Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE DONNAY INTERNATIONAL, SOCIETE ANONYME
Serial No. 74/160,268
June 20, 1994
Trademark Examining Attorney
Law Office 8
(Thomas Lamone, Managing Attorney)
Before Cissel, Seeherman and Hanak
Administrative Trademark Judges
Opinion by Seeherman
Administrative Trademark Judge
Donnay International, Societe Anonyme, has appealed from the refusal of the Trademark Examining Attorney to register GHOST for "sports articles, namely for tennis, table tennis, squash and badminton, more specifically rackets and bags for the aforesaid sports." [FN1] This application had originally been filed based upon both a foreign registration (Section 44(e) of the Trademark Act) [FN2] and a bona fide intention to use the mark (Section 1(b) of the Act); in the course of prosecution applicant dropped its Section 1(b) basis.
Registration has been refused pursuant to Section 2(d) of the Act, 15 U.S.C. 1052(d), on the ground that applicant's mark, as used on the identified goods, so resembles the mark THE GHOST, registered for soccer balls, as to be likely to cause confusion or mistake or to deceive.
Applicant and the Examining Attorney both filed briefs. Although applicant had also requested an oral hearing, this request was subsequently withdrawn.
It is the Examining Attorney's position that confusion is likely because the marks are virtually identical--GHOST and THE GHOST--and the goods are related. In support of the latter point, she has made of record six third-party registrations in an attempt to show that a single entity has adopted the same mark for both soccer balls and for goods such as those listed in the applicant's application. After reviewing these registrations, we find only two which support her position: One for ANNIHILATOR for, inter alia, tennis, squash and badminton rackets and soccer balls; and one for WINDSOR for, inter alia, badminton sets and soccer balls. [FN3]
Applicant, on the other hand, argues that the goods involved are used for such different types of games or sports that consumers who typically purchase soccer balls under the trademark THE GHOST are not likely to assume, upon encountering the trademark GHOST on rackets and bags for tennis, table tennis, squash and badminton, that there is a common source. Similarly, consumers who purchase such rackets and bags under the trademark GHOST are not likely to assume that soccer balls sold under the trademark THE GHOST come from the same source.
Applicant also argues that both it and the registrant use the marks at issue as product marks, along with their respective house marks. Applicant's attorney has made this assertion regarding applicant's own products, and has submitted a catalog, obtained from registrant, which shows that registrant's soccer balls which bear the product mark THE GHOST also bear the house mark BRINE depicted in the same size. See In re Schoeneman Enterprises, Inc., __USPQ2d__, Serial No. 74/126,146 (TTAB Dec. 14, 1993) (attorney's statements regarding market interface between applicant and registration considered); See also In re Four Seasons Hotels Limited, 987 F.2d 1565, 26 USPQ2d 1071 (Fed.Cir.1993) (applicant's attorney's statement of long-standing co-existence between its and registrant's use of their marks accepted, although such use was not recited in the consent agreement). Such assertions that the parties' marks are product marks gain credibility by the very fact that registrant has provided a consent (discussed infra) to the registration of applicant's mark.
*2 Supporting the Examining Attorney's assertion of likelihood of confusion are the facts that the marks are virtually identical, and that GHOST appears to be an arbitrary mark for sporting goods articles. In addition, we take judicial notice that sporting goods stores sell a wide variety of items, such that the goods can be considered to be sold in the same channels of trade.
On the other hand, and militating in favor of a finding of no likelihood of confusion, are the differences in the goods. Most particularly, the goods are used for very different sports, and are different in nature, applicant's goods' being rackets and bags therefor, while the registrant's goods are balls for a sport that does not use a racket, and where the emphasis is on kicking rather than hitting.
In view of these differences in the goods, the two third-party registrations submitted by the Examining Attorney do not persuade us it is the norm for companies to sell both rackets and soccer balls and to adopt a single product mark for both, or that customers would be aware of such a practice, such that they would assume that the products emanate from the same source if they were sold under the same or similar marks. Third-party registrations are not evidence that the marks shown therein are in commercial use, or that the public is familiar with them; their probative value is only that they serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
In addition, applicant has submitted a consent by the owner of the cited registration to the registration by applicant of its mark. The consent, except for the signature, reads in its entirety as follows:
LETTER OF CONSENT
The Undersigned, BRINE INC., herewith represented by Mr. James L. Devis in his capacity of President consent to the registration and use in the U.S.A. of the trade mark GHOST by DONNAY INTERNATIONAL S.A. with regard to "sports articles, namely for tennis, table tennis, squash and badminton, more specifically rackets and bags for the aforesaid goods."
The Examining Attorney has characterized this document as a "naked" consent, and although she has acknowledged that any consent, even a naked one, must be considered, she has apparently given it either no weight or very limited weight. Applicant, on the other hand, argues that the consent should be given great weight.
It need hardly be said that, in appropriate circumstances, consent agreements are entitled to substantial weight in determining likelihood of confusion, to the extent that the presence of a consent agreement may be the predominant factor in such a determination. The basis for this, as the Court has explained on more than one occasion, is that the parties themselves are in a better position to assess the realities of the marketplace than either the Patent and Trademark Office or the courts.
*3 It can be safely taken as fundamental that reputable businessmen-users of valuable trademarks have no interest in causing public confusion....
... Thus when 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. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA1973)
We have often said, in trademark cases involving agreements reflecting parties' views on the likelihood of confusion in the marketplace, that they are in a much better position to know the real life situation than bureaucrats or judges and therefore such agreements may, depending on the circumstances, carry great weight.... Bongrain Int'l (Am.) Corp. v. Delice De France, Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed.Cir.1987)
However, just because the parties are in a better position to assess the marketplace, this does not mean that they always make a reasoned assessment as to whether confusion is likely. As the Court recognized in In re Mastic Inc., 829 F.2d 1114, 4 USPQ2d 1292 (Fed.Cir.1987):
Contrary to Mastic's view, the DuPont case does not make it a "given" that experienced businessmen, in all cases, make an agreement countenancing each other's concurrent use of the same or similar marks only in recognition of no likelihood of confusion of the public. One must look at all of the surrounding circumstances, as in DuPont, to determine if the consent reflects the reality of no likelihood of confusion in the marketplace, or if the parties struck a bargain that may be beneficial to their own interests, regardless of confusion of the public.
Accordingly, although the Court of Customs and Patent Appeals and the Court of Appeals for the Federal Circuit have frequently spoken of the value of a consent agreement in demonstrating that confusion is not likely, we do not read the cases as stating that, no matter what the circumstances, and no matter what type of consent document is submitted, the mere fact of a consent will always and automatically result in a finding of no likelihood of confusion.
In considering agreements, a naked "consent" may carry little weight. Absent more, the consenter may continue or expand his use. The consent may be based on ignorance or misconception of the law. DuPont, 177 USPQ at 568.
In In re Four Seasons Hotels Limited, supra, the Federal Circuit's most recent pronouncement on the significance of consent agreements, the Court reiterated the above-quoted statement of Chief Judge Markey in DuPont:
He specifically addressed the question of how much value an agreement ought to be given, explaining that a "naked 'consent' may carry little weight," while "[t]he weight to be given more detailed agreements ... should be substantial." Thus, in that case and the present case where such agreements "constitute far more than mere 'consent,' " they ought to play a more "dominant role" in the likelihood of confusion analysis.
*4 The implication, thus, is that, under the current state of the law, when the agreement is a "naked consent," it may be entitled to little weight in the likelihood of confusion analysis.
Obviously, then, the 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.
With these comments in mind, we turn to a consideration of the consent submitted in the present case. As the Examining Attorney has said, it is a naked consent, which states only that the registrant consents to applicant's registration and use of its applied-for mark for the goods identified in the application. The document itself does not provide any basis for the giving of the consent.
In view of the "naked" nature of the consent it is entitled to limited weight in our determination of likelihood of confusion. As opposed to the consent agreements which the Courts have found to carry great weight, this agreement consists of nothing more than a mere consent to use and register the mark. [FN4] Clearly, a more "clothed" agreement, which supplies the basis for the consent and/or undertakings to avoid confusion, would have been preferable, and would carry far more persuasive weight than the document at hand. [FN5]
It is, however, fair to infer from the very fact that the consent was given that the registrant does not believe that confusion is likely. [FN6] Thus, while the weight to be given the consent is limited, in view of the similarly limited evidence militating toward a finding of likelihood of confusion, the consent serves to "tip the scales" in this case.
In addition, registrant's giving its consent to applicant's registration of the mark GHOST at the very least negates the presumption that doubts about likelihood of confusion are to be resolved in favor of the registrant, In re Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA1973), since this presumption is based on equitable concepts relating to the later user's duty to adopt a mark which is not likely to cause confusion. By giving its consent to the registration of applicant's mark, registrant has, in effect, removed the basis for applying this equitable consideration.
Thus, taking into consideration all of the relevant DuPont factors, including the consent document, which go into the likelihood of confusion analysis, we find on the record before us that confusion is not likely.
Decision: The refusal of registration is reversed.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/160,268, filed April 24, 1991.
FN2. Benelux registration 478,971.
FN3. There were various problems with the other registrations with respect to their value in supporting the Examining Attorney's position. One did not even include soccer balls in the list of goods. Two others were for house marks and, since house marks can be used to identify a broad range of products, the inclusion of soccer balls and rackets in the identification is not particularly significant. The fourth registration was not for goods, but for distributorship services in the field of sporting goods and equipment; again, because a distributor can handle a broad range of goods, the inclusion of soccer equipment and tennis equipment in identifying the field in which the distributorship services are rendered is not particularly persuasive evidence that tennis rackets and soccer balls are related.
FN4. We would point out, however, that we have not found persuasive the Examining Attorney's argument regarding the fact that the application is based on treaty rights, not on use in the United States, and therefore there is no evidence that there has been contemporaneous use of the parties' marks without confusion. Although this point makes the present case more similar to Mastic (where the Board's finding of likelihood of confusion was upheld despite the submission of a consent agreement), which also involved an application based on Section 44 of the Act, than to the other consent cases which involved contemporaneous use, we do not believe that the parties must have had marketplace experience with the particular marks before a consent agreement can be given substantial weight. In appropriate cases, we think that parties can make a determination of how the products bearing the marks will be received in the marketplace based on their similar experience with other marks and goods.
FN5. It appears that applicant might have attempted to supply a persuasive consent agreement, but was misled by the Examining Attorney's insistence that in order to be persuasive both the application and the cited registration would have to be restricted to limit the channels of trade for the goods. That is clearly not the law. As stated above, much of the persuasiveness of the consent agreement depends on the reasons the parties give as to why they have reached the assessment that confusion is not likely. The Examining Attorney's position, on the other hand, would appear to render a consent nugatory since, if the application and registration were so restricted, she would not find likelihood of confusion even absent a consent agreement.
FN6. We would point out that there is no indication in this case that the registrant provided the consent for any reason other than a determination that confusion is not likely. For example, there is no suggestion that registrant's registration might be vulnerable to cancellation by applicant if the consent were not given.