The Board accepted a concurrent use agreement allowing Applicant Bras for the Cause Iowa, Inc. to receive a registration of its mark BRAS FOR THE CAUSE for "Charitable fundraising services for screening, diagnosis, and eradication of breast and cervical cancer," limited to the area comprising the United States except the states of California, Colorado, Florida, Oregon, Pennsylvania, Washington, and Wyoming. Bras for the Cause Iowa, Inc. v. Soroptimist International of Glendale, CA , Concurrent Use No. 94002700 (June 9, 2017) [not precedential].
In December 2016, Iowa filed a motion to dismiss this proceeding in light of a settlement agreement reached by the parties. The Board denied the motion due to concerns as to whether the terms of the agreement would sufficiently avoid likely confusion, because of the agreed-upon concurrent use of the parties’ nearly identical marks for overlapping services in potentially overlapping geographic territory.
Applicant filed a revised agreement, adding an additional entity (SIA) and providing:
• That SIG and SIA will not "use the mark BRAS FOR THE CAUSE in Iowa or its contingent states of Minnesota, Wisconsin, Illinois, Missouri, Nebraska or South Dakota," which are designated for Applicant’s use;
• That Applicant will not "use the mark BRAS FOR A CAUSE in the states of California, Colorado, Florida, Oregon, Pennsylvania, Washington, or Wyoming," which are designated for SIG’s and SIA’s use, and Applicant "will so limit its pending trademark application;"
• That if either party desires to expand the use of its marks outside the designated states, they will follow the procedure set out in the Revised Agreement to prevent overlap, providing for advance notice and in certain scenarios, consent or the withholding thereof;
• That potential confusion is de minimis or unlikely;
• That their respective trade channels differ and their respective fundraising activities are "highly localized," each "within a limited geographic community near" their respective offices;
• That they will follow a procedure set out in the Revised Agreement to address any instances of actual confusion that may arise;
• That SIG has abandoned its application,9 and neither SIG nor SIA will apply to register BRAS FOR A CAUSE as long Applicant continues to use its mark;
• That Applicant “agrees to permit SIG and any of the SIA clubs to use SIG’s mark, as well as any logo that includes the words 'BRAS FOR A CAUSE;'" and
• That SIA will not oppose Applicant “in using Applicant’s mark and any logo that includes the words 'BRAS FOR THE CAUSE'" and SIG and SIA consent to the use and registration of Applicant’s mark.
The Board found the revised agreement to be acceptable and it ordered restriction of Iowa's application to the area comprising the United States except the states of California, Colorado, Florida, Oregon, Pennsylvania, Washington, and Wyoming.