Bongrain Int'l Corp. v. Delice de France Inc

In Bongrain Int'l Corp. v. Delice de France Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed.Cir.1987), Bongrain International sought to register its mark, "LE PETIT DELICE DE FRANCE," with the Patent and Trademark Office (PTO). Delice de France was the undisputed owner and prior user of a similar mark, "Delice de France inc.," surrounded by the picture of a chef. The PTO permitted registration of Bongrain's mark and denied registration of Delice's mark. Both companies entered into a written agreement noting that the concurrent respective uses of their marks on bakery items and cheeses would not cause confusion in the marketplace. The agreement stated: The marks the parties are using, the goods they have used them on, the pending applications to register, that there are no known instances of confusion between the marks, that the parties believe "that there is no likelihood of confusion between their respective marks," and that the parties "deem it to be in their respective best interests to agree to restrict the fields of use for their respective marks in order to avoid likelihood of confusion." Bongrain, 811 F.2d at 1482, 1 USPQ2d at 1776.