Trademark Consent And Coexistence Agreement

Trademark Consent And Coexistence Agreement

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. 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. The bargaining power for the use of the trademark can be created by the status of an older user, by a known or known brand, or by the ownership of additional trademarks that the other party may be interested in limiting. In addition, it is not likely that trademark holders will easily grant a leveraged approval agreement. It reveals differences in the respective brands, which mainly include differences between the brands themselves (appearance, sound/pronunciation, spelling, importance) and the products/services concerned. A trademark agreement is usually a simple contract by which a party agrees to authorize the use and/or registration of a trademark that overlaps with another party. The parties also state that their brands are not confusing to consumers.

Often, this type of agreement is used when a company has received or is anticipating a refusal to register by the USPTO (U.S. Patent and Trademark Office). A well-developed approval agreement should highlight the differences between the brands involved. While this is not necessary, it would be helpful to explain that the parties would take steps to minimize confusion or eliminate actual confusion should it occur. The agreement may also indicate specific uses that must be respected by each party (for example. B each party would only use a specific mark with specific words and/or a logo only for certain products or services). It is not uncommon for registered trademark owners to feel less than beneficial when granting consent, which is understandable. They have endured all the efforts and costs of registering their trademarks, so why allow a subsequent applicant to register a potentially similar trademark? 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.

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