Here’s an overview of factors that influence the complexity and potential outcome, with the relative strength of your brand being a pivotal factor in determining how the case will unfold.
The market perception of both parties
Even if trademarks seem similar on paper, what truly matters is how the brands appear in the market. Are they competitors, or do they operate in entirely different spaces? The closer your goods or services are to theirs, the less willing they are to co-exist.
Key factors
Different markets and/or target audiences.
Overlap in business offerings and relatedness of products or services.
Impact on outcome
Different markets: Potential opponents are likely to negotiate a co-existence if they believe your trademark is not a direct threat.
Overlap in business offerings: Negotiating co-existence and narrowing the scope of your trademark might still be the most viable options. However, the closer their goods or services are to yours, the less willing they are to co-exist.
Example
If an opponent with the trademark “Tech-fy” opposes your mark for "Techify" but primarily focuses on hardware for car industry, while your business operates in marketing software business, a coexistence agreement specifying non-competing use cases is very likely.
Strength of the opponent’s claim
The formal strength of the counterparty’s case also plays a critical role. You should take them into account when deciding whether to fight in opposition or withdraw the trademark if negotiations fail or are not pursued.
Key factors
Weakness of the opponent's mark in terms of distinctiveness, descriptiveness, and presence of many similar marks.
Similarity between compared brands and goods and services as described in the trademark application.
Impact on outcome
Strong claim: If the opposition is based on a strong case, negotiating coexistence or narrowing the scope of your trademark might be the most viable option.
Weak claim: If the opponent’s arguments are based on generalities or insufficient evidence, defending in opposition may have a higher likelihood of success.
Example
If an opponent with the trademark “Brand Guru” opposes your mark for "Work Guru" defending in opposition or negotiating better co-existence terms are more likely, because the word Guru is less distinctive and there are many other trademarks, incorporating the name Guru, already co-existing on the market.
Willingness to co-exist
The counterparty’s openness to negotiate and reach a co-existence agreement can significantly shape the proCoopecess. A cease and desist letter that includes a proposal for co-existence indicates an opponent’s willingness to negotiate. Conversely, an aggressive or inflexible tone may signal a more challenging process.
Key factors
Type and tone of the counterparty action and proposal.
Long, confusion-free coexistence.
Established market presence of applicant vs emerging business.
Impact on outcome
Cooperative counterparty: Some counterparty’s offer coexistence right from the start. Then it's a no-brainer.
Stubborn counterparty: In other cases, opponents may aim to block your application entirely, leaving formal opposition defense as the only viable strategy.
Established applicant: May be in a better position to demonstrate a lack of confusion through long, confusion-free coexistence and negotiate a solid deal.
New applicant: Might need to consider whether withdrawing the trademark and rebranding is not the best way how to avoid further disputes.
Example
Two local businesses with overlapping names but operating in different industries and regions may successfully argue that they can continue operating without conflict.