Iron Works Barbecue, Inc., The

BLAZIER CHRISTENSEN BROWDER & VIRR
A PROFESSIONAL CORPORATION
ATTORNEYS AND COUNSELORS

BARTON OAKS PLAZA
901 S. MOPAC EXPY., BLDG. V, STE. 200
JOHN C. BLAZIER AUSTIN, TEXAS 78746 TELEPHONE (512) 476-2622
FLEUR A. CHRISTENSEN FACSIMILE (512) 476-8685
THOMAS F. VIRR**
PAUL K. BROWDER WWW.BLAZIERLAW.COM **BOARD CERTIFIED-TAX LAW, TEXAS BOARD
JUSTIN M. WELCH OF LEGAL SPECIALIZATION
JONATHAN S. CONNOR
JOHN P. FERGUSON

writer’s direct e-mail: [email protected]

March 10, 2017

Mr. Matthew J. Cuccias
Trademark Examining Attorney Via TEAS
Law Office 116
P.O. Box 1451
Alexandria, Virginia 22313-1451

Re: Proposed amendments for application, serial no. 76 / 719477, for the Mark IRON
WORKS, on behalf of The Iron Works Barbecue, Inc.

Dear Mr. Cuccias:

Pursuant to your Office Action letter for the above Mark, please consider the following in
support of issuing an approval for its publication:

Likelihood of Confusion & Consent Agreement.

The PTO refused registration claiming a likelihood of consumer confusion with the
marks in U.S. Registration Nos. 4,731,387 and 4,731,609 for IRONWORKS and the following
logo, respectively:

The marks are registered to the same owner, and used for “hotel services.”

The Office Action letter contends Applicant’s use of IRON WORKS for “restaurant
services” would be likely to cause consumer confusion, arguing “[i]t is common for hotels to
offer restaurant services.” Applicant respectfully disagrees that confusion is likely based on this
contention. However, instead of addressing the contention directly at this time, Applicant has
obtained the attached Consent Agreement from the Registrant of IRONWORKS and the
corresponding logo.

Trademark Manual of Examining Procedure §1207.01(d)(viii) recognizes case law from
the Federal Circuit for the proposition that “consent agreements should be given great weight,

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and that the USPTO should not substitute its judgment concerning likelihood of confusion for the
judgment of the real parties in interest without good reason.” The TMEP cites the Federal
Circuit’s opinion in In re E.I. du Pont de Nemours & Co., holding

“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.” 1

The Consent Agreement is not a “naked” one – i.e. an agreement with nothing more than
the registrant’s consent to registration. 2 Rather, it cites various reasons for the Parties’
agreement that Applicant’s “use of IRON WORKS under the restrictions set forth below is
unlikely to cause consumer confusion . . .” For example, Registrant recognizes that, although it
does operate restaurants, they are not operated under IRONWORKS or IRON WORKS. Also, it
recognizes that it is “not likely to allow [Applicant] to operate a restaurant within its hotel so as
to create the impression that Iron Works is affiliated with [Registrant’s] hotel operations.” The
tacit point is, that unless the restaurant is within the hotel, the Parties think source confusion is
unlikely.

The agreement also recognizes that the restrictions placed on Applicant’s display of and
use of IRON WORKS are sufficient to prevent a likelihood of confusion. Specifically, Applicant
must display IRON WORKS “with a space between IRON and WORKS,” contrary to
Registrant’s use without the space. Also, “no single letter of [IRON WORKS] may be
underlined,” as is the “O” in Registrant’s logo. And finally, Applicant agreed not to “open a
location within a hotel.” Again, the tacit point is, that unless the restaurant is located within a
hotel, the Parties think source confusion is unlikely. When an agreement restricts use of the
mark to certain markets or customers to reduce confusion, the consent agreement is given more
weight. 3

Please do not hesitate to call with questions or comments.

Sincerely,

Justin M. Welch
For the Firm

cc: client via email

1
In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1363 (Fed.Cir. 1973).
2
See TMEP §1207.01(d)(viii) (citing In re E.I. du Pont de Nemours & Co., 476 F.2d at 1362.
3
See TMEP §1207.01(d)(viii) (citing In re Permagrain Prods., Inc., 223 USPQ 147 (TTAB 1984)
(finding that consent agreement that “did not restrict the markets or potential customers for their goods
in such a way as to avoid confusion” was “naked” agreement, insufficient to change conclusion that
confusion likely).
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