The Nature of Co-Existence
Just like anything else in law, a Co-Existence Agreement can be complex. In general, a trademark Co-Existence Agreement allows two parties continued use and/or registration of their respective trademarks. Co-Existence Agreements are often required where two parties’ trademarks and goods/services are similar enough that consumer confusion may occur.
The complexity of a Co-Existence Agreement often arises in the negotiation stage when both parties are considering the pros and cons of allowing a user of an identical or similar trademark continued use of the trademark. Both parties must consider the nature of their own trademark, their goods/services, their trademarks, and must ultimately determine whether consumers are likely to be confused (the essential test for trademark infringement) – as well as whether fighting a dispute makes fiscal sense for their business.
More often than not, a Co-Existence Agreement will contain terms that limit or restrict at least one (1) party’s use of their trademark. This could include limitations on how their trademark is used, what their trademark must or must not consist of, limitations on what goods or services can be sold or offered under the trademark, or what trade channels or geographic territory can be utilized. Terms can even include limitations on the font, restrictions on bolding/italics/underline of the trademark, or overall avoidance of style of the other party’s trademarks or trade dress.
As indicated above, these terms can be quite complex. In a perfect world, a Co-Existence Agreement would be something both parties would execute and forget about for the life of their trademarks. However, depending on what is agreed to, the importance and severity of a Co-Existence Agreement can range from a minor document to something that could cause a party to rebrand completely and something that must be reviewed at every branding stage for the life of an entity.
At the end of the day, there’s no perfect answer. There are numerous factors that must be considered when exploring a Co-Existence Agreement, including monetary factors, respective bargaining power, any ongoing disputes or pressing timelines, etc. A good attorney knows there’s no one size fits all solution – each situation must be considered carefully and must advise accordingly.