| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88033882 |
| LAW OFFICE ASSIGNED | LAW OFFICE 105 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88033882/mark.png |
| LITERAL ELEMENT | BRAVE |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
The Examining Attorney has refused registration of Applicant’s BRAVE trademark application, on the ground that it is confusingly similar under Section 2(d) of the Trademark Act with U.S. Registration No. 4766272, owned by Registrant. For the reasons discussed below, Applicant respectfully requests the withdrawal of the refusal.
Applicant and Registrant have entered into a written Consent Agreement, a true and correct copy of which is attached hereto as Exhibit “A”. Courts have emphasized that consent agreements are to be accorded great weight.
Here the self-interests of applicant and registrant have caused them to enter into a consent agreement determining for themselves that confusion of their marks is unlikely. In a number of similar cases, this court and our predecessor court have reversed TTAB decisions where the PTO postulated that confusion between the marks was likely, but the parties involved agreed to the contrary. The court has explained that, 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, as was held in DuPont. Bongrain, 811 F.2d at 1484-85, 1 USPQ2d at 1778
In re Four Seasons Hotels, Ltd., 987 F.2d 1565, 1566-1567, 1993 U.S. App. LEXIS 4248, *3-4, 26 U.S.P.Q.2D (BNA) 1071, 1072, 93 Daily Journal DAR 5729.
The TMEP states “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, 26 USPQ2d 1071 (Fed. Cir. 1993)” See TMEP §1207.01(d)(viii). “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.” Id.
The Parties have specifically detailed why confusion is unlikely and indicates that, in the unlikely event confusion occurs in the future, the Parties will cooperate to resolve the confusion. Specifically, the parties sell through different channels of trade and the consumers are highly sophisticated. As of the date of this submission, neither party is aware that any confusion has ever occurred.
Thus, Applicant respectfully submits the Consent Agreement entered into between the Parties should be definitive to establish that the use and registration of Applicant’s mark for the goods identified in the instant application is unlikely to cause confusion with the Registration which is cited against it. See In re: Four Seasons Hotels Ltd., 26 U.S.P.Q.2d 1071 (Fed. Cir. 1993). |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) |
\\TICRS\EXPORT17\IMAGEOUT 17\880\338\88033882\xml5\ ROA0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | Executed Letter of Consent by Jacel Holdings Pty Ltd |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Krista Powell/ |
| SIGNATORY'S NAME | Krista Weber Powell |
| SIGNATORY'S POSITION | Attorney of Record, Utah State Bar member |
| SIGNATORY'S PHONE NUMBER | 801-532-1922 |
| DATE SIGNED | 11/05/2018 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Nov 05 18:06:08 EST 2018 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XX-20 181105180608797445-880338 82-610f73b7868a437d2d0efa 61193ee7e7ef6c0e75ea2d746 13b5505be5147515ef9-N/A-N /A-20181105175346273866 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
The Examining Attorney has refused registration of Applicant’s BRAVE trademark application, on the ground that it is confusingly similar under Section 2(d) of the Trademark Act with U.S. Registration No. 4766272, owned by Registrant. For the reasons discussed below, Applicant respectfully requests the withdrawal of the refusal.
Applicant and Registrant have entered into a written Consent Agreement, a true and correct copy of which is attached hereto as Exhibit “A”. Courts have emphasized that consent agreements are to be accorded great weight.
Here the self-interests of applicant and registrant have caused them to enter into a consent agreement determining for themselves that confusion of their marks is unlikely. In a number of similar cases, this court and our predecessor court have reversed TTAB decisions where the PTO postulated that confusion between the marks was likely, but the parties involved agreed to the contrary. The court has explained that, 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, as was held in DuPont. Bongrain, 811 F.2d at 1484-85, 1 USPQ2d at 1778
In re Four Seasons Hotels, Ltd., 987 F.2d 1565, 1566-1567, 1993 U.S. App. LEXIS 4248, *3-4, 26 U.S.P.Q.2D (BNA) 1071, 1072, 93 Daily Journal DAR 5729.
The TMEP states “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, 26 USPQ2d 1071 (Fed. Cir. 1993)” See TMEP §1207.01(d)(viii). “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.” Id.
The Parties have specifically detailed why confusion is unlikely and indicates that, in the unlikely event confusion occurs in the future, the Parties will cooperate to resolve the confusion. Specifically, the parties sell through different channels of trade and the consumers are highly sophisticated. As of the date of this submission, neither party is aware that any confusion has ever occurred.
Thus, Applicant respectfully submits the Consent Agreement entered into between the Parties should be definitive to establish that the use and registration of Applicant’s mark for the goods identified in the instant application is unlikely to cause confusion with the Registration which is cited against it. See In re: Four Seasons Hotels Ltd., 26 U.S.P.Q.2d 1071 (Fed. Cir. 1993).
