The Trademark Trial and Appeal Board (“the Board”) affirmed the refusal to register the mark GASPARILLA, and in doing so rejected the Consent Agreement submitted by Applicant. See In re Ye Mystic Krewe of Gasparilla, 2025 USPQ2d 1291 (TTAB 2025) [precedential]. The applicant was seeking to register the mark GASPARILLA on the Supplemental Register for multiple classes of goods. The Examining Attorney partially refused registration under 2(d) of the Lanham Act for classes 025 & 021, and the applicant appealed the decision. The cited registered mark was GASPARILLA TREASURES. The Examining Attorney found the consent agreement to be “naked”, as it lacked specific detail to explain why it was unlikely consumers would not be confused as to the sources of the marks.
On Appeal, the applicant did not address the other DuPont factors and only submitted evidence to contest the tenth DuPont factor (market interface between applicant and registrant) which in my opinion was an error on applicant’s part. A likelihood of confusion analysis is based on all the probative facts in evidence relevant to the factors bearing on likelihood of confusion. The two driving factors typically are the similarities of the marks and the relatedness of the goods or services, but each DuPont factor will be considered assuming there is evidence or argument pertaining to it in the record. See In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019). When the application was before the Examining Attorney, the applicant did not present evidence or argue that the marks were dissimilar, or that the goods were not related, but simply relied on the consent agreement to show that the parties did not believe there would be confusion as to the source of the marks in the marketplace.
Unfortunately, many applicants and practitioners wrongly assume that as long as a consent document is submitted, wherein the applicant and registrant agree that there is no confusion between the sources of the products or services, the refusal under Section 2(d) of the Lanham Act will be withdrawn. However, this is not the case. A consent agreement may or may not tip the scales in favor of registrability of a trademark. In re Mastic Inc., 829 F.2d 1114, 1117 (Fed. Cir. 1987) (citing DuPont, 476 F.2d at 1362-63). In order to properly give weight to the consent agreement, the other DuPont factors have to be analyzed. In fact, there is no per se rule that a consent agreement will tip the scales in favor of finding no confusion. See our blog post entitled, Another Rejected Trademark Consent Agreement, in a similar finding, the Board held that the other DuPont factors weighed in favor of confusion and the consent in that case did not overcome the refusal because the restrictions set forth in the agreement did not eliminate confusion. See In re 8-Brewing LLC, Serial No. 86760527 (October 30, 2017) [not precedential].
The Federal Circuit has provided guidance to assist in determining the probative value of a consent agreement. The following factors must be considered when assessing a consent agreement: (1) whether the consent shows an agreement between both parties; (2) whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels; (3) whether the parties agree to restrict their fields of use; (4) whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and (5) whether the marks have been used for a period of time without evidence of actual confusion. See In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1567 (Fed. Cir. 1993); see also In re Dare Foods Inc., 2022 USPQ2d 291 (TTAB 2022) [precedential]. These factors are not the only factors to be considered but the principal areas of inquiry. The Board is seeking to ensure that the parties did not make a deal in their best interests at the cost of confusion to the public.
In the case at bar, the consent agreement was brief, and the substantive terms were contained in a single page. The Board is interested in why the parties believe confusion is unlikely. The more evidentiary support included in the consent, the more likely the Board will believe the parties made a reasoned assessment of the marketplace. The parties missed the mark here and failed to discuss if there would be separate trade channels or restrictions in their fields of use. Nor did the parties discuss the manner of display of the mark, and for example perhaps one party would use the trademark in conjunction with that party’s house mark to reduce the likelihood of confusion. In conclusion, since the marks were very similar, and the goods legally identical in part, and the period of concurrent use short, the Board held the consent agreement was not detailed enough to be given substantial weight to overcome the refusal and affirmed the refusal. If you have questions regarding whether a consent agreement will be sufficient to obviate confusion, please contact the firm for a courtesy consultation.