Background
The overarching public policy behind trademark law is two-fold: 1) to protect the consumer from confusion in the marketplace as to the actual source of a good(s) and/or service(s); and 2) to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. When applied-for marks are examined by the USPTO, they are thoroughly checked for likelihood of confusion problems with existing registered marks. Likelihood of confusion does not mean actual confusion but a genuine possibility of confusion. The likelihood of confusion evaluation by the USPTO’s examining attorney is determined on the basis of the thirteen DuPont Factors articulated by the CAFC’s predecessor court in E.I. DuPont de Nemours & Co. v. Celanese Corp. 476 F.2d 1357 (CCPA 1973).
1. Similarity or dissimilarity of marks: This factor considers how similar the two trademarks look, sound, and feel in appearance, sound, connotation, and commercial impression.
2. Nature of the goods and services: The USPTO compares the products or services associated with the trademarks determining whether they are identical or legally identical.
3. Trade channels used: The third factor examines whether the trademarks are used in similar or different trade channels, such as retail stores, online platforms, or others.
4. Purchasing conditions: This factor evaluates the conditions under which sales are made and if the buyers involved tend to make impulse purchases or carefully consider their options before buying.
5. Fame of the existing mark: If the prior mark has a strong reputation or significant fame, it may be more susceptible to confusion with a newly proposed trademark.
6. Similar marks with similar goods: This factor takes into account the number and nature of similar trademarks used with similar goods or services in the market.
7. Actual confusion between the marks: The USPTO looks for any existing evidence of confusion between the two trademarks in question.
8. Length and conditions of concurrent use without confusion: The office considers whether the two trademarks have been used simultaneously without causing confusion for an extended period.
9. Variety of goods and services associated with the marks: The USPTO evaluates if the trademark is used or not used with a range of different products or services.
10. Market interface: This factor assesses the interactions and competitive relationship between the applicant and the owner of the existing trademark.
11. Applicant’s right to exclude others: This factor measures the extent to which the applicant has the right to prevent others from using the trademark on specific goods or services.
12. Extent of potential confusion: The USPTO tries to gauge the possible level of confusion that could arise between the two trademarks.
13. Other established facts: Any additional relevant information that could help determine the impact of trademark use is also considered.
If the examining attorney issues a final rejection on likelihood of confusion grounds (a/k/a/ Section 2d rejection grounds), the odds of overcoming the rejection by an appeal to the Trademark Trial and Appeal Board (the “Board”) are extremely low – between 5% and 7%. Rejections based on DuPont Factors 1 and 2 can be very difficult to overcome particularly where the same trade channels are involved. This is why anybody considering registering a mark should have a good understanding of how the USPTO, the TTAB, and the courts examine marks for registration. For example, in a multi-word applied-for mark, the first word of the mark will be the focus in a likelihood of confusion analysis. This is because case law has repeatedly held that a consumer’s focus is on the first word of a mark. If the applied-for and registered marks are deemed to give a similar commercial impression, the examining attorney will determine if the goods/services offered under the mark are identical or legally identical. If “yes”, the applied-for mark will likely be rejected.
The Recent Board Decision
The Board’s recent decision in In re Ye Mystic Krewe of Gasparilla, Serial No. 90522364 (October 14, 2025) [precedential] (Opinion by Judge Elizabeth K. Brock) drives home this point. The Board affirmed a refusal to register the mark GASPARILLA for various goods, including glassware and shirts, finding confusion likely with the registered mark GASPARILLA TREASURES for, inter alia, beverage ware and shirts.
“Gasparilla” is the name of a barrier island in Southwest Florida, and it also refers to the “Gasparilla Pirate Festival” held annually in Tampa to commemorate a friendly invasion by the mythical pirate José Gaspar. The Applicant for the Gasparilla mark, a non-profit organization, already has a registered design trademark (SN 90611928) for Ye Mystic Krewe of Gasparilla for charitable services, charitable fund-raising services, and entertainment services and a registered wordmark for Gasparilla for entertainment services (SN 90354376). The Applicant is involved in putting on the Gasparilla Pirate Festival.
In trying to overcome the examiner’s rejection, the Applicant did not attempt to argue that the two marks did not give a similar commercial impression, involved different goods, channels or trades, different trade channels or the like. Such arguments would have likely been futile anyway. Instead, the Applicant attempted to amend the original “principal registration” grounds to “supplement registration” grounds. Not surprisingly, the examining attorney did not accept the amendment. Note that any registration on the supplemental registration itself requires there is no likelihood of confusion with a mark registered on the principal register or the supplemental register.
The Applicant then attempted to rely on DuPont Factor #10 – the “Market Interface” factor to try and overcome the examiner’s rejection by submitting a consent agreement. The TMEP defines “consent agreement” as an “agreement between parties in which one party (e.g., a prior registrant) consents to the registration of a mark by the other party (e.g., an applicant for registration of the same mark or a similar mark). See also TMEP 1207.01(D)(VIII).
An examining attorney has no obligation to accept a consent agreement as a “fix” for resolving a likelihood of confusion finding. Here, the examining attorney concluded that the agreement was a deficient “naked” consent which did not meet the threshold for a valid consent agreement and therefore was not entitled to significant weight. A final rejection was issued, and the Applicant appealed.
The Gasparilla Board’s opinion first emphasized that consent agreements “may … carry great weight” in the DuPont analysis, since the parties to the agreement are in a “better position to know the real-life situation than bureaucrats or judges.” Citing Bongrain Int’l (Am.) Corp. v. Delice de France Inc., 811 F.2d 1479, 1485 (Fed. Cir. 1987). However, there is no per se rule that a consent agreement will always “tip the balance to find no likelihood of confusion.” Citing Bay State Brewing Co., 117 USPQ2d 1958, 1963 (TTAB 2016).
For its analysis of the merits of the proffered consent agreement, the Gasparilla Board relied on the Federal Circuit Court of Appeal’s list of non-exclusive factors that may be considered in assessing the import of an applicant’s proffered consent agreement:
- 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; and
- Whether the marks have been used for a period of time without evidence of actual confusion.
Four Seasons Hotels Ltd., 987 F.2d 1565, 1567 (Fed. Cir. 1993):
The Board noted that the Consent Agreement was quite brief. The parties agreed that “there has not been, currently is no, and will likely be no, likelihood of consumer confusion,” and they promised to take “commercially reasonable steps to address [any] confusion and prevent its future occurrence.”
The Board opined that the marks involved are “highly similar” and the goods identical or legally identical in part, making the marks readily subject to the likelihood of confusion. However, there was “no indication that the goods will travel in separate trade channels, nor any agreement that the parties will sell in separate trade channels or otherwise restrict their fields of use.” Furthermore, the Consent Agreement contained no provision regarding display of the marks.
The Board also considered the period of time in which the marks have been in use without confusion. Even accepting the parties’ alleged first use dates, the marks would have been in concurrent use for only about one year at the time the Consent Agreement was executed. “When considered in the context of the other deficiencies of this Consent Agreement, we find this slight amount of simultaneous use without evidence of actual confusion too limited to support a conclusion that confusion is unlikely.” Cf. Top Tobacco, L.P. v. N. Atl. Operating Co., Consol. Opp. Nos. 91157248 et. al., 2011 TTAB LEXIS 367, at *37 (TTAB 2011) (lack of evidence of actual confusion over ten years in same trade channels “slightly” weighs in favor of a finding that confusion is unlikely).
Not surprisingly, the Board concluded that “the Consent Agreement simply does not rise to the level of one of the “more detailed agreements” to be given “substantial” weight. Citing DuPont, 476 F.2d at 1362. Accordingly, the tenth DuPont factor weighed “only slightly against a conclusion of likely confusion” and did not outweigh the other factors. Accordingly, the Board adopted the examining attorney’s position articulated in his brief: “The consent agreement was not designed to avoid confusion, does not reflect marketplace realities, and thus does not obviate the likelihood of confusion.” The examining attorney’s appeal brief can be found at www.ttabvue.uspto.gov.
Discussion
The commentator has had consent agreements accepted by the USPTO’s examining attorney. The agreements have been very detailed and explained why the parties to the agreement believe the confusion by potential consumers can be avoided. One factor that supports a favorable consent agreement is where the applicant and owner are operating in distinctly different geographic areas, e.g., Seattle, Washington vs. Chicago Illinois. In the Gasparilla matter, the Registrant and Applicant both operated in the Tampa Bay area of Florida which did not help the Applicant’s cause.
Also, the commentator’s agreements have indicated the steps the applicant and registrant will take to restrict the usage of their respective marks to the geographic area, e.g., that neither party has any intent to expand into the other party’s geographic area of operation. If true, the consent agreement in the Gasparilla matter could have specified that the Applicant’s goods would only be made available at the Gasparilla Pirate Festival, put on by the Applicant as a way to limit the trade channels in an otherwise equivalent geographic area.
Other of the commentator’s provisions have emphasized that the marks will only be used as depicted in the registration certificate. For example, if one of the marks is a design mark, then the design mark will always be used in that manner.
Despite the availability of consent agreements, it must, however, be emphasized that no registrant has any obligation whatsoever to become a party to a consent agreement. Recently an applicant contacted the commentator as the registrant’s listed attorney about the possibility of entering into a consent agreement. The registrant declined to do so.
The bottom line: All applicants should carefully evaluate registration issues before they spend money on developing a brand and filing an application. Don’t hope that a consent agreement will save the day.
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