Dare Foods Incorporated

                                   This Opinion is a
                                 Precedent of the TTAB

                                                         Mailed: March 29, 2022

              UNITED STATES PATENT AND TRADEMARK OFFICE
                   Trademark Trial and Appeal Board

                                          ———

                                 In re Dare Foods Inc.

                                          ———

                                  Serial No. 88758625

                                          ———

David A. Lowe of Lowe Graham Jones,
  for Dare Foods Inc.

Carolyn Wlodarczyk, Trademark Examining Attorney, Law Office 109,
   Michael Kazazian, Managing Attorney.
                                   ———

Before Cataldo, Goodman and English, Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

   Applicant, Dare Foods Inc., filed an application to register on the Principal

Register the mark RAINCOAST DIP (in standard characters, “DIP” disclaimed) in

connection with the following goods: “snack food dips,” in International Class 29.1

   Applicant appeals from the Examining Attorney’s final refusal to register under

Trademark Act Section 2(d), 

15 U.S.C. § 1052

(d), on the ground that Applicant’s mark

is likely to cause confusion with the registration for the mark RAINCOAST


1 Application Serial No. 88758625 was filed on January 14, 2020 seeking registration under

Section 1(b) of the Trademark Act, 

15 U.S.C. § 1051

(b), based upon Applicant’s allegation of
a bona fide intent to use the mark in commerce.
Serial No. 88758625


TRADING (in typed characters,2 “TRADING” disclaimed), issued on the Principal

Register in connection with the following goods:

      Seafood products, namely, dried seafood and smoked seafood; frozen and
      unfrozen prepared meals, entrees, appetizers and frozen and unfrozen
      snacks consisting primarily of seafood; seafood, namely, soup and
      chowders in International Class 29.3

                           Likelihood of Confusion

   Our determination under Trademark Act Section 2(d) is based on an analysis of

the probative facts in evidence that are relevant to the factors bearing on the issue of

likelihood of confusion. See In re E.I. du Pont de Nemours & Co. (“DuPont”), 

476 F.2d 1357

, 

177 USPQ 563, 567

 (CCPA 1973); In re Majestic Distilling Co., 

315 F.3d 1311

,

65 USPQ2d 1201, 1203

 (Fed. Cir. 2003). We consider the DuPont factors for which

there are arguments and evidence. In re Guild Mortg. Co., 

912 F.3d 1376

, 

129 USPQ2d 1160

, 1164 (Fed. Cir. 2019).

   In considering the evidence, we keep in mind that “[t]he fundamental inquiry

mandated by Section 2(d) goes to the cumulative effect of differences in the essential

characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.

Fort Howard Paper Co., 

544 F.2d 1098

, 

192 USPQ 24, 29

 (CCPA 1976); see also Ox

Paperboard, LLC, 

2020 USPQ2d 10878

, at *3 (TTAB 2020); In re Azteca Rest. Enters.,




2 Effective November 2, 2003, Trademark Rule 2.52(a), 

37 C.F.R. §2.52

(a), was amended to

replace the term “typed” drawing with “standard character” drawing. A mark depicted as a
typed drawing is the legal equivalent of a standard character mark.
3 

Registration No. 3298661

 issued on September 25, 2007. First Renewal.




                                          -2-
Serial No. 88758625


Inc., 

50 USPQ2d 1209

, 2010 (TTAB 1999).

   In this instance, we also have a consent and coexistence agreement (“Agreement”)

executed by predecessors in interest to Applicant and Registrant.4 A consent

agreement presented in an effort to overcome a Section 2(d) refusal falls under the

tenth DuPont factor concerning the market interface between Applicant and

Registrant. DuPont, 

177 USPQ at 567

; In re Bay State Brewing Co., 

117 USPQ2d 1958

, 1959 (TTAB 2016). That is to say, consent agreements are but one DuPont

factor to be taken into account with all of the other relevant circumstances bearing

on a likelihood of confusion determination. In re N.A.D. Inc., 

754 F.2d 996

, 

224 USPQ 969, 971

 (Fed. Cir. 1985); DuPont, 

177 USPQ at 567

. Thus, in order to properly weigh

its importance in the context of a full DuPont analysis, we will first address the other

relevant factors. Bay State Brewing Co., 117 USPQ2d at 1959.

       Evidence

   In support of the refusal to register, the Examining Attorney introduced into the

record screenshots from three third parties offering, under the same marks, goods

related to those identified in the subject application and cited registration:5

       •   Maine Lobster Now offers hickory smoked lobster dip, live Maine lobsters

4 Applicant introduced, with its September 30, 2020 Response to first Office Action, copies of

the Agreement (at 6-12) and supporting assignment records (at 13-17). The Examining
Attorney does not dispute that the parties to the Agreement submitted by Applicant are
predecessors in interest to Applicant and Registrant herein. 8 TTABVUE 11 (Examining
Attorney’s brief).
 Page references to the application record are to the downloadable .pdf version of the
USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs,
motions and orders on appeal are to the Board’s TTABVUE docket system.
5 Examining Attorney’s March 31, 2020 first Office Action at 7-10.




                                            -3-
Serial No. 88758625


           and steamer clams;

       •   Wisconsin Cheeseman offers several snack food dips featuring lobster, crab,
           shrimp and smoked salmon; and

       •   Chesapeake Bay Crab Cakes & More offers a snack dip featuring crab meat.

   The Examining Attorney also submitted screenshots from five additional third

parties offering, under the same marks, goods related to those identified in the

involved application and cited registration:6

       •   Hull’s Seafood offers smoked salmon dip, various smoked fish and conch
           chowder;

       •   Legal Seafood offers seafood casserole, New England clam chowder, shrimp
           cocktail sauce, shrimp, oysters, shrimp chowder and clam chowder;

       •   Petrossian offers caviar cream spread, smoked salmon, onion confiture
           blinis, crème fraiche, crab, scallops, caviar and horseradish;

       •   Phillips offers crab and spinach dip, soups, crab meat, breaded fish, crab
           cakes and chili sauce; and

       •   Wegmans offers crab, lobster, fish, smoked seafood spreads and hummus
           dips.

   In support of its arguments in favor of registration, Applicant submitted a copy of

the Agreement executed on November 1, 2013 by predecessors in interest to Applicant

and Registrant, addressing several marks, registrations and then-pending

applications,7 as well as a copy of assignments of certain of Applicant’s marks from




6 Examining Attorney’s October 30, 2020 final Office Action at 6-33.

7 Applicant’s September 30, 2020 Response to first Office Action at 6-12.




                                            -4-
Serial No. 88758625


its predecessors in interest to Applicant.8 The Agreement is appended in its entirety

to the end of this decision.

       Analysis
           A. Similarity or dissimilarity and nature of the goods

   We first consider the “similarity or dissimilarity and nature of the goods or

services as described in an application or registration.” Stone Lion Cap. Partners, LP

v. Lion Cap. LLP, 

746 F.3d 1317

, 

110 USPQ2d 1157, 1159

 (Fed. Cir. 2014); Hewlett-

Packard Co. v. Packard Press Inc., 

281 F.3d 1261

, 

62 USPQ2d 1001, 1004

 (Fed. Cir.

2002); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 

918 F.2d 937

, 

16 USPQ2d 1783, 1787

 (Fed. Cir. 1990).

   A proper comparison of the goods considers whether “the consuming public may

perceive [the respective goods of an applicant and registrant] as related enough to

cause confusion about the source or origin of the goods or services.” Hewlett-Packard,

62 USPQ2d at 1004

. Therefore, to support a finding of likelihood of confusion, it is

not necessary that the goods be identical or even competitive. It is sufficient that the

goods are related in some manner, or that the circumstances surrounding their

marketing are such that they would be encountered by the same persons in situations

that would give rise, because of similarity of the marks, to a mistaken belief that they

originate from the same source or that there is an association or connection between



8 Id. at 13-17.


 Applicant submitted an additional copy of the Agreement with its April 30, 2020 Request
for Reconsideration at 5-11. Applicant is reminded that submitting duplicate copies of the
same evidence does not enhance its probative value.


                                          -5-
Serial No. 88758625


the sources of the goods. Coach Servs., Inc. v. Triumph Learning LLC, 

668 F.3d 1356

,

101 USPQ2d 1713, 1722

 (Fed. Cir. 2012); In re Thor Tech Inc., 

90 USPQ2d 1634

, 1635

(TTAB 2009).

   The Examining Attorney’s website evidence consists of webpages from eight third

parties. The webpages for Legal Seafoods display several of Registrant’s types of

goods and “cocktail sauce,” which is a dipping sauce as opposed to a “snack food dip.”

Similarly, the webpage for Petrossian offers smoked salmon, shellfish and “caviar

cream spread” which we may only broadly construe as falling within the ambit of

Applicant’s “snack food dips.”

   The webpages for two of these entities display a single product each: Wisconsin

Cheeseman offers a seafood cheese spread; and Chesapeake Bay Crab Cakes & More

offers a creamy crab dip. The Examining Attorney argues “applicant’s ‘snack food

dips’ include snack food dips of all kinds including snack food dips that feature

seafood as an ingredient, which are essentially identical to registrant’s ‘appetizers

and…snacks consisting primarily of seafood.’”9 While we agree that these goods

represent Applicant’s “snack food dips” as well as food items related to Registrant’s

“frozen and unfrozen snacks consisting primarily of seafood,” we decline to adopt the

Examining Attorney’s conclusion that “applicant’s and registrant’s goods mentioned

above, are legally identical.”10




9 Examining Attorney’s brief; 8 TTABVUE 9.

10 8 TTABVUE 9.




                                         -6-
Serial No. 88758625


   Based upon this evidence, we find that it is not uncommon for snack food dips as

well as seafood and seafood snacks to emanate from the same sources. Internet

material is competent evidence of trademark registrability in ex parte appeals. See

In re Bayer AG, 

488 F.3d 960, 966

, 

82 USPQ2d 1828, 1833

 (Fed. Cir. 2007); In re Reed

Elsevier Props., Inc., 

482 F.3d 1376

, 

82 USPQ2d 1378, 1381

 (Fed. Cir. 2007). In this

case, the website evidence introduced by the Examining Attorney shows on its face

that third parties offer on their websites Applicant’s products, or products related

thereto, and many of the products identified in the cited registration under the same

mark. Thus, the record establishes the relatedness of the involved goods.

   We find this DuPont factor weighs in favor of a finding of likelihood of confusion.

          B. The similarity or dissimilarity of established, likely-to-
             continue trade channels and classes of consumers

   We next consider “[t]he similarity or dissimilarity of established, likely-to-

continue trade channels.” Stone Lion Cap. v. Lion Cap., 

110 USPQ2d at 1161

 (quoting

DuPont, 

177 USPQ at 567

) and the classes of consumers to which the goods are

marketed.

   Because there are no limitations as to channels of trade or classes of purchasers

in the recitation of goods in the involved application or cited registration, we must

presume that the goods move in all channels of trade normal for such goods and are

available to all potential classes of ordinary consumers thereof. See Citigroup Inc. v.

Capital City Bank Grp. Inc., 

637 F.3d 1344

, 

98 USPQ2d 1253, 1261

 (Fed. Cir. 2011);

In re Jump Designs LLC, 

80 USPQ2d 1370

, 1374 (TTAB 2006); In re Elbaum, 

211 USPQ 639

, 640 (TTAB 1981).


                                         -7-
Serial No. 88758625


   As noted above, the Examining Attorney has introduced evidence that goods

related to Applicant’s goods are offered for sale on websites of third-party food

retailers that also offer goods identified in the cited registration. This evidence

supports a finding that Applicant’s goods and Registrant’s goods are offered in

common channels of trade to overlapping purchasers.

   We find these DuPont factors weigh in favor of a finding of likelihood of confusion.

         C. Similarity or dissimilarity of the marks

   We now determine the similarity or dissimilarity of Applicant’s RAINCOAST DIP

mark and the registered RAINCOAST TRADING mark in their entireties, taking into

account their appearance, sound, connotation and commercial impression. DuPont,

177 USPQ at 567

; Stone Lion Cap. v. Lion Cap., 

110 USPQ2d at 1160

; Palm Bay

Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 

396 F.3d 1369

, 

73 USPQ2d 1689, 1692

 (Fed. Cir. 2005).

   “The proper test is not a side-by-side comparison of the marks, but instead

whether the marks are sufficiently similar in terms of their commercial impression

such that persons who encounter the marks would be likely to assume a connection

between the parties.” Coach Servs., 

101 USPQ2d at 1721

 (internal quotation marks

omitted). See also Mini Melts, Inc. v. Reckitt Benckiser LLC, 

118 USPQ2d 1464

, 1470

(TTAB 2016); In re Mr. Recipe, LLC, 

118 USPQ2d 1084

, 1089 (TTAB 2016).

Consumers may not necessarily encounter the marks in close proximity and must

rely upon their recollections thereof over time. In re Mucky Duck Mustard, 

6 USPQ2d 1467

, 1468 (TTAB 1988).




                                         -8-
Serial No. 88758625


   While likelihood of confusion cannot be predicated on dissecting the marks into

their various components, different features may be analyzed and given more or less

weight, provided the ultimate conclusion rests on a consideration of the marks in

their entireties. See In re Nat’l Data Corp., 

753 F.2d 1056

, 

224 USPQ 749, 751

 (Fed.

Cir. 1985); see also Coach Servs., 

101 USPQ2d at 1721

 (“It is well-established that it

is improper to dissect a mark, and that marks must be viewed in their entireties. In

some circumstances, however, one feature of a mark may be more significant than

another, and it is not improper to give more weight to this dominant feature in

determining the commercial impression created by the mark.”) (citations omitted).

  We find that the term RAINCOAST in Applicant’s RAINCOAST DIP mark is the

most distinctive portion thereof. The disclaimed term DIP is, at best, highly

descriptive of “snack food dips” and refers back to RAINCOAST as the source of the

goods under the RAINCOAST DIP mark. See Cunningham v. Laser Golf Corp., 

222 F.3d 943

, 

55 USPQ2d 1842, 1846

 (Fed. Cir. 2000) (quoting In re Nat’l Data Corp., 224

USPQ at 752 (“Regarding descriptive terms, this court has noted that the descriptive

component of a mark may be given little weight in reaching a conclusion on the

likelihood of confusion”); see also In re Dixie Rests. Inc., 

105 F.3d 1405

, 

41 USPQ2d 1531, 1533-34

 (Fed. Cir. 1997); In re Code Consultants, Inc., 

60 USPQ2d 1699

, 1702

(TTAB 2001). Similarly, we find that the most distinctive term in the registered

RAINCOAST TRADING mark is RAINCOAST as opposed to the disclaimed term

TRADING that refers back to RAINCOAST and draws additional attention thereto

as the source of Registrant’s goods.



                                         -9-
Serial No. 88758625


  Further, the term RAINCOAST appears first in both marks and as such, it is most

likely to be impressed in purchasers’ memories. See In re Detroit Athletic Co., 

903 F.3d 1297

, 

128 USPQ2d 1047

, 1049 (Fed. Cir. 2018) (finding “the identity of the

marks’ two initial words is particularly significant because consumers typically notice

those words first”). See also Palm Bay Imps., 

73 USPQ2d at 1692

 (“The presence of

this strong distinctive term as the first word in both parties’ marks renders the marks

similar, especially in light of the largely laudatory (and hence non-source identifying)

significance of ROYALE.”); Presto Prods., Inc. v. Nice-Pak Prods. Inc., 

9 USPQ2d 1895

, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to

be impressed upon the mind of a purchaser and remembered”).

   On the basis of the identical, distinctive term RAINCOAST, we find the marks

RAINCOAST TRADING and RAINCOAST DIP are more similar than dissimilar in

appearance and sound. “[T]he presence of an additional term in the mark does not

necessarily eliminate the likelihood of confusion if some terms are identical.” In re

Mighty Leaf Tea, 

601 F.3d 1342

, 

94 USPQ2d 1257, 1260-61

 (Fed. Cir. 2010) (finding

ML in standard characters confusingly similar to ML MARK LEES in stylized form).

See also, e.g., Stone Lion Cap. v. Lion Cap., 

110 USPQ2d at 1162

 (finding STONE

LION CAPITAL confusingly similar to LION and LION CAPITAL); In re Denisi, 

225 USPQ 624

, 624 (TTAB 1985) (“[I]f the dominant portion of both marks is the same,

then confusion may be likely notwithstanding peripheral differences.”). In this case,

the peripheral differences fail to distinguish the marks.

   With regard to meaning or connotation, there is nothing in the record to suggest



                                         - 10 -
Serial No. 88758625


that RAINCOAST “has one meaning when used with” Applicant’s goods and “a second

and different meaning when used with” the goods identified in the cited registration.

In re Embiid, 

2021 USPQ2d 577

, at *21 (TTAB 2021). The connotations of the marks,

while not identical, are nonetheless quite similar inasmuch as both suggest goods

emanating from an unspecified “rain coast.”

   We acknowledge that the presence of the dissimilar wording DIP in Applicant’s

mark and TRADING in the registered mark somewhat differentiate them visually

and aurally from each other. These points of distinction, however, do not sufficiently

diminish the strong similarities in connotation and overall commercial impression

engendered by these two marks. Based upon the above analysis, we find that

RAINCOAST DIP is more similar to the RAINCOAST TRADING mark than

dissimilar in terms of appearance, sound, and particularly connotation and

commercial impression. As a result, consumers encountering these marks could

mistakenly believe the former is a variation on the registered mark used to identify

a particular line of snack food dips, but nonetheless emanating from a common

source.

   For these reasons, we find that the marks, in their entireties, are similar. This

DuPont factor thus also weighs in favor of a finding of likelihood of confusion.

          D. Market interface and coexistence agreement

   We now consider the market interface between Applicant and Registrant, DuPont,

177 USPQ at 567

, which in this case involves an evaluation of the 2013 Agreement

executed by their predecessors. Factors to be considered in weighing a consent



                                         - 11 -
Serial No. 88758625


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 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.

See generally In re Four Seasons Hotels Ltd., 

987 F.2d 1565

, 

26 USPQ2d 1071, 1074

(Fed. Cir. 1993); In re Mastic Inc., 

829 F.2d 1114

, 

4 USPQ2d 1292, 1117-18

 (Fed. Cir.

1987); DuPont, 

177 USPQ 568

; cf. Bongrain Int’l (Am.) Corp. v. Delice de Fr., Inc., 

811 F.2d 1479

, 

1 USPQ2d 1775, 1778-79

 (Fed. Cir. 1987).

     We now examine the terms of the Agreement, in which predecessors in interest to

Applicant and Registrant state there will be no likelihood of confusion. 11 The

Agreement provides, inter alia, as follows:

   Registrant owns Reg. Nos. 3298661 and 3298662 for the mark RAINCOAST
TRADING, respectively identifying various seafood products in Class 29 (the
registration cited herein) and retail outlet and distributorship services featuring
various seafood and maple syrup products in Cl. 35;

   Registrant further owns Serial No. 85365983 for RAINCOAST identifying various
seafood products, natural food extracts as dietary supplements and maple syrup
products in Cl. 5, 29 and 30;

   Applicant owns Reg. No. 3972819 for RAINCOAST CRISPS identifying crackers
in Cl. 30; Serial No. 85295039 for RAINCOAST COOKIES identifying cookies in Cl.
30; and Serial No. 77940483 for RAINCOAST DIP identifying snack food dips in Cl.

11For ease of reference, we refer to the signators to the Agreement as “Applicant” and
“Registrant.”


                                           - 12 -
Serial No. 88758625


29;

   Applicant shall not use or register RAINCOAST as a standalone mark or in
connection with TRADING; and shall not use or register any mark containing
RAINCOAST in connection with seafood products, maple confectionary or businesses
related thereto;

  Registrant shall always use and register RAINCOAST in connection with
TRADING on all product packaging, advertising, websites and other marketing
materials;

   Registrant shall not use or register RAINCOAST as a standalone mark or in
connection with CRISPS or COOKIE and shall not use or register any RAINCOAST
mark in connection with crackers, cookies or crisps;

  Registrant will withdraw its application for the above-noted standalone
RAINCOAST mark;

  Applicant and Registrant may use this agreement to secure registration of the
marks identified above, with the exception of the standalone RAINCOAST mark;

   Applicant and Registrant agree to not intentionally promote and offer their
respective goods and services in a manner that will cause confusion;

    Applicant and Registrant are not aware of any actual confusion and believe no
likelihood of confusion exists, and should either party become aware of actual
confusion between their respective marks, they will cooperate in undertaking
necessary steps to avoid confusion; and

   Applicant and Registrant agree not to oppose, seek to cancel or limit each other’s
trademarks, applications or registrations or use thereof.

      In its brief, Applicant argues:

               The Examining Attorney baselessly refuses to give weight to the
         clear and unequivocal consent agreement between the owners of the
         respective marks—which coexistence arrangement has been used by the
         owners for multiple marks over the last nearly eight years—confirming
         that there is no likelihood of confusion, and further outlining
         affirmative steps that the owners would undertake to avoid actual
         confusion should any arise.12


12 6 TTABVUE 2 (Applicant’s brief).




                                         - 13 -
Serial No. 88758625


            The owner of cited U.S. 

Registration No. 3298661

 for the
      RAINCOAST TRADING mark is North Delta Seafoods Ltd. (“North
      Delta”) of Canada. Applicant (including its predecessors in interest) and
      North Delta have coexisted for many years (since at least as early as
      2006) using the RAINCOAST term along with other terms to create
      unique marks, both in Canada and the U.S. To overcome a similar
      potential conflict in Canada, the parties reached a November 1, 2013
      Co-Existence Agreement (“Consent Agreement”) that was explicitly
      extended to the U.S.

             The basis for the peaceful coexistence, and the Consent
      Agreement confirming the lack of confusion between the marks, is the
      differences between the marks (RAINCOAST CRISPS/DIP/COOKIES
      and RAINCOAST TRADING) and the goods associated with each
      (crackers and dips for Applicant’s mark and seafood products for the
      cited mark). Applicant is the beneficiary of the Consent Agreement as
      assignee of trademark rights originally from Lesley Stowe Fine Foods
      Ltd., and subsequently from Dare Deli Incorporated. Copies of these
      assignments are of record and are not in dispute.

             The same Consent Agreement was previously found persuasive by
      the Office in withdrawal of refusal over the same cited registration for
      Applicant’s prior applications for the identical mark RAINCOAST DIP
      (Serial No. 77940483, since abandoned), as well as for the mark
      RAINCOAST CRISPS (Reg. No. 3972819) and RAINCOAST COOKIES
      (Reg. No. 4766673). For the same reasons, based on the Consent
      Agreement, and further given the differences between the marks and
      the goods associated with each, Applicant requested withdrawal of the
      Office Action refusal and approval of Applicant’s mark for publication in
      this case. Unlike in every prior case, however, the Examining Attorney
      refused.13

   The Examining Attorney, citing to DuPont, 

177 USPQ at 568

, argues: “Consent

agreements are generally accorded little weight in a likelihood of confusion

determination without additional factors to support a determination that confusion is

unlikely.”14 This statement reflects a very narrow interpretation of both the letter



13 6 TTABVUE 2-3.

14 8 TTABVUE 11.




                                       - 14 -
Serial No. 88758625


and spirit of the law articulated in DuPont.

   In DuPont, the seminal case on consent agreements, the court cautioned that

while “a naked ‘consent’ may carry little weight,” “substantial” weight should be

accorded to “more detailed agreements.” DuPont 

177 USPQ at 568

. The Federal

Circuit’s subsequent decision in In re Mastic Inc., 

4 USPQ2d at 1294

-95 further

explains:

      If … the consent is “clothed” with the parties’ agreement to undertake
      specific arrangements to avoid confusion of the public, as in DuPont,
      the parties’ assessment of no likelihood of confusion is entitled to
      greater weight, not because of the consent itself, but because such
      arrangements are additional factors which enter into the likelihood of
      confusion.

Subsequent decisional law of the Federal Circuit has guided this tribunal to

consistently show great deference to consent agreements that detail the

arrangements undertaken to avoid confusion. See, e.g., In re Wacker Neuson SE, 

97 USPQ2d 1408

, 1411-13 (TTAB 2010) (discussion of history of case law regarding the

weight accorded consent agreements in decision reversing Section 2(d) refusal of

registration). These details comprise the “additional factors” that lend substance and

probative value to a consent agreement.

   With regard to the Agreement proffered by Applicant, the Examining Attorney

argues:

      The November 1, 2013 co-existence agreement fails to indicate the
      registrant’s consent to the use and registration of the applied-for mark
      “RAINCOAST DIP”. Notably, the co-existence agreement as it relates to
      the mark “RAINCOAST DIP” is for U.S. Application Serial No.
      77940483, rather than for the current application, U.S. Application




                                        - 15 -
Serial No. 88758625


       Serial No. 88758625.15

   We disagree. The Agreement provides for Applicant’s use and registration of

several marks, including RAINCOAST DIP for “snack food dips.” While the

Agreement refers to that mark in connection with a previously-filed (and

subsequently    abandoned)      application,   the   Agreement     clearly   contemplates

Applicant’s use and registration of RAINCOAST DIP for “snack food dips,” i.e., the

mark and goods at issue in the involved application Serial No. 88758625.

   The Examining Attorney further argues: “While applicant asserts that the

agreement is intended to extend beyond the applications and registrations listed in

the agreement, the consent agreement does not overtly include such a clause.”16 The

Examining Attorney has not cited any authority requiring parties to a consent or

coexistence agreement to explicitly provide for exigencies such as refiling a previously

abandoned application or registration for a mark. By focusing on the applications and

registrations listed by number in the Agreement, the Examining Attorney ignores the

numerous marks and goods or services specifically mentioned therein, including

RAINCOAST DIP for “snack food dips.” We further note the provision of the

Agreement whereby Applicant and Registrant agree not to seek to oppose, cancel,

limit or curtail the other’s trademarks, applications or registrations.17 The elastic




15 8 TTABVUE 12.

16 8 TTABVUE 13.

17 Agreement, paragraph 10. We also note the terms in paragraph 15 of the Agreement, which

specifies that the agreement is binding on the parties and their successors and assigns and
cannot be terminated except by written agreement.


                                          - 16 -
Serial No. 88758625


Agreement thus embraces the enumerated applications and registrations, as well as

the marks listed, including RAINCOAST DIP.

   The Examining Attorney argues in addition:

       Notably, registrant’s predecessor in interest explicitly agreed not to
       “adopt, make known, use or attempt to register the trade-mark rights to
       the word RAINCOAST as a standalone mark…as well as the words
       ‘CRISPS’ or ‘COOKIES’ in close proximity to either the word
       ‘RAINCOAST’ or the words ‘RAINCOAST TRADING’….” Conversely,
       registrant’s predecessor in interest did not explicitly agree not to adopt,
       make known, use or attempt to register the trade-mark rights to the
       word “RAINCOAST” with the word “DIP”. Thus, the prior agreement
       remains ambiguous as to the parties’ intention regarding use of the
       wording “RAINCOAST DIP”, thereby failing to minimize the risk of
       confusion for the public.18

   In the Agreement, Applicant and Registrant list the marks they have applied for,

registered and used. Registrant specifies that it will use TRADING in close proximity

to RAINCOAST in all of its marks. Registrant does not list any permutation of

RAINCOAST DIP among its marks, or indicate any intention to pursue use or

registration of RAINCOAST DIP as a mark in the future. The Agreement does not

include a specific provision that Registrant will not use or register DIP with its

RAINCOST TRADING marks. However, the Agreement similarly does not include

any provisions contemplating such use or registration.

   The Agreement lists additional steps Applicant and Registrant will take in order

to ensure that confusion is not likely, and indicates their intent to cooperate in the

event confusion occurs.19 See In re Donnay Int’l, S.A., 

31 USPQ2d 1953

, 1956 (TTAB



18 8 TTABVUE 13-14 (internal citations omitted).

19 Agreement, paragraphs 1-3, 6, 8.




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1994) (a “clothed” agreement supplies the “basis for the consent and/or

undertaking to avoid confusion”); see also In re Am. Cruise Lines, Inc., 

128 USPQ2d 1157

, 1161-63 (TTAB 2018). Such provisions are inconsistent with the Examining

Attorney’s speculative arguments regarding Registrant’s potential use of the term

DIP in any of its RAINCOAST TRADING marks.

   Finally, the Examining Attorney argues:

      Applicant purports that “[a]pplicant (including its predecessors in
      interest) and North Delta have coexisted for many years (since at least
      as early as 2006) using the RAINCOAST term along with other terms to
      create unique marks….” However, as further highlighted above, the
      record does not contain any evidence to support applicant’s claim that
      the applied-for mark “RAINCOAST DIP” was ever in fact used in
      commerce for a period of time without evidence of actual confusion with
      registrant’s “RAINCOAST TRADING” mark. Therefore, any of
      applicant’s arguments regarding “peaceful coexistence” for the wording
      “RAINCOAST DIP” are erroneous.20

   The Agreement provides that based upon Applicant’s and Registrant’s known

sales and use of the listed marks, no actual confusion has occurred or is likely to

occur.21 The Agreement does not individually list the nature and extent of use of each

mark. We will not infer from this omission, or Applicant’s election to base the involved

application on the intent to use provisions of Section 1(b) of the Trademark Act, 

15 U.S.C. § 1051

(b), that no use has been made of the RAINCOAST DIP mark.

   Evidence that the marks have been in use for a period of time without actual

confusion may render the Agreement more probative, but it is not an essential




20 8 TTABVUE 15.

21 Agreement, paragraph 7.




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provision for the Agreement to have probative value. “ The Examining Attorney has

not cited any authority that such a requirement is mandatory.” Am. Cruise Lines,

128 USPQ2d at 1162. As noted in In re Donnay, 31 USPQ2d at 1956, “the more

information that is in the consent agreement as to why the parties believe confusion

to be unlikely, and the more evidentiary support for such conclusions in the facts

of record or in the way of undertakings by the parties, the more we can assume

that the consent is based on a reasoned assessment of the marketplace, and

consequently the more weight the consent will be accorded.” However, no authority

requires that Applicant and Registrant explicitly indicate the dates of use for every

trademark contemplated by the Agreement as a prerequisite to giving some weight

to a consent agreement.

   The consent agreement in this appeal constitutes more than a mere naked consent

and, therefore, plays a more dominant role in the likelihood of confusion analysis.

Four Seasons Hotels, 

26 USPQ2d at 1073

; DuPont, 

177 USPQ at 568

. The

Agreement does not discuss all of the factors relevant to consent agreements

discussed in Four Seasons Hotels and other decisions. However, we are aware of no

authority requiring a consent agreement to discuss all of these factors in order to be

probative.

   Applicant and Registrant specifically list the RAINCOAST DIP mark for “snack

food dips” in their Agreement and detail the limitations of their respective use and

registration of their marks to avoid any likelihood of confusion. Applicant and

Registrant further agree to cooperate to permit the registration and use of each



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Serial No. 88758625


other’s marks and take steps to address any incidences of actual confusion. These

provisions are probative that the Agreement reflects the reality of no likelihood of

confusion in the marketplace. 

Id.

 Thus, the Agreement to use and register

Applicant’s mark weighs heavily against a finding of likelihood of confusion.

          E. Summary

    In DuPont, the Court of Customs and Patent Appeals stated as follows:

      [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.

177 USPQ at 568

.

   Accordingly, “clothed” consent agreements where “competitors have clearly

thought out their commercial interests” should be given great weight, and the USPTO

should not substitute its judgment concerning likelihood of confusion for the

judgment of the real parties in interest without good reason, that is, unless the other

relevant factors clearly dictate a finding of likelihood of confusion. See Four

Seasons Hotels, 

26 USPQ2d at 1073

 (quoting In re N.A.D. Inc., 

754 F.2d 996

, 

224 USPQ 969

 (Fed. Cir. 1985)); see also DuPont, 

177 USPQ at 568

; Am. Cruise Lines,

128 USPQ2d at 1163.

   Although the marks are similar, the goods are related and move in common

channels of trade to the same classes of consumers, because Applicant and Registrant

have executed a detailed coexistence agreement to use and register, we find that



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Applicant’s mark RAINCOAST DIP for “snack food dips” is not likely to cause

confusion with the registered mark RAINCOAST TRADING for various seafood

products.

   Finally, “to the extent that we have any doubts on this matter, Registrant’s

consent to Applicant’s registration of its mark [RAINCOAST DIP] negates the

presumption that doubts about likelihood of confusion are to be resolved in favor of

the Registrant.” In re Wacker Neuson, 97 USPQ2d at 1416 (TTAB); see also In re

Donnay, 31 USPQ2d at 1956 (by giving consent to the registration of applicant’s

mark, registrant has removed the basis for applying the equitable concept of resolving

doubt in favor of the registrant).

    Decision: The refusal to register Applicant’s mark RAINCOAST DIP is

reversed.




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   Appendix – Coexistence Agreement:




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