Trademark Coexistence Agreement Uspto

Approval agreements can be very effective in countering a refusal based on the risk of confusion, since the USPTO is supposed to attach great importance to these coexistence agreements. See In re American Cruise Lines, Inc., 128 USPQ2d 1157 (TTAB 2018). The risk is that the USPTO audit lawyer may regard an agreement submitted as a “naked approval agreement,” which contains little more than the consent of one party to register the other party`s trademark and a general statement that there is no risk of confusion. The approval agreement in In re A-Plant 2000 ApS had several shortcomings. Although there was agreement on a restriction invoked by the applicant, the restriction did not result in identification. In addition, the approval agreement does not specify that the parties are limited to separate commercial channels and to consumers. In addition, the agreement makes it clear that the products of both parties are sold to the same buyers in the same markets. The Trademark Trial and Appeal Board (TTAB) gave a previous notice in In re American Cruise Lines, Inc. on the provisions necessary to obtain acceptable consent to registration. In this regard, the TTAB has provided clarification and instructions to trademark holders who negotiate and edify consent agreements. A simple approval agreement is generally cheaper because it includes less time and resources for the project. However, you will receive what you pay and a co-existence agreement will certainly offer more protection. An approval agreement is generally sought by an applicant who, in a pending trademark application, is faced with a refusal, because the applicant`s mark is confusedly similar to that of a third party, registered or pending with an earlier filing date.

In these circumstances, it may be useful to consider an agreement with the third party, particularly where the applicant can demonstrate a priority of use (previous use) such as the claimed dates of the first use in the third party`s trademark application. The issue for trademark holders is high when it comes to drafting consent and co-existence agreements. A TM lawyer can help overcome the denial of a trademark application and protect property interests in the development and negotiation of co-existence agreements. The TTAB decided that an approval agreement in which “competitors clearly conceived their business interests” was very important and that the examiner should not replace his judgment on the risk of confusion between two brands with the assessment of the parties of real interests.

Tjip de Jong

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