Coexistence Agreement Toolkit: Term Sheets, Consent Agreements, and Field-of-Use Clauses

Summary. This toolkit collects the working documents for a trademark coexistence or consent deal, with each template stating its purpose, owner, and when to use it, followed by drafting commentary tied to the governing authority. It includes an assessment matrix, a first-contact settlement letter, a consented TTAB motion to suspend, a term sheet, core agreement provisions, field-of-use, presentation, and geographic clauses, consent and further-assurance terms, a short-form consent for filing with the USPTO, cooperation and policing clauses, a no-challenge covenant, notice-and-cure and termination provisions, dispute resolution, assignment and change-of-control terms, free-competition and no-license clauses, an office action argument outline, and a post-signing administration record. A running example follows a mattress company and a sleep-audio company that share the HALCYON name. Bracketed placeholders mark every field to complete.

A coexistence deal is won or lost in the definitions. The negotiation decides who gets which field; the documents decide whether that bargain survives an examining attorney, a new product line, an acquisition, and the passage of twenty years. This toolkit is the paperwork, written to be adapted, not signed as is.

How to use this toolkit

Each template states its purpose, its owner, and when to use it, then gives the template and drafting commentary. Bracketed text in capitals is to be completed. Clauses are drafted neutrally; where a side should push for a variant, the commentary says so. Governing law, signature formalities, and local practice must be checked for each deal.

The doctrine behind the templates is explained in Trademark Coexistence and Consent Agreements: How Rivals Share a Name and Persuade the USPTO. The negotiation sequence is in Negotiating a Trademark Coexistence Agreement: A Practical Guide, and the task list is in the Trademark Coexistence and Consent Agreement Checklist: A Practical Checklist.

The running example. Halcyon Sleep Co., an Ohio company, has sold HALCYON mattresses and pillows since 2012 and owns a registration for HALCYON covering "mattresses; pillows; sleep masks; ear plugs for sleeping." Halcyon Audio, Inc., a California company, has sold HALCYON wireless headphones since 2018 and has applied to register HALCYON SLEEPBUDS for "wireless earbuds; earbuds designed for use while sleeping." The examining attorney has refused registration under Section 2(d), citing the ear plugs in Halcyon Sleep's registration. Halcyon Audio's counsel is Ruth Adeyemi; Halcyon Sleep's counsel is Marcus Feld.

Template 1: Coexistence assessment matrix

Purpose: decide whether coexistence is realistic and what each side can give. Owner: each side's counsel, separately. When to use: before the first call.

Sample entry (Halcyon Audio): Goods actually sold overlap only in "earbuds for sleeping" versus "ear plugs for sleeping"; Halcyon Audio's products are electronic and sold through electronics retailers and its website at prices many times those of foam ear plugs; Halcyon Sleep sells ear plugs only as a bundled accessory with pillows. No known confusion in six years of overlap. Fields Halcyon Audio must keep: all audio electronics, including sleep-specific audio devices and companion apps.

Commentary. The matrix tracks the factors in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). The "identified" and "actually sold" rows are separate because the USPTO decides registrability on the identifications as written, under Octocom Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d 937 (Fed. Cir. 1990), while the parties negotiate on real-world facts. The gap between the two rows is where identification amendments come in (Template 10). The "detection system" entry matters because a claim of no actual confusion is more persuasive when the party can show it would have known. For a full factor analysis, use Trademark Likelihood-of-Confusion Analysis: A Practical Checklist, and for valuing the alternatives, the Settlement Negotiation Toolkit: Case Valuation Worksheets, Concession Plans, and Offer Letters.

Template 2: First-contact settlement letter

Purpose: open talks without provoking a fight. Owner: counsel for the party seeking consent. When to use: after a refusal, or when a conflict surfaces in clearance or a demand.

CONFIDENTIAL SETTLEMENT COMMUNICATION
SUBJECT TO FED. R. EVID. 408 AND ANY STATE EQUIVALENT

[DATE]

[NAME], [TITLE]
[COUNSEL OR COMPANY], [ADDRESS]

Re: [OUR CLIENT]'s Application Serial No. [NUMBER] for [MARK]; your client's
Registration No. [NUMBER] for [MARK]

Dear [NAME]:

We represent [OUR CLIENT] in connection with the above application. The
examining attorney has cited your client's registration under Section 2(d).
We write to propose a coexistence arrangement.

Our clients have used their marks for [GOODS] and [GOODS] respectively since
[YEAR] and [YEAR]. We are not aware of any instance of confusion, and we
believe the differences in [GOODS / BUYERS / CHANNELS / PRESENTATION]
explain why.

[OUR CLIENT] is prepared to commit in writing to [SUMMARY OF CONCESSIONS,
E.G., USE ONLY IN THE FORM X; NO USE FOR Y], in exchange for your client's
written consent to use and registration of [MARK] for [GOODS] and a mutual
covenant not to challenge each other's marks within agreed fields.

The response deadline is [DATE]. We will request an extension so that our
clients have time to talk. We would welcome a call during the week of [DATE].
If business information needs to be exchanged, we will propose a short
confidentiality agreement.

Sincerely,
[NAME]

Commentary. Fed. R. Evid. 408 limits use of compromise offers and negotiation statements to prove or disprove the validity or amount of a disputed claim; it does not make them confidential for all purposes, which is why the letter offers a confidentiality agreement. The letter states facts and offers concessions up front. A letter that threatens cancellation as an opening move tends to end conversations, and an aggressive one can prompt a declaratory judgment action. Tone and structure for harder letters are covered in Trademark Cease-and-Desist Letters: Sending and Responding: A Practical Guide.

Template 3: Consented motion to suspend a TTAB proceeding for settlement

Purpose: stop the Board's clock while the parties negotiate. Owner: either party, with the other's consent. When to use: in an opposition or cancellation once talks are serious.

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

[OPPOSER / PETITIONER],              )
          Opposer,                   )   Opposition No. [NUMBER]
     v.                              )   Serial No. [NUMBER]
[APPLICANT / RESPONDENT],            )   Mark: [MARK]
          Applicant.                 )

CONSENTED MOTION TO SUSPEND PROCEEDINGS PENDING SETTLEMENT NEGOTIATIONS

[MOVING PARTY], with the consent of [OTHER PARTY], moves to suspend this
proceeding for [NUMBER] days so that the parties may pursue settlement.
The parties are actively negotiating a written agreement that, if
concluded, is expected to resolve this proceeding. [IF APPLICABLE: The
parties request that, upon resumption, the Board reset the remaining dates
from the date of resumption.]

Respectfully submitted,
[NAME], [ADDRESS], [EMAIL]
Attorney for [MOVING PARTY]
Date: [DATE]

CERTIFICATE OF SERVICE
[SERVICE BY EMAIL ON COUNSEL OF RECORD, DATE]

Commentary. The Board generally grants consented suspensions for settlement and may require the parties to report on status; repeated requests draw scrutiny, so ask for a realistic period. Practice details are in the TTAB Manual of Procedure and the rules at 37 C.F.R. Part 2. Suspension does not extend statutory limits such as the five-year window for confusion-based cancellation in 15 U.S.C. § 1064. The broader set of TTAB forms is in the TTAB Practice Toolkit: Oppositions, Cancellations, and the Trademark Trial and Appeal Board from Pleading to Appeal.

Template 4: Term sheet

Purpose: agree the business deal before drafting. Owner: both parties' counsel. When to use: after one or two calls, before any long-form draft.

Halcyon sample: Halcyon Audio field: "audio and electronic devices, including earbuds, headphones, and speakers, whether or not designed for use during sleep, and related software." Halcyon Sleep field: "mattresses, bedding, pillows, and non-electronic sleep accessories, including foam and wax ear plugs and sleep masks." Unallocated products: 60-day notice and consultation. Halcyon Audio always uses HALCYON with its wave logo or with AUDIO or SLEEPBUDS; Halcyon Sleep always uses HALCYON with its moon logo or with SLEEP CO.

Commentary. The term sheet forces agreement on the field line and the unallocated-products process, the two terms most often litigated later. In Times Mirror Magazines, Inc. v. Field & Stream Licenses Co., 294 F.3d 383 (2d Cir. 2002), the fight was over products between the defined fields, and the court held that the agreements, not residual common-law rights, governed. Keep the term sheet non-binding so that it cannot be argued to be the deal, but make the confidentiality term binding.

Template 5: Core agreement provisions

Purpose: frame the long-form agreement. Owner: drafting counsel. When to use: first draft.

TRADEMARK COEXISTENCE AGREEMENT

This Agreement is made as of [DATE] between [PARTY A LEGAL NAME], a
[JURISDICTION] [ENTITY TYPE] ("[A]"), and [PARTY B LEGAL NAME], a
[JURISDICTION] [ENTITY TYPE] ("[B]").

RECITALS
A. [A] has used the mark [MARK] in the United States since [YEAR] for
   [GOODS], sold through [CHANNELS] to [BUYERS], and owns the registrations
   and applications listed in Schedule 1.
B. [B] has used the mark [MARK] in the United States since [YEAR] for
   [GOODS], sold through [CHANNELS] to [BUYERS], and owns the registrations
   and applications listed in Schedule 2.
C. The parties have used their marks concurrently since [YEAR]. Each
   maintains [CUSTOMER SERVICE / RETURNS / INQUIRY] records that would
   reveal misdirected inquiries, and neither is aware of any instance of
   confusion.
D. The parties believe that confusion is unlikely because of the
   differences in their goods, buyers, channels, and presentation, and they
   enter into this Agreement to preserve those differences.

1. DEFINITIONS
1.1 "[A] Field" means [FUNCTIONAL DEFINITION].
1.2 "[B] Field" means [FUNCTIONAL DEFINITION].
1.3 "[A] Marks" means the marks in Schedule 1 and any mark consisting of or
    containing [SHARED TERM] used by [A] in accordance with this Agreement.
1.4 "[B] Marks" means [SAME FOR B].
1.5 "Unallocated Product" means any good or service outside both Fields.
1.6 "Actual Confusion" means any instance in which a person, by reason of
    the parties' marks, directs to one party a communication, order,
    complaint, or payment intended for the other, or states a belief that
    the parties are affiliated.

Commentary. Recital D is deliberate. It states that confusion is unlikely and frames the agreement as preserving differences. Avoid recitals that say confusion would be likely unless the parties follow the agreement; in In re Bay State Brewing Co. (T.T.A.B. 2016), the applicant's acknowledgment that confusion was likely absent the agreement's terms hurt it badly. Recital C supports the "no known confusion" statement with the systems that would detect it. A functional definition of Actual Confusion makes the cooperation clause (Template 11) operable.

Template 6: Field-of-use clauses (three variants)

Purpose: allocate product categories. Owner: both. When to use: every agreement.

VARIANT A: EXCLUSIVE FIELDS
2.1 [A] shall not use or seek to register any [A] Mark, or any mark
    consisting of or containing [SHARED TERM], for goods or services within
    the [B] Field.
2.2 [B] shall not use or seek to register any [B] Mark, or any mark
    consisting of or containing [SHARED TERM], for goods or services within
    the [A] Field.

VARIANT B: RESERVED EXPANSION FIELD
2.3 The goods described in Schedule 3 (the "Reserved Field") are reserved
    to [PARTY]. [OTHER PARTY] shall not use [SHARED TERM] for goods in the
    Reserved Field, whether or not [PARTY] has yet entered it.

VARIANT C: UNALLOCATED PRODUCTS
2.4 A party wishing to use [SHARED TERM] for an Unallocated Product shall
    give the other party written notice describing the product, its
    channels, and the proposed presentation at least [60] days before first
    use. The parties shall consult in good faith within [30] days of the
    notice. If the other party objects in writing within the consultation
    period on the ground that the proposed use is reasonably likely to cause
    Actual Confusion, the proposing party may sell the product only under a
    mark that does not contain [SHARED TERM], unless the parties agree
    otherwise in writing.

Halcyon sample (Variant B): Halcyon Sleep asks for a Reserved Field of "smart mattresses and mattress-integrated sleep sensors," which it plans to launch; Halcyon Audio agrees, provided that "audio devices that are not integrated into a mattress or bedding" remain in its field.

Commentary. Define fields by what buyers purchase and why, not by technology or the parties' current catalogs. The Apple Corps and Apple Computer disputes, reported in the English courts, show how a field defined around a particular technology can be overtaken by products that did not exist when the agreement was signed. Exclusive-field clauses restrict use of the shared term, not the sale of products under other marks; Template 16 makes that explicit for antitrust purposes. The giver should use Variant B for any field it realistically plans to enter; otherwise the seeker's registration may later be cited against the giver's own expansion. Variant C's objection standard ("reasonably likely to cause Actual Confusion") keeps the process tied to trademark purposes rather than competitive preference.

Template 7: Presentation and trade dress clause

Purpose: keep the marks visually and verbally distinct. Owner: both. When to use: every agreement where the shared term is identical or nearly so.

3.1 [A] shall use [SHARED TERM] only in the forms shown in Schedule 4,
    namely [E.G., WITH ITS HOUSE MARK / WITH THE WORD X / WITH LOGO Y].
3.2 [B] shall use [SHARED TERM] only in the forms shown in Schedule 5.
3.3 Neither party shall use (a) [SHARED TERM] alone as a product or
    company name, (b) any logo, color scheme, or trade dress element shown
    in the other party's Schedule, or (c) any statement, design, or
    domain name suggesting affiliation with, sponsorship by, or common
    ownership with the other party.
3.4 Digital uses. Each party shall use, for any new domain name, social
    media account, app name, or app icon adopted after the Effective Date,
    a form permitted by Section 3.1 or 3.2. Existing names listed in
    Schedule 6 may continue. [OPTIONAL: Neither party shall purchase the
    other party's full mark (as listed in its Schedule) as a keyword for
    search advertising, but each may purchase [SHARED TERM] in combination
    with its own permitted forms.]

Commentary. Presentation terms are cheap for the seeker and valuable for the giver. They also make the consent more persuasive: the agreement accepted in In re Four Seasons Hotels Ltd., 987 F.2d 1565 (Fed. Cir. 1993) specified the exact forms in which the shared word would be used and added a non-association covenant. Remember the limits at the USPTO: a standard character registration covers all stylizations, as In re Viterra Inc., 671 F.3d 1358 (Fed. Cir. 2012) holds, so logo commitments support the consent but do not narrow a standard character registration. The keyword option should be reviewed for antitrust risk between competitors; 1-800 Contacts, Inc. v. FTC, 1 F.4th 102 (2d Cir. 2021) applied the rule of reason to keyword restrictions in trademark settlements after a lengthy FTC challenge.

Template 8: Geographic clauses

Purpose: allocate territories where separation is geographic. Owner: both. When to use: regional businesses, concurrent use, global agreements.

VARIANT A: CONCURRENT USE (UNITED STATES)
4.1 [A] shall use [MARK] only within [AREA A], and [B] shall use [MARK]
    only within [AREA B], except that each party may (a) advertise in
    national media and online, provided each advertisement identifies the
    party's location, and (b) fill unsolicited orders from outside its area
    [IF AGREED].
4.2 [B] consents to the registration of [MARK] by [A] as a concurrent user
    for [AREA A], and [A] consents to the registration of [MARK] by [B] for
    [AREA B]. Each party shall file or amend its applications and
    registrations to reflect the areas in this Section, and shall cooperate
    in any concurrent use proceeding.

VARIANT B: GLOBAL ALLOCATION OF MARK USE
4.3 This Agreement applies in the countries listed in Schedule 7. In each
    such country, Sections 2 and 3 apply to use and registration of
    [SHARED TERM]. In any other country, the parties shall consult before
    either files to register [SHARED TERM] for goods in the other's Field.
4.4 Each party shall, on request, sign letters of consent in the form
    required by the trademark office of any Schedule 7 country.

Commentary. Territory for registration purposes belongs in a concurrent use application under the proviso to 15 U.S.C. § 1052(d), not in a private promise; Bay State is the warning. Consent by the owner of the conflicting registration waives the requirement that concurrent use predate the filing date, and the Board decides the territorial terms on the facts at the time of decision under In re Beatrice Foods Co., 429 F.2d 466 (C.C.P.A. 1970). Variant A limits use of the mark, not sales of products under other marks; a clause barring a party from selling products at all in the other's territory would be a horizontal territorial allocation of the kind held per se unlawful in Palmer v. BRG of Georgia, Inc., 498 U.S. 46 (1990). Variant B addresses territoriality; foreign offices differ in whether and how they accept consents, and local competition law may restrict allocations. See Global Trademark Portfolio Toolkit: Filing Matrices, Bad-Faith Registration Responses, and Watch Programs.

Template 9: Consent to use and register; further assurances

Purpose: give each party the registry rights it needs. Owner: both. When to use: every agreement.

5.1 [B] consents to the use and registration by [A] of the [A] Marks for
    goods and services within the [A] Field, including Application Serial
    No. [NUMBER] as amended under Section 5.3.
5.2 [A] consents to the use and registration by [B] of the [B] Marks for
    goods and services within the [B] Field.
5.3 Within [10] business days after the Effective Date, [A] shall file an
    amendment to Application Serial No. [NUMBER] limiting the identification
    to: "[AMENDED IDENTIFICATION]."
5.4 Each party shall, within [10] business days of request, execute any
    further consent, declaration, or document reasonably required by the
    USPTO or any foreign trademark office to give effect to this Agreement,
    including the Short-Form Consent in Exhibit A.

Commentary. Consent to both use and registration. In In re Mastic Inc., 829 F.2d 1114 (Fed. Cir. 1987), the registrant consented only to registration, and the applicant was not using the mark in the United States; the court treated the consent as naked. The identification amendment in Section 5.3 puts the field line on the register, which matters because the Board will not read real-world limits into an unrestricted identification (Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317 (Fed. Cir. 2014)). Halcyon sample: "wireless earbuds and headphones, being audio electronic devices, including such devices designed for use while sleeping; none of the foregoing being non-electronic ear plugs."

Template 10: Short-form consent agreement for filing with the USPTO

Purpose: persuade the examining attorney. Owner: applicant's counsel, signed by both parties. When to use: with the office action response or request for reconsideration.

CONSENT AGREEMENT

[REGISTRANT LEGAL NAME] ("Registrant"), owner of U.S. Registration No.
[NUMBER] for [MARK] for "[GOODS]," and [APPLICANT LEGAL NAME]
("Applicant"), owner of Application Serial No. [NUMBER] for [MARK] for
"[AMENDED GOODS]," agree as follows:

1. Registrant consents to Applicant's use and registration of [MARK] for
   the goods identified in the Application.

2. The parties believe that confusion is unlikely for these reasons:
   (a) Goods. Applicant's goods are [DESCRIPTION, E.G., ELECTRONIC AUDIO
       DEVICES WITH BATTERIES, BLUETOOTH CONNECTIVITY, AND COMPANION APPS].
       Registrant's goods are [DESCRIPTION, E.G., MATTRESSES, PILLOWS, AND
       DISPOSABLE FOAM EAR PLUGS SOLD AS BEDDING ACCESSORIES].
   (b) Channels and buyers. Applicant sells through [CHANNELS] to [BUYERS].
       Registrant sells through [CHANNELS] to [BUYERS]. [PRICE POINTS IF
       PROBATIVE].
   (c) Presentation. Applicant uses [MARK] with [HOUSE MARK / LOGO].
       Registrant uses [MARK] with [HOUSE MARK / LOGO].
   (d) History. The parties have used their marks concurrently since [YEAR]
       and, despite [CUSTOMER SERVICE AND RETURNS SYSTEMS], are aware of no
       instance of confusion.

3. To preserve these differences, the parties have agreed that:
   (a) Applicant will not use [SHARED TERM] for [REGISTRANT FIELD], and
       Registrant will not use [SHARED TERM] for [APPLICANT FIELD];
   (b) each will use [SHARED TERM] only with its own [HOUSE MARK / LOGO];
   (c) neither will suggest affiliation with the other.

4. If either party learns of any instance of actual confusion, it will
   notify the other within [10] business days, and the parties will
   cooperate in good faith to take reasonable steps to prevent recurrence.

[REGISTRANT]                         [APPLICANT]
By: ______________________           By: ______________________
Name/Title: [AUTHORIZED OFFICER]     Name/Title: [AUTHORIZED OFFICER]
Date: [DATE]                         Date: [DATE]

Commentary. This form is built from the cases. It is bilateral and consents to use and registration (Mastic). It recites facts rather than DuPont factor labels (Mastic again: "Evidence must be submitted"). It contains undertakings and a cooperation clause, as did the agreements accepted in Four Seasons, In re N.A.D. Inc., 754 F.2d 996 (Fed. Cir. 1985), and In re Dare Foods Inc. (T.T.A.B. 2022). It states that confusion is unlikely and does not concede the opposite (Bay State). It omits payments, releases, and dispute resolution, which stay in the private long form. Sign by authorized officers of the entities that own the marks. The TMEP's section on consent agreements (TMEP § 1207.01(d)(viii)) states the examining standards; check the current edition.

Template 11: Cooperation and policing clauses

Purpose: handle actual confusion and third-party infringers. Owner: both. When to use: every agreement.

6.1 Notice. Each party shall notify the other in writing within [10]
    business days after learning of any Actual Confusion, with available
    details (date, channel, the communication, the person involved, with
    personal data minimized).
6.2 Meeting and remedies. Within [30] days after notice, the parties shall
    meet (by video if convenient) and agree on reasonable steps, which may
    include redirecting inquiries, adding clarifying statements to
    websites or packaging, adjusting presentation, or training customer
    service staff. Neither party is required to change its permitted Field.
6.3 Misdirected communications. Each party shall forward to the other,
    within [5] business days, any order, payment, complaint, or inquiry
    clearly intended for the other.
6.4 Third parties. Each party may enforce its own marks against third
    parties within its own Field at its own expense. On request and at the
    requesting party's expense, the other party shall provide reasonable
    cooperation, including declarations of fact. Neither party shall assert
    against a third party any claim based on use within the other party's
    Field without the other's consent.
6.5 Watch. [OPTIONAL: Each party shall notify the other of any third-party
    application for [SHARED TERM] in the other's Field of which it becomes
    aware.]

Commentary. Cooperation clauses carry weight at the USPTO: Four Seasons noted that the parties agreed to cooperate to eliminate or minimize confusion, and the Board in In re American Cruise Lines, Inc. (T.T.A.B. 2018) gave great weight to "clothed" consents from competitors that had thought out their interests. In practice, deadlines turn a cooperation clause from aspiration into procedure. Section 6.2's last sentence protects both sides from a demand to abandon a field because of isolated incidents. Section 6.4 keeps each party from enforcing in the other's field, which avoids inconsistent positions on the strength of the shared term; for enforcement mechanics see the Trademark Enforcement and Litigation Toolkit: From Watching to Verdict and Appeal.

Template 12: No-challenge covenant

Purpose: protect each party's registrations. Owner: both. When to use: every agreement.

7.1 Neither party shall, directly or through any affiliate or third party
    acting at its direction, oppose, seek to cancel, petition to restrict,
    or otherwise challenge, in any trademark office or court, the other
    party's use or registration of its Marks within its Field, on any
    ground based on the parties' respective marks, [OR: on any ground].
7.2 Section 7.1 does not apply to (a) any use or application outside the
    challenging party's consent in Section 5, (b) any claim that the other
    party has breached this Agreement, or (c) [ABANDONMENT AS DEFINED IN
    SECTION 9.3].
7.3 This Section survives termination [FOR [NUMBER] YEARS / INDEFINITELY /
    EXCEPT TERMINATION FOR THE OTHER PARTY'S BREACH].

Commentary. Trademark courts generally enforce no-challenge covenants in settlements. In Beer Nuts, Inc. v. King Nut Co., 477 F.2d 326 (6th Cir. 1973), a party that had recognized the validity of BEER NUTS in an earlier settlement could not later argue the mark was descriptive. Patent policy under Lear, Inc. v. Adkins, 395 U.S. 653 (1969) has not generally been carried over. The bracketed choice in 7.1 matters: "based on the parties' respective marks" bars confusion-based challenges only, while "any ground" also bars descriptiveness, genericness, and nonuse claims. The giver usually prefers the broader form; the seeker should insist on the 7.2(c) carve-out for genuine abandonment. The Board generally recognizes contractual estoppel as a defense, as discussed in the TTAB Manual of Procedure.

Template 13: Notice, cure, and termination

Purpose: give breach a process and keep termination rare. Owner: both. When to use: every agreement.

8.1 Notice of breach. A party alleging breach shall give written notice
    describing the breach in reasonable detail.
8.2 Cure. The other party shall have [30] days after notice to cure, or,
    where cure reasonably requires longer (for example, replacement of
    packaging in distribution), to begin cure within [30] days and complete
    it within [90] days. [Sell-off: existing inventory may be sold for [90]
    days unless the breach was willful.]
8.3 Injunctive relief. Nothing in this Section prevents a party from
    seeking immediate injunctive relief for a breach of Section 2 or 3 that
    threatens irreparable harm.
9.1 Term. This Agreement continues for as long as either party uses its
    Marks, unless terminated under this Section.
9.2 Termination. A party may terminate on written notice if the other
    party commits a material breach of Section 2, 3, or 7 that is not cured
    under Section 8.
9.3 Abandonment. If a party ceases all use of [SHARED TERM] in the United
    States for [THREE] consecutive years with no intent to resume, the
    other party's obligations to it under Sections 2 and 5 end.
9.4 Survival. Sections [RELEASE], [CONFIDENTIALITY], [7 AS PROVIDED IN
    7.3], and [14] survive termination.

Commentary. Termination at will undercuts the consent: an examining attorney weighing whether the parties' arrangements will keep confusion unlikely will give less weight to an agreement either side can walk away from. The three-year abandonment period tracks the statutory presumption of abandonment in 15 U.S.C. § 1127. Courts consider stipulations of irreparable harm in deciding preliminary relief under Fed. R. Civ. P. 65 and 15 U.S.C. § 1116, but the court decides.

Template 14: Dispute resolution

Purpose: resolve disagreements before they become lawsuits. Owner: both. When to use: every agreement.

10.1 Negotiation. Senior executives shall meet within [15] days after
     either party's written request and attempt to resolve the dispute for
     [30] days.
10.2 Mediation. Unresolved disputes shall be submitted to mediation before
     [PROVIDER] in [CITY] for not less than [30] days.
10.3 Forum. [VARIANT A: Courts. Thereafter, the state and federal courts
     located in [COUNTY, STATE] have exclusive jurisdiction.]
     [VARIANT B: Arbitration. Thereafter, the dispute shall be resolved by
     binding arbitration under the [RULES] by [ONE / THREE] arbitrator(s)
     with trademark experience, seated in [CITY]. Each party shall make any
     filing with the USPTO or any court reasonably required to implement
     the award.]
10.4 Governing law. [STATE] law, without regard to conflict rules, and the
     Lanham Act.
10.5 Remedies. Each party consents to specific performance and injunctive
     relief for breach of Sections 2, 3, or 7, and acknowledges that use
     of [SHARED TERM] outside its Field may also constitute infringement.
10.6 Fees. [THE PREVAILING PARTY MAY RECOVER REASONABLE ATTORNEYS' FEES.]

Commentary. Arbitration clauses are enforceable under 9 U.S.C. § 2, but an arbitrator cannot cancel or restrict a registration, which only the USPTO or a court can do under 15 U.S.C. § 1119; Variant B's last sentence closes that gap. Section 10.5 preserves infringement claims under 15 U.S.C. § 1114 for use outside a field. Release language belongs in the long form and should be drafted precisely; Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc., 590 U.S. 405 (2020) followed years of litigation over a trademark settlement's release. Release forms are in the Settlement Toolkit: Term Sheets, Releases, Offers of Judgment, and Enforcement.

Template 15: Assignment, successors, change of control, and bankruptcy

Purpose: make the agreement outlast the signatories. Owner: both. When to use: every agreement.

11.1 Successors. This Agreement binds and benefits the parties and their
     successors and assigns of the Marks, and runs with the Marks.
11.2 Assignment. A party may assign this Agreement only together with the
     Marks and associated goodwill, and only to an assignee that agrees in
     writing to be bound. Any other assignment is void.
11.3 Change of control. A party undergoing a change of control shall give
     notice within [30] days after closing. If the acquirer or its
     affiliates offer goods or services within the other party's Field
     under any mark, the acquirer shall confirm in writing that it will not
     use [SHARED TERM] for those goods or services.
11.4 Affiliates. Each party shall cause its affiliates to comply with this
     Agreement as if they were parties.
11.5 Insolvency. The parties intend that the covenants in Sections 2, 3,
     and 7 run with the Marks and bind any purchaser of a party's Marks,
     including in any sale under the Bankruptcy Code.

Commentary. Trademarks are assigned with goodwill under 15 U.S.C. § 1060, and coexistence agreements are routinely enforced against successors: Clorox involved agreements signed by the parties' predecessors, see Clorox Co. v. Sterling Winthrop, Inc., 117 F.3d 50 (2d Cir. 1997). Section 11.3 is the compromise most parties accept in place of a veto over a sale. In bankruptcy, the agreement is likely an executory contract under 11 U.S.C. § 365; under Mission Product Holdings, Inc. v. Tempnology, LLC, 587 U.S. 370 (2019), rejection is a breach and does not rescind rights already granted. Section 11.5 states intent; it cannot override the Bankruptcy Code. Assignment recording is covered in Recording a Trademark Assignment: A Practical Checklist, and assignment drafting in the Brand Ownership Toolkit: Assignment Agreements, Founder IP Clauses, and Ownership Evidence Files.

Template 16: Free-competition and no-license clauses

Purpose: keep the agreement on the right side of antitrust and naked licensing lines. Owner: both. When to use: every agreement; mandatory where the parties compete or may compete.

12.1 Freedom to compete. Nothing in this Agreement restricts either party
     from making, selling, or offering any goods or services in any
     territory, through any channel, to any customer, at any price, under
     marks that do not contain [SHARED TERM]. The restrictions in Sections
     2 through 4 apply solely to use and registration of [SHARED TERM] and
     are intended solely to avoid confusion.
12.2 No license. Each party uses its own Marks as its own source
     identifiers and under its own control. Nothing in this Agreement grants
     either party any license or other right to use the other party's
     Marks, and neither party shall represent that it is licensed by,
     affiliated with, or sponsored by the other.
12.3 [OPTIONAL LICENSE-BACK: Any license of a party's Marks shall be
     granted only by separate written license containing quality control,
     inspection, and approval provisions.]

Commentary. Section 1 of the Sherman Act, 15 U.S.C. § 1, condemns trademark agreements that in reality divide markets, as in Timken Roller Bearing Co. v. United States, 341 U.S. 593 (1951). Clorox applied the rule of reason to an agreement that "merely regulate[d] the way a competitor can use a competing mark," and described trademark agreements as "favored in the law." Section 12.1 documents that the restrictions are of the Clorox kind. Section 12.2 addresses naked licensing: use by a "related company" counts only where the owner controls quality (15 U.S.C. § 1055), and uncontrolled licensing led to abandonment in FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509 (9th Cir. 2010). If a license-back is part of the deal, use the provisions in the Brand Licensing Toolkit: License Terms, Quality Programs, and Audit Rights.

Template 17: Office action argument outline

Purpose: present the consent with the law and evidence. Owner: applicant's counsel. When to use: response to a Section 2(d) refusal, or request for reconsideration.

I.   Introduction: Registrant has consented to use and registration; a
     signed consent agreement is attached as Exhibit A; Applicant has
     amended its identification [STATE AMENDMENT].
II.  Legal standard: consent agreements under DuPont factor ten; clothed
     agreements entitled to great weight (TMEP: substantial weight); USPTO
     should not substitute its judgment absent other factors clearly
     dictating confusion.
     [DuPont; N.A.D.; Bongrain; Four Seasons; American Cruise Lines;
     Wacker Neuson; Dare Foods; TMEP 1207.01(d)(viii)]
III. The agreement is clothed:
     A. Bilateral; consent to use and registration.
     B. Specific facts: goods, buyers, channels, presentation, history.
     C. Undertakings: field limits, presentation, non-association.
     D. Cooperation clause.
IV.  The other DuPont factors are consistent with the parties' judgment:
     [DIFFERENCES IN GOODS AS AMENDED; DEGREE OF CARE; MARKETPLACE
     EVIDENCE; INDUSTRY PRACTICE; NO ACTUAL CONFUSION OVER [YEARS]].
V.   Distinguishing adverse authority: Mastic (unilateral, registration-only,
     conclusory); Bay State (overlapping territory, concession, mismatch
     with application).
VI.  Doubt: Registrant's consent removes the basis for resolving doubt in
     Registrant's favor. [Wacker Neuson, citing In re Donnay]
VII. Conclusion: withdraw the refusal and approve for publication.
Exhibits: A (consent); B (declaration on channels and buyers); C (specimens
and packaging of both parties); D (evidence of industry practice).

Commentary. The authorities for each heading: Bongrain International (American) Corp. v. Delice de France, Inc., 811 F.2d 1479 (Fed. Cir. 1987) (parties "are in a much better position to know the real life situation than bureaucrats or judges"); N.A.D. (competitors that "clearly thought out their commercial interests"); Four Seasons (agreement constituting "far more than mere 'consent'"); In re Wacker Neuson SE (T.T.A.B. 2010) (consent removes the doubt presumption); and the American Cruise Lines and Dare Foods decisions cited above. Build the record before any appeal, because the Board's record generally closes when the appeal is filed; appeals beyond the Board run under 15 U.S.C. § 1071. The response process is in Responding to a Trademark Office Action Checklist: A Practical Checklist.

Template 18: Post-signing administration record

Purpose: keep the agreement alive inside the business. Owner: each party's in-house legal or brand team. When to use: on signing, then at every launch, rebrand, acquisition, and foreign filing.

Commentary. Most breaches are accidents by people who never saw the agreement. Informal tolerance is no substitute for documented terms: in Kellogg Co. v. Exxon Corp., 209 F.3d 562 (6th Cir. 2000), decades of coexisting tigers ended in litigation once one company's use moved toward the other's products. Pair this record with maintenance diaries from the Trademark Maintenance and Renewal Checklist: A Practical Checklist and the launch review in the Rebrand Toolkit: Clearance Memos, Transition Plans, and Legacy Mark Maintenance Records.

The Halcyon example, completed

Ruth Adeyemi sends Template 2 the week after the refusal and requests an extension of the response period. Marcus Feld's client is receptive but wants protection for its planned smart mattress. The term sheet (Template 4) adopts functional fields, with Variant B of Template 6 reserving "smart mattresses and mattress-integrated sleep sensors" to Halcyon Sleep, and Variant C for anything unallocated. Template 7 fixes the logos and bars use of HALCYON alone on new products. Territory is irrelevant, so Template 8 is omitted. Under Template 9, Halcyon Audio amends its identification to exclude non-electronic ear plugs, and Halcyon Sleep agrees to sign the short-form consent. Templates 11 through 16 go into the long form with a 10-business-day confusion notice, a no-challenge covenant limited to confusion-based grounds with an abandonment carve-out, a 30-day cure, mediation then court in Ohio, an acquirer-confirmation clause, and the free-competition and no-license clauses. Ruth files the short-form consent (Template 10), a declaration on channels and price points, and a response built on Template 17. The examining attorney withdraws the refusal. Both companies complete Template 18. Two years later, Halcyon Audio proposes a "sleep sound pillow speaker," which might fall in either field; the Template 6 Variant C process produces an agreement that it will be sold as HALCYON AUDIO PILLOW SPEAKER, never with the moon logo, and only through electronics channels.

This document is general information, not legal advice for any particular situation. Adapt every template to the governing law, the facts, and current USPTO and TTAB practice before use.

Related Documents

Related Articles

• Trademark Coexistence and Consent Agreements: How Rivals Share a Name and Persuade the USPTO: the doctrine behind each template.
• Trademark Licensing and Quality Control: How Naked Licensing Kills a Brand: why Template 16's no-license clause matters.
• Settlement Negotiation Tactics: Principled Negotiation, Anchoring, and Handling Hardball in Litigation: negotiation methods for using these documents.
• Protecting a Trademark Abroad: The Madrid Protocol, Territoriality, and Abitron v. Hetronic: territoriality for global clauses.

Related Guides

• Negotiating a Trademark Coexistence Agreement: A Practical Guide: when and how to use each template.
• Drafting and Administering a Trademark License: A Practical Guide: drafting any license-back.
• Trademark Cease-and-Desist Letters: Sending and Responding: A Practical Guide: harder-edged correspondence when Template 2 fails.

Related Checklists

• Trademark Coexistence and Consent Agreement Checklist: A Practical Checklist: task-by-task review of every template.
• Responding to a Trademark Office Action Checklist: A Practical Checklist: filing Templates 10 and 17.
• Trademark Likelihood-of-Confusion Analysis: A Practical Checklist: the analysis behind Template 1.
• Recording a Trademark Assignment: A Practical Checklist: recording under Template 15.

Related Toolkits

• Settlement Toolkit: Term Sheets, Releases, Offers of Judgment, and Enforcement: releases and settlement enforcement.
• TTAB Practice Toolkit: Oppositions, Cancellations, and the Trademark Trial and Appeal Board from Pleading to Appeal: Board papers beyond Template 3.
• Brand Licensing Toolkit: License Terms, Quality Programs, and Audit Rights: license-back terms.
• Settlement Negotiation Toolkit: Case Valuation Worksheets, Concession Plans, and Offer Letters: valuation and concession planning.
• Global Trademark Portfolio Toolkit: Filing Matrices, Bad-Faith Registration Responses, and Watch Programs: global filings under Template 8.