Godzilla X TTAB: When a Consent Agreement Isn’t Enough for Trademark Registration

Key Points

• On August 13, 2026, the TTAB affirmed USPTO refusals of 12 GODZILLA X KONG: THE NEW EMPIRE applications in In re Legend, a nonprecedential decision, based on likelihood of confusion with Toho Co. Ltd.’s GODZILLA marks despite a consent agreement.
• Under In re Legend, a consent agreement does not guarantee that the USPTO will approve an application for a similar or identical mark, because it is only one part of the likelihood-of-confusion analysis.
• Of the five non-exclusive and non-exhaustive factors the TTAB uses to assess a consent agreement’s probative value, the agreement in In re Legend satisfied only one: that both parties executed it.
• The TTAB determined that the consent agreement in In re Legend had limited probative value because it lacked, among other things, clear trade-channel separation, field-of-use limits, and confusion-prevention obligations.
• As a reminder from In re Legend, a consent agreement should include terms aimed at reducing consumer confusion, because omitting express safeguards and obligations may significantly reduce its probative value when the USPTO evaluates a pending application.

When a party wishes to register a trademark that closely resembles an existing mark, obtaining a consent agreement from the owner of the conflicting mark might seem like a remedy for one of the biggest hurdles to trademark registration. But a recent, nonprecedential Trademark Trial and Appeal Board (TTAB) ruling highlights how a consent agreement may not be enough for the U.S. Patent and Trademark Office (USPTO) to grant approval on a trademark application for a similar or identical mark.

Recently, in In re Legend IP Holdings Production, LLC, the TTAB upheld the USPTO’s refusal to approve 12 trademark applications due to the likelihood of confusion between the applicant’s mark and the GODZILLA mark, notwithstanding the existence of a consent agreement.

The TTAB ruling serves as a reminder that a consent agreement should adequately demonstrate that confusion is unlikely between the respective marks in order to increase the likelihood that it will support trademark registration.

Case Overview

In In re Legend IP Holdings Production, LLC, Legend IP Holdings Production, LLC (Legend) appealed the USPTO’s refusal to register 12 applications for Legend’s GODZILLA X KONG: THE NEW EMPIRE mark. The USPTO refused the applications because it determined that there was a likelihood of confusion between Legend’s mark and the GODZILLA mark owned by entertainment company Toho Co., Ltd. (Toho).

On appeal, Legend argued it had a License and Consent Agreement with Toho that made confusion with Toho’s mark unlikely. Legend also pointed out that the agreement allowed it to hold the marks “in trust” for Toho. However, the TTAB ultimately affirmed the USPTO’s refusals on all 12 applications by applying the DuPont likelihood-of-confusion factors. As part of the analysis, the TTAB determined the consent agreement between the parties had limited probative value to support a finding that confusion was unlikely between the marks. The TTAB also indicated that holding the marks in trust for Toho did not change the fact that Legend was considered the ultimate source of the identified goods as the applicant.

In reaching its determination, the TTAB ruled that Legend and Toho’s consent agreement only satisfied one of the five non-exclusive and non-exhaustive factors the TTAB uses to assess the probative value of a consent agreement. In particular, it found:

1. The consent agreement established mutual agreement between both parties. This was the sole factor that Legend and Toho satisfied, because the agreement was executed by both parties.
2. The agreement did not provide a clear indication that the goods and/or services travel in separate trade channels. The consent agreement did not include any details regarding established trade channels, or assurances that they would not overlap.
3. The parties did not agree to restrict their fields of use. The agreement did not contain any limitation on either party with respect to field of use.
4. The agreement did not include efforts to prevent confusion, nor accounted for cooperation or steps to avoid confusion that could arise in the future. The agreement did not account for concrete requirements or obligations intended to prevent or address potential confusion between the two marks.
5. There was no evidence Legend had used the marks, meaning there was no evidence of a period of time in which both marks were used without actual confusion. Legend’s filings were on an intent-to-use basis, meaning there was no established record of consumers encountering both marks without confusion.

Key Takeaways

Here are some key considerations for practitioners navigating consent agreements in trademark prosecution:

1. A consent agreement does not guarantee that the USPTO will approve an application for a similar or identical mark. Consent agreements are only one part of the likelihood-of-confusion analysis. While the TTAB acknowledged that a consent agreement could potentially tip the balance in favor of finding that confusion is unlikely, the analysis will ultimately hinge on the totality of the facts and circumstances of a particular case. For brand collaborations, as in this case, a consent agreement may have less probative value when the marks are in the same field, since a pre-existing mark is more likely to be confused with the proposed similar or identical mark.
2. A consent agreement should establish a framework aimed at reducing likelihood of confusion. In order for a consent agreement to support a finding that confusion is unlikely with an existing mark, the agreement should have terms that are aimed at reducing the likelihood of confusion to consumers. Failure to include safeguards and obligations expressly within the agreement may significantly reduce the probative value of the consent agreement when the USPTO is evaluating a mark’s pending application for likelihood of confusion. While a short agreement will not necessarily fail, the TTAB made it clear that the more detail the better.