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Competitors’ Consent to Use Agreement Does Not Always Overcome Likelihood of Confusion

In the case of  In re Bay State Brewing Company, Inc., Serial No. 85826258 (TTAB February 26, 2016) (Available Here), the Trademark Trial and Appeal Board (“TTAB”) found the parties consent agreement was outweighed by other relevant likelihood of confusion factors, namely, that the marks are virtually identical, the goods, trade channels and purchasers are identical, and the goods are subject to impulse purchasing.  In sum, the TTAB found that the persons in the overlapping geographic area are likely to be confused between the marks regardless of the consent agreement.

    Bay State Brewing Company, Inc. (herein “Bay”) sought registration for TIME TRAVELER BLONDE (BLONDE disclaimed) for beer in International Class 32.   The Trademark Examining Attorney refused registration under 15 U.S.C. § 1052(d), on the ground that Bay’s mark, when used for Bay’s goods, so resembles the previously registered mark TIME TRAVELER for “beer, ale, and lager” in International Class 32, as to cause a likelihood of confusion.

    Bay asserted that the parties had entered into a Consent to Use and Register Agreement and agreed that confusion is likely unless the parties adhere to the terms of the agreement.  The TTAB then considered the impact of the consent agreement in its likelihood of confusion analysis.

    The TTAB found the Consent Agreement relates to one Dupont factor, namely, market interface between BAY and Registrant, the owner of TIME TRAVELER.  In analyzing the second Dupont factor, the similarity between Bay’s  and Registrant’s goods, the TTAB found the goods identical.  As for the third factor, trade channels and purchasers, the TTAB found that because the goods are identical, it can be presumed the channels of trade are identical.  These factors weigh heavily in favor of finding a likelihood of confusion.  The Dupont factor of conditions of a sale also weigh heavily in favor of a likelihood of confusion as beer is a relatively inexpensive product subject to impulse buying.

    The TTAB found that, for the first Dupont factor relating to the similarity of the marks, TIM E TRAVELER and TIME TRAVELER BLONDE are virtually identical in sound, are presumed virtually identical in appearance as they are standard character word marks, and are even closer in meaning and commercial impression given the arbitrary nature of TIME TRAVELER for the identical goods.  The term BLONDE does nothing to distinguish the marks as it merely describes it as a “Blonde” brew.  This factor weighs heavily in favor of a finding of a likelihood of confusion.

    In respect of the Consent Agreement, the Examiner found it did not override the Dupont factors favoring a likelihood of confusion.  The TTAB agreed with the Examiner. The Consent Agreement provides Bay will not use its mark outside of New England and State of New York, while Registrant’s use is not geographically limited.  Hence both marks will be used in the overlapping territories of New England and State of New York.  Bay was not seeking a concurrent use registration with geographic limited scope.  Additionally, the geographic limitations would not be reflected in the resulting registration and thus the registration would be misleading.

    Moreover, the agreed use of a house mark does not alleviate confusion.  Further the terms of the agreement do not limit the parties to any particular trade dress other than that of the other party.  The TTAB found that Bay improperly required a decision, not on the mark as applied for, but as promised (including the house mark and trade dress).

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