Trademark disputes between businesses with similar names or other trademarks are not that uncommon. You can see these issues in the news on a daily basis. Often these disputes end up with some kind of settlement between the parties. A common way they are settled is with a “consent” or “coexistence” agreement. This may in some cases be referred to as a consent and coexistence agreement. In this blog post, I want to discuss what these agreements are, and when they may make sense for trademark owners.
What Is a Consent and Coexistence Agreement?
When two parties have a similar trademark, it usually means that one party (the earlier user or first to file an application with the USPTO) has prior/superior rights. The other party may be an infringer. However, the earlier party may prefer not to litigate. Or it may be unclear, without expensive litigation, which party is actually in the right. As a result, the parties might enter into a consent and/or coexistence agreement. Here is what each part of that name means:
Consent – Let’s say that you file an application for your trademark, but get rejected based on a similar mark that has already been registered. If the other party consents to you registering your trademark (i.e. they tell the Trademark Office in a written agreement that they are OK with registration of your trademark), the Trademark Office may allow your application to move forward. So the consent agreement states that the applicant can use their trademark. It may also allow their application to move forward even though a similar mark is already registered.
Coexistence – While consent allows a party to use and register their trademark, coexistence focuses on how the parties will operate to avoid consumer confusion. While this might be considered a separate type of agreement, it is very common for an agreement to cover both consent and coexistence (hence the title of this post). This agreement covers the steps that each party will take to prevent confusion. For example, if the parties have similar logos, they may agree that they will only use them in certain colors. They may agree not to sell specific types of products sold by the other party. Perhaps they agree to certain geographic restrictions about where they will operate. As you can see, a lot of different things that can go into this.
When Might Parties Enter Into These Agreements?
One of the main reasons parties enter into such agreements is when one has an application that gets rejected based on the other’s registration for a similar trademark. The applicant wants to get their registration, so they seek a consent and coexistence agreement from the registrant. This is common, but can also be a pitfall. I have an entire blog article on why you should not just blindly reach out to the owner of a trademark. There are some situations where this can be a good option though, particularly if you have leverage.
Getting a consent and coexistence agreement can sometimes be a matter of leverage. If you have a valid basis for cancelling a registration blocking the path of your application, that might provide the leverage you need. Just be aware that the other party may not grant an agreement, especially if it does not believe the basis for the cancellation is valid.
Another thing you should be aware of is the fact that the Trademark Office does not have to accept your agreement as a basis for allowing your application to move forward. While they generally will accept them, some such agreements known as “naked” consent agreements are not persuasive to the Trademark Office. It’s a strange name, but essentially a way of saying that the agreement does not do what it is supposed to (help prevent consumer confusion), and was made strictly to get an application approved.
Do You Need a Consent and Coexistence Agreement to Save Your Application?
While the consent and coexistence agreement doesn’t make sense in every case, it does have its uses. But as I said earlier, you do not want to reach out to a trademark owner directly. Instead, you should have an experienced trademark attorney review the matter, see what kind of leverage you may have, and draft such an agreement on your behalf. If you would like to speak with me regarding your trademark matter, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
