Related Goods & Services Under Trademark Law
In trademark law, establishing a likelihood of confusion often hinges not only on the similarity of the trademarks themselves, but also on whether the goods or services they identify are sufficiently related. Section 1207.01(a) of the Trademark Manual of Examining Procedure (TMEP) provides the foundation for how the United States Patent and Trademark Office (USPTO) evaluates this relatedness. Below is an in-depth exploration of the key principles, case law, and practical standards that shape this analysis.
Trademark Searches: Why Relatedness Matters Before You File
If you’re a new entrepreneur or business owner launching a brand, the trademark search phase is one of the most important—but often overlooked—steps in protecting your brand. Many business owners assume that because their product or service is different from something that already has a registered trademark, there’s no conflict. For example, you might think that a registered trademark for ELEVATE in Class 32 for coffee won’t affect your plans to use ELEVATE for an brew pub in Class 43. Unfortunately, it’s not that simple.
The trademark system divides products and services into 45 trademark classes, but these classes are mostly administrative. What really matters is whether the public would believe your brand and the other brand come from the same source. The USPTO doesn’t just compare marks class-by-class—it compares how the brands might appear together in the real world.
That’s why a comprehensive trademark search and a careful legal analysis of relatedness is so critical before filing. A good trademark strategy doesn’t just ask, “Is the name taken in this class?” It asks, “Could consumers think these two names come from the same company?”
The “Less Similar Goods” Principle When Marks Are Identical
The TMEP consistently reaffirms that when trademarks are identical or nearly identical, the goods or services need not be as closely related to support a likelihood of confusion. This principle was affirmed in In re Shell Oil Co., 992 F.2d 1204, and reiterated in recent TTAB decisions like In re Samsung Display Co. (2024) and In re Country Oven, Inc. (2019).
This means if someone already owns a trademark for a name identical to the one you’re considering—even if their goods are somewhat different—their federal trademark registration might still block yours if consumers could reasonably think both are from the same company.
Goods and Services Need Not Be Identical or Competitive
You don’t have to be in direct competition with another business to trigger a trademark conflict. The question isn’t whether people will confuse your actual products. It’s whether they’ll think the businesses behind those products are related.
Take the case of Recot, Inc. v. Becton, where the court found a conflict between dog treats and human snack foods—because the marks were similar and consumers might think the same company made both. This kind of confusion is about brand source, not product mix.
Relatedness Between Goods and Services
This also applies when comparing products to services. Clothing and a store that sells clothing? Very likely to be considered related. Wine and a wine bar? Also related. Even less obvious combinations can be related if the average consumer might assume a connection.
If you’re launching a product and there’s already a service using a similar name—or vice versa—it’s essential to analyze whether consumers might expect both to come from the same company.
Restaurant Services and Food/Beverage Products: The “Something More” Standard
Using a restaurant name for packaged food or drink doesn’t automatically create a conflict. The courts require “something more” to show that people would expect a restaurant and a food product to come from the same source.
That “something more” could be:
If you’re planning to extend your restaurant name to sauces, beverages, or retail goods, think carefully about how strong that association is in the marketplace.
Scope of Identifications in Applications and Registrations
In deciding whether two trademarks conflict on the basis of likelihood of confusion, the USPTO looks only at what each trademark application or registration says—not how the brand is actually used. If your registration says “software,” that includes all kinds of software, not just the app you actually plan to sell. If a competitor’s registration covers “clothing,” that includes t-shirts, jeans, jackets, and more, even if they currently only sell socks.
This can be surprising to many business owners who assume a narrow real-world use should shield them. It doesn’t. Always assume the full breadth of what’s written in the trademark description applies.
No Per Se Rules of Relatedness For Goods & Services
There are no automatic rules. Just because you make food and someone else makes beverages doesn’t mean the goods are considered related. Each case is evaluated on its unique facts, the nature of the trademarks, and how consumers perceive them in the marketplace. Every search and clearance analysis should be fact-specific and strategic.
The Expansion-of-Trade Doctrine
One of the more subtle and often misunderstood principles in trademark law is the expansion-of-trade doctrine, also called the natural zone of expansion. This principle recognizes that brands often grow, and that consumers may expect a brand to expand into adjacent markets.
Let’s say you own a trademark for health food products. If someone else applies to register a similar trademark for vitamins or supplements, even though they’re technically different goods, consumers may assume your brand expanded into that category. That assumption could create a conflict—even if you’re not currently offering those goods.
However, in ex parte proceedings (i.e., when your trademark application is reviewed by the USPTO, not challenged by another party), the USPTO generally does not require evidence that the owner of a cited registration actually intends to expand. Instead, the examiner will simply look at whether consumers are likely to believe the goods and services are related or come from a single source.
In inter partes disputes—such as oppositions or cancellations—the natural zone of expansion carries more weight. A company can argue that it owns priority rights in a broader category of goods or services than what it currently sells, if those additional goods or services are a natural extension of its business.
This doctrine emphasizes the importance of thinking not just about what you do now, but where your brand may reasonably go in the future—and how others might already be occupying that space.
Evidence Required to Show Relatedness
When an examining attorney (or another party) claims that your goods and services are related to someone else’s, they must support that claim with actual evidence. This is one of the most critical parts of the analysis, and it’s where a well-prepared search or legal strategy can make all the difference.
Evidence can include:
Just having a theory is not enough. If there is no concrete, real-world evidence that the goods or services come from the same type of business or are marketed together, the USPTO may not find them to be related.
This is why trademark attorneys often go beyond a quick knockout search. They assess how your brand fits into the bigger market picture—and what’s likely to happen when the USPTO looks at your application.
Conclusion and Key Takeaways
Whether you’re just starting your business or you’ve been in operation for a few years, it’s essential to understand how trademark law protects your brand—and how it protects other brands from being infringed.
Key takeaways include:
Your brand is one of your most valuable business assets. Before you invest time and money into marketing, websites, packaging, and signage, take the time to ensure that your brand is both protectable and not infringing on someone else’s. Understanding the concept of related goods and services—and how the USPTO applies it—can help you build a brand that’s strong, defensible, and built to last.