Uspto Consent Agreements

As with Bay State Brewing and KTM-Sportmotorcycle, TTAB first took into account the other factors in the Bridge and found the trademarks, products and trading channels of similar parties before turning to the approval agreement under the “Bridge Interface Market” factor. When assessing the acceptance agreement in this case, the TTAB weighed five factors: trademark agreements generally refer to an agreement reached between the parties in which a party (. B, for example, a previous registrant) accepts the registration of a trademark by the other party (for example. B an applicant of the same mark or similar mark), or in which each party accepts the registration of an identical or similar mark by the other party. (see TMEP 1207.01 (d) (viii)). While the filing of a trademark agreement (which can be presented in various forms according to the rules) is a factor that could tip the balance in favour of retracting a risk of confusion, it does not necessarily guarantee such a result. On the contrary, the persuasive value of a consent agreement to the mark must be determined on the basis of the content of the letter itself. In analyzing the approval agreement, the TTAB accepted the audit lawyer`s conclusion that the geographical restriction in the authorization agreement was legally insignificant. It did so for two reasons: (1) While the applicant was outside New England and New York outside new England and New York, there was no geographic restriction for filers to use their trademark in New England or New York, and (2) if the applicant`s application was in the process of being registered. , the registration would not reflect the geographical restriction. Of course, anyone who ensures that the second point of the TTAB has nothing to do with the risk of confusion between the disputed marks. This is a transparent attempt to support a conclusion that has already been reached. Approval agreements can be very effective in countering a refusal based on the risk of confusion, since the USPTO is supposed to attach great importance to these coexistence agreements.

See In re American Cruise Lines, Inc., 128 USPQ2d 1157 (TTAB 2018). The risk is that the USPTO audit lawyer may regard an agreement submitted as a “naked approval agreement,” which contains little more than the consent of one party to register the other party`s trademark and a general statement that there is no risk of confusion.