Co-Existing Agreements In Potential Or Ongoing Trademark Disputes
Co-existence agreements are a way to allow potentially confusing trademarks to exist simultaneously in the market without any action of trademark infringement. Competitors of similar goods frequently use such recourse to avoid lawsuits or settle them.
Co-existence Agreements- Legally valid or invalid
The legal validity of such co-existence agreements invites numerous discussions. First, the validity directly depends on the concept of trademarks being the property of their “owners”. If such is the case, then the aforesaid agreements would be valid inspite of the fact that they may result in possible harm to the society or public interest. On the other hand, if the trademarks are actually not the property of their owners, then the agreement’s usefulness and possible harm should be adjudged by the court to decide whether the agreement in question is valid or not.
The second discussion in this respect revolves around the economics of trademark protection. The main impact of trademark protection within the ambit of economics is that it substantially reduces the cost of consumer search. If the quality of the product is kept intact, then the consumers associate the product with the trademark and hence manufactures are given an incentive to maintain such quality.
Last, the antitrust implication of any co-existence agreement is an issue to be considered in order to decide their validity. Usually, co-existence agreements do not violate antitrust laws however they may affect competition between manufacturers of similar product.
The Ohio State University and Marc Jacobs dispute
Background to the dispute
The Ohio State University (hereinafter “the University”) and fashion designer Marc Jacobs, both filed separate application with the United States patents and Trademark Office (hereinafter “USPTO”) in the year 2019 for the mark “THE” which would facilitate its emblazonment on merchandise like T-shirts and bags. The Ohio State University wanted to replace the acronym “OSU” on their merchandise as the Oregon State University and the Okhlama State University, both use the same acronym resulting in a lot of confusion being caused. On the other hand, Marc Jacobs started using the word “THE” on numerous products as a form of humorous branding.
How the Ohio State University secured registration
The USPTO initially refused the University’s application for two broad reasons. First, it was opined that the University was using the word only ornamentally on their clothing while not signifying the source of its goods, thus, “THE” failed to function as a trademark. Secondly, USPTO cited a potential refusal on the ground of likelihood of confusion given that fashion house Marc Jacobs owned an earlier-filed trademark application for the identical mark dealing with similar products like clothing items.
The University, for three years, worked to show the USPTO that the term “THE” used by the Ohio State and its licensees is not ornamental but is actually an indicator of the secondary source and sponsorship by the Ohio State. In respect of the second ground, the University secured Marc Jacob’s consent to register the mark and the parties, as a result, agreed to amend their applications in order to showcase that both of them are eligible to own registrations for identical mark in relation with clothing items, while also not causing confusion among consumers in the marketplace.
In consequence, the University amended its application in order to clarify that its products are in facts “promoted, distributed and sold through channels customary to the field of sports and collegiate athletics” while Marc Jacobs amended its trademark application to clarify that the products owned by it are “promoted, distributed and sold through channels customary to the field of contemporary fashion”.
Following these amendments, the Ohio State University secured registration of the “THE” mark. The University’s registration coexists with numerous other trademarks also incorporating the mark “THE” dealing with clothing items. Furthermore, it now co-exists with Marc Jacobs’ registration for the identical standalone mark “THE” in the same field, the only condition being that the products are distributed through different channels of trade.
Impact of the registration
It is without doubt that the scope of the registration granted to the University is narrow, however, it does provide the university with a tool to chase counterfeiters to try to ride on the University’s goodwill. The mark “THE” has been the university’s rallying cry in sports events for decades now.
Conclusion
Competition in the market dealing with similar goods is inevitable. However, it is well-recognised that the end goal of any trademark infringement suit is to ensure that no confusion is caused amongst general public Even if the products in question fall within the same category, it is not essential that they may share the same set consumers. Co-existence agreements provide a channel for manufacturers and owners of identical marks to serve their consumer base while also avoiding unnecessarily long lawsuit hence facilitating mutual coexistence.
Author: Shailza Agarwal, Symbiosis Law School, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing.
