Wacker Neuson SE

Trademark Trial and Appeal Board

Dec 28, 2010

No. 79060553 (T.T.A.B. Dec. 28, 2010)

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

THIS OPINION IS A
PRECEDENT OF THE T.T.A.B.
Ser No. 79060553

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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.
Ser No. 79060553

3
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,
Ser No. 79060553

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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
Ser No. 79060553

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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.

Ser No. 79060553

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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.
Ser No. 79060553

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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
Ser No. 79060553

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“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
Ser No. 79060553

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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
Ser No. 79060553

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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).
Ser No. 79060553

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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
Ser No. 79060553

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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
Ser No. 79060553

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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
Ser No. 79060553

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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
Ser No. 79060553

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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.
Ser No. 79060553

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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.
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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.
Ser No. 79060553

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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.
Ser No. 79060553

19
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.
Ser No. 79060553

20
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
Ser No. 79060553

21
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
Ser No. 79060553

22
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.