On October 30, 2017 the Trademark Trial and Appeal Board (TTAB) affirmed the refusal of registration of the 8-BIT ALEWORKS mark on the ground of a likelihood of confusion with the 8 BIT BREWING COMPANY registered marks and composite mark (shown below) under Section 2(d) of the Lanham Act, 15 USC Section 1052(d). The applicant’s mark was for “beer” while the registrant’s marks were for “Beer, ale, lager, stout and porter; Malt liquor; Pale beer”.

The TTAB analyzed the marks under the factors in In re EI du Pont de Nemours & Co, 476 F2d 1357 (CCPA 1973). The application and registration both identified “beer”, so the goods were found to be identical and therefore the channels of trade and classes of purchasers were also the same. The TTAB also found the marks to be similar because the source-identifying portions of the marks, ‘8 BIT’ and ‘8-BIT’, were virtually identical and both evoked video games while the additional wording in the marks, ‘aleworks’ and ‘brewing company’, did not distinguish the marks because they were highly descriptive or generic. These factors all suggested a likelihood of confusion.

The applicant also submitted a consent agreement entered into by the applicant and the registrant. Consent agreements are analyzed under the 10th du Pont factor concerning the market interface between the applicant and the registrant. When considering a consent agreement, the TTAB analyses the following five factors:

• whether the consent shows an agreement between both parties;
• whether the agreement includes a clear indication that the goods or services travel in separate trade channels;
• whether the parties agree to restrict their fields of use;
• whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and
• whether the marks have been used for a period of time without evidence of actual confusion.

The TTAB noted that there is no per se rule that a consent agreement will always tip the balance to find no likelihood of confusion, so the content of the agreement must be examined. The consent agreement that the applicant and the registrant entered into seemed to show only consent between marks shown in Exhibit A to the agreement. While the applicant was trying to register 8-BIT ALEWORKS in standard characters, Exhibit A showed only a composite mark. Additionally, only the registrant’s composite mark was shown in Exhibit A, and not its standard character mark.

In reviewing the agreement, the TTAB found it “does little to alleviate the concern of likelihood of confusion”. Since the marks in Exhibit A of the agreement were different from the marks at issue in front of the TTAB, it was unclear if the “[r]egistrant is consenting only to the coexistence of the marks in the Exhibit or if it is actually consenting to use and registration of Applicant’s standard character mark, with or without the design element”.

Additionally, the TTAB found that having only five months without any actual confusion does not show that confusion is unlikely. The agreement also failed to demonstrate how the applicant and the registrant’s trade channels differed from each other and how they would restrict their fields of use. Consumers of both the applicant’s and the registrant’s beer would likely be the same and the consent agreement did not have any provisions that would diminish the likelihood of confusion for these consumers. The consent agreement also noted that commercially distinct product packaging would be used, but since there were no examples as to the distinct packaging, the TTAB could not determine how effective it would be in diminishing the likelihood of confusion. After examining the consent agreement, the TTAB found the du Pont factor regarding market interface to be neutral.

Therefore, since the goods and trade channels were identical, there was a strong similarity between the marks and the consent agreement had many shortcomings, the TTAB found that there was a likelihood of confusion. Recent decisions by the TTAB indicate that simply providing a consent agreement will not be enough to find no likelihood of confusion. This decision, along with prior decisions rejecting consent agreements, illustrate the importance of the details in a consent agreement and that such an agreement must address in detail the five factors which the TTAB will analyze, as listed above.