Section 2(d) Likelihood of Confusion Refusal—The Core Idea

One of the main reasons the USPTO refuses trademark applications is the likelihood of confusion between marks (Section 2(d) Refusal—Likelihood of Confusion). The case In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973), established several factors for determining trademark infringement. Among these, two of the most critical are
(1) the similarity of marks, and
(2) the relatedness of goods or services.

This article focuses on the second factor—the relatedness of goods and services—and how the USPTO applies it when reviewing trademark applications.

What Does “Relatedness” Mean in USPTO Examination?

“Relatedness” refers to how closely connected the goods or services are in the minds of consumers.
The USPTO does not rely solely on trademark classes. Goods or services can be considered related even when they fall into different classes if consumers are likely to believe they come from the same source.

The main purpose of this analysis is to prevent consumers from assuming that two products or services under similar marks come from the same company or are affiliated in some way.

When Goods Are Unrelated—Registration Allowed

The USPTO sometimes allows similar or even identical marks to coexist when the goods are clearly unrelated.

For example, the USPTO allowed registration of DOVE (Reg. No. 7524283), owned by Mars, Inc., for chocolate and ice cream in Class 030.
It also allowed registration of DOVE (Reg. No. 2517212), owned by Conopco, for soap in Class 003.

Although the trademarks are nearly identical, both use the same word and a similar script, the goods themselves are unrelated. Chocolate and soap belong to entirely different industries and target completely different consumer expectations. Because there is no reasonable likelihood that consumers would confuse the two, the USPTO permitted both registrations.

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When Goods Are Related—Registration May Be Refused

Relatedness goes beyond class numbers. Even if goods or services belong to different classes, the USPTO may still find them related if they are commonly offered by the same company or if consumers might expect them to come from one source.

For example, clothing (Class 025) and jewelry (Class 014) may be treated as related goods, since many fashion brands sell both under the same mark.
The USPTO may therefore refuse registration of a trademark application for jewelry when the mark is confusingly similar to an existing registration for clothing, reasoning that the trademark owner could foreseeably expand its product line.

Evidence the USPTO Uses to Determine Relatedness

To determine relatedness, the USPTO reviews other registrations that list multiple goods or services under one mark.
It also considers whether it’s foreseeable that a trademark owner could expand into another product category.
If the expansion seems likely, for example, from clothing to accessories or from beverages to snacks, the goods are deemed related, increasing the likelihood of confusion.

How Applicants Can Prepare

Trademark applicants should conduct comprehensive research that extends beyond identical marks.
It’s important to look for marks used with similar or complementary goods and to analyze whether those goods fall into industries that commonly overlap.
Professional legal guidance can help evaluate the risk of relatedness and craft accurate descriptions of goods or services to reduce the possibility of a Section 2(d) refusal.

Real-World Takeaways

The relatedness analysis is designed to protect both consumers and trademark owners by minimizing confusion in the marketplace.
A well-prepared trademark application should carefully describe goods and services with an understanding of how the USPTO assesses relatedness.
Considering potential overlap early on strengthens a trademark’s position and helps secure broader protection.

8. What’s Next

In the next part of this series, we will explore another major reason for USPTO refusals: Failure to function as a Trademark under Section 45, illustrated through the BOSTON STRONG case.

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