TTAB Overturns 2(d) Refusal of HOUSE OF PRIM Due to Prior Settlement Agreement Between Applicant and Cited Registrant

The Board reversed a refusal to register the mark HOUSE OF PRIM for goods and services related to home organization and design, concluding that confusion is unlikely with the registered mark PRIM for "Home organization services, namely, sorting and organizing household belongings." The Board found the marks confusingly similar and the services related, but not applicant's goods. However, a prior settlement agreement between applicants and the cited registrant outweighed all the other DuPont factors. In re Prim LLC, Serial Nos. 98301711, 98301726, 98301752, 98301773, 98301804 (March 27, 2026) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The tenth DuPont factor, the market interface between the applicant and registrant, required an evaluation of a March 11, 2022 “Settlement Agreement” between them. "'[D]epending on the circumstances,' agreements between the involved parties 'may ... carry great weight' since the parties are in a 'better position to know the real life situation than bureaucrats or judges."

In the Settlement Agreement, applicant promised to re-brand from PRIM LIVING to HOUSE OF PRIM and the parties agreed that this new mark would not cause confusion with the PRIM mark. Applicant agreed not to apply to register PRIM or any similar variant, including PRIM LIVING. The parties  promised continued cooperation in taking reasonable action to avoid confusion, and to make reasonable efforts to rectify any instances of likelihood of confusion that came to their attention.

The Examining Attorney argued that the settlement agreement does not function as a consent to registration of the mark in these applications because it was executed before the applications were filed. The Examining Attorney also argued that the agreement does not contain provisions “fundamental to a consent agreement.”

The Board observed that in In re Dare Foods, Inc., No. 88758625, 2022 TTAB LEXIS 92, at *24, it stated that it was aware of "no authority requiring a consent agreement to discuss all of these factors [listed in Four Seasons Hotels] in order to be probative.”

In this case, the parties’ settlement agreement, while not technically a consent to registration of a mark in any particular application, is an acknowledgment of a broader settlement relating to PRIM LIVING and other confusingly similar variants, and also addresses Applicant’s ability to rebrand with the mark that is the subject of these applications. * * * While the settlement agreement does not include some of the provisions we would typically see in a consent agreement, it was reached after the parties had been seeking to resolve a dispute regarding marks Registrant determined were confusingly similar (infringing) to her PRIM mark.

The Board noted that the agreement explicitly refers to Registrant’s PRIM registration. "One would expect that, if the agreement’s broad provision that Applicant rebrand as HOUSE OF PRIM covered only the right to use that mark but not the right to register it for home organization services, the agreement would have said so explicitly."

The settlement agreement strongly supports Applicant’s position of no likelihood of confusion based on the reasoned analysis of Applicant and Registrant who understand the nature of their businesses.

The Board concluded that the agreement is entitled to "substantial weight," and it "outweighs the factors that indicate confusion is likely in all five applications."

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TTABlogger comment: If during negotiations, applicant wanted to be able register HOUSE OF PRIM, it could have expressly included that in the agreement. So, I think the absence of such a provision is meaningless. The fact is that the registrant did not consent to registration. Will we see an opposition?

Text Copyright John L. Welch 2026.