Generally, a consent agreement “refers to an agreement between parties in which one party (e.g., a prior registrant) consents to the registration of a mark by the other party (e.g., an applicant for registration of the same mark or a similar mark), or in which each party consents to the registration of an identical or similar mark by the other party.”[3] A consent agreement is one factor that the USPTO can take into account when determining that there is not a likelihood of confusion between two similar marks.

A strong consent agreement should contain specific reasons and evidence why the parties believe that there will not be customer confusion and the actions they will take to further minimize it.[4] A consent agreement can help persuade the USPTO to register a trademark that it had found confusingly similar, but the Examining Attorney may still refuse registration due to confusion. The Trademark Trial and Appeal Board considers the following questions when weighing a consent agreement:

(1)   Is there an agreement between the parties;

(2)   Does the agreement clearly set forth that the goods travel in separate trade channels;

(3)   Did the parties agree to restrict fields of use;

(4)   Did the parties state in detail how confusion will be avoided in the future and how they will cooperate; and

(5)   Has there been use of the marks in commerce for a period of time without evidence of actual confusion?[5]

 One example of a strong consent agreement in the cruise ship industry concerns the application of American Cruise Lines’ American Constellation. The application was not initially approved because there was another cruise ship named Constellation. The agreement states:

 1.     Applicant always refers to its ship as American Constellation and agrees not to refer to it as Constellation;

2.     Cruise ship services customers exercise a heightened degree of care when selecting a cruise ship service; 

3.     Cruise ship services customers know that Applicant uses “American” as a house mark;

4.     For over ten years, Applicant’s American Independence cruise liner and Royal Caribbean’s Independence of the Seas cruise liner have coexisted without any reported instances of confusion; and 

5.     Applicant and Registrant agree that confusion is unlikely because different cruise lines operate numerous ships under names that share terms in common. Examples include Carnival’s Legend and Royal Caribbean’s Legend of the Seas; and Applicant’s Independence and Royal Caribbean’s Independence of the Seas.[6]



The Trademark Trial and Appeal Board held that great weight should be given to a consent agreement in which “competitors have clearly thought out their commercial interests.”[7]

 A “naked” consent agreement is a consent agreement that only contains permission to register the mark and a brief statement that confusion is unlikely. This is generally less persuasive to the USPTO than a more detailed agreement. An example of a naked consent agreement that the USPTO did not find persuasive is as follows:

 1.     Applicant agrees to limit its goods to the goods identified above.

2.     Registrant consents to Applicant’s use and registration of its mark for the goods identifies above, and states that such use does not create a likelihood of confusion with Registrant’s registration.

3.     If either party should become aware of any instances of actual confusion between the parties with respect to their respective use of their respective marks for their respective goods, that party will promptly notify the other party of the circumstances of such confusion, and both parties shall cooperate in taking any reasonable action for avoiding any future confusion.[8]

Overall, consent agreements should be as comprehensive and detailed as possible. If you have a strong agreement with specific details and evidence for why the marks won’t confuse customers and a detailed plan for how to avoid potential future confusion, a consent agreement may be persuasive in helping you register your trademark with the USPTO!


BY: Andi Ramsay


[7] https://www.managingip.com/article/b1kblyn2vst4rw/us-ttab-clarifies-requirements-for-consent-agreements

[8] https://www.altlegal.com/blog/how-to-use-a-trademark-consent-agreement-to-overcome-a-2d-refusal/

[6] https://www.altlegal.com/blog/how-to-use-a-trademark-consent-agreement-to-overcome-a-2d-refusal/


[4] https://www.brownwinick.com/blog/trademark-consent-and-coexistence-agreements

[5] In re A-Plant 2000 Aps, Serial No. 79162833 (Aug. 25, 2017); https://www.ny-trademark-lawyer.com/consent-agreements-may-be-rejected-by-the-uspto.html


[3] https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e6229.html

[1] https://www.uspto.gov/trademarks/search/likelihood-confusion#:~:text=Likelihood%20of%20confusion%20exists%20between,come%20from%20the%20same%20source.

[2] https://www.uspto.gov/trademarks/search/likelihood-confusion#:~:text=Likelihood%20of%20confusion%20exists%20between,come%20from%20the%20same%20source.

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