Negotiating a Trademark Coexistence Agreement: A Practical Guide

Summary. This guide walks both sides of a trademark conflict, the party that needs permission and the party asked to give it, through negotiating a coexistence agreement from first contact to signed document and USPTO filing. It begins with the threshold decisions: whether coexistence is realistic, what each side's alternatives are, and which clocks are running at the USPTO, the Trademark Trial and Appeal Board, or in court. Thirteen numbered steps then cover mapping rights, valuing the litigation alternative, opening talks under Rule 408, building a term sheet, negotiating field-of-use, presentation, channel, and territorial terms, screening for antitrust and naked licensing risk, protective covenants, duration and successors, drafting a consent the USPTO will accept, closing and filing, and administering the deal afterward. Each step states what to do, why, the governing authority, pitfalls, timing, and cost. A timeline and cost table, a worked example in which a scheduling-software company settles an opposition brought by a chain of physical therapy clinics, common mistakes, an FAQ, and takeaways close the guide.

Priya Raman founded Juniper Labs in Austin four years ago to build scheduling software for outpatient clinics. Last spring the company applied to register JUNIPER HEALTH for its software and the hosted platform behind it. The application sailed through examination and was published for opposition. Then, on the last day of an extension, a notice of opposition arrived from Juniper Wellness Group, a Denver company that runs fourteen physical therapy clinics and owns a federal registration for JUNIPER WELLNESS for physical therapy services. The notice pleads likelihood of confusion under Section 2(d). It also pleads, in a paragraph Priya reads three times, that Juniper Wellness "intends to offer digital scheduling and telehealth tools to its patients."

Priya's lawyer explains the choices. Juniper Labs can answer and fight a proceeding that will take a year or two and cost more than its annual marketing budget. It can abandon the application and keep using the name without a registration, which leaves the dispute unresolved and the company's brand exposed. It can rebrand. Or it can negotiate an agreement with Juniper Wellness under which both companies keep their names, the opposition is withdrawn, and each side gets specific promises that protect what it actually cares about.

This guide is about the last option, and about how to get it done well from either side of the table. The doctrine behind it (why the USPTO gives weight to these agreements and where the limits are) is explained in Trademark Coexistence and Consent Agreements: How Rivals Share a Name and Persuade the USPTO. This guide is the process.

The short answer

• Coexistence works when the businesses are genuinely different and both sides want to keep their names. Identical marks for identical goods in the same channels rarely coexist; similar marks for different goods, buyers, or presentation often can.
• Value the alternatives first. Each side should know what an opposition, cancellation, or lawsuit would cost and how it would likely end. Agreements are reached when both sides prefer the deal to their best alternative.
• Talk under protection. Mark communications as settlement communications under Fed. R. Evid. 408, get the TTAB proceeding suspended or USPTO deadlines extended, and agree on confidentiality.
• Negotiate fields, presentation, and channels, not markets. Restrictions on how each mark is used, tied to avoiding confusion, are enforceable and survive antitrust review under Clorox Co. v. Sterling Winthrop, Inc., 117 F.3d 50 (2d Cir. 1997). Restrictions on what or where a party may sell under any name are a different matter.
• Write the USPTO consent to be "clothed." Facts, undertakings, cooperation, and a match between the agreement and the identifications, following In re Four Seasons Hotels Ltd., 987 F.2d 1565 (Fed. Cir. 1993) and avoiding the problems in In re Mastic Inc., 829 F.2d 1114 (Fed. Cir. 1987).
• Draft for change. New products, acquisitions, online sales, foreign expansion, and bankruptcy are where agreements are tested. Provide for each before signing.
• Expect weeks, not months, for a simple consent; one to three months for a full settlement. Costs are typically a fraction of contested TTAB or court proceedings.

Before you start: six decisions

1. Is coexistence realistic?

Start with a candid likelihood-of-confusion assessment under the factors in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). The most important are the similarity of the marks, the relatedness of the goods or services, the channels of trade and buyers, the strength of the senior mark, and any actual confusion. Coexistence is easy when the goods are different and the marks look different in use. It is hard, and sometimes impossible at the USPTO, when the marks are nearly identical and the goods are the same, as In re Bay State Brewing Co. (T.T.A.B. 2016) shows. Use Trademark Likelihood-of-Confusion Analysis: A Practical Checklist for the analysis.

2. Which side are you on, and what do you need?

The party seeking permission (the applicant facing a refusal, the junior user facing a demand, or the defendant in an opposition) needs a registration, freedom to operate, or both. The party asked to consent (the registrant, senior user, or opposer) needs assurance that its core market is safe and that its own registrations will not be attacked. Many disputes are symmetrical: both parties have registrations, both have use, and both have something to give.

3. What clocks are running?

The procedural detail for opposition practice is in Filing a TTAB Notice of Opposition: A Practical Checklist, and for cancellation in Petitioning to Cancel a Trademark Registration: A Practical Checklist.

4. Who has authority, and who will live with the deal?

Coexistence agreements bind businesses for decades. The negotiator needs authority from someone who understands the product roadmap, not just the legal dispute. Before the first call, ask the client: what products might you launch under this name in the next ten years, in which countries, through which channels? The answer defines what you cannot give away.

5. Is this a competitor?

If the parties compete, or could compete, the agreement is a horizontal agreement and needs an antitrust screen (Step 7). Keep commercial information exchanged in negotiation to what is needed to define the fields, and do not discuss prices, customers, or output.

6. Is the real problem ownership or licensing?

Some disputes that look like coexistence problems are ownership disputes (two co-founders who each claim the brand) or licensing disputes (a former licensee that kept using the mark). Those need different tools. See Resolving a Trademark Ownership Dispute: A Practical Guide and Drafting and Administering a Trademark License: A Practical Guide.

Step 1: Map both parties' rights and use

What to do. Build a rights map for both sides. For each mark: registrations and applications (number, goods and services as identified, filing and registration dates, basis, status, maintenance deadlines), common-law use (first use dates, geographic areas, channels, customers, forms of the mark, trade dress), domain names and social media handles, foreign rights, and any prior agreements or disputes. Collect evidence of actual confusion, or its absence, with dates and details. Do the same for the other side using public records, the USPTO database, websites, and a commercial investigation if the stakes justify one.

Why. Leverage in a coexistence negotiation comes from rights. A federal registration gives nationwide constructive notice and priority under 15 U.S.C. § 1057 and § 1072, and evidentiary presumptions under § 1115. An incontestable registration under § 1065 cannot be challenged as merely descriptive, as Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985) held. Common-law rights in a remote territory may survive against a registrant under United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918) and the limited-area defense of Section 33(b)(5). A party that can show an earlier first use date, possibly through tacking (a jury question under Hana Financial, Inc. v. Hana Bank, 574 U.S. 418 (2015)), may hold the stronger hand.

Pitfalls. Clients overstate their first use dates and understate the other side's. Check maintenance status: a registration with a Section 8 declaration due soon under 15 U.S.C. § 1058 may be vulnerable, and nonuse for three years creates a presumption of abandonment under § 1127. Look for vulnerabilities in your own portfolio before the other side does. The ownership-side review is in Trademark Ownership Audit Checklist: A Practical Checklist.

Timing and cost. One to two weeks. Mostly internal time plus database searches; an investigation adds cost.

Step 2: Value the litigation alternative

What to do. For each side, estimate the likely outcome, cost, and duration of the realistic alternatives: an ex parte appeal of a refusal, an opposition or cancellation, an infringement suit, a rebrand. Assign rough probabilities. Then identify each side's non-litigation interests: launch timing, investor diligence, a pending acquisition, customer relationships, a desire to avoid publicity.

Why. A negotiated agreement is rational only if it beats each side's best alternative. Knowing your own alternative tells you when to walk away; estimating the other side's tells you what they will accept. Remember the stakes of a Board decision: under B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138 (2015), a TTAB likelihood-of-confusion finding can preclude relitigation in court when the usages are materially the same. Courts outside the Federal Circuit apply their own confusion factors, such as those in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961) and AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).

Pitfalls. Overconfidence on both sides. Ignoring the cost of a rebrand, which is often the real alternative for the junior user, and the cost of a weakened mark, which is the real risk for the senior user if it litigates and loses. Valuation methods are set out in Planning and Running a Litigation Settlement Negotiation: A Practical Guide, and a worksheet is in the Settlement Negotiation Toolkit: Case Valuation Worksheets, Concession Plans, and Offer Letters.

Timing and cost. A few days. A short written assessment to the client is worth the time.

Step 3: Make first contact and set ground rules

What to do. Decide who calls whom. Business-to-business calls often work best for first contact between companies that have coexisted peacefully; lawyer-to-lawyer contact works best once a proceeding is pending. In the first written communication, state that it is a confidential settlement communication under Rule 408. Propose a short confidentiality agreement if business information will be exchanged. In a TTAB proceeding, file a joint or consented motion to suspend for settlement. At the USPTO, request any available extension. In litigation, stipulate to extend deadlines.

Why. Rule 408 bars use of compromise offers and statements made in negotiations to prove or disprove the validity or amount of a disputed claim, but it has exceptions and does not make communications privileged for every purpose. Confidentiality must be contracted for. Suspension and extensions keep the negotiation from being overtaken by deadlines.

Pitfalls. A first letter that reads like a cease-and-desist letter can end the conversation, and an aggressive one can provoke a declaratory judgment action. The tone of first contact should match the goal; see Trademark Cease-and-Desist Letters: Sending and Responding: A Practical Guide. Do not assume a suspension tolls statutory deadlines such as the five-year limit for cancellation under Section 14.

Timing and cost. One to two weeks. Low cost.

Step 4: Build a term sheet

What to do. Before drafting a full agreement, agree on a one- or two-page term sheet. It should cover: the marks and registrations at issue; the field allocated to each party; presentation requirements; channel or customer commitments, if any; territory, if relevant; consents to use and register; no-challenge covenants; cooperation on confusion; enforcement against third parties; consideration, if any; dispute resolution; duration, termination, and assignment; and the USPTO and TTAB filings that will follow. Mark it non-binding except for confidentiality.

Why. A term sheet surfaces deal-breakers early and keeps the drafting from becoming the negotiation. It also forces the business people to confront the future-products question before lawyers spend money on definitions.

Pitfalls. Leaving "fields" vague at the term sheet stage ("health-related services" versus "software") only defers the fight. If the parties cannot agree on a field line in a term sheet, they will not agree on it in a contract. A template is in the Coexistence Agreement Toolkit: Term Sheets, Consent Agreements, and Field-of-Use Clauses.

Timing and cost. One to three weeks of exchanges. Moderate cost, most of it well spent.

Step 5: Negotiate the field-of-use and presentation terms

What to do. Define each party's field in terms of what customers buy, not the party's current product list. Use positive definitions ("software for scheduling, intake, and billing sold to healthcare providers") plus exclusions ("excluding the provision of physical therapy, rehabilitation, or other healthcare services"). Decide what happens to products in neither field: reserved to one party, open to both with notice and consultation, or available only under a different mark. Then negotiate presentation: the form in which each party will use the shared term (with a house mark, a distinguishing word, a logo, a color scheme), and what neither will do (adopt the other's design elements, use the shared term alone, suggest affiliation).

Why. The field definitions are the agreement. In Times Mirror Magazines, Inc. v. Field & Stream Licenses Co., 294 F.3d 383 (2d Cir. 2002), a 1984 agreement gave one party exclusive worldwide rights in FIELD & STREAM for "apparel," defined to exclude jewelry and footwear, and gave the magazine rights in publications and in hunting- and fishing-related products it had previously sold. Years of litigation followed about products in between, and the court held that the parties' rights were "governed by their agreements," with no residual common-law right outside them. Presentation terms matter at the USPTO too: the agreement in Four Seasons succeeded in part because it fixed the exact forms (FOUR SEASONS BILTMORE or SANTA BARBARA BILTMORE) in which one party would use the shared word.

Authority and limits. Restrictions on use of a mark, tied to avoiding confusion, are analyzed under the antitrust rule of reason (Step 7). 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), so a field line that matters for registration must also appear in the identifications (Step 11). A standard character registration covers the word in any stylization, as In re Viterra Inc., 671 F.3d 1358 (Fed. Cir. 2012) holds, so presentation commitments help with the marketplace and the examining attorney's assessment but do not narrow a standard character registration.

Pitfalls.

• Technology-based definitions age quickly ("CD-ROMs," "desktop software"). Define by function and customer.
• "Related goods" language without a definition invites litigation.
• Presentation commitments that one side cannot meet in every medium (an app icon, a social media handle, a voice assistant) will be breached. Address digital uses specifically: domain names, handles, keyword advertising, app store listings.
• Avoid promises about the other party's goods you cannot verify.

For the party seeking permission. Give up fields you do not need; hold onto the ones you might. Offer presentation commitments, which cost little, before field concessions.

For the party asked to consent. Reserve your expansion fields now. A senior user that agrees to a narrow field for itself may find that the junior user's registration later blocks its own expansion.

Timing and cost. This is the heart of the negotiation and can take several rounds.

Step 6: Handle territory with care

What to do. If the parties' separation is geographic (two regional businesses with the same name), decide whether the solution is a concurrent use registration, a field or presentation solution that works nationally, or simply an agreement on use without a registration solution. If the parties choose concurrent use, prepare a concurrent use application specifying the areas claimed and the other party's areas, and plan for the registrant's corresponding amendment or a concurrent use proceeding.

Why. A private promise to stay in one region does not narrow a nationwide application. In Bay State, the applicant agreed to use TIME TRAVELER BLONDE only in New England and New York, but its application sought a nationwide registration, and the registrant remained free to sell in the same states. The Board affirmed the refusal, noting that a nationwide registration would give presumptive nationwide rights and that the register "should reflect . . . the realities of the marketplace." The statutory mechanism for territorial registrations is the proviso to 15 U.S.C. § 1052(d), implemented by the rules in 37 C.F.R. Part 2 and the Board's authority under 15 U.S.C. § 1068. Concurrent lawful use generally must predate the earliest relevant filing date, but the statute waives that requirement when the owner of the conflicting application or registration consents.

Authority. In In re Beatrice Foods Co., 429 F.2d 466 (C.C.P.A. 1970), two users of HOMESTEAD settled an opposition by dividing the country; the court held that the Office must determine the territorial limits on the facts as they exist when registrability is decided, and that the parties' own efforts to solve the problem of public confusion "should be given serious consideration." Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512 (C.C.P.A. 1980) applied the framework to two hot dog restaurant businesses. In Gray v. Daffy Dan's Bargaintown, 823 F.2d 522 (Fed. Cir. 1987), a junior user who admitted using the mark in the senior user's trading area could not obtain a concurrent use registration. In Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270 (Fed. Cir. 1988), a settlement in which one bank agreed not to object to the other's use everywhere except Illinois supported reversal of the Board's denial of a concurrent registration. The common-law background is in Tea Rose-Rectanus and the Geographic Scope of Common-Law Trademark Rights: A Practical Guide.

Pitfalls. Online sales and national advertising erode geographic lines. A territorial agreement must address websites, e-commerce shipping, social media, and national advertising explicitly (the Four Seasons agreement expressly allowed worldwide advertising). A restriction on where a party may sell its products, rather than where it may use a mark, raises antitrust risk.

Timing and cost. A concurrent use proceeding adds months and cost; a negotiated, consented concurrent use application is the fastest path.

Step 7: Screen for antitrust risk

What to do. Review the draft terms against a simple test: does each restriction limit how a mark is used, or does it limit competition itself? Remove or narrow any term that restricts the products a party may sell under any brand, the prices it may charge, the customers it may serve, or the territories where it may sell products under other marks. Add an express statement that each party remains free to compete in any market under marks other than the shared term.

Why. Section 1 of the Sherman Act, 15 U.S.C. § 1, prohibits unreasonable restraints of trade. Trademark agreements used as cover for dividing markets are illegal, as in Timken Roller Bearing Co. v. United States, 341 U.S. 593 (1951), and horizontal territorial allocations are per se unlawful under Palmer v. BRG of Georgia, Inc., 498 U.S. 46 (1990). But agreements that regulate how a competitor may use a competing mark are judged under the rule of reason. In Clorox, restrictions on how PINE-SOL could be advertised and which disinfectant products could carry the name survived because they did not foreclose competition; the Second Circuit described trademark agreements as "favored in the law." In 1-800 Contacts, Inc. v. FTC, 1 F.4th 102 (2d Cir. 2021), the court applied the rule of reason to trademark settlements restricting keyword advertising and vacated the FTC's order. Settlements of IP disputes are not immune from scrutiny, as FTC v. Actavis, Inc., 570 U.S. 136 (2013) shows for patents.

Pitfalls. Keyword advertising restrictions, non-solicitation of customers, and "stay out of my state" clauses deserve particular care. Exchanges of competitively sensitive information during negotiation create their own risk. For more, see Antitrust Compliance for Distribution and Pricing: Resale Price Maintenance, Colgate, and Territory Restrictions.

Timing and cost. A short review by counsel with antitrust experience. Global agreements need local competition law review.

Step 8: Make sure you are not creating a license

What to do. Check that each party is recognized as owning and using its own mark, under its own control. Delete any language granting one party permission to use "the other party's mark." If the parties genuinely want one of them to use the other's mark for some product (for example, a co-branded product or a license-back in an overlapping field), split that piece into a separate license with quality control provisions.

Why. A license without quality control can result in abandonment. The Lanham Act counts use by "related companies" controlled by the owner as the owner's use under 15 U.S.C. § 1055, and treats a mark as abandoned when the owner's course of conduct causes it to lose significance as a mark under § 1127. Courts have found naked licensing in Barcamerica International USA Trust v. Tyfield Importers, Inc., 289 F.3d 589 (9th Cir. 2002) and FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509 (9th Cir. 2010), building on Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959). Mastic made the point directly: where the goods are likely to be attributed to the same source, "a license (not merely a consent) is necessary to cure the conflict."

Pitfalls. Co-marketing, joint websites, or statements of affiliation after signing can convert coexistence into something the agreement never contemplated. The license framework is in Trademark Licensing and Quality Control: How Naked Licensing Kills a Brand and Trademark License and Quality Control Checklist: A Practical Checklist.

Timing and cost. Part of drafting review. Low cost.

Step 9: Negotiate the protective covenants

What to do. Negotiate the covenants that give each side security:

• Consents to use and register within each party's field, with an obligation to sign any further consents or declarations the USPTO or foreign offices require.
• No-challenge covenants: neither party will oppose, petition to cancel, seek to restrict, or sue over the other's use and registration within its field.
• Cooperation on confusion: prompt notice of any actual confusion, a meeting within a set period, and reasonable remedial steps (redirecting misdirected inquiries, clarifying marketing, adjusting presentation).
• Third-party enforcement: whether each party may enforce against third parties in its own field, whether the other must cooperate, and whether either may object to third-party uses in the other's field.
• Notice and cure: written notice of breach and a cure period before termination or suit, with an exception for emergency injunctive relief.
• Dispute resolution: negotiation, then mediation, then litigation or arbitration; governing law; venue.
• Remedies: specific performance and injunctive relief, a stipulation that breach of the field and presentation terms causes irreparable harm, and preservation of trademark claims.

Why and authority. No-challenge covenants in trademark settlements are generally enforced. In Beer Nuts, Inc. v. King Nut Co., 477 F.2d 326 (6th Cir. 1973), a defendant that had recognized the validity of BEER NUTS in an earlier settlement could not later argue that the mark was descriptive; the court held that the public interest was "not so great that it should take precedence over the rule of the law of contracts." Patent law's contrary policy in Lear, Inc. v. Adkins, 395 U.S. 653 (1969) has generally not been extended to trademarks. Breach outside a permitted field can support infringement claims under 15 U.S.C. § 1114 and § 1125(a), with injunctions under § 1116 and monetary relief under § 1117. Courts consider a stipulation of irreparable harm but decide preliminary relief for themselves under Fed. R. Civ. P. 65. Arbitration clauses are enforceable under 9 U.S.C. § 2, but only the USPTO or a court under 15 U.S.C. § 1119 can cancel or restrict a registration, so the agreement should oblige the parties to make the filings an award requires.

Pitfalls. A release that covers only past claims leaves future conduct open, which is usually what both sides intend, but the release's scope must be stated precisely. Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc., 590 U.S. 405 (2020) arose from years of litigation over a 2003 trademark settlement and its release. A cooperation clause without deadlines is a wish. Settlement drafting generally is covered in Drafting a Settlement Agreement and Release: A Practical Guide.

Timing and cost. One to two drafting rounds.

Step 10: Settle duration, termination, assignment, and the bad days

What to do. Address:

• Duration. Most coexistence agreements are perpetual, or last as long as both parties use their marks. Avoid termination at will.
• Termination. For uncured material breach, on abandonment of a party's mark (with a definition), or by mutual agreement. State what survives termination (usually the release and confidentiality, and sometimes the no-challenge covenant).
• Assignment and successors. The agreement binds and benefits successors and assigns of the marks; rights under it may be assigned only with the marks and goodwill; any assignee must agree in writing to be bound.
• Change of control. Whether an acquisition of either party triggers notice, a right to renegotiate specified terms, or nothing.
• Bankruptcy. Acknowledge that the covenants run with the marks, and consider how the agreement will be treated if a party files.

Why and authority. Trademarks are assigned with goodwill under 15 U.S.C. § 1060. Agreements are routinely enforced against successors: Clorox involved agreements signed by predecessors decades earlier, and Beer Nuts enforced a contract stated to bind assigns. In bankruptcy, a coexistence agreement with continuing obligations 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 operates as a breach and does not rescind rights already granted. Whether an agreement is executory at all may depend on the remaining performance, as in In re Exide Technologies, 607 F.3d 957 (3d Cir. 2010). See Intellectual Property Licenses in Bankruptcy: Section 365(n), Mission Product, and Protecting Your License.

Pitfalls. A small company that signs an agreement assuming its counterparty will stay small. A change-of-control clause that gives one party a veto over the other's sale, which the other side will never accept. An abandonment-termination trigger without a definition of abandonment.

Timing and cost. Usually resolved in the same drafting rounds as Step 9.

Step 11: Draft the USPTO consent and fit the register

What to do. If the agreement must persuade the USPTO, prepare a short-form consent for filing (or plan to file the long-form agreement with commercial terms redacted, where permitted). The filed document should:

1. Be signed by both parties, by authorized officers.
2. Consent to both use and registration of the specific mark for the specific goods or services in the application.
3. State facts, not conclusions: the differences in goods, customers, channels, and presentation; the length of coexistence; the absence of known confusion and how the parties would know of it.
4. Recite the undertakings that preserve those differences: field limits, presentation requirements, non-association covenants.
5. Include a cooperation clause for any actual confusion.
6. State that the parties believe confusion is unlikely, without conceding that it would be likely absent the agreement.

Then fit the register. Amend the identification of goods or services to reflect the field line where the rules permit (amendments may narrow but not broaden an identification). If necessary, ask the registrant to narrow its registration. File the consent with the office action response, with supporting declarations about channels and customers.

Why and authority. The tenth DuPont factor makes agreements between the parties relevant evidence, and the Federal Circuit has repeatedly reversed the Board for discounting detailed agreements: in In re N.A.D. Inc., 754 F.2d 996 (Fed. Cir. 1985), where competitors in the anesthesia equipment field had "clearly thought out their commercial interests"; in Bongrain International (American) Corp. v. Delice de France, Inc., 811 F.2d 1479 (Fed. Cir. 1987), where a cheese company and a bakery had agreed to stay out of each other's goods; and in Four Seasons. The Board has followed those decisions in precedential opinions such as In re American Cruise Lines, Inc. (T.T.A.B. 2018), In re Wacker Neuson SE (T.T.A.B. 2010), and In re Dare Foods Inc. (T.T.A.B. 2022). By contrast, Mastic affirmed a refusal where the consent was a unilateral statement that recited the DuPont factors without facts and consented only to registration, and Bay State affirmed one where the agreement allowed overlapping use and conceded confusion absent its terms. The TMEP's section on consent agreements (TMEP § 1207.01(d)(viii)) reflects the same distinction between "naked" and "clothed" consents.

On the register, the Board reads identifications as written: Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317 (Fed. Cir. 2014) refused to read real-world limits into an unrestricted identification, and In re Shell Oil Co., 992 F.2d 1204 (Fed. Cir. 1993) is to the same effect. A restriction in the identification is considered, but it must actually separate the goods, as In re i.am.symbolic, llc, 866 F.3d 1315 (Fed. Cir. 2017) illustrates. The rules governing amendments and consents are in 37 C.F.R. Part 2.

Pitfalls. A filed consent is public. Do not put payments, releases, or sensitive business terms in it. Do not file a draft that the other side has not signed. Do not let the response deadline pass while waiting for signatures. The office action process is laid out in Responding to a Trademark Office Action Checklist: A Practical Checklist, and the full set of consent terms is in the Trademark Coexistence and Consent Agreement Checklist: A Practical Checklist.

If the refusal is maintained. Request reconsideration with additional evidence, then appeal to the Board. Build the record before appeal, because the Board's record generally closes with the appeal. A later appeal to the Federal Circuit or a civil action is available under 15 U.S.C. § 1071.

Timing and cost. A consent can be drafted in days once terms are agreed. Office action response costs are modest; an appeal adds significant cost.

Step 12: Close and file

What to do. Prepare a closing checklist: signature blocks and authority, exhibits (lists of registrations, sample presentations), effective date, and every filing the deal requires. In a TTAB opposition, the opposer files a withdrawal (with the applicant's consent if an answer has been filed, so that it is not treated as a withdrawal with prejudice by default) or the parties file a stipulated dismissal, together with any amendment to the application that the settlement requires. In a cancellation, the petitioner withdraws or the registrant files any agreed amendment or partial surrender. In federal court, file a stipulation of dismissal under Fed. R. Civ. P. 41, and consider whether the court should retain jurisdiction to enforce the settlement. Record any assignment that is part of the deal.

Why. Many deals fail after signing because the filings were never made, or were made out of order (for example, an opposition withdrawn before the applicant amended its identification as promised). Board rules on withdrawal and dismissal, and the effect of each on later proceedings, appear in 37 C.F.R. Part 2 and the TTAB Manual of Procedure. Dismissal with prejudice can have preclusive effect; dismissal without prejudice may not end the dispute.

Pitfalls. Sequencing. Make each party's filing a condition of the other's, or have both filed by one side's counsel with the other's signed consent. If a court is to enforce the settlement, it must retain jurisdiction expressly or incorporate the terms into its order. For TTAB settlement mechanics, see the TTAB Practice Toolkit: Oppositions, Cancellations, and the Trademark Trial and Appeal Board from Pleading to Appeal; for assignment recording, see Recording a Trademark Assignment: A Practical Checklist.

Timing and cost. One to two weeks after signing.

Step 13: Administer the agreement after signing

What to do. Enter the agreement into the client's trademark portfolio records: the fields, presentation requirements, notice obligations, cooperation deadlines, and termination triggers. Brief marketing, product, and business development teams. Add a step to launch and rebrand reviews: "Does this product, name, or campaign touch a coexistence agreement?" Keep a log of any instance of possible confusion and handle it under the cooperation clause. Diary renewals and maintenance filings for the registrations the agreement covers, using Maintaining Trademark Registrations. On any acquisition, disclose the agreement in diligence and confirm that the buyer assumes it.

Why. Most breaches are accidents. A product manager who has never seen the agreement launches a product in the other party's field, and the relationship that took months to build is gone. Informal tolerance is not a substitute for documented terms: in Kellogg Co. v. Exxon Corp., 209 F.3d 562 (6th Cir. 2000), decades of coexisting tigers did not establish acquiescence when one company moved into the other's product area, and the parties litigated what a written field line could have settled.

Pitfalls. Treating the agreement as a closed file. Rebrands are a common trigger; see Running a Rebrand: A Practical Legal Guide.

Timing and cost. Ongoing, minimal.

Timeline and cost overview

Costs vary widely by counsel, market, and complexity; the table indicates relative magnitude rather than specific figures. The comparison is usually decisive: a negotiated agreement typically costs a small fraction of a contested proceeding.

Worked example: Juniper Labs and Juniper Wellness

The facts are invented. They follow the thirteen steps.

Step 1: The rights map. Juniper Labs' counsel, Tomas Lindqvist, builds the map. Juniper Labs: first use of JUNIPER HEALTH in March four years ago; application covering scheduling and intake software in Class 9 and software-as-a-service in Class 42; 210 clinic customers in 19 states; sales through direct enterprise sales and two integration marketplaces; a green leaf logo. Juniper Wellness: JUNIPER WELLNESS registered six years ago for physical therapy services in Class 44, now past its Section 8 deadline with a declaration on file; fourteen clinics in Colorado and Utah; patients find it through physician referrals and local search; a blue mountain logo; a patient portal licensed from a third-party vendor that does not use the JUNIPER name. No known instance of confusion. One possible issue: two patients of a Juniper Labs clinic customer posted reviews that mentioned "the Juniper app," which Tomas flags but cannot connect to Juniper Wellness.

Juniper Wellness's counsel, Hannah Brooks, builds her own map and adds a fact Tomas did not know: her client has a written plan, approved by its board, to launch a branded patient app within two years.

Step 2: Valuing the alternatives. Tomas tells Priya that the opposition is defensible (different goods and services, different buyers, sophisticated institutional purchasers on Juniper Labs' side) but not a sure win, because the Board will read the identifications broadly and may see software for clinics as related to clinic services. A contested opposition would likely take eighteen months or more and a substantial share of the company's legal budget, and a loss could affect any later infringement suit under B&B Hardware. A rebrand would cost far more. Hannah tells her client that the opposition has real merit but that a win would not stop Juniper Labs from using its name, and that the client's real interest is its future patient app, which a coexistence agreement could protect more directly than a Board decision.

Step 3: First contact. The two CEOs speak first. Then Tomas sends a letter marked "Confidential settlement communication under Fed. R. Evid. 408," proposing a 90-day suspension. The parties file a consented motion to suspend for settlement, which the Board grants.

Step 4: The term sheet. Within three weeks the lawyers exchange a two-page term sheet. The core proposal from Juniper Labs: it will use JUNIPER HEALTH only for software and services sold to healthcare providers, never for healthcare services; Juniper Wellness will withdraw the opposition and consent to registration. Hannah's response adds three asks: protection for her client's future patient app, a ban on Juniper Labs using JUNIPER alone, and a no-challenge covenant protecting the JUNIPER WELLNESS registration.

Step 5: Fields and presentation. The negotiation turns on patient-facing software. Juniper Labs' platform includes a white-labeled patient scheduling page that clinics embed on their sites. Juniper Wellness's planned app would let its own patients book appointments. The parties agree on a line drawn by the customer: Juniper Labs' field is software and software services licensed to healthcare providers and their staff, including patient-facing features that appear under the provider's own brand. Juniper Wellness's field is healthcare services and any software or app offered by Juniper Wellness to its own patients. Juniper Labs agrees that any patient-facing screen will display the provider's brand and will show JUNIPER HEALTH, if at all, only in a "powered by" line. Neither party will use JUNIPER alone; Juniper Labs will always use JUNIPER HEALTH with its leaf logo, and Juniper Wellness will always use JUNIPER WELLNESS with its mountain logo. New categories go through a 45-day notice-and-consultation process.

Step 6: Territory. Not needed. Both parties operate in overlapping states, so the separation must come from fields and presentation, not geography. Hannah briefly suggests that Juniper Labs stay out of Colorado and Utah. Tomas declines: it would not help at the USPTO, as Bay State shows, and a promise not to sell software in two states looks more like market division than trademark protection.

Step 7: Antitrust screen. The parties are not competitors today, but Juniper Wellness's app plan makes them potential competitors in patient scheduling. Both counsel confirm that the draft restricts only how each party uses the JUNIPER-formative marks, and they add a clause stating that each party may offer any product or service anywhere under other marks.

Step 8: No license. An early draft said Juniper Wellness "permits Juniper Labs to use the JUNIPER mark for software." Tomas strikes it. The final text recognizes that each party owns and uses its own mark as its own source identifier, and that nothing in the agreement grants a license.

Step 9: Covenants. Mutual consents to use and register within each field, with a duty to sign further consents; mutual no-challenge covenants limited to marks used within each party's field; a cooperation clause with 10 business days for notice and 30 days to meet; a 30-day cure period; a negotiation-then-mediation step before suit; Colorado law; specific performance.

Step 10: Duration and successors. Perpetual, terminable only for uncured material breach of the field or presentation terms or by agreement; binding on successors and assigns of the marks; assignable only with the marks and goodwill. Hannah asks for a right to terminate if Juniper Labs is acquired by a healthcare provider. Tomas proposes instead that any acquirer that provides healthcare services must agree in writing not to use JUNIPER HEALTH for those services. Hannah accepts.

Step 11: The consent and the register. Juniper Labs amends its identifications to "downloadable software for scheduling, patient intake, and billing, for use by healthcare providers and their staff" in Class 9 and "software as a service featuring software for scheduling, patient intake, and billing, for use by healthcare providers and their staff; none of the foregoing being healthcare services" in Class 42. The short-form consent, signed by both companies, recites nine years of combined use, the different customers (institutional buyers versus patients), the different channels (enterprise sales and integration marketplaces versus physician referrals and local search), the presentation commitments, and the cooperation clause. It states that the parties believe confusion is unlikely and does not say that confusion would be likely without the agreement.

Step 12: Closing. Because the opposition is inter partes, Juniper Labs files the amendment with the opposer's written consent, and Juniper Wellness withdraws the opposition the same day. The Board approves the amendment, the opposition is dismissed, and the application proceeds to registration.

Step 13: Administration. Both companies add the agreement to their portfolio records. Eighteen months later, Juniper Wellness launches its patient app as JUNIPER WELLNESS with the mountain logo. Juniper Labs' sales team asks whether it can run search ads on the term "Juniper app." Tomas checks the agreement: nothing prohibits it, but the cooperation clause and good relations suggest a call first. The CEOs agree that Juniper Labs will bid on "Juniper Health" and "Juniper scheduling" but not on "Juniper app," which mostly attracts Juniper Wellness's patients. The agreement holds because it anticipated the patient-facing line.

Common mistakes

• Negotiating before mapping rights. A party that does not know its own first use dates, maintenance status, or the other side's vulnerabilities negotiates blind.
• Letting deadlines run. USPTO response periods, opposition extensions, and TTAB answer dates do not pause for talks unless an extension or suspension is in place.
• Defining fields by today's products. The future-products question is the most important one in the negotiation.
• Using territory to solve a registration problem. Geographic promises do not narrow a nationwide application. Use concurrent use or a different separation.
• Restricting competition instead of marks. Limits on what or where a party may sell under any name raise antitrust risk.
• Drafting a license by accident. Permission to use "the other party's mark" is a license and needs quality control.
• Filing a naked consent. Facts and undertakings, not a list of factors.
• Conceding confusion. Describe the differences, not the problem.
• Forgetting successors and bankruptcy. The agreement must bind the next owner and survive a party's insolvency as far as the law allows.
• Closing out of order. Make each side's filings conditional on the other's, or handle them together.

Frequently asked questions

Who should make the first approach? Usually the party that needs something: the applicant facing a refusal, or the junior user facing a demand. A business-to-business call often works better than a lawyer's letter where the parties have no history of conflict.

Should we pay for consent? Sometimes. Payment is common where the registrant gives up something real (a field it might have entered, a planned opposition) or where the applicant's need is urgent. Many consents are exchanged for restrictions rather than money. If money changes hands, decide how it is characterized (release, covenant, or transfer of rights) with tax advice.

What if the registrant refuses to consent? Consider other routes: arguing the refusal on the merits, narrowing your identification, a petition to cancel if the registration is vulnerable (for example, for nonuse or abandonment), or a rebrand. A refusal sometimes becomes a willingness once the registrant understands what restrictions you are offering.

Can a consent be revoked? A consent given in a binding agreement for consideration is generally irrevocable on its terms. A gratuitous letter of consent is weaker. Write the consent as part of a contract.

Does the agreement need to be filed with the USPTO? Only if it is meant to overcome a refusal or support an amendment or concurrent use application. Otherwise it can remain private. Some parties record it against the registrations so that successors have notice; most do not.

How do we handle foreign trademark offices? Many accept letters of consent, but their weight varies, and some offices do not accept them. Include an obligation to sign local-form consents, and coordinate with your international filing strategy; see Filing an International Trademark Application Under the Madrid Protocol: A Practical Guide.

What if confusion happens anyway? That is what the cooperation clause is for. Log each instance, notify the other party within the agreed period, meet, and adjust presentation or marketing. Persistent confusion may justify renegotiation, and the agreement can provide a process for it.

Takeaways

• Map rights and value alternatives before talking. Leverage comes from rights and from knowing what each side would face without a deal.
• Protect the negotiation with Rule 408, confidentiality, suspensions, and extensions.
• Agree on a term sheet before drafting. Settle the field line, the future-products question, and presentation early.
• Restrict how marks are used, not where or what the parties may sell. Screen for antitrust risk and avoid creating a naked license.
• Write the USPTO consent as a clothed agreement and make the identifications match the deal.
• Close in the right order, then administer the agreement as a living document.

This document is general information, not legal advice for any particular situation. Procedures, deadlines, and fees at the USPTO and the Trademark Trial and Appeal Board change; confirm current rules before relying on any timing described here.

Related Documents

Related Articles

• Trademark Coexistence and Consent Agreements: How Rivals Share a Name and Persuade the USPTO: the doctrine and case law behind every step in this guide.
• Settlement Negotiation Tactics: Principled Negotiation, Anchoring, and Handling Hardball in Litigation: negotiation methods for the talks themselves.
• Trademark Licensing and Quality Control: How Naked Licensing Kills a Brand: the risk of turning coexistence into an uncontrolled license.
• Navigating the Maze of Trademark Confusion: Key Considerations for Brand Owners: the confusion analysis that frames leverage.
• Who Owns the Brand: Trademark Ownership Disputes Between Co-Founders, Bands, Licensees, and Distributors: when the dispute is really about ownership.

Related Guides

• Planning and Running a Litigation Settlement Negotiation: A Practical Guide: structuring the negotiation and valuing the case.
• Drafting and Administering a Trademark License: A Practical Guide: when part of the deal must be a real license.
• Resolving a Trademark Ownership Dispute: A Practical Guide: the ownership alternative.
• Trademark Cease-and-Desist Letters: Sending and Responding: A Practical Guide: first-contact letters that open, rather than close, a negotiation.
• Tea Rose-Rectanus and the Geographic Scope of Common-Law Trademark Rights: A Practical Guide: territorial rights behind concurrent use.
• Drafting a Settlement Agreement and Release: A Practical Guide: the release and settlement shell.
• Running a Rebrand: A Practical Legal Guide: the alternative when coexistence fails.

Related Checklists

• Trademark Coexistence and Consent Agreement Checklist: A Practical Checklist: every term and filing as a check-off item.
• Filing a TTAB Notice of Opposition: A Practical Checklist: the opposition setting where many agreements are reached.
• Responding to a Trademark Office Action Checklist: A Practical Checklist: filing a consent with an office action response.
• Trademark Likelihood-of-Confusion Analysis: A Practical Checklist: the threshold assessment.
• Settlement Negotiation Preparation Checklist: A Practical Checklist: preparation for the negotiation sessions.

Related Toolkits

• Coexistence Agreement Toolkit: Term Sheets, Consent Agreements, and Field-of-Use Clauses: term sheet, consent, and clause templates for each step.
• Settlement Negotiation Toolkit: Case Valuation Worksheets, Concession Plans, and Offer Letters: valuation and concession worksheets.
• TTAB Practice Toolkit: Oppositions, Cancellations, and the Trademark Trial and Appeal Board from Pleading to Appeal: suspension, withdrawal, and dismissal papers.
• Brand Licensing Toolkit: License Terms, Quality Programs, and Audit Rights: quality control terms for any license-back.