Opinion Background & Discussion – In re Dare Foods, Inc.
Trademark blogs often focus on detailing decisions by the Trademark Trial & Appeal Board (“TTAB”) and the courts over whether a mark should be approved for registration or not based on the likelihood confusion with an existing registered mark. However, trademark law provides a mechanism through which two registered marks having different owners can co-exist. How is this possible? Because the mechanism involves a co-existence or consent agreement between a registered mark owner and an applicant. As the Federal Circuit Court of Appeal’s predecessor court stated in the 1973 seminal Dupont case,
[W]hen those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of [likelihood of confusion] 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 confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not.
The cited wording pertains to Dupont factor #10 in a likelihood of analysis determination which was referred by the Dupont court as the “market interface” factor.
On March 29, 2022, the TTAB recently reversed the examining attorney’s refusal to register the mark RAINCOAST DIP for “snack food dips” in view of the registered mark RAINCOAST TRADING for seafood products on likelihood of confusion grounds. Note that the USPTO routinely finds likelihood of confusion problems with a registered mark and an applied-for mark where both marks have the same word as the first word (the aspect of the mark consumers are most apt to focus on) when the same or related goods/services are involved. For example, the TTAB itself found that the involved goods were related because “it is not uncommon for snack food dips as well as seafood and seafood snacks to emanate from the same source.” It was thus not surprising that the examining attorney found likelihood of confusion because the marks are more similar than dissimilar in appearance, and sounds, and “particularly connotation and commercial impression.” The TTAB agreed.
However, the TTAB found that the examining attorney had failed to give proper credence to a 2013 agreement between the parties’ predecessors. That agreement was detailed and covered the typical factors the TTAB will look at in determining whether the agreement meets at least the following requirements:
- Shows agreement between both parties;
- Whether the agreement includes a clear indication that the goods or services travel in separate trade channels;
- Whether the parties agree to restrict their fields of use;
- Whether the parties will make efforts to prevent confusion and cooperate and take steps to avoid any confusion that may arise in the future;
- And whether the marks have been used for a period of time without evidence of actual confusion.
Simple agreements, which some sarcastically refer to as “naked agreements”, will not qualify as suitable co-existence/consent agreements. Here, the TTAB concluded that the parties had entered into a detailed agreement with sufficient parameters for allowing the existence of the two registered marks.
This commentator has drafted detailed co-existence/consent agreements resulting in registration of an applied-for mark. One fact that can be helpful is when the goods/services are provided in a different geographical market. For example, this type of agreement was entered into between a Florida eatery (the commentator’s client) and an Oregon eatery. Obviously, the registered mark owner must be willing to enter into such an agreement. Had the Oregon eatery instead been a Georgia-based company owned by a franchisor who planned to open franchise restaurants in Florida and across the Southeast, the possibility of obtaining a “USPTO-acceptable” co-existence/consent agreement would likely have been more difficult because of the stronger possibility of overlapping trade channels.
Take Home Point
A properly-drafted, accurate co-existence/consent agreement with appropriate provisions may allow an applied-for mark to be registered by the USPTO even where the applied-for mark would not otherwise be registered on the basis of its likelihood of confusion with the registered mark.
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Contact Susan at 305-279-4740 if you have any questions about co-existence/consent agreements or any other matter related to trademark law.
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