Trademark Coexistence Agreement — Template

By Casey Scott McKay · 2026-01-15

Two owners agree to use similar marks without conflict — this is the agreement that says so, drafted to survive both the USPTO and the parties' own growth plans. It supplies a complete, adaptable coexistence agreement with bracketed placeholders, a separate short-form consent built for filing with an examining attorney, and clause-by-clause notes explaining what each provision does and what changes when the facts change. It explains when a coexistence agreement is the right instrument and when a consent, a license, an assignment, or a concurrent-use proceeding is the better one. It grounds the drafting in In re E.I. du Pont de Nemours & Co. and the tenth factor, in the TTAB's rejection of an inadequate consent in In re Bay State Brewing Co., and in its acceptance of a reasoned one in In re American Cruise Lines, Inc. It covers the four provisions thin templates omit — an expansion mechanism, an actual-confusion protocol, enforcement cooperation, and a real term — plus antitrust limits, USPTO filing mechanics under [TMEP § 1207.01(d)(viii)](/search?q=TMEP+%C2%A7+1207.01%28d%29%28viii%29), and the deadlines to calendar after signature.

IP and Technology > Trademarks | Form | Published 15 January 2026 - Updated 17 February 2026 | Casey Scott McKay - marksy.us

Summary. Two owners agree to use similar marks without conflict — this is the document that says so, drafted to survive both the USPTO and the parties' own growth plans. Below you will find a complete coexistence agreement with every variable in brackets, a separate short-form consent built for filing with an examining attorney, and clause-by-clause notes explaining what each provision does, why it is worded that way, and what changes when the facts change. It also explains when a coexistence agreement is the wrong instrument — when you actually need a consent, a license, an assignment, or a concurrent-use proceeding. The drafting is grounded in In re E.I. du Pont de Nemours & Co. and its tenth factor, in the Board's rejection of an inadequate consent in In re Bay State Brewing Co., and in its acceptance of a reasoned one in In re American Cruise Lines, Inc. Special attention goes to the four provisions thin templates omit: an expansion mechanism, an actual-confusion protocol, enforcement cooperation, and a term that means something.

Keywords: trademark coexistence agreement · consent agreement · likelihood of confusion · du pont factors · section 2(d) refusal · concurrent use registration · ttab opposition settlement · covenant not to sue · brand expansion clause · actual confusion protocol · naked consent · uspto examining attorney · trade channel restriction · geographic restriction · mutual release · short-form consent · trademark settlement · coexistence template

Template — not legal advice. Replace every [BRACKETED] field. Nothing here is a substitute for counsel who has read the file. Marksy is not a law firm; have any agreement that binds a brand reviewed by a licensed attorney before it is signed.

What This Template Is, When to Use It, and When Not To

A coexistence agreement is a treaty. Two owners of identical or confusingly similar marks agree, in writing, that each may keep using and registering its mark, and each accepts limits — on goods, services, territory, trade channels, customers, and often the visual presentation of the mark itself — designed to keep consumers from being confused. Neither party transfers anything. Nobody licenses anything. The parties draw a line on the map and promise to stay on their side of it.

Reach for this template when all four of these are true:

Both sides have real rights. Each party is using its mark in commerce or has a filing that will mature into use. If one side has nothing, you need a demand letter or a purchase, not a treaty.
Neither side is going away. If the junior user will change its name for money, buy the mark or paper a phase-out in a settlement agreement.
A genuine business boundary exists. Different goods, channels, customers, or regions — something real an examining attorney could believe in. Coexistence agreements fail when the parties invent a boundary rather than describe one.
You can live with the boundary for a decade. Most coexistence agreements are perpetual. The client's business plan is not.

Use a different document when:

You only need to clear a § 2(d) refusal. A short consent agreement with detailed reasons does that job with far less collateral damage. The refusal-side strategy is in Responding to a §2(d) Likelihood-of-Confusion Refusal, and the Office Action Response Toolkit prices negotiating against the alternatives of arguing, attacking the cited registration, or refiling with a narrower identification.
One party will control the other's quality. That is a license, not a coexistence agreement, and it needs quality-control machinery or it will be a naked one. See Naked Licensing: How Sloppy Quality Control Kills a Trademark, the Trademark License Agreement — Template, and Drafting a Trademark License That Survives.
The boundary is purely geographic and both parties want registrations reflecting it. That is a concurrent-use registration under the proviso to 15 U.S.C. § 1052(d) and 37 C.F.R. § 2.99, not a private contract. The Board expects a concurrent-use decree to cover the whole country, divided between the parties. In re Beatrice Foods Co., 429 F.2d 466, 474 (C.C.P.A. 1970). Before drafting any territorial line, read Where Your Trademark Rights End: Tea Rose-Rectanus, Dawn Donut, and the Geography of Common-Law Priority, because federal registration rewrites the map through constructive notice under 15 U.S.C. § 1072 and constructive use under § 1057(c).
One side is buying the brand. Use the Trademark Assignment Agreement — Template and mind the anti-assignment-in-gross rule of 15 U.S.C. § 1060(a)(1), unpacked in Trademarks in the Deal.

The trap nobody prices. A coexistence agreement is the document that most often reprices an acquisition three years later. Buyers read the files marked "closed," find a perpetual restriction that caps the growth model, and take it off the purchase price. See Trademark Due Diligence in Mergers and Acquisitions: An IP Buyer's Guide. Draft as though your client's buyer is reading over your shoulder, because one day someone will be.

Before You Start

Have this in hand before you open the document:

| Item | Why you need it | |---|---| | Exact mark as used and as registered, for both parties | Restrictions on presentation are meaningless if you cannot describe the baseline | | Registration and serial numbers, filing dates, first-use dates, classes | The recitals and Schedule 1 depend on them; pull from TSDR, not the client's memory | | Current identifications of goods and services, verbatim | Restrictions keyed to loose paraphrase generate the next dispute | | Actual trade channels, customer types, and geographic footprint | This is the factual basis for the no-confusion recital | | Specimens and marketing samples for each party | Exhibits for the approved-presentations schedule | | Any existing licenses, distribution agreements, or security interests | You cannot warrant non-conflict without checking; see Trademark Due Diligence Checklist | | Domain names, social handles, and keyword buys involving either mark | These are negotiated, not assumed | | Docket of pending proceedings: opposition, cancellation, or civil numbers | The termination clause needs the caption | | A written statement from the client of its five-year expansion plan | The single most valuable input, and the one most often skipped | | A clearance opinion or search report, if one exists | See Running a Full Trademark Clearance Search |

Ask the client one question before drafting: what would you want to sell under this mark in five years that you do not sell today? Write down the answer. Every restriction you accept is measured against it.

The Model Agreement

TRADEMARK COEXISTENCE AGREEMENT

This Trademark Coexistence Agreement (this "Agreement"), effective as of [EFFECTIVE DATE] (the "Effective Date"), is entered into by and between [PARTY 1 LEGAL NAME], a [STATE] [ENTITY TYPE] with its principal place of business at [ADDRESS] ("Party 1"), and [PARTY 2 LEGAL NAME], a [STATE] [ENTITY TYPE] with its principal place of business at [ADDRESS] ("Party 2"). Party 1 and Party 2 are each a "Party" and together the "Parties."

RECITALS

WHEREAS, Party 1 has continuously used the mark [PARTY 1 MARK] (the "Party 1 Mark") in United States commerce since at least as early as [DATE] in connection with [PARTY 1 GOODS/SERVICES] (the "Party 1 Goods"), and owns the U.S. registrations and applications listed on Schedule 1;

WHEREAS, Party 2 has used the mark [PARTY 2 MARK] (the "Party 2 Mark") in United States commerce since at least as early as [DATE] in connection with [PARTY 2 GOODS/SERVICES] (the "Party 2 Goods"), and owns the U.S. registrations and applications listed on Schedule 2;

WHEREAS, [Party 1 objected to Party 2's use and attempted registration of the Party 2 Mark by letter dated [DATE] / the USPTO refused registration of Application Serial No. [NUMBER] under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), citing Registration No. [NUMBER] / Party 1 filed Opposition No. [NUMBER] against Application Serial No. [NUMBER] on [DATE]];

WHEREAS, the Parties' respective goods and services differ in [SUMMARIZE: nature, channels, purchasers, price point], and the Parties have operated concurrently since [DATE] without any instance of actual consumer confusion known to either Party;

WHEREAS, the Parties wish to resolve their differences, to define the parameters within which each may use and register its respective mark, and to avoid confusion among consumers;

NOW, THEREFORE, in consideration of the mutual covenants below and other good and valuable consideration, the receipt and sufficiency of which are acknowledged, the Parties agree as follows.

1. Definitions.

1.1 "Affiliate" means, as to a Party, any entity that controls, is controlled by, or is under common control with that Party, where "control" means ownership of more than [fifty percent (50%)] of the voting equity or the power to direct management and policies.

1.2 "Marks" means the Party 1 Mark and the Party 2 Mark, collectively.

1.3 "Non-Material Alteration" means a change to a Mark that does not alter its commercial impression, does not add or delete any literal element, and does not adopt any element used by the other Party.

1.4 "Territory" means [the United States, its territories and possessions].

1.5 Additional defined terms appear in [Sections 2.3, 3.4, 6.2, and 8].

2. Consents and Covenants Not to Challenge.

2.1 Party 1's Consent. Provided Party 2 is in material compliance with this Agreement, Party 1 consents to, and covenants that it will not oppose, petition to cancel, sue upon, or otherwise challenge, Party 2's (a) use, ownership, and registration of the Party 2 Mark in the Territory solely in connection with the Party 2 Goods and otherwise in accordance with this Agreement; (b) registration and use of the domain names listed on Schedule 3; and (c) use of the Party 2 Mark as a metatag or advertising keyword in connection with Party 2's own websites.

2.2 Party 2's Consent. Provided Party 1 is in material compliance with this Agreement, Party 2 consents to, and covenants that it will not oppose, petition to cancel, sue upon, or otherwise challenge, Party 1's (a) use, ownership, and registration of the Party 1 Mark in the Territory [solely in connection with the Party 1 Goods and] otherwise in accordance with this Agreement; (b) registration and use of the domain names listed on Schedule 4; and (c) use of the Party 1 Mark as a metatag or advertising keyword in connection with Party 1's own websites.

2.3 Scope. The consents in this Section extend to claims under 15 U.S.C. §§ 1114 and 1125(a) and (c), and to any parallel claim under state statutory or common law. Nothing in this Section licenses either Party to use the other Party's Mark.

3. Restrictions.

3.1 Restrictions on Party 2. Party 2 shall not, and shall not permit any Affiliate, licensee, or distributor to:

(a) use or register the Party 2 Mark in connection with [any goods or services other than the Party 2 Goods / the Party 1 Goods];

(b) use or register the Party 2 Mark other than in conjunction with [HOUSE MARK / DESIGN ELEMENT], displayed in [relative size and proximity];

(d) advertise, promote, distribute, or sell goods under the Party 2 Mark [in / other than in] [TRADE CHANNELS], or [to / other than to] [CUSTOMER CATEGORIES];

(e) [use or register the Party 2 Mark in [GEOGRAPHIC REGION]]; or

(f) make any alteration to the Party 2 Mark other than a Non-Material Alteration without Party 1's prior written consent, not to be unreasonably withheld, conditioned, or delayed.

3.2 Restrictions on Party 1. Party 1 shall not, and shall not permit any Affiliate, licensee, or distributor to: [MIRROR THE APPLICABLE SUBSECTIONS OF 3.1, OR STATE "None." IF THE AGREEMENT IS ONE-SIDED].

3.3 Approved Presentations. Each Party agrees that the specimens shown on Schedule 5 (Party 1) and Schedule 6 (Party 2) comply with Sections 3.1 and 3.2.

3.4 Expansion Mechanism. If a Party wishes to use its Mark in a manner Sections 3.1 or 3.2 prohibit (an "Expansion Request"), it shall give the other Party written notice describing the proposed use, the goods or services, and the channels. The receiving Party shall respond within [thirty (30)] days and shall not unreasonably withhold consent where the proposed use is not likely to cause confusion. If the receiving Party withholds consent, it shall state its reasons in writing. [The Parties shall then confer in good faith for [thirty (30)] days before either invokes Section 11.] [Consent shall be deemed given if the receiving Party fails to respond within the period stated.]

4. No Likelihood of Confusion. The Parties, who are the persons most familiar with the marketplace for their respective goods and services, acknowledge and agree that no likelihood of confusion exists between the Marks, because: (a) [DIFFERENCES IN THE MARKS THEMSELVES — appearance, sound, connotation, commercial impression]; (b) [DIFFERENCES IN THE GOODS AND SERVICES]; (c) [DIFFERENCES IN TRADE CHANNELS AND CLASSES OF PURCHASERS]; (d) [PURCHASER SOPHISTICATION AND PRICE POINT]; (e) the Parties have coexisted for [NUMBER] years without any known instance of actual confusion; and (f) the restrictions in Section 3 further reduce any possibility of confusion.

5. Mutual Undertakings.

5.1 Consent Documents. Each Party shall, within [ten (10)] business days of the other's written request, execute a consent agreement substantially in the form of Exhibit A and any other document reasonably necessary to permit the requesting Party to obtain or maintain registration of its Mark consistent with this Agreement, including filings with the United States Patent and Trademark Office ("USPTO").

5.2 Amendment of Filings. Within [thirty (30)] days of the Effective Date, each Party shall file the documents necessary to amend the applications and registrations identified on Schedule 7 to conform to this Agreement.

5.3 No Implied Affiliation. Neither Party shall advertise, promote, or otherwise present its goods or services in a manner that states or implies affiliation, sponsorship, endorsement, or connection with the other Party.

5.4 Actual Confusion Protocol. If a Party becomes aware of any instance of actual confusion between the Marks, it shall notify the other Party within [five (5)] business days with the details known to it. Within [fifteen (15)] days of such notice, [designated representatives of] the Parties shall confer and adopt commercially reasonable measures to address the confusion and prevent recurrence, which may include disclaimers, changes to presentation, or channel adjustments. Each Party shall maintain a log of reported instances and provide it to the other on request.

5.5 Enforcement Cooperation. Each Party may enforce its Mark against third parties in its own name and at its own expense. A Party shall notify the other within [fifteen (15)] days of commencing any proceeding in which it relies on rights that overlap with the other Party's Mark, shall not characterize the other Party's Mark as infringing or invalid in any such proceeding, and shall not enter any settlement or consent judgment inconsistent with this Agreement. On request, a Party shall provide a declaration confirming the existence and terms of this Agreement.

5.6 Termination of Proceedings. [OPTIONAL — include only if a proceeding is pending.] Within [ten (10)] days of the Effective Date, the Parties shall file the papers necessary to dismiss [Opposition No. [NUMBER] / Cancellation No. [NUMBER] / Civil Action No. [NUMBER]], [with / without] prejudice, each Party bearing its own costs and fees.

5.7 Costs. Except as stated in Section 5.6, each Party bears its own costs of performance.

6. Term and Termination.

6.1 This Agreement continues in perpetuity unless terminated under Section 6.2.

6.2 A Party may terminate this Agreement on [sixty (60)] days' written notice if (a) the other Party abandons its Mark within the meaning of 15 U.S.C. § 1127 and fails, within the notice period, to produce evidence of use or of intent to resume use; or (b) the other Party materially breaches this Agreement and fails to cure within [thirty (30)] days of written notice describing the breach.

6.3 Survival. Sections 2 (as to acts occurring before termination), 7, 8, 9, 10, 11, and 12 survive termination. The restrictions in Section 3 [shall / shall not] survive termination.

7. Representations and Warranties. Each Party represents and warrants that: (a) it is duly organized and in good standing; (b) it has full authority to enter into and perform this Agreement; (c) execution has been duly authorized; (d) this Agreement is enforceable against it; (e) performance will not conflict with any other agreement to which it is a party, including any license of its Mark in effect on the Effective Date; and (f) it owns the Mark identified as its own, free of any encumbrance that would prevent performance. EXCEPT AS EXPRESSLY STATED IN THIS SECTION 7, EACH PARTY DISCLAIMS ALL WARRANTIES, EXPRESS, IMPLIED, OR STATUTORY.

8. Mutual Release. [OPTIONAL — include when the agreement settles a dispute.] Each Party, on behalf of itself and its predecessors, successors, Affiliates, officers, directors, employees, and assigns, releases the other and its predecessors, successors, Affiliates, officers, directors, employees, and assigns from all claims, known or unknown, arising out of the other Party's use, registration, or promotion of its Mark before the Effective Date. [Each Party expressly waives California Civil Code § 1542 and any comparable statute.]

9. Confidentiality. Neither Party shall disclose the terms of this Agreement except (a) to its counsel, accountants, and existing or prospective acquirers, lenders, or investors under obligations of confidence; (b) as required by law, regulation, or court order; (c) as required to enforce this Agreement; or (d) by filing the consent in Exhibit A, which the Parties agree is not confidential.

10. Assignment and Successors. Neither Party may assign this Agreement except to a successor to all or substantially all of the business associated with its Mark. Any assignment or transfer of a Mark shall be conditioned on the transferee's written agreement to be bound by this Agreement, and this Agreement binds and benefits the Parties' permitted successors and assigns. Each Party shall cause its Affiliates and licensees to comply with this Agreement and remains responsible for their compliance.

11. Dispute Resolution and Governing Law. This Agreement is governed by the laws of the State of [STATE], without regard to conflict-of-laws principles. Before commencing any proceeding, the Parties shall confer in good faith for [thirty (30)] days. [Any dispute shall be resolved by binding arbitration before [ARBITRAL BODY] in [CITY, STATE] under its commercial rules. / The Parties consent to the exclusive jurisdiction of the state and federal courts located in [COUNTY, STATE].] The Parties agree that a breach of Section 3 may cause irreparable harm for which monetary damages are inadequate, and that the non-breaching Party may seek injunctive relief without posting bond to the extent permitted by law. [The prevailing Party is entitled to its reasonable attorneys' fees and costs.]

12. Miscellaneous. This Agreement is the entire agreement between the Parties on its subject matter and supersedes all prior understandings. It may be amended only by a writing signed by both Parties. No waiver is effective unless in writing, and no waiver is a waiver of any subsequent breach. If any provision is held unenforceable, the remainder continues in effect and the provision shall be reformed to the minimum extent necessary. Notices must be in writing and delivered to the addresses above by personal delivery, nationally recognized overnight courier, or certified mail, with a courtesy copy by email to [EMAIL]. This Agreement may be executed in counterparts, including by electronic signature. Nothing in this Agreement creates a partnership, joint venture, agency, or franchise relationship, or any license of either Mark.

IN WITNESS WHEREOF, the Parties have executed this Agreement as of the Effective Date.

| [PARTY 1 LEGAL NAME] | [PARTY 2 LEGAL NAME] | |---|---| | By: ____________________ | By: ____________________ | | Name: [NAME] | Name: [NAME] | | Title: [TITLE] | Title: [TITLE] | | Date: __________ | Date: __________ |

Schedules: 1 — Party 1 registrations and applications. 2 — Party 2 registrations and applications. 3 and 4 — permitted domain names. 5 and 6 — approved presentations. 7 — filings to be amended.

EXHIBIT A — SHORT-FORM CONSENT TO REGISTRATION (for filing with the USPTO)

CONSENT TO REGISTRATION

[PARTY 1 LEGAL NAME] ("Consenting Party"), owner of U.S. Registration No. [NUMBER] for the mark [PARTY 1 MARK] for [GOODS/SERVICES], consents to the registration and use by [PARTY 2 LEGAL NAME] ("Applicant") of the mark [PARTY 2 MARK], Application Serial No. [NUMBER], for [GOODS/SERVICES].

The parties have entered into an agreement governing their respective use of these marks. Based on their knowledge of the marketplace, the parties state that confusion is not likely for the following reasons:

The marks differ. [SPECIFIC DIFFERENCES IN APPEARANCE, SOUND, CONNOTATION, AND COMMERCIAL IMPRESSION, INCLUDING ANY HOUSE MARK OR DESIGN ELEMENT REQUIRED BY THE AGREEMENT.]
The goods and services differ. [SPECIFICS.]
The trade channels and purchasers differ. [SPECIFICS — who buys, where, at what price, with what care.]
The parties have coexisted. The parties have used their marks concurrently since [DATE], and neither is aware of any instance of actual confusion.
The parties have undertaken to prevent confusion. Applicant has agreed to [RESTRICTIONS]. Each party has agreed to notify the other of any instance of actual confusion within [five (5)] business days and to take commercially reasonable steps to address it.

Consenting Party will not oppose or petition to cancel a registration of the Applicant's mark that is consistent with the parties' agreement.

[PARTY 1 LEGAL NAME] By: ____________________ Name / Title: [NAME, TITLE] Date: __________

[PARTY 2 LEGAL NAME] By: ____________________ Name / Title: [NAME, TITLE] Date: __________

Clause-by-Clause Drafting Notes

Recitals. Recitals are not decoration. When a dispute arises in 2034 over whether "kitchenware" includes a countertop appliance, the recitals are where a court looks for what the parties understood in 2026. State each party's first-use date, its goods, its channels, and — this is the part practitioners skip — the differences the parties are relying on. If a party has known expansion plans it wants preserved, recite them. Silence in a recital is later read as a concession.

Section 1, Definitions. The Territory definition matters more than it looks. Default to the United States and its territories, and resist a worldwide definition unless you have local counsel in every country covered. Several trademark offices will not accept a consent at all, others require particular language, and some jurisdictions treat a territorial carve-out between competitors as a competition-law problem. If the client is filing internationally, coordinate with the International Trademark Toolkit before you extend the Territory. The Non-Material Alteration definition gives each party breathing room to refresh a logo without a negotiation, which is worth more over ten years than any single restriction.

Section 2, Consents and Covenants Not to Challenge. This is the operative grant, and it does two distinct things: it consents to registration, and it covenants not to sue. Keep them separate in your mind, because a party may want one without the other. A senior owner sometimes consents to use but refuses to consent to registration, on the theory that an unregistered junior mark is less likely to be found and cited by third parties as evidence that the senior mark is weak. If that is the deal, say so expressly and require withdrawal of any pending application.

Note the conditional opening — "provided the other Party is in material compliance." That converts the consent into a covenant that lapses if the other side breaks the boundary, which is what you want. Note also the effect of a broad covenant not to sue: under Already, LLC v. Nike, Inc., 568 U.S. 85, 91-94 (2013), a sufficiently broad and unconditional covenant can moot a controversy entirely. That is a feature when you are the defendant and a bug when you are the brand owner who wants to preserve leverage.

Subsection (c) on keywords and metatags is not boilerplate. Bidding on a coexisting mark is precisely the conduct that generates the next dispute, and the doctrine is unsettled enough that you want it decided by contract rather than by a court. See Buying a Competitor's Name: Keyword Advertising and the Death of Initial Interest Confusion and the Keyword Advertising, SEO, and Search Marketing Toolkit.

Section 3, Restrictions. Each subsection is drafted with a slash choice, and the choice matters enormously. The "other than" formulation is a whitelist: the party may use its mark only in the listed channels. The affirmative formulation is a blacklist: the party may do anything not listed. A whitelist is safer for the party imposing it and far more dangerous for the party accepting it, because every future product line is prohibited by default. If you represent the junior party and the senior party insists on a whitelist, price it and pair it with Section 3.4.

Restrictions on presentation — house mark, typeface, color by Pantone number, relative size — do real work under In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), because they change the first factor, the similarity of the marks in appearance and commercial impression. Restrictions on goods, channels, and purchasers work on the second, third, and fourth factors. That mapping is not academic: when you later submit the consent to an examining attorney, you want each restriction to be traceable to a factor. The factor framework itself is in Trademark Infringement: Proving Likelihood of Confusion; see also Restatement (Third) of Unfair Competition § 21 (1995).

Draft the identification, not a paraphrase. If the restriction says "cosmetics," and the registration says "non-medicated skin care preparations, namely, facial serums," you have created two documents that disagree. Copy the identification verbatim, or define the restricted category by reference to the registration. The mechanics of identification language are in Drafting an Identification of Goods and Services.

Section 3.4, Expansion Mechanism. This is the clause that separates a good coexistence agreement from a bad one, and most templates omit it.

Consider Brindle & Co., a Portland cold-brew roaster using BRINDLE for coffee since 2016, and Brindle Provisions, a Nashville company that filed for BRINDLE for cheese and charcuterie in 2025 and drew a § 2(d) refusal. They settle: Brindle Provisions stays out of coffee and beverages; Brindle & Co. stays out of dairy and prepared foods; each uses a distinct logo lockup. The application registers, everyone is pleased, and the file closes. In 2029 Brindle & Co. wants to launch a canned oat-milk latte and a line of shelf-stable coffee-and-cream products. Dairy. The agreement says no, it is perpetual, and there is no price at which Brindle Provisions is obliged even to discuss it.

Section 3.4 fixes that by creating a duty to consider, a duty to respond in writing with reasons, and a reasonableness standard. It is not a right to expand. It is a right to be heard, which is the most a senior owner will usually grant and considerably more than silence. The deemed-consent alternative in the last bracket is aggressive; use it when your client is the party likely to expand and has leverage.

Section 4, No Likelihood of Confusion. Never leave this as a conclusion. Both the Board and the Federal Circuit take consents seriously — du Pont itself lists the "market interface" between the parties as the tenth factor and observes that "when those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted." 476 F.2d at 1362-63. The Federal Circuit reversed a refusal on the strength of a consent in In re N.A.D., Inc., 754 F.2d 996, 999-1000 (Fed. Cir. 1985).

But a consent is evidence, not a verdict. A bare or "naked" consent — one that recites agreement without reasons — carries little weight, and the Federal Circuit has affirmed refusals notwithstanding a consent. In re Mastic Inc., 829 F.2d 1114, 1116-17 (Fed. Cir. 1987); TMEP § 1207.01(d)(viii). Two Board decisions frame the range. In In re Bay State Brewing Co., 117 U.S.P.Q.2d 1958 (T.T.A.B. 2016), the Board affirmed a § 2(d) refusal despite a consent because the agreement still permitted both parties to use highly similar marks for beer in the same geographic area — the restriction did not actually separate the parties. In In re American Cruise Lines, Inc., 128 U.S.P.Q.2d 1157 (T.T.A.B. 2018), the Board reversed a refusal where the consent set out specific factual reasons why confusion was unlikely, even though it lacked elaborate undertakings. The lesson is blunt: reasons beat promises, and a boundary that does not separate anything will not persuade anyone.

Section 5.4, Actual Confusion Protocol. A short notice period and a duty to confer is cheap insurance and reads well to an examining attorney. Add the log requirement; it turns anecdote into evidence, which matters if either party later needs to prove that confusion did or did not occur.

Section 5.5, Enforcement Cooperation. Two coexisting marks make each other weaker unless the parties police the field jointly. This clause stops each party from disparaging the other's rights in third-party disputes — a real hazard, since an infringement defendant will happily quote your client's own opposition brief back at it — and stops one party from settling a case in a way that redraws the boundary. Enforcement strategy generally is in the Brand Enforcement Toolkit: Watching, Warning, and Escalating.

Section 6, Term and Termination. Perpetual is the default and often the right answer, because a consent that can evaporate is worth less to the party relying on it. But build in the abandonment exit. If the other side stops using its mark, your client should not remain boxed in by a boundary protecting nothing; 15 U.S.C. § 1127 supplies the standard, and three consecutive years of non-use is prima facie abandonment. The evidentiary reality is messier than the rule — see Use It or Lose It: Trademark Abandonment, Non-Use, and the Three-Year Presumption — which is why the clause is drafted as notice-plus-opportunity-to-show-use rather than automatic termination.

Section 10, Assignment and Successors. The successor clause is what makes the agreement stick to a buyer. Without it, a party can sell its brand and leave a purchaser arguing it is not bound. Note the interaction with 15 U.S.C. § 1060: the mark travels with its goodwill, and the restrictions travel with the mark only if you say so.

Section 11, Dispute Resolution. Arbitration keeps a commercially sensitive boundary out of the public record and is usually right where the agreement contains pricing or channel detail. Litigation is better if your client expects to need fast injunctive relief. If you choose arbitration, carve out interim relief expressly. On the forum question generally, see Federal Court vs. TTAB: Where to Bring Your Dispute.

The remaining sections, briefly. Section 5.1 is the clause that makes Exhibit A enforceable — without a duty to execute consent documents on request, a party can agree to coexist and then simply not sign the paper the examining attorney needs. Section 5.2 forces the register to match the contract, and it needs a real date. Section 5.3 is the anti-affiliation covenant; it is deliberately general, so define specific prohibited conduct if you can name it. Section 7 is standard corporate assurance, with one clause that is not: subsection (e), which is where an unreported license surfaces or does not. Section 8 belongs in the document only if you are settling; a release in a pure clearance deal gives away claims for nothing. Section 9 is what lets the parties keep the commercial terms private while filing the sanitized consent — say expressly that Exhibit A is carved out, or the confidentiality clause and the filing obligation contradict each other. Section 12's notice provision is worth thirty seconds of attention, because every termination and expansion right in the document runs through it.

Alternative and Optional Clauses

The aggressive senior-owner version. Delete Section 3.2 and state "None." Convert every subsection of 3.1 to the "other than" whitelist form. Add: "Party 2 shall not file any application to register the Party 2 Mark, or any mark containing [TERM], in any class other than Class [NN], and shall not oppose or petition to cancel any Party 1 filing." Add a liquidated-damages provision if the client can support the number. Add a most-favored-terms clause requiring Party 2 to offer Party 1 the same restrictions it grants any third party. Consider deleting the expansion mechanism entirely and replacing it with a right of first refusal on any sale of the Party 2 Mark.

The conciliatory, symmetric version. Make Sections 3.1 and 3.2 mirror images. Add: "Neither Party shall be deemed to have admitted the validity, strength, or scope of the other Party's rights, and this Agreement shall not be offered as evidence of the strength of either Mark in any proceeding against a third party." Add a joint-defense-style provision for third-party disputes. Add a scheduled review: "The Parties shall confer every [three (3)] years to review whether the restrictions in Section 3 remain necessary."

Registered mark versus common-law mark. If one party's rights are unregistered, the recitals must carry the weight the registration certificate would otherwise carry: first-use date, territory of actual use, sales volume, advertising spend. Add a warranty of continuous use. Add: "Party 2 acknowledges that Party 1's rights in the Party 1 Mark arise from use in commerce and are not limited by the absence of a federal registration." Then define the Territory carefully, because common-law rights are geographically bounded — United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97-98 (1918); Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358, 364 (2d Cir. 1959). Building that record is covered in Establishing and Proving Common-Law Trademark Rights.

Design marks and non-traditional marks. Delete the domain-name and keyword subsections if neither mark contains words. Replace typeface and color restrictions with a description of the design elements each party may and may not use, and attach depictions. For color, sound, scent, or motion marks, the description of the mark in the registration is the operative text, and your restrictions should quote it — see the Non-Traditional Trademark Application Checklist: Drawing, Description, and Evidence.

Certification and collective marks. A certification-mark owner cannot use its own mark on its own goods and must certify without discrimination, so a coexistence agreement that restricts who may be certified can create a cancellation ground under 15 U.S.C. § 1064(5) and an antitrust problem at the same time. Redraft around the standards document, not around goods; see the Certification, Collective, and Membership Marks Toolkit and Applying for a Certification or Collective Mark.

Antitrust guardrails. Trademark settlements are ordinarily procompetitive and are analyzed under the rule of reason. Clorox Co. v. Sterling Winthrop, Inc., 117 F.3d 50, 55-56 (2d Cir. 1997). But a coexistence agreement between actual competitors that divides territories or customers beyond what the confusion rationale supports starts to look like horizontal market allocation, which is per se unlawful. Palmer v. BRG of Ga., Inc., 498 U.S. 46, 49-50 (1990) (per curiam). Keep the restrictions tethered to confusion avoidance, document the rationale in the recitals, and get antitrust advice before agreeing to anything that reads like a price or output term.

Filing and Delivery Mechanics

Signature and delivery. Two originals, or electronic signature with a counterparts clause. Deliver notices exactly as Section 12 specifies; a notice sent only by email under an agreement requiring courier is the kind of defect that costs a termination right.

Nothing gets recorded. A coexistence agreement is not recorded against a registration the way an assignment is under 37 C.F.R. § 3.11. It binds as a contract only. That is why Section 10 matters and why diligence has to find it in the files rather than in the USPTO database. Keep an executed copy with the registration certificate in the client's portfolio record — the Trademark Portfolio Inventory — Template has a column for it.

Filing the consent at the USPTO. Submit Exhibit A — not the full agreement — as an attachment to a Response to Office Action or Request for Reconsideration through the USPTO's Trademark Center. There is no government fee for the response itself. In the argument, walk the examining attorney through each du Pont factor the consent addresses and cite TMEP § 1207.01(d)(viii). Do not simply attach and hope. If the examining attorney maintains the refusal, the routes are a request for reconsideration, an appeal to the TTAB (a notice-of-appeal fee applies per class; confirm the current amount on the USPTO fee schedule), or both — see Appealing a Final Refusal: Ex Parte Appeals to the TTAB and Beyond.

Amending applications and registrations. Amendments narrowing an identification are filed through Trademark Center; an amendment may not broaden the identification. 37 C.F.R. § 2.71(a). A post-registration restriction is a Section 7 request under 15 U.S.C. § 1057(e), and it carries a fee. If the application is the subject of a TTAB proceeding, you cannot amend it unilaterally: consent of the adverse party or Board approval is required. 37 C.F.R. § 2.133(a).

Terminating a TTAB proceeding. File the withdrawal or stipulated dismissal through ESTTA. After an answer has been filed, an opposition withdrawn without the applicant's written consent is with prejudice, so get the consent in writing and file it with the withdrawal. 37 C.F.R. § 2.106(c); TBMP § 605.01. If you need time to paper the deal, file a consented motion to suspend for settlement. 37 C.F.R. § 2.117(c). Background on the proceedings themselves is in TTAB Proceedings: Opposition vs. Cancellation.

Calendar after signature. Amendment deadline under Section 5.2. Proceeding-termination deadline under Section 5.6. Any expansion-request response windows as they arise. An annual reminder to re-read the restrictions against the client's current product roadmap — fold it into the Annual Trademark Portfolio Review Checklist.

Common Mistakes

Signing a whitelist without reading the roadmap. The client sells three products and cheerfully agrees to a restriction naming those three. Two years later it sells eleven.

Drawing a boundary that does not separate anything. Bay State Brewing is the cautionary tale. If both parties will still sell similar goods to the same customers in the same places, the restriction is decorative and the USPTO will say so.

Reciting a conclusion instead of reasons. "The parties agree confusion is not likely" is a naked consent. Give facts, tied to du Pont factors.

Forgetting licensees and affiliates. A restriction that binds only the signatory is defeated the moment the mark is licensed. Section 10 closes that gap; check it against every existing license, and against the Trademark License Quality Control Checklist.

No term, no exit, no expansion valve. Perpetual plus rigid equals a document that will outlive the business it was written for. The Apple Corps litigation over the 1991 agreement between the Beatles' label and the computer company ran for years precisely because nobody in 1991 could describe a music download. Apple Corps Ltd v Apple Computer Inc [2006] EWHC 996 (Ch).

Assuming channel separation is permanent. Retail channels converge. When a restaurant brand licensed its name onto grocery-store hams, the packaged-food owner of a similar mark obtained a preliminary injunction. Kraft Foods Grp. Brands LLC v. Cracker Barrel Old Country Store, Inc., 735 F.3d 735 (7th Cir. 2013). Channel restrictions should name the channel and the migration risk.

Treating the agreement as the end of the matter. It is a live obligation. Watch the other party's filings, log confusion, and use the protocol you drafted.