Can an agreement between the two owners settle it?

A consent agreement is one of the few ways past a Section 2(d) refusal when the marks are close and the goods related. It lets the businesses that know the market tell the USPTO how it works.

In the words of the court that set out the factors: “A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not.” In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1363 (C.C.P.A. 1973).

The tenth du Pont factor is “the market interface between applicant and the owner of a prior mark.” Id. at 1361. It lists four forms: (a) a mere consent to register or use; (b) agreement provisions designed to preclude confusion, such as limits on each party’s use; (c) an assignment of the mark, application, registration and goodwill of the related business; and (d) laches and estoppel attributable to the prior owner and indicative of lack of confusion. This page focuses on consent agreements, the form an applicant can bring to examination.

Naked versus clothed consent. “[A] naked ‘consent’ may carry little weight,” but the weight given to more detailed agreements “should be substantial.” Id. at 1362. A naked consent says little more than that the registrant consents and believes confusion is unlikely. A clothed consent explains why and sets out the steps the parties will take to avoid confusion. In re Mastic Inc., 829 F.2d 1114, 1117 (Fed. Cir. 1987). In Mastic, the Federal Circuit affirmed a refusal where the consent was essentially naked and every other factor pointed to confusion. Id. at 1118.

Great weight, with a limit. The USPTO should not substitute its judgment for that of the parties without good reason, meaning unless the other factors clearly dictate a finding of likely confusion. In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1569 (Fed. Cir. 1993). A consent is still “but one factor to be taken into account.” In re N.A.D. Inc., 754 F.2d 996, 999 (Fed. Cir. 1985).

What the USPTO looks for. TMEP § 1207.01(d)(viii) lists five points:

1. Whether the consent shows an agreement between both parties.
2. Whether it clearly indicates that the goods or services travel in separate trade channels.
3. Whether the parties agree to restrict their fields of use.
4. Whether the parties will work to prevent confusion and cooperate to fix any that arises.
5. Whether the marks have been used for a period of time without evidence of actual confusion.

Not every point is required. U.S. Pat. & Trademark Off., Trademark Manual of Examining Procedure § 1207.01(d)(viii) (May 2026) [hereinafter TMEP].

Practical rules. An examining attorney may not ask you for a consent agreement; you have to bring it. An agreement in which both parties make representations should be signed by both. And a consent agreement is not a concurrent use registration, which is a separate proceeding that limits a registration by geography. Id.; TMEP § 1207.04.

Common mistakes. Filing a naked consent and expecting it to end the matter. Allowing both marks in the same territory with no safeguards. Treating the registrant’s tolerance of your use as written consent. Forgetting that whatever you file becomes public.

4 of the 38 records in this library that code du Pont factors carry a finding on factor 10 (library as of 2026-09-19; a curated collection, not a random sample). All four are ex parte appeals. The factor was coded as weighing toward refusal in two, for the applicant in one, and as neutral in one where there was no evidence of any market interface.

The applicant’s win is In re American Cruise Lines, Inc. The Board allowed AMERICAN CONSTELLATION for cruise ship services over CONSTELLATION and CELEBRITY CONSTELLATION. The marks were similar and the services identical. The parties’ detailed, record-corroborated agreement was not a naked consent and weighed heavily against likely confusion, along with the care cruise passengers take before buying.

In In re Bay State Brewing Co., a consent did not save TIME TRAVELER BLONDE for beer over TIME TRAVELER for beer, ale and lager. The agreement allowed both marks to be used in overlapping territory and lacked meaningful safeguards. When a short-form agreement did not persuade the examining attorney, the applicant filed a long-form agreement, which became part of the public record.

In In re USA Warriors Ice Hockey Program, Inc., there was no written consent. The registrant had featured the applicant’s mark on its website, but the Board refused to treat that as consent, reasoning that the registrant’s silence might reflect permission it could revoke.

Find out who owns the cited registration and whether the mark is still in use. If the owner is reachable and the businesses really operate differently, a consent agreement may be the most direct route. The other owner may want something in return, such as limits on how you use your mark.

Contacting the other owner is something you can do yourself, but have a plan before you do. The agreement is a contract the USPTO will read, and so may a court later. Its value depends on its detail. Drafting it is legal work, and it is where a lawyer earns the fee.

If you have a refusal and the registrant may be willing to consent, Valet Law, PLLC can negotiate and draft an agreement built to carry weight with the USPTO.

Attorney review is provided by Valet Law, PLLC, a law firm separate from Trademark Valet, LLC. Keep confidential facts out of public tools. Your first message to Valet Law should identify the parties and the general issue only. Wait until Valet Law confirms it can discuss the matter before sending confidential details.