Oppose, Cancel, or Make a Deal – Part 3 Consent and Concurrent Use Agreements

You sell GRINS brand candy bars. You want to register GRINS as a trademark but, whoops, another company already has a registration for GRINS for cookies.

You’re probably going to have to rebrand but, maybe not.

I look at getting my client a trademark registration in terms of developing a strategy and then using just the right tactics to accomplish my client’s goal.

Candy bars and cookies are similar enough that your application’s probably not going to get through the Trademark Office review but, you might be able to make a deal with the cookie company:

  • You agree to use GRINS only for candy. They agree to use GRINS only for baked goods.

You can also divide up the trademark rights in other ways. For example:

  • You agree to use GRINS only west of the Mississippi. They agree to use GRINS only east of the Mississippi.
  • You agree to always use GRINS CANDY. They agree to use only GRINS COOKIES.

Without some kind of leverage, the cookie company has no reason to make a deal with you. We might get some leverage if there was something not entirely above-board about their application. Sometimes the other company agrees to enter into an agreement in exchange for a payment.

Most of the time, there’s nothing anyone can do about another application or registration that’s in the way of the trademark you want to use but, every once in a while, there is a way forward.