One potential way to deal with a refusal from the USPTO to register a trademark is to obtain consent from the owner of the registration (or application) that is blocking the path. In order to do so, the other party – the one that filed to register its trademark first – generally must have some incentive to cooperate. It could be that they do not have ‘priority’ – they did not use their trademark first – and thus their application/registration could potentially be attacked. It could be that the two parties services or products really have nothing to do with each other and there is no need to spend money and time (and attorney fees) on a potential dispute.
In the last year, I have seen more and more of these scenarios. Why? Here are some reasons:
1) Someone did not file for their trade early enough. If the company who’s application gets blocked had applied when they first began using the trademark, odds are the situation would have been avoided.
2) A trademark application was not carefully filed: it was filed without guidance of an attorney or – even worse – by a document filing company. The later filer did not consider choosing or avoiding particular terms or subjects in the description of the goods or services may reduce the risk of any finding of a conflict by the USPTO.
3) A consent agreement is a more economical and reasonable approach to a dispute in many situations and while the economy is growing and recovering, most companies prefer to avoid spending money on attorneys when possible.
What does a consent agreement look like? In general, the following are some of the key elements:
– Agreement that if the terms are followed, no confusion is likely
– Agreement not to contest each others trademarks if the parties are in compliance with the agreement
– Agreement that if any instances of confusion are discovered, the parties will attempt to cooperate to resolve
– Agreement to cooperate filing any documents with the USPTO
– A recognition of which party has priority
– Possible restrictions on one or both of the parties regarding the scope of goods/services sold in connection with the trademark(s), how the mark is used, fonts, logos, etc.
Below are two examples (public records) of responses to the US Patent and Trademark Office filed by our firm featuring consent agreements. Both applications were subsequently approved for registration by the USPTO.
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