In a likelihood of confusion analysis under Section 2(d), two key considerations are the similarities between the marks and the similarities between the goods. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); see also In re Chatam Int'l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945–46 (Fed. Cir. 2004).

The goods need not be identical or even competitive to find a likelihood of confusion. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007).

Evidence of relatedness might include news articles or evidence from computer databases showing that the relevant goods are used together or used by the same purchasers; advertisements showing that the relevant goods are advertised together or sold by the same manufacturer or dealer; and/or copies of prior use-based registrations of the same mark for both an applicant's goods and the goods listed in the cited registration. See, e.g., In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding pepper sauce and agave to be related where evidence showed both were used for the same purpose in recipes).

MBBM™ Battery Monitors

The Trademark Trial and Appeal Board (“TTAB”) recently addressed the appeal of a refusal under Section 2(d) of the MBBM trademark application for “battery monitors” in view of the registered MBBM-VAS mark for electrical instruments specifically “in the fields of development, quality control and fault diagnosis, but not in the field of factory equipment.” In re Vanner, Inc., Ser. No. 88877168 (TTAB Jul. 29, 2022).

Although both Applicant's and Registrant's goods fall under the general category of electrical products, that standing alone does not suffice to show that the goods are related.

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[T]he Examining Attorney has not introduced any evidence (i.e. third-party registrations or excerpts from third-party websites) to show that Applicant's and Registrant's goods may emanate from a single source. See, e.g., Princeton Tectonics, 95 USPQ2d at 1510; In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (finding Office had failed to establish that wine and vodka infused with caffeine are related goods because there was no evidence that vodka and wine emanate from a single source under a single mark or that such goods are complementary products that would be bought and used together). This critical DuPont factor weighs against finding a likelihood of confusion.

In the earlier decision, In re Princeton Tectonics, Inc., 95 USPQ2d 1509, 1510 (TTAB 2010), the TTAB found that “the mere fact that both types of goods at issue here emit and provide light is not a sufficient basis for us to conclude that the goods are related.”

Notwithstanding the similarity of the marks here, the TTAB found that the record failed to show that the goods are related, and reversed the Section 2(d) refusal.

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