Troy & Schwartz Attorneys-At-Law

Introduction

Intellectual property assets (patents, copyrights, trade secrets, and trademarks) can be sold, assigned, or licensed by the IP’s owner.   For companies, IP ownership issues may arise where steps are not taken to ensure that any IP created by or developed by an employee or independent contractor will belong to the company or hiring party.   Such issues could have a devastating effect on the company under a variety of scenarios as discussed below.  As such, every employee of a company should be required to sign a confidentiality and IP assignment agreement as a condition for employment.  Such an agreement obligates the employee to keep confidential the proprietary information of the business, both during employment and after the employment ends.  The agreement also ensures that any inventions, ideas, creations, business plans, logos, brands, trade secrets, copyrightable works, or services developed within the scope of his/her employment during the term of employment belong to the company and not the employee.

Similarly, all independent contractors should be required to sign a confidentiality/non-disclosure agreement.  If their efforts on the company’s behalf could result in an IP asset(s), the independent contractor should also be required to sign an IP assignment of rights agreement.   Examples  of IP-related works often developed by independent contractors are: APPs, software programs, prototypes, formulations, websites and logos.

Of all the four types of IP, ownership issues involving copyrights are arguably the most misunderstood as the result of the copyright law’s work made for hire doctrine as defined in 17 U.S.C. § 101.

Copyright Ownership as the Result of a Work Made For Hire

Copyright law may seem deceptively simple compared to patent and trademark law especially with regards to the registration process.  Where copyright law can get particularly complicated for the unwary, however, is in the area of copyright ownership.  Under U.S. law, the creator or author of the work is the owner of the copyright.  But what happens if the work was created by and employee in the scope of his/her employment or by an independent contractor who was hired or commissioned to create the work?

Regarding an employer-employee relationship, the work is generally treated as a work made for hire wherein the employer (and not the employee) is deemed the author and owner of the work.  The forms for federal registration of a copyrightable work include a section addressing ownership secured on the basis of a work made for hire.

Regarding an independent contractor relationship, the work may qualify as a work made for hire providing two conditions are met pursuant to the Copyright Act (Act).  First, the work must fall into one of the nine enumerated types of works specified in the Act.  Second, the independent contractor and the hiring party must have also both signed an agreement agreeing that the work to be created is a work made for hire.  If both of these two requirements are met, the hiring party is deemed as the owner of the work created by the independent contractor.

Note the difference between works made for hire by an employee versus those made by an independent contractor.  In the latter case, the type of works qualifying as work made for hire are limited by statute and a written assignment agreement is required for all such “statutorily” defined works made for hire.

What happens if the work created by the independent contractor does not fall into one of the nine enumerated types of works in the Act?  An assignment of rights agreement executed by the independent contractor will be required for the hiring party to “honestly” claim copyright ownership as the claimant in a copyright registration application.

Why the Distinction Between and Employee and an Independent Contractor Is Important

Take the scenario of software developers who are often hired as independent contractors by startup companies.   Software can be copyrighted, but software is not one of the enumerated types of works qualifying as a work made for hire work by Independent Contractors.  Therefore, even with a written agreement stating that the software is a work made for hire, the hiring company will not actually own the copyright to the developed software under the Act even though the software developer (independent contractor) was paid to create the software.   That is, the software developer may well still be the owner of the software despite the work made for hire agreement.   On the other hand software development companies such as Microsoft Corporation that have employees dedicated to developing software are the owners/authors of any copyright-related rights in the software under the work made for hire doctrine.   See the U.S. Copyright Office Records for Microsoft Corporation’s registered copyrights where Microsoft is listed as the author of the work as the result of an employer work made for hire.

Copyright ownership issues as they relate to independent contractors may remain hidden and then arise: 1) when a business is being sold and the sale involves intellectual property (IP) assets such as copyrights; 2) in a copyright infringement lawsuit; 3) or a business is being evaluated by venture capitalists or other investors or is involved in an M&A transaction.    The buyer of IP assets will want assurance that the IP assets are indeed owned by the seller so that they may be effectively assigned to the buyer by a written instrument signed by the seller and the buyer.   A deal could fall through if the seller cannot prove to the buyer’s satisfaction that it – the seller – is the owner of the copyrights and therefore has the right to transfer ownership to the buyer.

As for a copyright infringement lawsuit, standing is a requirement for bringing a lawsuit, namely that the plaintiff is the true copyright owner.   A defendant in a copyright infringement lawsuit may be able to use “lack of ownership” as a defense if the work was created by an independent contractor and the work does not qualify as a work made for hire under the Copyright Act.  That is, ownership remains vested in the independent contractor and plaintiff does not own the copyright it claims is being infringed under the law.  The author of this blog has successfully used lack of ownership of the registered work as grounds for dismissing a copyright infringement lawsuit.

As for scenario #3, the buyer’s due diligence team will also be looking for these agreements with employees and/or independent contractors to ensure that the copyrights (and all of the company’s IP) is owned by the company.

Ensuring the Legally Sufficient Transfer of a Copyright by an Independent Contractor

What steps can be taken to ensure the proper transfer of copyright-related rights from an independent contractor?  Where the work(s) to be created clearly fall into one of the nine enumerated classifications specified within the copyright statute, the  hiring company should require the independent contractor to sign an agreement wherein the work(s) to be created is designated as a work made for hire with all associated copyright-related rights belonging to the hiring party.  This agreement should be executed by both the company and the independent contractor before work on the project commences.

Copyright ownership can also be transferred by an assignment of rights.  For her clients, the author includes an assignment of rights provision within all work made for hire agreements with independent contractors as a precaution to cover the situation where the created work may be found to not qualify as a work made for hire after all.  Thus, if for whatever reason the work should not qualify as a work made for hire because, e.g., it does not fall into one of the nine enumerated categories, the hiring party would still own the copyright as the result of the independent contractor’s assignment of rights to the hiring party.   17 U.S.C. § 201(d)(1).  Any such assignment needs to be clear as to the rights being conveyed and the nature of the underlying works.     For a good discussion of how important an assignment of rights provision may be where the work made for hire conveyance by an independent contractor fails, see Capital Concepts, Inc. v. Mountain Technology Corp., et al., WL 6761880 (W.D. Va. 2012).  In our software development example, the assignment agreement should also state that the independent contractor is assigning any and all patent and trade secret rights to the company since software may also qualify for these types of IP protection.  That is, the company/individual hiring an independent contractor needs to ensure that it is the owner of all potential IP rights emanating from the independent contractor’s work.

We are proud of the legal services we provide to our business and entrepreneurial clients on all matters related to intellectual property law including trademark law.  Contact us at 305-279-4740 to discuss any questions related to IP including ownership questions.   

Troy & Schwartz, LLC

Attorneys-at-Law

Miami, Florida  (305) 279-4740

Where Legal Meets Entrepreneurship™

This blog is for informational purposes only and does not constitute legal advice.

© 2023 by Troy & Schwartz, LLC

Selecting a company name or a name for a new product is no easy task.  Both types of names have the potential to become the company’s valuable intellectual property assets, i.e., valuable brands.  A haphazard name selection process, however, may result in legal problems and/or prevent registration of the name as a trademark or service mark with the United States Patent & Trademark Office.  Clearly the last thing a new startup needs is a legal dispute involving the alleged infringement by its product name or company name of someone else’s registered trademark.   Also, the “wrong” name may well prevent its registration as a trademark or service mark.  Registered marks generally have substantially more value than unregistered marks.

Anybody who has been involved in a lawsuit understands that they are costly, stressful, and can take on a life of their own.  A registered trademark owner may of course give you the chance to comply with an initial cease and desist letter.  However, the company’s compliance will generally require it to stop using the mark and transfer any domain name rights, etc.  The upshot?  The company will have to start over in the branding process.

The following tips are intended to get your company off and running with a viable company and/or product name.

1. Do a Google search on the name to see what other companies may already be using the same or a similar name.
2. Do a search of your state’s corporate or limited liability company records in the states where the company will do business to see if anyone is using the same or similar name. Also check the state’s registered trademark records since some companies do obtain state-registered marks.  For Florida, this information can be found here.
3. Do a search of the U.S. Patent & Trademark Office (USPTO) for federal trademark registrations of your proposed company/product name. Do not think that merely changing a letter in your proposed name or reversing the order words in a multi-word work will save you from a legal dispute with the owner of the registered mark or prevent trademark registration issues.  Clearly if you plan to file a trademark registration application for your company/product name with the USPTO, you should select a name that has a solid chance of meeting the USPTO’s trademark registration requirements.  This means that your mark must not be confusedly similar to a registered mark, generic, or merely descriptive of the goods or services provided under the mark.
4. Do a search of domain name registrar websites such as GoDaddy.com to see if the domain name you want is available. Not only are domain names a necessity in today’s e-commerce world, but domain names also may have associated trademark rights.  Therefore, a minor change in the registered domain name, e.g., by registering the plural form (ABCS) of the registered domain name (ABC) could result in a trademark dispute.   The registration of a dot com domain name in particular could signal potential trademark issues.
5. The best company/product name is one that is distinctive and memorable for both branding purposes and obtaining valuable registered trademark rights.
6. Come up with at least three names you like and get the reactions of trusted individuals.
7. If you plan to have a logo designed, ensure that there is a contract in place assigning all of the logo creator’s intellectual property rights to your company.
8. If you are a non-US company planning to expand into the United States, note that US trademark law will apply to you.  In the United States, common law trademark rights are recognized.  Additionally, trademark registration requires usage of the mark in interstate commerce at the time of registration.
9. Watch out for cultural implications involving your mark if you plan to register it in other countries.
10. Consult with an intellectual property law attorney up front to avoid costly problems.  A good attorney will discuss potential problems with your proposed names.   A thorough mark knockout search should also be considered.

We are proud of the legal services we provide to our business and entrepreneurial clients on all matters related to intellectual property law including trademark law.  Contact us at 305-279-4740 to discuss your questions on trademark law matters.   Doing things right the first time in selecting a company/product name and building your brand could save you some real legal headaches and a lot of money down the road.  

Troy & Schwartz, LLC

Attorneys-at-Law

Miami, Florida  (305) 279-4740

Where Legal Meets Entrepreneurship™

This blog is for informational purposes only and does not constitute legal advice.

© 2023 by Troy & Schwartz, LLC

On July 7, 2022, in In re Lana Grossa mode mit Wolle Handels-und Vertriebs GmbH, the Trademark Trial & Appeal Board (the “Board”) held that a mark utilizing the Italian word for yarn, Filati, could not be registered because the mark is generic and thus incapable of registration.

The opinion is instructive because it covers several matters pertinent to trademark registration that often take a backseat to the far more common likelihood-of-confusion registration issues.  This blog summarizes the take home points from Lana Grossa wherein the Applicant sought registration of the mark FILATI on the Supplement Register as a generic mark.

1.  Some Background on the Supplemental Register.

The Supplemental Register (“SR”) offers legal protections to a lesser extent than the Principal Register.  SR can thus be a viable alternative to registration on the Principal Register if an applied-for mark is rejected on merely descriptive/generic grounds providing the proposed mark passes a likelihood of confusion analysis by the examining attorney.  Indeed, examining attorneys may recommend that the original application be amended to a “Supplemental Registration” application if the applied-for mark is not rejected on likelihood of confusion grounds. One can also initially apply for registration on the Supplemental Register as did the FILATI mark Applicant but such an application will nevertheless be examined to see if it qualifies for such registration.   Additionally, a “Supplemental Registered” mark may later qualify for registration on the Principal Register if the registrant can establish that the mark has become distinctive in the minds of consumers.

2.  A Mark Comprising a Foreign Word Will Not Overcome Potential Registration Issues.

Over the years, the commentator has encountered clients who mistakenly believe that using a foreign word as a mark for service(s) or good(s) provided in the U.S will eliminate registration problems.   This assumption is a fallacy.  First, trademark applications require the applicant to provide a translation of the foreign word.

Second, under the doctrine of equivalents, the foreign equivalent of a registered arbitrary English word mark may result in a finding of likelihood of confusion.  For example, a proposed mark for MANZANA (Spanish for apple) as an arbitrary mark for computers would clearly not be registrable in today’s “Apple Brand” world.

Moreover, a merely descriptive or generic foreign word mark is no more registrable than its English counter-part. As the Lana Grossa opinion states:  “[A] word taken from a well-known foreign modern language, which is, itself, merely descriptive of a product or service will be so considered when it is attempted to be registered as a trademark in the United States for the same product.”   The doctrine is, however, to be applied only when it is likely that the ordinary American purchaser who is knowledgeable in the foreign language would stop and translate the foreign word into its English equivalent.  The FILATI mark applicant had argued that the mark was merely descriptive and eligible for registration on the SR.

As a result of various websites and publications accessible in the U.S. promoting a premier international Italian yarn (as “Filati”) event, the Board concluded that the relevant U.S. consumers, particularly those with knowledge of Italian, will translate the word “Filati” into “yarn.” As such, the word “Filati” is a generic term for yarn and cannot be registered on the Supplemental Register.

As discussed above, a merely descriptive foreign word may be registered on the Supplemental Register.  A merely descriptive mark is one which describes a desirable characteristic of the specified good/service.  For example, In In re Geo. A. Hormel & Co., 227 USPQ 813 (TTAB 1985), the Board held that the applied-for mark SAPORITO, an Italian word meaning “tasty,” was merely descriptive and ineligible for registration on the Principal Register.   Interestingly the SAPORITO mark was originally registered in 1973 on the Supplemental Register by a company other than Hormel.  Reg. no. 952,895.   In 1989, that same company was able to achieve registration on the Principal Registration by showing that the mark had acquired distinctiveness and recognition by the buying public.  Reg. no. 1573637 obtained under Section 2(F) of the Lanham Act.

3. The Stylized Lettering in FILATI Is Insufficient for Creating a Distinct Commercial Impression Separate and Apart from the Generic Word Itself.

Having found that the mark FILATI is generic, the Board next determined if the Applicant’s stylized drawing of the word mark is so distinctive that it is possible to disclaim the unregistrable components and still have a registrable mark as a whole.  Generic matter within an applied-for mark, whether the mark is to be registered on the Principal Register or the Supplemental Register, must generally be disclaimed. Here, the entire mark itself (i.e. (“Filati”) would need to be disclaimed.  Yet, an entire mark cannot be disclaimed.  TMEP § 1213.06 (2022).   The Board concluded that the FILATI mark does not create a distinct commercial impression separate and apart from the word itself.   As such the mark was not registrable on the Supplemental Register.  To understand the Board’s reasoning, compare the registered mark CONSTRUCT A CLOSET, where the stylistic rendering of the mark was found to be distinctive, with the unregistrable FILATI mark.

4. Take Home Points.

Trademark law is not as simple as it may seem as this decision shows.   This is why a trademark attorney should be consulted so that the registration risks can be understood and discussed.  Why spend a lot of money on building brand where legal protection may well not even be available?   Contact Susan Troy at 305-279-4740 for a complimentary consultation on your branding legal requirements.

 WE THANK YOU READING THIS BLOG AND HOPE YOU FOUND IT INFORMATIVE.  HOWEVER, THE CONTENT IS PROVIDED FOR INFORMATION ONLY AND DOES NOT CONSTITUTE LEGAL ADVICE OR ANY  ATTORNEY-CLIENT RELATIONSHIP.

©2022

Troy & Schwartz, LLC

Where Legal Meets Entrepreneurship™

 (305) 279-4740

Take Home Points

1. File at least a provisional patent application before taking steps to commercialize and sell an invention.
2. Understand the ramifications of the on-sale bar to patentability.
3. If engaging in experimentation with others prior to filing a patent application, ensure that contracts are very clear concerning the experimentation purpose.
4. Be very careful about making an offer for sale of the invention prior to filing a patent application. An offer for sale can take many forms including a contract, proposal and/or invoice.

Section 102(b) of the Patent Act involves the on-sale bar to patentability.  The America Invents Act (“AIA”) amended § 102(b).  Any patent issuing from an application filed before May 16, 2013 which is later subjected to an on-sale bar analysis in a patent infringement analysis will be analyzed under pre-AIA § 102(b). This section states that a patent claim is invalid under 35 U.S.C. § 102(b) if “the invention was  . . .  on sale in this country more than one year prior to the date of the application for patent in the United States.”

This commentator recently published a blog on the CAFC’s February 2022 opinion in Junker v. Medical Corp., Inc where the Court held that the patentee had not timely filed a patent application under § 102(b) of the Patent Act.  Also see that blog for a comparison of the pre-AIA § 102(b) and the post AIA statute.  In Junker, the patent owner’s damages for patent infringement awarded by the district court were negated.  Now we have another decision in just over two months where the patent owner has had patent claim rights adversely affected because of failure to timely file a patent application.

On April 29, 2022^, in Sunoco Partners Marketing v. U.S. Venture, Inc., the CAFC again addressed the on-sale bar to patentability.  The patent at issue involved an application filed on February 9, 2001.  Accordingly, based on 35 U.S.C. § 102(b), the critical date (the latest date on which the patentee could have made an offer for sale without violating the on-sale bar) was Feb. 9, 2000.  Here, the patentee’s offer for sale was Feb. 7, 2000.  Put another way, once the offer for sale was made, the patent applicant had exactly one year to file the patent application or until Feb. 7, 2001.

In Sunoco, the defendant asserted an on-sale bar defense to invalidate claims in two of Sunoco’s patents. To prevail, the defendant needed to demonstrate by clear and convincing evidence that the patented invention was both: (1) “the subject of a commercial offer for sale”; and (2) “ready for patenting.”  Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 57 (1998).

A factor which may allow the patent owner to negate an on-sale bar invalidation is whether the offer for sale occurred primarily for purposes of experimentation.  The “experimentation” exception to the on-sale bar was first articulated by the U.S. Supreme Court in City of Elizabeth v. Am. Nicholson Pavement Co., 97 U.S. 126, 137 (1877):  [E]xperimental use allows inventors to delay patenting to engage in “bona fide effort[s] to bring his invention to perfection or to ascertain whether it will answer the purpose intended.”  At the same time, “[a]ny attempt to use [the invention] for a profit and not by way of experiment” before the critical date will “deprive the inventor of his right to a patent.”  Ultimately, as the City of Elizabeth court explained, the on-sale bar is related to the monopoly afforded to a patentee – to have the government-granted right to seek legal recourse for the unauthorized use of the patented invention for a statutory period of time.   The on-sale bar prevents a subsequent patentee from “acquiring an undue advantage over the public by “preserv[ing] their monopoly . . .  for a longer period than is allowed.”

Sunoco, the current owner of the patents at issue, argued the on-sale bar was not violated because the inventor’s company, MCE Blending (“MCE”) offer to sell the invention to Equilon Enterprise, LLC (“Equilon”) was primarily for experimentation purposes.  The district court agreed and held found that the defendant’s on-sale bar defense was negated by the experimental use doctrine.

The CAFC disagreed on the basis of the terms of a contract between the inventor’s company and MCE.  The opinion is instructive because it demonstrates how a contract’s terms can play a critical role in upholding or defeating patent rights.  Whether such a transaction was for primarily for experimental or commercial purposes is a “question of law to be analyzed based on the totality of the surrounding circumstances.”   The Sunoco court assessed the transaction “under contract law as generally understood, focusing on those activities that would be understood to be commercial offers for sale in the commercial community.”

The invention was for an automated butane-blending system to maximize a desirable property of combining butane and similar gasoline components.

Based on the following contractual words and terms, the transaction was deemed to be a commercial offer for sale for the following reasons:

1. The contract expressly described the transaction as a sale without any mention of any experimental purpose.
2. The contract stated that MCE already developed the relevant technology and equipment, that Equilon wanted to purchase it, and that MCE was willing to sell it, install it, and supply butane for it in return for Equilon’s agreement to purchase several hundred barrels of butane from it over a period of five years.
3. The contract stated that MCE is willing to install the blending Equipment and to supply the butane required for such blending to Equilon.
4. The contract stated that the ownership and title to the Equipment shall be conveyed to Equilon by MCE upon completion of the installation and training. MCE was to execute a bill of sale to effectuate the conveyance of ownership of the Equipment to Equilon.
5. The contract referred to Equipment Testing and not Experimental Evaluation.

The district court concluded that there had been no offer of sale of the invention because the contract “did not require Equilon to pay MCE anything in exchange for the system which incorporated the invention.  In contrast, the CAFC opined that Equilon purchased MCE’s equipment by committing to buy MCE’s butane.  In other words, it incurred a real if indirect cost.   Had the contract not intertwined the equipment’s required installation with Equilon’s obligation to buy butane, the CAFC indicated that it would not have characterized the transaction as a sale.

The CAFC further emphasized that the concept of experimental use can be difficult to establish.  For example, the contract had a section entitled “Equipment Testing” with two sets of testing:  pre-installation testing and post-installation testing.  Sunoco argued that MCE wanted “to experiment at the actual tank farm and determine whether their inventive idea was capable of performing its intended purpose in its intended environment.” MCE therefore would need access to Equilon’s facility to test under action conditions.  However, testimony revealed that the testing, which focused on determining whether that system could communicate with one of the equipment’s components was not done at Equilon, after all but by a third party.  Additionally, the testing could have been done at any time prior to entering into the offer for sale with Equilon.   This was not a situation involving, e.g., street pavement, which cannot be experimented upon satisfactorily except on a highway.  Sunoco court quoting City of Elizabeth, 97 U.S.C. 134.

The commentator adds that large, expensive equipment is often set up and qualify assurance tests conducted by the seller’s employees.  However, these are not “experimental purpose” activities because the buyer is expecting the equipment to work.  A good example is medical diagnostics equipment.

The inventor’s subjective intent concerning experimentation is of minimal importance.  The courts have generally looked to objective evidence to show that a precritical date sale was primarily for experimentation.   The opinion includes a useful list of objective indicia relied on by the courts in footnote 5.  In this case: 1) the terms of the sale agreement itself constituted objective evidence; and 2) the nature of the experimentation was such that it could have been done prior to the sales offer.

In conclusion, the CAFC held that the Equilon agreement was an offer for sale to commercially exploit the invention rather than primarily for experimentation purposes. Equipment which incorporated the invention was ready for use at the time the contract was entered into and ready for patenting based on objective evidence.   The district court’s experimental-use determination was reversed and its infringement determination with respect to the pertinent claims was vacated.   The decision involved some other issues which are separate from the 102(b) discussion of this blog for those interested.

If you have any questions about when you should file a patent application to preserve your rights, contact Susan at 305-279-4740.

WE THANK YOU READING THIS BLOG AND HOPE YOU FOUND IT INFORMATIVE.  HOWEVER, THE CONTENT IS PROVIDED FOR INFORMATION ONLY AND DOES NOT CONSTITUTE LEGAL ADVICE.  IF YOU ARE CONTEMPLATING ANY ACTION THAT MAY HAVE LEGAL CONSEQUENCES, CONSULT WITH AN ATTORNEY.

©2022

Troy & Schwartz, LLC

Where Legal Meets Entrepreneurship™

(305) 279-4740

Opinion Background & Discussion – In re Dare Foods, Inc.

Trademark blogs often focus on detailing decisions by the Trademark Trial & Appeal Board (“TTAB”) and the courts over whether a mark should be approved for registration or not based on the likelihood confusion with an existing registered mark.  However, trademark law provides a mechanism through which two registered marks having different owners can co-exist.  How is this possible? Because the mechanism involves a co-existence or consent agreement between a registered mark owner and an applicant.  As the Federal Circuit Court of Appeal’s predecessor court stated in the 1973 seminal Dupont case,

[W]hen those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of [likelihood of confusion] evidence are clearly tilted.  It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won’t.  A mere assumption confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not.

The cited wording pertains to Dupont factor #10 in a likelihood of analysis determination which was referred by the Dupont court as the “market interface” factor.

On March 29, 2022, the TTAB recently reversed the examining attorney’s refusal to register the mark RAINCOAST DIP for “snack food dips” in view of the registered mark RAINCOAST TRADING for seafood products on likelihood of confusion grounds.  Note that the USPTO routinely finds likelihood of confusion problems with a registered mark and an applied-for mark where both marks have the same word as the first word (the aspect of the mark consumers are most apt to focus on) when the same or related goods/services are involved.  For example, the TTAB itself found that the involved goods were related because “it is not uncommon for snack food dips as well as seafood and seafood snacks to emanate from the same source.”    It was thus not surprising that the examining attorney found likelihood of confusion because the marks are more similar than dissimilar in appearance, and sounds, and “particularly connotation and commercial impression.”  The TTAB agreed.

However, the TTAB found that the examining attorney had failed to give proper credence to a 2013 agreement between the parties’ predecessors.  That agreement was detailed and covered the typical factors the TTAB will look at in determining whether the agreement meets at least the following requirements:

1. Shows agreement between both parties;
2. Whether the agreement includes a clear indication that the goods or services travel in separate trade channels;
3. Whether the parties agree to restrict their fields of use;
4. Whether the parties will make efforts to prevent confusion and cooperate and take steps to avoid any confusion that may arise in the future;
5. And whether the marks have been used for a period of time without evidence of actual confusion.

Simple agreements, which some sarcastically refer to as “naked agreements”, will not qualify as suitable co-existence/consent agreements.  Here, the TTAB concluded that the parties had entered into a detailed agreement with sufficient parameters for allowing the existence of the two registered marks.

This commentator has drafted detailed co-existence/consent agreements resulting in registration of an applied-for mark.  One fact that can be helpful is when the goods/services are provided in a different geographical market.  For example, this type of agreement was entered into between a Florida eatery (the commentator’s client) and an Oregon eatery. Obviously, the registered mark owner must be willing to enter into such an agreement.  Had the Oregon eatery instead been a Georgia-based company owned by a franchisor who planned to open franchise restaurants in Florida and across the Southeast, the possibility of obtaining a “USPTO-acceptable” co-existence/consent agreement would likely have been more difficult because of the stronger possibility of overlapping trade channels.

Take Home Point

A properly-drafted, accurate co-existence/consent agreement with appropriate provisions may allow an applied-for mark to be registered by the USPTO even where the applied-for mark would not otherwise be registered on the basis of its likelihood of confusion with the registered mark.

In Need of Legal Counsel on Trademark Matters?

Contact Susan at 305-279-4740 if you have any questions about co-existence/consent agreements or any other matter related to trademark law.

               THANK YOU FOR YOUR INTEREST IN THIS BLOG.

AS USUAL THE CONTENT IS FOR INFORMATIONAL PURPOSES ONLY AND IS NOT LEGAL ADVICE.

© 2022 by Troy & Schwartz, LLC