When is a consent to register not enough to consent to register? The Trademark Trial and Appeal Board (TTAB) addressed this question and other issues in its recent non-precedential decision in In re Flying Mojo, LLC, Serial No. 86009264 (Aug. 25, 2015).

In this case, the U.S. Patent and Trademark Office (USPTO) had refused registration of the mark Purple Haze to Flying Mojo, LLC for "electronic sound pickup for guitars and basses," finding the mark likely to cause confusion with the registered mark Haze for "sound amplifiers."

In response, Flying Mojo argued that consumers may recognize the association of Purple Haze with Jimi Hendrix, and with psychedelic rock and the counterculture of the 1960s, and further that the mark may bring to mind a purple, psychedelic vapor or a mental state of blurriness and confusion.

The TTAB began its analysis by noting that despite the addition of the word purple in the applicant's mark, the similarities of the parties' marks outweighed their dissimilarities as to appearance and sound. The Board felt that the phrase purple haze would easily bring to mind the famous Jimi Hendrix song. Supporting its contention, the TTAB noted that on the applicant's own home page, it refers to pickups from a Stratocaster once owned by Hendrix.

The Board admitted that the word haze was an unusual and arbitrary mark for the involved goods and that it could create the mental image of vapor or smoke, or a confused state of mind, such as in a nightclub setting. The Board agreed with Flying Mojo that its applied-for mark could suggest an association with Hendrix, psychedelic music, and the 1960s counterculture.

Combining the closeness in the respective marks' connotations with the similarities in their appearance and sound, however, the Board concluded that they created similar commercial impressions. This supported a finding of likelihood of confusion, in accordance with the first DuPont factor.

The Board next analyzed the parties' goods. It began by noting that their complementary nature was a basis for finding them to be related, since they are likely to be purchased together and used in conjunction with each other to amplify an electric guitar. The USPTO's examiner had also offered evidence from third-party websites that supported the conclusion that the parties' goods travel through similar trade channels to the same classes of consumers. When the Board combined the examiner's evidence with that of third-party registrations, it felt confident in holding that the goods are of a type that may be offered under the same mark.

Looking to get its mojo back, the applicant argued in its defense that musicians are sophisticated consumers and that its guitar pickups retail for more than $300. The Board pointed out that Flying Mojo had failed to provide any evidence regarding the sophistication of its customers. In addition, its identification of goods was not limited to any particular class of customers or any particular price range. Finally, the Board explained that even sophisticated customers may be confused when presented with highly similar marks for related goods. So the Board rejected this line of argument.

The heart of the applicant's argument, however, was not over the sophistication of consumers or trade channels. Instead, it rested on a consent-to-use letter provided by the registrant.

Unfortunately, for the applicant, all consent letters are not created equal. The one the applicant was relying on did not include an express consent to registration. Instead, it referred to the applicant's non-exclusive inclusion of the word haze in its mark. Although the U.S. Court of Appeals for the Federal Circuit has consistently held that consent agreements should be given great weight in determining a likelihood of confusion, and that the Board should not substitute its judgment for that of the parties-in-interest as to the issue of likelihood of confusion, the Federal Circuit still has some standards.

In this case, the Board rejected Flying Mojo's letter because it neither set forth the reasons why the registrant believed that the parties' co-existing uses would not cause confusion nor did it describe any arrangements undertaken by the parties to avoid confusion among members of the relevant public. The Board held that without additional factors to support the conclusion that confusion is unlikely, the applicant's proffered letter of consent would be given little weight inasmuch as it does not constitute a proper and credible consent agreement between the parties. Thus, the Board found confusion likely and affirmed the refusal to register.

Clients facing a rejection of an applied-for mark based on a likelihood of confusion ruling often ask me whether they should seek a letter of consent from the owner of a cited registration. I typically seek to dissuade them, for two reasons.

First, most registrants do not want to give letters of consent without getting paid—and handsomely, because a letter of consent, in essence, weakens the registrant's trademark rights by openly allowing a third party to get close to their trademark rights.

Second, if a party seeking to register a mark approaches a registrant that has a similar mark, then the party seeking the making is in a way acknowledging that the registrant's mark may have superior rights. Then, if the party that sought the letter of consent cannot work out a deal, it must be willing to walk away from its own sought-for mark because it might otherwise be sued for willful infringement.

Finally, when two parties own two marks that are very similar—even identical—and that are used in connection with related goods, it may not be possible to peacefully co-exist in the market—or in the courts., Regardless of how much money the applicant is willing to pay the registrant, it is unlikely the USPTO or any court is going to recognize the junior mark as valid.

That may be why the TTAB grounded Flying Mojo. Could the parties have honestly figured out a way for their two marks to co-exist peacefully, beyond simply accepting the possibility that people are going to be able to see through the haze? By virtue of their mandate, the courts are not going to let parties accept confusion, even if the parties themselves are willing.

Reprinted with permission from the January 25, 2016 edition of Inside Counsel© 2016 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or reprints@alm.com.

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