Since the precedential decision of In re Bay State Brewing Co., 119 USPQ2d 1958 (TTAB 2016), the Board has more carefully reviewed Consent Agreements. Some may say the TTAB has since been scrutinizing Consent Agreements, seeking to find very detailed reasons for why confusion will not occur between two sources in the marketplace. For more on the influential case of In re Bay State Brewing Co., see our blog post entitled, A Recent TTAB Decision Impacting Consent And Coexistence Agreements. After the issuance of this decision, other decisions followed in the trend of rejecting Consent Agreements. The latest in this line is In re 8-Brewing LLC, Serial No.86760527 (October 30, 2017) [not precedential]. This decision affirmed the refusal of the Applicant’s mark and stated that the restrictions set forth in the parties’ Consent Agreement would not eliminate confusion in the market place.
8-Brewing LLC, (the “Applicant”) was seeking registration on the Principal Register of the mark, 8-BIT ALEWORKS, for beer in standard characters. The mark was refused due to a likelihood of confusion with the registered mark 8 BIT Brewing Company (a word mark and also a design mark with the same literal terms) for beer, ale, lager, stout and porter, malt liquor and pale beer. The parties submitted a Consent Agreement as part of the record of evidence. A Consent Agreement is evaluated under du Pont factor ten, the market interface between the Applicant and the owner of a prior mark.
The Board commenced its review with the goods identified in the trademark application and registrations. Part of the parties’ identifications is identical, “beer”. Because there is an overlapping identical good, it is presumed that the channels of trade and classes of purchasers are the same. Another presumption that attaches when the goods are identical is the “degree of similarity necessary to support a conclusion of likely confusion declines”. See Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). The relatedness of the goods as described in the application and registrations, weigh in favor of finding a likelihood of confusion.
Regarding the marks, the marks contain the same identical distinctive term 8-BIT and 8 BIT. This unique term 8 BIT has no meaning or significance in the context of beer. Thus, it will be given a broad scope of protection. Both the Applicant and the Registrant use the term “8-BIT” to refer to classic video games and its early technology. Therefore, the commercial impression of all three marks will be the same. In addition, the Board raised the fact that “8-BIT” is the first term in both parties’ marks and will be likely to be impressed upon the consumers’ minds and remembered. The other terms in the marks are descriptive or generic for beer. The Applicant uses “ALEWORKS” while the Registrant uses “BREWING COMPANY”. Evidence was shown that numerous third parties use similar descriptive terms for beer. Consumers are accustom to being exposed to the terms “Ale” and “Brewing” for similar products and will not rely on those terms to distinguish the goods. The similarities of the marks weigh in favor of finding a likelihood of confusion.
Next, the Board evaluated the strength of the Consent Agreement. The following factors were considered when reviewing the Consent Agreement: (1) whether the consent shows an agreement between both parties; (2) whether the agreement demonstrates that the goods travel in separate trade channels; (3) whether the parties agreed to restrict fields of use; (4) whether the parties described the efforts they will engage in to prevent confusion in the future; and (5) whether the marks have been used for a period of time without evidence of actual confusion. If you are an applicant submitting a Consent Agreement, adding more detail to support any of the five factors will bolster your chances of the agreement tipping the scales in favor of finding no likelihood of confusion.
In this case, there were only five months of coexistence wherein the parties allege there was no actual confusion between the marks. The Board held that a mere five months is not sufficient to find confusion unlikely. The agreement failed to state how the parties utilized different trade channels. Moreover, the parties didn’t restrict their respective fields of use. As mentioned above, the Board presumed the class of consumers was the same, individuals, restaurants, retailers, and distributors. Although, the parties agreed to use “distinct” packaging, this is irrelevant since there no such evidence attached to the agreement. The parties also agreed to a geographic restriction, but the Board may only consider that type of geographic restriction in a concurrent use proceeding. Since a geographic restriction will not be reflected in the registration, it is irrelevant as well.
The Board concluded that the restrictions in the Consent Agreement didn’t eliminate the likelihood of confusion between the sources. The other du Pont factors weighed in favor of confusion. The Board affirmed the refusal. Careful attention to detail is required if submitting a Consent Agreement to overcome a likelihood of confusion refusal. If you have questions, regarding Consent Agreements or other trademark inquiries, please do not hesitate to call our office for a courtesy consultation.