Naked Consent Agreement Fails to Prevent Section 2(d) Refusals of GODZILLA X KONG: THE NEW EMPIRE over GODZILLA

The Board affirmed Section 2(d) refusals in twelve applications (consolidated for appeal) to register the mark GODZILLA X KONG: THE NEW EMPIRE for various goods and services (including film production, action figures, etc.), finding confusion likely with certain GODZILLA or GODZILLA-formative marks, registered by Toho Co., Ltd., for a variety of goods and services. In attempting to overcome the refusals, Applicant Legend IP submitted a "License and Consent Agreement," but the Board found that the agreement "suffers multiple failings" and "weighs only slightly against a conclusion of likely confusion." In re Legend IP Holdings Production, LLC, Serial No. 97914992 et al. (August 13, 2026) [not precedential] (Opinion by Judge Martha B. Allard).

The issue was "how much evidentiary weight should be afforded the Agreement given by the owner of the registrations that have been cited as a bar to registration under Section 2(d)." Not much, the Board concluded.

The entire agreement was set forth in one-half page. Although styled as a License Agreement under which Applicant Legend holds the applied-for marks "in trust for" Toho, "it remained subject to the same analytical framework applicable to consent agreements under the tenth DuPont factor (market interface). The Agreement states that applicant “is authorized to seek registration of the Trademarks incorporating [Registrant’s IP] in connection with the exploitation of the Picture."

In re Ye Mystic Krewe 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 first factor was met, since the agreement was signed by both parties, but the remaining factors were not. As a result, the Board found the Agreement to be a “naked” consent.

There are simply no undertakings of record between Applicant and Registrant which impact the likelihood of confusion analysis. This Agreement is too bare and conclusory for us to conclude that the marks can coexist without a likelihood of confusion.

Legend did not explain or address how the involved goods and/or services travel, or will travel, in separate trade channels (second element). There was no agreement to restrict their fields of use (third element). There was no agreement regarding efforts that the parties must take to prevent confusion or to avoid any confusion that may arise in the future (fourth element). And there was no evidence regarding how long Legend and Registrant Toho simultaneously used their marks in the United States without evidence of actual confusion (fifth element).

Here, Applicant filed each of its applications on an intent to use basis and no amendments to allege use have been filed, nor does Applicant argue that the marks have coexisted in the marketplace for any length of time. Along these lines, we note that the Agreement consents solely to registration of the marks of the involved applications but does not separately consent to their use. [These are I-T-U applications. How would Legend obtain registrations without use? - ed.].

The Board noted that a simple solution to avoid likely confusion "would have been for Registrant to have filed the applications in its own name, which would have resulted in its being identified as the registrant, rather than relying on Applicant to hold them “'in trust for Toho.'" [Would consumers know or care who the registrant is? Wouldn't they assume, in any case, that the parties are related or cooperating? ed.].

In short, the Agreement appears to simply to be an arrangement between the parties solely as to registration with no regard to whether it reflects the realities of no likelihood of confusion if and when both marks are concurrently used in the marketplace. While we give some weight to the existence of the Agreement and its express authorization by Applicant “to seek registration of the Trademarks incorporating [Registrant’s IP] in connection with the exploitation of the Picture,” we find that the Agreement as a whole suffers multiple failings such that this factor “weighs only slightly against a conclusion of likely confusion.”

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TTABlogger comment: Twelve applications down the drain. PS: As I have previously posited, naked consents are effective only in nudist colonies. 

Text Copyright John L. Welch 2026.