1207.01(a) Relatedness of the Goods or Services

In assessing the relatedness of the goods or services, the more similar the marks at issue, the less similar the goods or services need to be to support a finding of likelihood of confusion. In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re House Beer, LLC, 114 USPQ2d 1073, 1077 (TTAB 2015); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)). If the marks of the respective parties are identical or virtually identical, the relationship between the goods or services need not be as close to support a finding of likelihood of confusion as would be required if there were differences between the marks. In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) ("Where identical marks are involved, . . . the degree of similarity between the goods and services that is required to support a finding of likelihood of confusion declines.") (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2011), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); In re Shell Oil Co., 992 F.2d at 1207, 26 USPQ2d at 1689 ("even when goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source"); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009).

In some instances, because of established marketing practices, the use of identical marks on seemingly unrelated goods or services could result in a likelihood of confusion. See In re Sloppy Joe’s Int’l, Inc., 43 USPQ2d 1350, 1356 (TTAB 1997) ("[T]he licensing of the names and/or likenesses of well known persons for use on various goods and services is a common practice."); In re Phillips-Van Heusen Corp., 228 USPQ 949, 951 (TTAB 1986) ("The licensing of commercial trademarks for use on ‘collateral’ products (such as clothing, glassware, linens, etc.), that are unrelated in nature to those goods or services on which the marks are normally used, has become a common practice in recent years.").

1207.01(a)(i) Goods or Services Need Not Be Identical

In a §2(d) determination, the goods or services do not have to be identical or even competitive to find a likelihood of confusion. In re Ox Paperboard, LLC, 2020 USPQ2d 10878, at *5 (TTAB 2020) (citing In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010)); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1368 (TTAB 2009). The issue is not whether the goods and/or services will be confused with each other, but rather whether consumers would be confused as to their source. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) ("[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods. It is this sense of relatedness that matters in the likelihood of confusion analysis."); In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Ox Paperboard, LLC, 2020 USPQ2d 10878, at *5 (citing L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984)). 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)); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1082-87, 56 USPQ2d 1471, 1472-76 (Fed. Cir. 2000) (holding ON-LINE TODAY for Internet connection services and ONLINE TODAY for an electronic publication likely to cause confusion); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) (holding MARTIN’S for wheat bran and honey bread, and MARTIN’S for cheese, likely to cause confusion); Weider Publ'ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347 (TTAB 2014) (holding SHAPES for a variety of beauty salon, day spa, and health spa services likely to cause confusion with SHAPE for magazines where the services are of the type normally featured in the magazines); Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1433 (TTAB 2013) (holding GOTT LIGHT for various water beverages likely to cause confusion with GOTT and JOEL GOTT for wine); Gen. Mills, Inc. v. Fage Dairy Processing Indus. S.A., 100 USPQ2d 1584, 1597 (TTAB 2011) (holding composite marks containing the word TOTAL for yogurt and other products likely to cause confusion with the mark TOTAL for ready-to-eat breakfast cereal); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266 (TTAB 2009) (holding VANTAGE TITAN for MRI diagnostic apparatus, and TITAN for medical ultrasound device, likely to cause confusion); L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008) (holding ENYCE for custom automotive accessories, and ENYCE for various urban lifestyle clothing items and accessories, likely to cause confusion); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (holding CONFIRM for a buffered solution equilibrated to yield predetermined dissolved gas values in a blood gas analyzer, and CONFIRMCELLS for diagnostic blood reagents for laboratory use, likely to cause confusion).

Conversely, if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion may not be likely. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d at 1371, 101 USPQ2d at 1723 (affirming the Board’s dismissal of opposer’s likelihood-of-confusion claim, noting "there is nothing in the record to suggest that a purchaser of test preparation materials who also purchases a luxury handbag would consider the goods to emanate from the same source" though both were offered under the COACH mark); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1244-45, 73 USPQ2d 1350, 1356 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of RITZ for cooking and wine selection classes and RITZ for kitchen textiles is likely to cause confusion, because the relatedness of the respective goods and services was not supported by substantial evidence); In re Thor Tech, Inc., 113 USPQ2d 1546, 1551 (TTAB 2015) (holding use of identical marks for towable trailers and trucks not likely to cause confusion given the difference in the nature of the goods and their channels of trade and the high degree of consumer care likely to be exercised by the relevant consumers).

1207.01(a)(ii) Establishing Relatedness of Goods to Services

It is well recognized that confusion may be likely to occur from the use of the same or similar marks for goods, on the one hand, and for services involving those goods, on the other. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1307 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (finding clothing and sports apparel retail services related as "confusion is likely where one party engages in retail services that sell goods of the type produced by the other party"); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025-26 (Fed. Cir. 1988) (holding BIGG’S (finding furniture and retail grocery and general merchandise store services related); In re H.J. Seiler Co., 289 F.2d 674, 129 USPQ 347 (C.C.P.A. 1961) (finding catering food services related to smoked and cured meats); In re Country Oven, Inc., 2019 USPQ2d 443903, at *13-14 (TTAB 2019) (finding bread buns and retail bakery shops related); In re United Serv. Distribs., Inc., 229, 239-40 USPQ 237 (TTAB 1986) (finding skin cream and distributorship services in the field of health and beauty aids related); In re Phillips-Van Heusen Corp., 228 USPQ 949, 951 (TTAB 1986) (finding clothing and restaurant services related); In re U.S. Shoe Corp., 229 USPQ 707, 708 (TTAB 1985) (finding retail women’s clothing store services uniforms related); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433, 435 (TTAB 1983) (refinishing of furniture, office furniture, and machinery related to office furniture and accessories); Corinthian Broad. Corp. v. Nippon Elec. Co., Ltd., 219 USPQ 733, 736 (TTAB 1983) (finding transmitters and receivers of still television pictures related to television broadcasting services).

When the goods and services in question are well known or otherwise generally recognized as having a common source of origin, the burden of establishing relatedness is easier to satisfy. In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082 (Fed. Cir. 2014). For example, relatedness would generally be recognized when the services clearly include or encompass the goods in the identification, such as when the services are "brewpubs" and the goods are "beer" or when the services are "electronic transmission of data and documents via computer terminals" and the goods are "facsimile machines, computers, and computer software." In re Coors Brewing Co., 343 F.3d 1340, 1347, 68 USPQ2d 1059, 1064 (Fed. Cir. 2003); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002).

However, 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. In re St. Helena Hosp., 774 F.3d at 754, 113 USPQ2d at 1087 (finding that substantial evidence did not support relatedness of hospital-based residential weight and lifestyle program and printed materials dealing with physical activity and fitness). Therefore, when comparing services such as "restaurant services" with less apparently related goods such as "beer," or "cooking classes" with "kitchen towels," "something more"—beyond the fact that the goods are used in the provision of the services—must be shown to indicate that consumers would understand such services and goods to emanate from the same source. Although the Court in Coors found evidence of "a few registrations" covering both the goods and services at issue insufficient, see In re Coors Brewing Co., 343 F.3d at 1346, 68 USPQ2d at 1063, examples of actual use of a mark for both the goods and services at issue and/or evidence of a large number of third-party registrations covering both the goods and services at issue may suffice. When such evidence is not readily available through searches of electronic resources, examining attorneys should consider issuing an information request under 37 C.F.R. §2.61(b), asking whether the applicant provides both the goods and services at issue and inquiring whether the applicant is aware of others who provide both the goods and services at issue, and if so, requesting additional information about them.

1207.01(a)(ii)(A) Food and Beverage Products Versus Restaurant Services

While likelihood of confusion has often been found where similar marks are used in connection with both food or beverage products and restaurant services, there is no per se rule to this effect. See Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 768, 25 USPQ2d 2027, 2030 (Fed. Cir. 1993); In re Opus One Inc., 60 USPQ2d 1812, 1813 (TTAB 2001) . Thus, the relatedness of such goods and services may not be assumed and the evidence of record must show " something more" than that similar or even identical marks are used for food products and for restaurant services. In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003) (quoting Jacobs v. Int'l Multifoods Corp., 668 F.2d 1234, 1236, 212 USPQ 641, 642 (C.C.P.A. 1982) ); see also In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).

In Coors, the examining attorney introduced evidence from several sources discussing the practice of some restaurants to offer private label or house brands of beer; evidence that brewpubs who brew their own beer often feature restaurant services; and copies of several third-party registrations showing that a single mark had been registered for both beer and restaurants services. 343 F.3d at 1345, 68 USPQ2d at 1063. However, applicant countered with evidence that while there are about 1,450 brewpubs and microbreweries in the United States, there are over 800,000 restaurants, which means that brewpubs and microbreweries account for only about 18 one-hundredths of one percent of all restaurants. Id. at 1346, 68 USPQ2d at 1063. Noting that "[t]here was no contrary evidence introduced on those points," the court found that:

While there was evidence that some restaurants sell private label beer, that evidence did not suggest that such restaurants are numerous. And although the Board had before it a few registrations for both restaurant services and beer, the very small number of such dual use registrations does nothing to counter Coors’ showing that only a very small percentage of restaurants actually brew their own beer or sell house brands of beer; instead, the small number of such registrations suggests that it is quite uncommon for restaurants and beer to share the same trademark. Thus, the evidence before the Board indicates not that there is a substantial overlap between restaurant services and beer with respect to source, but rather that the degree of overlap between the sources of restaurant services and the sources of beer is de minimis. We therefore disagree with the Board’s legal conclusion that Coors’ beer and the registrant’s restaurant services are sufficiently related to support a finding of a likelihood of confusion.

Id. at 1346, 68 USPQ2d at 1063–64.

In the following cases, the Board found the "something more" requirement to be satisfied: Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1060 (TTAB 2017) (holding TAO VODKA for alcoholic beverages likely to cause confusion with the mark TAO for restaurant and nightclub services where the record showed that petitioner used the TAO mark to promote alcoholic beverages, its primary source of revenue, and that its menus featured beverages with TAO-formative names, amongst other business practices linking the TAO mark with alcohol, which met the requisite "something more" to establish that the goods and services were related); In re Accelerate s.a.l., 101 USPQ2d 2047, 2050-51 (TTAB 2012) (holding COLOMBIANO COFFEE HOUSE, for providing food and drink, likely to cause confusion with the registered certification mark COLOMBIAN, for coffee, given the inclusion of COFFEE HOUSE in applicant’s mark, third-party registrations covering both restaurant or café services and coffee beverages, and because coffee houses specialize in coffee beverages); In re Opus One Inc., 60 USPQ2d at 1814-16 (holding use of OPUS ONE for both wine and restaurant services likely to cause confusion, where the evidence of record indicated that OPUS ONE is a strong and arbitrary mark, that it is common in the industry for restaurants to offer and sell private label wines named after the restaurant, and that registrant’s wines were served at applicant’s restaurant); In re Comexa Ltda., 60 USPQ2d 1118, 1123 (TTAB 2001) (holding AMAZON and parrot design for chili sauce and pepper sauce and AMAZON for restaurant services likely to cause confusion, based on, inter alia, 48 use-based third-party registrations showing registration of the same mark for both sauces and restaurant services, and the determination that "of all food products[,] sauces . . . are perhaps the ones most likely to be marketed by the restaurants in which those items are served"); In re Azteca Rest. Enters., 50 USPQ2d 1209, 1211 (TTAB 1999) (holding AZTECA MEXICAN RESTAURANT for restaurant services and AZTECA (with and without design) for Mexican food items likely to cause confusion, where the AZTECA MEXICAN RESTAURANT mark itself indicated that the relevant restaurant services featured Mexican food and the evidence showed that the goods at issue "are often principal items of entrees served by . . . Mexican restaurants"); In re Golden Griddle Pancake House Ltd., 17 USPQ2d 1074 (TTAB 1990) (holding GOLDEN GRIDDLE for table syrup and GOLDEN GRIDDLE PANCAKE HOUSE for restaurant services likely to cause confusion, based on third-party registration evidence showing that entities offering restaurant services may also offer a variety of goods under the same mark, as well as findings that "restaurants frequently package certain of their products for retail sale" and that the GOLDEN GRIDDLE PANCAKE HOUSE mark itself suggests that the relevant restaurant services feature pancakes and pancake syrup); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1469 (TTAB) (holding use of applied-for mark, MUCKY DUCK and duck design, for mustard, and registered mark, THE MUCKY DUCK and duck design, for restaurant services, likely to cause confusion, in view of the substantial similarity of the marks and the "unique and memorable nature" of registrant’s mark, and given that "mustard is . . . a condiment which is commonly utilized in restaurants by their patrons" and that "restaurants sometimes market their house specialties, including items such as salad dressings, through retail outlets"), aff’d per curiam, 864 F.2d 149 (Fed. Cir. 1988). Cf. In re Giovanni Food Co., 97 USPQ2d at 1991 (finding the Office had not met its burden of proving likelihood of confusion where the marks were JUMPIN’ JACKS for barbeque sauce and JUMPIN JACK’S for catering services, because evidence indicating that some restaurants also provide catering services and sell barbeque sauce was not sufficient to establish catering services alone are related to barbeque sauce); Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d 1477, 1478 (TTAB 1987) (holding use of applicant’s mark, STEVE’S and design comprising hot dog characters, for restaurants featuring hot dogs, and registrant’s mark STEVE’S, for ice cream, not likely to cause confusion, where the marks differed and there was no evidence of record that applicant made or sold ice cream or that "any one business makes and sells ice cream under the same mark in connection with which it renders restaurant services").

1207.01(a)(iii) Reliance on Identification of Goods/Services in Registration and Application

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 registration. See, e.g., B & B Hardware, Inc. v. Hargis Inds., Inc., 135 S. Ct. 1293, 1300 (2015) (recognizing that an "applicant’s right to register must be made on the basis of the goods described in the application"); In re Detroit Athletic Co., 903 F.3d 1297, 1308, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018); Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1370, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1463, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991); Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1493, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987); Paula Payne Prods. Co. v. Johnson Publ’g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (C.C.P.A. 1973); In re Ox Paperboard, LLC, 2020 USPQ2d 10878, at *5 (TTAB 2020); New Era Cap Co. v. Pro Era, LLC, 2020 USPQ2d 10596, at *13 (TTAB 2020); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1500 (TTAB 2010).

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 they move in all normal channels of trade, and that 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); New Era Cap Co., 2020 USPQ2d 10596, at *15-16 (citing SquirtCo v. Tomy Corp., 697 F.2d 1038, 1042-43, 216 USPQ 937, 940 (Fed. Cir. 1983); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986)) ("the Board may not read limitations into [the] unrestricted registration or [] application"); see also B & B Hardware, Inc. v. Hargis Inds., Inc., 135 S. Ct. 1293, 1300 (2015) (explaining that "if an application does not delimit any specific trade channels of distribution, no limitation will be applied" (cleaned up)). Therefore, if the cited registration has a broad identification of goods or services, an applicant does not avoid likelihood of confusion merely by more narrowly identifying its related goods. See, e.g., In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992) (noting that, where registrant’s goods are broadly identified as "computer programs recorded on magnetic disks," without any limitation as to the kind of programs or the field of use, it must be assumed that registrant’s goods encompass all such computer programs, including computer programs of the type offered by applicant, that they travel in the same channels of trade normal for such goods, and that they are available to all classes of prospective purchasers of those goods); In re Diet Ctr., Inc., 4 USPQ2d 1975 (TTAB 1987) (noting that, although applicant had limited its identification to indicate that its goods were sold only through franchised outlets offering weight-reduction services, the cited registration’s identification contained no limitations as to trade channels or classes of customers and thus it must be presumed that registrant’s goods travel through all the ordinary channels of trade).

Similarly, there may be a likelihood of confusion where an applicant identifies its goods or services so broadly that the identification encompasses the goods or services identified in the registration of a similar mark. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1413, 1415 (TTAB 2018) (holding POPULACE and design for computer software intended for travel and destination marketing organizations and travel marketing professionals, and POPULACE (stylized) for computer software for visualizing the popularity of places in real time with an underlying map capability for navigation sold only as business to consumer software and not as "business to business" software, likely to cause confusion); In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (holding CLUB PALMS MVP for casino services, and MVP for casino services offered to preferred customers identified by special identification cards, likely to cause confusion); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986) (holding RESPONSE for banking services, and RESPONSE CARD for banking services rendered through 24-hour teller machines, likely to cause confusion).

In addition, language seeking to limit otherwise identical, or highly similar, goods or services may not be sufficient to distinguish them so as to avoid a likelihood of confusion. See In re i.am.symbolic, llc, 866 F.3d 1315, 1326, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (affirming the Board's finding that an identification restricting the goods to those "associated with William Adams, professionally known as ‘will.i.am,’" imposed no meaningful limitation on the nature of the goods or the trade channels or classes of purchasers of the goods); Bd. of Regents, Univ. of Tex. Sys. v. S. Ill. Miners, LLC, 110 USPQ2d 1182, 1190-93 (TTAB 2014) (finding that although opposer’s clothing items were limited by the wording "college imprinted" and the applicant’s identical or highly similar items were limited by the wording "professional baseball imprinted," these restrictions did not distinguish the goods, their trade channels, or their relevant consumers in any meaningful way).

An applicant may not restrict the scope of its goods and/or the scope of the goods covered in the registration by extrinsic argument or evidence, for example, as to the quality or price of the goods. See, e.g., In re FCA US LLC, 126 USPQ2d 1214, 1217 (TTAB 2018); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008) ; In re Bercut-Vandervoort & Co., 229 USPQ at 764–65; see also In re Detroit Athletic Co., 903 F.3d at 1308, 128 USPQ2d at 1052 ("The third DuPont factor—like the second factor—must be evaluated with an eye toward the channels specified in the application and registration, not those as they exist in the real world.").

In cases where the terminology in an identification is unclear or undefined, the Trademark Trial and Appeal Board has permitted an applicant to provide extrinsic evidence to show that the registrant’s identification has a specific meaning to members of the trade. See, e.g., In re Thor Tech, Inc., 90 USPQ2d at 1638 & n.10 (noting that, although extrinsic evidence may not be used to limit or restrict the identified goods, it is nonetheless proper to consider extrinsic evidence in the nature of dictionary entries to define the terminology used to describe the goods); In re Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB 1990) (noting that, "when the description of goods for a cited registration is somewhat unclear . . . it is improper to simply consider that description in a vacuum and attach all possible interpretations to it when the applicant has presented extrinsic evidence showing that the description of goods has a specific meaning to members of the trade.")

1207.01(a)(iv) No "Per Se" Rule

The facts in each case vary and the weight to be given each relevant du Pont factor may be different in light of the varying circumstances; therefore, there can be no rule that certain goods or services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto. See, e.g., In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (regarding alcoholic beverages); Info. Res. Inc. v. X*Press Info. Servs., 6 USPQ2d 1034, 1038 (TTAB 1988) (regarding computer hardware and software); Hi-Country Foods Corp. v. Hi Country Beef Jerky, 4 USPQ2d 1169, 1171–72 (TTAB 1987) (regarding food products); In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985) (regarding computer hardware and software); In re British Bulldog, Ltd., 224 USPQ 854, 855-56 (TTAB 1984) (regarding clothing); see also M2 Software, Inc. v. M2 Commc'ns, Inc., 450 F.3d 1378, 1383, 78 USPQ2d 1944, 1947–48 (Fed. Cir. 2006) (noting that relatedness between software-related goods may not be presumed merely because the goods are delivered in the same media format and that, instead, a subject-matter-based mode of analysis is appropriate).

1207.01(a)(v) Expansion-of-Trade Doctrine

The expansion-of-trade doctrine has limited application in ex parte proceedings, and the Trademark Trial and Appeal Board has indicated that "[i]t is not necessary, . . . in the context of an ex parte proceeding, for the Office to show that the owner of the particular registration that has been cited against the application has expanded or will expand its goods or services." In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1584 & n.4 (TTAB 2007) ; see also In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1266 (TTAB 2011) .

The doctrine is typically applied in inter partes proceedings where an opposer claims that its priority of use of a mark with respect to its goods/services should be extended to include applicant’s goods/services because they are in the natural scope of expansion of opposer’s goods/services. See Orange Bang, Inc. v. Olé Mexican Foods, Inc., 116 USPQ2d 1102, 1119 (TTAB 2015) (noting that the "natural zone of expansion" doctrine normally applies in inter partes cases in the context of the parties’ dueling claims of priority); 1st USA Realty Prof’ls, 84 USPQ2d at 1584. However, in the ex parte context, the normal relatedness analysis is applied:

[W]e look at the question of the relatedness of the services identified in applicant's application and those in the cited registration based on whether consumers are likely to believe that the services emanate from a single source, rather than whether the Examining Attorney has shown that the registrant . . . has or is likely to expand its particular business to include the services of applicant.

Id.

To the extent the expansion-of-trade doctrine does apply in ex parte cases, it "is considered through a traditional relatedness of goods and services approach." Id. at 1584 n.4.

1207.01(a)(vi) Evidence Showing Relatedness of Goods or Services

The examining attorney must provide evidence showing that the goods and services are related to support a finding of likelihood of confusion. See, e.g., In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (finding Office had failed to establish that wine and vodka infused with caffeine are related goods because there was no evidence that vodka and wine emanate from a single source under a single mark or that such goods are complementary products that would be bought and used together). Evidence of relatedness may include news articles and/or evidence from computer databases showing that the relevant goods or services are used together or used by the same purchasers; advertisements showing that the relevant goods or services are advertised together or sold by the same manufacturer or dealer; and/or 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. E.g., In re Ox Paperboard, LLC 2020 USPQ2d 10878, at *5 (TTAB 2020) (citing In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014); In re Country Oven, Inc., 2019 USPQ2d 443903, at *4-5 (TTAB 2019). See TMEP §1207.01(d)(iii) and cases cited therein regarding the probative value of third-party registrations.

The identification of goods or services in the subject application and in the cited registration(s) may in itself constitute evidence of the relatedness of the goods or services. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (finding the Board erred in concluding that there was insufficient evidence of relatedness, because it "did not consider the important evidence already before it, namely the ITU application and [opposer’s] registrations").