1207.01(d) Miscellaneous Considerations

1207.01(d)(i) Doubt Resolved in Favor of Registrant

If there is any doubt as to whether there is a likelihood of confusion, that doubt must be resolved in favor of the prior registrant. See In re Shell Oil Co., 992 F.2d 1204, 1209, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1372 (TTAB 2009) ; see also In re C.H. Hanson Co., 116 USPQ2d 1351 (TTAB 2015) (noting that to the extent that the punctuation in registrant's identification of goods created ambiguity as to the scope of the identification, any doubt must be resolved in favor of the registrant).

1207.01(d)(ii) Absence of Actual Confusion

It is well settled that the relevant test is likelihood of confusion, not actual confusion; thus, it is unnecessary to show actual confusion to establish likelihood of confusion. See In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018); Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 17 USPQ2d 1797, 1800 (Fed. Cir. 2018); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990); In re Big Pig, Inc., 81 USPQ2d 1436, 1439-40 (TTAB 2006) .

1207.01(d)(iii) Third-Party Registrations and Evidence of Third-Party Use

Third-party registrations used to show relatedness. Third-party registrations that cover the goods or services of the applicant and registrant may have some probative value to the extent that they may serve to suggest that goods or services are of a type that may emanate from a single source, if the registrations are based on use in commerce. See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that "a single company sells the goods and services of both parties, if presented, is relevant to the relatedness analysis"); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB), aff’d per curiam, 864 F.2d 149 (Fed. Cir. 1988). Third-party registrations that are not based on use in commerce, such as those registered under §66(a) of the Trademark Act (15 U.S.C. §1141f(a) ), or those registered solely under §44 of the Act (15 U.S.C. §1126(e) ), and for which no §8 or §71 affidavits or declarations of continuing use have been filed (15 U.S.C. §1058), have very little, if any, persuasive value. See In re Info. Builders Inc., 2020 USPQ2d 10444, at *6 n.19 (TTAB 2020) (citing (citing Calypso Tech., Inc. v. Calypso Cap. Mgmt., LP, 100 USPQ2d 1213, 1221 n.15 (TTAB 2011), appeal dismissed, No. 20-1979 (Fed. Cir. Oct. 20, 2020); In re Princeton Tectronics, Inc., 95 USPQ2d 1509, 1511 (TTAB 2010)); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).

Third-party registrations used to show inherent or conceptual weakness of a term or mark component. Generally, the existence of third-party registrations cannot justify the registration of another mark that is so similar to a previously registered mark as to create a likelihood of confusion, or to cause mistake, or to deceive. E.g., In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); In re Max Cap. Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009). However, a large number of active third-party registrations including the same or similar term or mark component for the same or similar goods or services may be given some weight to show, in the same way that dictionaries are used, that a mark or a portion of a mark has a normally understood descriptive or suggestive connotation, leading to the conclusion that the term or mark component is relatively weak. See, e.g., Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1339, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917, 189 USPQ 693, 694-95 (C.C.P.A. 1976); Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1059 (TTAB 2017); Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1036 (TTAB 2016); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1471 (TTAB 2014); In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1153-54 (TTAB 2012); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). However, cancelled or expired third-party registrations for similar marks are not probative evidence of a mark’s descriptiveness, suggestiveness, or strength. See New Era Cap Co. v. Pro Era, LLC, 2020 USPQ2d 10596, at *13 (TTAB 2020) (citing In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019)); In re Info. Builders Inc., 2020 USPQ2d 10444, at *6 n.19 (citing Bond v. Taylor, 119 USPQ2d 1049, 1054 n.10 (TTAB 2016), appeal dismissed, No. 20-1979 (Fed. Cir. Oct. 20, 2020); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1264 (TTAB 2011)).

Third-party use to show commercial weakness. Evidence of third-party use falls under the sixth du Pont factor – the "number and nature of similar marks in use on similar goods." In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of third-party use may bear on the commercial strength or weakness of a mark. Juice Generation, 794 F.3d at 1338-39, 115 USPQ2d at 1674. Significant evidence of third-party use of similar marks on similar goods or services can show that consumers have become conditioned by encountering so many similar marks that they distinguish between them based on minute distinctions. Id.; Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). If the applicant's evidence is properly submitted and establishes ubiquitous or considerable third-party use of the same or similar marks on the same or similar goods or services, it may be "relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection." Palm Bay Imps., 396 F.3d at 1373-74, 73 USPQ2d at 1693; see Jack Wolfskin, 797 F.3d at 1373-74, 116 USPQ2d at 1136-37, 1136 (finding evidence of ubiquitous use of a paw print design on clothing rendered that component of the opposer’s mark relatively weak for clothing); Juice Generation, 794 F.3d at 1337 n.1, 1341-42, 115 USPQ2d at 1673 n.1, 1676-77 (finding evidence of a considerable number of third-party uses of the component "peace and love" in connection with restaurant services or food products relevant to assessing the opposer’s mark’s strength or weakness without the need for specifics as to the extent or impact of use); In re FabFitFun, Inc., 127 USPQ2d 1670, 1674-75 (TTAB 2018) (finding the component term SMOKING HOT in the marks I’M SMOKING HOT and SMOKIN’ HOT SHOW TIME to be "somewhat weak" based in part on evidence of third-party use of the term on similar cosmetics goods, noting that such uses "tend to show consumer exposure to third-party use of the term on similar goods"); see also Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, at 1034-36 (finding weakness based on at least eighty-five actual uses of ROSE-formative marks for similar services and eight similar third-party registrations); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1565-66 (TTAB 1996) (holding no likelihood of confusion due to differences in the marks and finding "Broadway" weak for restaurant services based on evidence that hundreds of restaurants and eating establishments used Broadway as a trademark or trade name); cf. In re i.am.symbolic, llc, 866 F.3d at 1329, 123 USPQ2d at 1751 ("Symbolic’s evidence of third-party use of I AM for the same or similar goods falls short of the ‘ubiquitous’ or ‘considerable’ use of the mark components present in its cited cases.").

Limitations regarding probative value of third-party registration or use evidence to show weakness of mark in cited registration. The potential relevance of third-party registrations and uses offered to support registrability over the cited registration depends on the relationship they bear to the application and registration at issue. The third-party marks must generally be as similar to the registered mark as the applied-for mark. See, e.g., Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 675, 223 USPQ 1281, 1284-85 (Fed. Cir. 1984) ("Applicant introduced evidence of eight third-party registrations for tea which contain the word ‘SPICE’, five of which are shown to be in use. None of these marks has a ‘SPICE (place)’ format or conveys a commercial impression similar to that projected by the SPICE ISLANDS mark, and these third-party registrations are of significantly greater difference from SPICE VALLEY and SPICE ISLANDS than either of these two marks from each other."); see also In re Mighty Leaf Tea, 601 F.3d 1342, 1347, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). Potential relevance also depends on whether the third-party registered marks and uses are for goods or services as similar to those in the cited registration as those identified in the application. See, e.g., Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1580, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991) ("None of the third party marks and uses of ACE made of record are nearly as closely related to the activities of the parties as the virtually identical uses of the parties are to each other. Thus, we agree with the Board that nothing in the record shows a narrowing of Editors’ identification with A.C.E./ACE by third party marks with respect to the relevant public, namely, the film industry or even the broader entertainment industry. In sum, Cable’s argument that it can use ACE because ACE is a ‘weak’ mark, as an abstract proposition, is not only unpersuasive but essentially meaningless.") (citation omitted); see also Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1325-26, 128 USPQ2d 1686, 1694-95 (Fed. Cir. 2018) (citing Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1580, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991)).

However, considering a mark’s relative strength or weakness is only part of the process of determining whether there is a likelihood of confusion. Even registered marks deemed "weak" are entitled to the presumptions of validity under Section 7(b), and are entitled to protection under Section 2(d) against the registration of confusingly similar marks. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1304, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (affirming the Board’s conclusion that confusion was likely between DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB, marks comprised of the "conceptually weak" wording DETROIT ATHLETIC combined with the non-source identifying business identifiers "Co." and "Club"); see also King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974); Food Specialty Co. v. Standard Prods. Co., 406 F.2d 1397, 1398, 161 USPQ 46, 47 (C.C.P.A. 1969) (in speaking of marks as being weak or strong, "we should not lose sight of the ultimate question that must be answered, namely, whether there is a likelihood of confusion, mistake, or deception."). Thus, arguments that third-party use has rendered the registered mark so weak as to lack any source-identifying ability may not be raised in examination, but only in cancellation proceedings. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) ("it is not open to an applicant to prove abandonment of a registered mark in an ex parte registration proceeding"; a cancellation proceeding against the registrant is required) (citations omitted). See Wallpaper Mfrs., Ltd. v. Crown Wallcovering Corp., 680 F.2d 755, 766, 214 USPQ 327, 336 (C.C.P.A. 1982) (where a "fail[ure] to police its mark" has "caused the [registered] mark to lose its significance as a mark," a cancellation proceeding for abandonment may lie).

See TMEP §710.01(b) regarding the proper submission of Internet evidence and §710.03 regarding making third party registrations of record.

1207.01(d)(iv) Collateral Attack on Registration Improper in Ex Parte Proceeding

Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register shall be prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate. During ex parte prosecution, an applicant will not be heard on matters that constitute a collateral attack on the cited registration (e.g., a registrant’s nonuse of the mark). See In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (noting that applicant’s objection to the breadth of the goods or trade channels described in the cited registration "amounts to an attack on the registration's validity" and that "the present ex parte proceeding is not the proper forum from which to launch such an attack," which is "better suited for resolution in a cancellation proceeding"); In re Dixie Rests., Inc., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Fiesta Palms, LLC, 85 USPQ2d 1360, 1363 (TTAB 2007) ; In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992) ; In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2014-15 (TTAB 1988) .

It is also inappropriate for the applicant in an ex parte proceeding to place the burden of showing a likelihood of confusion on the owner of the cited registration. In re Majestic Distilling Co., 315 F.3d 1311, 1318, 65 USPQ2d 1201, 1206 (Fed. Cir. 2003) ("'It is the duty of the PTO and this court to determine whether there is a likelihood of confusion between two marks. . . . [I]t is no answer for the applicant to ask that the application be passed to publication to see whether the owner of the cited mark will oppose the registration.'" (quoting Dixie Rests., 105 F.3d at 1408, 41 USPQ2d at 1535)).

1207.01(d)(v) Classification of Goods/Services

The classification of goods and services has no bearing on the question of likelihood of confusion. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018); Jean Patou, Inc. v. Theon Inc., 9 F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993). Rather, it is the manner in which the applicant and/or registrant have identified their goods or services that is controlling. See Nat'l Football League v. Jasper All. Corp., 16 USPQ2d 1212, 1216 & n.5 (TTAB 1990) .

1207.01(d)(vi) Prior Decisions of Examining Attorneys

Each case must be decided on its own merits. E.g., In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009) (citing In re Sunmarks Inc., 32 USPQ2d 1470, 1472 (TTAB 1994)). Previous decisions by examining attorneys in approving other marks are without evidentiary value and are not binding on the agency or the Trademark Trial and Appeal Board. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1206 (TTAB 2009); In re Wilson, 57 USPQ2d 1863, 1871 (TTAB 2001).

1207.01(d)(vii) Sophisticated Purchasers

The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are immune to source confusion. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) ("even sophisticated purchasers can be confused by very similar marks"); Weiss Assocs. v. HRL Assocs., 902 F.2d 1546, 1548, 14 USPQ2d 1840, 1841-42 (Fed. Cir. 1990) (similarities of goods and marks outweighed sophisticated purchasers, careful purchasing decision, and expensive goods); In re Info. Builders Inc., 2020 USPQ2d 10444, at *4 (TTAB 2020) (quoting In re Rsch. & Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)) ("That the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks for similar goods [or services]. ‘Human memories even of discriminating purchasers . . . are not infallible.’"); Top Tobacco, LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011) (citing In re Wilson, 57 USPQ2d 1863, 1865-66 (TTAB 2001); In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988)) ("even consumers who exercise a higher degree of care are not necessarily knowledgeable regarding the trademarks at issue, and therefore immune from source confusion"); cf. Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) (affirming that TTAB properly considered all potential investors for recited services, which included sophisticated investors, but that precedent required TTAB decision to be based "on the least sophisticated potential purchasers"). However, circumstances suggesting care in purchasing may tend to minimize the likelihood of confusion. See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 USPQ 969, 971 (Fed. Cir. 1985) (concluding that, because only sophisticated purchasers exercising great care would purchase the relevant goods, there would be no likelihood of confusion merely because of the similarity between the marks NARCO and NARKOMED); Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1039 (TTAB 2016) ("even in the case of the least sophisticated purchaser, a decision as important as choosing a senior living community will be made with some thought and research, even when made hastily").

1207.01(d)(viii) Consent Agreements

The term "consent agreement" generally refers to an agreement between parties in which one party (e.g., a prior registrant) consents to the registration of a mark by the other party (e.g., an applicant for registration of the same mark or a similar mark), or in which each party consents to the registration of an identical or similar mark by the other party.

An applicant may submit a consent agreement in an attempt to overcome a refusal of registration under Trademark Act §2(d), or in anticipation of a refusal to register. However, an examining attorney may not solicit a consent agreement.

A consent agreement may take a number of different forms and arise under a variety of circumstances, but, when present, it is "but one factor to be taken into account with all of the other relevant circumstances bearing on the likelihood of confusion referred to in §2(d)." In re N.A.D. Inc., 754 F.2d 996, 999, 224 USPQ 969, 971 (Fed. Cir. 1985); see also In re Bay State Brewing Co., 117 USPQ2d 1958, 1963 (TTAB 2016) ("[T]here is no per se rule that a consent, whatever its terms, will always tip the balance to finding no likelihood of confusion, and it therefore follows that the content of each agreement must be examined.").

"Naked" consent agreements (i.e., agreements that contain little more than a prior registrant’s consent to registration of an applied-for mark and possibly a mere statement that source confusion is believed to be unlikely) are typically considered to be less persuasive than agreements that detail the particular reasons why the relevant parties believe no likelihood of confusion exists and specify the arrangements undertaken by the parties to avoid confusing the public. See In re Mastic Inc., 829 F.2d 1114, 1117, 4 USPQ2d 1292, 1295 (Fed. Cir. 1987) ("If . . . the consent is ‘clothed’ with the parties’ agreement to undertake specific arrangements to avoid confusion of the public, as in DuPont, the parties’ assessment of no likelihood of confusion is entitled to greater weight, not because of the consent itself, but because such arrangements are additional factors which enter into the likelihood of confusion determination."); In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177 USPQ 563, 568 (C.C.P.A 1973) (noting that "[i]n considering agreements, a naked ‘consent’ may carry little weight," but "[t]he weight to be given more detailed agreements . . . should be substantial"); In re Am. Cruise Lines, Inc., 128 USPQ2d 1157, 1162 (TTAB 2018) (finding "[t]he consent agreement . . . constitute[d] more than a mere naked consent and, therefore, ought to play a more dominant role in the likelihood of confusion analysis."); see also In re Bay State Brewing Co., 117 USPQ2d at 1967 (holding confusion likely even if the parties’ marks were used in accordance with the consent agreement of record, because the agreement did "not comprise the type of agreement that is properly designed to avoid confusion," nor did it "fully contemplate all reasonable circumstances in which the marks may be used by consumers calling for the goods"); In re Donnay Int’l, S.A., 31 USPQ2d 1953, 1956 (TTAB 1994) ("[T]he more information that is in the consent agreement as to why the parties believe confusion to be unlikely, and the more evidentiary support for such conclusions in the facts of record or in the way of undertakings by the parties, the more we can assume that the consent is based on a reasoned assessment of the marketplace, and consequently the more weight the consent will be accorded."); In re Permagrain Prods., Inc., 223 USPQ 147, 149 (TTAB 1984) (finding a consent agreement submitted by applicant did not alter the conclusion that confusion was likely, because the agreement was "naked" in that it merely indicated that each party would recognize, and refrain from interfering with, the other’s use of their respective marks and that the applicant would not advertise or promote its mark without its company name, but the agreement did not restrict the markets or potential customers for their goods in such a way as to avoid confusion); cf. In re Wacker Neuson SE, 97 USPQ2d 1408, 1415-16 (TTAB 2010) (finding an otherwise "thin consent" to be viable and reversing a §2(d) refusal, in view of the relationship of the parties, the provisions of a licensing agreement executed by the parties, and the fact that the goods and services offered under both parties’ marks were manufactured and sold by applicant). Although including a provision that the parties agree to make efforts to avoid any potential confusion is preferred and may render a consent agreement more probative, such provisions are not mandatory. In re Am. Cruise Lines, Inc., 128 USPQ2d at 1162.

If a consent agreement makes representations about both parties’ beliefs regarding the likelihood of confusion and/or indicates that both parties have agreed to undertake certain actions to avoid confusion, then it should be signed by both parties, or by individuals with legal authority to bind the respective parties. In some instances, however, a consent document might be signed only by the registrant, because only the registrant has provided its consent, agreed to take certain actions, or made representations as to the likelihood of confusion. The absence of applicant’s signature on the document in such cases does not necessarily render the document unacceptable, but, like any other consent document, its persuasive value should be determined in light of all other evidence in the record. See, e.g., Donnay Int’l, 31 USPQ2d at 1956-57 (finding that a consent letter signed only by the registrant and consisting merely of registrant’s consent to applicant’s registration and use of the applied-for mark was entitled to limited weight, but nonetheless concluding that it served to "tip the scales" in favor of reversing the §2(d) refusal, especially in view of the minimal evidence supporting the conclusion that confusion was likely); In re Palm Beach Inc., 225 USPQ 785, 787-88 (TTAB 1985) (concluding there was no reasonable likelihood of confusion as to applicant’s and registrant’s marks, based on, inter alia, the different nature of the parties’ goods, two consent letters signed only by owners of the cited registration, and an affidavit of an officer of applicant’s subsidiary indicating that actual confusion had not occurred during the more than 45 years of the marks’ coexistence and that future likelihood of confusion was believed to be unlikely).

In the In re E. I. du Pont de Nemours & Company decision, the Court of Customs and Patent Appeals stated as follows:

[W]hen those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won’t. A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not.

476 F.2d at 1363, 177 USPQ at 568.

Accordingly, the Court of Appeals for the Federal Circuit has indicated that consent agreements should be given great weight, and that 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., 987 F.2d 1565, 1569, 26 USPQ2d 1071, 1074 (Fed. Cir. 1993); In re N.A.D. Inc., 754 F.2d at 996, 224 USPQ at 969; see also du Pont, 476 F.2d at 1362-63, 177 USPQ at 568; cf. In re Mastic Inc., 829 F.2d at 1118, 4 USPQ2d at 1295-96 (affirming TTAB’s holding that applicant’s mark was barred by §2(d), because the provided consent to register was essentially a "naked" consent and all other relevant factors weighed in favor of a conclusion that confusion was likely).

Thus, examining attorneys should give substantial weight to a proper consent agreement. When an applicant and registrant have entered into a credible consent agreement and, on balance, the other factors do not dictate a finding of likelihood of confusion, an examining attorney should not interpose his or her own judgment that confusion is likely.

A consent agreement is not the same as a "concurrent use" agreement. The term "concurrent use" is a term of art that refers to a geographical restriction on the registration. See TMEP §1207.04 regarding concurrent use.

1207.01(d)(ix) Fame of the Prior Registered Mark

According to In re E. I. du Pont de Nemours & Co., the "fame of the prior mark" is a factor to be considered in determining likelihood of confusion. 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Because, in ex parte proceedings, the examining attorney is not expected to submit evidence regarding the fame of the cited mark, this factor is usually treated as neutral in such proceedings. However, this factor is usually considered more significant in inter partes proceedings. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061 (Fed. Cir. 2012); Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000); Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1192-93 (TTAB 2012) ; In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006) .

Famous marks are afforded a broad scope of legal protection because they are more likely to be remembered and associated in the public mind than a weaker mark. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1374, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005); Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 1371-76, 63 USPQ2d 1303, 1305-09 (Fed. Cir. 2002) (finding opposer’s marks, ACOUSTIC WAVE and WAVE, to be famous and thus entitled to broad protection); Recot, 214 F.3d at 1327, 54 USPQ2d at 1897 (finding Board erred in limiting the weight accorded to the fame of opposer’s FRITO-LAY mark); Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 353, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992) (finding Board erred in discounting the significance of the fame of opposer’s mark PLAY-DOH); UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1883 (TTAB 2011) (finding MOTOWN very famous in connection with musical recordings and musical entertainment, and noting that "a famous mark such as Motown can be expected to cast a long shadow and to be used in connection with numerous collateral goods").

When present, the fame of a mark is "a dominant factor in the likelihood of confusion analysis . . . independent of the consideration of the relatedness of the goods." Recot, 214 F.3d at 1328, 54 USPQ2d at 1898; L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012) (noting that "a finding that a mark enjoys significant fame expands the scope of protection which might be accorded a lesser-known mark" and that "the fame of a registered or previously used mark can never support a junior party"); Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741, 1750 (TTAB 2006) ("As the fame of a mark increases, the degree of similarity between the marks necessary to support a conclusion of likely confusion declines."); see also Nike, Inc. v. Maher, 100 USPQ2d 1018, 1023 (TTAB 2011) (finding applicant’s mark JUST JESU IT, and opposer’s mark JUST DO IT similar for likelihood of confusion purposes "despite the potential differences in meaning, given the fame of opposer’s mark and the similarity of appearance, pronunciation and overall commercial impressions").

However, like the other du Pont factors, the fame of a mark may be considered only if there is relevant evidence of record. See TMEP §1207.01. Thus, a party who asserts that its mark is famous must submit evidence clearly establishing that its mark is viewed by relevant purchasers as a famous mark. See, e.g., In re Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1409 (TTAB 1998) . The fame of a mark may be shown by evidence of, inter alia, the quantity of sales of products bearing the mark, the amount of advertising expenditures relating to the mark, and the length of time such indications of commercial awareness have been evident. See Bose, 293 F.3d at 1371, 63 USPQ2d at 1305-06.

Because of the nature of the evidence required to establish the fame of a registered mark, the Board normally does not expect the examining attorney to submit evidence as to the fame of the cited mark in an ex parte proceeding. See In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006) ; see also In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1086-88 (TTAB 2016) (considering and finding persuasive examining attorney’s evidence of fame of the registered mark JAWS, but reiterating that examining attorneys are not expected to submit evidence of fame). And, in an ex parte analysis of the du Pont factors for determining likelihood of confusion (see TMEP §1207.01), the "fame of the mark" factor is normally treated as neutral when no evidence as to fame has been provided. See id.; see also In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009) (noting that the absence of evidence as to the fame of the registered mark "is not particularly significant in the context of an ex parte proceeding").

1207.01(d)(x) Conflicting Marks Owned by Different Parties

During the examination of an application, the examining attorney should consider separately each registration found in a search of the marks registered in the USPTO that may bar registration of the applicant’s mark under §2(d). If the examining attorney finds registrations that appear to be owned by more than one registrant, he or she should consider the extent to which dilution may indicate that there is no likelihood of confusion. However, the examining attorney must cite all the marks that are considered to be a bar to registration of the mark presented in the application, even if they are owned by different parties. The examining attorney should always explain the reason that the mark in each cited registration is grounds for refusal under §2(d).

1207.01(d)(xi) Family of Marks

A family of marks is defined as "a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner." J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1462, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). The common element may be a term, a phrase, or a component in the nature of a prefix or suffix.

The family of marks doctrine may be invoked by a plaintiff in inter partes proceedings relating to likelihood of confusion, but is not available to a defendant as a defense against an opposer’s or applicant’s intervening rights. Baroid Drilling Fluids Inc. v. Sun Drilling Prods., 24 USPQ2d 1048 (TTAB), amended by 1992 TTAB LEXIS 27 (TTAB 1992).

Moreover, a family of marks argument is not available to an applicant seeking to overcome a likelihood of confusion refusal in an ex parte proceeding; instead, the focus of the likelihood of confusion analysis must be on the mark applicant seeks to register, not other marks applicant may have used or registered. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009) ; see also In re Ald, Inc., 148 USPQ 520, 521 (TTAB 1965) ("[I]n view of the specific prohibition of Section 2(d) . . ., the fact that applicant may possess a ‘family’ of marks characterized by the term ‘ALD’ is of no particular significance herein if the mark for which applicant now seeks registration . . . is confusingly similar to the previously registered mark . . . .").

It has also been noted that, in ex parte proceedings, examining attorneys do not have access to the evidence and information needed to establish whether a family of marks exists. In re Mobay Chem. Co., 166 USPQ 218, 219 (TTAB 1970) . Therefore, examining attorneys should refrain from invoking the family of marks doctrine or from referring to a family of marks in a likelihood of confusion analysis. See In re Hitachi High-Techs. Corp., 109 USPQ2d 1769, 1772 (TTAB 2014) ; In re Mobay Chem. Co., 166 USPQ at 219.

See TMEP §1212.06(e)(v) regarding the use of evidence of a family of marks to support of a claim of acquired distinctiveness.

1207.01(d)(xii) Pharmaceuticals or Medicinal Products

When determining if a likelihood of confusion exists between marks used in connection with pharmaceuticals or medicinal products for human use, greater care must be taken to avoid confusion because mistakes in the selection and use of these goods may result in serious and harmful consequences. See Clifton v. Plough, Inc., 341 F.2d 934, 934, 144 USPQ 599, 600 (C.C.P.A. 1965) ; In re Cook Med. Tech. LLC, 105 USPQ2d 1377, 1381-82 (TTAB 2012) ; Schering Corp. v. Alza Corp., 207 USPQ 504, 509 (TTAB 1980) ; Am. Home Prods. Corp. v. USV Pharm. Corp., 190 USPQ 357, 359-60 (TTAB 1976) . Thus, in cases where confusion involving pharmaceuticals or medicinal products could result in harm or other serious consequences to consumers, the Trademark Trial and Appeal Board and its primary reviewing court have considered this an additional relevant factor and applied a stricter standard that may require a lesser degree of proof to establish likelihood of confusion. See Glenwood Labs., Inc. v. Am. Home Prods. Corp., 455 F.2d 1384, 1386-87, 173 USPQ 19, 21-22 (C.C.P.A. 1972) ; Schering Corp., 207 USPQ at 509; Ethicon, Inc. v. Am. Cyanamid Co., 192 USPQ 647, 651-52 (TTAB 1976) . But see Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1478 (TTAB 2016) (considering opposer’s arguments based on safety concerns about potential consumer confusion regarding opposer’s ice cream and applicant’s medicine, but finding that "any problems arising from the abuse or misuse of Applicant's medicine, whether potential or actual, has no demonstrated relationship to the identical trademarks under which Applicant's medicine and Opposer's ice cream are sold").