Approval agreements can be very effective in combating refusal due to the risk of confusion, given that the USPTO is supposed to give great importance to these coexistence agreements. See In re American Cruise Lines, Inc., 128 USPQ2d 1157 (TTAB 2018). The risk is that the USPTO`s audit prosecutor will consider a filed agreement to be a “bare consent agreement” that contains only the agreement for the registration of the other party`s trademark by one party and a general statement that there is no likelihood of confusion. A well-developed brand coexistence agreement covers the entire life cycle of brand-related goods and services. At least the coexistence agreement should meet these eight conditions: consent agreements are simple and fast. If trademark registration is urgent, a consent agreement is the right way to go. If time is not an issue, a coexistence agreement offers better risk management and is more likely to be upheld in court. A simple consent agreement is usually less expensive because it requires less time and resources for development. However, you get what you pay for and a coexistence agreement certainly offers more protection. American Cruise Lines has filed a trademark application for the AMERICAN CONSTELLATION trademark, which covers cruise services.
The USPTO refused registration of the mark due to a likelihood of confusion with the trademarks CONSTELLATION and CELEBRITY CONSTELLATION, each belonging to the same registrant and covering identical services. During the continuation of its application, American Cruise Lines submitted two consent agreements between it and the owner of those recordings in its attempts to overcome the likelihood of confusion. The USPTO auditor did not accept either of the two approval agreements and maintained his refusal. American Cruise Lines then appealed TTAB`s rejection. The manual is published to provide USPTO trademark attorneys, trademark advertisers, and attorneys and representatives of trademark advertisers with a follow-up book on practices and procedures related to tracking trademark applications in the USPTO. The manual contains guidelines for examining lawyers and documents in the type of information and interpretations and describes the procedures that examination firms must or can follow when examining trademark applications. Before agreeing, the parties should take into account possible collateral effects. For example, the agreement will likely appear in a subsequent dispute regarding the disputed marks or related marks. Registrants should understand that if they pull a line into the sand that allows the marking of a party, third parties will undoubtedly expect the same treatment. It is therefore essential to ensure the proper linguistic conditioning of consent to the goods/services/marks in question. Similarly, a registrant`s ability to prevent third parties from using similar marks is necessarily compromised where the registrant needs the agreement of another party to obtain its registration. Despite those restrictions, it is still necessary, in some cases, to continue the registration and use of the mark at issue, while in other cases it is preferable for the applicant to pursue an entirely different mark.
As a general rule, a consent agreement is requested by an applicant who, in a pending trademark application, is rejected on the grounds that the trademark filed by the applicant is confusing with a third party`s trademark, either registered or pending on an earlier filing date. . . .