-Martha Engel, Attorney
When an application has been refused registration in view of another’s prior filed mark, one way to resolve the issue is through a consent agreement wherein the registrant consents to the registration and the parties set out the reasons why the parties believe that there is no likelihood of consumer confusion between the marks. A recent precedential TTAB decision, however, found that in particular circumstances, “no means no” when it comes to trademark registration — even when there is consent. Sometimes a poorly crafted consent agreement leaves no brewer hoppy.
The procedural background here is a mess, but bear with me as I travel back in time because this demonstrates why you should file an intent-to-use trademark application as soon as possible (spoiler alert: the earliest filer wins this one).
A Massachussetts brewery, Bay State Brewing Company, Inc., filed a trademark application for TIME TRAVELER BLONDE for beer on January 17, 2013. The filing claimed a first use date at least as early as January 1, 2012 and the specimen filed with the application is shown below (which as a printer’s proof was surprisingly not refused, see TMEP 904.04(a)). It was hard to find a good photo showing use of the mark with BAY STATE.
However, another Northeast based brewery, A&S Brewing Collaborative LLC in Vermont, had already filed an intent-to-use application for TIME TRAVELER for beer, ale, lager. A&S Brewing provided a specimen showing use of the mark on a shandy and claimed a first use date that was 11 months after Bay State Brewing’s claimed first use date. A&S Brewing’s TIME TRAVELER published for opposition a few weeks after Bay State Brewing filed its application. Bay State Brewing Company requested an extension of time to oppose, which was granted until April 12, 2013.
Meanwhile, Bay State Brewing’s application received an office action with a potential refusal to register over A&S Brewing’s prior pending application. Bay State Brewing’s attorney filed a response on April 12, 2013 (same day as their deadline to oppose) that included a copy of the consent agreement executed earlier that month. It was filed the same day as Bay State Brewing Company’s deadline to oppose. Bay State Brewing Company never opposed the application as the parties entered into a consent agreement, executed on April 10, 2013, whereby Bay State Brewing agreed not do so — unnecessarily foregoing its right to oppose or petition to cancel the registration even if the consent agreement was not accepted. So, A&S Brewing received a certificate of registration.
The consent agreement basically says that the parties do not believe there is a likelihood of confusion because one party uses it on a blonde beer with BLONDE in a limited geographic area, the other uses it on a shandy, the trade dress is different, and they are used with each other’s house marks, which are different. The same response included a disclaimer of the term BLONDE, which as many of you know is a type of beer.
If both of these were on the shelf and someone asked you to pick up some TIME TRAVELER, would you be confused?
The Trademark Office refused to accept the consent agreement and issued another office action. Bay State Brewing replied with a copy of a significantly more robust “consent agreement” with an effective date of April 10, 2013. The Trademark Office again refused to accept the consent to registration agreement, and the Board confirmed that the consent agreement did not overcome the likelihood of confusion between the marks as filed.
It seems to me that parties only needed one of the following: a restriction on the Registrant from selling in the geographic region identified in the consent agreement or an amendment to one of the applications to include the brewery’s house mark. A concurrent use proceeding could have been instituted that would limit the registrations to geographic regions, and I believe we will start to see more of these types of proceedings being used in the craft brewery industry.
Further, the parties rely on the trade dress and use of the respective brewery’s house brand on the packaging — but neither marks as filed with the Trademark Office include the house brand. Bay State could have filed for BAY STATE TIME TRAVELER BLONDE or could have forced A&S Brewing to amend their own application to THE TRAVELER BEER CO TIME TRAVELER SHANDY by keeping the option open to oppose, if the U.S. Trademark Office did not accept the consent agreement.
It is important to remember that the refusal to register the mark does not mean that Bay State cannot use the mark going forward. A&S Brewing could potentially challenge their use of the mark (assuming they didn’t agree not to do so), but Bay State likely has priority in right to use in some areas based on its use date, which is earlier than A&S Brewing’s filing date.
Morals of the story: the tortoise doesn’t win the race to trademark protection and be careful with how you draft consent agreements.