2(d) Decisions Often Turn On Relatedness Evidence
I have written quite a bit on the second du Pont factor, the “relatedness of the goods and services” and this is because many reversals of likelihood of confusion decisions are based on the evidence produced or the evidence lacking for the relatedness between the applicant’s goods or services and the registrant’s. Knowing whether the Examining Attorney produced sufficient evidence to demonstrate a relatedness showing is critical. The standard is that the goods or services of the applicant and the registrant need only be related in some manner and/or the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (citing 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). This means that the products and services have to be encountered by the same persons in situations that would create an incorrect assumption that they originate from the same source.
It's important to keep in mind that the nature and scope of a party’s goods or services must be determined on the basis of the goods or services recited in the application and cited in the registration. Dictionary definitions may be used to define the terminology in the identification and to show a term may have a specific meaning in a particular trade or industry. This is different than using extrinsic evidence to restrict the scope of the goods or services which is not permissible. If the cited registration describes goods or services broadly, and there is no limitation as to their nature, type, channels of trade, or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described, that the goods or services move in all normal channels of trade, and they are available to all classes of purchasers. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); When the relatedness of the goods and services is not evident, well known, or generally recognized, "something more" than the mere fact that the goods and services are used together must be shown. See In re St. Helena Hosp., 113 USPQ2d 1082 (Fed. Cir. 2014).
Evidence of relatedness may include news articles showing that the relevant goods or services are used together, have complementary uses, or are used by the same purchasers. Another type of evidence for relatedness may include advertisements showing the relevant goods or services advertised together or sold by the same manufacturer or dealer. Copies of prior use-based registrations of the same mark for both applicant’s goods or services and the goods or services listed in the cited registration may also be persuasive evidence of relatedness. For more on this topic see our webpage entitled, How To Prove The Relatedness Of The Goods Or Services.
One example of relatedness for food and wine would be a news article in a culinary magazine elaborating on how well paired certain wines are with certain foods, or how certain foods are served together. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984), (where evidence showed that bread and cheese are often used in combination). Another example is how certain equipment may be used together and therefore related, like an ultrasound device and MRI machine because they may be used on the same patients by the same medical professionals. See In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009).
If the marks are identical, then the relatedness test becomes more relaxed. In that case, only a viable relationship between the goods and or services is required to find that there is a likelihood of confusion. See In re Shell Oil Co., 992 F.2d. 1204 (Fed. Cir. 1993). Also, not all the goods and services listed in the application or registration need to be related. It is enough if any good or service is determined to cause a likelihood of confusion in the application and registration. See Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, at *6 (TTAB 2019) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)).
In addition, the trade channels will be considered for the goods and services. For example, are the goods sold in the same retail store aisles or are the goods/services advertised in the same magazines, trade journals or online websites? One way to avoid 2(d) refusals is to limit the trade channels, if possible and include the restrictive language in the identification of the application. See In re Costa Farms LLC, Serial No. 87674168 (December 31, 2019) [not precedential], where the Applicant limited its distributorship services to wholesale channels, and therefore only wholesale customers could be confused by the sources of the marks. The Board concluded that there was no overlap of trade channels. See also, In re Genebook LLC, Serial No. 90269018 (October 26, 2022) [not precedential], where the Board reversed a 2(d) finding based on lack of evidence of relatedness and no overlapping trade channels.
It is important to remember that the Examining Attorney must be held to his or her burden of producing evidence that consumers are accustomed to the same companies using the same brands for both of the subject goods and/or services or that the goods and services are marketed in a way that consumers will mistakenly believe they come from the same source. See also a very recent case, Shenzhen IVPS Tech. Co. Ltd. v. Fancy Pants Products, LLC, Opposition No. 91263919 (October 31, 2022) [precedential], where the Board held there was insufficient evidence to find cannabis products and tobacco products are sold through the same trade channels to the same consumers. If you have questions regarding possible confusion of similar trademarks due to the relatedness of the goods or services, please feel free to contact the firm for a courtesy consultation.