Trademark Review | March 2016

TTAB Finds a Consent Agreement Failed to Tip the Balance

Bay State Brewing Company’s intent-to-use application to register the mark TIME TRAVELER BLONDE for beer was rejected based on the previously registered mark TIME TRAVELER for beer, ale and lager owned by A&S Brewing Collaborative. Bay Street entered a disclaimer of the merely descriptive term “BLONDE.” Prior to filing its appeal to the Board, Bay State entered into a consent agreement with A&S Brewing.

A consent agreement between the owners of two trademarks addresses the market interface between the two marks. The Federal Circuit has previously ruled that consent agreements are one factor in the likelihood of confusion analysis, but are frequently entitled to great weight. In this case, however, the Board found that the terms of the consent agreement did not do enough to avoid likelihood of confusion where the marks were virtually identical, and the goods, trade channels and purchasers were identical.

The consent agreement included the following terms designed to avoid any likelihood of confusion:

• Each party would use its mark only with its house mark;
• Bay State would always use “Blonde” as part of the mark, or alternatively, “Maibock” (another type of beer);
• Neither party would use a trade dress confusingly similar to the trade dress used by the other party; and
• Bay State would not use the mark outside of New England and the State of New York.

Bay State is located in Massachusetts and A&S Brewing is located in Vermont. Thus, the parties to the consent agreement agreed to allow use of their respective marks in the same territories, namely New England and the State of New York. Further, the Board noted that the geographical restrictions agreed to by Bay State would not be reflected in the registration and would mislead the public into the presumption that there are no geographic restrictions on use of the mark.

The Board also found that using house marks with virtually identical marks on identical goods, would not necessarily dispel confusion. The Board noted that both marks would be registered in standard characters and could be displayed in the same font and size. The consent agreement did not require the parties to use a particular trade dress, but only required them not to use the trade dress of the other. The Board noted that both parties might be in compliance with the agreement, yet still cause confusion in the market if they used minimal trade dress and small house marks. Further, since beer is often ordered on draft in a bar or restaurant, consumers may not ever see the different labels.

Finally, the Board noted the agreement lacked business information as to why the parties believed that confusion between their marks is not likely under the particular circumstances of their contemporaneous use. The Board concluded the consent agreement did not “comprise the type of agreement that is properly designed to avoid confusion and does not fully contemplate all reasonable circumstances in which the marks may be used by consumers calling for the goods.”

In re Bay State Brewing Company, Inc., Serial No. 85826258 (TTAB February 25, 2016) [precedential].