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WEBCAST RECORDING: Using Coexistence Agreements to Secure and Confirm Trademark Rights

September 14, 2016

By: John L. DuPré and Christopher K. Albert

Did Bay State Brewing change the status quo for Trademark Owners?

Trademark applications can be rejected when an Examiner discovers a confusingly similar registered mark.  For years, applicants have entered into coexistence agreements with the owners of registered marks, in which the parties typically recognize each others' right to use and/or register similar marks.  Historically the United States Patent and Trademark Office (USPTO) has withdrawn rejections when presented with evidence of a coexistence agreement.  A recent precedential decision from the Trademark Trial and Appeal Board (TTAB) suggests that the USPTO may have now changed its approach to these agreements and is likely to scrutinize coexistence agreements more closely.  Coexistence agreements can present a number of risks to trademark owners.  They should be drafted carefully to ensure that they protect a company’s plans for use of the mark and to ensure they eliminate a likelihood of confusion between the applicant’s mark and the registered mark.

Our panel discussed:

  • Recent case law developments pertaining to trademark coexistence agreements
  • The downsides and risks of coexistence agreements
  • Strategies for negotiating coexistence agreements
  • Considerations for ensuring your coexistence agreement will successfully overcome a likelihood of confusion rejection
  • The important differences between coexistence agreements, concurrent use agreements, and trademark licenses