Wacker Neuson SE

                        THIS OPINION IS A
                    PRECEDENT OF THE T.T.A.B.



                                   Mailed:      December 28, 2010




         UNITED STATES PATENT AND TRADEMARK OFFICE
                          ________

              Trademark Trial and Appeal Board
                          ________

                   In re Wacker Neuson SE
                          ________

                    Serial No. 79060553
                          _______

Mollie A. Newcomb of Boyle Fredrickson, S.C. for Wacker
Neuson SE.

Fred Carl III, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
                           _______

Before Bucher, Grendel and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

     Wacker Neuson SE has filed an application to register,

on the Principal Register, WACKER NEUSON in standard

characters for goods and services including:

     Work machines for the building industry and for
     the building material industry, namely, skid
     steer loaders, articulated front end wheel
     loaders, all-wheel-steered front end
     loaders...compact excavators, mobile excavators,
     crawler excavators, and parts therefor, namely,
     buckets, blades ..., in International Class 7;
     and
Ser No. 79060553


     Rental of construction machines, in International
     Class 37.1

     Registration has been refused under Section 2(d) of

the Trademark Act, 

15 U.S.C. §1052

(d), on the ground that

applicant’s mark, when used with its identified goods and

services, so resembles the typed mark NEUSON registered on

the Supplemental Register for “construction machines,

namely, excavators” in International Class 7.2

     Applicant appealed the final refusal and filed a

request for reconsideration.    On December 16, 2009, the

examining attorney denied the request for reconsideration

and the appeal was resumed.    On June 2, 2010, the Board

denied applicant’s request for remand.

     The appeal is fully briefed.     However, on July 15,

2010, the Board noted that applicant did not provide an

explanation for the untimely filing of its reply brief and

it stated, in view thereof, that it would not be

considered.




1
  The application is based upon a request for extension of
protection under Trademark Act §66(a), 15 U.S.C. §1141f(a), and
International 

Registration No. 0981255,

 issued May 28, 2008.
This is merely a representative list from the goods in
International Class 7. In addition, the application also
includes goods in International Classes 9 and 11 that are not
subject to a final refusal.
2
  Supplemental 

Registration No. 1822113,

 based on Section 44(d),
issued on February 15, 1994, renewed.


                                2
Ser No. 79060553


     As a preliminary matter, the examining attorney’s

objection to evidence attached to applicant’s brief as

untimely is sustained and this evidence has not been

considered.   Trademark Rule 2.142(d).

     Our determination of the issue of likelihood of

confusion is based on an analysis of all of the probative

facts in evidence that are relevant to the factors set

forth in In re E. I. du Pont de Nemours & Co., 

476 F.2d 1357

, 

177 USPQ 563

 (CCPA 1973).    See also, In re Majestic

Distilling Co., Inc., 

315 F.3d 1311

, 

65 USPQ2d 1201

(Fed. Cir. 2003).   In any likelihood of confusion analysis,

two key considerations are the similarities between the

marks and the similarities between the goods.    See

Federated Foods, Inc. v. Fort Howard Paper Co., 

544 F.2d 1098

, 

192 USPQ 24

 (CCPA 1976).    However, in this case, we

have a third key consideration, namely, a consent to allow

applicant to use and register WACKER NEUSON for the

identified goods and services, signed by the owner of the

cited registration, and an agreement between applicant’s

predecessor, Wacker Construction Equipment AG, and

registrant detailing applicant’s rights of use and

registration regarding the NEUSON portion of its mark.

     There seems to be little dispute that the marks are

similar and the goods and services are related.    Indeed,


                              3
Ser No. 79060553


applicant’s listing of goods in International Class 7

includes “compact excavators, mobile excavators, and

crawler excavators” which are legally identical to

registrant’s “excavators.”    It is sufficient if likelihood

of confusion is established for any item encompassed by the

identification of goods in the application.    Tuxedo

Monopoly, Inc. v. General Mills Fun Group, 

648 F.2d 1335

,

209 USPQ 986

 (CCPA 1981).    With regard to applicant’s

“rental of construction machines,” this identification

necessarily includes rental of registrant’s “excavators.”

The record supports a finding of relatedness between

registrant’s goods and applicant’s rental services for such

goods.   Specifically, the record includes several third-

party registrations for “excavators” and “rental of

construction equipment” under a single mark.    In re Albert

Trostel & Sons Co., 

29 USPQ2d 1783

, 1785-86 (TTAB 1993)

(third-party registrations probative to the extent they

show that the goods and services listed therein are of a

kind that may emanate from a single source).

     As to the similarity of the marks, we first note the

inherent weakness of registrant’s mark, in that it resides

on the Supplemental Register, presumably because it is a

surname.   Moreover, applicant’s mark has the additional

element “WACKER” which appears at the beginning of its


                               4
Ser No. 79060553


mark.   However, applicant did not present argument as to

this du Pont factor and on this record we consider the

marks to be similar.

      Applicant characterizes the issues on appeal as (1)

whether applicant’s mark and registrant’s mark refer to the

same entity; (2) whether registrant’s letter of consent

bears substantial weight; and (3) whether the relevant

consumers are likely to be confused by the use of WACKER

NEUSON.

      By way of background, applicant, Wacker Neuson SE, is

the resulting company from a merger between Wacker

Construction Equipment AG and Neuson Kramer Baumaschinen

AG.   The NEUSON marks that originated with Neuson Kramer

were put in the custody of a private trust, PIN

Privatstiftung (PIN).3   PIN then granted applicant’s

predecessor, Wacker Construction Equipment AG, an

exclusive, irrevocable, and infinite right to use the mark

NEUSON in, inter alia, the United States in the mark WACKER

NEUSON and consented to applicant’s predecessor’s use and

registration of the mark NEUSON as part of the mark WACKER

NEUSON in the United States.    As a result of the agreement,


3
  While the documents related to these statements were untimely
submitted, we consider the statements made by applicant during
prosecution of the application and in the brief.




                                5
Ser No. 79060553


applicant’s predecessor filed for and was granted an

International Registration for the mark WACKER NEUSON by

the International Bureau based on a German registration.

Subsequently, as a result of the merger, both the

International Registration and the subject application have

been amended to reflect applicant as the owner.

      In traversing the refusal, applicant submitted two

agreements that purport to establish that registrant

consents to applicant’s use and registration of the mark

WACKER NEUSON, and that registrant and applicant constitute

a single source.   Applicant argues that the:

      WACKER NEUSON mark and the NEUSON mark refer to
      the same company, i.e., Appellant. The license
      agreement of record is ... between Wacker
      Construction (now, after the merger between
      Equipment AG and Neuson Kramer Baumaschinen AG,
      known as Wacker Neuson) and a third party, PIN.
      Every indication of record is that PIN has
      granted Wacker Neuson an exclusive, irrevocable,
      and unlimited license to use the NEUSON mark in
      connection with the name WACKER.

Br. p. 3.

      Applicant continues:

      ...even if confusion were to arise, it would be
      harmless. In the United States, all products
      formerly sold under the WACKER name originate
      with Appellant, all products formerly sold under
      the NEUSON name originate with Appellant, and all
      products currently sold under the WACKER NEUSON
      name originate with Appellant.

Id.

                              6
Ser No. 79060553


      Applicant also points out that registrant has

consented to applicant’s use and registration of the WACKER

NEUSON mark in the United States.   Applicant states that:

      [N]ot only has PIN consented to Wacker Neuson’s
      use and registration of WACKER NEUSON, it
      actually requires such use by the terms of its
      agreement, and has also required that Wacker
      Neuson apply for registration of the mark.
      Appellant and Registrant are the parties most
      likely to be damaged in the event confusion might
      arise, and most able to assess the likelihood of
      such confusion. And yet Registrant has consented
      to Appellant’s use and registration of the mark.
      The Examining Attorney must give the PIN letter
      of consent substantial weight as the
      uncontroverted evidence in this case.

Br. p. 4.

      Finally, applicant asserts that:

      ...the relevant consumers are familiar with the
      construction equipment industry and major
      happenings in the industry. The merger of Wacker
      Construction and Neuson Kramer was significant
      news ... As a result, the relevant consumer is
      even less likely to be confused in the face of
      the mark WACKER NEUSON. If the relevant consumer
      understands that both WACKER NEUSON and NEUSON
      refer to the same source, there can be no
      likelihood of confusion.

Id.

      The examining attorney first contends 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... [and
      applicant] was encouraged to submit a more


                              7
Ser No. 79060553


     “clothed” consent agreement, indicating the
     registrant’s consent to the use and registration
     of the mark by applicant. However, applicant has
     not subsequently provided a more “clothed”
     consent agreement. For these reasons, the
     consent agreement is nothing more than a request
     to register the mark, notwithstanding the
     likelihood of confusion that may arise between
     the marks. This makes it a “naked” consent that
     should not be given the deference that is given
     to a genuine “clothed” consent.

Br. pp. 9-10.

     Next, the examining attorney asserts that the record

does not support a finding of “unity of control” such that

applicant and registrant could be considered the same

source.   The examining attorney notes that during

prosecution applicant “alleged that it and the owner of the

registered mark are both wholly owned subsidiaries of

another company [thus] additional evidence is required to

show unity of control and that the parties constitute a

single source.”

     With regard to the “license agreement” submitted by

applicant, the examining attorney states that:


     [T]he agreement never indicates that applicant
     owns the trademark WACKER NEUSON. While the
     license provides to applicant an ‘infinite right’
     to use the wording NEUSON together with WACKER as
     WACKER NEUSON, this right is limited by the terms
     of the license itself. This is not an ownership
     right that is granted [and] based on multiple
     parts of the signed agreement, it is clear that
     ownership of the trademark has not passed to



                              8
Ser No. 79060553


     applicant, but resides with the owner of the
     cited registration.

Br. p. 12.

     Further, he argues that:

     [T]he fact that applicant has entered into a
     license with the owner of the cited registration
     is an indication that applicant recognizes that
     its use of its applied-for marks would otherwise
     be infringing on the rights of another,
     essentially agreeing that applicant’s use of its
     marks is likely to cause confusion with the
     trademark owned by the licensor. Here, applicant
     has entered an agreement with the owner of the
     registered mark that allows applicant to use the
     registered mark within its mark. The agreement
     is necessary because without it this use would
     infringe the registered mark. Implicit in this
     license is applicant’s admission of likelihood of
     confusion. Also, in the body of the agreement
     applicant has explicitly agreed that the
     trademarks are owned by registrant, not
     applicant.

Br. p. 13.

     We begin our analysis with a brief overview of the

guidance provided by the Court of Appeals for the Federal

Circuit and its predecessor, the Court of Customs and

Patent Appeals, on how much weight should be given to a

consent agreement and the perspective on what constitutes a

single source.

     Thirty years ago, the CCPA addressed the issue of

consent agreements and held that:

     The history of trademark litigation and the
     substantial body of law to which it relates
     demonstrate the businessman’s alertness in


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Ser No. 79060553


     seeking to enjoin confusion. In so doing, he
     guards both his pocketbook and the public
     interest.

     Thus when 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.

du Pont, 

177 USPQ at 568

 (emphasis in original).

     Later, the Federal Circuit in another consent

agreement case involving the marks NARKOMED for anesthesia

machines, on the one hand, and NARCO MEDICAL SERVICES for

leasing of hospital and surgical equipment and NARCO and

design for an apparatus for administration of anesthesia,

on the other, reversed the Board’s holding that there was a

likelihood of confusion.    “While we are uninformed as to

all the details of the disputes and negotiations, these

competitors clearly thought out their commercial interests

with care.    We think it highly unlikely that they would

have deliberately created a situation in which the sources

of their respective products would be confused by their

customers.”   In re N.A.D. Inc., 

754 F.2d 996

, 

224 USPQ 969, 970

 (Fed. Cir. 1985).




                               10
Ser No. 79060553


     Finally, in In re Four Seasons Hotels Ltd., 

987 F.2d 1565

, 

26 USPQ2d 1071

 (Fed. Cir. 1993), the Court, in

reversing the Board’s decision affirming a Section 2(d)

refusal, stated the following:

     Not for the first time, the “misguided efforts”
     of the PTO have led the Board to mistakenly “take
     it upon itself to prove facts, quite
     unnecessarily and by reasoning entirely its own,
     to establish a case of likelihood of confusion
     when not asked to do so.” Bongrain Int’l (Am.)
     Corp. v. Delice De France, Inc., 

811 F.2d 1479, 1485

, 

1 USPQ2d 1775, 1779

 (Fed. Cir. 1987).
     Believing that its role in enforcing section 2(d)
     of the Lanham Act is to second-guess the
     conclusions of those most familiar with the
     marketplace, the PTO “is, at times, like a cat
     watching the wrong rat hole.” The role of the
     PTO is not in “deny[ing] registration if it feels
     there is, by its independent determination, any
     likelihood of confusion of any kind as between
     the mark sought to be registered and the prior
     registration, without regard to the desires,
     opinions or agreements of the owner of the prior
     registration. ...” In re Nat’l Distillers &
     Chem. Corp., 

297 F.2d 941, 948

, 

132 USPQ 271, 277

     (CCPA 1962) (Rich, J., concurring). Rather, the
     PTO’s role is to protect owners of trademarks by
     allowing them to register their marks. Denial of
     registration does not deny the owner the right to
     use the mark, and thus, will not serve to protect
     the public from confusion. “No government could
     police trademark use so as to protect the public
     from confusion. It must count on the self-
     interest of trademark owners to do that.” 

297 F.2d at 950-51

, 

132 USPQ at 279

.

See also Bongrain International v. Delice de France, 

811 F.2d 1479

, 

1 USPQ2d 1775, 1778

 (Fed. Cir. 1987) (“We have

often said in trademark cases involving agreements

reflecting parties’ views on the likelihood of confusion in


                             11
Ser No. 79060553


the marketplace, that they are in a much better position to

know the real life situation than bureaucrats or judges and

therefore such agreements may, depending on the

circumstances, carry great weight ... Here, the board

appears effectively to have ignored the views and conduct

of the parties”).

     The examining attorney relies on In re Mastic Inc.,

829 F.2d 1114

, 

4 USPQ2d 1292

 (Fed. Cir. 1987).     In that

case, the Court affirmed the Board’s holding that there was

a likelihood of confusion despite applicant’s submission of

a consent agreement.     However, in that case, the agreement

provided consent only to registration, not use, of the

mark.   Noting that the applicant’s application was not

based on use in the United States, and the consent

referenced the parties’ marketing channels as a basis for

their conclusion of no likelihood of confusion, the Court

stated that if applicant was “making the argument that so

long as it makes no use in the United States, no confusion

will occur, such argument has no validity.”     Mastic, 

4 USPQ2d at 1295

.     Further, in Mastic, the “consent is

conspicuously silent on what are the underlying facts which

led the parties to their conclusion of no likelihood of

confusion.”   

Id.

    Unlike Mastic, the record here is not

silent as to the arrangements between applicant and


                                12
Ser No. 79060553


registrant and how that implicates possible confusion.       As

stated in Mastic:

     One must look at all of the surrounding
     circumstances, as in DuPont, to determine if the
     consent reflects the reality of no likelihood of
     confusion in the marketplace, or if the parties
     struck a bargain that may be beneficial to their
     own interests, regardless of confusion of the
     public. For example, the parties may prefer the
     simplicity of a consent to the encumbrances of a
     valid trademark license. However, if the goods
     of the parties are likely to be attributed to the
     same source because of the use of the same or a
     similar mark, a license (not merely a consent) is
     necessary to cure the conflict. ... If the
     evidence of record establishes facts supporting
     an applicant’s argument that the two uses can
     exist without confusion of the public, even a
     “naked” consent to registration is significant
     additional evidence in support of the applicant’s
     position.

Id.

 (emphasis added)

     With regard to the issue of single source, where

separate legal entities constitute the same source, a

refusal under Section 2(d) may not stand.    In re Wella

A.G., 

5 USPQ2d 1359

, 1361 (TTAB 1987), reversed and

remanded on other grounds, In re Wella A.G., 

8 USPQ2d 1365

(Fed. Cir. 1988).   However, there must be a “unity of

control over the use of the trademarks.”    

Id.

   In Wella

this “unity of control” was sufficiently evidenced by a

declaration establishing that the applicant, Wella AG,

owned substantially all the outstanding stock of the

registrant, Wella (USA).   However, what establishes “unity


                              13
Ser No. 79060553


of control” depends on the circumstances in every case.

Trademark Manual of Examining Procedure (TMEP) 1201.07(b)

(7th ed. rev. 2010).

     Finally, in some circumstances, where there is a

relationship, but perhaps not the level of “unity of

control” envisioned by the Wella doctrine, a consent from

the related company may suffice.   As stated in In re

Sumitomo Electric Industries, Ltd., 

184 USPQ 365

, 367 (TTAB

1974):

     While this letter of consent does not constitute
     an agreement of the type involved in the Du Pont
     case, this does not mean that it is unacceptable
     herein. Each agreement submitted in support of
     registration must necessarily be judged for its
     particular value in light of the particular
     circumstances surrounding the relationship or
     arrangement between the parties thereto. In the
     instant case, the relationship between the
     parties, both members of the “Sumitomo Group”
     makes the letter of consent a viable one and one
     on which we can conclude that confusion is not
     reasonably likely to occur. That is, the parties
     undoubtedly work hand-in-hand to avoid confusion
     in trade which would be inimical to their best
     interests, and they are in a position to
     expeditiously correct any situation that could
     possibly give rise to confusion in the marketing
     of their respective goods.

     In these hybrid situations, the consent may not be

“clothed” in the same manner as would be required from

separate entities without any relationship to each other.

     With these legal parameters in mind, we review the

agreements submitted by applicant and assess their


                             14
Ser No. 79060553


implications for our du Pont analysis.     The consent

agreement reads in its entirety as set forth below:

     We, the undersigned, PIN PRIVATSTIFTUNG, ... the
     assignees and proprietors of US trademark no.
     182213 (74/346,259) “NEUSON” (wordmark) hereby
     consent to the use and registration of
     international trademark no. 981255 (US trademark
     application no. 79/060553) “Wacker Neuson”
     (wordmark) in the United States of America (US)
     in the name of Wacker Neuson SE ... in respect of
     all the goods and services, listed therein.

     The examining attorney characterized this agreement as

a “naked consent” and did not accord it weight to overcome

the other du Pont factors in the likelihood of confusion

analysis.

     Thereafter, upon request for reconsideration,

applicant submitted the license agreement between it and

registrant.4   Some pertinent portions are set forth below:

          1. On September 23, 2007, LICENSOR
     [registrant] concluded a contract concerning the
     merger of WAG [applicant’s predecessor] and
     Neuson Kramer Baumaschinen AG ...

          4. In the MERGER AGREEMENT, LICENSOR
     undertook to grant LICENSEE [applicant’s
     predecessor] the gratuitous, exclusive,
     irrevocable and infinite right to use the
     TRADEMARKS, each in connection with the “Wacker”
     trademark, including use of the TRADEMARKS as a
     company component of the company name “Wacker
     Neuson”. This agreement (hereinafter referred to
     as “LICENSE AGREEMENT”) regulates the details of
     the grant of such rights of use to LICENSEE and

4
  The rights and obligations of this agreement have passed to
applicant as the legal successor to Wacker Construction Equipment
AG. Agreement ¶ 9.1.


                               15
Ser No. 79060553


     its obligation to use the TRADEMARKS. LICENSEE
     is aware that the “NEUSON” trademark (written in
     Chinese characters), application No. 5477753, has
     only been applied for in China, but is not yet
     registered.

          1.1 “TRADEMARKS” are the trademarks listed
     in Annex 1.1 [the marks are for the word NEUSON
     by itself and includes the cited registration]

          2.1 LICENSOR shall grant LICENSEE an
     exclusive, gratuitous, irrevocable and infinite
     right to use the TRADEMARKS (including all other
     signs and any and all goodwill associated
     therewith) in the CONTRACT TERRITORY in
     accordance with this LICENSE AGREEMENT for the
     products manufactured or distributed by or for
     LICENSEE and by or for the WACKER NEUSON
     COMPANIES, in any case, however, only in direct
     combination with the “Wacker” trademark (i.e.
     either as “Wacker Neuson” or “Neuson Wacker”) and
     only, if and when not otherwise agreed in Clauses
     2.3, 2.6 and 2.7. The right of use also includes
     use of the TRADEMARKS as a company component of
     the company name “Wacker Neuson” and as a domain
     name by LICENSEE and the WACKER NEUSON COMPANIES.

          2.9 LICENSOR already now consents to
     registration of the “Wacker Neuson” trademark
     through LICENSEE for the countries and classes of
     goods licensed in line with Clause 2.1, 2.6 and
     2.7. LICENSEE shall bear the costs for the
     respective application/registration procedures.

          3.3 Licensee is obliged to use the
     TRADEMARKS in the CONTRACT TERRITORY for the
     products manufactured or distributed by or for
     LICENSEE, unless the right of use is vested with
     LICENSOR in accordance with Clause 2.3. If
     LICENSEE does not use the TRADEMARKS in one of
     the countries of the CONTRACT TERRITORY
     throughout three (3) years for what reason
     whatsoever, LICENSEE is obliged to advise
     LICENSOR thereof without delay.

          3.4 Each use of the TRADEMARKS through
     LICENSEE is deemed a use through LICENSOR.


                             16
Ser No. 79060553


     LICENSEE hereby transfers any and all other signs
     that may be created in the CONTRACT TERRITORY as
     a result of the use of the TRADEMARKS to LICENSOR
     in advance.

          4.1 LICENSOR undertakes to maintain the
     TRADEMARKS in the scope valid at the time of
     concluding this LICENSE AGREEMENT, unless it
     conflicts with legal hurdles, in particular third
     party rights, and take all action required to
     maintain validity and enforceability of the
     TRADEMARKS. LICENSOR authorizes LICENSEE already
     now to defend those TRADEMARKS used in direct
     connection with the designation “Wacker” against
     attacks on their existence (e.g. action for
     cancellation). LICENSEE shall bear the costs of
     such litigation.

          5.1 As between the parties, LICENSEE hereby
     acknowledges that LICENSOR is the sole owner of
     the rights in the TRADEMARKS and/or other signs
     in accordance with Clause 3.4 and any and all
     goodwill associated therewith, that those are and
     shall remain the sole and exclusive property of
     LICENSOR and that LICENSEE does not obtain any
     right to or title in the TRADEMARKS and/or other
     signs pursuant to Clause 3.4 based on this
     LICENSE AGREEMENT, except for the license granted
     under this LICENSE AGREEMENT.

          5.3 Upon termination of this LICENSE
     AGREEMENT, any and all rights granted to LICENSEE
     in the TRADEMARKS and/or other signs in line with
     Clause 3.4 shall expire automatically. LICENSEE
     shall terminate use of the TRADEMARKS and/or
     other signs in accordance with Clause 3.4 or of
     similar trademarks and/or signs upon termination
     of this LICENSE AGREEMENT. A use-up period of
     six (6) months from termination of this LICENSE
     AGREEMENT shall apply for orders traceably
     already placed at the time when this LICENSE
     AGREEMENT has been terminated and for use in
     company names. Any and all rights, goodwill or
     other claims, including protection of get-up
     acquired in the TRADEMARKS and/or other signs in
     accordance with Clause 3.4 shall be deemed
     LICENSOR’S sole property.


                             17
Ser No. 79060553



          6.1 LICENSEE shall inform LICENSOR
     immediately in writing of any infringement or
     challenge of LICENSOR’s rights in the TRADEMARKS
     and/or other signs in accordance with Clause 3.4.
     In case those TRADEMARKS are infringed that are
     used in direction [sic] connection with the
     designation “Wacker”, LICENSEE undertakes to
     initiate and/or conduct any and all actions or
     proceedings required against violators as soon as
     LICENSEE becomes aware of third-party
     infringement of the TRADEMARKS.

     The Addendum to the License Agreement includes the

following:

          2. LICENSOR hereby grants LICENSEE the
     right to apply for registration of the “WACKER
     NEUSON” trademark in the countries stipulated in
     Annex./A and in the specified form as a trademark
     for the classes of goods determined in Annex./B.
     LICENSEE shall bear the costs for the respective
     registration procedure.

          4. LICENSOR shall at all times remain
     entitled to apply for registration of the
     “NEUSON” trademark as a trademark in its own name
     in the countries listed in Annex./A, to expand it
     to additional classes of goods (including those
     specified in Annex./B) and use it. Should
     registration of the “NEUSON” trademark or
     expansion to additional classes of goods not be
     possible due to LICENSEE’s industrial property
     rights for the “WACKER NEUSON” trademark,
     LICENSEE shall grant LICENSOR a gratuitous,
     exclusive, irrevocable and infinite right to use
     the designation “NEUSON” in the relevant country
     in accordance with the LICENSE AGREEMENT and
     undertakes to enforce its own rights against
     third parties on LICENSOR’s request.

     This “licensing agreement” grants applicant the

“exclusive, gratuitous, irrevocable and infinite right” to

use the mark NEUSON within applicant’s mark WACKER NEUSON.


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Applicant asserts that it is the owner of the WACKER NEUSON

mark and the agreement does not directly contradict that

statement.   Contrary to the examining attorney’s

contention, applicant does not, in this agreement

acknowledge registrant’s ownership of the mark WACKER

NEUSON, merely registrant’s ownership of the mark NEUSON

and other future marks that may be created as a result of

use of the mark NEUSON.5    See ¶ 3.4.   What is clear from the

record is that registrant maintains ownership of the mark

NEUSON by itself. See ¶ 5.1.

     While applicant’s use of the NEUSON portion of its

mark WACKER NEUSON is subject to a “licensing” arrangement

with registrant, there is nothing definitive in the

agreement that ownership of the combined mark does not

reside with applicant.     Further, applicant is obliged under

paragraph 3.3 to use the mark NEUSON.     As applicant

confirmed in its brief, it manufactures and sells the goods

identified in the application also under the NEUSON mark.

Thus, we have before us both a consent to use and register

the mark WACKER NEUSON from the registrant and evidence


5
  In any event, in circumstances where the applicant imports or
distributes goods for the owner of a mark, registration is
allowed where the applicant submits “written consent from the
owner of the mark to registration in the applicant’s name.” TMEP
§ 1201.06(a). In this case, the foreign owner of the NEUSON
registration has consented to its exclusive licensee’s
registration of the mark.


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Ser No. 79060553


that the goods and services with the respective marks

WACKER NEUSON and NEUSON are manufactured and sold by

applicant.

     In applying the case law, the examining attorney

argues that the circumstances presented do not fit in

either the consent pile or the single source pile and in

fact are contradictory.      However, we find that combined

these agreements are sufficient to outweigh the other du

Pont factors.      First, registrant clearly consents to

applicant’s use and registration of the mark WACKER NEUSON.

See Consent Agreement.      Second, the record makes clear that

the parties are related and the goods and services are

provided by applicant.      See, e.g., License Agreement ¶¶ 1

and 4 wherein registrant is implicated as a party involved

in the merger agreement; and ¶ 3.3 which obligates

applicant to use the mark NEUSON.      Thus, applicant’s

statement that all goods and services provided under the

marks NEUSON and WACKER NEUSON come from applicant, is

supported by the record.      Moreover, the license agreement

acknowledges applicant’s right to use and register the mark

WACKER NEUSON in the United States.      See Agreement ¶ 2.9;

Addendum ¶ 2.      Finally, Addendum paragraph 4 recognizes

applicant’s property rights in the WACKER NEUSON trademark,

inasmuch as it provides that applicant grants registrant a


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Ser No. 79060553


right to use the NEUSON mark in the event that applicant’s

“industrial property rights in the WACKER NEUSON trademark”

otherwise prevent such use.

     As noted by the Court in Mastic, depending on the

surrounding circumstances “even a ‘naked’ consent to

registration is significant additional evidence in support

of the applicant’s position.”    Mastic, 

4 USPQ2d at 1295

.

We find the circumstances here to be more in the category

of Sumitomo where the fact that the applicant and

registrant were members of an overarching group made an

otherwise thin consent agreement a viable one.    Thus, based

on the “particular circumstances surrounding the

relationship [and] arrangements between the parties” here

we can conclude that “confusion is not reasonably likely to

occur.”

     When we view the agreements of record on balance with

the other factors, we cannot say that these other factors

dictate that there is a likelihood of confusion.

Therefore, we conclude that there is no likelihood of

confusion.

     Finally, to the extent that we have any doubts on this

matter, registrant’s consent to applicant’s registration of

its mark WACKER NEUSON negates the presumption that doubts

about likelihood of confusion are to be resolved in favor


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Ser No. 79060553


of the registrant.    In re Donnay International Societe

Anonyme, 

31 USPQ2d 1953

, 1956 (TTAB 1994) (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 under Section

2(d) of the Trademark Act is reversed.




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