Trademark Law Alert -- Settlement Agreement Concerning One Mark Supports Registration of a Substitute Mark
The Trademark Trial and Appeal Board (TTAB) relied on a 2022 settlement agreement (“Settlement”) (akin to a trademark consent agreement) to find no likelihood of confusion between the marks PRIM and HOUSE OF PRIM, both for goods and services related to home organization goods and services.
It reached this conclusion even though the Settlement arose out of an earlier dispute over Applicant’s use of a different mark PRIM LIVING. In the Settlement, Applicant had agreed to rebrand itself entirely as THE HOUSE OF PRIM or HOUSE OF PRIM, which the parties agreed was not confusingly similar to PRIM alone, despite the identity of services.
Our previous Trademark Law Alert entitled “A Consent Agreement Walks the Plank” detailed the customary provisions of a trademark consent agreement, which the TTAB found to be lacking in its earlier Gasparilla decision discussed in that Alert. As we anticipated, this instant case had a different result, based on a different factual record.
Prim LLC (Applicant) filed five applications to register the HOUSE OF PRIM mark for various home organization goods and services in five different classes. The Examining Attorney refused registration, citing a likelihood of confusion with the registered mark PRIM for home organization services.
Applicant appealed, and the TTAB consolidated the appeals and reversed the refusal as to all classes.
The TTAB found the marks to be similar, particularly since the registered mark PRIM was subsumed within Applicant’s mark HOUSE OF PRIM. It also found the services to be legally identical or related, and the trade channels to be overlapping.
However, the TTAB gave substantial weight to the Settlement between the parties. The TTAB emphasized that the parties were in a better position to know the real-life situation relating to likelihood of confusion in the marketplace, and the TTAB judges “should not substitute our views for theirs.”
The Settlement did not contain certain provisions that the Examining Attorney characterized as “fundamental to a consent agreement,” namely, provisions regarding efforts to prevent confusion or to cooperate and take steps to avoid future confusion relating specifically to the mark HOUSE OF PRIM.
Here is a summary of the relevant Settlement provisions:
- Applicant agreed to rebrand itself entirely from PRIM LIVING to THE HOUSE OF PRIM and/or HOUSE OF PRIM;
- The parties agreed that THE HOUSE OF PRIM and HOUSE OF PRIM were not confusingly similar to PRIM for home organization services;
- Applicant agreed not to apply to register, or cause a third party to register, the PRIM mark or any confusingly similar variant, including but not limited to PRIM LIVING, in connection with home organization services;
- The parties agreed “to continue to cooperate in taking reasonable actions to avoid confusion and reasonable efforts to correct any instances or likelihood of confusion that come to their attention arising from the subject matter of this Agreement”;
- Applicant agreed not to challenge or cause any third party to challenge or cancel any PRIM registration owned by Lindsey Sanchez or her company;
- Applicant agreed to remove all references to the PRIM mark, and any confusingly similar variant including PRIM LIVING, from its website and social media, to destroy all physical and electronic materials having such marks, and to cancel or modify business registrations, domain registrations and social media handles having such terms; and
- The geographic scope of the Settlement was limited to the U.S.
The TTAB noted that the Settlement was reached with serious consideration of the actual possibility of confusion of PRIM with PRIM LIVING, while agreeing to the HOUSE OF PRIM rebranding. The TTAB also inferred from the Settlement that the parties had “an agreed system” to avoid confusion regarding the PRIM mark and similar variants, citing the Settlement’s requirements that Applicant take specified steps to remove and avoid references to the PRIM mark while agreeing to the HOUSE OF PRIM rebranding.
The Examining Attorney argued that the Settlement did not function as a consent to registration of HOUSE OF PRIM because it was executed before the filing date of the applications to register that mark. The TTAB rejected this argument, noting that the Settlement referred to the PRIM registration and expressly stated that confusion was not likely between PRIM and HOUSE OF PRIM. The TTAB surmised that, if the Settlement had only permitted the use but not registration of HOUSE OF PRIM, such terms would have been explicitly stated.
Therefore, the TTAB concluded that the Settlement was sufficient, and outweighed all the factors favoring a likelihood of confusion. Thus, the TTAB allowed HOUSE OF PRIM to proceed to registration for all the specified classes.
In re Prim LLC, Application No. 98301711 (Consolidated) (T.T.A.B March 27.2026).
For further information, please contact William M. Borchard or your CLL attorney.
Senior Counsel
Email | 212.790.9290
Bill has handled domestic and international trademark and copyright matters at the highest level for over 60 years. He has counseled and represented clients on domestic and international trademark matters concerning clearance, registration, proper use, licensing, contested administrative proceedings and infringement claims. He became Senior Counsel in January 2024 and is now focusing on providing guidance and advice to other lawyers within our firm and writing informative and engaging articles on intellectual property law developments.