Consent Agreement

Lia Kopin-Green
August 21, 2022

What is a Consent Agreement?

In intellectual property law, a consent agreement is a contract in which one party agrees to allow the use or registration of a similar trademark by another party. In these cases, the parties have generally come to an agreement confusion is unlikely between the two trademarks. A consent agreement may be signed if one party has received or is likely to receive a refusal of registration from the United States Patent and Trademark Office (USPTO). The USPTO may reject a trademark if it is too similar to another, but parties may enter into a consent agreement if they agree that their marks are not confusing to consumers. The agreement will typically include evidence and reasoning explaining why the parties do not expect consumer confusion and what they will do to prevent it.

Key Takeaways

  • A consent agreement is a contract where one party allows another party to use or register a similar trademark.
  • In most cases, consent agreements are signed when both parties agree that consumer confusion is unlikely, despite USPTO registration refusal.
  • The USPTO is less likely to accept “naked consent agreements,” in which the owner of a trademark grants consent to the use or registration of a similar trademark without sufficient information stipulating why confusion is unlikely.

Consent Agreement Contents

There are a few essential elements that should be included in a consent agreement. Firstly the contract should clearly state that the owner of the original trademark agrees to allow the other party to use or register the similar, overlapping trademark. Moreover, the contract should contain a description of the differences between the two trademarks, proving that they will not cause consumer confusion. Lastly, although this is not a strict requirement, a well-drafted consent agreement will usually stipulate the explicit actions that both parties will take in order to prevent confusion between the two marks.

In some cases, the contract may also contain certain provisions that prevent each party from interfering with any future trademark filings.

Coexistence Agreements

While the two contracts are quite similar, a trademark coexistence agreement provides additional protection beyond the scope of a traditional consent agreement. According to the World Intellectual Property Organization (WIPO), trademark coexistence agreements allow parties to use similar or identical trademarks if they are not direct competitors and can therefore operate without confusing consumers. In these contracts, certain restrictions may apply to the use of the trademark, including where it can be used, in which industry it can be used, and how it will be marketed. In terms of their legal significance, coexistence agreements are treated like consent agreements by the USPTO. The USPTO is more likely to uphold the validity of an agreement with extensive restrictions and limitations, and permit the use of both marks.

Bottom Line

If your trademark has been rejected by the USPTO due to probable consumer confusion, there is still hope. Consent agreements as well as coexistence agreements allow for similar trademarks to exist in harmony. These contracts can also prevent conflict and even litigation, especially when it comes to common law trademarks.

Both of these agreements are highly technical and involve complex legal language. It is highly recommended to hire an intellectual property lawyer to help draft your contract in order to increase its chances of being upheld by the USPTO.

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