The Trademark Trial and Appeal Board (TTAB) precedential decision in In re Ye Mystic Krewe of Gasparilla reaffirms that consent agreements – while influential – are not dispositive in overcoming a likelihood of confusion refusal under the Lanham Act. The decision emphasizes that successful consent agreements contain substantive terms to reduce confusion, not just conclusory boilerplate language.
Case Highlights
In re Ye Mystic Krewe of Gasparilla, the examining attorney refused registration of the mark GASPARILLA in view of a prior registration for GASPARILLA TREASURES for similar goods. The Board affirmed the refusal to register despite submission of a consent agreement, finding the agreement lacked meaningful terms to prevent confusion.
The Board stressed that while consent agreements may carry great weight, they must be considered in context of the other confusion factors. In Gasparilla, the consent agreement did not establish a basis for concluding that confusion was unlikely – especially given the similarity of the marks and relation of the associated goods.
The Lanham Act prohibits registration of a trademark that is likely to cause confusion with a prior registered mark. Courts and the U.S. Patent and Trademark Office (USPTO) assess likelihood of confusion by considering several factors, primarily the similarity of the respective trademarks and the relation of the associated goods and services. Agreements between the applicant and the owner of the cited trademark registration are entitled to deference, but only if they provide a basis for concluding that confusion is not likely.
For example, agreements that establish that the respective goods travel in different channels of trade, provide for restrictions in the parties’ fields of use, establish a protocol for addressing confusion, and reference a long period of concurrent use are more likely to overcome confusion refusals. In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1567 (Fed. Cir. 1993). In contrast, agreements that merely grant consent without any meaningful restrictions on use will not be sufficient to overcome a refusal. In re Bay State Brewing Company, Inc., Ser. No. 85826258 (TTAB 2016) (non-precedential).
Key Takeaways for Trademark Applicants
- Consent agreements are helpful but not a silver bullet. They must contain detailed, enforceable provisions that actively reduce the likelihood of confusion.
- Include specific measures, such as:
- Clear differentiation in trade channels or customer bases.
- Distinct packaging, labeling or branding commitments.
- Ongoing monitoring and enforcement mechanisms.
- Reflect limitations in the application. If the agreement restricts goods or services, ensure those restrictions appear in the trademark identification.
- Document coexistence history. Evidence of long-standing, confusion-free use strengthens the agreement’s credibility.
- Avoid “naked consents.” Agreements that merely state “no likelihood of confusion” without substantive terms will carry little weight.
- Plan early. When marks are highly similar and goods overlap, a robust consent agreement may still fail — consider alternative strategies, such as rebranding or narrowing the scope of the application.
Why This Matters
For businesses seeking trademark protection, understanding the USPTO’s approach to consent agreements is critical. A well-drafted agreement can tip the scales in your favor — but only if it demonstrates real-world measures to prevent confusion.
Need Assistance?
Our Intellectual Property Practice Group can help you:
- Draft robust consent agreements.
- Evaluate trademark clearance strategies.
- Navigate USPTO refusals and TTAB proceedings.
If you need assistance or have questions regarding trademark enforcement or brand protection, please contact attorney Andy Corea at (203) 772-7739 and acorea@harrisbeachmurtha.com or the Harris Beach Murtha attorney with whom you most frequently work.
This alert is not a substitute for advice of counsel on specific legal issues.
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