TMEP § 1207.01(d)(viii)
The term "consent agreement" generally refers to an agreement between parties in which one party (e.g., a prior registrant) consents to the registration of a mark by the other party (e.g., an applicant for registration of the same mark or a similar mark), or in which each party consents to the registration of an identical or similar mark by the other party.
An applicant may submit a consent agreement in an attempt to overcome a refusal of registration under Trademark Act §2(d), or in anticipation of a refusal to register. However, an examining attorney may not solicit a consent agreement.
A consent agreement may take a number of different forms and arise under a variety of circumstances, but, when present, it is "but one factor to be taken into account with all of the other relevant circumstances bearing on the likelihood of confusion referred to in §2(d)." In re N.A.D. Inc., 754 F.2d 996, 999, 224 USPQ 969, 971 (Fed. Cir. 1985); see also In re Bay State Brewing Co., Ser. No. 85826258, 2016 TTAB LEXIS 46, at *16-17 (2016) ("[T]here is no per se rule that a consent, whatever its terms, will always tip the balance to finding no likelihood of confusion, and it therefore follows that the content of each agreement must be examined.").
Factors to be considered in weighing a consent agreement include the following:
In re Ye Mystic Krewe of Gasparila, Ser. No. 90522364, 2025 TTAB LEXIS 412, at *14-15; In re Dare Foods Inc., Ser. No. 88758625, 2022 TTAB LEXIS 92, at *13-14 (2022); see In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1567, 1569 (Fed. Cir. 1993); In re Mastic Inc., 829 F.2d 1114, 1117-18 (Fed. Cir. 1987); In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1362-63 (C.C.P.A 1973).
"Naked" consent agreements (i.e., agreements that contain little more than a prior registrant’s consent to registration of an applied-for mark and possibly a mere statement that source confusion is believed to be unlikely) are typically considered to be less persuasive than agreements that detail the particular reasons why the relevant parties believe no likelihood of confusion exists and specify the arrangements undertaken by the parties to avoid confusing the public. See In re Mastic Inc., 829 F.2d at 1117 ("If . . . the consent is ‘clothed’ with the parties’ agreement to undertake specific arrangements to avoid confusion of the public, as in DuPont, the parties’ assessment of no likelihood of confusion is entitled to greater weight, not because of the consent itself, but because such arrangements are additional factors which enter into the likelihood of confusion determination."); In re E.I. du Pont de Nemours & Co., 476 F.2d at 1362 (noting that "[i]n considering agreements, a naked ‘consent’ may carry little weight," but "[t]he weight to be given more detailed agreements . . . should be substantial"); In re Ye Mystic Krewe of Gasparilla, 2025 TTAB LEXIS 412, at *22-23, *26-27 (finding consent had multiple failings because it lacked sufficient basis as to why confusion was unlikely "where identical and legally identical goods [were] sold to identical potential consumers in identical channels of trade under highly similar marks," it did not indicate that "the identical goods travel[ed] in separate trade channels, or that the parties [would] restrict their fields of use for their highly simiar marks;" and, based on their dates of use, applicant and registrant had used their marks concurrently without incident for only about one year when the consent was executed); In re Dare Foods Inc., Ser. No. 88758625, 2022 TTAB LEXIS 92, at *24 ("The consent agreement in this appeal constitutes more than a mere naked consent and, therefore, plays a more dominant role in the likelihood of confusion analysis" even though the agreement did not discuss all the factors relevant to reviewing consent agreements); In re Am. Cruise Lines, Inc., Ser. No. 87040022, 2018 TTAB LEXIS 363, at *18-22 (2018) (finding "[t]he consent agreement . . . constitute[d] more than a mere naked consent and, therefore, ought to play a more dominant role in the likelihood of confusion analysis."); see also In re Bay State Brewing Co., 2016 TTAB LEXIS 46, at *33 (holding confusion likely even if the parties’ marks were used in accordance with the consent agreement of record, because the agreement did "not comprise the type of agreement that [was] properly designed to avoid confusion," nor did it "fully contemplate all reasonable circumstances in which the marks may be used by consumers calling for the goods"); In re Donnay Int’l, S.A., Ser. No. 74160268, 1994 TTAB LEXIS 21, at *9 (1994) ("[T]he more information that [was] in the consent agreement as to why the parties believe confusion to be unlikely, and the more evidentiary support for such conclusions in the facts of record or in the way of undertakings by the parties, the more we can assume that the consent [was] based on a reasoned assessment of the marketplace, and consequently the more weight the consent will be accorded."); In re Permagrain Prods., Inc., Ser. No. 73268400, 1984 TTAB LEXIS 80, at *6 (1984) (finding a consent agreement submitted by applicant did not alter the conclusion that confusion was likely, because the agreement was "naked" in that it merely indicated that each party would recognize, and refrain from interfering with, the other’s use of their respective marks and that the applicant would not advertise or promote its mark without its company name, but the agreement did not restrict the markets or potential customers for their goods in such a way as to avoid confusion); cf. In re Wacker Neuson SE, Ser. No. 79060553, 2010 TTAB LEXIS 440, at *26-27 (2010) (finding an otherwise "thin consent" to be viable and reversing a §2(d) refusal, in view of the relationship of the parties, the provisions of a licensing agreement executed by the parties, and the fact that the goods and services offered under both parties’ marks were manufactured and sold by applicant). Although including a provision that the parties agree to make efforts to avoid any potential confusion (see factors (3) and (4) above) is preferred and may render a consent agreement more probative, such provisions are not mandatory. In re Am. Cruise Lines, Inc., 2018 TTAB LEXIS 363, at *19. And while evidence that the marks have been in use for a period of time without actual confusion may render a consent agreement more probative (see factor 5 above), it is not an essential provision for a consent agreement to have probative value. In re Dare Foods Inc., 2022 TTAB LEXIS 92, at *23-24.
If a consent agreement makes representations about both parties’ beliefs regarding the lack of likelihood of confusion (see factors (2) through (4) above) and/or indicates that both parties have agreed to undertake certain actions to avoid confusion (see factors (3) and (4) above), then it should be signed by both parties, or by individuals with legal authority to bind the respective parties. In some instances, however, a consent document might be signed only by the registrant, because only the registrant has provided its consent, agreed to take certain actions, or made representations as to the likelihood of confusion. The absence of applicant’s signature on the document in such cases does not necessarily render the document unacceptable, but, like any other consent document, its persuasive value should be determined in light of all other evidence in the record. See, e.g., Donnay Int’l, 1994 TTAB LEXIS 21, at *10-12 (finding that a consent letter signed only by the registrant and consisting merely of registrant’s consent to applicant’s registration and use of the applied-for mark was entitled to limited weight, but nonetheless concluding that it served to "tip the scales" in favor of reversing the §2(d) refusal, especially in view of the minimal evidence supporting the conclusion that confusion was likely); In re Palm Beach Inc., Ser. No. 73271540, 1985 TTAB LEXIS 108, at *9-10 (1985) (concluding there was no reasonable likelihood of confusion as to applicant’s and registrant’s marks, based on, inter alia, the different nature of the parties’ goods, two consent letters signed only by owners of the cited registration, and an affidavit of an officer of applicant’s subsidiary indicating that actual confusion had not occurred during the more than 45 years of the marks’ coexistence and that future likelihood of confusion was believed to be unlikely).
In the In re E. I. du Pont de Nemours & Co. decision, the Court of Customs and Patent Appeals stated as follows:
[W]hen those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won’t. A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not. 476 F.2d at 1363.
Accordingly, the Court of Appeals for the Federal Circuit has indicated that consent agreements should be given great weight, and that the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion. See In re Four Seasons Hotels Ltd., 987 F.2d at 1569; In re N.A.D. Inc., 754 F.2d at 996; see also In re E. I. du Pont de Nemours & Co., 476 F.2d at 1362-63; cf. In re Mastic Inc., 829 F.2d at 1118 (affirming TTAB’s holding that applicant’s mark was barred by §2(d), because the provided consent to register was essentially a "naked" consent and all other relevant factors weighed in favor of a conclusion that confusion was likely).
Thus, examining attorneys should give substantial weight to a proper "clothed" consent agreement. When an applicant and registrant have entered into a consent agreement that shows they have clearly thought out their commercial interests, and, on balance, the other factors do not dictate a finding of likelihood of confusion, the parties' consent agreement favors a conclusion that confusion is not likely.
A consent agreement is not the same as a "concurrent use" agreement. The term "concurrent use" is a term of art that refers to a geographical restriction on the registration. See TMEP §1207.04 regarding concurrent use.