Businesses often come into conflict with other businesses that use identical or similar brands to sell related goods and/or services. This can lead to the refusal of a trademark application by the United States Patent and Trademark Office ("USPTO") on the basis of a likelihood of confusion, or lengthy litigation with attendant expensive legal fees and anxiety over the ownership of brand names. Consent agreements can be used to convince an Examining Attorney with the USPTO that there is no likelihood of confusion and that associated trademark applications should be submitted for publication. Coexistence agreements can help parties avoid litigation. A coexistence agreement is a contract between respective trademark owners that allows both parties to peacefully coexist in a particular market with specific limitations. An experienced trademark lawyer ("TM Lawyer") can help draft comprehensive consent and coexistence agreements that establish the rights and expectations of the contracting parties.
What needs to be included in consent and coexistence agreements?
Consent Agreements
A trademark applicant that is refused registration because of a likelihood of confusion with a previously registered trademark may attempt to overcome the refusal by entering into a consent agreement with the earlier registered conflicting trademark owner. It is important to be aware of the fact that a consent agreement does not automatically overcome a refusal, but is one factor that the assigned Examining Attorney considers in determining whether a likelihood of confusion among consumers may exist with respect to the marks at issue. Generally, a consent agreement that provides few specifics as to the nature of the agreement between the subject parties will not be considered very persuasive. A TM Lawyer can assist in crafting a more detailed and comprehensive consent agreement that will likely make it easier for the Examining Attorney to move the trademark application through to publication.
Coexistence Agreements
A coexistence agreement is used where the contracting parties believe that consumers would not be confused as to the source of the parties' respective goods and/or services as long as both parties adhere to the terms of the agreement. A well-crafted coexistence agreement should include, among other provisions: 1) geographical boundaries for mark use and where the parties are permitted to expand their respective businesses in the future; 2) where the parties may apply for trademark rights in foreign countries; and 3) limitations on social media use and registration of Internet domain names. Having a TM Lawyer draft or review the coexistence agreement will help avoid future conflicts concerning the validity of its constituent terms.
Hiring a TM Lawyer
For trademark owners, there is a lot at stake when drafting consent and coexistence agreements. A TM Lawyer can help overcome a trademark application's refusal and protect ownership interests when drafting and negotiating coexistence agreements.
The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the legal advice of an experienced attorney.
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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
