Concurrent Use Agreement Holds Up
Similar trademarks can co-exist with the blessing of the TTAB. Bras for Cause, Iowa, Inc. tried to register BRAS FOR THE CAUSE for charitable fundraising services. Soroptimist International of Glendale California, CA opposed registration because it wanted to register BRAS FOR A CAUSE for the same types of services. In the end, the parties settled allowing each party to use their marks. The opposition proceeding became a concurrent use proceeding. At first, TTAB refused to accept the concurrent use agreement because of concerns that the parties would be offering similar services in potentially overlapping geographic territories. This would lead to marketplace confusion. The parties submitted a revised agreement that staked out their territories so there would be no overlap. TTAB accepted the revised agreement and both parties were allowed to proceed with restricted registrations.
WHY YOU SHOULD KNOW THIS. Federal trademark law provides nationwide protection for a trademark; even if the trademark isn’t used everywhere in the U.S. As this case demonstrates, sometimes parties with the same or similar trademarks can stake out their territory and still get registrations. However, TTAB doesn’t rubber stamp these agreements. Trademark law still has an interest in minimizing confusion in the market place. So, concurrent use agreements have to be carefully drafted to make sure that the risk to confusion is relatively small.