The Trademark Trial and Appeal Board refused to allow registration of a USA Warriors Ice Hockey Program mark for “arranging and conducting ice hockey programs for injured and disabled members and veterans”, finding the mark was too similar to a mark owned by USA Hockey, Inc. (see a comparison of the marks below). The Board rejected USA Warriors’ arguments that USA Warriors owned an existing registration for a similar mark that had co-existed with the USA Hockey mark, and that USA Hockey consented because USA Hockey actually displayed USA Warriors’ registered mark on its website.
The Board’s precedential ruling affirmed a Trademark Examining Attorney’s refusal to register the USA Warriors’ mark under Section 2(d) of the Lanham Act, which is the statutory basis for refusing to register a mark due to likelihood of confusion with another mark. USA Warriors never disputed that the marks were similar and that the services were related. USA Warriors’ principal argument on appeal to the Board was that the marks had co-existed and that, under a previous Board decision called Strategic Partners, the Board should overturn the refusal and allow the mark to register. Similar to Strategic Partners, USA Warriors argued for invoking the 13th factor (one of the “du Pont” factors) in analyzing likelihood of confusion, which “accommodates the need for flexibility in assessing each unique set of facts”.
In rejecting USA Warriors’ argument, the Board noted that Strategic Partners involved an applicant’s registered that had co-existed for more than five years. The Board found the five-year period significant because, once the mark was registered for more than five years, it could not be challenged for likelihood of confusion under the Lanham Act. In the USA Warriors case, its existing registration for the mark shown below was issued less than five years ago making it subject to a cancellation action by USA Hockey based on likelihood of confusion. The 3 ½ years of coexistence was insufficient to outweigh the other du Pont factors, the Board concluded.
As to USA Warriors’ consent argument, the Board determined USA Warriors and USA Hockey never entered into a consent agreement, which would have likely played a “crucial role” in the Board’s likelihood of confusion analysis. Although USA Hockey did display the USA Warriors’ mark on its website, the Board concluded that such evidence was insufficient for a finding of consent.
This case allows us to remind potential applicants that for purposes of obtaining a trademark registration, a third party’s mere permission to use a mark, even on the third party’s website, is insufficient because, from the Board’s perspective (and the Examining Attorney’s perspective), the third party never actually consented to registration of the mark. The best way to show that a third party did consent to registration is a consent agreement.