Wednesday, January 12, 2011

Precedential No. 50: TTAB Says Consent and License from Registrant Require Reversal of 2(d) Refusal of WACKER NEUSON over NEUSON for Machinery

The Board reversed a refusal to register the mark WACKER NEUSON for work machines for the building and the building material industries, finding it not likely to cause confusion with the registered mark NEUSON for "construction machines, namely, excavators." Applicant dug itself out of the 2(d) hole by submitting a consent agreement and a license from the Registrant, which the Board found sufficient to outweigh the other du Pont factors. In re Wacker Neuson SE, 97 USPQ2d 1408 (TTAB 2010) [precedential].

There was little dispute that the marks are similar and the goods related. The Examining Attorney argued that the consent was "naked" and that the facts did not support a finding of "unity of control" such that applicant and registrant could be considered the same source.

The Board reviewed the law as to "how much weight should be given to a consent agreement and the perspective on what constitutes a single source." First, for background, it revisited the CAFC's statement regarding the PTO's role in In re Four Seasons Hotels Ltd., 26 USPQ2d 1071 (Fed. Cir. 1993):

Believing that its role in enforcing section 2(d) of the Lanham Act is to second-guess the conclusions of those most familiar with the marketplace, the PTO "is, at times, like a cat watching the wrong rat hole." The role of the PTO is not in "deny[ing] registration if it feels there is, by its independent determination, any likelihood of confusion of any kind as between the mark sought to be registered and the prior registration, without regard to the desires, opinions or agreements of the owner of the prior registration. ..." *** Rather, the PTO’s role is to protect owners of trademarks by allowing them to register their marks. Denial of registration does not deny the owner the right to use the mark, and thus, will not serve to protect the public from confusion. "No government could police trademark use so as to protect the public from confusion. It must count on the self-interest of trademark owners to do that." [citations omitted].

As to the "unity of control" issue, the Board noted that "in some circumstances, where there is a relationship, but perhaps not the 'unity of control' envisioned by the Wella doctrine, a consent from a related company may suffice." See In re Sumitomo Electric Indus., Ltd., 184 USPQ 365 (TTAB 1974):

While this letter of consent does not constitute an agreement of the type involved in the Du Pont case, this does not mean that it is unacceptable herein. Each agreement submitted in support of registration must necessarily be judged for its particular value in light of the particular circumstances surrounding the relationship or arrangement between the parties thereto. In the instant case, the relationship between the parties, both members of the “Sumitomo Group” makes the letter of consent a viable one and one on which we can conclude that confusion is not reasonably likely to occur. That is, the parties undoubtedly work hand-in-hand to avoid confusion in trade which would be inimical to their best interests, and they are in a position to expeditiously correct any situation that could possibly give rise to confusion in the marketing of their respective goods.

Reviewing the consent agreement and the license submitted by Applicant, the Board found that they "outweigh the other du Pont factors." Registrant clearly consented (albeit in a "thin consent") to applicant's use and registration of WACKER NEUSON. Moreover, the parties are related and the goods and services under both marks are provided by Applicant. The license agreement acknowledges applicant's right to register and use the WACKER NEUSON mark, and an addendum recognizes "applicant's proprietary rights in the WACKER NEUSON trademark, inasmuch as it provides that applicant grants registrant a right to use the NEUSON mark in the event that applicant's 'industrial property rights in the WACKER NEUSON trademark' otherwise prevents such use."

Therefore, based on the "particular circumstances surrounding the relationship [and] arrangements between the parties," the Board concluded that confusion "is not reasonably likely to occur."

TTABlog comment: Although the facts of this case may be rather unique, the decision may come in handy when one wants to remind an examining attorney of the PTO's role in reviewing agreements between an applicant and a registrant.

Text Copyright John L. Welch 2011.


At 10:41 AM, Anonymous Rob said...

John, if you were to compile a list of "Top Ten Losing Examiner's Grounds for Refusal," a refusal to accept a consent agreement should definitely occupy the top spot. In practice, these refusals are virtually never upheld. So although it's sometimes easier to amend the agreement if that's what it takes to get the examiner pleased, you can just as well appeal. The chances of such refusal remaining after Board or CAFC review are slim.

At 12:54 PM, Anonymous Dailey Pike said...

"Applicant dug itself out of the 2(d) hole..."

You're missing your calling Mr. Welch.

You are the Johnny Carson of trademark law.



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