Consent agreements between owners of conflicting trademarks often carry great weight when seeking registration at the U.S. Patent and Trademark Office, as they usually reflect the judgment of parties on the front lines of commerce that consumer confusion is not likely or can be avoided. However, it has long been held that consent agreements that do not explain why confusion is not likely or how it will be avoided are mere “naked consents” and may not carry the day.
Such was the case in a recent precedential opinion of the Trademark Trial and Appeal Board (TTAB) rejecting registration of GASPARILLA despite the submission of a consent agreement from the owner of a blocking registration for GASPARILLA TREASURES. In re Ye Mystic Krewe of Gasparilla, No. 90522364 (Oct. 14, 2025).
The TTAB first noted that the Federal Circuit has provided “helpful guidance” in determining the probative value of consent agreements, listing the following “non-exclusive and non-exhaustive” factors to consider:
- Whether the consent shows an agreement between both parties
- Whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels
- Whether the parties agree to restrict their fields of use
- Whether the parties will make efforts to prevent confusion and cooperate and take steps to avoid any confusion that may arise in the future
- Whether the marks have been used for a period of time without evidence of actual confusion
The short consent agreement at issue gave lip service to the parties’ belief that the simultaneous use of GASPARILLA and GASPARILLA TREASURES for essentially overlapping goods would not cause actual confusion or a likelihood of confusion and promised that the parties would cooperate in the event of actual confusion to “take commercially reasonable steps” to prevent future confusion.
As noted by the TTAB, the consent agreement did not restrict the parties’ fields of use, nor establish separate trade channels, nor restrict the manner of display of the trademarks. Though the TTAB agreed that the lack of such elements is “not necessarily fatal,” as there is no express requirement for such terms, it also stated that the “more information that is in the consent agreement as to why the parties believe confusion to be unlikely, and the more evidentiary support for such conclusions in the facts of record or in the way of undertakings by the parties, the more we can assume that the consent is based on a reasoned assessment of the marketplace, and consequently the more weight the consent will be accorded.” A consent agreement is thus more credible if it “shows the work” as to why confusion is not likely and describes how the parties will avoid confusion.
Also relevant to the weight to be given a consent agreement is the period of time the marks have been in simultaneous use without evidence of actual confusion. Here, the parties’ consent agreement made no reference to such simultaneous use, but even accepting the claimed dates of use in the parties’ trademark filings, the use would have been simultaneous for only about one year.
In the end, the TTAB found the marks to be highly similar and the goods identical in part and therefore presumed them to move through the same channels of trade. The TTAB gave “some weight” to the consent agreement but found that it suffered from “multiple failings” and did not explain why confusion was unlikely.
Takeaways
This decision confirms that while consent agreements can be useful tools, they are not carte blanche to enable registration of a trademark that inevitably will confuse consumers. The Trademark Office may see such a “naked consent” as little more than a ruse to streak past the initial refusal of an application without regard to consumer confusion. As such, applicants should take care in sewing together credible consents that get the job done.
