To submit a co-existence agreement to the USPTO, an applicant (the party applying for trademark registration) must meet one of the following USPTO criteria for “simultaneous use”: companies should also be aware of competition rules and agreements: courts may find that their similar confusing brands affect competition in the market for similar products. Tagged with: #trademarktuesday, co-existence agreements, consent Talk to a lawyer and make sure you understand all the effects of entering into a co-existence agreement before you sign. In particular, if you have been contacted by another company that wishes your consent to register a similar trademark, you should help a professional decide whether this is really in your best interest. The case of Apple Corps, the label created by the Beatles, and Apple Computer2 illustrates the difficulties (see WIPO magazine 3/2006). In 1991, the two companies reached an agreement on the coexistence of trademarks. provided that Apple Computer has the exclusive right to use its Apple trademarks “on or in combination with electronic goods, computer software, computer services and data transmission”; Apple Corps would certainly have the exclusive right to use its own Apple trademarks “on or in relation to current or future creative works, whose main content was music and/or musical performances, regardless of the means used to record or communicate these works, tangible or non-tangible.” Although the two companies have similarly confused brands, they have identified an area in which they were different – that is, areas of application – and this has become the basis of their co-existence agreement. The agreement allowed both companies to continue to do business and build on their reputations without violating each other. If the co-existence agreement is the best option, the first step is for the two companies to delineate their respective activities and agree to respect those parameters. However, the real challenge is to anticipate the future evolution of each company`s activities. Where does each company want to see itself in ten or twenty years? Is there a risk that their respective expansion will align with each other`s territories? Despite the co-existence agreement, costly disputes were not avoided in this case. As with all agreements, it is therefore desirable to include a dispute resolution clause in the event of future problems. THE WIPO Mediation and Arbitration Centre provides some useful examples of these clauses3. Sometimes co-existence agreements are concluded in the form of a proactive approval agreement.
There one party agrees to register the other party type mark with strict restrictions.