When evaluating whether two trademarks are likely to cause confusion, two primary considerations come into play: the similarity of the marks themselves and the relatedness of the goods or services associated with them. While comparing trademarks side by side may be relatively straightforward, assessing how goods or services are related often requires a deeper analysis. Understanding this component of the trademark likelihood of confusion factors can be critical in both prosecuting and defending trademark applications.
Understanding Relatedness in Trademark Disputes
To determine if consumers are likely to be confused by two marks, the United States Patent and Trademark Office (USPTO) and the Trademark Trial and Appeal Board (TTAB) consider whether the goods or services offered under those marks are commercially related. If consumers would expect the goods or services to originate from the same source, even if the marks aren’t identical, that can support a finding of likely confusion.
There are several evidentiary paths to demonstrate that goods or services are related under trademark law:
1. Third-Party Use of the Same Mark Across Similar Goods or Services
A strong indication of relatedness is when third parties already offer both types of goods or services under the same brand. For example, if a company sells both skincare products and cosmetics under one mark, that can suggest to consumers that the two product types naturally go together. Demonstrating this through affidavits, website screenshots, third-party advertisements, or existing trademark registrations can help support the claim that consumers are likely to perceive a connection between the offerings of the junior and senior users.
2. Overlapping Marketing Channels and Target Audiences
The second factor focuses on how and to whom the goods or services are marketed. If the junior and senior users share similar distribution channels or appeal to the same consumer base, this overlap strengthens the argument for confusion. For instance, two companies marketing to the same group of general consumers through online retail platforms could be seen as operating in the same trade channels, even if their goods are slightly different.
3. Natural Zone of Expansion
Another key point under the trademark likelihood of confusion factors is whether the junior user’s goods are a natural outgrowth of the senior user’s offerings. Courts and the TTAB have long recognized that businesses may reasonably expand into adjacent markets. If the goods fall within a logical progression of business development, they are more likely to be deemed related.
4. Complementary Nature of the Products or Services
Even if goods aren’t directly the same, they may be complementary in use, making confusion more likely. A famous example comes from In re Martin’s Famous Pastry Shoppe, Inc., where the court found that yogurt and cereal were complementary products. Consumers often use them together—eating them in the same meal or combining them—so offering them under similar marks could create confusion about source.
5. When Goods Are Clearly Unrelated
On the flip side, when the goods or services are directed toward entirely distinct industries or serve very different consumer needs, confusion becomes less likely. Consider M2 Software, Inc. v. M2 Communications, Inc., where one company used the mark “M2” for software targeting the entertainment industry, while the other used “M2 COMMUNICATIONS” for educational content in the medical field. Despite sharing a term and media format (CD-ROMs), the court found no likelihood of confusion due to the dissimilarity in industry focus and audience.
The Role of Goods Identification in Likelihood of Confusion
Perhaps one of the most decisive elements in a likelihood of confusion determination is the wording used in the trademark application or registration. The USPTO bases its evaluation on the listed identification of goods or services, not on how the applicant actually markets or uses the mark. Arguments about differences in consumer demographics, distribution methods, or product details won’t carry weight unless they are clearly stated in the official identification.
Critically, any ambiguity in how goods or services are described will usually be interpreted in favor of the opposer or examining attorney. If the goods in the application could reasonably be understood to overlap with those in an existing registration—even slightly—the USPTO may treat them as related for the purpose of analysis. This is true even if, in practice, the products differ significantly.
Moreover, if a single product or service in a class is found to be confusingly similar, it can jeopardize the entire class. This makes drafting your goods and services description not only a technical task, but a strategic one as well.
Final Thoughts on Proving Relatedness in Trademark Conflicts
Among the many trademark likelihood of confusion factors, relatedness of goods and services is one of the most nuanced and impactful. Demonstrating that your goods are unrelated—or that they do not travel in the same channels of trade—can be the key to overcoming a refusal or defending against an opposition. On the other hand, a well-prepared evidentiary record showing overlap in marketing, consumer expectation, or complementary use can reinforce your position in claiming confusion.
If you’re facing a refusal or need help navigating this complex area of trademark law, consider consulting with an experienced Trademark Attorney. Our team can guide you through the identification process and help you build the strongest case possible. Contact us today for a complimentary consultation.