There are both offensive and defensive strategies to consider.
These are many considerations to take into account when your client is considering a trademark and thinking about competitors in the marketplace at large. One consideration is coexistence agreements. This type of agreement is a contract wherein two trademark owners agree to use their similar marks, subject to limitations. Although coexistence agreements commonly establish restrictions of use to avoid confusion, including limitations regarding geography, trade channels, time-of-year, and/or goods and services. Along with letters of consent, such agreements can be used in prosecution to overcome a likelihood-of-confusion refusal or to avoid and mitigate litigation expenses. This video reviews coexistence agreements, opposition proceedings, and cancellation proceedings.
Cecilia R. Dickson
The Webb Law Firm
· Partner, The Webb Law Firm, IP focused boutique of 50+ IP lawyers located in Pittsburgh, PA
· 15+ years of trademark specific experience, including, international filing strategies, prosecution, portfolio management, enforcement litigation and licensing
· Former president of the Pennsylvania Bar Association IP Law Section, the Pittsburgh Intellectual Property Law Association and the Q. Todd Dickinson Inn of Court
· Graduate of Harvard Law School
Christopher P. Sherwin
The Webb Law Firm
· Senior associate, The Webb Law Firm, IP focused boutique of 50+ IP lawyers located in Pittsburgh, PA
· 7+ years of trademark specific experience, including, advising on international filing strategies, prosecution, portfolio management and enforcement
· Works with domestic and international independent inventors, small business, and large corporations to manage and protect their IP assets, including patents, trademarks, and copyrights
· Graduate of Penn State University and WVU Law School
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