Monday, February 29, 2016

Precedential No. 3: Despite Consent Agreement, TTAB Finds TIME TRAVELER BLONDE Confusable With TIME TRAVELER for Beer

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., 117 USPQ2d 1958 (TTAB 2016) [precedential].

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.

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.

Read comments and post your comment here.

TTABlog comment: In my experience, most consent agreements say nothing about geographical restrictions. So the Board has definitely raised the bar, don't you think? Or are the marks and goods here just too close for comfort?

Further comment: If geographical restrictions are needed to avoid confusion, then a concurrent use proceeding is the appropriate vehicle. If other differences are sufficient to avoid confusion, then geographical restrictions may be okayed without a concurrent use proceeding if that is part of the consent agreement. Isn't that what this case and the Holmes Oil case are saying?

Text Copyright John L. Welch 2016.


At 7:55 AM, Anonymous Anonymous said...

Agreed; I've never put anything in a consent and co-existence about geographical restrictions.

At 9:43 AM, Anonymous Dave B said...

When properly set up so as to avoid confusion, territorial limitations can be entitled to should be entitled to considerable weight. When they are written to express implausible premises -- we're going to sell in overlapping territories -- they are not credible and can bring down the rest of the terms, like restrictions on label appearance and presence of house marks.

At 9:46 AM, Blogger John L. Welch said...

If geographical restrictions are needed to avoid confusion, then a concurrent use proceeding is the appropriate vehicle. If other differences are sufficient to avoid confusion, then geographical restrictions may be okayed without a concurrent use proceeding if that is part of the consent agreement. Isn't that what this case and the Holmes Oil case are saying?

At 5:14 PM, Anonymous Anonymous said...

If the TTAB is saying that IT has determined that the goods are too close for comfort, then I think it will need to defend itself to the CAFC from playing cat again --
In In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993), the Court, in reversing the Board’s decision affirming a Section 2(d) refusal, stated the following:
Not for the first time, the “misguided efforts” of the PTO have led the Board to mistakenly “take it upon itself to prove facts, quite unnecessarily and by reasoning entirely its own, to establish a case of likelihood of confusion when not asked to do so.” Bongrain Int’l (Am.) Corp. v. Delice De France, Inc., 811 F.2d 1479, 1485, 1 USPQ2d 1775, 1779 (Fed. Cir. 1987). 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. ...” In re Nat’l Distillers & Chem. Corp., 297 F.2d 941, 948, 132 USPQ 271, 277 (CCPA 1962) (Rich, J., concurring). 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.” 297 F.2d at 950-51, 132 USPQ at 279.

At 7:19 PM, Blogger John L. Welch said...

So you think there is no role for the TTAB to play on the issue of consents to register?
PS: The Board distinguished Four Seasons on the facts.

At 10:04 AM, Anonymous ER said...

Do you all put specific reasons in consent agreements as to why the parties do not believe there is a likelihood of confusion? (see fn. 13)


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