[E-trademarks] Unusual Consent Agreement Situation - Will the USPTO Accept It?

Wed Dec 4 17:57:12 UTC 2024

Agreed (but really, who has the temerity to disagree with THE Bob Cumbow).

I would still build some contingencies into the main agreement (assuming what you are sending to the PTO is just an exhibit to a larger settlement) that hold the opposing party’s feet to the fire if something goes wrong.  For example, you are entitled to oppose/seek cancellation if your application is not approved.   That gives them the incentive to keep working with you and to do their best go make the co-existence agreement persuasive to the PTO.

[cid:picture2-2_489fb188-da90-40e8-9af7-53cb8ea0b85b.png]       Heather Vargas (She/Her/Hers)
Florida Bar No. 230900
Board Certified in Intellectual Property Law
Cobb Cole
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Cumbow, Bob via E-trademarks
Sent: Wednesday, December 4, 2024 12:52 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Cumbow, Bob <Robert.Cumbow at millernash.com>
Subject: Re: [E-trademarks] Unusual Consent Agreement Situation - Will the USPTO Accept It?

The PTO is required to accept “clothed” consent/coex agreement prepared in good faith by the two parties if they contain at least five persuasive reasons why confusion is unlikely. Not required, but a good idea, is to also include language reflecting the parties’ intent to work cooperatively to avoid confusion and to correct it if it does occur. Good cases to review and cite in support are: In re Four Seasons (Fed. Cir. 1993), In re American Cruise Lines, Inc. (TTAB 2018), In re Dare Foods, Inc. (TTAB, 2022), and In re Waterloo Sparkling Water Corp. (TTAB, 2024). Also stress the point (if true) that the marks have coexisted in use for several years without confusion.

Bob

 Cumbow

Partner

Miller Nash LLP

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Amanda Conley via E-trademarks
Sent: Wednesday, December 4, 2024 9:33 AM
To: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>
Cc: Amanda Conley <amanda at amandaconleylaw.com<mailto:amanda at amandaconleylaw.com>>
Subject: [E-trademarks] Unusual Consent Agreement Situation - Will the USPTO Accept It?

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________________________________
Hello Braintrust,

Seeking advice on how folks think the USPTO might respond to a consent agreement in a rather unusual situation.

My client previously operated a business with a partner under the name UNIQUE MARK. Several years ago, the partners agreed to go their separate ways, signing an agreement that dealt only very cursorily with the use of UNIQUE MARK. The agreement essentially stated that both partners would share equal ownership over UNIQUE MARK, but did not address registration. At the time of the agreement, no applications had been filed for UNIQUE MARK.

Fast forward to several months ago, my client learned that its former partner had filed USPTO trademark applications in its own name for three marks, let’s call them: (1) UNIQUE MARK; (2) UNIQUE MARK BROOKLYN; and (3) UNIQUE MARK ATLANTA.

I’ll skip over the details of the dispute that ensued. The issue now is this: the partner has agreed to withdraw the application for UNIQUE MARK alone, without a geographical indicator, but wants to retain (2) and (3) in its individual name. My client is ok with this in principle, but wants to file an application for UNIQUE MARK OAKLAND in its own name. The goods are identical (many customers still assume that the partners are working together) and while the parties’ physical locations are on opposite coasts, their customers originate from all over, and they are not interested in agreeing to geographic restrictions on their use beyond physical locations. Also, each of these marks are stylized in an identical manner, making them obviously related.

The former partner has agreed to consent to my client’s registration of UNIQUE MARK OAKLAND. But I am very concerned that the USPTO is not going to accept this consent under these unusual circumstances. The marks have identical stylization and differ only by the inclusion of geographic indicators. The goods are identical.

I’ve proposed various solutions as a contingency in case the USPTO does not accept the former partner’s consent, (e.g., joint ownership, ownership by a jointly owned LLC, etc.) but they are not open to these. Counsel for the former partner insists that the USPTO will accept the consent agreement if the parties believe confusion isn’t likely, but I’m not convinced, and am still pushing for us to build in a contingency.

And so I’d love to hear from folks on this thread: am I being overly conservative in my expectations of the USPTO? I understand that consent agreements are often accepted as long as they have some teeth, but this is such a unique situation that it gives me serious concerns. Any insight would be much appreciated.

Thanks in advance!

Best,

Amanda R. Conley
she/her/hers

Conley Law, P.C.
2601 Blanding Avenue Suite C-393
Alameda, CA 94501

p: (510) 500-5210
e: amanda at amandaconleylaw.com<mailto:amanda at amandaconleylaw.com>
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