Precedential No. 9: Affirming GASPARILLA Section 2(d) Refusal, TTAB Rejects Flimsy Consent Agreement

Consent agreements may carry great weight in the Section 2(d) analysis, but not this time. The Board affirmed a refusal to register the mark GASPARILLA on the Supplemental Register, for various goods, including glassware and shirts, finding confusion likely with the registered mark GASPARILLA TREASURES for, inter alia, beverageware and shirts. Applicant Ye Mystic Crewe did not contest the Board's findings regarding all but one of the DuPont factors, maintaining that, under the 10th factor, its Consent Agreement with the cited registrant sufficed to fend off the refusal. Not so, said the Board. In re Ye Mystic Krewe of Gasparilla, 2025 USPQ2d 1291 (TTAB 2025) [precedential] (Opinion by Judge Elizabeth K. Brock).

"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 tenth DuPont factor considers the market interface between the applicant and the owner of the prior mark, which here requires a review of the consent agreement proffered by Applicant Ye Mystic Crewe. 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.” 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 finding no likelihood of confusion." Bay State Brewing Co., 2016 TTAB LEXIS 46, at *16.

In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1567 (Fed. Cir. 1993), the CAFC provided a list of non-exclusive factors that may be considered in assessing the import of 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.

The subject 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." 

Here the involved marks are "highly similar" and the goods identical or legally identical in part. The Board pointed out that 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 contains 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).

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, DuPont, 476 F.2d at 1362." It therefore found that the tenth DuPont factor weighed " only slightly against a conclusion of likely confusion" and did not outweigh the other factors.

And so, the Board affirmed the refusal.

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TTABlogger comment: Would you call this a half-naked consent?

Text Copyright John L. Welch 2025.