“[D]epending on the circumstances,” a Section 2(d) refusal for likelihood of confusion between an applied-for mark and a registered mark may be overcome by a consent agreement because such agreements “may … carry great weight” since the parties to the agreement are in a “better position to know the real life situation than bureaucrats or judges.” Bongrain Int'l (Am.) Corp. v. Delice de France Inc., 811 F.2d 1479, 1485 (Fed. Cir. 1987); In re Bay State Brewing Co., Ser. No. 85826258, 2016 TTAB LEXIS 46, at *32 (TTAB 2016) (“we unmistakably recognize the Federal Circuit's instruction that consent agreements are frequently entitled to great weight”); see also In re Dare Foods Inc., Ser. No. 88758625, 2022 TTAB LEXIS 92 (TTAB 2022). That being said, “there 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.” In re Bay State Brewing, 2016 TTAB LEXIS 46, at *16-17; see also Amalgamated Bank of N.Y. v. Amalgamated Tr. & Sav. Bank, 842 F.2d 1270, 1275 (Fed. Cir. 1988). 

Factors to be considered in weighing a consent agreement include the following: (1) Whether the consent shows an agreement between both parties; (2) Whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels; (3) Whether the parties agree to restrict their fields of use; (4) 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 (5) Whether the marks have been used for a period of time without evidence of actual confusion. See In re Four Seasons Hotels Ltd., 987 F.2d 1565 (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 (CCPA 1973) (“DuPont”). 

The TTAB recently reversed a Section 2(d) refusal of the applied-for WATERLOO SPIKED SPARKLING WATER mark for various alcoholic beverages (with "SPIKED SPARKLING WATER" disclaimed) over the registered mark WATERLOO NO.9 GIN for "spirits" (with "GIN" disclaimed). In re Waterloo Sparkling Water Corp., Ser. No. 90843090 (TTAB Sept. 30, 2024) (not precedential). 

Here, Applicant and Registrant previously had entered into a settlement agreement in connection with a prior civil action between them--but the Examining Attorney argued that the agreement was a “naked consent” that does not overcome likelihood of confusion, because it neither (1) sets forth reasons why the parties believe there is no likelihood of confusion, nor (2) describes the arrangements undertaken by the parties to avoid confusing the public. 

The TTAB, however, found that "the settlement agreement is more than a naked consent and is clothed." 

While the agreement was phrased more broadly in terms of a covenant not to sue rather than a typical co-existence agreement, "[t]he parties plainly intended that Registrant's current use and registration of WATERLOO marks for 'spirits' is permitted under agreed-upon conditions." In particular, "the contract includes a provision for Registrant to deliver certificate of label (COLA) approvals to Applicant when they include the word WATERLOO or WATERLOO trade dress." Although a COLA label is more related to compliance with the TTB (Alcohol and Tobacco Tax and Trade Bureau) regulations, it still showed the parties' efforts to cooperate as to labeling so as to avoid confusion in the marketplace. 

      Although the Examining Attorney criticizes the agreement for lacking specific statements to avoid actual confusion, we can infer from the requirement to deliver COLA labels to Applicant that the parties have an agreement and system to avoid confusion as regards use of WATERLOO for carbonated alcoholic beverages. We find that these provisions are substantively and essentially efforts to avoid actual and future confusion under factor 4 of Four Seasons.

      Importantly, the agreement addresses Registrant's consent to Applicant's subject application and right to register WATERLOO SPIKED SPARKLING WATER, implying Applicant's right to use this mark. It provides that the Registrant will “take no further action to oppose or seek to impair, restrict or prevent the registrations of Waterloo's pending trademark application for WATERLOO SPIKED SPARKLING WATER Ser. No. 90843090.” ... The consent to register at the very least “negates the presumption that doubts about likelihood of confusion are to be resolved in favor of the Registrant.” In re Wacker Neuson, Ser. No. 79060553, 2010 TTAB LEXIS 440, *at 27 (TTAB 2010) (citing Donnay Int'l, 1994 TTAB LEXIS 21, at *11). 

Thus, the TTAB found that "the consent agreement supports Applicant's position of no likelihood of confusion based on the reasoned analysis of Applicant and Registrant who understand the nature of their businesses," and held that the applied-for WATERLOO SPIKED SPARKLING WATER mark for “Spiked seltzer containing alcohol; ready-to-drink cocktails; alcoholic seltzers; flavored alcoholic seltzer; hard seltzer; alcoholic beverages except beer, wine, and spirits; pre-mixed alcoholic beverages; carbonated alcoholic beverages except beer” is not likely to cause confusion with the registered mark WATERLOO NO. 9 GIN for “spirits.”