Two companies find out they have similar trademarks. They may consider a trademark coexistence agreement instead of spending years fighting over registration or use. The deal sets out limits on how each company can use its mark, but lowers the risk that customers think the companies are connected.
This can help if a clearance search shows a conflict, the USPTO issues a likelihood-of-confusion refusal, or the owners are negotiating a dispute. Signing an agreement, however, does not ensure USPTO approval or resolve all issues relating to trademark rights.
A coexistence agreement may be broader and involve the parties’ wider commercial relationship, while a consent agreement may be more directly related to registration and confusion issues. Labels overlap; the real promises are what matter most.
Today’s permissions and tomorrow’s restrictions are considerations when asking for or giving consent. This guide is general information about U.S. trademark law and is not legal advice about a particular agreement.
What is a Trademark Coexistence Agreement?
A trademark coexistence agreement is a contract where owners of possibly conflicting marks lay out the terms under which they will use their respective brands. It can create offerings, territories, channels, customers, branding, registration rights, and steps to avoid confusion. The arrangement could allow both companies to use similar marks within agreed limits while retaining their own rights.
The mere fact that they coexist does not mean they jointly own the trademark.
What is a Trademark Consent Agreement?
Trademark Consent Agreement: A record of consent to the use and/or registration of a mark by another entity. In USPTO examination, the term is generally used to refer to consent to registration, typically from the owner of a registration cited against an application under Section 2(d).
An applicant may submit a consent to overcome a likelihood-of-confusion refusal. The USPTO considers the substance of it, together with the other relevant evidence; the parties can’t privately tell the agency to approve an application.” TMEP § 1207.01(d)(viii)
Trademark Coexistence Agreement vs. Consent Agreement
| Issue | Coexistence Agreement Between | Statement of Consent |
|---|---|---|
| Main objective | Control continuing cohabitation | Permission to use and/or register |
| Scope | Often wide | May be narrower |
| Commercial conditions | Contains often | Sometimes included. |
| USPTO Importance | Can assist with registration analysis | Will frequently address Section 2(d) directly |
| Limitations: | Often in detail | Could be comprehensive or restricted |
| Settlement use. | Commonplace | average |
The labels overlap. A coexistence agreement and trademark consent can accomplish both. Read the operative terms and do not rely on the title.
What is a trademark coexistence agreement and when do businesses use them?
Typical examples are:
- A Trademark Clearance Search will show you a brand that may conflict.
- Another Registration Cited in a Section 2(d) Office Action.
- The owner files a Trademark Opposition or Trademark Cancellation Action.
- Once distinct markets begin to overlap, either geographically or commercially.
- Plans to expand, acquire, or rebrand create a new conflict.
Before you ask for consent, consider the parties’ rights, what’s on offer, and the real dispute.
Can a Coexistence Agreement Overcome a USPTO Refusal for Likelihood of Confusion?
Sometimes, but not always. Consent is relevant to the DuPont analysis of likelihood of confusion. While the current TMEP guidance allows substantial weight to be given to a properly supported, detailed consent agreement, it acknowledges that other factors may still be likely confusion.
Address any other outstanding matters and explain how the agreement satisfies the examining attorney’s concerns. See USPTO Trademark Likelihood of Confusion; Trademark Office Action Response.
What the USPTO wants to see in a Consent Agreement
The TMEP lists considerations such as whether:
- This document is a product of the parties’ consensus.
- Goods or services are moved by different channels of trade.
- The fields of use are limited by the parties.
- If confusion arises, they will prevent confusion and work together.
- There has been real coexistence with no evidence of actual confusion.
Those arrangements may be explained by customer segments, branding differences, and clearly defined offerings. These points are not a mandatory list of clauses. In all cases, no restriction is necessary, and a history free of confusion is not necessary for consent to be of value.
If the document reflects the beliefs of both parties or their mutual commitments, both parties or authorised representatives should sign. The TMEP guidance also recognises that there are instances where the registrant’s signature alone on a consent may have evidentiary value. TMEP: Agreements for Consent
What Is a “Naked Consent” Contract?
Naked consent is something like “We consent to registration” with little explanation or meaningful supporting arrangements. It is generally less convincing than a document that explains why confusion is not likely and how the parties will prevent it.
Thin consent is not worthless by default. Long agreements can also fail if the restrictions do not resolve the conflict.
What to Include in a Trademark Coexistence Agreement?
These are drafting considerations and not universal USPTO requirements.
Identification of Parties and Marks
Identify legal owners, trademarks, application/registration numbers, and offers. Clarify the coverage of affiliates, licensees, and future brand variations.
Control of Goods and Services
Define what offerings are permitted and what are excluded. “Technology” or “lifestyle products” could have a lot of uncertainty. Determine if proposed application amendments are allowable and commercially correct; a private contract does not automatically change USPTO records.
Location Restrictions
Identify regions or local markets, states, territories. Address shipping, remote services, online customers, and advertising spillover. A boundary on a map tells us nothing about what happens when both websites are selling to nationwide buyers.
Distribution Channels
Identify relevant channels: online retail, wholesale, brick-and-mortar stores, B2B sales, marketplaces. Don’t promise a separation that normal operations can’t deliver.
Customer Segment
Industries, buyer roles, and consumer groups are identified. Buying conditions may be explained by price, but expensive products do not eliminate confusion.
Branding & Presentation
Think logos, packaging, colours, house marks, slogans and rules of presentation. Consider spoken recommendations and plain-text listings where logos go away.
Restrictions on advertising and marketing
Where relevant, discuss paid search, keyword bidding, social targeting, promotional channels and comparative advertising. Don’t compete online; it’s vague. Define acceptable behaviour.
Domain Names & Social Media
Covered domains, handles, usernames, and brand pages. And who can register future variants? How will misdirected messages be rerouted? Do either party need to transfer or cease using certain accounts?
Rights to Future Expansion
Design new products, regions, industries, and delivery models. State whether notice, consultation, consent or renegotiation is required for expansion. Expansion does not necessarily imply notice.
How to Avoid Getting All Mixed Up
Establish contacts, reporting procedures, response times, and corrective action. Examples include changing presentation where agreed or redirecting questions. Note real confusion reports. Don’t promise to ignore inconvenient evidence.
Cooperation in registration and filing
Identify the applications granted consent for, wording of permitted goods/services, non-opposition undertakings, and cooperation on Office Action responses. If the USPTO rejects the consent or requires a different limitation, what then?
Remember the examination usually compares the goods and services identified in the application and registration. Don’t assume narrower current marketing controls analysis. Explain how contractual restrictions relate to that record. TMEP §1207.01(a)(iii)
Dispute Resolution and Enforcement
Notice of Breach, Opportunities to Cure, Negotiation, Mediation, Arbitration or Litigation, Governing Law and Available Remedies. Separate enforcement against outsiders from disputes between the parties.
Review period, termination, assignment and ongoing obligations.
Example of Trademark Coexistence Agreement
Sample only – not a legal template. BluePeak Software sells inventory software to industrial suppliers. BluePeak Fitness runs gyms and provides fitness coaching.
Their suggested arrangement could provide that:
- Use of BLUEPEAK software is restricted to the industrial inventory domain specified.
- BLUEPEAK fitness means particular gym and coaching services.
- Every company has its own branding and its own specific domains.
- Advertising practices are not intended to imply affiliation with or targeting of the other’s defined core audience.
- An expansion into fitness software is planned, which will trigger a review.
- Parties report confusion and work to correct the confusion.
- Any consent to register identifies the specific application and offerings.
Software and fitness aren’t automatically unrelated. Gyms might sell apps, and software might serve fitness businesses. The arrangement must be supported by the real offerings, restrictions and evidence.
Sample format for a trademark coexistence agreement
A sample trademark coexistence agreement can serve as a structure for discussions, but it is not a final contract.
- Parties
- Background
- Glossary of terms
- marks covered
- Goods/services
- Extent
- Trade routes
- Groups of customers
- Restrictions on branding
- Consent to registration
- Measures for preventing confusion
- Real-confusion procedure
- Future growth
- Enforcement
- Settling Disputes
- Term and Termination 5.1
- Law applicable
- Signatures
A generic template will not necessarily address the actual risk between two particular marks. Restrictions on test v current operations, growth plans, and possible sale.
Can a Coexistence Agreement End a Trademark Opposition?
Yeah, maybe. Parties can enter into agreements on use restrictions, registration consent, or application amendments and then file the documents needed to resolve the Trademark Opposition.
Signing the contract does not itself dismiss the case or toll deadlines. The parties should promptly notify the TTAB and properly handle withdrawal, amendments, dismissals, and any counterclaims. Proposed amendments are subject to applicable rules. TBMP § 605.03
Can a Coexistence Agreement Resolve a Trademark Cancellation Action?
Yes, perhaps. A settlement may involve coexistence, consent, limitations, registration amendments, withdrawal, or surrender. Which registrations and claims remain affected? What procedural action consummates the settlement?
Consequences of the judgment of surrender in a pending case, without the requisite consent of the adverse party. Please review the relevant TTAB filings before taking any action. See our Trademark Cancellation guide for the big picture. TBMP, Ch 600
Concurrent Use Registrations and Coexistence Agreements
A private coexistence agreement is not a federal registration of concurrent use. Concurrent use is a separate registration process with rights limited by geography and particular statutory and procedural requirements, usually resolved through a TTAB proceeding or a qualifying court determination.
A private geographical arrangement does not convert either registration into a concurrent use registration. TMEP: Concurrent Use vs. Consent
Can Two Identical Trademarks Coexist?
Yes, but only in some circumstances. Differences in goods/services, buyers, trade channels, geography, and overall commercial impression may matter. Similarity alone does not establish likely confusion, nor do different class numbers alone preclude it.
An agreement may govern the relationship between the parties to it. It also does not include consent from other owners and does not remove unrelated trademark risks.
What Are the Risks of a Trademark Co-Existence Agreement?
Restricting Future Expansion
A consent given today could block the most valuable product launch of tomorrow. Identify areas of growth that are excluded before accepting permanent restrictions.
Vague language
Terms like “different markets” are controversial unless the agreement defines what differentiates those markets.
Shopping Online
Search engines, marketplaces, app stores, and countrywide delivery can shatter assumptions of geographic or customer separation.
Acquisitions & Successors
Affiliate assignment and ownership change and successor obligations. The buyer should be aware of the restrictions tied to the brand.
New Products/Services
New offerings might straddle the defined categories. Create a workable approval or renegotiation process.
Current Confusion
A clean history is no guarantee of future separation. Determine who investigates reports. What corrective action is available?
USPTO Still Objecting
The agreement may not solve the refusal. Think of that before you make irrevocable concessions.
4. Problems of Enforcement
Enforcement may be limited by non-challenge promises, releases and consent language. The owner giving consent should look at those concessions as closely as the applicant looks at its permitted use.
Can a Trademark Coexistence Agreement be amended later on?
Amendments may be made by mutual agreement, subject to contract and applicable law. Clearly show changes. Document changes, including impact on prior consent and ongoing obligations.
Don’t think a business pivot or casual email trumps a signed restriction. “Build in processes for expanding and amending the original arrangement.
Is a Trademark Coexistence Agreement Legally Binding?
It can create binding contractual obligations depending on validity, wording, governing law, and the circumstances. Enforceability is a question specific to a contract; the USPTO’s consideration of consent is specific to registration.
TTAB guidance on settlement breaches points parties to civil remedies instead of using the Board as a general contract-enforcement forum. TBMP 605.03(d)
Do You Need a Trademark Attorney for a Coexistence Agreement?
Sometimes you don’t need to get a lawyer to negotiate a deal. It may be useful, as the terms could affect registration, enforcement, expansion, licensing, acquisition, and litigation positions.
If asked to sign, get advice about your own concessions. Also think about what will be made public: Documents filed in an application generally become part of its public record. Careful coordination of a broader confidential settlement and a separate consent document is necessary. USPTO: Trademark records (public)
Trademark Coexistence Agreements: Common Mistakes
- Generic template: Adapt it to the real scores and business models.
- If accepted by USPTO: deal with the entire likelihood-of-confusion record.
- Use vague goods/services restrictions: List permitted and restricted goods/services.
- No future expansion to be considered: Test realistic growth plans before you sign.
- Ignore the online sales and advertising. Think about how the customers actually find out about both brands.
- No more actual-confusion procedures. Agree on practical corrective steps.
- Don’t forget about domains and social media. Discuss account ownership and future variants.
- Excluding purchases and successors: Identify how the agreement runs with the business.
- Mistaking coexistence for joint ownership: Clarify the individual rights of each party.
- Confusing coexistence with registration of concurrent use: Distinguish the contract from the registration procedure.
Trademark Coexistence Agreements – Frequently Asked Questions
What is a trademark coexistence agreement?
It’s a contract defining the conditions under which competing brands might coexist. Terms could include offerings, territory, customers, branding, registration, and confusion prevention. Its value is in whether those borders actually speak to the actual conflict.
Yes, two similar marks can co-exist.
Yes, depending on the marks, offerings, buyers, and other circumstances. An agreement could help with a potential conflict. However, similarity is not the only problem. Consider the rights of other owners and if the proposed split will work as both businesses grow.
What is a consent letter for trademark?
It captures consent to the use and/or registration by another party. In a USPTO examination, consent is usually related to a cited registration and Section 2(d) issues. The persuasiveness of an agreement is not determined by the signature but by its reasoning, constraints, and the record underlying it.
What’s the difference between a consent agreement and a coexistence agreement?
Consent agreements may relate to use or registration permission; coexistence agreements may regulate the wider commercial relationship. Labels overlap. A single document can do both, so look at the actual commitments, restrictions, releases and registration provisions in the document rather than its title.
Would a coexistence agreement be recognised by the USPTO?
It may consider it where it is relevant, but acceptance is not assured. Well-supported consent should have significant weight. The examining attorney still considers other relevant evidence, and a settlement that does not adequately address the likelihood of confusion may not be sufficient to overcome the refusal.
Can a Consent Agreement Override a Section 2(d) Refusal?
Sometimes. It may assist in a finding that confusion is unlikely, particularly where the parties articulate meaningful separation and practical safeguards. Consent does not cure an application. The applicant must cure the actual refusal and any other outstanding issues.
What is a coexistence agreement for trademarks?
Think about the parties, the trademarks covered, the goods and services, the territories, the channels of trade, the customers, the branding, the cooperation on registration, the procedures in case of confusion, the expansion, the enforcement, the duration, and the successors. Not every clause works for every deal. The objective is a workable arrangement specific to the conflict, not a maximum-length document.
Are trademark coexistence agreements enforceable?
It may impose binding obligations if valid under applicable law. Enforceability depends on the contract and the circumstances. The mere consideration of a consent document by the USPTO does not mean that every private contractual term is enforceable or that the agency is a party to the agreement.
Can a coexistence agreement solve a trademark opposition?
Perhaps. Parties may agree on the permitted use, registration, amendments, and withdrawal. They will still have to file the proper TTAB filings and address any counterclaims that may arise. Any discussions or signatures concerning settlement shall not be deemed an extension of any deadline or a dismissal of a proceeding.
Can it resolve a trademark cancellation proceeding?
Perhaps. A settlement may preserve a registration, limit it, or provide for surrender or withdrawal, depending on the agreement. Consider the procedural implications and terms of judgment before filing. Signing a contract is not the last step needed to get the TTAB to do anything.
Yes, you can use a trademark coexistence agreement template.
While a template can identify topics for discussion, it cannot determine the appropriate limitations or the strength of the parties’ rights. General wording can miss future products, online advertising, successors, or even real confusion. This is a filing-ready tool, not an organisational legal solution.
A coexistence agreement does not mean that both parties own the trademark.
No, not on its own. In general, coexistence allows different owners to work within certain parameters. It is different from ownership transfers, joint ownership and licensing. The rights provisions should be read carefully, as a particular contract may have additional arrangements.
A coexistence agreement is different from concurrent use registration.
No. Concurrent use registration is a separate federal registration process with limited rights, typically geographic limitations. Coexistence is a private agreement. A geographic restriction is not a substitute for the procedural requirements of a concurrent use registration or amendment, or a concurrent use registration or amendment.
Conclusion
A trademark coexistence agreement can help businesses avoid or resolve a conflict while retaining defined opportunities to use their brands. A related consent agreement may also be of help in overcoming a USPTO likelihood-of-confusion refusal, particularly where the parties can present credible reasons and practical safeguards.
The document should explain how the businesses will be kept separate, how confusion will be dealt with, and what happens when products, advertising, ownership, or territories change. USPTO approval is not guaranteed, and the consenting business may lose significant enforcement or expansion options.
Check actual marks and registration records, proposed restrictions, and long-term commercial plans before signing. If there is a pending TTAB case, make the contract consistent with the procedural steps needed to resolve the case.
Need Help With a Trademark Coexistence Agreement?
Call EagleMarkUSA to discuss issues of coexistence, consent, likelihood of confusion, opposition, cancellation, and Office Action materials. You should obtain case-specific contract advice and dispute strategy advice from qualified U.S.-licensed trademark counsel. There are no guarantees.
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