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Trademark “Consent” and “Concurrent Use” Agreements

When a Trademark Attorney for the USPTO sends out a refusal for an application based on “likelihood of confusion” with another mark it can often mean the end of the application.  While there are many arguments and techniques available to overcome this refusal, the surest way to get your application past the examiner is a Consent Agreement (also called a “Concurrent Use” or “Coexistence” Agreement).  While a Consent Agreement is often listed as one of the six of the most relevant factors for a determination of likelihood of confusion, the USPTO will give such deference to a Consent Agreement that it will very frequently be enough to ensure a mark goes through to registration.

What is a Consent Agreement?

A Consent Agreement takes the form of a contract entered into between the trademark applicant and the owner of the mark that the USPTO Trademark Attorney claimed was confusingly similar to the applicant’s mark (the other owner is called the “prior registrant”).  At its most basic level the Consent Agreement states that the applicant and prior registrant believe that the applicant’s mark will not result in consumer confusion if it is registered with the USPTO.  It is given great deference because the USPTO assumes that the parties to the agreement will be in the best position to determine if consumer confusion will result.

What is included in a Consent Agreement?

While a Consent Agreement is usually persuasive, the USPTO may not consider it a valid Consent Agreement if it is simply an unsupported statement by the parties that there will be no likelihood of confusion.  There must also be at least a minimal amount of information explaining why the parties think there will be no confusion and what steps the parties will take to ensure no confusion will result.

How do you get a Consent Agreement?

This is the tough part.  There is no magic legal trick or procedural problem to this; the applicant need only contact the prior registrant and ask them to enter into a Consent Agreement.  The trick is getting the prior registrant to agree.  Often times the applicant will have to agree to limitations on their use of the mark, such as only using it with a particular product, in a particular area, in a specific font, etc.  Often times the prior registrant will ask for monetary compensation.  If the applicant and the prior registrant can come to agreeable terms then they will execute a Consent Agreement and the applicant can go forward with having the USPTO register their mark.

The Consent Agreement must be submitted within the time given by the USPTO to respond to the refusal, or the application will go abandoned.  This gives a hard deadline for any negotiations that may occur.

The use of two agreements.

Documents filed with the USPTO become public records.  Parties to a Consent Agreement will often choose not to have all the details of their arrangement made known to the USPTO or the public, particularly when money is changing hands.  The way they prevent public disclosure of the terms of their agreement is by executing two agreements: one of which sets out the broad details necessary to be considered a valid Consent Agreement by the USPTO, and the other which includes specific details and seta out additional terms that the parties choose to keep private.

Conclusion.

While a Consent Agreement may be more costly and/or restrictive than other forms of response, it is usually the technique that will provide the highest opportunity for success in overcoming a likelihood of confusion rejection from the USPTO.

Last Modified: April 1st, 2011