Blondes don’t always have more fun (or trademarks)!

Consent or co-existence agreements may no longer be sufficient to overcome a refusal based or likelihood of confusion. A co-existence agreement is used when two businesses have similar marks but in good faith don’t believe confusions between the brands is likely. In the agreement, both parties agree to various conditions to ensure no consumer confusion- like color and imagery used in product packaging and other terms.

In February 2016, the Trademark Trial and Appeal Board issued a ruling that a “Time Traveler Blonde” beer brand was too similar to a “Time Traveler” beer to be registered as a trademark — despite a co-existence agreement between the two brewers Bay State Brewing Company Inc. and A&S Brewing Collaborative LLC.

The private consent agreement was executed for Bay State to register its mark. A&S did not object to the similar-sounding registration so long as it was used with different trade dress and other restrictions. The Trademark Examiner and court, however, did not agree that the consent agreement went far enough to protect the public from confusion. Although the consent agreement had geographic limitations, it still allowed both beers to be sold under near-identical names in both New York and New England.

The consent agreement contained restrictions on the product labeling, but the court concluded that still left the door open to confusion because the labels are not always seen by customers who order beer on draft in a bar or restaurant. The court noted that beer is a product often purchased sight unseen. The court also weighed other standard factors weighing toward confusion — identical product types, often purchased as an impulse buy, and sold to the same consumers in the same trade channels. The last factor the court considered was the absence of a limited geographic claim or a co-existence application.

In re to Bay State Brewing Company, Inc., case number 85826258, at the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board. (Feb 25, 2016)

This trademark issue is more common than you would think. With the boom in craft beverages, producers are often creating similarly named craft beverages and finding cease and desist letters in their email or mailbox. If you have any questions about your company’s branding consult with your legal advisor to identify and understand any potential pitfalls and compliance issues.