Trademark Coexistence Agreement

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    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. The USPTO considers many relevant factors and evidence before concluding whether a trademark should be registered. In situations where the USPTO believes that the trademark is likely to cause confusion between the consumer and a previously registered trademark, the USPTO will have significant weight for a consent agreement between the applicant and the trademark owner. However, the consent agreement should be sufficiently detailed and contain specific reasons and evidence why the parties concerned do not expect consumers to be confused and to take explicit measures to minimise them. “Naked” consent agreements (which contain only permission to register the trademark and a brief statement that confusion is unlikely) are far less convincing to the USPTO. Ultimately, even the most detailed consent agreement can be voided by a high risk of confusion due to extremely similar trademarks. Coexistence agreements can be useful in resolving current or future uncertainties and difficulties between parties regarding the use of similar marks.

    However, such agreements are not recommended when the owner of the trademark: The case of Apple Corps, the label created by the Beatles, and Apple Computer2 illustrates the difficulties (see WIPO magazine 3/2006). The two companies entered into a brand coexistence agreement in 1991. This provided that Apple Computer had the exclusive right to use its Apple trademarks “in or in combination with electronic products, computer software, computer and data transmission services”; while Apple Corps would have the exclusive right to use its own Apple trademarks “on or in connection with current or future creative works, the principal content of which was music and/or musical performances, regardless of the means used to record or communicate them, whether material or immaterial.” So while both companies had confusing brand marks, they identified one area in which they stood out — the fields of use — and that became the basis of their coexistence agreement. The agreement allowed both companies to continue doing business and build on their reputations, without infringing on the rights of the other. A company that intends to expand into new regions, sectors, lines or brand designs should insist on a coexistence agreement and not a consent agreement. . . .