US: TTAB clarifies requirements for consent agreements
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

US: TTAB clarifies requirements for consent agreements

The Trademark Trial and Appeal Board (TTAB) issued a precedential opinion in In re American Cruise Lines, Inc. regarding the necessary provisions for an acceptable consent to registration. In doing so, the TTAB provided clarification and guidance to trade mark owners who are negotiating and drafting consent agreements.

American Cruise Lines filed a trade mark application for the mark AMERICAN CONSTELLATION covering cruise ship services. The USPTO refused to register the mark based on a likelihood of confusion with the registered marks CONSTELLATION and CELEBRITY CONSTELLATION, each owned by the same registrant and covering identical services. During the prosecution of its application, in its attempts to overcome the likelihood of confusion refusal, American Cruise Lines submitted two consent agreements between it and the owner of the cited registrations. The USPTO examiner did not accept either consent agreement and maintained the refusal. American Cruise Lines then appealed the refusal to the TTAB.

The second consent agreement submitted listed five reasons why the parties believed that confusion was not likely. However, the examiner argued that it was still a "naked" consent because it did not describe the arrangements undertaken by the parties to avoid confusion, did not include an express undertaking by the parties to make efforts to prevent confusion or to cooperate with one another and take steps to avoid any confusion that may arise in the future. A "naked consent agreement" is one that contains little more than the registrant's consent to registration and, sometimes, a statement that confusion is believed to be unlikely. Naked consent agreements are generally not sufficient to overcome a likelihood of confusion refusal.

The TTAB found that the second consent agreement was not, in fact, a naked one. It held that "a provision in the consent agreement that the parties agree to make efforts to prevent confusion or to cooperate and take steps to avoid confusion that may arise in the future may render the agreement more probative, but it is not an essential provision for the agreement to have probative value." The TTAB noted that the consent agreement at issue included several credible reasons that the parties consider confusion to be unlikely and held that "while the inclusion of provisions to avoid any potential confusion are preferred and probative in consent agreements, they are not mandatory."

The TTAB ruled that a consent agreement in which "competitors have clearly thought out their commercial interests" should be given great weight and that the examiner should not substitute its judgment concerning the likelihood of confusion between two marks for the judgment of the real parties in interest. Accordingly, the TTAB reversed the refusal to register the AMERICAN CONSTELLATION mark.

This decision is instructive because it confirms that the TTAB will give great deference to contracting parties who have entered into a consent agreement and that parties to a consent agreement do not necessarily need to include provisions about taking steps to avoid confusion in order for the consent to be accepted. Nonetheless, given the TTAB's indication that such provisions are preferred and probative, it continues to be advisable to include such provisions.

ash-karen-artz.jpg

danow.jpg

Karen Artz Ash

Bret J Danow

Katten Muchin Rosenman LLP 

575 Madison Avenue

New York, NY 10022-2585

United States

Tel: +1 212 940 8554

Fax: +1 212 940 8671

karen.ash@kattenlaw.com

www.kattenlaw.com

more from across site and ros bottom lb

More from across our site

A 36-member team from Zhong Lun Law Firm, including six partners, will join the newly formed East IP Group
The Delhi High Court sided with Ericsson against Indian smartphone maker Lava, bringing the companies' nine-year dispute to a close
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article