Last week, we discussed how a consent agreement allowed The Rolling Stones and Rolling Stone magazine to trademark their respective names. This week, we look at when and why it makes sense to enter into such a consent agreement.
As the Rolling Stones famously put it, “You can’t always get what you want. But if you try sometimes you just might find you get the trademarks you need.” Or something like that.
You may recall from our prior post that the U.S. Patent and Trademark Office initially rejected certain trademark applications filed on behalf of The Rolling Stones based on prior registrations related to Rolling Stone magazine. The Rolling Stones were able to overcome that rejection based on a consent agreement entered into between the two parties that allowed both to use their names as trademarks in their respective fields.
The situation begs the question: Why would two parties with almost identical trademarks enter into such a consent agreement? The short answer: certainty.
Remember: The Rolling Stones were formed in 1962. Rolling Stone was not founded until 1967. That said, Rolling Stone received its first trademark for the name in the U.S. in 1973 – several years before The Rolling Stones even applied for their first trademark in the U.S.
Even though Rolling Stone registered the trademark first in the U.S., because it did not use the name first, it was at risk for an attack from The Rolling Stones. Therefore, both parties had incentive to enter into a consent agreement to provide certainty regarding their respective trademarks.
A consent agreement is a reasonable and economical way to handle situations where priority to a trademark is at issue. Certainly more economical than either the Stones or Rolling Stone being unable to protect their valuable trademarks.
Now, check out this video from the Stones concert in Nashville last week: