Trademark Coexistence Agreement Uspto

Consent agreements are written documents entered into by two parties in which one party consents to the registration of a second party`s trademark with the United States Patent and Trademark Office (“USPTO”). Visit our website entitled “Non-Litigation Trademark Dispute Resolution” to better understand a trademark owner`s options in the event that a dispute arises and the parties wish to resolve the dispute amicably without litigation. If an applicant is refused registration under Section 2(d) of the Trademark Act due to a likelihood of confusion, a consent agreement may be entered into and filed in order to eventually overcome the rejection. Although one party agrees in writing that the other party has registered a similar mark, the examiner may refuse the registration due to confusion in public. In a consent agreement, the owner of a registered trademark grants an applicant permission to register a similar or identical trademark because the parties believe that confusion is unlikely to occur. An examining counsel considers thirteen factors (the “DuPont” factors), including whether an applicant has obtained the consent of the owner of a registered trademark to use a similar trademark to determine whether there is a likelihood of confusion between the trademarks. Therefore, a consent agreement can be a useful tool to overcome a risk of confusion. In E.I. Of the Pont de Nemours & Co., the U.S. Customs and Patent Appeals Court stated: “When those who are most familiar with its use in the market and are most interested in eliminating confusion enter into agreements to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that there will be confusion if those directly affected say that this will not be the case” 476 F.2d 1357, 1363 (CCPA 1973).

The value of a consent agreement depends on the accuracy of the agreement and whether DuPont factors as a whole suggest that consumers are unlikely to be confused. The Trademark Trial and Appeal Board (TTAB) issued a precedent in In re American Cruise Lines, Inc. on the provisions necessary for acceptable approval of registration. In this way, the TTAB has provided clarification and guidance to trademark owners who negotiate and draft consent agreements. Finally, a well-drafted consent agreement is signed by both parties. For more information on consent agreements, please refer to the Manual Guide to Trademark Examination Procedures (TMEP) under §1207.01(d)(viii). If you decide to enter into a coexistence agreement, it is crucial that it is skillfully crafted. A court may reject a coexistence agreement if it does not contain sufficient detail to avoid confusion and if it considers that confusion among consumers is inevitable. In addition, many areas should be addressed in a coexistence agreement in order to avoid future conflicts. Some of these areas include: (1) who has the right to produce or expand the territory; (2) who has the right to the domain name or username on social media or variations of the trademark; (3) who has the right to license or assign the trademark; (5) who has the right to carry on international activities and to register international marks; (6) What happens if a party waives its rights? (7) What is the duration of the agreement? and (8) What happens if one party violates it, what facilities is the other party entitled to and in the event of a dispute, what jurisdiction will the parties use? When obtaining the consent of the owner of a registered trademark, the greatest lever is usually the priority of the applicant (i.e.

prior use of the mark by the applicant requesting consent). Suggestions for improving the form and content of the manual are always welcome. They must be emailed to or addressed to: To submit a coexistence agreement to the USPTO, an applicant (the party applying for trademark registration) must meet one of the following USPTO criteria for “simultaneous use”: A simple consent agreement is generally cheaper because it requires less time and resources to create. However, you get what you pay for, and a coexistence agreement certainly offers more protection. A trademark coexistence agreement should include the following: American Cruise Lines has filed a trademark application for the AMERICAN CONSTELLATION trademark for cruise ship services. The USPTO refused to register the mark due to a likelihood of confusion with the trademarks CONSTELLATION and CELEBRITY CONSTELLATION, each owned by the same owner and covering identical services. In the course of pursuing its application, American Cruise Lines, in its attempts to overcome the likelihood of confusion, submitted two consent agreements between it and the owner of the cited recordings. The USPTO auditor did not accept either consent agreement and upheld the rejection. American Cruise Lines then appealed the rejection to the TTAB. The key to persuasion lies in the leverage effect of the applicant – that is, the applicant`s previous use provides reasons for the revocation of the blocking trademark registration, provided that the registration is no more than five years old. Priority of use is also a basis for opposition to a pending trademark application during the opposition period.

A trademark coexistence agreement is a more comprehensive agreement that offers even greater protection than a simple consent agreement. Coexistence agreements typically add unique restrictions on locations, industries, and/or marketing methods in which both parties can use their respective brands. These specifications are in addition to the points contained in the consent agreement above. Coexistence agreements are especially useful for companies that want to grow and avoid future infringement lawsuits and/or litigation. The only part of the agreement that has substance is the last paragraph. However, without explaining why confusion is unlikely or how the parties will cooperate in the future to avoid confusion, the agreement was not sufficient to overcome the rejection under Article 2(d) and the applicant`s trade mark was not registered. A party who is clearly a junior trademark user (and not the first party to use a trademark) may have no choice but to request a consent agreement from the older trademark user (the first party who uses a trademark in the trade and usually registers it). However, if bargaining power is more equal between the parties, a coexistence agreement that lists issues of importance to both parties is likely to be in the interest of all.

Bargaining power with respect to the use of trademarks may be created by the status of an older user, a famous or well-known trademark, or ownership of additional trademarks that the other party may be interested in restricting. A well-drafted consent agreement should clarify the differences between the respective marks. While this is not mandatory, it would still be useful to explain that the parties would take steps to minimize confusion or resolve actual confusion if it occurred. The Agreement may also describe specific uses to be adopted from each site (e.g.B. each party would only use a specific trademark with certain words and/or a logo in connection with certain products/services only). The Trademark Manual of Examination Procedure (TMEP) can be downloaded free of charge from the United States Patent and Trademark Office (USPTO) website at The USPTO considers many relevant factors and evidence before reaching a conclusion on whether a trademark should be registered. In situations where the USPTO believes that the trademark applied for is likely to cause consumers to become confused with a previously registered trademark, the USPTO will attach great importance to a consent agreement between the applicant and the owner of the trademark. However, the consent agreement should be sufficiently detailed and include specific reasons and evidence as to why the parties concerned do not expect confusion among consumers and the explicit steps they will take to further reduce it. “Naked” consent agreements (which only include permission to register the trademark and a brief statement that confusion is unlikely) are far less convincing to the USPTO. Ultimately, a high risk of confusion for consumers due to extremely similar brands can void even the most detailed consent agreement.

Consent agreements are quick and easy. If the registration of a trademark is urgent, a consent agreement is the way to go. .

Tjip de Jong

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