What is a Concurrent Use Agreement?

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.

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