When assessing the likelihood of confusion between two trademarks – and therefore, likely trademark infringement – we usually look for similar marks for similar goods and services. That’s a bit of a simplification, of course. There are numerous other factors that go into the analysis (and, to make matters worse, no two appellate courts use the same list of factors), but similarity of goods and services it one of the most important factors in any analysis. But, how to know when things are sufficiently similar?
First, it must be stressed that goods and services do not need to be identical to be problematic. The Trademark Office stresses, “It is sufficient that the goods and/or services of the applicant and the registrant are related in some manner or that the conditions surrounding their marketing are such that they are likely to be encountered by the same persons under circumstances that, because of the marks used in connection therewith, would lead to the mistaken belief that they originate from the same source.” For example, shirts are related to pants, in that both are items of clothing and are routinely sold by the same outlets. Similarly, shirts are also related to clothing store services, because it is reasonable to assume that ACME-brand clothing stores would sell their own ACME-brand shirts.
However, this link is not always so straightforward, and sometimes the Trademark Office finds relatedness where it might not be so obvious. For example, clothing may also be related to jewelry such as earrings and necklaces. This is so, according to the Trademark Trial and Appeal Board, because a consumer might purchase both “so as to coordinate a fashionable ensemble.” In re Manja Studio SDN BHD (TTAB, 2019).
Food items may also be deemed related, even if they are vastly different kinds of food. Yogurt and cereal have been held to be related because they are both seen as breakfast foods and are even sometimes mixed together and eaten at the same time. General Mills, Inc. v. Fage Dairy Processing Industry S.A. (TTAB, 2011). Bread and cheese have also considered related, in part because they are often eaten together and are frequently displayed near each other in supermarkets and deli counters. In Re Martin’s Famous Pastry Shoppe, Inc. (Fed. Cir. 1984).
Finally, magazines (or other printed or online publications) may be related to practically anything that is featured or advertised in the magazine. Specific cases include beauty salon & health spa services vs. magazines relating to physical fitness (Weider Publications, LLC v. D & D Beauty Care Company, LLC (TTAB, 2014)); face cream & bar soap vs. magazines featuring articles on health, beauty, and grooming (Cowles Magazines, Inc. v. The Andrew Jergens Co., 115 USPQ 92 (Comr., 1957)); and travel agency services vs. magazines that feature travel “as a significant, albeit not the principle, feature” (The Conde Nast Publications Inc. v. Vogue Travel, 205 USPQ 579 (TTAB 1979)).
All likelihood-of-confusion issues are fact-based inquiries, and relatedness of goods and services is no exception. Small changes from one situation to the next can have big differences on whether infringement has occurred.