Trademark Coexistence Agreement Draft

Okt 12, 2021 von

A company that intends to expand into new regions, sectors, lines or brand designs should insist on a coexistence agreement and not an approval agreement. This allows the company to address the potential risks it expects to emerge in the future and pave the way for more fluid growth. A consent agreement only allows current use without addressing the inevitable development of trademarks. To submit a coexistence agreement to the USPTO, an applicant (the party seeking a trademark) must meet one of the following USPTO criteria for „simultaneous use“: a simple consent agreement is usually cheaper, as it requires less time and resources for creation. However, you get what you pay for and a coexistence agreement certainly offers more protection. 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. A brand coexistence agreement is an agreement between two parties for a similar brand to be used for marketing purposes, without interfering with each other in each other`s businesses. Agreements of this type are often concluded, as the parties only request the regional use of their trademarks and, therefore, the use of a trademark by other companies does not harm their activities. Coexistence agreements can include designs, copyrights, and even patents. [Citation required] A party that is clearly a user of the junior mark (not the first party to use a trademark) may have no choice but to seek a consent agreement from the former user of the mark (the first party to use a trademark in commerce and register it normally). However, if bargaining power between the parties is more regular, a coexistence agreement detailing issues important to both parties is probably in everyone`s best interest. Bargaining power with respect to the use of trademarks may be created by older user status, a famous or well-known mark, or the ownership of additional marks the limitation of which may be of interest to the other party. The conclusion of a trademark coexistence agreement always carries a certain risk. Perhaps in the future you would like to expand into new territories and markets and see yourself limited by an agreement you signed many years ago. A coexistence agreement may also restrict your right to the transmission of your trademark or impair your ability to enforce it.

Finally, if the other company produces low-quality products or offers insufficient service, your reputation could suffer. A formal agreement on the coexistence of trademarks recognizes the rights of both parties to use the marks contained in the agreement for commercial purposes. The agreement may include a breakdown of the regions in which the parties to the agreement are allowed to use the mark, the methods for the use of the mark or the categories of goods and services for which the mark may be used (in conjunction with the international trademark registration system). [2] Talk to a lawyer and make sure you understand all the implications of entering into a coexistence agreement before you sign…

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