Trademark Coexistence Agreement: Key Terms, Issues, Legal Help

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.