Bluemount Bulldogs
Nova Scotia, Canada

Coexistence Agreement

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. Sometimes coexistence agreements take the form of a proactive consent agreement. In this regard, one party agrees to have the other register its similar mark with strict restrictions. For example, a company called XBoard might sell surfboards in Florida and not particularly care about a small Vermont company that makes a children`s board game called “XBoard.” They can be very happy to allow the Vermont company to register the “XBoard” brand as long as they stick to toys and stay out of the sporting goods market. A consent agreement between the two trademarks both avoids possible litigation and assists in the registration process. However, you should not enter into a coexistence agreement in the following situations: a trademark coexistence agreement is an agreement between two parties to use a similar trademark 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] Problems start when this distinguishing function no longer works, because the companies for which the marks were originally used begin to overlap. Thus, brands that happily coexist can suddenly come into conflict. This is especially frustrating when both companies use their identical brands in good faith – that is, if both have a track record in the actual use of their respective brands, but start to infiltrate the other`s territories due to business expansion…