Trademark Concurrent Use Agreement Template for the United States

When multiple businesses have legitimate claims to similar or identical trademarks, a Trademark Concurrent Use Agreement provides the legal framework necessary to avoid conflicts and establish clear usage rights. Under United States trademark law, this agreement allows parties to coexist peacefully while protecting their respective trademark interests and maintaining compliance with federal regulations.

When do you need this document?

You need a Trademark Concurrent Use Agreement when your business operates in a different geographic area or market sector than another company using a similar trademark. This situation commonly arises when businesses develop trademark rights independently in separate regions before either party seeks federal registration. The agreement becomes essential when both parties want to continue using their marks without infringing on each other's rights. It's also necessary when the USPTO requires concurrent use proceedings as part of the federal registration process, or when businesses want to proactively resolve potential trademark disputes before they escalate into costly litigation.

Key legal considerations

Your agreement must clearly define the scope of each party's trademark rights, including specific geographic boundaries, field of use limitations, and quality control standards. The territorial divisions should be precise and enforceable, often based on existing market presence or business operations. Quality control provisions are crucial under the Lanham Act, as they prevent trademark abandonment and maintain the distinctiveness of the marks. You should also address expansion rights, determining how each party can grow their business within agreed parameters. The agreement must include provisions for monitoring compliance, handling violations, and resolving future disputes. Additionally, consider including termination clauses that specify what happens if one party violates the agreement or ceases to use their trademark rights.

Legal requirements in United States

Under the Lanham Act, concurrent use agreements must comply with federal trademark law principles, particularly Section 2(d) requirements for concurrent registration. If seeking USPTO registration, your agreement must demonstrate that concurrent use will not cause consumer confusion in the marketplace. The USPTO may require specific geographic or commercial limitations as conditions for allowing concurrent registrations. Your agreement should align with USPTO policies outlined in the Trademark Manual of Examining Procedure (TMEP), particularly regarding territorial restrictions and quality control standards. State trademark laws may also apply, especially for businesses operating within specific jurisdictions. The agreement must be enforceable under contract law principles and should include proper legal notices and registration requirements. Documentation of prior use and good faith adoption of the trademarks strengthens the agreement's legal foundation and supports any future USPTO proceedings.