TTAB Decisions and Developments

JANE SHAY WALD
Irell & Manella LLP

Third Party Websites – Sufficient To Show That The Goods Will Be Seen As Related Without "Something More" In The Mix To Explore The Refusal Affirmed, Just As Stated

THE BOARD AFFIRMED THE EXAMINING ATTORNEY’S Sec. 2 (d) refusal to register the mark UPC for display panels as components of computers and smart phones and numerous other goods in Cl. 9, finding confusion likely with the cited identical UPC mark registered for various charging cables and power connectors. The takeaway from this case is that the PTO need not come up with "something more" than third-party web sites to show relatedness of an applicant’s goods to the goods of a cited registration.

The Board emphasized that the goods need not be identical or even competitive to find a likelihood of confusion as long as they are "related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source." Evidence of relatedness of goods may include excerpts from third-party websites showing that such goods are used together, used by the same purchasers, advertised together, or sold by the same manufacturers or dealers.