A Consent or Coexistence agreement can take many forms and cover business relationship issues in addition to the "bare bones" considerations relevant to the Examiner. This example omits the more sensitive terms and might be used as an attachment to a more comprehensive agreement to avoid placing the entire agreement in the public record. However, it could be considered fraudulent to represent anything to the Examiner in such a "short form" consent that was inconsistent with the main agreement.
CONSENT AGREEMENT
This Consent Agreement ("Agreement") is made and entered into by and among Vendor1 Computer Products Corporation ("Vendor1"), an Oklahoma corporation with a principal place of business at __________, and Vendor2, Inc. ("Vendor2"), a Delaware corporation with a principal place of business at __________.
RECITALS
Vendor1 is the owner of the registered trademark SAMEMARK for "computer programs for integrating and interfacing input devices with other computer programs", which is the subject of U.S. Registration No. _______, issued July 30, 1985 (the specification of which reads "computer programs" and is being amended to reflect the foregoing description of goods).
Vendor2 is the owner of the unregistered trademark SAMEMARK for "computer software for communicating data among stationary computers and mobile computing devices; and instructional manuals supplied as a unit therewith," which will be the subject of a federal application in connection with those goods.
Vendor1 wishes to consent to Vendor2's registration of SAMEMARK on the Principal Register on the ground that, as used, and as set forth in this agreement, there is no likelihood of confusion between the parties' marks.
NOW, THEREFORE, for and in consideration of the foregoing and of the mutual representations, promises, terms, and conditions contained herein, and other good and valuable consideration, the parties agree as follows:
1. The Goods Sold by Each Party Under its Respective Mark Are Very Different. Vendor1 uses the SAMEMARK mark in connection with computer programs for integrating and interfacing input devices with other computer programs. For example, Vendor1's software enables owners of other computer programs to assign the functions of those other computer programs to specific keys on a supplemental keypad separate from the computer keyboard, thus making those other programs easier to learn and use. Vendor2 uses the SAMEMARK mark in connection with computer software for communicating data among stationary computers and mobile computing devices, and computer software for developing distributed computing applications. For example, Vendor2's software enables companies to create computer networks that allow users to connect both through wired and through wireless communications networks. Vendor2 does not now and intends in the future not to use the SAMEMARK mark in connection with computer programs for integrating and interfacing input devices with other computer programs. Vendor1 does not now and intends in the future not to use the SAMEMARK mark for computer software for communicating data among stationary computers and mobile computing devices, or computer software for developing distributed computing applications.
2. The Relevant Purchasers of the Parties' Respective Goods Are Different, and Are Sophisticated Professionals. Vendor1 markets its input device integration software primarily to other software developers who use the software for turnkey application software, for example, software for integrating touch pads into a system as a replacement keyboard for "point-of-sale" systems for the hospitality industry. Point-of-sale systems are the computers and software that replace the traditional cash register in establishments such as restaurants, supermarkets, and retail department and clothing stores. Vendor2 markets its computer software for communicating data among stationary computers and mobile computing devices, and computer software for developing distributed computing applications to the information systems departments of companies with a good number of mobile workers (e.g., car rental return agents, gas line locators, pick up and delivery drivers.) Thus, the types of businesses that purchase the two companies' goods differ substantially. Moreover, the relevant purchasers within those companies are likely to be particularly sophisticated, and the purchasing process deliberate, since both Vendor1 and Vendor2 sell systems intended for enterprise-wide use.
3. The Parties' Goods Are Not Sold Through the Same Market Channels. Purchasers will not encounter the parties' respective products in the same marketing channels because each party sells its products only through its own direct sales force, or through marketing partners focused on very different technologies and applications. Moreover, due to the differences in the relevant purchasers of the products, it is highly unlikely that any prospective purchaser of one product would ever become aware of the other product.
For these reasons, the parties agree that there is no likelihood of confusion of consumers so long as the differences recited above remain, and the parties intend to maintain those differences.
IN WITNESS WHEREOF, the parties hereto duly execute this Agreement.
Copyright © 2002 Jefferson F. Scher. All Rights Reserved.