A trademark coexistence agreement should include the following elements: trademarks register their trademarks in order to prevent other companies from using them and to create confusion or competition in the market. However, sometimes two companies use a very similar brand without being aware of it. This can happen if the two companies operate in different geographical areas or offer two totally different and unrelated services. If you have any questions, please contact Jordan Meggison-Decker or your brownWinick intellectual property lawyer or send a message via our contact form. In accordance with the provisions of this Agreement, a Party with an established (and generally registered) trademark takes a series of reciprocal obligations with a Party wishing to establish a new mark allowing both Parties to continue to use their marks. In some cases, the established party may require limited modifications to the categories of goods and/or services for which the most recent party wishes to use its mark in order to avoid inappropriate overlap and the risk of confusion. A trademark agreement agreement is usually a simple contract in which one party agrees to authorize the use and/or registration of a trademark that overlaps by another party. The parties have also established that their trademarks are not confusing to consumers. This type of agreement is often used when a company has received or expects a refusal of registration from the USPTO. A trademark coexistence agreement is a broader agreement that offers even greater protection than a simple consent agreement. Coexistence agreements typically add unique restrictions for sites, industries, and/or marketing methods in which both parties may use their respective trademarks. These specifications apply in addition to the points set out in the consent agreement below. Coexistence agreements are particularly useful for companies wishing to grow and avoid infringement actions and/or future litigation.
Coexistence agreements work in the same way as consent agreements with respect to the weight given to them by the USPTO. The more detailed and restrictive the agreement, the more likely it is that the USPTO will maintain its validity while allowing the simultaneous use of the marks. However, customer confusion can always invalidate an otherwise legitimate agreement, especially in sectors closely related to the public interest, such as.B. in the health sector. In addition to the USPTO`s assessments of coexistence agreements, it is likely that the courts will remove a coexistence agreement that will have negative effects on competition in the market or would be contrary to anti-dominance rules. To submit a coexistence agreement to the USPTO, an applicant (the party seeking trademark registration) must meet one of the following USPTO criteria for “simultaneous use”: a company considering expanding into new regions, sectors, lines, or trademark designs should insist that a coexistence agreement be entered into and not a consent agreement. . . .