In re Ye Mystic Krewe of Gasparilla, Serial No. 90522364 (TTAB Oct. 14, 2025) (precedential)
When two businesses are using confusingly similar marks, one well-established tool for getting a trademark registered is a consent agreement. The registrant of the existing mark signs a document saying it consents to the applicant's registration and agrees that confusion is unlikely. In the right circumstances, the USPTO gives these agreements significant weight.
But a consent agreement is not a magic bullet. And a new precedential decision from the Trademark Trial and Appeal Board makes clear that a poorly constructed consent agreement can fail entirely, even when the two parties are willing to cooperate.
The Parties and the Marks
Ye Mystic Krewe of Gasparilla is a nonprofit organization based in Tampa, Florida. It is the group behind the Gasparilla Pirate Festival, an annual event that draws hundreds of thousands of attendees and has been a Tampa tradition for over a century. The Krewe applied to register the mark GASPARILLA on the Supplemental Register for drinkware, clothing, and accessories.
The problem: a company called EventFest, Inc. already held a registration for GASPARILLA TREASURES covering beverage glassware, hats, shirts, and sweatshirts. The examining attorney refused registration of the Krewe's application for Classes 21 and 25, citing a likelihood of confusion between the two marks.
The Krewe's response was to produce a consent agreement signed by EventFest. The examining attorney rejected it as a naked consent. The Board agreed.
Why the Marks Were Highly Similar
Both parties acknowledged that GASPARILLA is descriptive. The Krewe sought registration on the Supplemental Register, which is an admission that a mark lacks inherent distinctiveness at the time of filing. EventFest had disclaimed GASPARILLA in its own registration, an implicit concession that the word is descriptive of the goods in connection with the Tampa festival.
Despite being descriptive, the marks were found to be highly similar. The Krewe's mark, GASPARILLA, is identical to the first word of EventFest's mark, GASPARILLA TREASURES, and is entirely incorporated within it. The Board noted that consumers tend to focus on the first word of a mark and that they often shorten longer marks when speaking. Someone who knows GASPARILLA TREASURES might simply call it GASPARILLA in conversation, making confusion with the Krewe's mark even more likely.
The word TREASURES did not help distinguish the marks. If anything, the Board found it reinforced the shared meaning: both marks evoke the mythical pirate José Gaspar and the festival that bears his name. A pirate's treasures fit right in with a pirate festival brand.
The goods were also identical or legally identical in part. The Krewe's glass mugs and drinking glasses fell within EventFest's beverage glassware registration. The Krewe's shirts, t-shirts, and hats were identical to items in EventFest's registration. And because neither identification restricted trade channels or consumer classes, the Board presumed the goods reached the same buyers through the same channels.
What the Consent Agreement Said
The consent agreement was a single page. It stated that EventFest consented to the Krewe's registration and use of GASPARILLA, that neither party would challenge the other's rights, and that both parties agreed confusion had not occurred and was unlikely to occur. If confusion did arise, the parties agreed to advise each other and take commercially reasonable steps to address it.
That was essentially it.
Why It Was Not Enough
The Board's analysis of consent agreements follows guidance from the Federal Circuit, which has identified several considerations that determine how much weight a consent agreement deserves. These include whether the agreement explains why confusion is unlikely, whether the parties agreed to operate in separate trade channels or restrict their fields of use, whether the agreement includes concrete steps to prevent confusion, and whether the marks had coexisted for a meaningful period without any evidence of actual confusion.
The Krewe's agreement fell short on most of these.
The agreement did not explain why confusion was unlikely. It simply stated the conclusion. There was no discussion of how the parties market their goods differently, who their respective customers are, or what distinguishes their products in the marketplace. The Board has said repeatedly that a consent agreement carries more weight when it shows the work, meaning it articulates the reasoning behind the parties' belief that confusion will not occur.
The agreement also contained no restrictions on trade channels or fields of use. This matters more when the goods are identical, because the parties cannot agree not to sell on each other's turf if their turf is the same. When identical goods bearing highly similar marks are sold to the same consumers through the same channels, a boilerplate consent provides little assurance that confusion will not result.
The anti-confusion provision was nominal. Agreeing to advise each other if confusion arises and then take commercially reasonable steps is a passive commitment, not an active plan. The Board found it insufficient to offset the other deficiencies.
Finally, the period of simultaneous use was too short to carry much weight. The consent agreement was signed in June 2023. Even taking the Krewe's claimed first-use dates at face value, the parties had coexisted for only about one year at the time of signing. One year of concurrent use without reported confusion is a thin track record, particularly in combination with the other weaknesses in the agreement.
The Ownership Wrinkle
The Krewe also argued at various points that EventFest was actually its licensee, not an independent owner of the GASPARILLA TREASURES mark, suggesting that the whole dispute was something of an internal matter. The Board declined to engage with this argument. In an ex parte proceeding, the Board is bound to treat the registered owner as the owner. Attacking the validity of a registration or the registrant's ownership is an inter partes matter, not something that can be raised during a registration appeal. The Krewe had multiple opportunities during the proceeding to produce a license agreement or execute an assignment and did not do so.
What This Means If You Are Facing a Likelihood of Confusion Refusal
Consent agreements are a legitimate and often effective tool for overcoming a likelihood of confusion refusal. The Federal Circuit has said courts and the USPTO should give them significant weight because the parties themselves are in the best position to know the commercial reality. But the weight given to any consent agreement depends entirely on its content.
A few things to keep in mind if you are in this situation.
A consent agreement needs to explain, not just assert. Saying that confusion is unlikely is not enough. The agreement should articulate why: because the parties sell through different channels, target different customers, use the mark on different product lines, or have coexisted for years without any reported confusion. The more specific and credible the reasoning, the more weight the USPTO will give it.
Restrictions on use strengthen the agreement substantially. If the parties can agree to operate in distinct segments of the market, use house marks, or otherwise differentiate how they present their goods to consumers, those commitments give the USPTO concrete reasons to believe confusion will not occur in practice.
Identical goods and identical channels are the hardest situation. When the goods are the same and the customers are the same, a consent agreement has to work harder to be persuasive. The Board cannot simply accept the parties' mutual assurance when there is nothing in place to prevent a consumer from encountering both marks on identical products in the same store.
A short history of coexistence carries limited weight. If the marks have only been in the market together for a year or two, that is not a strong track record. Consent agreements that reference a long period of concurrent use without confusion are more compelling.
An assignment may be the cleaner solution. The Krewe apparently explored this option, and an unsigned assignment appeared in the record during the proceedings. If the registrant of the conflicting mark is willing to assign the registration to the applicant, that resolves the conflict entirely and eliminates the need to structure a consent agreement that satisfies the USPTO.
If you are dealing with a likelihood of confusion refusal and considering a consent agreement as part of your strategy, Five Dogs Law offers a free consultation. Getting the agreement right at the outset is far less costly than working through multiple rounds of refusal.
Book a free consultation with Jared Spindel.
This post is for general informational purposes only and does not constitute legal advice. Trademark strategy requires a fact-specific analysis of your particular situation. Contact an attorney for advice about your circumstances.
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