The US Viewpoint on Letter of Consent in

Grant or Denial of Protection of Trademark Filed with the USPTO

Email: vinh@bross.vn

The US Point of View on Consent Agreement

Below are 9 key questions according to the 2010 WIPO’s questionnaire on letters of consent replied by the US regarding the procedures for registration, appeal against refusal, invalidation or cancellation of trademark in accordance with the practice decided by the USPTO and Trademark Trial and Appeal Board (TTAB):

The Practice of Acceptance or Refusal of Letter of Consent in the US

Not all consent agreements or consent letters are accepted by the USPTO. Below are some practical aspects with respect to the Letter of Consent you should pay attention:

(a)        In the United States, the term "Letter of Consent" is rarely used while the term "Consent Agreement" is adopted more popularly, which is generally understood as a contract between parties in which one party (registrant) consent to the use and registration of a similar trademark by another party (applicant). In general, an applicant can proactively submit a Letter of Consent at the time of filing application or file it when submitting an appeal against the USPTO’s section 2(d) refusal[1]. For example, in the case Frasca v. Frasca briefed below, TTAB reversed USPTO’s rejection and came to conclude that the applied-for mark Frasca deserved to be protected because the concurrent use agreement signed by the parties included the information clearly explaining why parties believe the confusion would be impossible, and also contained articles for preventing any potential likelihood of confusion:

(b)        Nevertheless, it should be noted that the USPTO sometimes refuses to grant protection although the applicant provides a letter of consent signed by the owner of earlier trademark, contending that the USPTO still has to take into account of 13 factors under the precedent case DuPont[2]  before deciding whether the coexistence of the two trademarks can cause a likelihood of confusion with each or not. For example, the applied-for mark Time Traveler Blonde was refused because it is likely to confuse with the cited registered trademark Time Traveler, both of which are used for beer, even if the applicant provided the USPTO with a consent agreement. Both USPTO and TTAB affirmed that there is still the possibility of confusion for the public, so the trademark applied for registration is not accepted after an appeal.

Bross & Partners has extensive experience involved in trademark opposition, counter-opposition and handling trademark infringement in the United States, including experience in obtaining a consent agreement between a Vietnamese rice exporting company sued by an American food company. Should you have needs, please contact us at Email: vinh@bross.vn; Mobile: 0903 287 057; WeChat: Vinhbross2603; WhatsApp: +84903287057; Skype: vinh.bross; Zalo: +84903287057.

Bross & Partners, an intellectual property renowned law firm founded in 2008, regularly ranked as top tier by Managing Intellectual Property (MIP), World Trademark Review (WTR1000), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia Leading Lawyers, Asia IP and Asian Legal Business (ALB). With many years of outstanding experience and distinctive expertise, Bross & Partners can help clients effectively protect or defend in complex intellectual property disputes in Vietnam and overseas.