CONSENT AGREEMENTS AND SECTION 2(d) ANALYSIS
-Ron Sussman, USPTO Trademark Law Office 10, (703) 308-9110
Office policy concerning analysis of consent agreements derives principally from the decision In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Subsequent decisions from the CAFC in this area allege merely to interpret the DuPont decision. DuPont indicates that the existence of a consent agreement between the parties is one of the thirteen factors that may influence the likelihood of confusion analysis.
Subsequent case law from the Federal Circuit clearly indicates that a consent agreement between the parties is to be accorded great, or substantial weight. This is so because since the registrant is a party to the agreement, it constitutes an admission against interest, and as we all remember from Evidence class, an admission against interest is accorded great weight. Consequently, the Office is admonished not to substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest unless other factors clearly dictate a finding of likelihood of confusion.
A consent agreement that is not merely a "naked" consent typically details reasons why no likelihood of confusion exists and/or arrangements undertaken by the parties to avoid confusing the public. In re Permagrain Products, Inc., 223 USPQ 147 (TTAB 1984).
The case law is clear that the PTO's assumption of likelihood of confusion based upon its analysis of the "two tier test" will not prevail against evidence and agreement to avoid confusion between the parties. The case law further indicates that in order for a refusal based upon likelihood of confusion to be affirmed despite the existence of a consent agreement between the parties, the PTO must put into the record evidence which tends to negate the underlying assumptions in the consent (e.g. channels of trade), and/or point out that the consent is contradictory on its face.
|In re Four Seasons Hotels Ltd., 26 USPQ2d 1071 (Fed. Cir. 1993)||"[T]he PTO 'is at times like a cat watching the wrong rat hole.'"||Seventy years of contemporaneous use without confusion.|
|Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305 (Fed. Cir 1988)||"...[T]he board lays claim to an arsenal of superior knowledge about the banking business...The source of the board's knowledge is hard to divine. It is certainly not in the record..."||Sixty years of contemporaneous use without confusion.|
|Bongrain International (American) Corp. v. Delice de France, Inc.,811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1988)||"[The policies underlying the Act are] not served by the independent misguided efforts of the board to 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."||The junior user was the owner of the cited registration|
|In re NAD, Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985), from In re E.I. du Pont de Nemours & Co. 177 USPQ 563 (CCPA 1973)||"A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not."||Sophisticated purchasers and expensive technical medical goods and services|
|In re Mastic, Inc., 829 F.2d 1114, 4 USPQ2d 1292 (Fed. Cir. 1987)||"...affirmed."||Examining attorney had evidence contradicting statements and assumptions in the consent, and the consent was contradictory on its face in that it discussed contemporaneous use without confusion when the foreign applicant had not used the mark in the U.S.|