A concurrent use agreement is a contract between two businesses that use the same or similar trademarks, setting the terms under which each may use its mark so that consumers are not confused. Most divide the country into separate geographic territories, and many also limit products, sales channels, or how each mark is presented. In USPTO practice, such an agreement often supports a concurrent use registration under Section 2(d) of the Lanham Act, which gives each party a federal registration restricted to its own territory.
The term is often used loosely alongside “consent agreement” and “coexistence agreement.” The concepts overlap, but the differences matter when you are trying to get a mark registered or settle a dispute. This guide explains how concurrent use works, what the law requires, and what a well-drafted agreement should include.
Concurrent Use, Consent, and Coexistence Agreements
Businesses and lawyers use these labels interchangeably, but they generally serve different purposes:
- Concurrent use agreement: Allocates rights between parties, most often by geographic territory, and supports concurrent registrations that are restricted by territory or by other conditions on use.
- Consent agreement: One party consents to the other’s registration, typically to overcome a likelihood of confusion refusal in an ordinary application for a nationwide registration.
- Coexistence agreement: A broader contract in which both parties agree to operate side by side under similar marks, often as part of settling an opposition, cancellation, or infringement dispute.
A single document can do all three jobs. What matters is that the agreement fits the procedural setting in which it will be used. For a broader look at the second two categories, see our article on how coexistence agreements work.
The Legal Basis: Section 2(d) of the Lanham Act
Section 2(d), 15 U.S.C. § 1052(d), bars registration of a mark likely to cause confusion with a previously registered or used mark. It also contains a proviso for concurrent registrations. If the USPTO determines that confusion is not likely to result from continued use by more than one party under conditions and limitations on the mode or place of use, it may issue concurrent registrations to parties who became entitled to use their marks through concurrent lawful use in commerce before the earliest filing date of the applications or registrations involved.
Two points in the statute are frequently misunderstood:
- The key date is the earliest filing date, not a fixed number of years. The concurrent use applicant generally must show lawful use in commerce that began before the earliest filing date of the conflicting application or registration.
- Consent can remove the timing requirement. Use before that filing date is not required when the owner of the conflicting application or registration consents to the concurrent registration. Concurrent registrations can also issue when a court has finally determined that more than one party is entitled to use the same or similar marks.
In re Beatrice Foods and the Good-Faith Requirement
The leading case on concurrent use registration is In re Beatrice Foods Co., 429 F.2d 466 (C.C.P.A. 1970). The court identified two conditions for issuing concurrent registrations. First, the parties must be entitled to concurrently use the mark in commerce, a jurisdictional requirement satisfied by more than a token use. Second, and most importantly, there must be no likelihood of confusion resulting from continued concurrent use. The court also recognized that agreements between parties who are in a position to assess the marketplace deserve great weight.
Good faith sits at the heart of concurrent rights. According to the Trademark Trial and Appeal Board Manual of Procedure (TBMP), concurrent rights generally arise when a party, in good faith and without knowledge of another party’s prior use in a different area, adopts and uses a similar mark in its own geographic area. Mere knowledge that a prior user exists does not, in itself, establish bad faith. Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512 (C.C.P.A. 1980).
Federal registration changes the calculation. If the senior party owns an incontestable registration, a concurrent use applicant’s registration will generally be limited to the area where it used the mark before it had actual or constructive notice of the registrant’s rights, unless the parties agree otherwise.
How a TTAB Concurrent Use Proceeding Works
Concurrent use registration is sought through a specific process governed by 37 C.F.R. § 2.99 and Chapter 1100 of the TBMP:
- The application: The applicant requests a concurrent use registration, identifying the area and conditions of its own use and the other concurrent users it knows about.
- Examination and publication: The application is examined under normal procedures and, if the applicant appears entitled to registration subject to concurrent use, published for opposition.
- Institution: The TTAB then institutes a concurrent use proceeding, with the applicant as plaintiff and the other users as defendants, who generally have 40 days to answer.
- Decision or settlement: The applicant bears the burden of proving entitlement. The Board fixes the territorial and other limits of each registration.
Not every application qualifies. Supplemental Register applications and applications based solely on Section 44 or Section 66(a) (Madrid Protocol) are not subject to concurrent use proceedings, and an intent-to-use applicant must file an acceptable allegation of use first.
When a case is decided, the Board’s general rule is that the prior user is entitled to a registration covering the United States except for the later user’s area of actual use and, potentially, its area of natural expansion. That rule is not absolute and depends on the facts, including how long each party waited to expand or register.
Why Most Proceedings End in an Agreement
According to the TBMP, most concurrent use proceedings are not litigated to a final decision. They settle through an agreement providing for the concurrent registrations. The Board will not simply rubber-stamp a deal, though. It enters judgment based on a settlement only if the terms persuade it that confusion is not likely, and it generally gives the parties time to fix a deficient agreement.
The TBMP describes provisions that help an agreement succeed. A strong concurrent use agreement typically includes:
- Mutually exclusive territories, defined precisely by state, or by county when a territory is smaller than a state
- Promises not to use or advertise the mark in the other party’s territory
- A buffer zone between territories where appropriate
- Differences in the marks, goods, services, or trade channels that reduce confusion
- Distinct packaging, labeling, signage, or accompanying marks
- The history of coexistence, including how long the parties have used their marks and whether any actual confusion has occurred
- Internet and social media measures, such as non-affiliation statements, territory statements on websites, and visually distinct online presences
- A commitment to cooperate in preventing and correcting any actual confusion
How Examining Attorneys Treat Consent Agreements
Outside a formal concurrent use proceeding, parties often use a consent agreement to overcome a likelihood of confusion refusal. The Federal Circuit has held that such agreements deserve great weight and that the USPTO should not substitute its judgment for that of the parties without good reason. In re Four Seasons Hotels Ltd., 987 F.2d 1565 (Fed. Cir. 1993).
Under TMEP § 1207.01(d)(viii), the type of agreement matters. A “naked” consent that simply grants permission or states that confusion is unlikely is usually given little weight. A “clothed” consent that explains why the parties believe confusion is unlikely and what steps they will take to avoid it is far more persuasive. If you are facing a refusal of this kind, our article on trademark rejections for likelihood of confusion explains your broader options.
Risks to Weigh Before Signing
A concurrent use or coexistence agreement can be the fastest and most economical way to secure registration and avoid litigation, but it can also shape your business for decades. Before signing, consider:
- Growth: A territorial limit that works for a regional business today can block national expansion, franchising, or a sale of the company later.
- E-commerce: A website, marketplace listing, or social media account reaches every territory. The agreement should say how online sales, advertising, and domain names will be handled.
- Leverage: The party with the earlier registration often has the stronger bargaining position and may seek payment, product restrictions, or limits on how your mark appears.
- Successors and enforcement: The agreement should address assignments, what happens if either business is sold, and how the parties will handle third-party infringers and disputes between themselves.
Negotiate Concurrent Use Rights With a Long-Term View
Concurrent use agreements let two legitimate businesses keep their brands and obtain federal protection without a costly fight. The best agreements are specific, grounded in how each party actually does business, and written with future growth and online sales in mind.
If you have received a likelihood of confusion refusal, discovered another business using your name in a different region, or been asked to sign a consent or coexistence agreement, the trademark registration attorneys at Revision Legal can evaluate your rights and negotiate terms that protect your brand. Contact us through the form on this page or call (855) 473-8474.
