Do you need help getting started? Download our brand co-existence agreement, for example. A co-existence agreement is concluded in a scenario in which two trademark owners have developed rights to identical or similar trademarks. This type of agreement will aim to resolve a possible trademark dispute. Often, goods or services are offered in different geographic areas, are not interconnected or use different commercial channels. The agreement should detail the rights of the parties involved and avoid confusion in the market. Any party about to conclude a co-existence agreement must balance the pros and cons of the agreement. A brand co-existence agreement is a legal contract linking the signatories under certain conditions. It will limit the use (and often where) of a brand and influence how goods or services can be marketed. Here`s what you need to keep in mind when negotiating with another company that uses a similar brand.
The USPTO reviews many relevant factors and evidence before reaching a conclusion regarding the approval of a trademark. In cases where the USPTO believes that the requested mark could lead to confusion between the consumer and a previously registered trademark, the USPTO will place significant weight on an agreement between the applicant and the registered trademark holder. However, the approval agreement should be sufficiently detailed, with concrete reasons and evidence indicating that the parties involved do not foresee consumer confusion and the explicit steps they will take to further minimize them. The “naked” approval agreements (which contain only permission to register the trademark and a brief statement that confusion is unlikely) are much less persuasive to the USPTO. In the end, a high probability of consumer confusion due to extremely similar brands may even null and void the most detailed consent agreement. Before approval, the parties should consider any side effects. For example, the agreement is likely to appear in all subsequent disputes with the disputed or related trademarks. Registrants should understand that third parties undoubtedly expect the same treatment if they draw a line in the sand that approves the mark of a game. It is therefore essential to obtain an appropriate language conditioning authorization for the goods/services/brands in question. Similarly, a filer`s ability to prevent third parties from using similar marks is inevitably compromised when the registrant needs the consent of another party to obtain registration. Despite these constraints, in some cases it is still predation to continue the registration and use of the disputed mark, while in other cases it may be preferable for the applicant to pursue another trademark. Co-existence agreements can be effective instruments for resolving trademark disputes in appropriate circumstances.
However, the parties should take the time to reflect, in consultation with the Trademark Advisor, on the pros and cons of such agreements before committing to participate in such an agreement. In other words, a trademark holder who can negotiate from a position of strength should carefully consider whether an approval agreement is logically reasonable or whether such an agreement exposes the mark to unnecessary risks. Please contact our office to determine if a co-existence agreement is the right choice for your business. Assessing the pros and cons of a co-existence agreement can certainly be a difficult task and we would be happy to offer you courtesy advice. A party that is clearly a disciple brand user (not the first party to use a trademark) may have no choice but to seek an acceptance agreement from the older user of the mark (the first party that usually uses and registers a trademark in the trade). However, if the bargaining power between the parties is more regular, a co-existence agreement detailing the issues important to both parties is probably in the interest of all.