If the examining attorney determines that there is a conflict between your mark and an earlier mark, i.e. there exists a likelihood of confusion, your mark will be refused.

If against the refusal, you then submit a consent agreement between the parties, this does not automatically mean your mark will be accepted.

It may be determined that the submitted consent agreement is a “naked consent” and is insufficient to overcome a likelihood of confusion refusal because it neither (1) sets forth reasons why the parties believe there is no likelihood of confusion, nor (2) describes the arrangements undertaken by the parties to avoid confusing the public.

Without additional factors to support that confusion is unlikely, naked consents are generally accorded little weight in a likelihood of confusion determination. 

In order to overcome a likelihood of confusion refusal, you must submit a “clothed” consent agreement indicating the owner of the prior mark’s consent to the use and registration of your mark and also addressing one or both of the factors listed above.

Consent agreements are but one factor to be taken into account with all of the other relevant circumstances bearing on a likelihood of confusion determination. 

Factors to be considered in weighing a consent agreement include the following:

1) Whether the consent shows an agreement between both parties;

2) Whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels;

3) Whether the parties agree to restrict their fields of use;

4) 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

5) Whether the marks have been used for a period of time without evidence of actual confusion.

For more information on whether your mark is eligible for trademark protection in the U.S. please contact us to conduct a trademark search.