The Trademark Review and Adjudication Board (TRAB) has recognized the principle of the validity of co-existence agreements since 2007 and has taken these agreements into account when considering the similarity of trademarks in audit and evaluation cases. The courts have adopted a more tolerant attitude than trab towards agreements on the coexistence of trademarks. In 2016, more than 80 trademarks were admitted to registration by trial or trial courts following the acceptance of trademark co-existence agreements. In 2017, more than 90 trademarks were approved by the courts on the basis of trademark co-existence agreements. A trademark agreement is usually a simple contract by which a party agrees to authorize the use and/or registration of a trademark that overlaps with another party. The parties also state that their brands are not confusing to consumers. Often, this type of agreement is used when a company has received or is anticipating a refusal to register by the USPTO (U.S. Patent and Trademark Office). Co-existence agreements can be useful in resolving current or future uncertainties and difficulties faced by parties in the use of similar trademarks. Such agreements are not recommended, however, if the trademark holder were to be used: neither company anticipated that the future development of digital music technologies would bring the two areas much closer together. When Apple Computers launched the iPod and iTunes memory, Apple Corps filed a complaint claiming that Apple Computers had entered the Apple Corps-only area, in violation of the trademark co-existence agreement. The court considered the issue from the consumer`s point of view and found that there was no breach of the agreement, since the Apple Computers logo was used in conjunction with the software and not with the music provided by the service. No consumer who downloads music with iTunes software would think they are interacting with Apple Corps.
Problems begin when this distinguishing function no longer works, because the companies for which the trademarks were originally used begin to overlap. Thus, brands that once happily co-exist, suddenly find themselves in conflict. This is particularly frustrating if both companies use their identical brands in good faith – in other words, where they both have a track record of the actual use of their respective brands, but are starting to turn to each other`s territories because of business expansion. In some cases, if two companies know that they are using similar or identical brands, they may opt for a formal co-existence agreement to prevent the future use of the two brands from overlapping to the point of making them undesirable or hurtful. This article describes the situations in which coexistence can occur and introduces a number of points to be taken into account when considering a co-existence agreement. A brand co-existence agreement is a broader agreement that offers even greater protection than a simple approval agreement. Co-existence agreements generally include unique restrictions on sites, industries and/or marketing methods in which two parties can use their respective trademarks. These specifications apply in addition to the points mentioned above in the approval agreement. Co-existence agreements are particularly useful for companies wishing to develop and avoid future infringement procedures and/or litigation. The dilution of trademark rights reinforces the problems associated with the application of trademark rights against third parties.