Trademark Consent Agreements - Klein Moynihan Turco LLP

Trademark Consent Agreements: Applying for a Trademark that is Already in Use by Another Party

In July, the Cleveland baseball team announced that it would be changing its name to the “Cleveland Guardians” and submitted a trademark application on an intent to use basis with the United States Patent and Trademark Office (“USPTO”). Apparently, however, the Cleveland Guardians Roller Derby (“Roller Derby”) had already been using the “Cleveland Guardians” mark in commerce for seven years and had registered the name with the State of Ohio in 2017. On November 16, the Cleveland baseball team and the Roller Derby came to an agreement pursuant to which both organizations will have the right to continue to use the “Cleveland Guardians” name. Now that the Roller Derby has agreed to the Cleveland baseball team’s use, the team is expected to soon submit a trademark consent agreement to the USPTO, which should substantially increase the chances for its “Cleveland Guardians” trademark application to proceed to registration.

What is a Trademark Consent Agreement? 

A trademark consent agreement is a contract between parties in which one or each party consents to the registration of an identical or similar mark by the other party(ies). Trademark applicants can submit consent agreements to the USPTO in anticipation of, or in response to, the USPTO’s refusal to register marks due to a likelihood of confusion. 

Why Should an Applicant Submit a Trademark Consent Agreement to the USPTO?

Trademark examining attorneys must refuse to register trademarks if they believe consumers will likely be confused about the source of goods or services in the marketplace. When multiple parties use the same or similar marks on similar goods or services, consumers are likely to be confused about the source of the subject goods/services. Therefore, USPTO examining attorneys are likely to refuse to register a trademark where an identical or similar mark is already in use on similar goods or services by another party. 

In contrast, when a party submits a properly drafted consent agreement entered into between the applicant and an owner of an existing registered trademark, examining attorneys are likely to approve a trademark for registration where an identical or similar mark is already in use.

It is important to note that consent agreements are only one factor that is considered in an examining attorney’s likelihood of confusion analysis. However, examining attorneys are required to give substantial weight to credible consent agreements and are not supposed to substitute their judgment concerning likelihood of confusion for the judgment of real parties in interest without good cause (i.e., where “the other relevant factors clearly dictate a finding of likelihood of confusion”).  

What Should be Included in a Consent Agreement? 

Typically, examining attorneys find more detailed trademark consent agreements to be more persuasive. Persuasive consent agreements should include, among other details: signatures from both parties, explanations as to why the parties do not believe that there will be confusion between the marks, and steps that they will take to avoid confusing the public. Naked consent agreements (agreements that merely include the prior trademark registrant’s consent and state that source confusion is unlikely) will generally be given less consideration by the USPTO.

If you are interested in learning more about this topic or require assistance in connection with registering a trademark or drafting a trademark consent agreement, please e-mail us at: info@kleinmoynihan.com, or call us at (212) 246-0900.

The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney.

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Photo by Romain Dancre on Unsplash

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