When are two products or services related?

Relatedness is the other half of every likelihood-of-confusion case, next to the similarity of the marks. The two trade off. The more similar the marks, the less related the goods need to be. U.S. Pat. & Trademark Off., Trademark Manual of Examining Procedure § 1207.01(a) (May 2026) [hereinafter TMEP]; In re Shell Oil Co., 992 F.2d 1204, 1207 (Fed. Cir. 1993). Identical marks on unrelated goods can both register. Identical marks on related goods usually cannot.

Because the identification controls, the way you word your own goods is a decision with legal consequences.

The second du Pont factor is “the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.” In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973); TMEP § 1207.01(a).

The question is not whether buyers would mix up the products. It is whether they would think the products share a source. Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329 (Fed. Cir. 2000). The goods need only be related in some manner, or marketed in ways that could lead to that mistaken belief. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369 (Fed. Cir. 2012); TMEP § 1207.01(a)(i).

The identifications control. Octocom Sys., Inc. v. Houston Comput. Servs., Inc., 918 F.2d 937, 942 (Fed. Cir. 1990); Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 1323 (Fed. Cir. 2014). An unrestricted identification is read to cover all goods of the type described. Narrowing your own identification does not avoid confusion if the registration is broad. TMEP § 1207.01(a)(iii).

The class number does not matter. Classification has no bearing on likelihood of confusion. TMEP § 1207.01(d)(v).

In an ex parte case, the examining attorney must supply evidence of relatedness. TMEP § 1207.01(a)(vi). The usual kinds:

• Third-party registrations that cover both kinds of goods under one mark. They count only if they are based on use in commerce. Registrations under Section 66(a) or Section 44(e) with no declaration of use filed have very little probative value. TMEP § 1207.01(d)(iii).
• Websites and advertising showing one company selling both kinds of goods under one mark.
• Evidence the goods are used together, such as complementary products bought for one purpose.
• The identifications themselves, which can show overlap on their face. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1267 (Fed. Cir. 2002).

An applicant answers with the same kinds of evidence: that the goods come from different sources in the trade, and that the examining attorney’s examples do not show one source selling both under one mark.

There are no per se rules. No category of goods, such as clothing or software, is automatically related to another. TMEP § 1207.01(a)(iv); M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1383 (Fed. Cir. 2006). Where the identifications overlap in part, the Board treats the goods as legally identical in part.

The identification rule applies in both. In an ex parte appeal, one more limit applies: the applicant cannot argue that the registrant’s goods are narrower in practice than the registration says. That is an attack on the registration, and it belongs in a cancellation proceeding. TMEP § 1207.01(d)(iv); In re Dixie Rests., Inc., 105 F.3d 1405, 1408 (Fed. Cir. 1997).

• Arguing what the registrant actually sells, when its registration says more.
• Relying on different class numbers.
• Treating a narrow description of your own goods as a cure.
• Leaving the examining attorney’s registrations unchecked. Some may not be use-based, or may no longer be live.

37 of the 38 records in this library that code du Pont factors carry a finding on factor 2 (library as of 2026-09-19; a curated collection, not a random sample). Only factor 1 appears more often.

In 36 of the 37, the coded note records the goods as identical, overlapping, or related. The one exception is In re Thor Tech. That reading is ours, from the coded notes.

Different products, identical marks. TERRAIN for towable RV trailers was allowed over TERRAIN for trucks. The Board found the two kinds of vehicles noncompetitive, completely different in use, and sharing nothing essential. Careful buyers do not attribute them to one source.

What a strong relatedness record looks like. BLACK SWAN for vodka was refused over BLACK SWAN for wines. The Board found the drinks related: they mix together in cocktails, some vodka is distilled from wine, over a dozen producers sell both under one name, and 18 registrations cover both.

Goods against services. COUNTRY OVEN for retail and custom bakery services was refused over a decades-old registration of COUNTRY OVEN for bread buns. The evidence showed bakeries commonly sell baked goods like buns under the same mark.

Before you file, write your identification as narrowly as your real plans allow, then compare it against the closest registrations. Ask the question the Board asks: would a buyer expect one company to make both? You can do this yourself with a search of registered marks for the goods you plan to sell.

If you have a refusal, go through the examining attorney’s evidence one item at a time. Check whether each registration is use-based and still live. Check whether each website shows one company selling both kinds of goods under one mark.

That evidence review is where an attorney earns the fee, because the argument turns on the weight of each item, not on the count. If you have this refusal, Valet Law, PLLC can review the examining attorney’s relatedness evidence and tell you whether it holds up.

Attorney review is provided by Valet Law, PLLC, a law firm separate from Trademark Valet, LLC. Keep confidential facts out of public tools. Your first message to Valet Law should identify the parties and the general issue only. Wait until Valet Law confirms it can discuss the matter before sending confidential details.