By Jason H. Kasner
A recent precedential decision of the Trademark Trial and Appeal Board (“TTAB”) sheds some light on how the TTAB evaluates consent agreements between parties with potentially conflicting trademarks. In the case In re American Cruise Lines, Inc., the TTAB held that the mark AMERICAN CONSTELLATION for cruise ship services was not likely to be confused with the prior registered mark CONSTELLATION for the same services. In Re Am. Cruise Lines, Inc., 128 U.S.P.Q.2d 1157 (T.T.A.B. Oct. 3, 2018).
What are consent agreements?
The U.S. Patent and Trademark Office’s Trademark Manual of Examining Procedure (“TMEP”) defines a consent agreement as “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.” TMEP §1207.01(d)(viii). These agreements are often presented as evidence in favor of registration of the junior user’s mark following a USPTO refusal to register based on a likelihood of confusion with the senior user’s registered mark. Consent agreements typically include provisions such as limitations on the goods and services to be offered under the respective marks, requirements for presenting the marks (i.e., in a particular font/style and/or with a design element), and the measures the parties will take to avoid confusion in the marketplace. The evidentiary weight and probative value of consent agreements are generally determined on a case-by-case basis, with some limited guidance offered in the TMEP. Id.
The TTAB decision: Do consent agreements need to include provisions for avoiding confusion?
The TTAB considered various consent agreements entered into between the applicant and the owner of the cited CONSTELLATION trademark registration. The USPTO Examining Attorney who had reviewed and rejected the application argued that the consent agreements were not probative on the question of likelihood of confusion since they contained no provision that the parties make efforts to prevent confusion or to cooperate and take steps to avoid any confusion that may arise in the future. The TTAB disagreed, holding that such provisions are not required.
Provisions of this nature are typically seen in trademark consent agreements, but this precedential decision clarified the TTAB’s position that while these provisions may render the agreement more probative in a likelihood of confusion analysis, they are not mandatory.
Consent agreements are a common tool for owners of potentially-conflicting trademarks to allow them to co-exist without causing confusion to consumers and obtain important protections of trademark registration. If your company’s trademark registration has been refused on the basis of a prior registration, we can assist with overcoming the refusal, which can include filing an appropriate consent agreement.