“Clothing Is Not Optional” U.S. Trademark Office’s Appeals Board Reminds Us…

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“Clothing Is Not Optional” U.S. Trademark Office’s Appeals Board Reminds Us…

…When it comes to submitting a consent letter from the owner of the cited mark. However, the amount of clothes you need to put on still remains surprisingly thin, especially when it comes down to service marks for exotic vacation services. In early October, the Board reversed an Examiner’s likelihood of confusion refusal of the AMERICAN CONSTELLATION mark with the registered mark CONSTELLATION, both marks are for cruise ship services. In re American Cruise Lines, Inc., Serial No. 87040022 (October 3, 2018) [precedential] (Opinion by Judge Bergsman).

Generally, consent agreements can be an efficient path to registration in situations where the parties agree that confusion between their respective marks is unlikely. This comes into play when the U.S. Patent and Trademark Office (USPTO) refuses your trademark application citing a prior pending or registered mark. The applicant has an option to seek and obtain consent from the owner of the cited mark to registration of applicant’s mark. (Why the owner of the cited mark would consent depends on each case. In most cases the owner would not think there is a problem.)

Usually the USPTO gives considerable weight to such consents. The USPTO’s rules of practice caution that an examiner should not “substitute [his or her] judgment concerning likelihood of confusion for the judgment of the parties in interest without good reason.” Usually, in nine cases out of ten, a USPTO examiner would accept a signed consent from the owner of the cited mark and withdraw the refusal. In about 10% cases, when examiners reject the consent, they usually argue that consent is “naked.” “Naked” consent agreements are agreements that contain little more than a prior registrant’s consent to registration of an applied-for mark and possibly a mere statement that confusion is believed to be unlikely. The USPTO may find a short and conclusory consent agreement “naked” and therefore insufficient to overcome the likelihood of confusion refusal.

In this case, the examiner has argued that consent given by Registrant Celebrity Cruises Inc. to Applicant American Cruise Lines, Inc. (see below) was “naked” because the consent “does not describe the arrangements undertaken by Applicant and Registrant to avoid confusion and because the parties have not agreed to make efforts to prevent confusion or to cooperate and take steps to avoid any confusion that may arise in the future.” Celebrity Cruises Inc. was not a party to the appeal. What motivated Celebrity Cruises Inc. to give consent is unknown and is the subject for another blog posting.

The Board sided with Applicant and reversed the refusal. The Board noted that the parties’ undertaking to cooperate to avoid confusion, though would be helpful, is not required. The Board gave great weight to Applicant’s declarations from its COO and Vice President of Marketing that purchasing of cruise services is not an impulse purchase. Because selecting a cruise is “based on careful research and investigation in light of the purchaser’s travel goals and travel budget,” customers would be able to differentiate between AMERICAN CONSTELLATION, on the one hand, and CONSTELLATION, on the other hand. The Board concluded these declarations sufficiently collaborate the consent signed by the owner of the cited CONSTELLATION mark and reversed the refusal.

As always, I wondered if there was anything else in the record (but not in the Board’s decision) that caused the Examiner to refuse the consent and for this case to go to the appeal stage in the first place. After all, any appeal costs thousands of dollars. Was there any other way to avoid the fight with the examiner?

Of course, perhaps an easy way to fix the consent was to include the mutual undertaking of the parties as argued by the Examiner and discussed by the Board. It is a mystery to me why Applicant and its attorney did not include the wording the Examiner was looking for. Whether that alone would have sufficed is unclear. After all, that mutual undertaking provision did not help in the TIME TRAVELLER beer case. In 2016, this Blog wrote about the Board’s affirming the refusal despite the seemingly detailed consent agreement signed by two parties including the mutual undertaking provision.
http://maxvoltchenko.com/en/blog/Sputnik/not-all-consent-agreements-created-equalthe-uspto-bounces-a-consent-ag/ In all fairness, the marks were substantially identical in that case (TIME TRAVELER, with applicant adding a generic term “Blonde” to its mark). Here, the marks are sufficiently different (AMERICAN CONSTELLATION v. CONSTELLATION).

Perhaps another “easy fix” for the consent was for Applicant to make the consent in a form of an agreement, as opposed to a letter. Here, Applicant in fact executed the consent in a form of a consent letter.

Normally, form should not prevail over the substance. It should not matter how the document is called, “letter” or “agreement.” Nevertheless, in my experience and, anecdotally, based on my conversations with some examiners, having a consent in a form of a letter is invitation for an examiner to refuse it on the ground of its “nakedness.”

But, overall this precedential TTAB case is a welcome development. This decision reaffirms the principle that the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason. Here, the USPTO Examiner really did not have a good reason to step in. Protecting folks buying luxury cruises from trademark confusion (in the examiner’s interpretation) probably is not a good enough reason, at least in the Board’s view. I agree. What do you think?

Text © 2018 Maxim A. Voltchenko
* This piece is not intended to be a review of USPTO’s TTAB cases. This posting may not necessarily represent the views of the author’s employing law firm. Although every effort has been made to verify the accuracy of items in the Sputnik Blog®, readers are urged to check independently on matters of specific concern or interest.