Trademark Coexistence and Consent Agreement Checklist: A Practical Checklist

Summary. This checklist turns the negotiation, drafting, filing, and administration of a trademark coexistence or consent agreement into check-off tasks for both the party seeking consent and the party asked to give it. It is organized in nine phases, from the threshold assessment and rights mapping through core terms, protective covenants, long-term provisions, the USPTO consent, closing, and post-signing administration. Each item names the governing authority and adds a short practical note. Red-flag boxes highlight the problems that most often defeat agreements: naked consents, territorial promises that do not match the register, market-division terms, and accidental licenses. A deadlines table, a list of common failure points, and a short worked example close the checklist.

How to use this checklist

Work through the phases in order, but expect to loop back: a field definition negotiated in Phase 4 may require an identification amendment in Phase 7. Items marked (Seeker) are for the party that needs consent (an applicant facing a refusal, a junior user, a defendant in an opposition). Items marked (Giver) are for the party asked to consent (a registrant, senior user, or opposer). Unmarked items apply to both.

The doctrine behind each item is explained in Trademark Coexistence and Consent Agreements: How Rivals Share a Name and Persuade the USPTO. The negotiation sequence, with timing and costs, is in Negotiating a Trademark Coexistence Agreement: A Practical Guide. Templates for the documents referenced here are in the Coexistence Agreement Toolkit: Term Sheets, Consent Agreements, and Field-of-Use Clauses.

A running example appears at the end: Corvid Coffee Roasters, a Seattle roaster, and Corvid Kitchenware, a Pennsylvania cookware brand.

Phase 1: Threshold assessment

• Identify the trigger and the forum. Office action under 15 U.S.C. § 1052(d), extension of time to oppose, notice of opposition under § 1063, petition to cancel under § 1064, demand letter, or lawsuit. Note: the forum sets the clock and the filings needed to close.
• Run a likelihood-of-confusion assessment under the DuPont factors. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). Note: focus on marks, goods, channels, buyers, strength, and actual confusion; use Trademark Likelihood-of-Confusion Analysis: A Practical Checklist.
• Decide whether coexistence is realistic. Note: nearly identical marks for identical goods in the same channels and territory rarely produce an agreement the USPTO will accept; see In re Bay State Brewing Co. (T.T.A.B. 2016).
• Confirm the problem is coexistence, not ownership or licensing. Note: co-founder and former-licensee disputes need different tools; see Resolving a Trademark Ownership Dispute: A Practical Guide.
• Identify the decision makers and the business roadmap. Note: ask what products, channels, and countries the client may enter under the mark in the next ten years. That answer defines what cannot be conceded.
• (Giver) Decide whether to consent at all, and on what conditions. Note: consent is an asset; it can be traded for restrictions, a no-challenge covenant, or payment.
• (Seeker) Identify fallback options. Note: argue the refusal, narrow the identification, challenge a vulnerable registration, or rebrand; see Running a Rebrand: A Practical Legal Guide.

Phase 2: Rights mapping

• List every registration and application for both parties. Number, mark, goods and services as identified, filing and registration dates, basis, status. Note: registration gives constructive notice under 15 U.S.C. § 1072 and nationwide priority under § 1057(c).
• Check incontestability. 15 U.S.C. § 1065; Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985). Note: an incontestable registration cannot be attacked as merely descriptive.
• Check maintenance deadlines. 15 U.S.C. § 1058. Note: an upcoming Section 8 deadline or a gap in use may change leverage; three years of nonuse creates a presumption of abandonment under § 1127.
• Check the five-year window for confusion-based cancellation. 15 U.S.C. § 1064. Note: after five years from registration, a Section 2(d) challenge is generally unavailable; a standstill does not extend it.
• Document common-law use. First use dates, territories, channels, customers, forms of the mark, trade dress. Note: remote good-faith users may hold territorial rights under United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918).
• Collect evidence of actual confusion, or its absence. Note: record how each party would know of confusion (customer service logs, misdirected email, returns); "no known confusion" means more when there is a system that would have caught it.
• Inventory digital assets. Domains, social handles, app store listings, keyword advertising campaigns. Note: most post-signing disputes start online.
• Collect prior agreements and disputes. Note: an earlier agreement with a predecessor may already govern; see Clorox Co. v. Sterling Winthrop, Inc., 117 F.3d 50 (2d Cir. 1997).
• Map foreign rights. Note: rights are territorial; see International Trademark Filing Strategy Checklist: A Practical Checklist.

Phase 3: Negotiation setup

• Value each side's best alternative. Note: include the cost of a rebrand for the seeker and the risk of a weakened mark for the giver. Under B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138 (2015), a Board finding can carry into later litigation. Use Settlement Negotiation Preparation Checklist: A Practical Checklist.
• Mark communications as settlement communications. Fed. R. Evid. 408. Note: Rule 408 limits evidentiary use; it does not create confidentiality. Sign a confidentiality agreement if business information will be exchanged.
• Buy time. Request an extension of the office action response period; request extensions of time to oppose; file a consented motion to suspend a TTAB proceeding for settlement; stipulate to extend court deadlines. Note: calendar the new dates immediately.
• Agree on a standstill if no proceeding is pending. Note: include a notice period before either party sues or files a declaratory judgment action under 28 U.S.C. § 2201.
• Limit competitively sensitive exchanges. Note: share only what is needed to define fields; never discuss prices, customers, or output with a competitor.
• Prepare and exchange a non-binding term sheet. Note: settle the field line and the future-products question here, before drafting.

Phase 4: Core terms

Fields of use

• Define each party's field by what customers buy. Note: functional definitions ("cookware and kitchen tools") age better than product lists or technology terms.
• Add express exclusions. Note: "excluding coffee, tea, and other beverages" closes the gap a positive definition leaves.
• Decide what happens to products in neither field. Reserve to one party, open to both with notice and consultation, or available only under a different mark. Note: the litigation in Times Mirror Magazines, Inc. v. Field & Stream Licenses Co., 294 F.3d 383 (2d Cir. 2002) was about products between the defined fields; the court held the parties' rights were governed by their agreements.
• (Giver) Reserve your expansion fields. Note: a narrow field for yourself today may let the other party's registration block your own expansion tomorrow.
• (Seeker) Concede fields you will never need, and hold onto those you might.

Presentation

• Specify the form of each party's mark. House mark, distinguishing word, logo, color scheme. Note: the agreement in In re Four Seasons Hotels Ltd., 987 F.2d 1565 (Fed. Cir. 1993) fixed the exact forms in which the shared word would appear.
• Prohibit use of the shared term alone, if needed.
• Prohibit adoption of the other's trade dress and design elements.
• Add non-association covenants. Note: neither party will suggest affiliation, sponsorship, or common ownership.
• Address digital presentation. Domains, handles, app names and icons, keyword bidding, metadata. Note: keyword restrictions between competitors need antitrust review; see 1-800 Contacts, Inc. v. FTC, 1 F.4th 102 (2d Cir. 2021).

Channels and customers

• Describe actual channels for each party. Note: facts about channels support the consent; promises about channels are undertakings.
• Limit channel promises to what avoids confusion. Note: a channel commitment tied to how the mark appears to buyers is easier to defend than a blanket customer allocation.

Territory

• Decide whether separation is geographic at all. Note: if both parties sell nationally, territory will not solve the problem.
• If geographic, plan a concurrent use application. 15 U.S.C. § 1052(d); 37 C.F.R. Part 2; In re Beatrice Foods Co., 429 F.2d 466 (C.C.P.A. 1970). Note: the registrant's consent can waive the requirement that concurrent use predate the filing date.
• Confirm there is no overlap in the claimed areas. Gray v. Daffy Dan's Bargaintown, 823 F.2d 522 (Fed. Cir. 1987). Note: use in the other party's area defeated concurrent registration.
• Address online sales, shipping, and national advertising. Note: Four Seasons expressly permitted worldwide advertising.

Red flag: territory that does not match the register. A promise to use a mark only in certain states does not narrow a nationwide application. In Bay State, the applicant agreed to sell only in New England and New York, the registrant remained free to sell there too, and the Board held that a nationwide registration would not reflect the marketplace. Use a concurrent use application, or find a non-geographic separation.

Red flag: market division. Section 1 of the Sherman Act condemns trademark agreements that in reality divide markets, as in Timken Roller Bearing Co. v. United States, 341 U.S. 593 (1951), and horizontal territorial allocation is per se unlawful under Palmer v. BRG of Georgia, Inc., 498 U.S. 46 (1990). Restrict how marks are used, not what, where, or to whom the parties may sell under other marks. Clorox applied the rule of reason to restrictions that "merely regulate[] the way a competitor can use a competing mark."

Antitrust and licensing screen

• Confirm each restriction limits use of a mark, not competition.
• Add a free-competition clause. Note: each party may make and sell any product anywhere under marks other than the shared term.
• Remove price, output, and customer terms.
• Get local competition review for global agreements. Note: EU and other regimes apply their own tests to delimitation agreements.
• Confirm no party grants the other a right to use its mark. 15 U.S.C. § 1055; Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959). Note: each party uses its own mark as its own source identifier.
• If a license-back is genuinely needed, document it separately with quality control. Barcamerica International USA Trust v. Tyfield Importers, Inc., 289 F.3d 589 (9th Cir. 2002); FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509 (9th Cir. 2010). Note: see Trademark License and Quality Control Checklist: A Practical Checklist.

Red flag: the accidental license. Language such as "Party A permits Party B to use the CORVID mark for coffee" makes Party A a licensor without quality control. Recognize each party's right to use its own mark instead. Where the goods would be attributed to one source, In re Mastic Inc., 829 F.2d 1114 (Fed. Cir. 1987) observed that "a license (not merely a consent) is necessary."

Phase 5: Protective covenants

• Mutual consents to use and register within each field. Note: consent to both use and registration; Mastic faulted a consent to registration only.
• Further-assurances clause. Note: each party will sign additional consents, declarations, or local-form letters that the USPTO or foreign offices require.
• No-challenge covenants. Beer Nuts, Inc. v. King Nut Co., 477 F.2d 326 (6th Cir. 1973). Note: trademark courts generally enforce these; limit them to marks used within each party's field and state whether they survive termination.
• Cooperation on actual confusion. Note: deadlines for notice (for example, 10 to 15 business days) and a meeting (for example, 30 days); a list of remedial steps.
• Third-party enforcement. Note: who may enforce against third parties in which field; duty to cooperate; whether either party may object to third-party uses in the other's field.
• Release. Note: define released claims by subject and time precisely; Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc., 590 U.S. 405 (2020) arose from years of litigation over a trademark settlement's release. Use Settlement Agreement Checklist: A Practical Checklist.
• Notice and cure. Note: written notice, a cure period (often 30 days), and an exception for emergency injunctive relief.
• Dispute resolution. Negotiation, mediation, then litigation or arbitration; governing law; venue. 9 U.S.C. § 2. Note: arbitrators cannot cancel registrations; require the parties to make the filings an award requires, or reserve registration relief to a court under 15 U.S.C. § 1119.
• Remedies. Specific performance, injunctive relief under 15 U.S.C. § 1116, preservation of infringement claims under § 1114 for use outside a permitted field. Note: a stipulation of irreparable harm is persuasive but does not bind the court.

Phase 6: Long-term provisions

• Duration. Note: perpetual or for as long as both parties use their marks; avoid termination at will.
• Termination triggers. Uncured material breach; abandonment (defined); mutual agreement. Note: list what survives.
• Successors and assigns. 15 U.S.C. § 1060. Note: binds and benefits successors; assignable only with the marks and goodwill; assignee must agree in writing.
• Change of control. Note: notice, a right to renegotiate specified terms, or a commitment that an acquirer in a sensitive field will not use the shared mark in that field. Avoid vetoes over a sale.
• Bankruptcy. 11 U.S.C. § 365; Mission Product Holdings, Inc. v. Tempnology, LLC, 587 U.S. 370 (2019). Note: rejection is a breach, not a rescission; state that the covenants run with the marks. Trademarks are outside the Section 101 definition of "intellectual property," so Section 365(n) does not apply directly.
• Global scope. Note: list the countries covered, governing law, whether the agreement can be filed with foreign offices, and a duty to sign local consents. Territoriality is explained in Protecting a Trademark Abroad: The Madrid Protocol, Territoriality, and Abitron v. Hetronic.
• Consideration and tax. Note: if money changes hands, allocate it (release, covenant, transfer of rights) with tax advice.
• Confidentiality. Note: carve out the short-form consent for filing and disclosures in due diligence.

Phase 7: The USPTO consent

• Decide what to file. Note: a short-form consent for the public record, with the long-form agreement kept private, is common; Bay State describes the practice. Anything filed is public.
• Signatures by both parties. Note: a unilateral statement was treated as "naked" in Mastic.
• Consent to use and registration of the specific mark for the specific goods or services.
• Recite facts, not conclusions. Differences in goods, buyers, channels, presentation; length of coexistence; absence of known confusion and how it would be detected. Note: Mastic held that reciting the DuPont factors without underlying facts adds little; "Evidence must be submitted."
• Recite the undertakings. Field limits, presentation requirements, non-association covenants. Note: undertakings are what make a consent "clothed" under DuPont, In re N.A.D. Inc., 754 F.2d 996 (Fed. Cir. 1985), and Bongrain International (American) Corp. v. Delice de France, Inc., 811 F.2d 1479 (Fed. Cir. 1987).
• Include the cooperation clause. Note: the agreements accepted in Four Seasons and In re Dare Foods Inc. (T.T.A.B. 2022) both committed the parties to act if confusion arose.
• State that confusion is unlikely; do not concede it would be likely "unless" the agreement is followed. Note: Bay State turned in part on such a concession.
• Amend the identification to reflect the field line. Octocom Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d 937 (Fed. Cir. 1990); Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317 (Fed. Cir. 2014). Note: the Board reads identifications as written; amendments may narrow but not broaden.
• Check that any restriction actually separates the goods. In re i.am.symbolic, llc, 866 F.3d 1315 (Fed. Cir. 2017). Note: a restriction that does not change the goods, channels, or buyers does not help.
• Remember standard character marks cover all stylizations. In re Viterra Inc., 671 F.3d 1358 (Fed. Cir. 2012). Note: logo commitments help in the marketplace but do not narrow a standard character registration.
• Ask the registrant to narrow its own registration if needed. 15 U.S.C. § 1068. Note: a voluntary amendment can remove overlap that blocks the consent.
• Attach supporting evidence. Declarations on channels and customers, packaging photographs, evidence of industry practice. Note: in In re American Cruise Lines, Inc. (T.T.A.B. 2018), evidence of purchaser care and industry naming practice supported the consents.
• Cite the governing authority in the response. DuPont, Four Seasons, N.A.D., Bongrain, American Cruise Lines, In re Wacker Neuson SE (T.T.A.B. 2010), and the TMEP section on consent agreements (TMEP § 1207.01(d)(viii)). Note: the Board in Wacker Neuson noted that consent removes the basis for resolving doubt in the registrant's favor.
• File before the response deadline. Note: do not wait for signatures past the deadline; request an extension in time. The response process is in Responding to a Trademark Office Action Checklist: A Practical Checklist.
• If the refusal is maintained, build the record before appeal. 15 U.S.C. § 1071. Note: request reconsideration with added evidence; the Board record generally closes on appeal.

Red flag: the naked consent. A one-paragraph letter signed only by the registrant, consenting to registration and listing the DuPont factors, is the Mastic consent. It may be "significant additional evidence" if the record otherwise supports the applicant, but it rarely overcomes a strong refusal on its own.

Phase 8: Closing and filings

• Confirm signatory authority and entity names. Note: sign by the entities that own the marks, not affiliates.
• Attach exhibits. Schedules of marks, registrations, sample presentations.
• Sequence the filings. Note: make each party's filing conditional on the other's, or file together.
• TTAB opposition: file withdrawal or stipulated dismissal, with any agreed amendment. 37 C.F.R. Part 2. Note: after an answer, withdrawal without the applicant's written consent is generally entered with prejudice; amendments during an opposition generally need the opposer's consent. See Filing a TTAB Notice of Opposition: A Practical Checklist.
• TTAB cancellation: file withdrawal and any agreed amendment or partial surrender. Note: see Petitioning to Cancel a Trademark Registration: A Practical Checklist.
• Federal court: file a stipulation of dismissal. Fed. R. Civ. P. 41. Note: if the court is to enforce the settlement, it must retain jurisdiction expressly or incorporate the terms.
• Record any assignment. Note: see Recording a Trademark Assignment: A Practical Checklist.
• File the consent with the office action response, if not already filed.
• Confirm each filing was accepted. Note: check TSDR and TTABVUE; a deficient filing can leave the dispute open.

Phase 9: Post-signing administration

• Enter the agreement in the portfolio register. Fields, presentation rules, notice deadlines, termination triggers, counterparty contacts.
• Brief the business. Marketing, product, sales, digital, and business development teams.
• Add a coexistence check to launch and rebrand reviews. Note: see Rebrand Legal Checklist: A Practical Checklist.
• Keep a confusion log and use the cooperation clause. Note: informal tolerance is not a substitute for written terms; see Kellogg Co. v. Exxon Corp., 209 F.3d 562 (6th Cir. 2000).
• Diary maintenance filings for covered registrations. 15 U.S.C. § 1058; § 1059. Note: use Trademark Maintenance and Renewal Checklist: A Practical Checklist.
• Disclose the agreement in M&A diligence and confirm assumption by any buyer. Note: see IP Due Diligence Checklist for Mergers and Acquisitions: A Practical Checklist.
• Review the agreement before foreign filings. Note: confirm coverage and obtain local consents in time.
• Monitor the counterparty's use. Note: periodic checks of website, packaging, and new filings; a watch service catches new applications.

Deadlines table

Common failure points

1. The consent recites conclusions. Fix: state the facts and attach declarations.
2. The identification is broader than the deal. Fix: amend before filing the consent.
3. The deal is geographic but the application is national. Fix: concurrent use, or a different separation.
4. The agreement concedes confusion. Fix: describe differences; frame undertakings as preserving them.
5. A restriction limits competition rather than mark use. Fix: rewrite as a mark-use restriction and add a free-competition clause.
6. One party is permitted to use the other's mark. Fix: recognize each party's own mark; split any license into a controlled license.
7. The fields are defined by today's products. Fix: functional definitions plus a new-category process.
8. No successor or change-of-control terms. Fix: bind assigns; address acquirers.
9. Filings are made out of order or not at all. Fix: a closing checklist with conditional sequencing.
10. Nobody remembers the agreement. Fix: portfolio register and launch review.

Worked example: Corvid Coffee and Corvid Kitchenware

Corvid Coffee Roasters, a Seattle roaster, applies to register CORVID for coffee and coffee-brewing equipment, including pour-over drippers and kettles. The examining attorney cites CORVID, registered to Corvid Kitchenware of Pittsburgh for cookware, kitchen utensils, and kettles. Phase 1: the marks are identical, and kettles appear in both identifications; the rest of the goods are related but distinct. Coexistence is realistic only if the kettle overlap is resolved. Phase 2: Corvid Kitchenware's registration is four years old (still within the five-year window), and its kettles are stovetop models sold through department stores; Corvid Coffee's kettles are gooseneck pour-over kettles sold on its website and in its cafes, alongside coffee. Neither has records of confusion, and both have customer service systems that would catch it. Phase 3: the companies sign a confidentiality agreement and Corvid Coffee requests an extension of its response period. Phase 4: the term sheet gives coffee, tea, and "coffee and tea brewing equipment" to Corvid Coffee, and "cookware, bakeware, kitchen utensils, and stovetop kettles" to Corvid Kitchenware; Corvid Coffee will always use CORVID COFFEE or CORVID with its crow logo, and Corvid Kitchenware will use CORVID KITCHEN or its wordmark in a distinct serif. A proposed clause barring Corvid Coffee from selling "any kitchen products" is cut in the antitrust screen and replaced with a restriction on use of CORVID for kitchen products outside the brewing field, plus a free-competition clause. Phase 5: mutual consents, no-challenge covenants limited to each field, a 10-business-day confusion notice, 30-day cure, mediation before suit. Phase 6: perpetual, binding on successors, a change-of-control notice. Phase 7: Corvid Coffee amends its identification to "electric and manual kettles specially adapted for brewing coffee and tea, sold as brewing equipment," files a short-form consent signed by both companies with declarations on channels, and cites DuPont, Four Seasons, American Cruise Lines, and Dare Foods. Phase 8: the examining attorney withdraws the refusal. Phase 9: both companies add the agreement to their portfolio registers, and Corvid Coffee's product team adds a "coexistence check" to its launch review before releasing a branded travel mug, which the agreement places, after a consultation under the new-category clause, in Corvid Coffee's field.

This document is general information, not legal advice for any particular situation. USPTO and TTAB deadlines, fees, and procedures change; confirm current rules before relying on any period stated here.

Related Documents

Related Articles

• Trademark Coexistence and Consent Agreements: How Rivals Share a Name and Persuade the USPTO: the doctrine behind each checklist item.
• Trademark Licensing and Quality Control: How Naked Licensing Kills a Brand: the licensing line coexistence must not cross.
• Settlement Negotiation Tactics: Principled Negotiation, Anchoring, and Handling Hardball in Litigation: negotiation methods for Phase 3 and 4.
• Protecting a Trademark Abroad: The Madrid Protocol, Territoriality, and Abitron v. Hetronic: global scope issues in Phase 6.

Related Guides

• Negotiating a Trademark Coexistence Agreement: A Practical Guide: the same process as narrative steps with timing and cost.
• Drafting and Administering a Trademark License: A Practical Guide: any license-back the deal requires.
• Resolving a Trademark Ownership Dispute: A Practical Guide: when the dispute is about ownership.
• Running a Rebrand: A Practical Legal Guide: the fallback when coexistence fails.

Related Checklists

• Responding to a Trademark Office Action Checklist: A Practical Checklist: the office action response that carries the consent.
• Trademark Likelihood-of-Confusion Analysis: A Practical Checklist: the Phase 1 assessment.
• Settlement Agreement Checklist: A Practical Checklist: release and settlement terms.
• Filing a TTAB Notice of Opposition: A Practical Checklist: opposition procedure and withdrawal.
• Rebrand Legal Checklist: A Practical Checklist: launch reviews that should include a coexistence check.

Related Toolkits

• Coexistence Agreement Toolkit: Term Sheets, Consent Agreements, and Field-of-Use Clauses: templates for every document in this checklist.
• 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.