A trademark coexistence agreement is a broader agreement that offers even greater protection than a simple consent agreement. Coexistence agreements typically add unique restrictions for sites, industries, and/or marketing methods in which both parties may use their respective trademarks. These specifications apply in addition to the points set out in the consent agreement below. Coexistence agreements are particularly useful for companies wishing to grow and avoid infringement actions and/or future litigation. As noted above, coexistence agreements are often submitted to the USPTO as part of the application for registration or in response to a request expressed by an examiner. If the coexistence agreement is not well formulated, the examiner will refuse the agreement and possibly refuse the trademark application. For example, trademark application is discussed in In re Bay State Brewing Company, Inc., Serial No. 85826258 (February 25, 2016). This was the request to register TIME TRAVELER BLONDE for “beer”. The lawyer raised a “likelihood of confusion” issue due to an earlier trademark registered for TIME TRAVELER for “Bier, Ale and Lager”. A consent agreement has been concluded and submitted to the examiner pending the approval agreement as the approval agreement paves the way for registration. However, the examiner rejected the approval agreement. Among other problems, geographical restrictions were not “real” restrictions, as each trademark owner could use his trademark in the territory of the other.
As such, the consent agreement would not solve the “likelihood of confusion” problem. Proposals to improve the form and content of the manual are always welcome. They should be sent by email to tmtmep@uspto.gov or to the following address: In addition to limiting the use of competing trademarks to minimize the risk of confusion, there are other issues that should be addressed in a coexistence agreement in order to avoid conflicts and disputes. With regard to the issues to be resolved, what should be included in consent and coexistence agreements? The Trademark Manual of Examination Procedure (TMEP) can be downloaded free of charge from the USPTO website under www.uspto.gov/trademark/guides-and-manuals/tmep-archives. A party who is clearly a user of the junior mark (not the first party to use a trademark) may have no choice but to seek a consent agreement from the former user of the mark (the first party to use a trademark in commerce and register normally). . . .