A trademark agreement agreement is usually a simple contract in which one party agrees to authorize the use and/or registration of a trademark that overlaps by another party. The parties have also established that their trademarks are not confusing to consumers. This type of agreement is often used when a company has received or expects a refusal of registration from the USPTO. In In re: 8-Brewing LLC, file number 86760527, the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office of the Trademark Trial and Appeal Board decided that the proposed plain-text mark « 8-bit Aleworks » was too similar to the plain-text mark « 8 bit Brewing Company », although both owners signed a consent agreement. However, this case proved to be atypical, as the lawyer in charge of this case rejected the insufficient consent agreement. Specifically, it considers that the provisions on the manner in which the parties may grant their respective marks are not very valid, in particular because the registrations themselves do not contain such restrictions. Examination Counsel also found that the geographical restrictions of the consent agreement were ineffective, as the parties agreed that the registrant could use its trademark in the applicant`s territory. In a decision that will have a future impact on trademark tracking, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the « Board ») recently concluded that a consent agreement between a trademark declarant and the registrant of a similar pre-registered trademark – that is, a coexistence agreement – is not sufficient evidence that the use of their trademarks by the parties would not create confusion among consumers.
In re Bay State Brewing Company, Inc., serial number 85826258 (February 25, 2016) [previous]. While this decision alone is not in itself the death of consent agreements, the title has certainly caught your attention! There is good reason to take a closer look at this case, particularly with a TTAB case last year, in which Bay State Brewing Co. Inc.`s application was rejected by TTAB despite a similar approval agreement. In this case, TTAB found that Bay State was unable to register the trademark « Time Traveler Blonde » because of its resemblance to the existing trademark « Time Traveler », although it had a contrary agreement and a coexistence agreement (In re Bay State Brewing Company, Inc., drop number 85826258, in the United States. . . .