Structuring Trademark Consent Agreements

Resolving Potential Trademark Conflicts and Overcoming Likelihood of Confusion Challenges

Recording of a 90-minute premium CLE webinar with Q&A

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Conducted on Tuesday, October 21, 2014

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Course Materials

This CLE course will provide guidance for counsel to trademark owners on overcoming refusals of mark applications and resolving disputes through consent agreements. The panel will offer strategies for pursuing, negotiating and structuring such agreements.


When the USPTO refuses to grant a trademark application due to likelihood of confusion with an already registered trademark, the parties may turn to a trademark consent agreement to overcome the refusal. These agreements are an essential tool in resolving current and potential future disputes involving the marks. They also serve as evidence that there is no likelihood of consumer confusion.

Counsel to trademark owners should carefully consider the potential ramifications of pursuing a consent agreement. Further, the agreement must be structured to demonstrate the parties’ belief that likelihood of confusion does not exist and steps they will take to ensure no confusion will result if the mark is registered.

Trademark counsel should also keep in mind that the consent agreement may not end with the parties to the agreement. Assignees and successors to the marks in question inherit the obligations of the consent agreement. Consequently, the agreement should include provisions to address issues related to succession.

Listen as our authoritative panel of trademark attorneys examines trademark consent agreements and outlines strategies for each stage of the process—from determining whether to pursue an agreement to negotiating and structuring the agreement.



  1. Key considerations
    1. Timing
    2. Leverage
    3. Cost
  2. Key provisions
    1. Explanation why parties believe there is no confusion
    2. Steps parties will take to ensure no confusion will result
    3. Notice requirements—sale, assignment
    4. Assignment—limitations, requirements
    5. Duration
  3. Best practices for negotiating and structuring the agreement


The panel will review these and other important issues:

  • Factors counsel should consider when weighing use of a consent agreement.
  • Terms that should be included in consent agreements to survive examiner scrutiny.
  • Provisions that should be considered to address issues of assignment or sale of the mark.


Collen, Jess
Jess M. Collen

Collen IP

Mr. Collen has been active in IP practice for 25 years and is highly involved in the profession, having acted in many...  |  Read More

Stacey C. Friends
Stacey C. Friends

Ruberto Israel & Weiner

Ms. Friends’ practice is focused on trademark and copyright law, licensing, corporate and business matters, arts...  |  Read More

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