Trademark Coexistence Agreement

TRADEMARK COEXISTENCE AGREEMENT

THIS TRADEMARK COEXISTENCE AGREEMENT (this "Agreement") is made and entered into as of _________________________ (the "Effective Date"),

BY AND BETWEEN:

PARTY A:
Name/Entity: ____________________________________________
Address: ________________________________________________
City, State, ZIP: _________________________________________
Country: ________________________________________________

AND

PARTY B:
Name/Entity: ____________________________________________
Address: ________________________________________________
City, State, ZIP: _________________________________________
Country: ________________________________________________

(Each a "Party" and collectively the "Parties")

RECITALS

WHEREAS, Party A owns or claims rights in certain trademarks as set forth in Exhibit A (the "Party A Marks");

WHEREAS, Party B owns or claims rights in certain trademarks as set forth in Exhibit B (the "Party B Marks");

WHEREAS, the Parties acknowledge that certain similarities may exist between the Party A Marks and the Party B Marks;

WHEREAS, the Parties desire to enter into this Agreement to provide for the coexistence of their respective trademarks and to avoid any likelihood of confusion in the marketplace;

WHEREAS, the Parties have agreed to define their respective areas of use to minimize consumer confusion;

NOW, THEREFORE, in consideration of the mutual covenants contained herein and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows:

ARTICLE 1: DEFINITIONS

1.1 "Party A Marks" means the trademarks, service marks, trade names, and domain names owned or controlled by Party A as identified in Exhibit A, including any registrations and pending applications therefor.

1.2 "Party B Marks" means the trademarks, service marks, trade names, and domain names owned or controlled by Party B as identified in Exhibit B, including any registrations and pending applications therefor.

1.3 "Party A Territory" means the geographic area(s) in which Party A is authorized to use the Party A Marks under this Agreement, as defined in Exhibit C.

1.4 "Party B Territory" means the geographic area(s) in which Party B is authorized to use the Party B Marks under this Agreement, as defined in Exhibit C.

1.5 "Party A Field" means the goods and/or services for which Party A is authorized to use the Party A Marks under this Agreement, as defined in Exhibit D.

1.6 "Party B Field" means the goods and/or services for which Party B is authorized to use the Party B Marks under this Agreement, as defined in Exhibit D.

1.7 "Channels of Trade" means the marketing channels, distribution networks, and customer segments through which a Party markets its goods or services.

1.8 "Confusingly Similar Mark" means any trademark that, when used in connection with the goods or services specified herein, is likely to cause confusion with one of the other Party's marks.

ARTICLE 2: ACKNOWLEDGMENT OF RIGHTS

2.1 Party A's Rights. Party B acknowledges that:

(a) Party A owns valid and subsisting rights in the Party A Marks;

(b) Party A has used the Party A Marks in connection with [describe goods/services] since [date of first use];

(c) Party B will not challenge or contest the validity of Party A's rights in the Party A Marks within the Party A Field and Party A Territory.

2.2 Party B's Rights. Party A acknowledges that:

(a) Party B owns valid and subsisting rights in the Party B Marks;

(b) Party B has used the Party B Marks in connection with [describe goods/services] since [date of first use];

(c) Party A will not challenge or contest the validity of Party B's rights in the Party B Marks within the Party B Field and Party B Territory.

2.3 No Cross-Ownership. Nothing in this Agreement shall be construed as transferring any ownership interest in either Party's marks to the other Party.

ARTICLE 3: SCOPE OF COEXISTENCE

3.1 Geographic Restrictions

Party A:
☐ Party A shall have the exclusive right to use the Party A Marks in the Party A Territory as defined in Exhibit C.
☐ Party A agrees not to use the Party A Marks in the Party B Territory.

Party B:
☐ Party B shall have the exclusive right to use the Party B Marks in the Party B Territory as defined in Exhibit C.
☐ Party B agrees not to use the Party B Marks in the Party A Territory.

☐ Shared Territory: The Parties may both use their respective marks in the following territory, subject to the restrictions in this Agreement: _______________________________________________

3.2 Field of Use Restrictions

Party A:
☐ Party A shall limit its use of the Party A Marks to the Party A Field as defined in Exhibit D.
☐ Party A agrees not to use the Party A Marks in connection with goods or services within the Party B Field.

Party B:
☐ Party B shall limit its use of the Party B Marks to the Party B Field as defined in Exhibit D.
☐ Party B agrees not to use the Party B Marks in connection with goods or services within the Party A Field.

3.3 Channel Restrictions

Party A Channels:
☐ _________________________________________________________________

Party B Channels:
☐ _________________________________________________________________

3.4 Customer Restrictions

☐ Party A shall limit marketing to: ____________________________________

☐ Party B shall limit marketing to: ____________________________________

ARTICLE 4: TRADEMARK USE REQUIREMENTS

4.1 Manner of Use

Each Party agrees to use its marks in a manner that minimizes the likelihood of confusion:

Party A agrees to:
☐ Display the Party A Marks in the specific form shown in Exhibit A
☐ Use the following house mark or distinguishing element with the Party A Marks: ________________
☐ Include the following disclaimer or distinguishing statement: ________________
☐ Other: ________________

Party B agrees to:
☐ Display the Party B Marks in the specific form shown in Exhibit B
☐ Use the following house mark or distinguishing element with the Party B Marks: ________________
☐ Include the following disclaimer or distinguishing statement: ________________
☐ Other: ________________

4.2 Quality Standards

Each Party shall maintain quality standards for goods and services offered under its marks that are consistent with industry standards and do not reflect negatively on the other Party's marks.

4.3 Proper Trademark Notices

Each Party shall use appropriate trademark notices (TM, SM, or ®) in connection with its marks in accordance with applicable law, including:

(a) The symbol ® for marks registered in the United States;
(b) The symbol TM or SM for unregistered marks;
(c) Compliance with the marking requirements of 15 U.S.C. Section 1111.

ARTICLE 5: REGISTRATION AND PROSECUTION

5.1 Existing Registrations

Each Party shall have the right to maintain its existing trademark registrations as listed in Exhibits A and B.

5.2 Future Applications

Party A may seek registration of:
☐ The Party A Marks in the Party A Territory for goods/services within the Party A Field
☐ Additional variations of the Party A Marks with prior written notice to Party B

Party B may seek registration of:
☐ The Party B Marks in the Party B Territory for goods/services within the Party B Field
☐ Additional variations of the Party B Marks with prior written notice to Party A

5.3 Non-Opposition

(a) Party A agrees not to oppose or seek cancellation of any application or registration for the Party B Marks for goods or services within the Party B Field in the Party B Territory.

(b) Party B agrees not to oppose or seek cancellation of any application or registration for the Party A Marks for goods or services within the Party A Field in the Party A Territory.

5.4 Consent to Registration

☐ Upon request, each Party agrees to provide a letter of consent to the other Party to submit to the relevant trademark office in connection with applications for registration within the scope of this Agreement.

☐ The form of consent letter is attached as Exhibit E.

5.5 Notice of Applications

Each Party shall provide the other Party with written notice within _____ days of filing any new trademark application for a mark that is similar to the other Party's marks.

ARTICLE 6: DOMAIN NAMES

6.1 Domain Name Allocation

Party A Domain Names:
☐ Party A shall have the exclusive right to register and use the following domain names: _______________________________________________

Party B Domain Names:
☐ Party B shall have the exclusive right to register and use the following domain names: _______________________________________________

6.2 Future Domain Registrations

Neither Party shall register or use any domain name that:
(a) Incorporates the other Party's trademark;
(b) Is confusingly similar to the other Party's registered domain names;
(c) Could create confusion regarding the source or affiliation of the domain.

6.3 Domain Disputes

Neither Party shall file any domain name dispute proceeding (including UDRP proceedings) against the other Party's domain names that are consistent with this Agreement.

ARTICLE 7: ENFORCEMENT AND INFRINGEMENT

7.1 Third-Party Infringement

Each Party shall have the sole right to enforce its marks against third-party infringers within its respective field and territory.

7.2 Cooperation

If a third party infringes the marks of both Parties, the Parties shall cooperate in good faith regarding enforcement actions and shall not take any action that would adversely affect the other Party's rights.

7.3 Notice of Infringement

Each Party shall promptly notify the other Party upon becoming aware of any third-party use that may affect the other Party's trademark rights.

ARTICLE 8: REPRESENTATIONS AND WARRANTIES

8.1 Party A Representations

Party A represents and warrants that:

(a) Party A has the authority to enter into this Agreement;
(b) Party A owns or controls the rights to the Party A Marks;
(c) Party A is not aware of any pending claims or proceedings that would affect the Party A Marks;
(d) Entering into this Agreement will not violate any agreement to which Party A is a party.

8.2 Party B Representations

Party B represents and warrants that:

(a) Party B has the authority to enter into this Agreement;
(b) Party B owns or controls the rights to the Party B Marks;
(c) Party B is not aware of any pending claims or proceedings that would affect the Party B Marks;
(d) Entering into this Agreement will not violate any agreement to which Party B is a party.

ARTICLE 9: TERM AND TERMINATION

9.1 Term

This Agreement shall commence on the Effective Date and shall continue:

☐ Perpetually, unless terminated as provided herein

☐ For an initial term of _____ years, automatically renewing for successive _____ year terms unless either Party provides written notice of non-renewal at least _____ days prior to the end of the then-current term

☐ Until _____________________ [specific date]

9.2 Termination for Breach

Either Party may terminate this Agreement upon written notice if the other Party materially breaches this Agreement and fails to cure such breach within _____ days after receiving written notice thereof.

9.3 Termination Upon Assignment

This Agreement may be terminated by either Party upon _____ days' written notice if the other Party:
(a) Assigns or transfers its marks to a third party; or
(b) Undergoes a change of control.

9.4 Effect of Termination

Upon termination:
(a) All coexistence rights granted herein shall cease;
(b) Each Party may enforce its trademark rights without restriction;
(c) Neither Party shall be liable to the other for any consequences of termination, except for breaches occurring prior to termination.

9.5 Survival

Articles 2, 8, 10, and 11 shall survive termination of this Agreement.

ARTICLE 10: INDEMNIFICATION

10.1 Party A Indemnification

Party A shall indemnify, defend, and hold harmless Party B from any claims, damages, and expenses arising from:
(a) Party A's breach of this Agreement;
(b) Party A's use of the Party A Marks outside the scope permitted herein;
(c) Any claim that the Party A Marks infringe third-party rights.

10.2 Party B Indemnification

Party B shall indemnify, defend, and hold harmless Party A from any claims, damages, and expenses arising from:
(a) Party B's breach of this Agreement;
(b) Party B's use of the Party B Marks outside the scope permitted herein;
(c) Any claim that the Party B Marks infringe third-party rights.

ARTICLE 11: GENERAL PROVISIONS

11.1 Governing Law

This Agreement shall be governed by the laws of the State of __________________, without regard to conflict of laws principles.

11.2 Dispute Resolution

☐ Mediation First: Any dispute shall first be submitted to mediation under the rules of __________________.

☐ Arbitration: Any dispute not resolved through mediation shall be resolved by binding arbitration under the rules of __________________ in __________________.

☐ Litigation: Any dispute shall be brought exclusively in the courts of __________________.

11.3 Notices

All notices shall be in writing and sent to the addresses set forth above by:
☐ Certified mail, return receipt requested
☐ Overnight courier
☐ Email with confirmation (to: _______________)

11.4 Assignment

Neither Party may assign this Agreement without the prior written consent of the other Party, except that either Party may assign this Agreement to an Affiliate or successor in connection with a merger, acquisition, or sale of substantially all assets, provided that the assignee agrees in writing to be bound by the terms of this Agreement.

11.5 Entire Agreement

This Agreement, including all Exhibits, constitutes the entire agreement between the Parties regarding the subject matter hereof and supersedes all prior agreements and understandings.

11.6 Amendment

This Agreement may only be amended by written instrument signed by both Parties.

11.7 Waiver

No waiver of any provision shall be effective unless in writing. No failure to exercise or delay in exercising any right shall constitute a waiver.

11.8 Severability

If any provision is held invalid, the remaining provisions shall continue in full force and effect.

11.9 No Partnership

Nothing in this Agreement shall create a partnership, joint venture, agency, or employment relationship between the Parties.

11.10 Counterparts

This Agreement may be executed in counterparts, each of which shall be deemed an original.

SIGNATURES

IN WITNESS WHEREOF, the Parties have executed this Trademark Coexistence Agreement as of the Effective Date.

PARTY A:

Signature: _________________________________

Printed Name: _____________________________

Title: ____________________________________

Date: ____________________________________

PARTY B:

Signature: _________________________________

Printed Name: _____________________________

Title: ____________________________________

Date: ____________________________________

EXHIBIT A: PARTY A MARKS

Visual Representation of Party A Marks:

[Insert images of marks]

EXHIBIT B: PARTY B MARKS

Visual Representation of Party B Marks:

[Insert images of marks]

EXHIBIT C: TERRITORIAL RESTRICTIONS

Party A Territory:
☐ Worldwide, except as limited below
☐ United States only
☐ The following countries/regions: _____________________________________
☐ Other: ___________________________________________________________

Party B Territory:
☐ Worldwide, except as limited below
☐ United States only
☐ The following countries/regions: _____________________________________
☐ Other: ___________________________________________________________

Shared Territory (if any):
___________________________________________________________________

EXHIBIT D: FIELD OF USE RESTRICTIONS

Party A Field:
| International Class | Goods/Services Description |
|---------------------|---------------------------|
| | |
| | |

Party B Field:
| International Class | Goods/Services Description |
|---------------------|---------------------------|
| | |
| | |

Excluded/Reserved Fields:
___________________________________________________________________

EXHIBIT E: FORM OF CONSENT LETTER

[LETTERHEAD]

[Date]

Commissioner for Trademarks
United States Patent and Trademark Office
P.O. Box 1451
Alexandria, VA 22313-1451

Re: Application Serial No. ______________
Mark: ______________
Applicant: ______________

Dear Commissioner:

[Company Name], owner of U.S. Trademark Registration No. ______________ for the mark ______________, hereby consents to the registration and use of the mark ______________ by [Applicant Name] for [goods/services] in International Class(es) ______________.

We are aware of Applicant's application referenced above and have entered into a Trademark Coexistence Agreement dated ______________ that delineates the rights of each party. Based on that agreement, we believe the parties' marks can coexist in the marketplace without likelihood of confusion.

This consent is provided solely for the purpose of the referenced trademark application and does not constitute a waiver of any other rights we may have.

Sincerely,

_________________________________
[Authorized Signatory]
[Title]

NOTICE: This template is provided for informational purposes only and does not constitute legal advice. Trademark coexistence agreements involve complex legal considerations regarding likelihood of confusion and may be subject to approval by trademark offices. Courts may decline to enforce coexistence agreements if they determine confusion is likely to result. Consult with a qualified trademark attorney before using this agreement.