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

Wed Dec 4 18:09:52 UTC 2024

Where did you get "five" persuasive reasons?

Pam

Pamela S. Chestek
Chestek Legal
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On 12/4/2024 9:52 AM, Cumbow, Bob via E-trademarks wrote:
>
> 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
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> Partner
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> *From:*E-trademarks <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
> *Cc:* Amanda Conley <amanda at amandaconleylaw.com>
> *Subject:* [E-trademarks] Unusual Consent Agreement Situation - Will 
> the USPTO Accept It?
>
> *[EXTERNAL MESSAGE: This email originated from outside of the firm. Do 
> not click links or open attachments unless you recognize the sender 
> and know the content is safe.]*
>
> ------------------------------------------------------------------------
>
> 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
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> p: (510) 500-5210
>
> e: amanda at amandaconleylaw.com
>
> w: amandaconleylaw.com <http://www.amandaconleylaw.com>
>
>
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