Should you seek a consent to register if your trademark application is blocked?
Attorney Michael Lasky discusses consent to register when a trademark is blocked.
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Phone: (404) 441-1750 or (952) 253-4106
My name is Michael Lasky and if you’re watching this video, it’s probable that you have a trademark registration issue and it involves a question of what’s known as a consent to register. I’m going to explain the problem and explain what you ought to do with it.
The problem is this; you may need a consent to register your trademark in two circumstances. Number one, you’ve done a trademark search and you want to use the particular trademark but there’s somebody else who has a trademark that’s close, not exact, close enough that you can’t be sure if you use it, you won’t get sued later on. And the worst case scenario is you adopt the trademark, you go on the marketplace, you build your product, and five years later you have to change the trademark that is a disaster. So one question that comes up all the time is should I ask the prior trademark owner if they will allow me to coexist, that’s circumstance one.
Circumstance two is even more dire. You have filed your trademark application, I don’t know if you did a search or not but you didn’t see the citation that came up and the trademark office rejected your trademark application so now you’re stuck. You can’t get registration and you might have an infringement problem. So again, you will ask your trademark lawyer should we ask for a consent of the prior user to allow us to keep our trademark?
And the answer of whether you should ask for consent is the following; there are two rules. One, be prepared to walk if the consent requested is denied. In other words, if you ask that other party can I use your trademark or my trademark to be coexisting with yours and they say no, you must be prepared to leave it go. In other words, you’re going to get out of using that trademark you’re going to pick a new one. That’s a really high-risk proposition.
Circumstance two, is if you don’t need, if you’re not prepared to walk from a trademark that the other part will not consent to, don’t ask. So basically, if you ask and you get a no, plan to walk. If you don’t ask then you didn’t need it. The reason this is true is once you ask you are potentially creating an admission that you needed the trademark consent and you don’t want that. So either you need it or you don’t need it, make up your mind. Consents are hard to get but if you’re willing to go after one ’cause you don’t want to live in uncertainty for years and years then be prepared to walk.
And that’s how consents works. I hope this helps. Thank you.