Similarity of Goods and Services in Trademark Law: How Close Is “Too Close”?

Trademark infringement requires an analysis of “likelihood of confusion.” In its shorted form, the question courts ask to determine trademark infringement is whether consumers would likely be confused as to the source, sponsorship, or affiliation of goods or services bearing a particular trademark. 

Assessing likelihood of confusion involves a multi-factor analysis that, depending on the jurisdiction, includes some version of the following factors:

(1) strength of the mark alleged to have been infringed;

(2) similarity of the infringed and infringing marks;

(3) similarity between the goods and services offered under the two marks;

(4) similarity of the actual sales methods used by the holders of the marks, such as their sales outlets and customer base;

(5) similarity of advertising methods;

(6) intent of the alleged infringer to misappropriate the proprietor’s good will; and

(7) the existence and extent of actual confusion in the consuming public.

Tackling these factors is too broad for a single blog post, and the analysis is too fact-specific to be useful as a single blog even if presented that way. Instead, taking the various factors one at a time is far more useful for most business-owner readers.

Why Similarity of Goods and Services Matters Most

In this entry, I walk you through one of the most important, and most misunderstood factors in the likelihood of confusion analysis, namely, the similarity of the goods or services. 

Clients often come to me with some variety of the following, “Joe sells crackers, but I sell cookies, those are obviously different products.” It may be true that the products are different and that consumers can easily tell the difference between the products, but the “similarity of the goods or services” factor of likelihood of confusion doesn’t actually consider that. Instead, analyzing the similarity of the products the marks represent requires a “determination as to whether the products are the kind that the public attributes to a single source, not whether or not the purchasing public can readily distinguish between the products of the respective parties.” See Caliber Automotive Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 934 (11th Cir. 2010). In fact, the goods or services do not have to be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086 (Fed. Cir. 2000). In other words, even goods that are obviously dissimilar but usually come from a single source, are likely to be considered related for likelihood of confusion purposes. Think, for example, of cigars and cigar cutters. These products are obviously different. They serve different functions, are made of different materials, and are manufactured in different places with different equipment. However, cigar sellers regularly offer cigar cutters or other material such as ashtrays, lighters, or humidors under the same trademark that they sell their cigars under. Consumers are used to this and would likely attribute cigars and cigar cutters with the same or similar trademarks to a single source, making cigars and cigar cutters closely related goods from a likelihood of confusion perspective. 

The USPTO’s Sliding-Scale Approach

The United States Patent and Trademark Office (the “USPTO”) also notes that “[i]n assessing the relatedness of the goods or services, the more similar the marks at issue, the less similar the goods or services need to be to support a finding of likelihood of confusion.” See TMEP §1207.01(a). So, relatedness of goods for likelihood of confusion purposes exists on a sliding scale where the closer the trademarks at issue are to one another, the further apart the goods have to be from one another to escape a finding of likelihood of confusion and trademark infringement. The USPTO specifically notes that “the use of identical marks on seemingly unrelated goods or services could result in a likelihood of confusion.”

Evidence Used to Prove Relatedness

The USPTO typically considered the following types of evidence to determine whether goods or services are related: news articles and/or evidence from computer databases showing that the relevant goods or services are used together or used by the same purchasers; advertisements showing that the relevant goods or services are advertised together or sold by the same manufacturer or dealer; and/or copies of prior use-based registrations of the same mark for both applicant’s goods or services and the goods or services listed in the cited registration. See TMEP §1207.01(a)(vi).

How Product Expansion Impacts Trademark Risk

Taken together, this means that businesses evaluating a potential trademark should think ahead about how their product line might expand. Even if you are starting with a narrow product or service offering today, the question is how consumers would view the relationship between your current offering and potential future offerings, both by you and by your competitors. If you are launching a specialty beverage, for example, you may not intend to sell snacks or glassware under your brand. But if consumers commonly encounter beverages together with those products in the marketplace, your branding choices may still create a likelihood of confusion problem with companies already selling those related items under a similar mark.

What “Too Close” Means for Brand Strategy

In practice, this factor often has the effect of broadening the scope of what counts as “too close” for trademark purposes. It no longer matters whether two companies view their products as fundamentally different; the relevant question is whether consumers, based on marketplace experience, could reasonably think those goods or services might come from the same source. As a result, many business owners discover that their preferred trademark is risky even though no one else is selling the exact same thing.

The broader point here is that similarity of goods or services is not a technical classification exercise. It is a practical, real-world question about how consumers understand brand ownership and brand expansion. Modern consumers are accustomed to seeing companies offer a wide range of related products under the same mark, and trademark law reflects that reality.

Enforcing and Defending Trademark Rights

For businesses, this means two things. First, a trademark may be more vulnerable to challenge than it appears if another brand is already operating in a related space that consumers would logically connect to yours. Second, a business may have stronger grounds to enforce its rights than it initially assumes, even where the other party’s goods or services are not identical. In both directions, the key inquiry is consumer perception, not product similarity in the abstract.

When disputes arise, courts and the USPTO will look beyond technical product descriptions and focus on how the marketplace actually works. Understanding this factor can help businesses avoid infringement risk, recognize when their own rights are being encroached upon, and make more informed decisions about brand strategy going forward.

To discuss protecting or enforcing your trademark rights, contact Jimerson Birr.