A trademark application may be refused under Section 2(d) based on a likelihood of confusion with an existing trademark registration according to the DuPont factors, which includes the relatedness of the respective goods identified in the application and the registration. In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); Paula Payne Prods. v. Johnson Publ'g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods”).

“[I]t is sufficient for finding a likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a particular class in the application.” In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015).

“[T]he question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.” Octocom Sys, Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (considering the goods as they are described in the application).

Furthermore, the degree of similarity between the respective marks that is necessary for confusion to be likely is reduced even where the nature of Applicant's and Registrant's goods are only in part legally identical. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).

AGI-Formative Marks

The TTAB recently upheld a Section 2(d) refusal with respect to competing AGI-formative marks for “lighting” goods. In re B-K Lighting, Inc., Ser. No. 88769422 (TTAB Jan. 27, 2023).

The applied-for goods were “lighting fixtures.” The goods identified in the cited registration were “Elements of architectural signage, namely, . . . lights for use in illuminating signs and displays, LED lighting assemblies for illuminated signs, . . . and tools, components and supplies for use in making signs, namely, fluorescent, HID, LED and incandescent bulbs, lamps and fixtures.”

Applicant argued that the goods were dissimilar because they are sold to different consumers for different purposes: “[u]nlike Registrant's goods, Applicant's goods are directed exclusively to consumers and contractors who are looking for light fixtures for residential and commercial properties. By comparison, Registrant's goods are sold to businesses that need signs[.]”

The TTAB was not persuaded.

In Part Legally Identical 

The Applicant's and Registrant's goods were found to be in part legally identical inasmuch as Applicant's broadly worded “lighting fixtures” encompasses all types of lighting fixtures including Registrant's more narrowly identified lights, lighting assemblies, and light fixtures for architectural signage. See In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (Applicant's broadly worded identification of goods necessarily encompasses Registrant's narrowly identified goods).

Given the “legally identical in part” finding with respect to the identified goods, the TTAB also found their trade channels and classes of purchasers to overlap. In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same). Where the goods are identified without restriction, the USPTO and the TTAB will presume that they are sold in all normal trade channels and to all normal classes of purchasers for such goods. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1906 (Fed. Cir. 2012).

The argument regarding different consumers and channels of trade might have been more persuasive had the Applicant amended the “broadly worded” identified goods in the application to be narrower and limited as to the purpose, targeted consumer, or channel of trade in conformance with the argument. See TMEP 1402.06(b) (“the applicant may amend from the more general to the specific”). When arguing against a Section 2(d) refusal that the applied-for goods are sold to different consumers for different purposes than the goods identified in a cited registration—it is important to confirm or amend the identification of goods in the application to conform with that argument.

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