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Overcoming a §2(d) Likelihood of Confusion Office ActionPart 2: Entering into a Consent Agreement with Parties Cited in Refusal

M.J. Williams | February 02, 2022
4 min read

M.J. Williams is a partner at Wissing Miller LLP, a boutique intellectual property firm in New York City. She provides counsel and representation on trademarks and copyrights to creatives and creative businesses, from start-ups to global corporations. She also supports reporters, media companies, and activists with Freedom of Information matters, frequently litigating against law enforcement agencies for release of public records.

§2(d) Likelihood of Confusion refusals are often some of the most difficult hurdles to overcome when prosecuting a USPTO trademark application. This series of articles will describe in detail three different scenarios before the USPTO where IP attorney M.J. Williams came up with successful and creative solutions to overcome the examiners’ refusals. Set forth in Q&A format and responding to questions from Alt Legal, M.J. breaks down the process, highlights successful strategies that she’s used, and provides practical tips for all practitioners.

Check out each of the articles in this series:

  • Part 2: Entering into a Consent Agreement with Parties Cited in Refusal (read below)

Background – Application and the Client

The client proposed the mark PALADAR to be used in connection with: Mezcal; Distilled spirits; Distilled spirits produced in Mexico in accordance with specific standards; Alcoholic mixed beverages except beers; Distilled agave liquor; Distilled blue agave liquor; Prepared cocktails consisting primarily of distilled spirits and also including beer.

M.J. started working with the client after it had filed the application and the examiner had issued an office action. The examiner refused the application based on §2(d) likelihood of confusion citing the registered mark PALATE VODKA used in connection with: Alcoholic beverages, except beer, namely, vodka. In the office action, the examiner noted that the Spanish word “paladar” means “palate” in English, thus, the applied-for mark and the cited registration were equivalent in meaning under the doctrine of foreign equivalents. The examiner also found that the goods at issue are confusingly similar as various alcoholic beverages are considered related goods under existing case law.

Here is the link to M.J.’s office action response and link to PDF with arguments.

The primary step that you took in overcoming the office action was entering into a consent agreement (see p. 9 in the PDF linked above) with the owners of the cited registered mark. Can you describe how you initiated discussions with the owners and how you negotiated this agreement?

This client is particularly fun to work with because they are hands-on and see opportunities everywhere, including in conflict. Since negotiations like this often boil down to what the business side thinks is manageable, and this client is great at deal-making, I stepped aside and let them negotiate. I coached them on the type of terms a consent agreement must include and let them arrive at the specifics with PALATE VODKA’s owner. The lawyers did not get in the parties’ way and got involved only to memorialize their agreement.

Note from Alt Legal: Check out this Alt Legal article for more information about consent agreements: How to Use a Trademark Consent Agreement to Overcome a 2(d) Refusal

What were the main points of the consent agreement that the parties agreed to?

The parties each agreed to stay in their lanes: PALADAR would be locked into use in connection with mezcal only and PALATE VODKA only for vodka. My client agreed to amend its application’s goods description, accordingly. Additionally, each side agreed to never use each other’s mark when marketing their goods. They each also agreed to stick with their distinct visual branding, PALADAR’s rustic look and PALATE VODKA’s clean, modern design. With these mutual forebearances, the parties could agree in good faith that consumers would not likely confuse their marks’ sources. The touchstone for the USPTO is that such agreements are not “naked,” and terms like these are usually sufficient.

The consent agreement cites a “confidential service agreement” that the parties were not required to disclose to the USPTO. Can you give us any color about what the agreement was about and how it helped the consent agreement come to fruition?

It’s common for a senior user to ask, “well, what incentive do I have to accomodate you?” when approached for consent and coexistence. Sometimes avoiding conflict is incentive enough. Sometimes a payment is required. Here, my client understood they had skills and connections that would benefit the registrant.

Any thoughts on other creative ways that parties can enter into agreements in exchange for consent/coexistence agreements?

In my experience, most of the creativity is in how the parties create and/or define space for each other in the marketplace. Those are important decisions meant to last the lifetime of the two marks. So, the agreements themselves are highly creative and forward-thinking.

The sky’s the limit on what competitors/colleagues can offer each other to sweeten a consent/coexistence deal. I’d love to hear stories from others in the Alt Legal community!

When entering into these side agreements, how can you ensure confidentiality so that these agreements don’t become public record with the USPTO?

We were careful about disclosing only the portion of the parties’ agreement that was necessary to overcome the likelihood of confusion refusal. The USPTO did not need to know the material consideration my client offered the registrant. So, I drafted two separate agreements which referred to each other, allowing my client to submit only the consent agreement when responding to the Office Action.

Once you submitted the response, the examiner issued one more office action asking you to amend the description of goods to remove the word TEQUILA as it is a registered trademark. We never knew that TEQUILA was registered, did you? We thought this would be a fun fact for our readers!

I am glad that surprised you, too! I think the Examining Attorney overstepped, but it was more practical for my client to simply delete “tequila” from its application’s description than challenge that new Office Action. There are 1,200 registered marks on the USPTO’s register with descriptions that include the term “tequila” and 275 registered TEQUILA marks – and only five of these registrations are owned by the registrant the Examining Attorney cited. If this Examining Attorney were right, a massive public education campaign, like that for VELCRO, should be launched in bars worldwide!

Note from Alt Legal: Check out this Alt Legal Connect session featuring Velcro’s Senior Trademarks Counsel: When It Isn’t What It Is: Maintaining Brand Distinctiveness and Avoiding “Genericide”

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