Affirming Section 2(d) Refusal, TTAB Rejects Consent Agreement and Finds Strategic Partners Inapplicable

The Board affirmed a refusal to register the mark COLORS for "seminars directed toward personal behavior analysis and emotional self-improvement," concluding that confusion is likely with the identical mark registered (in both standard character and log form) for "workshops and seminars, live and online, in the field of therapeutic spiritual self-healing." Based on third-party website evidence, the Board found the services, the channels of trade, and classes of consumers to be identical or overlapping. Applicant Cook Capital focused on a consent agreement between its predecessor and the cited registrant, and on its ownership of a now-cancelled registration for the same mark and services as the subject application, but the Board rejected both excuses. In re Cook Capital, LLC, Serial No. 97627407 (March 30, 2026) [not precedential] (Opinion by Judge David K. Heasley).

Prior Consent Agreement: Considering the twelve-year-old consent agreement, the Board observed that "[a]t bottom, we must look at all of the surrounding circumstances . . . to determine if the consent reflects the reality of no likelihood of confusion in the marketplace, or if the parties struck a bargain that may be beneficial to their own interests, regardless of confusion to the public." It found that "[t]his case appears to present more of the latter than the former."

The Board noted the lack of evidence that, after Cook’s prior registration was cancelled and registrant’s two registrations became "incontestable" [sic! - i.e., the registrations were more than five-years-old], the registrant granted consent to Cook’s new application. "The silence is conspicuous. This tends to evince a prior consent agreement based on personal interest rather than concern for averting public confusion."

In short, on consideration of all applicable circumstances and evidence, we find that the Consent Agreement “has no effect on the likelihood of confusion.” In re Permagrain Prods., Inc., No. 73268400, 1984 WL 62813, *2-3 (TTAB 1984). Contrary to Applicant’s position, the Consent Agreement does not establish that its signatory parties had good reason to view public confusion as unlikely; and it does not establish a lack of actual confusion during the parties’ contemporaneous registration of their marks. In light of these facts, we find that “[t]he tenth DuPont factor does not outweigh all of the other relevant DuPont factors, which weigh heavily in favor of a conclusion of likelihood of confusion.”

Cook asserted that it was aware of no incidents of actual confusion in the twelve-year period since the agreement was signed, but this was mere uncorroborated attorney argument. Moreover, there was no requirement in the agreement that one party contact the other should confusion occur. "Consequently, Registrant’s silence on this issue may not be taken as a concession that there has been no actual confusion." [In this ex parte appeal, how was registrant going to be heard on this issue? - ed.].

Strategic Partners: Cook invoked the Board's Strategic Partners decision under the 13th DuPont Factor. There, the Board found that:

Applicant’s registered mark, a mark that is substantially similar to the applied-for mark, both covering “footwear,” has coexisted with the cited mark for over five years. At this stage, applicant’s existing registration is over five years old, and thus is not subject to attack by the owner of the cited registration on a claim of priority and likelihood of confusion. … We find that these facts tip the scale in favor of applicant and a finding of no likelihood of confusion.

But here, unlike Strategic Partners, Cook’s prior registration has been cancelled, and so its earlier registration is not an “existing registered mark” and the “unique situation” of Strategic Partners is not present here.

Cook asked, “if the purported shortcomings in the verbiage of the Consent Agreement are truly fatal to its efficacy, then why was it previously deemed acceptable to facilitate the maturation of Serial No. 85/643,944 into the now cancelled ’336 Registration?” The Board brushed that question aside. "Ultimately, the Board must decide each case on its own merits; the Office’s allowance of a prior registration does not bind it."

On careful consideration of the applicable law, arguments, and evidence, we find: that the marks’ identicality weighs heavily in favor of finding a likelihood of confusion under the first Dupont factor; that Applicant’s broadly-phrased recitation of services encompasses Registrant’s recited services, offered through unrestricted and overlapping channels of trade to overlapping groups of consumers, such that the second and third DuPont factors weigh in favor of a likelihood of confusion; and that the Consent Agreement, considered in light of Strategic Partners, does not tip the balance of the first through third DuPont factors, as the tenth, eighth, and thirteenth DuPont factors are neutral.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Reminder: there is no such thing as an "incontestable" registration. Read Sections 14 and 15 of the Act. With regard to the rejection of the consent agreement, note the recent Ye Olde Crewe decision involving the mark GASPARILLA [TTABlogged here].

Text Copyright John L. Welch 2026.