Few words light up a Tampa, Florida resident’s heart quite like GASPARILLA – and for this particular Tampa resident, the recent overlap of Gasparilla and trademark practice pointers in the Trademark Trial & Appeal Board’s (“TTAB”) In re Ye Mystic Krewe of Gasparilla decision is a hard one to beat. (Serial No. 90522364 (October 14, 2025) [precedential]).
For the uninitiated, Gasparilla is a legendary Tampanian festival that began in 1904 and celebrates a fictional pirate’s invasion of the city – picture New Orleans’ Mardi Gras, but with a pirate twist. Over the past 120+ years, Gasparilla grew from a single parade to a full two months of celebrations and revelry with over 60 associated “krewes” (social and charitable organizations, each with its own theme and membership) and countless beads tossed every year.
Applicant Ye Mystic Krewe of Gasparilla (“YMKG”), the original and predominant Gasparilla festival krewe, owns two Principal Register registrations for its GASPARILLA trademark for parade and festival entertainment services in Class 41, claiming use dating back to the first parade on May 31, 1904. In February 2021, YMKG applied to register the GASPARILLA mark for commemorative merchandise and apparel in Classes 14, 21, 25, and 26.
The U.S. Patent & Trademark Office (“USPTO”) refused registration on two grounds: (1) descriptiveness under Section 2(e)(1) of the Lanham Act, and (2) a likelihood of confusion under Section 2(d) for the goods in Classes 21 and 25 – based on EventFest, Inc.’s 2014 registration for the mark GASPARILLA TREASURES, for art, glassware, apparel, and event ticketing services in Classes 16, 21, 25, and 41. YMKG amended its application to the Supplemental Register to overcome the Section 2(e)(1) refusal, claiming use of the GASPARILLA mark in commerce since January 2022 (for Classes 14 and 26) and June 2022 (for Classes 21 and 25).
The Section 2(d) refusal was not quite as straightforward for YMKG, starting with its failure to address that refusal ground until the USPTO issued a Final Office Action. In its ensuing Request for Reconsideration, YMKG explained that it was the rightful owner of the GASPARILLA mark and had licensed the mark to EventFest for 30 years. Although YMKG detailed the business relationships between the parties, indicated that EventFest was “planning to assign” (but had not yet assigned) the cited registration to YMKG, and noted that EventFest would sign a consent document “if needed” – it did not provide any supporting documents (such as the theoretical assignment and/or consent agreement), and the USPTO accordingly denied the request.
YMKG appealed the refusal, filing in its brief a signed consent agreement and requesting withdrawal of the Section 2(d) refusal; the TTAB remanded the application to the Examining Attorney, who issued a subsequent final Office Action on the basis that the consent agreement was an insufficient “naked consent.” Upon the TTAB’s resumption of the appeal, YMKG filed four extensions of time to file a supplemental brief with the assignment of the cited registration – but ultimately did not do so, prompting the Board to proceed to the Examining Attorney’s brief and then its decision.
In affirming the refusal to register the GASPARILLA mark in Classes 21 and 25, the Board noted that the existence of a consent agreement is just one of the 13 DuPont factors in a federal likelihood of confusion analysis. Although such agreements may carry great weight, there is no per se rule that a consent agreement “will always tip the balance to finding no likelihood of confusion,” and so the content of each agreement must still be examined. The Federal Circuit’s 1993 In re Four Seasons decision provides the framework by which a consent agreement should be assessed:
- Whether the consent shows an agreement between both parties;
- Whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels;
- Whether the parties agree to restrict their fields of use;
- Whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and
- Whether the marks have been used for a period of time without evidence of actual confusion.
The TTAB agreed with the Examining Attorney’s conclusions that the goods at issue were identical (and presumably traveling through the same channels of trade to the same potential purchasers), and that the GASPARILLA and GASPARILLA TREASURES marks were highly similar. Given these baseline conclusions in its DuPont analysis, the Board then examined whether the consent agreement provided a sufficient degree of counterweight – and ultimately decided that it did not.
In its analysis of the consent agreement, the Board observed it to be brief, with the substantive terms comprising one page. Although the parties agreed that YMKG’s application could register, there was no indication in the agreement that the parties’ goods will travel in separate trade channels, or that the parties will otherwise restrict their fields of use or alter how their respective marks are displayed.
Further fatal was the consent’s provision regarding the parties’ obligations to correct and prevent consumer confusion, as the agreement only required the party aware of any confusion to advise the other and then for both parties to “take commercially reasonable steps to address the confusion and prevent its future occurrence.” The Board deemed this provision to be a “nominal agreement” that did not offset the potential confusion in this situation, given the identical goods sold under highly similar marks to identical potential consumers through presumably identical trade channels – noting that the parties could have remedied this flaw by “clothing” the agreement with a requirement to undertake “specific arrangements” to avoid confusion.
The Board finished its analysis by noting that the consent did not contain any information to bolster its wording that “there has not been, currently is no, and will likely be no, likelihood of consumer confusion resulting from the simultaneous use and registration” of their marks — namely, information on the amount of time and any other facts to support this weighty conclusion. Because the parties executed the consent on June 1, 2023 and YMKG claimed a June 16, 2022 first-use date for the goods at issue, the Board observed that the period of apparent coexistence was less than one year. So, in the context of the consent’s other deficiencies, it found this “slight amount” to be “too limited to support a conclusion that confusion is unlikely.” Because the consent agreement suffered from multiple failings as a whole, the Board held that this DuPont factor weighed only slightly in YMKG’s favor and affirmed the refusal to register the GASPARILLA mark in Classes 21 and 25.
This decision offers a treasure map of practice pointers for trademark applicants seeking to overcome a Section 2(d) likelihood of confusion refusal with a consent agreement. Particularly in situations involving identical or highly similar marks, it is critical to explain in the consent agreement whether and how the goods/services differ or are offered through different channels of trade – or if the trade channels cannot be distinguished or restricted, then to balance that factor with an agreement to display the marks in distinguishing ways (e.g., adding a house mark for at least one party’s use). For all cases, this decision emphasizes the importance of detailing how the parties will seek to prevent and correct any actual consumer confusion, to avoid running the risk of a “naked” consent agreement. The TTAB may have plundered YMKG’s ability to fully register its GASPARILLA mark, but this decision might save other trademark applicants from a similar walk down the plank.
