It is a contract between two parties that governs the parties’ use of certain trademarks. These agreements are often referred to by a number of names, and are sometimes called co-existence or consent agreements.
The primary purpose for entering a concurrent use agreement is to permit a mark to achieve registration. For example, lets assume Company A has applied to register its ABCD trademark in connection with its beer. But, Company B already has a registered ABCD mark in connection with its line of specialty whiskey. As a result of Company B’s registered mark, the examining attorney finds there is a likelihood of confusion between the two marks and refuses to register Company A’s mark.
If the parties can reach an agreement, Company A may submit evidence of a concurrent use agreement between the parties to the examining attorney. At its heart, the agreement means Company A and Company B believe there will be no consumer confusion between the marks. These agreements are usually given great deference by the examining attorney.
Terms and Conditions of a Concurrent Use Agreement
Company B holds quite a bit of leverage in this situation as they are not required to agreement to concurrent use agreement at all. As a result, Company B may ask Company A to limit its use of the mark in whole, or only in connection with specific products, or only displayed in a certain manner. Company B may also demand monetary payment.
Concurrent use agreements can be an effective manner to resolve trademark disputes when there is little risk of customer confusion or a negative impact on either side’s intellectual property. The problem is that the cards are almost all in one party’s hands.
If you are facing an office action based on a likelihood of confusion with a registered mark and would like to explore your options for obtaining a concurrent use agreement, contact Revision Legal today by completing the forms on this page or calling 855-473-8474.
The Lanham Act expressly contemplates concurrent use registration. Section 2(d), 15 U.S.C. § 1052(d), provides that a mark may be registered notwithstanding a likelihood of confusion with an existing mark, where the applicant has been in concurrent lawful use of the mark in commerce for the five years before the application date. More commonly, concurrent use registration is achieved through a concurrent use agreement—a consent or coexistence agreement that resolves the examining attorney’s likelihood-of-confusion concerns.
The TTAB also has authority to issue concurrent use registrations through formal concurrent use proceedings. In those proceedings, the Board determines the geographic scope of each party’s registration rights. However, the overwhelming majority of concurrent use situations are resolved informally through negotiated agreements rather than through formal proceedings before the TTAB.
A well-drafted concurrent use agreement addresses several key dimensions of the parties’ respective trademark rights:
The USPTO examining attorney is not required to accept a concurrent use agreement—the TMEP is explicit on this point. However, consent agreements “are given great probative weight” and will generally be followed unless the marks are so similar and the goods or services so closely related that confusion would be unavoidable in the marketplace despite the agreement. TMEP § 1207.01(d)(viii).
A bare “naked” consent—simply stating that the two parties consent to each other’s registration—carries less weight than a detailed agreement that explains why the parties believe confusion is unlikely. Examining attorneys look for provisions that demonstrate the parties have actually thought through the consumer confusion issue: geographic restrictions, product category limitations, trade dress distinctions, and the like. The more detailed and commercially rational the agreement, the more persuasive it will be.
Concurrent use agreements are also the most common mechanism for settling trademark opposition and cancellation proceedings before the TTAB. When an opposer or petitioner challenges a mark, both parties may find that the cost and uncertainty of full TTAB litigation outweigh the benefits of fighting to the end. A negotiated concurrent use agreement—filed with the TTAB as part of a consent to judgment or voluntary dismissal with prejudice—can resolve the dispute, preserve both parties’ marks, and set clear boundaries for ongoing commercial use.
In this context, the agreement must be reviewed carefully to ensure it does not inadvertently surrender rights the party did not intend to relinquish. Provisions limiting geographic use, for example, can create problems for businesses that expand into new markets years after the agreement is signed. Good agreements anticipate change and include mechanisms for addressing disputes that may arise after the parties’ commercial circumstances evolve.
Concurrent use agreements carry risks that must be weighed carefully before signing. The party consenting to restrictions on its mark may find those restrictions increasingly burdensome as the business grows. A geographic restriction that seems manageable for a small regional business can become a serious obstacle for a company that later expands nationally or launches an e-commerce presence accessible from any location.
Similarly, the party granting the consent may later discover that the other party’s use creates more confusion in the marketplace than anticipated—but by that point, the agreement may prevent the granting party from seeking cancellation on likelihood-of-confusion grounds. Careful drafting of dispute resolution and termination provisions can provide some protection, but once a concurrent use agreement is submitted to the USPTO and relied upon for registration, unwinding it is difficult.
Before entering any concurrent use, consent, or coexistence agreement, businesses should consult with an experienced trademark attorney. Revision Legal’s trademark attorneys regularly negotiate and draft these agreements on behalf of both applicants and mark holders. Contact us at 855-473-8474 or through the contact form on this page.
Geographic restrictions in concurrent use agreements create particular complications in the internet age. A provision limiting Party A to the eastern United States and Party B to the western United States was straightforward to administer in an era of brick-and-mortar retail. In an e-commerce environment, geographic restrictions are harder to enforce—a website accessible nationwide does not naturally stay within a territorial boundary.
Well-drafted concurrent use agreements for businesses with online components should address internet use explicitly. Options include restricting geographic targeting in digital advertising, requiring geolocation-based access controls, establishing which party controls the primary domain associated with the mark, and addressing how the parties will handle social media accounts, online marketplaces, and other digital channels. These provisions require forward-thinking drafting that anticipates how each party’s business may evolve. An agreement that does not address digital commerce may generate disputes within a few years as both parties expand their online presence into each other’s contractual territories. Revision Legal’s attorneys draft concurrent use agreements with these considerations built in from the start.
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