Westchester Women's Bar Association

How To Prove The Relatedness Of The Goods Or Services

In a likelihood of confusion analysis the two most important factors are the similarities between the trademarks and the relatedness between the goods or services. Generally speaking, it is easier to understand how trademarks are similar or dissimilar while determining whether the goods or services are related is a more difficult task. This page will attempt to provide guidance for making a goods and services assessment between a junior trademark user and a senior trademark user.

There are several important factors that need to be considered. The first factor is whether other companies offer both your goods or services and the cited third party’s goods or services, under the same mark. If other companies do, this would indicate that consumers would likely perceive that the goods and services emanate from one source, favoring a view of confusion. There are several ways to introduce this evidence. One could produce declarations or affidavits stating facts of this nature, third party registrations could be introduced into the record, or an opposer could produce evidence of internet websites, or third party advertisements showing the junior user’s goods and the senior user’s goods sold under the same trademark.

The second factor to consider is the marketing methods of the junior and senior user. If the classes of purchasers overlap, this would weigh in favor of finding a likelihood of confusion. The third factor to consider is if the junior user’s goods are a natural extension of the senior user’s goods or services. If this is the case, this factor will weigh in favor of the senior user. Another factor to consider is if the junior user’s goods are complementary goods of the senior user. For example, the Trademark Trial and Appeal Board has determined that yogurt and cereal are complementary goods, since consumers are likely to eat them together at breakfast or use cereal as a topping on their yogurt. See In re Martin’s Famous Pastry Shoppe Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984). A finding of complementary goods or services favors a finding of confusion.

If the goods or services are determined to be unrelated, it is less likely confusion will be found. A good example of unrelated goods is the case of M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006). In this case, although both goods are marketed under the distinctive term M2, the goods are geared towards different industries. The mark M2 COMMUNICATIONS is used on CD-ROMS containing educational information in the pharmaceutical and medical field. While the mark M2 is used on computer software targeted exclusively to the music and entertainment industry. The mere fact that both parties’ marks share a common term and that the goods are provided in the same media format (CD-ROMS) is not enough to find the goods related, since the goods are marketed to distinct industries.

One of the most crucial factors to consider in this analysis is the identification of goods or services found in the trademark application or registration. Applicants frequently and unsuccessfully attempt to avoid likelihood of confusion by relying on a restriction that is not reflected in the identification of goods. Arguments regarding claimed limitations will not be given any weight if the limitations are not expressly stated in the application or registration, regardless of what the record may reveal as to the nature of the goods and services.

The identification of goods in a trademark application is interpreted in the manner most favorable to the opposer. If the goods described in the opposer’s identification are broad enough to encompass the applicant’s goods, then the goods and the channels of trade will be considered the same. Moreover, if likelihood of confusion is determined for one product or service in a particular international class, then the application will be refused or the opposition or cancellation will be sustained as to the entire class of goods or services. A critical part of preparing a trademark application is crafting a strategic identification of goods or services. If you are interested learning more about the relatedness of the goods or services of a particular case or if you would like assistance with filing a trademark application, please feel free to contact our office for a courtesy consultation.

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