Two identical trademarks (brands) used for the same service all registered by the USPTO based on the coexistence agreement (letter of consent) | Two identical trademarks brands used for the same service all registered by the USPTO based on the coexistence agreement letter of consent

Two identical trademarks (brands) used for the same service

all registered by the USPTO based on the coexistence agreement (letter of consent)

Applied-for Mark	Earlier Mark
US Registration No. 5304318 Applicant: Frasca Food and Wine, Inc. Class 43: Restaurant and bar services Other record: Registration limited to the area comprising the entire United States except for the states of Illinois, Michigan and Indiana, pursuant to Concurrent Use Proceeding No. 94002752. Concurrent registration with Registration No. 3899836	US Registration No. 3899836 Applicant: Dunlay's Rocsoe, LLC Class 43: Restaurant and bar services Other record: Registration limited to the area comprising the states of Illinois, Michigan and Indiana, pursuant to Concurrent Use Proceeding No. 94002752. Concurrent registration with Application Serial No. 87021371
Applied-for mark in actual use	Earlier mark in actual use

Naked consent is not acceptable by the USPTO

As reported in our earlier article titled “The US Viewpoint on Letter of Consent in Grant or Denial of Protection of Trademark Filed with the USPTO”[1], USPTO often refuses to grant trademark protection even if the applicant actively submitted a letter of consent (also known as consent letter, or consent agreement) whose content is considered too simple (naked consent).

In the Frasca v. Frasca case as summarized in the table above, the trademark applied for registration was filed on May 2, 2016 under US serial no. 87021371 claiming the first use in commerce as August 1, 2004, and wherein attached a coexistence agreement. Upon examination, the USPTO’s examiner refused to grant registration for the Frasca trademark under Section 2(d) Lanham Trademark Law, 15 U.S.C. §1052 (d) by reason of a likelihood of confusion with the identical trademark Frasca registered under US registration no. 3,899,836 while both trademarks are used for restaurant and bar services in class 43 regardless of the availability of the coexistence agreement signed between the applicant, Frasca Food and Wine, Inc. (“FFW”) and Dunlay's Roscoe LLC (“Dunlay's”) - registrant of earlier trademark Frasca under US registration no. 3,899,836.

The USPTO argued that the coexistence agreement as presented was only a naked agreement and was not sufficient to help the applicant overcome a likelihood-of-confusion refusal because the agreement:

Did not explain why the parties believe that there is no likelihood of confusion
Did not describe the arrangements made by the parties to avoid confusion to the public. Due to no additional factors in support of the belief that confusion is not likely, the “naked” coexistence agreement would generally have limited weight in concluding that the confusion is unlikely to take place.

The USPTO suggested that it was possible to reconsider granting protection where the coexistence agreement contains 5 additional elements:

Did the consent prove that there is an existence of a contractual relationship between the parties?
Did the contract state clearly that goods or services are circulated in separate commercial channels?
Did the parties restrict their business area or scope of use?
Did the parties make efforts to prevent the possibility of confusion and cooperate with each other to take actions to avoid the potentiality of confusion that may arise in the future?
Whether have the trademarks in question been used for a period of time without evidence of actual confusion

FFW responded to the refusal and submitted a request for voluntary amendment converting its application into a concurrent use application[2]. During the complaint settlement, the TTAB found that FFW and Dunlay's had been using their respective Frasca brands associated with restaurant and bar services in their respective geographic areas for more than “ten (10) years without any other cases of confusion or conflict”, and “that they are operating fundamentally different restaurants, offering different products at different prices and marketing to consumers through separate commercial channels”, in particular the parties agreed that Dunlay's would use restaurant-related Frasca trademarks only in the geographic areas of Illinois, Michigan and Indiana when FFW would use the Frasca brand for restaurant services in the entire US territory except geographic areas in the three states of Illinois, Michigan and Indiana.

By supplementing the concurrent use agreement instead of coexistence agreement, TTAB[3] contended that concurrent use agreement, which included the information about the reasons why parties believe the confusion would be impossible, demonstrate the parties' business-oriented belief that confusion is not likely to occur, as well as articles to prevent any potential likelihood of confusion, was sufficient to consider that a likelihood of confusion was unlikely. For the reason, TTAB concluded that Frasca trademark was accepted for registration[4].

Pictures of the two brands Frasca all registered by the USPTO

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.

[1] See more “The US Viewpoint on Letter of Consent in Grant or Denial of Protection of Trademark Filed with the USPTO” at the link: http://bross.vn/newsletter/ip-news-update/The-US-Viewpoint-on-Letter-of-Consent-in--Grant-or-Denial-of-Protection-of-Trademark-Filed-with-the-USPTO

[2] Pursuant to the Point 1207.04(d)(i) Trademark Examination Guides of USPTO, the trademark application in form of concurrent use actually is the application in which the applicant is legal coexistence and examined as same as other applications, however, the difference is that this kind of application requires the applicant to submit the declaration including 3 content:

Good and/or service of the applicant, geographical area in which the applicant is using trademark in commerce and the method of using that the applicant files;
The name and address of the concurrent user, the concurrent user's goods and/or services and the registration granted for or application submitted by the concurrent user (if any), to the extent that the applicant may know;
the geographical area in which the concurrent user is using the trademark in commerce, the method of using, and the length of time the concurrent user have used, to the extent that the applicant may know.

[3] TTAB's judgment is based on two case law: In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993); Bongrain Int’l (Am.) Corp. v. Delice de France Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987).

[4] See Decision 14/07/2017 of TTAB - Trademark Trial and Appeal Board (United States Patent and Trademark Office) at the link: https://ttabvue.uspto.gov/ttabvue/ttabvue-94002752-CNU-4.pdf.