What is a consent to use agreement?
Often times, during a lawsuit for trademark infringement or during an opposition?) or cancellation proceeding, the parties will resolve their dispute by entering into a “consent to use” agreement. In a consent to use agreement, both parties agree that each can use the relevant mark pursuant to the specific terms and conditions arranged by the parties. The consent to use agreement also includes an agreement between the parties that they will not sue each other for trademark infringement.
It should be noted that a consent to use agreement may not be sufficient to overcome a rejection by the Patent and Trademark Office during the trademark application process, if the PTO is claiming that there is a likelihood of confusion with a prior registered mark. This is because a consent to use agreement is simply an agreement between the parties, and if the Patent and Trademark Office determines that the consuming public could be confused, it will be inclined to reject the application regardless of the parties’ independent agreement (because a consent to use agreement doesn’t change the impact of the marks’ on the mind of the public consumers).