Trademark Consent Agreement
Trademark owners must protect the value of their trademarks and avoid long-term negative consequences that could negate the short-term benefits of a co-existence agreement. The experience of a lawyer with trademark and intellectual property ownership is an invaluable advantage in developing a strategy of agreement on the use of the trademark. An agreement on trademark co-existence should include the following: unless the product campaign is limited to certain countries, the parties should consider how and when they navigate other jurisdictions in terms of consent. In some cases, it is helpful to deal with all of these issues in advance. If this is the case, it is preferable to include in the underlying co-existence agreement a provision stipulating that the parties will cooperate in good faith to provide the necessary documents in other countries. At other times, one of the parties wants to save the additional national debate for another day, and the co-existence agreement should be expressly limited to the country concerned. American Cruise Lines has filed a trademark application for the AMERICAN CONSTELLATION brand for cruise ships. The USPTO refused to register the trademark on the basis of the risk of confusion with the registered trademarks CONSTELLATION and CELEBRITY CONSTELLATION, each owned by the same declarant and covering identical services. In the course of its application, in its attempts to overcome the likelihood of a refusal of confusion, American Cruise Lines submitted two consent agreements between it and the owner of the summoned recordings. The USPTO auditor did not accept either consent agreement and upheld the refusal. American Cruise Lines then appealed TTAB`s refusal. The Trademark Trial and Appeal Board (TTAB) gave a previous notice in In re American Cruise Lines, Inc.
on the provisions necessary to obtain acceptable consent to registration. In this regard, the TTAB has provided clarification and instructions to trademark holders who negotiate and edify consent agreements. If two different brands are identical, or even similar, the owners of the brands can enter into a co-existence agreement. A co-existence agreement can resolve trademark disputes that arise from different owners with similar trademarks. Successful co-existence agreements generally limit each trademark holder to the use of the mark within a geographic area, with unrelated products or within different and different commercial channels. The agreement should specify the rights of the trademark holders concerned and how to avoid confusion in the market. Any party about to enter into a co-existence agreement must balance the pros and cons of restrictions on the use of the trademark. This decision is instructive because it confirms that the TTAB will pay great tribute to the contracting parties who have entered into an approval agreement and that the parties to an approval agreement do not necessarily have to contain provisions on what steps to be taken to avoid confusion in order for approval to be accepted. However, given the TTAB`s indications that such provisions are privileged and probative, it is always desirable to include such provisions. As a general rule, the parties negotiate an agreement on the coexistence of trademarks, accompanied by the approval agreement.
While the acceptance agreement is primarily limited to the co-existence agreement itself, the co-existence agreement embodies all the specific information relating to the use of their respective trademarks by the parties. That`s where the rubber falls on the road. The approval agreement is often an exposure to the co-existence agreement, so that the co-existence agreement can be confidential and the approval agreement can be submitted to the USPTO.