Trademark Concurrent Use Agreements: A Practical Guide to Carving Clear Geographic Rights
When two businesses adopt the same or similar trademark in good faith but in different places, the law does not always force one of them to rebrand. In the right circumstances, trademark law allows multiple parties to own and use similar marks at the same time—so long as their use is confined to clearly defined contexts that avoid confusing consumers. The tool that makes this possible is the concurrent use regime under Section 2(d) likelihood of confusion of the Lanham Act, supported by a carefully drafted private agreement that documents how the parties will stay out of each other’s way. This page explains what a trademark concurrent use agreement is, when it is appropriate, how it differs from consent agreements and coexistence agreements, how the USPTO and the Trademark Trial and Appeal Board (TTAB) evaluate concurrent use claims, and how our firm structures and prosecutes these agreements so they work both on paper and in the marketplace.
What Is a Concurrent Use Agreement (and How Is It Used)?
A trademark concurrent use agreement is a business contract that sets out the factual boundaries for two or more parties to use the same or similar trademark without causing consumer confusion. The agreement typically defines who can use the trademark, where they can use it, for what goods or services, and with what branding safeguards. While coexistence agreements also draw lines, a concurrent use agreement is purpose‑built to support a federal trademark registration that is geographically restricted, and it often serves as the backbone for a concurrent use application or proceeding at the TTAB.
In practice, the contract and the federal registration path work together. The agreement expresses the parties’ understanding and commitments; the trademark application asks the USPTO to issue a limited registration that mirrors those commitments. Because registrations reflect national rights by default, concurrent use is the exception. The applicant must persuade the TTAB (or rely on a court decree) that consumers will not be confused if the parties operate within the agreed boundaries.
When Would a Business Need a Concurrent Use Agreement?
Two business scenarios are common. The first is geographically remote adoption in good faith. Imagine an Oregon café that has operated as “Riverbend Coffee” since 2012 and, independently, a Florida café that began using the same name in 2013 without knowledge of the Oregon business. If each has built local goodwill and neither targeted the other’s territory, a carefully drawn geographic division, supported by a concurrent use application, may allow both to continue. The second scenario arises after a USPTO trademark refusal. An examining attorney may refuse registration because a similar registered trademark already exists. If the facts show meaningful geographic separation and good‑faith adoption, a concurrent use strategy—often negotiated alongside a private agreement with the senior registrant—can overcome the deadlock by requesting a geographically restricted registration rather than nationwide rights.
The Legal Framework: Section 2(d)’s Proviso and TTAB Practice
Section 2(d) of the Trademark Act contains a proviso that allows an eligible applicant to request registration based on concurrent rights acquired through use. In a concurrent use application, the applicant normally seeks a geographically restricted registration. The application must identify one or more parties—called excepted users—who have rights in other areas of the United States. Those parties may own registrations or applications, or they may have only common‑law rights. The TTAB’s rules and the Trademark Trial and Appeal Board Manual of Procedure (TBMP) explain the mechanics of these filings and proceedings.
There are two routes to a concurrent use registration. The most common is a TTAB determination—either in a newly instituted concurrent use proceeding or in a prior proceeding—that the applicant is entitled to a restricted registration. Less common, but equally valid, is a final court judgment setting the concurrent rights of the parties. Importantly, even incontestable registrations can be subject to a concurrent use proceeding. By contrast, registrations on the Supplemental Register and registrations issued under the 1920 Act are not eligible for concurrent use proceedings under the current rules.
The applicant bears the burden of proof. You must show that your use was in good faith; that the parties have operated in a way that avoids confusion; that appropriate geographic boundaries can be drawn; and that consumers are unlikely to be misled if those boundaries are formalized in a restricted registration. Examiners do not suggest or initiate concurrent use on their own. It is an applicant‑driven strategy, and success depends on a clear factual record and a disciplined agreement that the TTAB can trust.
Eligibility Pathways and Threshold Showings
Although we strive to keep this page free of lists, clarity is best served by summarizing the three common bases for requesting a concurrent use registration. First, you may proceed pursuant to a court decree or prior Board decision that has already defined concurrent rights. Second, you may rely on the consent of the senior registrant, embodied in a credible, detailed agreement that explains why confusion is unlikely if specific boundaries are honored. Third, you may qualify by showing that your date of first use in commerce predates the filing date of the conflicting application or registration (or, where an excepted user has no filing yet, predates any such filing the excepted user could make). In every scenario, the applicant must establish entitlement by a preponderance of the evidence.
What a Strong Concurrent Use Agreement Should Say
The agreement should read like a user’s manual for peaceful operation. It starts with precise party identification, clarifying whether affiliates, subsidiaries, licensees, distributors, and successors are bound. It then defines the marks with specificity, addressing standard‑character marks, stylized versions, logos, and foreseeable variations, and it extends to the digital footprint—domains, subdomains, social handles, and app names—so conflicts do not simply migrate online.
The most important term is the geographic boundary. Some agreements split the country by regions, states, or metropolitan areas. Others draw practical lines such as radius‑based zones around established locations. However the map is drawn, it must be administrable. We favor boundaries that match how the businesses actually sell and advertise, supported by market data and maps that can be updated as needed.
Clear goods and services limitations are equally critical. The agreement should align scope with reality: if one party sells roasted coffee beans and equipment B2B while the other operates consumer cafés, say so plainly. Where industries differ, the agreement should tie that difference to packaging, labeling, and marketing to maintain daylight. The contract should also include usage guidelines that keep the brands distinct in day‑to‑day practice—prominent house‑mark display, consistent logo treatments and color palettes, and, where appropriate, disclaimers in certain contexts. Because search advertising and marketplaces are frequent sources of accidental overlap, we address paid‑search keywords, negative keywords, marketplace categories, and app‑store descriptors head‑on.
A forward‑looking agreement anticipates expansion. It sets notice and approval mechanisms for new locations, product lines, channels, or price tiers; it may include caps or phased approvals for store counts or distribution footprints; and it establishes cooperation protocols for the rare instance of misdirected inquiries or actual confusion. Finally, it provides the legal infrastructure to keep the deal durable: term, termination, remedies, dispute‑resolution (often with business‑level escalation before arbitration or litigation), confidentiality, and authority to bind all necessary parties.
How the TTAB Evaluates Concurrent Use Claims
The Board is concerned with one question: Will consumers be confused? To answer it, the TTAB examines the record much like it would in a standard Section 2(d) analysis, but with a geographic lens. The Board will look at how similar the trademarks are in appearance, sound, and connotation; how related the goods or services are; how the parties actually sell and advertise; and who the relevant customers are and how sophisticated they may be. Evidence of good‑faith adoption and remote use is important, as is the absence of meaningful actual confusion during any period of coexistence. That said, the Board does not require a perfect record. It asks whether a restricted registration with sensible boundaries can exist without likely confusion.
The quality of the agreement matters, but it is not dispositive. A detailed, credible agreement that maps to marketplace realities carries substantial weight because it reflects the judgment of those “on the firing line.” Yet the Board will not simply rubber‑stamp a private deal if the proposed carve‑ups would predictably mislead consumers. The more your agreement provides facts, maps, sales data, advertising channels, and workable rules, the more persuasive it will be.
Evidence That Typically Helps
Concurrent use is a fact‑driven exercise. Persuasive submissions often include sales and advertising footprints by geography; screenshots and analytics for websites, marketplaces, and social channels showing localized reach; third‑party media coverage tied to specific locales; declarations from knowledgeable personnel describing when and where the marks have been used; and confusion logs documenting the presence—or absence—of misdirected inquiries. Where the parties have already coexisted for a meaningful period, evidence that consumers have not been confused can be powerful. We supplement these materials with maps and exhibits that visually reinforce the geographic separation and with prosecution plans that explain how the proposed registration language implements the agreed boundaries.
How Concurrent Use Differs from Consent and Coexistence
A consent agreement is typically a narrow instrument by which one party agrees not to oppose the other’s use or registration, often with limited undertakings to avoid confusion. A coexistence agreement is broader, setting operational rules about goods, channels, and sometimes geography, and it may or may not be filed with the USPTO in support of an application. A concurrent use agreement, by contrast, is designed to support the exceptional outcome of a geographically restricted federal registration. The hallmark of the concurrent use path is that it culminates—either through a TTAB proceeding or a court judgment—in a formal division of the national marketplace within the federal register itself.
Pros, Tradeoffs, and Practical Risks
The advantages are clear. Concurrent use can avoid costly litigation, unlock a path to federal registration that would otherwise be blocked, and allow both parties to continue growing with confidence under defined boundaries. But the regime comes with tradeoffs. Geographic restrictions can limit future expansion or require new negotiations if your business model changes. There is a risk of dilution or erosion of distinctiveness when two similar marks operate in related spaces, even with rules in place. Reputational spillover is possible if one party’s quality suffers. And while a well‑drafted agreement and a restricted registration dramatically reduce the risk of confusion, they cannot guarantee zero confusion. The TTAB and courts retain the authority to curtail or unwind arrangements that, in practice, mislead consumers.
Process Overview: From Strategy to Registration
Our process begins with clearance and feasibility. We assess whether the facts support good‑faith remote adoption and whether geographic boundaries can be drawn that meaningfully reduce confusion. If the strategy is viable, we develop a negotiation brief that frames the concurrent use proposal as a business solution, not a concession of rights. We then draft the agreement, translating marketplace realities into precise terms, and we build the evidentiary record needed for the TTAB—maps, sales data, declarations, and model identification language for the application.
Next, we file a concurrent use application or convert a pending application into one that seeks geographically restricted rights, naming the excepted users. The TTAB may institute a concurrent use proceeding to test the applicant’s entitlement. If the parties submit a robust agreement and supporting evidence, and if the Board finds that confusion is unlikely under the proposed carve‑ups, it will approve issuance of a restricted registration. In some trademark matters, especially where a federal lawsuit is already pending, we may secure a court judgment on concurrent rights and then ask the USPTO to issue the registration in accordance with that decree.
Practical Drafting Notes from Our Trademark Practice
We draft for two audiences at once: the counterparty who must live with the deal and the tribunal that must be persuaded by it. That means writing in plain English, tying commitments to how the businesses actually sell and market, and building in mechanisms for change. We prefer boundaries that can be measured and monitored. We address modern commerce—search ads, marketplace listings, app stores, domains, social handles—because these are the places where confusion most often starts. And we design agreements that are resilient, with notice‑and‑consent processes for expansions and with escalation and cure frameworks that resolve problems before they become disputes.
Common Pitfalls (and How We Avoid Them)
The most frequent mistake is drawing vague boundaries—for example, “the West” and “the East”—that no one can police. We replace vagueness with maps, county lists, or radius descriptions. Another mistake is ignoring digital territories. Even if brick‑and‑mortar locations are separate, search and social can collapse distance; the agreement and the evidence must address how online marketing will be targeted and how misdirection will be minimized. Parties also sometimes neglect the excepted user concept and fail to bind affiliates, franchisees, or key distributors, leaving gaps that undermine the arrangement. Finally, some applicants file without enough evidence. We build the record methodically so the TTAB has facts, not just promises.
International Considerations
Concurrent use is a U.S. construct, and other jurisdictions treat similar issues differently. Some countries give significant weight to private letters of consent or coexistence agreements; others do not. If your plans include foreign markets, we coordinate with local counsel to align your U.S. strategy with international filing and enforcement, ensuring that the way you divide rights at home does not inadvertently create obstacles abroad.
How Our Law Firm Can Assist With Your Trademark Matter
We handle the full lifecycle of concurrent use matters—risk assessment, negotiation, drafting, and prosecution. We begin with a candid assessment of whether concurrent use is the right tool in light of your business goals and risk tolerance. If it is, we craft an agreement that is specific where needed and flexible where the business may evolve. We prepare the supporting application and evidence for the TTAB, calibrate what belongs on the public record and what should remain confidential, and steward the matter through to a restricted registration. And after registration, we remain available to adjust boundaries or to update the agreement as growth and market conditions change.
If you have encountered a conflicting trademark during the trademark search and clearance phase, received a Section 2(d) likelihood of confusion refusal, or discovered that another business has operated under “your” mark in a remote territory, a concurrent use strategy may offer a practical and cost‑effective path forward.