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.