How to Make a Consent Agreement Stick: TTAB Affirms GASPARILLA Refusal Under Section 2(d) by Hannah Lee
- Hannah Lee
- 3 days ago
- 3 min read
Consent agreements are often an effective way for trademark applicants to address a likelihood-of-confusion refusal, because they reflect the parties’ own assessment of marketplace reality. As a bit of a refresher, a “consent agreement” in trademark law is where two parties agree that based on various distinguishing factors consumers are not likely to be confused. A consent agreement is useful in certain circumstances, including overcoming a USPTO likelihood of confusion refusal.
The TTAB’s recent precedential decision in In re Ye Mystic Krewe of Gasparilla, Serial No. 90522364 (TTAB Oct. 14, 2025), is a reminder, though, that a consent agreement must be meaningfully detailed to carry weight. There, the Board affirmed a Section 2(d) refusal of GASPARILLA in view of GASPARILLA TREASURES, holding that the parties’ consent agreement was too thin to overcome the strong similarity of the marks and overlap in goods and services.
Background
“Gasparilla” is a well-known reference to Tampa Bay’s annual Gasparilla Pirate Festival. The applicant, Ye Mystic Krewe of Gasparilla—the civic organization that founded and continues to host the festival—applied to register GASPARILLA for goods including glassware and shirts. The examining attorney refused registration under Section 2(d) of the Lanham Act, citing a prior registration for GASPARILLA TREASURES covering beverageware and apparel.
Rather than challenge the standard DuPont likelihood-of-confusion analysis, the applicant relied on a consent agreement with the owner of GASPARILLA TREASURES. The applicant argued that this agreement should be dispositive under the tenth DuPont factor, which considers the nature of the marketplace relationship—or “market interface”—between the parties.
The TTAB’s Analysis
The Board opened by reaffirming a familiar principle in trademark practice: consent agreements can be highly influential in the DuPont framework because the parties are generally best positioned to understand marketplace conditions. At the same time, the TTAB emphasized that consent is not automatically controlling. There is no per se rule that an agreement, by itself, resolves a Section 2(d) refusal. Instead, the Board evaluates whether the agreement contains meaningful, real-world safeguards that make confusion unlikely.
Consistent with Federal Circuit guidance in In re Four Seasons Hotels Ltd., the TTAB considered several non-exclusive factors that typically determine how much weight a consent agreement deserves:
whether the agreement reflects genuine, bilateral consent
whether it specifies distinct trade channels or fields of use
whether it includes enforceable limitations on the parties’ respective uses
whether it sets out concrete steps to avoid confusion
whether there is a meaningful period of concurrent use without actual confusion
Measured against those benchmarks, the GASPARILLA consent agreement fell short. The agreement largely stated a conclusion that confusion was not expected and referenced future “commercially reasonable steps” if confusion arose, but it did not explain what those steps would be. It contained no specific separation of trade channels, no product or service carve-outs, no commitments to differentiated branding or presentation, and no monitoring or dispute-resolution mechanism. In the Board’s view, the document read more like a shared assurance than a practical coexistence plan.
The Board also examined the parties’ actual marketplace history. Even accepting the asserted first-use dates, the record showed only about a year of overlapping use before the agreement was executed. The TTAB held that such a short period of coexistence, particularly when paired with a thin agreement, was not persuasive evidence that confusion was unlikely.
Given the near identity of the marks and the overlap in goods, the Board concluded that the consent agreement did not qualify as one of the detailed, confusion-reducing agreements entitled to substantial weight under DuPont. As a result, the tenth DuPont factor only marginally favored the applicant and could not overcome the remaining factors supporting refusal.
The decision is a pointed reminder that a “bare” consent agreement rarely carries the day. To be effective, an agreement should do more than announce consent. It should spell out how confusion will be avoided through specific, enforceable marketplace protections—such as defined trade channels, meaningful field-of-use limitations, differentiated branding commitments, and clear procedures for monitoring and resolving issues—ideally supported by a record of sustained, confusion-free coexistence.
Read the TTAB decision here: https://ttabvue.uspto.gov/ttabvue/ttabvue-90522364-EXA-25.pdf