Failure to Prove Relatedness Defeats 2(d) Refusal of Identical Marks

In the world of trademark prosecution, it is a common misconception that when a client’s mark is identical to a cited registration, the case is effectively closed. However, as the Trademark Trial and Appeal Board (TTAB) recently reminded us in In re Home and Human Fashion Pty. Ltd., similarity or dissimilarity of marks is only the beginning of the analysis, not the end.

While identical marks carry a heavy presumption of confusion, the Examining Attorney still bears the burden of showing relatedness between the respective goods and services through specific evidence. You cannot simply point to a "big box" retailer’s website that sells everything under the sun and claim that because a store sells both items, they are related. The law requires a tighter link. As this case illustrates, a failure by the Examining Attorney to provide more than "scant" evidence can salvage parts of an application, even when the marks are mirror images of each other.

Background

The Applicant, Home and Human Fashion Pty. Ltd., sought to register the standard character mark LA LA LAND for a diverse array of consumer products across four distinct classes:

• Class 16: Stationery
• Class 18: Bags and wallets
• Class 24: Kitchen towels
• Class 28: Board games, puzzles, and Christmas ornaments

The USPTO Examining Attorney (EA) issued a Section 2(d) refusal based on a prior registration for the identical mark, LA LA LAND, registered in Class 35 for:

"...retail store services featuring souvenirs, gift items, sundries, mugs, key chains, jewelry, sunglasses, paper goods, books, magazines, greeting cards, stationery, picture frames, posters, art, lanyards, housewares, passport wallets, wallets, bags, purses, magnets, pens and pencils, umbrellas, smokers’ articles, convenience store items, grocery items, toys, sporting goods..."

When the refusal was made final and the request for reconsideration was denied, the matter moved to the Board. In a split decision, the TTAB affirmed the refusal for Classes 16 and 18, but reversed it for Classes 24 and 28.

How the Board Analyzed the DuPont Factors

DuPont Factor #1: Similarity of the Marks

Let’s be clear: when the marks are identical in sound and appearance, you are starting from a position of extreme weakness on the first factor. The Board found the marks were both standard character marks for LA LA LAND, making them visually and aurally indistinguishable.

The Applicant tried to differentiate its mark from the registrant's, arguing that they convey entirely different commercial impressions in the marketplace. Relying on extrinsic evidence, the Applicant contended that the cited mark refers to Los Angeles (since the registrant is based there), whereas the Applicant's mark was meant to evoke a "fantastical place" or a "dreamlike quality."

The Board rejected this argument, finding the attempt to imbue the cited mark with a specific geographic limitation unavailing. Under the first DuPont factor, the inquiry is based on how the marks appear in the registration and the application, not how they are actually used in the marketplace.

Furthermore, the Board observed that the dictionary definition of "LA LA LAND" actually works against this differentiation. Because the term can mean both a "dreamlike state" and a nickname for the City of Angels, and because the marks are identical, consumers would likely attribute the same meaning (either or both) to both marks.

DuPont Factor #2: Similarity of the Goods and Services

The Applicant conceded that the registrant's retail store services featuring "paper goods" and "wallets, bags" were broad enough to cover all of the Applicant's Class 16 and Class 18 goods. However, the Applicant argued that the Examining Attorney failed to show that the Class 24 and Class 28 goods were related to the registrant's retail services.

The Examining Attorney took the position that the cited services’ mention of "housewares" would cover "towels," and "toys" would cover "board games, puzzles, and Christmas ornaments." To support this, the Examining Attorney submitted third-party marketplace evidence consisting of screenshots from the websites of Dollar General, Target, and Walmart.

The Board sided with the Applicant. While it noted that this marketplace evidence supported the idea that the goods share a common trade channel (DuPont #3), it did not prove relatedness:

"[T]hese screenshots do not show relatedness since the goods displayed on the websites are offered under a different mark than the retail store name."

In other words, Target might sell both towels and board games, but those goods are not sold under the Target brand.

The Examining Attorney also submitted three third-party registrations showing entities providing both the goods and the retail services under the same mark (e.g., one party providing kitchen towels and houseware retail services; two others providing games/toys alongside toy/game retail services).

The Board simply said that was not enough:

"We find that the foregoing scant amount of third-party registration evidence is insufficient for us to find that the Examining Attorney has made a prima facie showing that Applicant’s Class 24 and Class 28 goods are related to Registrant’s Class 35 retail store services."

Because the record failed to show that Class 24 and 28 goods are commonly offered under the same mark as a retail store featuring those goods, and because there was no other probative evidence showing that "housewares" or "toys" encompassed the Applicant's specific items, the Board found this factor weighed against a likelihood of confusion for Classes 24 and 28.

DuPont #3: Channels of Trade and Class of Purchasers

The only probative evidence related to trade channels was the same big-box website screenshots. The Board noted that this evidence successfully showed the Applicant’s goods and the registrant’s services are the types of offerings that may encounter overlapping lines of consumers in identical online and brick-and-mortar marketplaces. Thus, this factor weighed in favor of a likelihood of confusion.

However, the Board pointed out that the Examining Attorney misstated the law by arguing that a presumption of identical trade channels applies whenever the descriptions lack limitations.

As the Board clarified, that presumption is applicable only when the goods and services are legally identical, which was not the case here (See In re Viterra, 671 F.3d 1358, 1362 (Fed. Cir. 2012)). That being the case, the Board found this factor favored a likelihood of confusion based purely on the evidence presented, not on an automatic presumption.

We’ve all been there. You open a Section 2(d) refusal, and your heart sinks because the cited mark is a mirror image of your client’s. Early in my practice, my immediate instinct was a mix of panic and imposter syndrome. I’d assume the case was closed.

But this case reminds us not to let that anxiety dictate our strategy. When you strip away the intimidation factor, trademark prosecution becomes remarkably mechanical. Vibes don't win cases; evidence does. The Examining Attorney must build a prima facie case.

What I appreciate here is how deeply "in the weeds" the Board got. They didn’t just shrug at the identical marks; they meticulously picked apart the evidence. When the EA used the classic big-box shortcut, arguing goods are related because Target sells both, the Board held the line. Selling diverse brands under one roof doesn't prove relatedness under the second DuPont factor.

This case challenges us to be just as meticulous. We can't accept a handful of third-party registrations as gospel. We must audit whether the goods/services are actually sold under the same mark.

An identical mark is a weak starting position, but it isn't an automatic forfeit. Next time you face a daunting refusal, lean into the mechanics of the law. If the USPTO's evidence is thin, the refusal is vulnerable. Sometimes the best advocacy just means rolling up our sleeves, diving into the weeds, and pick apart the evidence in front of us.