In the trademark application process, the application may be blocked when there is an earlier mark on the register which may be perceived as confusingly similar, a Section 2(d) rejection. This obstacle may arise ex parte from the USPTO Examining Attorney or in the form of an opposition filed by the owner of an earlier mark. In either case, the trademark applicant may overcome this obstacle by presenting the USPTO an executed consent agreement with the owner of the earlier, blocking mark.
A consent agreement, a term sometimes used interchangeably with coexistence agreement, is one of the most common vehicles of settlement in trademark disputes. A consent agreement essentially states that the owner of an earlier trademark right permits the owner of a later right to use that later mark under certain conditions. This post focuses on the use of consent agreements in the context of trademark applications, as opposed to federal trademark litigation, where a coexistence agreement is more suitable. This brief compare-and-contrast table (click to open PDF) will help contextualize the relationship between the two types of agreements:
Consent agreements contain a few common clauses which can be contained in 2 pages, while some coexistence agreements are vast in their coverage and cover multiple details, rules, and exceptions those rules. The common, basic clauses are usually:
- Identification of the applied for mark
- Identification of the registered mark which bars the applied for mark
- Identification of the goods/services applied for which the registration holder deems the mark applied for will not cause confusion
- Other conditions on the registration and use of the applied for mark
- Acknowledgement that compliance with those conditions of use will prevent confusion
- Express intention of the parties to cooperate in the possibility of consumer confusion
- Consent of the registration holder to the use and registration of the applied for mark
- Date and signatures of authorized representatives of the mark holders
Note that “naked” consent agreements have less weight than “clothed” agreements, meaning a lack of detail can lead the USPTO Examining Attorney to determine that the agreement is insufficient to prevent confusion in the marketplace, resulting in a continued rejection of an applied for mark under Section 2(d). However, courts are generally willing to give due consideration to any agreement on the basis that parties in the market are in the best position to judge market realities.