Brewery Trademark Coexistence Agreements

Often trademark coexistence agreements include a consent agreement (the picture is an excerpt from one), whereby the parties consent to one another's registrations. The USPTO, however, does not have to accept such agreements.
Often trademark coexistence agreements include a consent agreement (the picture is an excerpt from one), whereby the parties consent to one another’s registrations. The USPTO, however, does not have to accept such agreements.

When trademark disputes pop up, often breweries agree to get along. In doing so, two beverage businesses can seek what’s called a trademark coexistence agreement. This is an agreement that essentially sets forth trademark restrictions on both brands, as the businesses mutually form a plan to distinguish themselves in the marketplace. A trademark coexistence agreement might, for example, provide that one business will only use the trademark in the name of its brewery. In turn, the other brewery may agree to only use the trademark as a single beer name. These agreements can be between two breweries, or they might be between businesses in different product categories. For example, a trademark coexistence agreement may be between an energy drink company and a brewery, a distillery and a winery, and so on.

One boon of a trademark coexistence agreement is that it settles the matter between the parties, giving each confidence in moving forward using its brand. Another boon, however, is that a trademark coexistence agremeent may help both brands obtain a federal trademark registration.

Imagine this common scenario.

Brewery A applies for a trademark, we’ll make up a mark and say┬áthe mark is GREEN PARADE.

Brewery A receives a trademark office action response. The response is an Office Action stating a Section 2(d) refusal to register the mark. The reasoning behind the Office Action is that another brewery, Brewery B, has a registration for, say, “BLUE PARADER BREWING CO.” The trademark examiner cautiously sees the closeness between GREEN PARADE and BLUE PARADER BREWING CO., and sees that both are on beer. The examiner believes there is a likelihood of confusion. Brewery A then has six months to respond to the Office Action and urge why confusion is not likely, else Brewery A may not be able to obtain its federal trademark.

Notably, though, he United States Trademark Office may refuse a trademark application when the two parties themselves don’t necessarily see a problem. For example, Brewery B called BLUE PARADER BREWING CO. may have no problem with Brewery A’s use of GREEN PARADE. Perhaps GREEN PARADE is the name of Brewery A’s IPA, and that’s it.

In this instance, Brewery A and Brewery B could hammer out an agreement between them that sets forth a plan to coexist in the marketplace. This is a trademark coexistence agreement. Typically, the document contains an ancillary agreement called a trademark consent agreement. The purpose of the trademark consent agreement is to concisely set forth the main terms of the coexistence agreement, in a way aimed toward presentation to the USPTO trademark examining attorney.

The trademark examining attorney can use the consent agreement as evidence there is not a likelihood of confusion. After all, if the mark owner itself does not see a problem, it makes sense to defer to that mark owner’s judgment.

That said, the trademark examining attorney is not bound to accept the consent agreement. Sometimes, if the marks are just too close, even if the breweries agree, both may not be able to obtain a federal trademark registration. Of note, there was a recent matter where two breweries agreed to coexist. One brewery had TIME TRAVELER BLONDE, and the other brewery had just TIME TRAVELER. Despite a coexistence agreement and a consent agreement, the examining attorney believed the marks were nevertheless too similar. There was an appeal, and the Trademark Trial and Appeal Board agreed with the trademark examining attorney.

Here is a link to the decision of the Trademark Trial and Appeal Board.

And here is a link to the consent agreement that was filed in this particular matter.

Read More