United States: Precedential No. 32: Giving "Great Weight" To Two Consent Agreements, TTAB Reverses Section 2(d) Refusal Of AMERICAN CONSTELLATION For Cruise Ship Services

Last Updated: October 10 2018
Article by John L. Welch

Giving "great weight" to two consent agreements, the Board reversed a Section 2(d) refusal of AMERICAN CONSTELLATION, finding the mark not likely to cause confusion with the registered mark CONSTELLATION, both for cruise ship services. The Examining Attorney maintained that these were "naked" consents because they did not state the steps the parties would take to avoid confusion, but the Board pointed out that such terms are not essential for the consents to have probative value. In re American Cruise Lines, Inc., Serial No. 87040022 (October 3, 2018) [precedential] (Opinion by Judge Marc A. Bergsman).

Purchaser Care:

Because the services involved are identical, the Board must presume that the channels of trade and the classes of consumers are the same. See In re Viterra. Applicant asserted that selecting a cruise is not an impulse purchase, but is "based on careful research and investigation in light of the purchaser's travel goals and travel budget." Applicant supported this assertion with the testimony of one its officers, and by a statement from Registrant's CEO in one of the consent agreements. The Examining Attorney contended these two (self-serving) statements must be corroborated by additional evidence, but the Board disagreed: the Examining Attorney "disregards that the statements were made by two people who work in the cruise ship industry" and even if the statement of applicant's officer were deemed less persuasive, "the statement of Registrant's officer certainly must be considered probative evidence on this point."

The Board found that customers for the involved services exercise a heightened degree of care when selecting cruise ship services.

The Marks: The Board found that the marks have a similar meaning and convey a similar commercial impression "because the name AMERICAN CONSTELLATION means and engenders the commercial impression of an American star or group." The fact that the cited mark is contained in the applied-for mark increases the similarity between the two.

Consent Agreements: In the second consent agreement, the parties set forth reasons why they believe there will be no likelihood of confusion: they provide cruise ship services in different parts of the world; applicant agreed not to refer to its ship as CONSTELLATION, but always as AMERICAN CONSTELLATION; cruise ship customers exercise heightened care when selecting a cruise; customers know that applicant uses "American" as a house mark; there has been no actual confusion during ten years of coexistence; and confusion is unlikely, since other cruise lines operate many ships under names that share a common term (e.g., LEGEND and LEGEND OF THE SEAS).

The Examining Attorney maintained that the consent agreements were not probative because they were "naked": i.e., they do not describe the arrangements to avoid confusion and do not contain any agreement regarding efforts to avoid confusion. The Board, however, found that the the second consent agreement was "clothed" because it included four reasons why applicant and registrant believed confusion was not likely.

A provision in the consent agreement that the parties agree to make efforts to prevent confusion or to cooperate and take steps to avoid any confusion that may arise in the future may render the agreement more probative, but it is not an essential provision for the agreement to have probative value. *** [N]o authority requires that parties explicitly agree to make efforts to prevent confusion or to cooperate and take steps to avoid any confusion that may arise in the future as a prerequisite to giving some weight to a consent agreement.

In sum, "[w]hile the inclusion of provisions to avoid any potential confusion are preferred and probative in consent agreements, they are not mandatory."

The Board pointed out that the provision that applicant and registrant operate in different areas of the world is not probative, since that restriction is not reflected in the application or cited registration. However, the remaining four (sic) provisions "are probative that the consent agreement reflects the reality of no likelihood of confusion in the marketplace." Therefore the subject consent to use and register "weighs heavily" against a likelihood of confusion.

"[C]lothed" consent agreements where "competitors have clearly thought out their commercial interests" should be given great weight, and the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion.

See In re Four Seasons Hotels Ltd., 26 USPQ2d at 1073 (quoting In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985)); see also du Pont, 177 USPQ at 568 ("A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing lot that it is not.")

Conclusion: The Board found that confusion between the subject marks is not likely, and so it reversed the refusal to register.

TTABlog comment: "Naked consent agreements are effective only in nudist colonies." David Perlsack Perlsack on Trademarks, 3rd ed. 2017.

BTW: The Board lists six reasons that were included in the consent agreements (pp. 11-12), but points out that one is not probative and the remaining "four" are probative (p. 14). Either the Board is mis-counting or I am.

The TTABlog

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