In the ongoing brand wars between breweries over names, even when two competing breweries reached an agreement, the USPTO still said “no.”

In the November 2017 case In re: 8-Brewing LLC, case number 86760527, in the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board, the TTAB (Trademark Trial and Appeal Board) decided that the proposed plain text trademark “8-Bit Aleworks” was too similar to the plain text registered trademark “8 bit Brewing Company” despite the fact that the two owners had signed a consent agreement.

While this one decision is not, by itself, the death of consent agreements, the title sure got your attention!  There is a good reason to take a harder look at this case, particularly together with a TTAB case from last year where Bay State Brewing Co. Inc.’s application was rejected by the TTAB, despite a similar consent agreement.  In that case the TTAB found Bay State could not register the mark “Time Traveler Blonde” because of its similarity to the existing registered mark “Time Traveler”, despite having a consent and coexistence agreement to the contrary (In re Bay State Brewing Company, Inc., case number 85826258, at the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board, (February 2016)).

The Board in the Bay State Time Traveler case stated, “We are fully cognizant of the importance of consent agreements entered into by business people and the significant role that they can play in determining likelihood of confusion issues, . . . however, we find that the agreement does not comprise the type of agreement that is properly designed to avoid confusion and does not fully contemplate all reasonable circumstances in which the marks may be used by consumers calling for the goods.”

Turning to 8-Bit, a quick look at the two brands, based on the websites of the companies involved, it is clear they are in exactly the same consumer space.  Finally – as is clear from their websites as noted by the Board, both companies “use the term in their marks to evoke classic video games and the technology used at the time.”

The Board echoed the Bay State case in “8-Bit Aleworks” case saying the agreement did not have any specific examples of how consumer confusion would be avoided, noting specifically that a vague agreement to use “commercially distinct product packaging,” was not enough and as such the Board could not “gauge how effective the additional packaging design would be in diminishing the likelihood of confusion.”

In the 8-Bit Aleworks finding the Board found that “consumer confusion remains likely [as a result of] “shortcomings” in the agreement itself, even  . . .bearing in mind that consent agreements are frequently entitled to great weight” Id.  In both cases the Board essentially found that a consent agreement failed to protect the consumer from being confused.

The lesson from these decisions is that consent agreements (or sometimes called coexistence agreements) are not something that can be done with a form, by a lawyer who does not know what they are doing.  They have to be specific, particularly where the marks are both plain text word marks, to the circumstances. Consent agreements must have specific examples of how the products will be marketed differently with an eye towards consumer confusion.  While this sounds obvious in light of these decisions, most consent agreement are between two commercial parties. Thus, they are created primarily with the interests of each party in mind, rather than the consumers’ interests on a scale that spins true throughout interstate commerce.

My three-part takeaway from these cases:

  1. Consent agreements and coexistence agreements are not dead, (despite the eye-grabbing title of this article),
  2. Consent agreements must be drafted with an eye towards the interests of three parties; the two contracting parties and the marketplace consumer of the goods or services,
  3. To avoid an examiner rejecting your agreement or worse, a subsequent bad TTAB decision affirming the examiner, include concrete, specific examples in your consent agreements.

Philosophically  – borrowing from 17th century philosopher Blaise Pascal’s Wager –  even if you don’t need examples because the goods or services are seemingly district to you, as we all know, reasonable minds in the legal world can differ, specifically your mind and the mind of the PTO examiner . . .you should nevertheless make the wager for “infinite gains”.

Posted in: Intellectual Property, Intellectual Property - Trademarks, Trademark, TTAB

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