Consent Is Not Enough To Receive A Trademark

Bay State Brewing Company, Inc. sought to trademark TIME TRAVELER BLONDE for “beer.” The Trademark Examining Attorney refused registration because it too closely resembled the already registered mark, TIME TRAVELER, registered by A&S Brewing. The registered mark is also for “beer,” and includes “ale and lager.” Bay State conceded that there is a likelihood of confusion between its mark and A&S, and more specifically that “the marks are similar and the goods related.” However, they believed that registration was still appropriate because it signed a consent agreement with A&S. The agreement acknowledges that confusion is likely unless both parties adhere to the terms of the agreement.

The relevant terms of the agreement state that neither company will use “Time Traveler” without its house mark; that Bay State’s logo must include “BLONDE”; that both must ensure that their trade dress is different; and that Bay State will not use its mark outside of New England and the State of New York.

Normally, where a consent agreement is involved, it can be given great weight. Consent is evidence that the marks may not be confusing when they co-exist in commerce. But this case was not the typical case. Both marks are nearly identical, the only difference between the two is the inclusion of “BLONDE” in Bay State’s mark. The examining attorney held that “BLONDE” was not enough to overcome the hurdle of confusion. Since “BLONDE” is a type of beer, it does not help to further distinguish the brands.

Bay State additionally argued that the geographical limitations would help to ease confusion in the market. However, the geographical limitation was not enough, because both marks overlap geographically. Although Bay State has a limitation, the same limitation does not apply to A&S.

Something of note in this case is the distinction between a geographically restricted registration and a nationwide registration. Bay State was geographically restricted per the consent agreement and yet, it applied for a nationwide registration. It seems that the board may have been more willing to grant the registration had Bay State applied for the appropriate registration. The examining attorney was uncomfortable affording Bay State’s mark a larger geographic scope than it sought to actually have.

Although the examining attorney outweighed the consent agreement with other factors, this decision does not signal the end for consent agreements. They are still a useful tool for those seeking to register a mark somewhat similar to an already registered mark. As stated above, the board acknowledged that consent agreements are “frequently entitled to great weight.” Nevertheless, it is still important to keep in mind the additional factors when signing a consent agreement.

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