When a Consent Agreement Isn’t Enough: Lessons for Trademark Owners

A well-drafted consent agreement can be one of the most effective tools for resolving a likelihood-of-confusion refusal under Section 2(d) of the Lanham Act. In many cases, it works because the parties closest to the marketplace—the applicant and the cited registrant—often do have the best understanding of how consumers encounter their brands in real life. But the TTAB’s precedential decision in In re Ye Mystic Krewe of Gasparilla, 2025 USPQ2d 1291 (TTAB 2025), is a reminder that a consent agreement is not a magic wand. If the agreement is thin on facts, light on practical safeguards, and offered against a backdrop of highly similar trademarks and overlapping goods, the USPTO and the Board may treat it as a “naked consent” and give it little weight.

Consent Agreements in Federal Trademark Practice: What They are and Why They Matter

A “consent agreement” (sometimes called a consent-to-register agreement or coexistence agreement) is a contract in which one trademark owner agrees not to oppose or block another party’s use and/or registration of a trademark. These agreements often appear after a trademark examining attorney issues a likelihood of confusion refusal based on a cited registration, or after parties clash in an opposition, cancellation, or trademark demand-letter scenario and decide that coexistence is better than litigation.

In theory, consent agreements can carry substantial weight because they reflect market participants’ assessment of confusion risk. Courts and the TTAB have long recognized that, “depending on the circumstances,” consents can be important evidence in the DuPont likelihood-of-confusion analysis, particularly under the tenth DuPont factor (the “market interface” between the parties). But the Board also repeats a critical caveat: there is no per se rule that a consent agreement automatically tips the balance toward no confusion. The content matters, and the agreement must be evaluated in the context of the entire record.

In practical terms, that means a consent agreement works best when it does more than say “we agree there’s no likelihood of confusion.” The agreement must show why that conclusion is reasonable and how the parties will ensure consumers are not confused going forward.

The Gasparilla Dispute: What Happened and Why the Consent Failed

The applicant, Ye Mystic Krewe of Gasparilla, sought to register the standard-character mark GASPARILLA on the Supplemental Register for a range of goods, including beverage-related items (like mugs and drinking glasses) in Class 21 and clothing (including shirts and hats) in Class 25. The examining attorney refused registration for certain goods under Section 2(d) based on a prior Principal Register registration for GASPARILLA TREASURES (with “GASPARILLA” disclaimed) covering, among other items, “beverage glassware” and clothing such as shirts and hats.

On appeal, the applicant did not meaningfully contest the core DuPont findings. The Board found the trademarks “highly similar” because the applicant’s trademark was the entire first word of the registrant’s trademark, and consumers often focus on the first term and may shorten longer trademarks in speech. The Board also explained that GASPARILLA is associated with a Florida barrier island and the well-known Gasparilla Pirate Festival in Tampa, reinforcing the shared commercial impression.

Even more importantly, the trademark goods description were identical or legally identical in part. The applicant’s drinking glasses fell within the registrant’s broader “beverage glassware,” and the clothing overlap was direct (shirts and hats). With no meaningful limitations in either identification, the Board presumed the goods travel through the same trade channels to the same purchasers. That combination—highly similar trademarks and overlapping goods/channels—is the classic recipe for a sustained likelihood of confusion refusal.

So what was the applicant’s main counter argument? A “Trademark Consent Agreement” executed with the registrant. The agreement, however, was short and essentially did three things: (1) the registrant consented to the applicant’s registration and promised not to challenge it; (2) both parties asserted there had been no confusion and none was likely; and (3) the parties said they would take “commercially reasonable steps” to address confusion if it arose.

The Board was not persuaded. In plain terms, the TTAB’s message was: this agreement doesn’t show the work. It did not explain why confusion was unlikely in a world where identical goods could be sold to the same consumers through the same channels under highly similar trademarks. The consent agreement did not include trade-channel separation, field-of-use restrictions, or meaningful provisions about how the trademarks would appear in the marketplace (for example, use with prominent house marks). And the period of concurrent use without confusion—about a year even assuming the alleged dates—was too short, especially given the agreement’s other shortcomings.

As a result, the Board gave the consent only slight weight under the tenth DuPont factor and found it could not overcome the strong showing of likely confusion under the other factors. The USPTO trademark refusal was affirmed for the overlapping goods in Classes 21 and 25.

When consent agreements are typically used—and when they’re most effective.

In Trademark Practice, Consent Agreements Commonly Arise in a Few Recurring Situations.

First, consent agreements are frequently used after a likelihood of confusion refusal where the applicant and cited registrant have legitimately different market positions—different types of products, different customer bases, different channels (for example, wholesale vs. direct-to-consumer), or meaningful geographic separation. A software company and a local restaurant might share a similar name without consumers assuming common source, especially if the agreement includes real-world constraints and the record supports those distinctions.

Second, consents are often used to settle an opposition or threatened trademark infringement dispute. Businesses sometimes prefer a coexistence arrangement over prolonged litigation, particularly where both parties have invested heavily in branding and the risk of confusion can be managed through practical safeguards.

Third, consents can make sense in “family of trademarks” or related-entity settings—such as parent/subsidiary relationships, licensing structures, or long-standing collaborations—where brand architecture and quality control practices provide a credible framework for avoiding consumer confusion. But as Gasparilla illustrates, merely asserting a licensing relationship without backing it up, while simultaneously describing the other party as the “owner” of the cited mark, can undermine credibility rather than help.

The most effective consents tend to share one feature: they align contract language with marketplace reality, and they give the USPTO something concrete to rely on besides the parties’ conclusory assurances.

When the USPTO or TTAB Will Not be Persuaded by a Mutual Consent Agreement

The Gasparilla decision highlights several circumstances that often lead to rejection or minimal weight.

One common problem is the “naked consent”—an agreement that amounts to consent + a statement that confusion is unlikely, without explaining why or describing how confusion will be avoided. The Board cited the concept directly and treated the consent agreement as insufficiently detailed for substantial weight.

A second red flag is high trademark similarity plus overlapping goods and channels. The Board emphasized that if identical or legally identical goods bearing highly similar trademarks are offered in the same channels to the same consumers, consumers are unlikely to distinguish sources without meaningful differentiators. In that setting, the agreement must contain strong safeguards—something beyond a promise to cooperate later.

A third issue is the absence of concrete marketplace restrictions. If the agreement does not separate trade channels, restrict fields of use, or otherwise impose enforceable boundaries, the examining attorney and TTAB may view it as private bargaining that does not adequately protect the public from confusion.

A fourth problem is lack of meaningful coexistence history. Evidence (not just assertions) of years of concurrent use without confusion can help, but short periods—especially around a year—often do not move the needle much, particularly where other factors strongly favor confusion.

What Should Be in a Strong Consent Agreement: Turning “Consent” Into Evidence

The Federal Circuit has identified several non-exclusive considerations that can increase a consent’s persuasive value, including whether the agreement is mutual, whether trade channels are separated, whether fields of use are restricted, whether the parties commit to preventing and addressing confusion, and whether the trademarks have coexisted without actual confusion. The key for practitioners is not to treat that list as a checklist to recite, but as a guide to building a record that “reflects the reality” of no confusion in the marketplace.

In Practical Drafting Terms, a Strong Consent Agreement Often Includes:

A clear description of each party’s goods/services and how customers encounter them (including typical price points, purchasing process, and marketing channels), paired with enforceable commitments. For example, if Party A sells through souvenir shops and festival events while Party B sells only through high-end boutiques and corporate gifting channels, the agreement should say that plainly and require the parties to keep it that way.

Concrete field-of-use or channel-of-trade restrictions where feasible. If the goods are truly identical (as they were in Gasparilla for shirts and beverageware), restrictions become harder—but not necessarily impossible. Parties might still differentiate by limiting the trademark’s use to certain contexts (for example, “festival-branded commemorative merchandise sold only at official events” versus “retail gift-store merchandise sold year-round”), provided those limitations are realistic, enforceable, and consistent with the identifications or are paired with amendments to narrow the application.

Manner-of-use provisions that help consumers distinguish source. This is where many agreements can be strengthened. Requiring prominent use of house marks, logos, or distinctive stylization in specified ways can reduce confusion. If one party must always use the trademark with a company name (e.g., “ACME GASPARILLA”) and the other uses it in a different composite, that can be persuasive when supported by specimens, mockups, or examples.

A meaningful confusion-prevention and enforcement protocol, not just “commercially reasonable steps.” Think: who gets notified, within what timeframe, who bears costs for corrective action, what remedial steps are required (label changes, point-of-sale clarification, website disclaimers), and how repeated issues escalate. The more specific the mechanism, the more it looks like a plan rather than a hope.

Provisions addressing future changes, such as assignment or licensing. If either party can freely assign the mark to an unrelated third party, the “real-world” assumptions underlying the consent can evaporate. Many sophisticated consents require notice and sometimes consent for assignment, or at least require the assignee to assume the coexistence obligations.

Finally, it often helps to pair the agreement with supporting evidence in the trademark application record—declarations describing marketing channels, examples of packaging, website screenshots, and (when available) credible evidence of coexistence without confusion. The Board repeatedly signaled that the agreement’s weight increases when its reasoning is corroborated by the record, not left as a bare conclusion.

Real-world and Hypothetical Examples: What “Good” Can Look Like

A useful “real” contrast is found in decisions the Board discussed. In cases where the trademarks and services were not perfectly overlapping, and where the agreement included meaningful limitations and context, consents have received greater weight. The Board cited situations where parties adopted restrictions on use or explained marketplace differences, making the consent look like an informed business judgment rather than a private deal that ignores consumer perception.

Now consider a straightforward hypothetical. Imagine two companies using the mark BLUE HARBOR: one operates a boutique hotel in Maine, the other sells packaged seafood nationwide. If they execute a consent agreement stating only “no confusion is likely,” that might not help much. But if the agreement explains that the hotel uses BLUE HARBOR only with a distinctive lighthouse logo and always alongside the hotel’s full name, while the seafood company uses BLUE HARBOR only for packaged goods sold in grocery stores with entirely different trade dress, and both agree not to expand into the other’s core area (no hotel-branded packaged seafood; no seafood-branded lodging services), that begins to look like a reasoned plan. If they also create a simple monitoring and notification process for misdirected inquiries, the consent becomes more than words—it becomes marketplace engineering.

On the other hand, if both parties sell T-shirts and glassware under nearly the same mark through the same kinds of souvenir outlets, the Gasparilla lesson applies: the agreement must contain unusually strong, workable differentiators (or the applicant must narrow the goods) because the baseline risk of confusion is high. A short, one-page consent that does not separate channels or explain how consumers will tell the brands apart is unlikely to carry the day.

Practical Guidance for Businesses

For trademark owners receiving a consent request, the decision to sign should be treated like a brand-risk analysis, not a courtesy. If you sign, assume the agreement will be scrutinized by the USPTO and potentially by a court later. The best consent agreements protect your future flexibility, require quality and manner-of-use controls where appropriate, and include a clear path to address real confusion.

For applicants seeking a consent, the Gasparilla record offers a procedural takeaway too: present your best evidence at the right time. Don’t assume a consent dropped into the record late will do the job. Consider pairing the consent with amendments that narrow identifications, and build a record that supports the agreement’s logic with real marketplace facts. If the goods are identical and the trademarks are very close, treat the consent as one piece of a broader strategy—not the whole strategy.

And for counsel on both sides, the most important drafting principle is simple: write the agreement as if a skeptical reader will ask, “How does this actually prevent confusion?” If the agreement answers that question with specificity—and the record supports it—you are far more likely to receive meaningful weight under the tenth DuPont factor. If it does not, Gasparilla is your warning that the Board may view the consent as too thin to matter.