Likelihood of Confusion - Expansion of Trade



As stated in section 1207.01(a)(v) Expansion-of-Trade Doctrine of Examination Procedure:

The expansion-of-trade doctrine has limited application in ex parte proceedings, and the Trademark Trial and Appeal Board has indicated that "[i]t is not necessary, . . . in the context of an ex parte proceeding, for the Office to show that the owner of the particular registration that has been cited against the application has expanded or will expand its goods or services." In re 1st USA Realty Prof'ls, 84 USPQ2d 1581, 1584 n.4 (TTAB 2007).

The doctrine is typically applied in inter partes proceedings where an opposer claims that its priority of use of a mark with respect to its goods/services should be extended to include applicant's goods/services because they are in the natural scope of expansion of opposer's goods/services. See id. at 1584. However, in the ex parte context, the normal relatedness analysis is applied:

[W]e look at the question of the relatedness of the services identified in applicant's application and those in the cited registration based on whether consumers are likely to believe that the services emanate from a single source, rather than whether the Examining Attorney has shown that the registrant herein has or is likely to expand its particular business to include the services of applicant.

Id.

To the extent the expansion-of-trade doctrine does apply in ex parte cases, it "is considered through a traditional relatedness of goods and services approach." Id. at 1584 n.4.

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  • Definition: Expansion of trade.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • With respect to the services, applicant has discussed the respective services by asserting that the registrant is not likely to expand its services to those identified in applicant's application. The concept of expansion of trade is generally addressed in the context of the issue of priority in an inter partes proceeding. For example, when an opposer has prior rights for certain services, but began using its mark for the same services as the applicant after the applicant did, we examine whether the applicant's services are within the natural scope of expansion of the opposer's original services to determine whether the opposer's priority with respect to the original services will carry over to give it priority with respect to the applicant's services. See May Dep't Stores Co. v. Prince, 200 USPQ 803, 808-09 (TTAB 1978), cited by applicant, in which the Board stated that "as the first commercial user of a black and white diagonal design which is arbitrary in its concept and use, opposer possesses rights therein sufficient to preclude the registration thereof by a subsequent user of the same or a similar mark for any goods which purchasers might reasonably be likely to assume emanate from it in the normal expansion of its business under the mark notwithstanding that the expansion to a particular product might be subsequent in time to that of another party."
  • Finding: The Board found that consumers were likely to assume a common source for the goods, and was not persuaded by the applicant's argument that the registrant was unlikely to expand its business of making shock absorbers to also make automobiles.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • The expansion of trade doctrine has a more limited application in an ex parte proceeding. In In re General Motors Corporation, 196 USPQ 574 (TTAB 1977), the case cited in Trademark Manual of Examining Procedure Section 1207.01(a)(v) which discusses the relatedness of goods and services in terms of the expansion of trade doctrine, and which section was cited by applicant in its brief, the applicant therein argued that it was not within the normal expansion of trade of a manufacturer of automotive shock absorbers to manufacture automobiles. The Board, however, analyzed the issue as being whether purchasers, when seeing the identical mark applied to both automobiles and automotive shock absorbers, would be likely to attribute a common source or origin to such closely related goods. In affirming the refusal of registration, the Board found that consumers were likely to assume a common source for the goods, and was not persuaded by the applicant's argument that the registrant was unlikely to expand its business of making shock absorbers to also make automobiles.
  • Finding: The question of relatedness of goods and services is based on whether consumers are likely to believe that the services emanate from a single source, rather than whether the Examining Attorney has shown that the registrant herein has or is likely to expand its particular business to include the services of applicant.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • Thus, we look at the question of the relatedness of the services identified in applicant's application and those in the cited registration based on whether consumers are likely to believe that the services emanate from a single source, rather than whether the Examining Attorney has shown that the registrant herein has or is likely to expand its particular business to include the services of applicant.
  • The concept of expansion of trade is generally addressed in the context of the issue of priority in an inter partes proceeding. Priority of use is not an issue in an ex parte proceeding.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • FOOTNOTE 9: As the Board observed in In re 1st USA Realty Professionals, Inc. ____USPQ2d_____ , Serial No. 78553715 (TTAB August 7, 2007), "the concept of expansion of trade is generally addressed in the context of the issue of priority in an inter partes proceeding." Priority of use is not an issue in an ex parte proceeding. See In re Calgon Corporation, 435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971). As explained in 1st USA, the doctrine, in an ex parte context, essentially requires application of the traditional, related goods and services analysis, and we construe applicant's argument as such.
In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007) In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007) Grand Total
In re 1st USA Realty Professionals Inc. ____USPQ2d_____ , Serial No. 78553715 (TTAB August 7, 2007) 1
May Dep't Stores Co. v. Prince, 200 USPQ 803 (TTAB 1978) 1
In re General Motors Corporation, 196 USPQ 574 (TTAB 1977) 1
In re Calgon Corporation, 435 F.2d 596, 168 USPQ 278 (CCPA 1971) 1
Grand Total 2 2 4
No Statutes Listed.