A Deep Dive on the Relatedness of Goods and Services Factor

The relatedness of goods and services factor is very important in the likelihood of confusion analysis. Indeed, the fundamental inquiry mandated by Section 2(d) of the Trademark Act goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks. The Trademark Trial and Appeal Board issued a decision on New Year’s Eve that closely examined the essential characteristics of the goods because the marks at issue were identical.

Costa Farms, LLC applied to register the mark GROW WITH US (in standard characters) for “live flowers and living plants.” The Trademark Office refused registration based on a prior registration for the identical GROW WITH US mark for “distributorship services in the field of wholesale horticulture supplies and accessories.” Costa Farms eventually appealed the registration refusal to the Trademark Trial and Appeal Board primarily arguing that live flowers and living plants are unrelated goods to distributorship services in the horticulture field.

The Trademark Office compares the goods and services set forth in an application and a registration to determine whether they are similar, commercially related, or travel in the same trade channels. Goods and services dealing with or related to those goods can be found to be related. Relatedness will not be found when the goods or services at issue only chare a relationship with a broad category of goods.

In the GROW WITH US case, the Trademark Trial and Appeal Board found that “live flowers and living plants” on the one hand and “distributorship services in the field of wholesale horticulture supplies and accessories” on the other hand share only a relationship with horticulture, which is insufficient to find the goods and services are related. Costa Farms argued and presented evidence that “horticultural supplies” are “hard-good inputs needed in horticultural endeavors” not live plants and flowers. However, Costa Farms’ evidence also included that “horticultural endeavors” include growing live plants and flowers. It seems like hard-good inputs used to grow live plants and flowers have a commercial relationship with living plants and flowers, but apparently not according to the Trademark Trial and Appeal Board.

Breathable, Waterproof Fabric is Related to Clothing

The Trademark Trial and Appeal Board recently found that breathable, waterproof fabric used to create clothing is related to clothing in general. A general rule for assessing whether goods are related is whether the goods are or can be used together. If the goods can be or are used to together like fabric and clothing, then the goods at issue are related.

Striker Brands LLC filed an application to register the mark HYDRAPORE (in standard characters) for “breathable waterproof fabric sold as an integral component of fishing and hunting apparel, namely, coats, jackets, [etc.]” The Trademark Office refused registration based on a prior registration for HYDRO PORE (in standard characters) in connection with “clothing, namely, tops, bottoms, jackets, headwear, and footwear.”

To demonstrate the relatedness of the goods the Trademark Office offered 20 third-party registrations for marks that identify fabric as a component of clothing, and finished articles of clothing. These third-party registrations demonstrated that consumers expect fabric and finished clothing articles to emanate from the same source. Additionally, although not forcefully made in the opinion, the Board found that consumers could mistakenly believe that the HYDRO PORE clothing was made from the HYDRAPORE fabric.

Striker Brands made the classic mistake of leaving the identification of goods description in the HYDRO PORE mark undisturbed. It should have focused on narrowing the description to exclude a type of fabric along with the hunting and fishing channels of trade before pursuing the appeal.

When it came to the conceptual strength of the HYDRO PORE mark, Striker Brands offered 33 third-party registrations for HYDRO- formative marks in connection with various types of apparel or fabric. The Board noted that none of the third-party registrations contained a second term similar to PORE or for PORE. Moreover, Striker Brands did not offer any evidence of use for the 33 third-party registrations. Nevertheless, although the Board found that HYDRO PORE is a suggestive mark, it was entitled to a slightly narrower scope of protection because of the third-party registrations.

This conceptual strength analysis is similar to the Board’s decision in HULA DELIGHTS, and is even more difficult to square with its decision in the LUNA CYCLE case. In the LUNA CYCLE case, 100 third-party registrations for marks displaying LUNA (like those displaying HYDRO in this case) were offered for some form of apparel (like the various clothing items and fabric in this case). The difference though is that the Board discounted all 100 third-party registrations because they were not for women’s bicycle apparel.

Number 1 Misconception When Searching Trademarks

We talk to a number of naming firms and serial entrepreneurs who conduct their own preliminary trademark searchers each year. And every year we observe the same misconception. Non-lawyers place far too much emphasis on International Class Numbers and ignore the relatedness of the goods. This is also the flaw in every trademark search tool available in the market, with the exception of BOB.

The reason this misconception exists is due to the lack of education on this issue because the legal precedent on this subject is legion. That’s why we focus on the relatedness of goods factor in a significant number of our posts. Our hope is to spread the word and educate non-lawyers about this crucially important factor so that trademark searching becomes more effective. More effective trademark searching should lead to fewer trademark disputes.

The Trademark Trial and Appeal Board recently issued a decision highlighting again the importance of evaluating the relatedness of goods factor and not International Class Numbers. Ernest Everett James filed a trademark application to register the mark LIQUOR SLINGER DISTILLING (standard characters with LIQUOR and DISTILLING disclaimed) for “liquor” in International Class 33. The Trademark Office refused registration of Mr. James’s mark on the ground that it was likely to cause confusion with the prior registered mark SLINGER for “drinking glasses; shot classes” in International Class 21.

The Board found there is an inherent, complementary relationship between the parties’ goods: liquor is served in and drunk from drinking glasses and shot glasses. Indeed, a shot glass is defined as “[a] small glass used for serving liquor.” The Trademark Office also offered Internet evidence showing it is common for distilleries to sell branded glassware. All of this evidence supported the Trademark Office’s argument, which the Board agreed with, that liquor and glassware are related goods.

A person searching trademarks for a liquor brand that focused too heavily or entirely on International Class 33 where the product is classified is sure to a miss a problematic mark in another International Class because of the relatedness of goods factor.