Trademark Coexistence Agreement: Key Terms, Issues, Legal Help
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Quick Facts — Trademark Coexistence Agreement Lawyers
- Avg cost to review a Trademark Assignment Agreement: $590.00
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- Avg lawyer rating: 5.0 (3 reviews)
What is a Trademark Coexistence Agreement?
Although having a registered trademark legally secures your trademark so that other parties aren’t allowed to copy or use it, a trademark coexistence agreement enables parties to both use their trademarks, even though they’re similar, in the marketplace.
As expected, this is a delicate situation that requires firm boundaries and clear rules to prevent disputes. A trademark coexistence agreement includes important terms to govern the working relationship between parties, such as the territory in which the trademark can be legally used and prohibited uses.
Read the rest of this article to explore trademark coexistence agreements in greater detail, such as what key terms they include, their common issues, and how a lawyer can help you draft or review them for accuracy and legal protection.
What Key Terms are in a Trademark Coexistence Agreement?
A trademark coexistence agreement usually contains core elements such as the following:
- Trademark definition. The trademarks, such as logos, included in the agreement must be specified clearly, down to their specific styles or colors. This prevents confusion over what can be legally used.
- Usage. The parties’ products/services must be clarified to prevent them from overlapping their activities or having a similar presence in the market.
- Territory. There should be location boundaries in place for where the trademark can be used.
- Online appearance. This section of the agreement explains how the mark can be used online, such as on ecommerce marketplaces.
- Dispute resolution. There should be clear processes outlined for how parties can deal with and resolve any disagreements that arise between them.
- Non-competition provisions. The agreement needs to explain certain boundaries between parties, such as product expansion restrictions.
- Duration. Parties require clarity over how long the agreement will last and if or how it can be renewed after termination.
What are Common Issues with a Trademark Coexistence Agreement?
Before drafting and signing a trademark coexistence agreement with another party, you should consider some of its biggest drawbacks so you avoid potential mistakes.
- Weak agreements can lack legal enforcement. It’s important to draft a solid, clear trademark coexistence agreement. If there is any vagueness or confusion in the agreement, it can result in disputes.
- Not considering the companies’ futures. As companies grow and develop, there could be changes required for the trademark rights. At the very least, the agreement should specify that parties can negotiate the terms.
- Not realizing registration requirements. Even if you privately agree to use a trademark with another party, the trademark registration with the U.S. Patent and Trademark Office (USPTO) could be refused if confusion can occur between trademarks.
What Filing Requirements Do Trademark Coexistence Agreements Have?
You don’t have to submit a trademark coexistence agreement to the USPTO. However, if the USPTO has refused a trademark application, it can help you to submit this agreement to provide clarity for the review team.
It’s important to note that the applicant who needs to register their trademark will have to meet one of the following criteria for “concurrent use”:
- A court has ordered the concurrent use.
- The owner of the trademark’s registration is in agreement of its concurrent use.
- The applicant has used their trademark in commerce before the filing date of the conflicting trademark’s pending application, or the registration of a conflicting trademark.
How Does a Trademark Coexistence Agreement Vary from a Consent Agreement?
A trademark coexistence agreement varies from a consent agreement because it’s more comprehensive.
- A trademark consent agreement is a written document outlining the permission granted by a registered trademark owner to another party. It strives to resolve an USPTO refusal as a result of a conflict with an existing trademark registration.
- A trademark coexistence agreement is more detailed. Two trademark owners use similar marks in specific ways, defined according to factors such as different regions or markets. It aims to minimize trademark conflicts as a result of similar trademarks operating in the market.
How Can a Lawyer Help You with a Trademark Coexistence Agreement?
If you want to draft and use a trademark coexistence agreement, you’ll benefit from hiring a qualified lawyer. Here’s how they can help you through the process.
- A lawyer will assess if the trademarks will create confusion among consumers.
- They’ll conduct comprehensive trademark clearance searches to avoid potential oppositions that can delay trademark approval.
- They’ll define how the parties can use their trademarks legally, such as by putting clear limits on goods and locations.
- They’ll draft clear terms in the trademark coexistence agreement so that it’s legally enforceable.
- They’ll negotiate on your behalf if there are terms in the agreement that are one-sided or don’t represent your interests.
- They’ll clarify remedies should there be a breach, such as dispute-resolution methods that are clearly defined in the agreement.
- They’ll check that all terms in the agreement are aligned with trademark laws and regulations.
- They’ll evaluate your long-term risk, such as if there are market changes, and safeguard your protection, such as with flexible agreement renewal terms.
Where to Find a Lawyer for a Trademark Coexistence Agreement
If you need to hire a lawyer for your trademark coexistence agreement, you can find a reputable one on ContractsCounsel, one of the largest online legal marketplaces where you can connect with vetted lawyers.
Search for lawyers on the platform according to factors such as where they're located, their years of experience, their level of expertise, and client reviews for their previously-completed projects.
You can also request a trademark coexistence agreement review or drafting. To do so, follow these easy steps:
1. Go to the ContractsCounsel marketplace, where you can post your request for free.
2. You’ll receive multiple bids from lawyers directly on the platform who are ready to assist you.
3. Once you receive the lawyer bids, you can review the lawyers' expertise and other credentials.
4. Connect with a lawyer you think is best suited to your requirements and hire them.
ContractsCounsel is not a law firm, and this post should not be considered and does not contain legal advice. To ensure the information and advice in this post are correct, sufficient, and appropriate for your situation, please consult a licensed attorney. Also, using or accessing ContractsCounsel's site does not create an attorney-client relationship between you and ContractsCounsel.
Meet some of our Trademark Coexistence Agreement Lawyers
Diana M.
Diana is a registered patent attorney and licensed to practice law in Florida and in federal courts in Florida and in Texas. For nearly a decade, Diana has been known as the go-to brand builder, business protector, and rights negotiator. Diana works with individual inventors, startups, and small to medium-sized closely held business entities to build, protect, and leverage a robust intellectual property portfolio comprising patents, trademarks, copyrights, trade dress, and trade secrets.
"Diana was professional, thorough and a delight to work with. I will be a repeat customer. --Tom"
Jane C.
Skilled in the details of complex corporate transactions, I have 15 years experience working with entrepreneurs and businesses to plan and grow for the future. Clients trust me because of the practical guided advice I provide. No deal is too small or complex for me to handle.
"Jane was fantastic. She caught real gaps and fixed everything quickly and accurately. Highly recommend!"
December 4, 2023
Tayane O.
Tayane M. Oliveira is a founding partner at Vannucci Oliveira. With a concentration in family law, Tayane is renowned for her commitment to providing compassionate yet powerful representation to her clients. Her experience as an associate attorney at Brodzki Jacobs & Brook, coupled with her unwavering dedication to her clients' welfare, prepared her for her current role at Vannucci Oliveira. Tayane's academic achievements are a testament to her rigorous intellectual curiosity and dedication to her profession. She graduated with a Bachelor of Arts degree in Criminal Justice, supplemented by a minor in Psychology, from Florida Atlantic University in 2013. The culmination of her academic pursuit came in 2017, when she earned her Juris Doctor degree, cum laude, from the esteemed Nova Southeastern University's Shepard Broad College of Law. Before co-founding Vannucci Oliveira, Tayane honed her skills in the heat of the courtroom, representing clients in an array of general civil litigation matters. This diversified exposure instilled in her an ability to tackle complex legal challenges, a skill she employs to benefit her clients in family law. Originally from Brazil, Tayane brings an international perspective to her practice. When not delving into legal briefs or advocating for her clients, she indulges in travelling, reading, spoiling her puppies, and exercising, activities that not only rejuvenate her but also provide her with a broader perspective on the world and her practice. *Supreme Court Certified Portuguese Speaking Mediator
December 4, 2023
McCoy S.
P. McCoy Smith is the Founding Attorney at Lex Pan Law LLC, a full-service technology and intellectual property law firm based in Portland, Oregon, U.S.A and Opsequio LLC, an open source compliance consultancy. Prior to his current position, he spent 20 years in the legal department of a Fortune 50 multinational technology company as a business unit intellectual property specialist; among his duties was setting up the free & open source legal function and policies for that company. He preceded his in-house experience with 8 years in private practice in a large New York City-based boutique intellectual property law firm, working simultaneously as a U.S. patent litigator and U.S. patent prosecutor. He was also a patent examiner at the U.S. Patent & Trademark Office prior to attending law school. He is licensed to practice law in Oregon, California & New York and to prosecute patent applications in the U.S. Patent & Trademark Office; he is also a registered Trademark and Patent Agent with the Canadian Intellectual Property Office. He has degrees from Colorado State University (Bachelor of Science, Mechanical Engineering, with honors), Johns Hopkins University (Masters of Liberal Arts) and the University of Virginia (Juris Doctor). While in private practice, and continuing into his in-house career, he taught portions of the U.S. patent bar exam for a long-standing and well-known patent bar exam preparation course, and from 2014-2020 was on the editorial board of the Journal of Open Law, Technology & Society (JOLTS), and starting in 2023 will be on the editorial board of the American Intellectual Property Law Quarterly Journal (AIPLAQJ). He is the author or co-author of chapters on open source and copyright and patents in “Open Source Law, Policy & Practice” (2022, Oxford University Press). He lectures frequently around the world on free and open source issues as well as other intellectual property topics.
December 6, 2023
Eliza J.
Eliza brings a distinguished track record of delivering outstanding results for her clients, showcasing expertise across a spectrum of legal areas. Eliza is not just an attorney; she's your dedicated advocate with a proven record of achieving excellent results for her clients. Her representation spans numerous family law cases, including dissolutions, custody, support, probate, and civil litigation matters. Eliza's unique background as a Registered Nurse and licensed Attorney sets her apart. Before establishing her law practice, she served as a Registered Nurse in various hospitals across Los Angeles and the Bay Area. Notably, she contributed to prominent institutions such as Los Angeles County Public Health and the City of Anaheim. Additionally, Eliza ventured into entrepreneurship, managing her own Professional Fiduciary and Consulting business. Her legal acumen extends to civil litigation, personal injury, medical malpractice, nursing home abuse, worker's compensation, and family law matters. Eliza earned her Bachelor's Degree in Nursing and Public Health from CSU Dominguez Hills. In 2008, she furthered her education, obtaining a Master's Degree in Nursing, Administration, and Healthcare Management, along with a Quality Improvement Certificate. Eliza culminated her academic journey by earning her law degree from the JFK University of Law in 2016. Eliza's multidisciplinary background uniquely positions her to navigate the intricacies of legal matters, offering a comprehensive and compassionate approach to her client's diverse needs. Eliza's diverse background uniquely positions her to understand and address your legal needs comprehensively. Trust her to navigate your case with care and dedication, ensuring you receive the support you deserve.
December 6, 2023
Kenneth W.
Committed to a career in advocacy as an attorney, educator, and consultant, I specialize in education, family, personal injury, and criminal law. While at John Rue & Associates LLC, I led litigation and alternative dispute resolution, handling complex class-action lawsuits involving discrimination, privacy, administrative, and education law. I also directed conflict resolution through mediation, reducing costs and securing favorable client outcomes. While in law school, I served as a law clerk at Wilson Elser, excelling in crafting answers, overseeing discovery, attending depositions, and conducting exhaustive legal research. My responsibilities extended to preparing deposition summaries, assisting in motion practice, drafting persuasive briefs, evaluating cases, and contributing to trial preparations. I thrived in managing client affairs, supporting colleagues, and ensuring compliance with relevant laws. I am eager to explore opportunities to contribute my skills and passion to impactful projects aligned with client needs. I look forward to discussing opportunities and demonstrating how my qualifications will meet client needs.
Adam T.
Legal professional with 10+ years of Fortune 500 in-house and AmLaw 50 law firm experience in crafting multi-pronged litigation, regulatory, and public policy strategies and negotiating pioneering, high-stakes global cloud services and digital content distribution deals.
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Location: Arizona
Turnaround: Less than a week
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Doc Type: Trademark Assignment Agreement
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