Tuesday, August 16, 2011

Rejecting Naked Consent, TTAB Affirms 2(d) Refusal of ONE-STEP for Glucose Monitoring Gear

Sometimes the Board will give probative weight to a naked consent [See, for example, this TTABlog posting], but not this time. The Board affirmed 2(d) refusals of the marks ONE STEP and ONE-STEP for glucose monitoring systems and related devices, finding them likely to cause confusion with the registered mark ONE-STEP in standard character and design form, and with the design mark shown below [SAFETY LANCET disclaimed] for blood sampling prickers. In re Intuity Medical, Inc., Serial Nos. 77416484 and 77416487 (July 26, 2011) [not precedential].

The Board found the marks to be "virtually identical" and, in light of third-party registration and website evidence provided by Examining Attorney Khanh M. Le, the goods to be related. "[T]he term 'blood sampling prickers' is broad enough to encompass blood drawing devices used in connection with monitoring blood glucose levels."

Applicant argued that purchasers of the goods would exercise a high degree of care, but the Board concluded that the similarity of the marks and the relatedness of the goods outweigh this higher care in the 2(d) analysis.

Finally, Applicant pointed to a letter of consent signed by the owner of the three cited registrations. The letter, in its entirety, reads as follows:

Pursuant to the Settlement and Co-Existence Agreement dated as of the date hereof by and among [applicant] and [registrant], [registrant] hereby grants its consent for [applicant] to use and obtain registration in the United States and internationally of its ONE STEP and ONE-STEP marks in connection with the following goods: blood glucose monitoring systems including the devices, and parts and accessories thereof in Class 10. (Emphasis in the original).

The Examining Attorney found the letter insufficient because "it neither (1) sets forth reasons why the parties believe there is no likelihood of confusion, nor (2) describes the arrangements undertaken by the parties to avoid confusing the public." Applicant explained that the parties entered into a detailed settlement agreement but that the terms were confidential, and Applicant refused to disclose them.

Applicant argued that the letter "should be given great weight" and that the Board "must honor the parties' position." The Board disagreed.

A “naked consent,” as presented by applicant in this case, carries little weight as compared to a more detailed agreement. *** [T]he consent agreement or letter of consent should reflect the relevant du Pont likelihood of confusion factors. (citation omitted) In this case, the letter of consent is conspicuously silent as to the underlying facts which led registrant to the conclusion that there is no likelihood of confusion.

The Board found it difficult to imagine "how the facts supporting the purported differences in the marks, the goods, their channels of trade, and the classes of consumers, as well as the degree of consumer care constitute confidential information." Since there was no credible explanation for the omission of this type of information from the consent letter, that Board concluded that it has "little, if any, probative value."

Balancing the relevant duPont factors, the Board affirmed the refusal.

Text Copyright John L. Welch 2011.


At 8:47 PM, Blogger Pamela Chestek said...

Interesting point about the confidentiality provision in the settlement agreement. A good lesson that one should carve out of the confidentiality provisions of the agreement that the agreement can be disclosed in furtherance of the agreed-upon terms for use and registration.

At 6:05 PM, Anonymous Anonymous said...

I have a situation concerning a Consent Agreement that I hope someone can help.

The Examiner suspended my application due to a pre-existing application. I responded to the Suspension Letter with a copy of a Consent Agreement from the owner of the other application. But, the Examiner has maintained the suspension without explanation.

Is this proper? Do I have to wait until the other application results in a registration (or abandonment) in order to submit the Consent? Is there any case law or rule on this issue (e.g., interplay between Notice of Suspension and Consent Agreements).


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