Trademark Coexistence Agreements: How Two Companies Can Share a Name Without Killing Their Brand

You did your clearance search. You picked a name you loved. You filed your trademark application. And then the USPTO hit you with a Section 2(d) refusal — the examining attorney found a prior registration for a mark that looks or sounds similar to yours. Or maybe you received a cease-and-desist letter from another company that claims your brand name is too close to theirs.

Your first instinct might be to fight. But before you gear up for an opposition proceeding or rebrand entirely, there's another option: a trademark coexistence agreement. These agreements let two companies use similar marks under defined boundaries — and in the right circumstances, they can even help you overcome a USPTO refusal.

With the USPTO receiving nearly 765,000 trademark applications in FY 2024 and the federal register now exceeding 3.3 million registrations, startups are colliding on similar names more frequently than ever. If you're a founder navigating this landscape, understanding coexistence agreements — when they work, what terms to negotiate, and what risks they carry — can save your brand and your legal budget.

What Is a Trademark Coexistence Agreement?

A trademark coexistence agreement is a contract between two trademark owners in which both parties agree to use similar (or even identical) marks under specific conditions designed to prevent consumer confusion. Unlike a simple consent agreement — which is typically a shorter document submitted to the USPTO to overcome a Section 2(d) refusal — a coexistence agreement is broader and more detailed. It often covers geographic scope, field-of-use restrictions, marketing channels, logos, and dispute-resolution mechanisms.

As trademark practitioners have noted, the key distinction is that consent agreements are primarily tools for USPTO prosecution, while coexistence agreements are proactive, long-term contracts aimed at preventing disputes before they escalate. In practice, a well-drafted coexistence agreement can serve both purposes: it functions as a private contract between the parties and can be submitted to the USPTO as evidence that confusion is unlikely.

When a Coexistence Agreement Makes Sense vs. When to Fight

Not every trademark collision calls for a coexistence agreement. Here's how to think about the decision:

Coexistence makes sense when:

• You operate in clearly different markets. If you're building a B2B SaaS platform and the other company sells physical consumer goods, the overlap may be minimal enough that a coexistence agreement is straightforward.
• Geographic separation is real and durable. If one party operates primarily in the U.S. and the other in a different region, a geographic scope clause can cleanly separate the two.
• Both parties want to avoid litigation costs. Opposition proceedings before the Trademark Trial and Appeal Board (TTAB) can cost tens of thousands of dollars. A negotiated agreement is often faster and cheaper.
• The other party is willing to negotiate in good faith. If the senior user is open to reasonable boundaries, a coexistence agreement can be a win-win.

You should consider fighting when:

• You're in the same industry, same channel, same audience. If both companies sell the same product to the same customers, no agreement will eliminate confusion — and the USPTO won't accept one that doesn't address the real overlap.
• The other party is aggressively blocking you. If the senior user refuses to negotiate or demands unreasonable concessions, an opposition or cancellation may be your better path.
• Your brand investment is too significant to restrict. If accepting field-of-use limitations would prevent your company from expanding into adjacent markets, the long-term cost may exceed the short-term benefit.

For more on building a trademark strategy that accounts for these scenarios, see our guide to deliberate trademark and brand protection strategy.

Key Terms to Negotiate

If you decide to pursue a coexistence agreement, the following terms are the backbone of an enforceable, USPTO-creditable contract:

1. Geographic Scope

Define where each party may use the mark. This can be as broad as "North America" vs. "Europe" or as specific as states, cities, or even zip codes. Geographic boundaries are most effective when they reflect actual market realities — not arbitrary lines on a map. The TTAB and examining attorneys look for provisions that reflect genuine marketplace separation.

2. Field-of-Use Restrictions

Specify the goods or services each party offers under the mark. This is the single most important term for USPTO purposes. The TMEP explicitly identifies "whether the parties agree to restrict their fields of use" as a factor in weighing consent agreements. TMEP Section 1207.01(d)(viii) lists field-of-use restrictions as one of five factors the USPTO considers when evaluating whether a consent agreement overcomes a likelihood-of-confusion refusal.

3. Trademark Class Limitations

While Nice classification (the international system of 45 trademark classes) is not dispositive of confusion, coexistence agreements often reference specific classes to delineate each party's territory. The parties should agree that neither will expand into the other's class without renegotiation — though this is a contractual commitment, not a USPTO-enforced restriction. The examining attorney evaluates the actual goods and services, not just the class numbers.

4. Quality Control Provisions

This term is critical and often overlooked. If a coexistence agreement functions in part as a license — or if one party has any control over the other's use — the agreement must include quality control mechanisms. Without them, you risk what's known as "naked licensing," which can result in the abandonment of trademark rights. The classic example is the Freecycle case, where the Ninth Circuit found that a trademark owner lost its rights because it allowed licensees to use its marks without adequate quality control provisions. Even in a pure coexistence context (not a license), including quality standards signals to the USPTO that both parties are maintaining the distinctiveness and source-identifying function of their respective marks.

5. Dispute Resolution

Include a mechanism for resolving future disagreements — mediation, arbitration, or a designated forum for litigation. Scope creep is a real risk: one party may gradually expand into the other's territory or product line over time. A dispute-resolution clause gives both sides a defined process for addressing breaches without immediately resorting to litigation.

How the USPTO Treats Coexistence Agreements During Examination

This is where many founders get confused. A coexistence agreement does not guarantee USPTO approval. The examining attorney treats a consent or coexistence agreement as "but one factor to be taken into account with all of the other relevant circumstances bearing on the likelihood of confusion." That language comes directly from the Federal Circuit's decision in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973), and it's codified in the TMEP.

The TMEP identifies five factors that examining attorneys and the TTAB weigh when evaluating a consent agreement:

1. Whether the consent shows an agreement between both parties;
2. Whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels;
3. Whether the parties agree to restrict their fields of use;
4. Whether the parties will make efforts to prevent confusion and cooperate to avoid confusion that may arise; and
5. Whether the marks have been used for a period of time without evidence of actual confusion.

Crucially, "naked" consent agreements — those that contain little more than a prior registrant's consent to registration — are given less weight than "clothed" agreements that detail specific reasons why confusion is unlikely and specify arrangements to avoid it. As the Federal Circuit explained in In re Mastic Inc., 829 F.2d 1114 (Fed. Cir. 1987), a consent "clothed" with the parties' agreement to undertake specific arrangements to avoid confusion is entitled to greater weight.

When the TTAB Rejects Agreements

The TTAB has repeatedly shown that it will reject coexistence or consent agreements that don't actually eliminate the likelihood of confusion. In the precedential decision In re Bay State Brewing Co. (2016), the TTAB affirmed a Section 2(d) refusal even though the parties had entered into a consent agreement. The Board found that the agreement "did not comprise the type of agreement that was properly designed to avoid confusion" and that the marks at issue were used for related goods in overlapping trade channels. As practitioners noted at the time, the case serves as a reminder that despite the great weight typically afforded to consent agreements, the TTAB is not obligated to accept them if reasonable circumstances for confusion still exist.

More recently, in In re Ye Mystic Krewe of Gasparilla (2025), the TTAB found a consent agreement unpersuasive because it lacked sufficient basis for why confusion was unlikely "where identical and legally identical goods were sold to identical potential consumers in identical channels of trade under highly similar marks." The agreement also failed to indicate that the parties would restrict their fields of use — a key TMEP factor.

The takeaway for founders: a coexistence agreement submitted to the USPTO must do more than say "we agree to coexist." It must explain why confusion is unlikely and describe specific arrangements the parties have undertaken to prevent it.

Enforcement Risks After Signing

Signing a coexistence agreement doesn't end your obligations — it begins them. Several enforcement risks can undermine the value of your trademark after the ink dries:

Naked Licensing and Abandonment

If your coexistence agreement includes any licensing-like elements (for example, one party granting the other limited permission to use a specific logo variant), you must maintain quality control. Without it, you risk naked licensing, which under the Freecycle doctrine can result in complete abandonment of your trademark rights. This isn't a theoretical risk — courts have invalidated trademarks on this basis.

Scope Creep

Over time, business needs change. The party that agreed to stay in Class 9 may want to expand into Class 42. The company limited to the East Coast may want national reach. If your coexistence agreement doesn't include clear mechanisms for renegotiation or amendment, scope creep can lead to breach claims — or worse, an argument that the original agreement has been voided by changed circumstances.

USPTO Reexamination

Even if your agreement got you past the examining attorney, it may be scrutinized again during an opposition proceeding, a cancellation action, or if a third party challenges your registration. The TTAB can revisit whether the agreement was properly designed to avoid confusion at the time it was executed — and whether the parties have actually adhered to its terms.

For guidance on maintaining your trademark rights over the long term, see our article on trademark lifespan and renewals.

Actionable Next Steps

If you're facing a potential trademark collision, here's what to do:

1. Get a thorough clearance search. Before negotiating anything, understand the full landscape of similar marks — registered and unregistered.
2. Assess the real overlap. Are your goods, channels, and customers genuinely different? If yes, coexistence may work. If no, you may need to fight or rebrand.
3. Approach the other party early. Reaching out before filing an opposition — or before the USPTO issues a refusal — puts you in a stronger negotiating position.
4. Draft with the TMEP factors in mind. If you plan to submit the agreement to the USPTO, make sure it addresses all five TMEP factors: mutual agreement, separate trade channels, field-of-use restrictions, confusion-prevention efforts, and evidence of co-use without actual confusion.
5. Include quality control provisions. Even if the agreement isn't technically a license, quality control language signals good faith and protects against naked licensing claims.
6. Plan for enforcement and amendment. Build in dispute-resolution mechanisms and a process for renegotiation if business circumstances change.
7. Work with a trademark attorney. Coexistence agreements are not boilerplate. A poorly drafted agreement can be rejected by the USPTO, declared unenforceable by a court, or — worst case — used as evidence that your mark is weak. An experienced attorney can tailor the agreement to your specific situation and ensure it satisfies both your business needs and the USPTO's requirements.