But the Ninth Circuit said no. See the case here. The court said the Sun-Maid Raisin Growers did not have an adult brand. What they had was a mark that was expressly limited. The court went on to say that the Sun-Maid Raisin Growers “… no right to the use of a mark it did not possess, and that right had been expressly limited by the agreement of 10 March 1917, in which the parties had agreed to limit the use of that mark to raisins and raisins products.” Approval agreements can be very effective in countering a refusal based on the risk of confusion, since the USPTO is supposed to attach great importance to these coexistence agreements. See In re American Cruise Lines, Inc., 128 USPQ2d 1157 (TTAB 2018). The risk is that the USPTO audit lawyer may regard an agreement submitted as a “naked approval agreement,” which contains little more than the consent of one party to register the other party`s trademark and a general statement that there is no risk of confusion. The USPTO reviews many relevant factors and evidence before reaching a conclusion regarding the approval of a trademark. In cases where the USPTO believes that the requested mark could lead to confusion between the consumer and a previously registered trademark, the USPTO will place significant weight on an agreement between the applicant and the registered trademark holder. However, the approval agreement should be sufficiently detailed, with concrete reasons and evidence indicating that the parties involved do not foresee consumer confusion and the explicit steps they will take to further minimize them. The “naked” approval agreements (which contain only permission to register the trademark and a brief statement that confusion is unlikely) are much less persuasive to the USPTO. In the end, a high probability of consumer confusion due to extremely similar brands may even null and void the most detailed consent agreement.
A co-existence agreement is a contract and, as such, it must meet the legal requirements of a contract – offer, acceptance, consideration, meeting spirits, benefit, etc. Due to the nature of trademark and registration procedures, co-existence agreements are written. A trademark filer who will be denied registration because of questionable and questionable marks with a previously registered trademark may attempt to overcome the refusal by issuing an approval agreement with the holder of the previously registered and undersaled trademark.