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consent agreements

How a Consent Agreement Won Me a Case

In my last blog post, I discussed how the U.S. Patent and Trademark Office ("USPTO") has been dealing with trademark consent agreements. This post views consent agreements from a different perspective, a litigant's perspective. It's important to differentiate between these two different contexts. Remember, a trademark consent agreement is just a private contract. And while the USPTO may not be bound by that private contract when making likelihood of confusion determinations, the parties to that private contract are bound by it. To exemplify this difference, I am going to recount a case that I litigated for about two years, including a Ninth Circuit appeal, that was ultimately won based on a consent agreement that was assigned to my client. Once upon a time ...

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Photo of ants on opposite sides of a bamboo stick

A consent agreement is exactly what it sounds like. It’s an agreement in which a party consents to the use and registration of the other party’s trademark. Usually, the agreement is bilateral with both parties consenting to the other’s use and registration.

Consent agreements are usually submitted to the U.S. Patent and Trademark Office (“USPTO”) to overcome an office action refusing registration because of a § 2(d) likelihood of confusion with a prior registration or prior pending application. Most of the time, a consent agreement is sufficient to overcome a § 2(d) likelihood of confusion refusal, but the USPTO is not obligated to withdraw the refusal.

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