Consent agreements are a practical way for two parties with similar or identical trademarks to overcome a rejection for likelihood of confusion. Let’s learn by way of example.
The Rolling Stones are playing in our hometown tonight. At least one member of the Trust Tree team will be in the crowd. The concert got me thinking about the relationship between Rolling Stone magazine and The Rolling Stones.
The Rolling Stones were formed in 1962. Rolling Stone was founded in 1967. Both own multiple trademarks related to their names.
Here is what Rolling Stone co-founder Jann Wenner had to say about the name in 1967:
You’re probably wondering what we’re trying to do. It’s hard to say: sort of a magazine and sort of a newspaper. The name of it is Rolling Stone which comes from an old saying, “A rolling stone gathers no moss.” Muddy Waters used the name for a song he wrote. The Rolling Stones took their name from Muddy’s song. “Like a Rolling Stone” was the title of Bob Dylan’s first rock and roll record. We have begun a new publication reflecting what we see are the changes in rock and roll and the changes related to rock and roll.
This is a stark admission that the phrase “rolling stone” was used (potentially as a trademark) in the music world years before Rolling Stone began using it as a trademark. Nonetheless, over the years both Rolling Stone and The Rolling Stones obtained multiple trademarks around the world for their names (and logos).
To obtain trademark protection in the United States, The Rolling Stones had to deal with something they probably were not used to – rejection.
Indeed, the U.S. Patent and Trademark Office initially rejected certain trademark applications filed on behalf of The Rolling Stones based on prior registrations related to Rolling Stone magazine. So how did both ultimately end up with protection for almost identical trademarks for similar goods and services? By using a consent agreement.
In the trademark world, a consent agreement is an agreement where a trademark owner consents to registration of a similar or identical trademark by another party pursuant to certain terms. TRADEMARK LAW ALERT!!!
In the famous In re E. I. du Pont de Nemours & Co. decision, the court stated the following regarding consent agreements:
[W]hen those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won’t. A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not.
The owners of the Rolling Stone trademarks and The Rolling Stones trademarks entered into a consent agreement on December 15, 1986, allowing each to use the name under certain circumstances. This agreement has allowed The Rolling Stones to overcome rejections for likelihood of confusion in the U.S. that otherwise would have likely prevented registration.
Businesses – take note. If you receive a likelihood of confusion rejection based on a similar or identical trademark, you may be able to overcome it by negotiating a consent agreement with the owner of the problematic trademark. I will be back next week to discuss some of the reasons why trademark consent agreements can make sense.
Until then, check out this awesome video of the aforementioned Muddy Waters being joined mid-set by The Rolling Stones.