When the USPTO issues a refusal to register a trade mark application based upon a likelihood of confusion with an existing third party registration covering a similar mark, one option that the owner of the refused application has available to it is to approach the owner of the cited registration to obtain a Consent to Registration. A Consent to Registration is essentially a written acknowledgement by the owner of a trade mark registration, which can be submitted to the PTO, attesting that there is no likelihood of confusion between the mark that is the subject of the existing registration and the mark that is the subject of the pending application.
The theory behind the Consent to Registration is that if the owner of the trade mark registration cited as the basis for a likelihood of confusion refusal does not believe that there is any confusion between the marks, then the PTO should, in turn, withdraw such refusal. However, a Consent to Registration from the owner of the trade mark registration at issue is just one of several factors considered by the PTO when deciding whether to withdraw a likelihood of confusion refusal. A Consent to Registration, alone, without additional evidence, is often inadequate to persuade the PTO to withdraw the refusal. Therefore, there are certain cautions that parties should bear in mind when preparing a Consent to Registration to ensure that such Consent will be accepted by the PTO and result in the withdrawal of the likelihood of confusion refusal.
A Consent to Registration is insufficient to overcome a likelihood of confusion refusal if it does not set forth reasons why the parties believe that there is no likelihood of confusion between the marks and if it fails to describe the arrangements undertaken by the parties to avoid potential confusion. Accordingly, the Consent to Registration should be sufficiently detailed to describe the relevant circumstances bearing on a likelihood of confusion determination, including: (1) whether the parties have entered into a co-existence agreement; (2) an indication as to whether the goods and/or services covered by the marks at issue are distributed (in the case of goods) or rendered (in the case of services) through separate channels; (3) whether the parties have agreed to restrictions on their respective fields of use; (4) whether the parties have agreed to cooperate with one another for the purposes of avoiding any instances of actual confusion between their respective marks that may arise in the future; and (5) whether the marks have been used for a period of time without evidence of actual confusion.
Recently, the PTO appears to have taken a more rigid approach with respect to likelihood of confusion refusals generally, resulting in, among other things, greater scrutiny of Consents to Registration submitted in response to such refusals. It is important, therefore, that any Consent to Registration is carefully worded to address the various factors that the PTO considers relevant when making a likelihood of consideration determination. Similarly, when seeking a Consent to Registration, the owner of the trade mark application at issue would be wise to include a mechanism pursuant to which the party providing the Consent agrees to provide whatever additional written consents are necessary to give effect to the intention of the Consent to Registration.
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| Karen Artz Ash and Bret J Danow |
Cohen Pontani Lieberman & Pavane LLP
551 Fifth Avenue
New York, NY 10176
United States
Tel: +1 212 687 2770
Fax: +1 212 972 5487
eweisz@cplplaw.com
www.cplplaw.com