A recent ruling by the Trademark Trial and Appeal Board (TTAB) has clarified the boundaries of consent agreements in trademark disputes, underscoring their limited effectiveness when likelihood of confusion is a central issue. The case, involving two Tampa-based entities with overlapping marks, highlights the necessity of meticulous trademark monitoring and the importance of detailed, enforceable agreements.
The dispute centered on the registration of the mark GASPARILLA by Ye Mystic Krewe of Gasparilla (YMKG) for drinkware and apparel. The U.S. Patent and Trademark Office (USPTO) rejected the application, citing a likelihood of confusion with GAS,PARILLA TREASURES, a registered mark owned by EventFest, Inc. Both parties are involved in the annual Gasparilla Pirate Festival, a Florida event with cultural significance.
YMKG attempted to resolve the conflict by submitting a consent agreement, in which EventFest agreed not to oppose the registration and affirmed there was no likelihood of confusion. However, the TTAB rejected the agreement, calling it a “naked consent” and treating it as a request for remand. The board emphasized that such agreements must demonstrate more than mere agreement - they must provide concrete evidence that the marks and goods do not confuse consumers.
The TTAB’s analysis focused on the DuPont factors, a framework used to assess likelihood of confusion. The goods in question were deemed identical or legally identical, and the marks were highly similar, both featuring the term “Gasparilla,” which refers to the Florida island and the festival. The board noted that the parties’ trade channels and consumer base overlapped significantly, further amplifying the risk of confusion.
The consent agreement’s shortcomings were evident. It lacked provisions to separate trade channels, restrict use of the marks, or outline specific steps to prevent confusion. The agreement’s vague promise to take “commercially reasonable steps” was deemed insufficient, as it failed to address the core issue: the marks’ similarity and the goods’ overlap. The TTAB concluded that such agreements are only valid when the marks and goods are dissimilar, or when the parties have demonstrated a long period of coexistence without confusion.
For businesses, this case highlights the critical role of trademark monitoring and the necessity of thorough due diligence. Consent agreements should not be viewed as a shortcut but as a tool that requires detailed, legally sound provisions. When marks are similar and goods are related, the burden of proof lies with the parties to demonstrate that confusion is unlikely.
Legal counsel plays a vital role in drafting such agreements, ensuring they align with the DuPont factors and include measurable safeguards. Proactive measures, such as distinct branding strategies or geographic limitations, can mitigate risks. Amid growing emphasis on brand identity, businesses must prioritize clarity and precision in trademark strategy to avoid costly legal disputes.
IP Defender is a trademark monitoring service that helps businesses protect their intellectual property by tracking national trademark databases for conflicts and infringements. By identifying potential overlaps before they escalate, IP Defender ensures brands can defend their rights without relying on ambiguous agreements. The service’s ability to monitor 50+ countries, including the EU, USA, and Australia, means businesses can stay ahead of threats regardless of where their market operates.
The TTAB’s decision serves as a reminder that in trademark law, ambiguity is not a defense. Confusability remains a central concern, and the onus is on businesses to prove that their marks and goods do not pose a risk to consumers.