Confusion Rejection? Try a Trademark Coexistence Agreement

A 2(d) likelihood of confusion rejection got you down? Creating a trademark coexistence agreement is one way to get past it. As defined in the Trademark Manual of Examining Procedure, a coexistence agreement is an agreement between two parties where one party consents to the registration of a trademark by the other party or where two parties consent to each other’s identical or similar trademarks.

What’s in a coexistence agreement? 

A “naked consent,” in which the other party consents to the registration of the mark, is not likely to be helpful. A coexistence agreement goes beyond a naked consent agreement by addressing details such as domain names, limitations on the use of the marks for certain goods and services, who has the right to enforce the mark against third parties, etc. The agreement should provide the basis for a USPTO examiner to believe that the coexistence of the trademarks will not confuse consumers. It’s also a best practice to lay out the steps that will be taken in the event confusion occurs.

Best Practices for writing up a coexistence agreement

A coexistence agreement should be drafted carefully for the purposes of establishing right and expectations as well as avoiding likelihood of confusion among consumers.

In order to avoid confusion, consider limiting one or more of the following:

• Use in distinct geographic regions.
• Use each mark only in defined trade channels.
• Use each mark only for specified products or services.
• Where possible, agree on how and where each mark will be displayed.

USPTO examining attorneys are not obligated to drop their 2(d) likelihood of confusion concerns when presented with a coexistence agreement.  But where they are properly drafted, they can overcome many confusion concerns.  So a coexistence agreement is not a silver bullet, but in many cases it is helpful in overcoming a 2(d) rejection.

Need help getting started? Download our example trademark coexistence agreement.