Co-Existential Crisis

So you've got a great name picked out for your business or service but you just found out that someone else either already registered it with the USPTO or is about to. What can you do? If they aren't going to encroach on your business (or you won't encroach on theirs) then a co-existence agreement may be an appropriate avenue to entertain.

Under the Lanham Act, the owner of a federally registered trademark has the exclusive right to use that mark in commerce in connection with the goods or services noted in the federal trademark registration. 15 U.S.C. § 1115(a). However, the Lanham Act also provides that concurrent use of similar marks may be permissible if a valid agreement between the parties avoids any likelihood of confusion. 15 U.S.C. § 1052(d).

A trademark coexistence agreement is a contract where parties agree that each has the right to use its respective mark in certain areas of commerce. This agreement is typically used to avoid or settle litigation or contested administrative proceedings and to enable one party to obtain a federal trademark registration for a mark whose application has been or is likely to be refused by the USPTO due to conflict with the other party's earlier-filed trademark registration. Given the Lanham Act's requirement that the agreement avoids confusion, a valid coexistence agreement under federal law must demonstrate that the parties' concurrent use of their respective marks will not cause consumer confusion. To accomplish this, the agreement should clearly define each party's scope of use by territory and/or goods/services.

The primary purpose of a coexistence agreement is to set forth the parameters for each party's use of its mark in a manner that will minimize any confusion in the marketplace and protect each party's mark. Coexistence may be based on a division of the geographical territories in which each party operates or on a delineation of their respective fields of use, which means dividing the goods or services on which the trademarks are used.

A coexistence agreement should be in writing and signed by both parties or by individuals with legal authority to bind the parties. It typically includes key terms such as a description of each party's trademark rights, limitations on use, a statement that there is no likelihood of confusion, consent to use and register, agreement to avoid confusion, release, and future expansion rights. The agreement should also include provisions to prevent confusion, such as requiring distinguishing logos, labels, packaging, marketing materials, and websites. Geographic and product limitations in the agreement must be reasonable and consistent with each party's current areas of use.

Registering your trademark correctly is an important step in protecting your business. Speak with a qualified attorney today to discuss.