Again, the TTAB went through the Bridge factors and found that the resemblance of brands, goods and trade routes was offset by a risk of confusion before turning to the approval agreement. Therefore, while an approval agreement may be a low-cost option to overcome the likelihood of a refusal of confusion in the right circumstances, the ideal strategy is to file trademark applications without delay. This way, you can quite avoid the chaotic situation of being a senior user/junior candidate trying to remove the barrier from a junior user/senior registrar. In an approval agreement, the holder of a registered trademark gives an applicant permission to register a similar or identical trademark, as the parties feel that there is unlikely to be confusion. A review lawyer takes into account thirteen factors (the “DuPont” factors), including whether an applicant has obtained authorization from the registered trademark holder to use a similar trademark to determine whether there is a risk of confusion between the marks. Therefore, an approval agreement can be a useful tool for overcoming a refusal of confusion. In Re E.I. of the Bridge of Nemours-Co., the U.S. Court of Administration and Patent Agreement ruled: “If those who are most familiar with use in the market and who are most interested in confusion, enter into agreements to avoid them, the scales of evidence are clearly reversed.
It is difficult, to say the least, to maintain the subjective view that there will be confusion if those directly concerned say that this will not be the case” 476 F.2d 1357, 1363 (CCPA 1973). The value of an approval agreement depends on the detailed nature of the agreement and whether, overall, DuPont factors indicate that consumers are likely not to be confused. In In-KTM-Sportmotorcycle AG, TTAB confirmed the examiner`s refusal to register the “E SPEED” mark on the grounds that it resembled the “EPSEED” mark. While the registered trademark holder and the applicant entered into an approval agreement, the board found that the terms of the agreement were merely consent. The agreement consisted of only three paragraphs: approval agreements are generally filed with the U.S. Patent and Trademark OFFICE (“USPTO”) to circumvent a lawsuit that refuses registration because of a risk of confusion with a previous registration or a previous pending application. Most of the time, an approval agreement is sufficient to overcome the risk of confusion, but the USPTO is not obliged to withdraw the refusal. There is one thing that immediately jumps on me when these three cases are being verified. In all three cases, the brands and goods are identical (or virtually identical). As a result, if you submit an approval agreement with almost identical marks and goods, you should be prepared for the approval agreement to be reviewed in more detail by the reviewing counsel and the approval agreement to be declined. The precedent of the TTAB Chamber states that “[t]he letter of agreement must reflect the well-considered judgment of experienced businessmen that confusion is not likely in their respective use of the mark.
… You have to look at all the circumstances, as in DuPont, to see if consent reflects reality, that there is no risk of confusion in the market, or whether the parties have entered into an agreement that may benefit their own interests, regardless of public confusion. See In re Intuity Medical, Inc.