What is Consent Agreement?

A consent agreement is a formal written arrangement between two trademark owners in which one party consents to the registration or use of the other party's mark, despite potential overlap or similarity. These agreements are commonly used to overcome an examining attorney's refusal to register a mark based on likelihood of confusion with an existing registration, or to resolve opposition proceedings without full adjudication.

In the United States, the USPTO considers consent agreements as evidence that confusion is unlikely between two marks, though they are not dispositive. The examining attorney or TTAB will evaluate whether the agreement is a "naked" consent (simply stating consent without conditions) or a "clothed" consent that includes provisions demonstrating the parties have taken steps to minimize consumer confusion. Clothed consent agreements that include detailed restrictions on the scope of use, geographic limitations, or product distinctions carry substantially more weight.

The legal framework for evaluating consent agreements in the U.S. was shaped by the landmark case In re E.I. du Pont de Nemours & Co., which established a multi-factor test for likelihood of confusion. Among these factors, the court recognized that the parties' agreements regarding concurrent use are relevant evidence. Courts and the TTAB generally reason that the parties who operate in the marketplace are best positioned to assess whether confusion is likely between their respective marks.

Why It Matters

Consent agreements offer a pragmatic alternative to costly and time-consuming litigation. When two parties recognize that their marks can coexist without causing consumer confusion, a well-drafted consent agreement allows both parties to secure registrations and continue using their marks. This approach saves significant legal costs and preserves business relationships.

The strategic value of consent agreements extends beyond immediate dispute resolution. They create a documented framework for ongoing coexistence, establishing clear boundaries that help both parties manage their brands without future conflicts. A properly drafted agreement defines the scope of each party's rights, the goods or services covered, geographic limitations if applicable, and any requirements for distinguishing elements.

However, consent agreements must be carefully crafted. A poorly drafted agreement may be given little or no weight by the USPTO or the TTAB, particularly if it lacks substantive restrictions or fails to explain why confusion is unlikely. Additionally, a consent agreement that is too broad may inadvertently waive rights that the consenting party later wishes to assert.

How Signa Helps

Signa's clearance analysis provides the foundational data needed to negotiate effective consent agreements. By quantifying the degree of similarity between marks across phonetic, visual, and conceptual dimensions, and by analyzing the overlap in goods, services, and trade channels, Signa helps legal teams identify the specific boundaries that should be addressed in a consent agreement.

The platform's comprehensive coverage of 200+ trademark offices enables parties to understand the full global scope of their respective trademark portfolios. This visibility is essential when consent agreements need to address international rights, ensuring that the terms negotiated in one jurisdiction are consistent with the parties' positions worldwide.

Signa's monitoring capabilities also support the enforcement of consent agreements after execution. By tracking both parties' trademark filings and registrations globally, the platform can alert users if the other party appears to be operating outside the agreed-upon boundaries, enabling prompt corrective action.

Real-World Example

A craft brewery, "Iron Forge Brewing," applies to register its mark for beer in Class 32. The USPTO examining attorney issues a refusal based on likelihood of confusion with the existing registration for "Iron Forge Fitness," registered in Class 41 for gym and fitness services. Although the goods and services are quite different, the identical dominant element "Iron Forge" triggers the refusal.

Both companies use Signa's platform to research each other's trademark portfolios and market presence. The analysis confirms that the parties operate in entirely different industries with distinct consumer bases. Neither party has plans to expand into the other's market segment.

The parties negotiate a consent agreement that specifies the distinct goods and services each will offer under their respective marks, confirms that neither party will expand into the other's industry, requires each to include distinguishing trade dress elements, and includes a mutual notification obligation for future filings that could create overlap.

The brewery submits the clothed consent agreement to the USPTO examining attorney, who withdraws the refusal after finding that the detailed provisions adequately address the likelihood of confusion concerns. Both marks achieve registration, and the ongoing monitoring through Signa's platform ensures both parties remain within the agreed boundaries.