Naked Consent Agreement Fails to Overcome Similarity of Marks and Identical Goods

Overview

This case is a TTAB precedent.

The Trademark Trial and Appeal Board issued a precedential opinion affirming the partial refusal of the mark GASPARILLA for use on various goods in International Classes 21 and 25. The case centers on the Applicant’s attempt to register the mark GASPARILLA for items such as drinking glasses and clothing, which was met with a Section 2(d) refusal based on a prior registration for GASPARILLA TREASURES. The primary legal battleground in this appeal was the weight and sufficiency of a Trademark Consent Agreement provided by the Applicant to overcome the Examining Attorney's finding of a likelihood of confusion.

Background

The Applicant filed an application seeking registration of GASPARILLA for cups and mugs in International Class 21 and various clothing items in International Class 25.

The Examining Attorney issued a partial refusal under Section 2(d) of the Trademark Act, citing a likelihood of confusion with the standard-character mark GASPARILLA TREASURES. The cited mark was registered on the Principal Register for "Beverage glassware” in International Class 21 and “Hats; Shirts; Sweatshirts; Tank tops” in International Class 25

During prosecution, the Applicant claimed it licensed its GASPARILLA mark to the owner of the cited registration. However, neither an assignment nor evidence of ownership was submitted. Eventually, the Applicant submitted a "Trademark Consent Agreement."

The Examining Attorney maintained the refusal, characterizing the submission as a "naked consent" that lacked the necessary detail to overcome the likelihood of confusion.

The Applicant appealed.

How the Board Analyzed the DuPont Factors

The Board noted that while the Applicant relied almost exclusively on the tenth DuPont factor, the Board was still required to evaluate all relevant factors for which evidence was presented.

DuPont #1: Similarity of the Marks

The Board observed that the marks share the term GASPARILLA, which is the entirety of the Applicant's mark and the first word of the Registrant's mark. The Board noted that marks are frequently found similar when one incorporates the entirety of another.

The Board also addressed the descriptive nature of the term "Gasparilla." Both parties conceded the term is descriptive: the Applicant by seeking registration on the Supplemental Register, and the Registrant by disclaiming the term in its Principal Register registration. Evidence showed that "Gasparilla" refers to a barrier island in Florida and an annual pirate festival in Tampa. Despite this descriptiveness, the Board emphasized that the Registrant’s mark must be considered as a whole, and the general public is unaware of legal disclaimers.

The Board found the marks to be similar in sound and appearance, noting the propensity of consumers to shorten marks when speaking, which might lead them to refer to the registered mark as simply "GASPARILLA." Furthermore, the Board determined that the addition of the word "TREASURES" in the cited mark did not distinguish the marks but rather reinforced the common pirate-themed connotation. The Board concluded that the marks were highly similar in all respects.

DuPont # 2, and 3: Similarity of Goods, Trade Channels, and Consumers

In evaluating the relatedness of the goods, the Board found a clear overlap in both International Classes 21 and 25. For Class 21, the Board noted that the Applicant’s "glass mugs; drinking glasses" were encompassed by the Registrant’s "beverage glassware." For Class 25, the Applicant’s shirts and hats were found to be identical to or encompassed by the Registrant’s shirts and hats.

Because the identifications in both the application and the registration contained no restrictions, the Board was required to presume that these identical and legally identical goods travel through the same trade channels to the same potential purchasers. This finding weighed heavily in favor of a likelihood of confusion, as the Board noted that when goods are identical, the degree of mark similarity necessary to support a confusion finding declines.

DuPont # 10: Market Interface and the Consent Agreement

The Board acknowledged the Federal Circuit’s instruction that consent agreements are often entitled to great weight because marketplace participants are in a better position to assess the reality of confusion than judges. However, the Board clarified that there is no per se rule that a consent agreement will always tip the scales in favor of registration.

The Board scrutinized the Consent Agreement using the non-exhaustive considerations established in In re Four Seasons Hotels Ltd. These include whether the agreement shows a mutual understanding, whether it indicates separate trade channels, whether it restricts fields of use, whether the parties will cooperate to avoid confusion, and whether there has been a period of use without actual confusion.

The Board highlighted several deficiencies in the GASPARILLA Consent Agreement:

• Lack of Specificity: The agreement was brief, with substantive terms occupying only one page. It failed to set forth specific reasons why the parties believed confusion was unlikely.
• No Market Restrictions: There was no indication that the identical goods would travel in separate trade channels or that the parties would restrict their fields of use. The Board noted that such restrictions are critical when identical goods are sold under highly similar marks.
• Insufficient Period of Coexistence: Because the Consent Agreement did not indicate the length of time of simultaneous use by both parties, the Board evaluated the claimed first-use dates of the marks. It found that the period of simultaneous use was roughly one year, which was too limited to be probative of a lack of likelihood of confusion.
• "Naked" Nature: The Board characterized the document as a "naked consent" because it was not clothed with specific arrangements to avoid public confusion, such as agreements regarding the manner of display or use with house marks.

The Board also addressed the Applicant’s unsupported claims regarding a license agreement. The Applicant argued that the Registrant was a mere licensee of the GASPARILLA mark, but the Board noted that the Consent Agreement itself identified the Registrant as the owner. The Board dismissed the Applicant's arguments regarding ownership as an impermissible collateral attack on the validity of the cited registration.

Board’s Decision

The Trademark Trial and Appeal Board affirmed the partial refusal to register the mark GASPARILLA for the goods identified in International Classes 21 and 25. In balancing the DuPont factors, the Board found that the high degree of similarity between the marks and the identity of the goods, trade channels, and purchasers weighed heavily in favor of a likelihood of confusion.

The Board concluded that while the Consent Agreement was entitled to some weight, it was "outweighed by the other relevant likelihood of confusion factors." The Board specifically found that the agreement lacked a sufficient basis to explain why confusion would be avoided in a marketplace where identical goods are sold to the same consumers under nearly identical marks. The tenth DuPont factor was found to weigh only slightly against a conclusion of likely confusion, which was insufficient to overcome the heavy weight of the other factors.