Likelihood of Confusion - Other Facts Probative of the Effect of Use



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  • That a party earlier indicated a contrary opinion respecting the conclusion in a similar proceeding involving similar marks and goods is a fact, and that fact may be received in evidence as merely illuminative of shade and tone in the total picture confronting the decision maker. To that limited extent, a party's earlier contrary opinion may be considered relevant and competent. Under no circumstances, may a party's opinion, earlier or current, relieve the decision maker of the burden of reaching his own ultimate conclusion on the entire record.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • "That a party earlier indicated a contrary opinion respecting the conclusion in a similar proceeding involving similar marks and goods is a fact, and that fact may be received in evidence as merely illuminative of shade and tone in the total picture confronting the decision maker. To that limited extent, a party's earlier contrary opinion may be considered relevant and competent. Under no circumstances, may a party's opinion, earlier or current, relieve the decision maker of the burden of reaching his own ultimate conclusion on the entire record." Interstate Brands Corp. v. Celestial Seasonings, Inc., 198 USPQ at 154.
  • A determination of likelihood of confusion must be based on the facts and record before the TTAB, who is not bound by the previous examining attorney's determination that applicant's mark was registrable.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • "As the Board stated in In re Thomas: ""Further, our determination of likelihood of confusion must be based on the facts and record before us. We are not bound by the previous examining attorney's determination that applicant's mark was registrable, and we will not compound the problem of the registration of a confusingly similar mark by permitting such a mark to register again."" 79 USPQ2d at 1028. See also In re Perez, 21 USPQ2d 1075, 1077 (TTAB 1991) (Section 2(d) refusal affirmed even though the cited registration had not been cited against applicant's previous registration, now expired, of the same mark for the same goods; "[W]e are, of course, not bound by an Examining Attorney's prior determination as to registrability."). See generally In re Omega SA, 404 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007); In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001)."
  • The doctrine of "file wrapper estoppel" does not apply in trademark cases.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • Defendant overstates the effect of plaintiff's consent agreement with the Army and Air Force Exchange Service. The doctrine of "file wrapper estoppel" does not apply in trademark cases. Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 963 (TTAB 1986).
  • Evidence: Survey evidence showed the contrary, that confusion was likely.
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006)
      • Third, applicant argues that the obviousness of the joke, when combined with the fame of the STARBUCKS brand, diminishes any likelihood of confusion. However, the results of opposers' survey provide evidence to the contrary. See Columbia Pictures Industries, Inc. v. Miller, 211 USPQ 816, 820 (TTAB 1981). The high levels of confusion between the LESSBUCKS COFFEE and STARBUCKS marks reflected in Mr. Reitter' survey establish beyond any doubt that prospective purchasers of applicant's LESSBUCKS COFFEE goods and services are, in fact, likely to believe that both parties' goods and services come from the same source.
  • The TTAB is not bound by the decision of the prior Trademark Examining Attorney. We must decide this case based on the evidence which is before us now.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • For whatever reason, the Trademark Examining Attorney who examined applicant's prior application did not refuse registration under Section 2(d) based on the previous 960 and 634 registrations that are cited against applicant in its current application. However, the Board is not bound by the decision of the prior Trademark Examining Attorney. We must decide this case based on the evidence which is before us now.
  • Applicant's cancelled registration does not justify registration of its current application. A cancelled registration is not entitled to any of the statutory presumptions of Section 7(b).
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • However, applicant is not automatically entitled to a return to the status quo. As the Board stated in In re Ginc UK Ltd., 90 USPQ2d at 1480: "Nor does applicant's cancelled registration justify registration of its current application. A cancelled registration is not entitled to any of the statutory presumptions of Section 7(b) of the Trademark Act. See, e.g., In re Hunter Publishing Company, 204 USPQ 957, 963 (TTAB 1979) (cancellation "destroys the Section [7(b)] presumptions and makes the question of registrability a new ball game' which must be predicated on current thought.")."
  • The fact that there already may be two confusingly similar marks co-existing on the Register and owned by different owners, which arguably should not have registered over each other, does not relieve the TTAB of its duty to determine the registrability of the applicant's mark on the record currently before it, nor does it justify the addition to the Register of what may be yet another confusingly similar mark.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • However, it is settled that the fact that there already may be two confusingly similar marks co-existing on the Register and owned by different owners, which arguably should not have registered over each other, does not relieve the Board of its duty to determine the registrability of the applicant's mark on the record currently before it, nor does it justify the addition to the Register of what may be yet another confusingly similar mark. See, e.g., In re Paper Doll Promotions Inc., 84 USPQ2d 1660, 1670 (TTAB 2007)("...our decision on the registrability of applicant's mark must be based on the record in this case and not on the fact that two arguably similar marks have been allowed for registration by the Office."); Mattel Inc. v. Funline Merchandise Co., 81 USPQ2d 1372, 1375 (TTAB 2006)(regarding the co-existence on the register of two third-party registrations of arguably confusingly similar marks, "... it is settled that the determination of registrability of those particular marks by the trademark examining attorneys cannot control our decision in the case now before us.").
  • Even when one registration issues over the other and both exist side-by-side for some period of time that is but one element considered in resolving the question of likelihood of confusion, but which is not in the least determinative of said issue.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • "In a similar case, the Board noted: ""We can only speculate as to why the cited registration issued over applicant's predecessor's now-cancelled registration. In any event, even when one registration issues over the other and both exist side-by-side for some period of time (in this case about six years), that is one element "which is placed in the hopper with other matters which ordinarily are considered in resolving the question of likelihood of confusion, but which is not in the least determinative of said issue." In re Trelleborgs Gummifabriks Aktiebolag, 189 USPQ 106, at 107 (TTAB 1975). In this case, we find that the factors of the identical goods and highly similar marks far outweigh this point in our consideration of likelihood of confusion as a whole."" In re Kent-Gambore Corp., 59 USPQ2d 1373, 1377 (TTAB 2001)."
  • The fact that registrations cited against applicant in its current application were not cited as Section 2(d) bars to issuance of applicant's now cancelled prior registration does not automatically justify re-registration of applicant's mark, if the evidence as a whole in the current application establishes that a likelihood of confusion exists.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • In short, the fact that the two registrations cited against applicant in its current application were not cited as Section 2(d) bars to issuance of applicant's now cancelled prior registration does not automatically justify re-registration of applicant's mark (i.e., applicant's requested return to the status quo which existed prior to the Section 8 cancellation of applicant's prior registration), if the evidence as a whole in the current application establishes that a likelihood of confusion exists.
  • Plaintiff's opinion that the marks will not cause confusion does not rise to the level of an admission against interest.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • Nor does plaintiff's opinion that the marks ANTHONY'S PIZZA & PASTA and ANTHONY'S PIZZA THE WORLD'S GREATEST will not cause confusion rise to the level of an admission against interest. Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 153-154 (CCPA 1978) (likelihood of confusion is a legal conclusion, therefore, it cannot be an admission because only facts may be admitted).
  • When those most familiar with use in the marketplace and most interested in precluding confusion enter an agreement designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won't.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • Plaintiff's willingness to execute a coexistence agreement in a situation where it believed that the parties' different channels of trade would avoid confusion epitomizes the type of circumstance in which the Federal Circuit has encouraged such agreements. Bongrain International (American) Corporation v. Delice de France Inc., 811 F.2d 1479, 1 USPQ2d 1775, 1779 (Fed. Cir. 1987) (the Board should accept the parties' reasonable appraisal of marketplace conditions); In re E. I. du Pont de Nemours & Co., 177 USPQ at 568 ("when those most familiar with use in the marketplace and most interested in precluding confusion enter an agreement designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won't").
  • Discussion of the Freedom Card, Inc. v. JP Morgan Chase & Co. and Petro Shopping Centers, L.P. v. James River Petroleum cases.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • The cases relied upon by defendant, Freedom Card, Inc. v. JP Morgan Chase & Co., 432 F.3d 463, 77 USPQ2d 1515 (3d Cir. 2005) and Petro Shopping Centers, L.P. v. James River Petroleum, 130 F.3d 88, 44 USPQ2d 1921 (4th Cir. 1997), do not dictate a different conclusion. In each case, the respective courts considered the plaintiff's contrary position as being "illuminative of shade and tone in the total picture confronting the decision maker" when considered in context with the other evidence. The plaintiffs in those cases both argued to the U.S. Patent and Trademark Office that they should be able to register their marks because of the widespread and common use of the marks at issue. In Freedom Card, Inc. v. JP Morgan Chase & Co., 77 USPQ2d at 1525, the court found that plaintiff's earlier, contrary statements regarding the widespread use of the word "freedom," undermined plaintiff's attempt to prove likelihood of confusion. Similarly, in Petro Shopping Centers, L.P. v. James River Petroleum, 44 USPQ2d at 1926, the court found that plaintiff's "own representations to the PTO in 1981 [regarding the widespread use of the word "petro"] undercut the company's current argument to this court." (Emphasis added). However, in this case, plaintiff never argued that it is entitled to register its mark because of the widespread use of the name "Anthony's" in connection with restaurant services. Moreover, the plaintiffs in Freedom Card, Inc. v. JP Morgan Chase & Co. and in Petro Shopping Centers, L.P. v. James River Petroleum did not subsequently testify, as plaintiff did here, that time and experience proved that their earlier position was wrong.
  • The fact that opposer learned that it was incorrect in its belief that confusion was not likely does not detract from the business considerations that went into the consent agreement.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • The fact that opposer learned that it was incorrect in its belief that confusion was not likely does not detract from the business considerations that went into the consent agreement.48 However, the subsequent evidence of actual confusion is relevant to our decision in the present case:
  • The miscellaneous thirteenth du Pont factor requires us to consider any other established fact probative of the effect of use.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • The miscellaneous thirteenth du Pont factor requires us to consider "any other established fact probative of the effect of use."
  • Under the miscellaneous thirteenth du Pont likelihood of confusion factor, the TTAB may take into account the facts pertaining to applicant's prior registration.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Thus, under the miscellaneous thirteenth du Pont likelihood of confusion factor, we have taken into account the facts pertaining to applicant's prior registration. We find that they weigh in applicant's favor to a degree, but they are not determinative.
  • An opposer may rely on prior intrastate use of its mark.
    • Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (TTAB 2010)
      • Tucker also argues that TxDOT has not made significant use of its mark outside of Texas. Accepting this assertion as true for the sake of deciding the pending motion, it does not aid Tucker, as prior significant use in Texas, a use not in genuine dispute, is sufficient. See First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007) (an opposer may rely on prior intrastate use of its mark), and National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1429 (Fed. Cir. 1991) (a petitioner may rely on prior intrastate use of its mark).
  • Under the thirteenth du Pont factor, the TTAB will consider applicant's arguments with respect to the ownership histories of the two registrations cited as Section 2(d) bars to registration of applicant's mark in the current application.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • We also shall consider, under the thirteenth du Pont factor, applicant's arguments with respect to the ownership histories of the two registrations cited as Section 2(d) bars to registration of applicant's mark in the current application.
  • Plaintiff's coexistence agreement with a third-party does not prohibit plaintiff from attempting to prove likelihood of confusion between its mark and anothers.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • We do not consider plaintiff's position taken to secure a registration in the face of the previously registered ANTHONY'S PIZZA THE WORLD'S GREATEST as materially detracting from its position here that defendant's use of the mark Anthony's Coal-Fired Pizza (with and without the design) and ANTHONY'S PIZZA & PASTA are confusingly similar marks. Plaintiff's coexistence agreement with the Army and Air Force Exchange Service does not prohibit plaintiff from attempting to prove likelihood of confusion between ANTHONY'S PIZZA & PASTA and Anthony's Coal-Fired Pizza.
  • Case Finding: We shall consider under this factor the evidence and arguments applicant has heavily relied upon pertaining to the assignment and prosecution histories of the two cited registrations and of its prior (now cancelled) registration.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • We shall consider under this factor the evidence and arguments applicant has heavily relied upon pertaining to the assignment and prosecution histories of the two cited registrations and of its prior (now cancelled) registration.
  • One must look at all of the surrounding circumstances, as in DuPont, to determine if the consent reflects the reality of no likelihood of confusion in the marketplace, or if the parties struck a bargain that may be beneficial to their own interests, regardless of confusion of the public. If the evidence of record establishes facts supporting an applicant's argument that the two uses can exist without confusion of the public, even a "naked" consent to registration is significant additional evidence in support of the applicant's position.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • Further, in Mastic, the "consent is conspicuously silent on what are the underlying facts which led the parties to their conclusion of no likelihood of confusion." Id. Unlike Mastic, the record here is not silent as to the arrangements between applicant and registrant and how that implicates possible confusion. As stated in Mastic:
        "One must look at all of the surrounding circumstances, as in DuPont, to determine if the consent reflects the reality of no likelihood of confusion in the marketplace, or if the parties struck a bargain that may be beneficial to their own interests, regardless of confusion of the public. For example, the parties may prefer the simplicity of a consent to the encumbrances of a valid trademark license. However, if the goods of the parties are likely to be attributed to the same source because of the use of the same or a similar mark, a license (not merely a consent) is necessary to cure the conflict. ... If the evidence of record establishes facts supporting an applicant's argument that the two uses can exist without confusion of the public, even a "naked" consent to registration is significant additional evidence in support of the applicant's position."
        Id. (emphasis added)
  • In cases involving agreements reflecting parties' views on the likelihood of confusion in the marketplace, that they are in a much better position to know the real life situation than bureaucrats or judges and therefore such agreements may, depending on the circumstances, carry great weight.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • Finally, 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 selfinterest of trademark owners to do that." 297 F.2d at 950-51, 132 USPQ at 279." See also Bongrain International v. Delice de France, 811 F.2d 1479, 1 USPQ2d 1775, 1778 (Fed. Cir. 1987) ("We have often said in trademark cases involving agreements reflecting parties' views on the likelihood of confusion in the marketplace, that they are in a much better position to know the real life situation than bureaucrats or judges and therefore such agreements may, depending on the circumstances, carry great weight ... Here, the board appears effectively to have ignored the views and conduct of the parties").
  • There must be a unity of control over the use of the trademarks.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • However, there must be a "unity of control over the use of the trademarks." Id.
  • With regard to the issue of single source, where separate legal entities constitute the same source, a refusal under Section 2(d) may not stand.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • With regard to the issue of single source, where separate legal entities constitute the same source, a refusal under Section 2(d) may not stand. In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987), reversed and remanded on other grounds, In re Wella A.G., 8 USPQ2d 1365 (Fed. Cir. 1988).
  • Depending on the surrounding circumstances even a naked consent to registration is significant additional evidence in support of the applicant's position.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • As noted by the Court in Mastic, depending on the surrounding circumstances "even a 'naked' consent to registration is significant additional evidence in support of the applicant's position." Mastic, 4 USPQ2d at 1295.
  • In these hybrid situations, the consent may not be clothed in the same manner as would be required from separate entities without any relationship to each other.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • In these hybrid situations, the consent may not be "clothed" in the same manner as would be required from separate entities without any relationship to each other.
  • In some circumstances, where there is a relationship, but perhaps not the level of unity of control envisioned by the Wella doctrine, a consent from the related company may suffice.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • Finally, in some circumstances, where there is a relationship, but perhaps not the level of "unity of control" envisioned by the Wella doctrine, a consent from the related company may suffice.
  • In Wella this "unity of control" was sufficiently evidenced by a declaration establishing that the applicant owned substantially all the outstanding stock of the registrant. However, what establishes "unity of control" depends on the circumstances in every case.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • In Wella this "unity of control" was sufficiently evidenced by a declaration establishing that the applicant, Wella AG, owned substantially all the outstanding stock of the registrant, Wella (USA). However, what establishes "unity of control" depends on the circumstances in every case. Trademark Manual of Examining Procedure (TMEP) 1201.07(b) (7th ed. rev. 2010).
  • Case Finding: Any suggestion that there has been no actual confusion between the marks, based on the coexistence of applicant's previously issued registrations and the cited registration, is entitled to little probative value in the context of this ex parte appeal.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • Further, any suggestion that there has been no actual confusion between the marks, based on the coexistence of applicant's previously issued registrations and the cited registration, is entitled to little probative value in the context of this ex parte appeal. In re Majestic Distilling Co., Inc., 65 USPQ2d at 1205.
  • The fact that the applicant and registrant were members of an overarching group made an otherwise thin consent agreement a viable one.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • We find the circumstances here to be more in the category of Sumitomo where the fact that the applicant and registrant were members of an overarching group made an otherwise thin consent agreement a viable one. Thus, based on the "particular circumstances surrounding the relationship [and] arrangements between the parties" here we can conclude that "confusion is not reasonably likely to occur."
  • In circumstances where the applicant imports or distributes goods for the owner of a mark, registration is allowed where the applicant submits"written consent from the owner of the mark to registration in the applicant's name.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • FOOTNOTE 5 "In any event, in circumstances where the applicant imports or distributes goods for the owner of a mark, registration is allowed where the applicant submits "written consent from the owner of the mark to registration in the applicant's name." TMEP 1201.06(a). In this case, the foreign owner of the NEUSON registration has consented to its exclusive licensee's registration of the mark."
  • Registrant's consent to applicant's registration of its mark negates the presumption that doubts about likelihood of confusion are to be resolved in favor of the registrant.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • Finally, to the extent that we have any doubts on this matter, registrant's consent to applicant's registration of its mark WACKER NEUSON negates the presumption that doubts about likelihood of confusion are to be resolved in favor of the registrant. In re Donnay International Societe Anonyme, 31 USPQ2d 1953, 1956 (TTAB 1994) (by giving consent to the registration of applicant's mark, registrant has removed the basis for applying the equitable concept of resolving doubt in favor of the registrant).
  • Applicant also states that registrant operates a single restaurant located in Hendersonville, North Carolina, but registrant owns a geographically unrestricted registration and, thus, registrant has nationwide rights in its registered mark. Applicant asserts that the registered mark is often used with a design, but we must consider registrant's mark as registered, and the registered mark does not include a design. Simply put, the law is clear that these points are entirely irrelevant to a likelihood of confusion analysis.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • Applicant also states that registrant operates a single restaurant located in Hendersonville, North Carolina, but registrant owns a geographically unrestricted registration and, thus, registrant has nationwide rights in its registered mark. Applicant asserts that the registered mark is often used with a design, but we must consider registrant's mark as registered, and the registered mark does not include a design. Simply put, the law is clear that these points are entirely irrelevant to our likelihood of confusion analysis.
  • Dicussion of In re Mastic Inc. where the Court affirmed the TTAB's holding that there was a likelihood of confusion despite applicant's submission of a consent agreement. However, in that case, the agreement provided consent only to registration, not use, of the mark.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • The examining attorney relies on In re Mastic Inc., 829 F.2d 1114, 4 USPQ2d 1292 (Fed. Cir. 1987). In that case, the Court affirmed the Board's holding that there was a likelihood of confusion despite applicant's submission of a consent agreement. However, in that case, the agreement provided consent only to registration, not use, of the mark. Noting that the applicant's application was not based on use in the United States, and the consent referenced the parties' marketing channels as a basis for their conclusion of no likelihood of confusion, the Court stated that if applicant was "making the argument that so long as it makes no use in the United States, no confusion will occur, such argument has no validity." Mastic, 4 USPQ2d at 1295.
  • Discussion of In Re N.A.D., Inc., where the TTAB stated that while it was uninformed as to all the details of the disputes and negotiations, these competitors clearly thought out their commercial interests with care. The TTAB thought it highly unlikely that they would have deliberately created a situation in which the sources of their respective products would be confused by their customers.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • Later, the Federal Circuit in another consent agreement case involving the marks NARKOMED for anesthesia machines, on the one hand, and NARCO MEDICAL SERVICES for leasing of hospital and surgical equipment and NARCO and design for an apparatus for administration of anesthesia, on the other, reversed the Board's holding that there was a likelihood of confusion. "While we are uninformed as to all the details of the disputes and negotiations, these competitors clearly thought out their commercial interests with care. We think it highly unlikely that they would have deliberately created a situation in which the sources of their respective products would be confused by their customers." In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969, 970 (Fed. Cir. 1985).
  • When those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won't. A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • Thirty years ago, the CCPA addressed the issue of consent agreements and held that: "The history of trademark litigation and the substantial body of law to which it relates demonstrate the businessman's alertness in seeking to enjoin confusion. In so doing, he guards both his pocketbook and the public interest.
        Thus when those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won't. A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not.
        du Pont, 177 USPQ at 568 (emphasis in original).
  • As often stated, each case must be decided on its own facts, and occasionally an applicant with registrations for the same or very similar marks may be unable to obtain subsequent registrations.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • As often stated, each case must be decided on its own facts, and occasionally an applicant with registrations for the same or very similar marks may be unable to obtain subsequent registrations. See In re Sunmarks Inc., 32 USPQ2d 1470, 1472 (TTAB 1994) ("We readily admit that in the present case it is troublesome to refuse registration when applicant already owns registrations for the identical mark for the same and/or similar goods. We find, however, that when this evidence is balanced against the other du Pont factors, the scales remain tipped in favor of affirming the refusal here."). See also In re Nett Designs Inc., 236 F.3d 139, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) ("Even if prior registrations had some characteristics similar to [applicant's] application, the PTO's allowance of such prior registrations does not bind the Board or this court."); and In re Davey Products Pty Ltd., 92 USPQ2d 1198 (TTAB 2009).
  • Each agreement submitted in support of registration must necessarily be judged for its particular value in light of the particular circumstances surrounding the relationship or arrangement between the parties thereto.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • As stated in In re Sumitomo Electric Industries, Ltd., 184 USPQ 365, 367 (TTAB 1974):
        "While this letter of consent does not constitute an agreement of the type involved in the Du Pont case, this does not mean that it is unacceptable herein. Each agreement submitted in support of registration must necessarily be judged for its particular value in light of the particular circumstances surrounding the relationship or arrangement between the parties thereto. In the instant case, the relationship between the parties, both members of the "Sumitomo Group" makes the letter of consent a viable one and one on which we can conclude that confusion is not reasonably likely to occur. That is, the parties undoubtedly work hand-in-hand to avoid confusion in trade which would be inimical to their best interests, and they are in a position to expeditiously correct any situation that could possibly give rise to confusion in the marketing of their respective goods."
Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (TTAB 2010) In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010) Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009) In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009) In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009) Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006) Grand Total
In re Davey Products Pty Ltd., 92 USPQ2d 1198 (TTAB 2009) 1
First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375 (Fed. Cir. 2007) 1
In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007) 1
In re Omega SA, 404 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) 1
In re Paper Doll Promotions Inc., 84 USPQ2d 1660 (TTAB 2007) 1
In re Thomas, 79 USPQ2d 1021 (TTAB 2006) 1
Mattel Inc. v. Funline Merchandise Co., 81 USPQ2d 1372 (TTAB 2006) 1
Freedom Card Inc. v. JPMorgan Chase & Co., 432 F.3d 463, 77 USPQ2d 1515 (3d Cir. 2005) 1
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003) 1
In re Kent-Gambore Corp., 59 USPQ2d 1373 (TTAB 2001) 1
In re Nett Designs Inc., 236 F.3d 1339, 957 USPQ2d 1564 (Fed. Cir. 2001) 2
Petro Shopping Centers, L.P. v. James River Petroleum, 130 F.3d 88, 44 USPQ2d 1921 (4th Cir. 1997) 1
In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994) 1
In re Donnay International Societe Anonyme, 31 USPQ2d 1953 (TTAB 1994) 1
In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993) 1
In re Perez, 21 USPQ2d 1075 (TTAB 1991) 1
National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991) 1
In re Wella A.G., 8 USPQ2d 1365 (Fed. Cir. 1988) 1
Bongrain International (American) Corporation v. Delice de France Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987) 2
Bongrain Int'l (Am.) Corp. v. Delice De France, Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987) 1
In re Mastic Inc., 829 F.2d 1114, 4 USPQ2d 1292 (Fed. Cir. 1987) 1
In re Wella A.G., 5 USPQ2d 1359 (TTAB 1987) 1
Giant Food Inc. v. Standard Terry Mills Inc., 229 USPQ 955 (TTAB 1986) 1
In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985) 1
Columbia Pictures Industries Inc. v. Miller, 211 USPQ 816 (TTAB 1981) 1
In re Hunter Publishing Co., 204 USPQ 957 (TTAB 1979) 1
Interstate Brands Corp. v. Celestial Seasonings Inc., 576 F.2d 926, 198 USPQ 151 (CCPA 1978) 1
In re Trelleborgs Gummifabriks Aktiebolag, 189 USPQ 106 (TTAB 1975) 1
In re Sumitomo Electric Industries, Ltd., 184 USPQ 365 (TTAB 1974) 1
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) 2
In re Nat'l Distillers & Chem. Corp., 297 F.2d 941, 132 USPQ 271 (CCPA 1962) 1
Grand Total 2 11 6 10 4 1 34
No Statutes Listed