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 Indus., Inc., 575 U.S. 138, 143, 113 USPQ2d 2045, 2049 (2015) (recognizing that an "applicant’s right to register must be made on the basis of the goods described in the application"); In re Charger Ventures LLC, 64 F.4th 1375, 1383, 2023 USPQ2d 451, at *7 (Fed. Cir. 2023) (quoting In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) ("The relevant inquiry . . . focuses on the goods and services described in the application and registration."); 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. Hous. Computer Servs., Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank of Com., 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).

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 [Trademark Trial and Appeal] Board may not read limitations into [the] unrestricted registration or [] application"); see also B & B Hardware, Inc., 575 U.S. at 143, 113 USPQ2d at 2049 (2015) (quoting 3 J. McCarthy, Trademarks & Unfair Competition §20:15, at 20-45 (4th ed. 2014)) ("if an 'application does not delimit any specific trade channels of distribution, no limitation will be' applied"). 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 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 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 1634, 1638 & n.10 (TTAB 2009) (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.")