Relatedness of Goods & Services In Trademark Law
In trademark law, establishing a likelihood of confusion often hinges not only on the similarity of the trademarks themselves, but also on whether the goods or services they identify are sufficiently related. Section 1207.01(a) of the Trademark Manual of Examining Procedure (TMEP) provides the foundation for how the United States Patent and Trademark Office (USPTO) evaluates this relatedness. Below is an in-depth exploration of the key principles, case law, and practical standards that shape this analysis.
Trademark Searches: Why Relatedness Matters Before You File
Clients often assume that as long as a similar or identical trademark is registered in a different class, it poses no threat to their proposed trademark. For instance, a client may see that a trademark like KINETIC is registered in Class 16 for printed real estate and travel guides and conclude that KINETIC is free to use for real estate services in Class 36. However, trademark law does not stop at class numbers. The USPTO and the courts focus on whether the goods and services are sufficiently related such that consumers might believe they originate from the same source.
The trademark system includes 45 international trademark classes—but these classes are primarily administrative tools. They do not necessarily control how the USPTO evaluates relatedness. Two trademarks in different classes can still conflict if the underlying goods or services are related in the minds of consumers. Conversely, even identical trademarks can coexist if the goods or services are unrelated and not likely to be encountered together.
This is why conducting a comprehensive trademark search that assesses relatedness is essential before filing. It allows brand owners to make informed decisions and avoid costly surprises—such as office actions, opposition proceedings, or rebranding.
The “Less Similar Goods” Principle When Marks Are Identical
The TMEP consistently reaffirms that when marks are identical or nearly identical, the goods or services need not be as closely related to support a likelihood of confusion. This principle was affirmed in In re Shell Oil Co., 992 F.2d 1204, and reiterated in recent TTAB decisions like In re Samsung Display Co. (2024) and In re Country Oven, Inc. (2019). When two parties use identical trademarks, even goods that are not inherently competitive may still give rise to confusion if consumers might believe they share a common source.
This concept is particularly relevant in cases involving licensing or collateral branding. The TTAB has noted that it is common practice for well-known brands to license their names across disparate goods and services, such as apparel, glassware, or personal care products, thereby increasing the possibility that consumers will assume a common source based on trademark identity alone.
Goods and Services Need Not Be Identical or Competitive
Section 1207.01(a)(i) explains that likelihood of confusion does not require the goods or services to be identical or even competitive. The central issue is not whether consumers will confuse the goods themselves, but whether they will be confused as to the origin or sponsorship of the goods.
For example, in Recot, Inc. v. Becton, 214 F.3d 1322, the court found that dog food and snack foods for humans could be related if consumers believed both products came from the same source. The decision in Weider Publ’ns, LLC v. D&D Beauty Care Co. (2014) likewise found beauty salon services and a fitness magazine to be related where the magazine featured the services. Thus, relatedness exists in the mind of the consuming public based on origin association, not product similarity.
Relatedness Between Goods and Services
Section 1207.01(a)(ii) addresses the principle that confusion may arise between goods and services when those services involve, market, or distribute those goods. This is particularly true in retail and merchandising contexts. In In re Detroit Athletic Co. (2018), the court found that clothing and retail services for athletic apparel were related because consumers would reasonably believe they came from the same source.
However, where the relationship between goods and services is not self-evident or widely recognized, the TTAB and Federal Circuit require “something more” to show that consumers would expect the same source. In re St. Helena Hospital (2014) emphasized that when services such as lifestyle counseling and goods like fitness publications are not clearly linked, the examining attorney must present more than theoretical overlap.
Restaurant Services and Food/Beverage Products: The “Something More” Standard
Food products and restaurant services are a common combination in trademark cases. But In re Coors Brewing Co. (2003) and Lloyd’s Food Prods., Inc. v. Eli’s, Inc. (1993) make clear that there is no per se rule of relatedness here. Evidence is required to demonstrate that consumers would view the restaurant as the source of the food or beverage product.
The TTAB has found this standard met in cases where the restaurant actively markets a house brand product (Tao Licensing, LLC v. Bender Consulting Ltd., 2017) or where there is a large number of third-party registrations showing concurrent use of the mark for both restaurants and food products (In re Comexa Ltda., 2001).
Scope of Identifications in Applications and Registrations
The relatedness analysis is based on the goods and services as identified in the application and cited registration, not how the marks are actually used in commerce. Broad identifications are interpreted to include all goods or services of that type in all normal trade channels. Narrow identifications cannot override an existing broad registration.
This principle was emphasized in Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, and again in In re i.am.symbolic, llc, 866 F.3d 1315, where attempts to restrict goods or services by context (e.g., celebrity affiliation or market positioning) were found unavailing.
No Per Se Rules of Goods & Services Relatedness
Section 1207.01(a)(iv) reminds us that each likelihood of confusion case is fact-specific. There is no per se rule that computer hardware and software, or that food and drink products, are always related. Decisions such as In re British Bulldog Ltd. (1984) and Hi-Country Foods Corp. v. Hi Country Beef Jerky (1987) caution against categorical assumptions. The analysis must be based on specific facts, evidence, and the actual marketplace context.
The Expansion-of-Trade Doctrine or Natural Expansion Doctrine
While commonly invoked in inter partes disputes, the expansion-of-trade doctrine has limited application in ex parte examination. The TTAB has clarified that in ex parte contexts, the inquiry should focus on whether the goods and services are related from a consumer perspective—not whether the registrant is likely to expand into the applicant’s field. See In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581 (TTAB 2007).
Evidence Required to Show Relatedness
The USPTO and TTAB expect examining attorneys and litigants to support relatedness arguments with evidence. Acceptable forms include:
Absent this evidence, even compelling arguments about consumer perception can fall short. In re White Rock Distilleries Inc. (2009) illustrates this point, where the Office failed to prove that vodka and wine were related due to lack of industry evidence.
Conclusion and Key Takeaways
Understanding how the USPTO and TTAB assess the relatedness of goods and services under TMEP §1207.01(a) is critical to both prosecution and enforcement strategies. The analysis is nuanced, highly contextual, and dependent on both the identification of goods/services and the evidentiary record.
Key takeaways include:
If your proposed trademark is identical or highly similar to an existing mark—even in a different class—it may still pose a conflict depending on how related the goods and services are. On the flip side, if your proposed trademark is unique but your goods are similar to those covered by an existing registration, confusion may still be found.