Sunshine Distribution Inc.

Trademark Trial and Appeal Board

Dec 9, 2003

No. 76070151 (T.T.A.B. Dec. 9, 2003)

Mailed: 09 DEC 2003
Paper No. 18
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sunshine Distribution Inc.
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Serial No. 76070151
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Robert C. J. Tuttle of Brooks & Kushman P.C. for Sunshine
Distribution, Inc.
Won T. Oh, Trademark Examining Attorney, Law Office 114 (K.
Margaret Le, Managing Attorney).
_______
Before Hohein, Chapman and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On June 15, 2000, Sunshine Distribution Inc.
(applicant) applied to register on the Principal Register
the mark RAZORS (in typed form) for goods ultimately
identified as “sporting goods, namely, in-line skates” in
International Class 28. The application (Serial No.
76070151) alleges a date of first use and a date of first
use in commerce of January 3, 1995.
The examining attorney has refused to register
applicant’s mark because the examining attorney determined
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76070151
2
that the mark, when used on or in connection with the goods
in the application, so resembles the mark RAZOR and design
shown below for “non-motorized scooters, toy scooters, and
model scooters” in International Class 28 as to be likely
to cause confusion, to cause mistake, or to deceive under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).1
After the examining attorney2 made the refusal to
register final, this appeal followed.
The examining attorney maintains that “Applicant’s
mark is highly similar to the registered mark” and that
“applicant’s in-line skates are sufficiently related to the
registrant’s scooters” that the public may be confused.
Brief at 3. Applicant does not seriously dispute the
examining attorney’s determinations on these points.
Instead, applicant relies on the fact that it has submitted
a consent to register from the registrant. The consent
1 Registration No. 2,577,387, issued June 11, 2002. Office
records show the owner of the registration to be J.D. Components
Co., Ltd.
2 The current examining attorney was not the original examining
attorney in this case.
Ser No. 76070151
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agreement reads in its entirety: “J.D. Components Co.,
Ltd., a Taiwanese corporation, and Razor U.S.A., LLC,3
a Delaware Limited Liability Company, hereby consent to
registration of the mark of this application [Serial No.
76070151] on the Principal Register of the United States
Patent and Trademark Office for the following identified
goods: ‘Sporting goods, namely, in-line skates, in
International Class 28.’”
The examining attorney was not persuaded by the
consent agreement to withdraw the refusal to register. The
examining attorney was concerned that the consent agreement
was a “naked consent” agreement.
Applicant responded by explaining:
In the Office Action, the Trademark Examining Attorney
has taken the position this consent agreement is
insufficient, merely a “naked” consent, which neither
details reasons why no likelihood of confusion exists
nor arrangements undertaken by the parties to avoid
confusing the public. Those substantive matters are
addressed thoroughly in the confidential Settlement
Agreement and Mutual Release. Applicant is
constrained, though, by the confidential terms of that
document from submitting them into the public record.
Counsel for defendants in the civil action, including
J.D. Components Co., Ltd., has courteously agreed to
confirm the presence of those terms in the
confidential settlement agreement, as indicated by the
counter-signature below. Also, the United States
District Court dismissed the civil action on the basis
of the parties’ settlement agreement, as shown by the
enclosed Stipulated Order of Dismissal.
3 Razor U.S.A., LLC was another party to the litigation with
applicant.
Ser No. 76070151
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Response dated October 28, 2002, p. 2 (emphasis in
original).
The response was, in fact, countersigned by counsel
for J.D. Components, Co., Ltd., under a line labeled
“CONCUR.”
The examining attorney held that the “mere existence
of a consent agreement, even one that is not ‘naked’ does
not automatically override the likelihood of confusion
refusal. Applicant has not submitted any substantive
reasons for the examining attorney to believe the
purchasing public will not be confused as to the source of
its skates or the registrant’s scooters.” Brief at 4.
Determining whether there is a likelihood of confusion
requires application of the factors set out in In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). See also In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1896 (Fed. Cir. 2000). There seems to be little
dispute that, regarding what are normally the two often
determinative factors (the similarity of the marks and the
similarity of the goods), the marks are similar and the
goods are related. Indeed, applicant’s mark RAZORS and
registrant’s mark RAZOR and oval design, are very similar.
Ser No. 76070151
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Applicant also does not seriously dispute that the goods,
scooters and in-line skates, are at a minimum related.
However, this case has an additional factor on which the
examining attorney and applicant do disagree. That factor
is whether applicant’s submission of a consent agreement
indicates that there is no likelihood of confusion here.
While we agree that the goods are related and the marks are
very similar, whether “purchasers will be confused by this
commonality is not a necessary conclusion.” In re Four
Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071, 1072
(Fed. Cir. 1993).
When it comes to the weight to be given to a consent
agreement in trademark registration cases, we do not write
on a clean slate.4 The Court of Appeals for the Federal
Circuit and its predecessor, the Court of Customs and
Patent Appeals, have provided significant guidance on how
much weight should be given to a consent agreement. Thirty
years ago, the CCPA addressed the issue of consent
agreements and held that:
The history of trademark litigation and the
substantial body of law to which it relates
demonstrate the businessman's alertness in seeking to
enjoin confusion. In so doing, he guards both his
pocketbook and the public interest.
4 See the discussion in Four Seasons Hotels, 26 USPQ2d at 1072,
for a brief history of the case law on consent agreements at the
Federal Circuit and CCPA.
Ser No. 76070151
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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. It is at least
difficult to maintain a subjective view that confusion
will occur when those directly concerned say it won't.
A mere assumption that confusion is likely will rarely
prevail against uncontroverted evidence from those on
the firing line that it is not.
du Pont, 177 USPQ at 568 (emphasis in original).
Later, the Federal Circuit in another consent
agreement case involving the marks NARKOMED for anesthesia
machines, on the one hand, and NARCO MEDICAL SERVICES for
leasing of hospital and surgical equipment and NARCO and
design for an apparatus for administration of anesthesia,
on the other, reversed the Board’s holding that there was a
likelihood of confusion. “While we are uninformed as to
all the details of the disputes and negotiations, these
competitors clearly thought out their commercial interests
with care. We think it is highly unlikely that they would
have deliberately created a situation in which the sources
of their respective products would be confused by their
customers.” In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969,
970 (Fed. Cir. 1985). See also Bongrain International
(American) Corp. v. Delice De France Inc., 811 F.2d 1479, 1
USPQ2d 1775, 1778 (Fed. Cir. 1987) (“We have often said in
trademark cases involving agreements reflecting parties’
Ser No. 76070151
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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 … Here, the board appears effectively to have
ignored the views and conduct of the parties”).
The examining attorney relies on In re Mastic Inc.,
829 F.2d 1114, 4 USPQ2d 1292 (Fed. Cir. 1987). In that
case, the Court affirmed the Board’s holding that there was
a likelihood of confusion despite applicant’s submission of
a consent agreement. However, in that case, applicant had
apparently not used the mark in the United States, the
agreement was inconsistent, and there was no evidence of
how the parties would avoid confusion. Unlike Mastic, the
parties here are using the marks and have litigated their
rights in the United States. The parties maintain that
there are provisions in the agreement between them to avoid
confusion, so the only question is whether this is enough
to show that there is no likelihood of confusion.
In the instant case, we note that the marks are
slightly different and the goods, while related, are far
from identical. The parties have litigated their rights
and have settled their disagreements. Applicant asserts
that the reasons why there is no likelihood of confusion
Ser No. 76070151
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and the arrangements undertaken by the parties to avoid
confusing the public “are thoroughly addressed in the
confidential Settlement Agreement and Mutual Release.”
Response dated October 28, 2002, page 2 (emphasis omitted).
In addition, counsel for applicant has obtained the
concurrence of registrant’s counsel to its statement
confirming “the presence of those terms in the confidential
settlement agreement.” Id.
We also note that the Trademark Manual of Examining
Procedure instructs an examining attorney “not [to]
interpose his or her own judgment concerning likelihood of
confusion 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.” § 1207.01(d)(viii) (3rd ed. 2003) (underlining
added). In addition, as the binding precedent of the
Federal Circuit makes clear, we are to give great deference
to the decisions of businesses that are on the “firing
line.” We must assume that the decisions of these
businesses are reliable and that the parties have no
interest in causing confusion. Certainly, viewed in this
light, there is nothing that is not “credible” about the
settlement agreement. Indeed, it is in line with the
agreements in other cases in which our reviewing courts
Ser No. 76070151
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were persuaded that there was no likelihood of confusion.
Furthermore, when we view the consent agreement on balance
with the other factors, we cannot say that these other
factors dictate that there is a likelihood of confusion.
Therefore, applying the binding precedent to the facts of
this case, we conclude that there is no likelihood of
confusion.
As a final point, we address the examining attorney’s
legitimate concern about the confidentiality of the terms
of the settlement agreement and the alleged “nakedness” of
the consent agreement. We agree that this is not the ideal
way to prosecute a case. It has been traditional to
present at least some minimal details of a consent
agreement to the Office. A party who does not turn over
material information to an examining attorney does so at
its peril. However, in this case, despite the lack of
specifics in the confidential settlement itself, we still
are left with the facts that there is a consent agreement,
the parties were in litigation, the parties settled their
litigation, the settlement agreement is confidential, the
agreement would appear to be credible, and the counsel for
the parties have represented that there are provisions in
the settlement agreement to avoid confusion. While we do
not have the details, we have been assured by counsel for
Ser No. 76070151
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the parties that such agreement is not a “naked” consent.
We must give great weight to consent and settlement
agreements and we must assume that the decisions of these
businesses are normally reliable. On balance, we hold that
in this case that is enough to convince us that there is no
likelihood of confusion.
Decision: The refusal to register is reversed.