TMEP 1212.04(c): Goods or Services Must be "Sufficiently Similar"

This is the October 2015 Edition of the TMEP

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1212.04(c)    Goods or Services Must be "Sufficiently Similar"

The examining attorney must determine whether the goods or services identified in the application are "sufficiently similar" to the goods or services identified in the active prior registration(s). See 37 C.F.R. §2.41(a)(1). If the similarity or relatedness is self-evident, the examining attorney may generally accept the §2(f) claim without additional evidence. This is most likely to occur with ordinary consumer goods or services where the nature and function or purpose of the goods or services is commonly known and readily apparent (e.g., a prior registration for hair shampoo and new application for hair conditioner).

If the similarity or relatedness of the goods or services in the application and prior registration(s) is not self-evident, the examining attorney may not accept the §2(f) claim without evidence and an explanation demonstrating the purported similarity or relatedness between the goods or services. This is likely to occur with industrial goods or services where there may in fact be a high degree of similarity or relatedness, but it would not be obvious to someone who is not an expert in the field. See Bausch & Lomb Inc. v. Leupold & Stevens Inc., 6 USPQ2d 1475, 1478 (TTAB 1988) (“Applicant’s almost total reliance on the distinctiveness which its gold ring device has achieved vis-à-vis rifle scopes and handgun scopes is simply not sufficient by itself to establish that the same gold ring device has become distinctive vis-à-vis binoculars and spotting scopes.”); In re Best Prods. Co., 231 USPQ 988, 989 n.6 (TTAB 1986) (“[W]e infer in the instant case that the differences between the marks BEST & Des. and BEST JEWELRY & Des., and between the identifications of services in their respective registrations [‘mail order and catalog showroom services’ and ‘retail jewelry store services’], were deemed to be immaterial differences.”); In re Owens-Illinois Glass Co., 143 USPQ 431, 432 (TTAB 1964) (holding applicant’s ownership of prior registration of LIBBEY for cut-glass articles acceptable as prima facie evidence of distinctiveness of identical mark for plastic tableware, the Board stated, “Cut-glass and plastic articles of tableware are customarily sold in the same retail outlets, and purchasers of one kind of tableware might well be prospective purchasers of the other.”); In re Lytle Eng'g & Mfg. Co., 125 USPQ 308, 309 (TTAB 1960) (holding applicant’s ownership of prior registration of LYTLE for various services, including the planning, preparation, and production of technical publications, acceptable as prima facie evidence of distinctiveness of identical mark for brochures, catalogs, and bulletins).