Service Dissimilarity Overcame Identical Marks in a 2(d) Appeal

Can the USPTO block your trademark application by simply redefining what your services actually are?

In a recent appeal, the Examining Attorney attempted to do just that, treating the Applicant's specific "safari expeditions" as any general "recreational tour" or "excursion." By artificially broadening the category, the examiner made it much easier to find third-party evidence showing large entities that provided both these general tours and the cited registration's restaurant services.

However, as this decision illustrates, the Trademark Trial and Appeal Board will not allow the Examining Attorney to ignore specific, limiting terms in an identification of services. By holding the Office to the commonly understood meaning of the word "safari," the Applicant successfully rendered nearly the entire evidentiary record irrelevant, proving that precise drafting and a fierce defense of your service descriptions can dismantle even a 2(d) refusal involving identical marks.

Background

The Applicant, Aggressor Adventures, LLC, filed an intent-to-use application under Section 1(b) for the standard-character mark WHERE LIFE HAPPENS. The application initially sought registration for "arranging and conducting safari expeditions for recreational purposes" (International Class 41), alongside "hotel, restaurant and bar services" (International Class 43). During prosecution, in a response to an Office Action, the Applicant deleted the Class 43 services, leaving only the safari expedition services.

Despite this amendment, the Examining Attorney issued a refusal under Section 2(d), citing Registration No. 4658288 for the identical mark WHERE LIFE HAPPENS. The cited registration covers "restaurant services" in International Class 43.

Following a final refusal and the subsequent denial of a request for reconsideration, the Applicant appealed the decision to the Trademark Trial and Appeal Board (TTAB).

How the Board Analyzed the DuPont Factors

DuPont #1: Similarity of the Marks

In evaluating the marks, the Board considered their appearance, sound, connotation, and commercial impression. It noted that both were standard-character marks consisting of the exact same phrase: WHERE LIFE HAPPENS. Because the mark in the application and the mark in the cited registration were identical in all aspects, the Board found that this factor weighed heavily in favor of a likelihood of confusion.

As the Board noted in its conclusion, when the marks themselves were identical, "the degree of similarity between the goods or services required for confusion to be likely declines."

DuPont #2: Similarity of the Services

The heart of the dispute rested on the second DuPont factor. The Examining Attorney attempted to establish relatedness by arguing that "safari expeditions" should be interpreted broadly to encompass "any recreational tour or expedition." Under this logic, the Examining Attorney maintained that the word "safari" did not limit the services to a specific type of outing.

The Board explicitly rejected this attempt to broaden the identification. Relying on dictionary definitions, descriptions on the Applicant's website, and other evidence in the record, the Board determined that the “safari expeditions” recited in the application were a specific type of journey. namely, one that includes viewing and/or hunting game, and did not encompass other kinds of recreational tours.

With the services properly scoped, the Board turned to the Examining Attorney’s evidence of relatedness. This evidence consisted of 18 third-party uses, a handful of third-party registrations, and one registration owned by the Applicant, all intended to show that restaurant services and safari services often emanate from a single source. The Board found this evidence severely lacking:

• Irrelevant Third-Party Uses: All of the third-party uses provided by the Examining Attorney failed to show a single entity offering both the services of the cited registration and those of the Applicant.
• Missing Services: Five of the 18 uses did not mention restaurant services or safari services at all.
• Unrelated Activities: Twelve of the remaining uses featured activities like scuba diving, water sports, fly-fishing, catamaran cruises, and snowcat or snowmobile excursions, but not safari expedition services.
• Insufficient Single Source: Only one use (the Hard Rock Hotel in Punta Cana) mentioned a "Safari half day tour," but the evidence failed to show actual restaurant services, providing only a menu link for "eat & drink" without further detail.

While the Board acknowledged that the Applicant’s own use-based registrations for other marks covered both restaurant and safari services, and that two other third-party registrations showed both services, the totality of evidence was insufficient. The Board concluded that the vast majority of the record showed only one service or the other, failing to demonstrate that consumers were accustomed to seeing them originate from the same source.

While the Board acknowledged that the Applicant’s own use-based registrations for other marks covered both restaurant and safari services, and that two third-party registrations showed both services, it determined that the totality of the evidence was insufficient. The Board concluded that the evidence failed to demonstrate that consumers were accustomed to seeing them originate from the same source.

DuPont #3: Similarity of trade channels and classes of purchasers

The Examining Attorney argued that because the identifications for both the Applicant’s and the Registrant’s services lacked explicit restrictions, it should be presumed that they travel through the same trade channels to the same class of purchasers. Essentially, the examiner maintained that the broad nature of the service descriptions necessitated a finding of overlapping channels and consumers. To support this, the examiner pointed to the same third-party website evidence and Applicant website screenshots used in the relatedness argument.

However, the Board criticized this reliance, pointing out that the Examining Attorney erred in applying this legal presumption. The Board clarified:

"This presumption applies only where goods or services are identical or legally identical...Where, as here, the services are not identical, we may presume only that they travel in whatever trade channels are normal for each type of service."

Ultimately, the Board found that the Examining Attorney's evidence suffered from the same fatal flaws identified in the relatedness analysis. The third-party websites failed to demonstrate that it was normal or standard for these two distinct services to be offered by the same source or marketed through the same channels. Because no actual overlap was demonstrated, the Board concluded there was no basis to infer that the channels or purchasers were the same. Consequently, the Board weighed this factor heavily against a finding of a likelihood of confusion.

DuPont #4: Conditions of Sale and Purchaser Care

For the fourth DuPont factor, the Applicant argued that purchasers of safari expeditions were highly sophisticated and discriminating consumers, largely due to the high price tag associated with such trips. However, the Board countered that because the identifications contained no specific restrictions regarding price points or consumer types, it must "presume that the safari expedition services... and the restaurant services... are sold at all price points."

Nevertheless, the Board did acknowledge that the very nature of safari services makes it likely that consumers will exercise at least some degree of care when making a purchase. Ultimately, the Board held this factor to be neutral, reminding the parties that even sophisticated purchasers could be confused when encountering identical marks.

DuPont #6: Strength of the Cited Mark

Regarding conceptual strength, the Board noted that because the cited mark was registered on the Principal Register without a Section 2(f) claim of acquired distinctiveness, it must be presumed inherently distinctive.

The Applicant argued that WHERE LIFE HAPPENS was a colloquial expression that is, at best, highly suggestive of restaurant services. However, the Board found this argument unpersuasive because the Applicant failed to provide any evidence demonstrating commercial weakness.

Consequently, the Board found that the cited mark was entitled to the normal scope of protection, rendering this factor neutral.

DuPont #7: Actual Confusion

The Applicant also argued that the complete absence of actual confusion favored registration. The Board dismissed this argument, finding the factor neutral. It noted that a lack of actual confusion carried very little weight in an ex parte context, particularly here, since the application was filed on an intent-to-use basis, meaning there had been no meaningful opportunity for concurrent commercial use or consumer confusion to occur.

Board’s Decision

The TTAB reversed the refusal to register WHERE LIFE HAPPENS in International Class 41. The Board determined that although the marks were identical, a fact that normally weighs heavily in favor of a likelihood of confusion, the evidentiary record ultimately failed to establish a meaningful relationship between "safari expeditions" and "restaurant services."

As the Board summarized in its decision:

"... even with the lesser degree of similarity required because of the identical marks, the two third-party registrations and Applicant’s prior registrations are insufficient to establish the relatedness of Applicant’s and Registrant’s services, when considered against the 18 third-party uses that do not show both Applicant’s and Registrant’s services, and the absence of any use with restaurant services on screenshots of Applicant’s website in the record."

Furthermore, the lack of overlapping trade channels and consumer classes also countered the identical nature of the marks, tipping the scales against a finding of a likelihood of confusion.

For me, this decision is a great reminder that we can never let ourselves be intimidated by a mountain of evidence from an Examining Attorney. When you first open an Office Action packed with 18 different third-party website examples, it looks daunting. But this case shows exactly why we need to pause, look closer, and prioritize quality over sheer quantity.

When you look under the hood of the Examiner’s record here, you realize it was largely an illusion. Twelve of those examples didn't even touch safari services—they were about scuba diving and snowmobile rentals. By treating "safari" as an elastic term that could mean any general excursion, the Examining Attorney tried to stretch the identification to force a conflict. We can’t let the USPTO redefine a client’s services just to make a refusal stick.

Sometimes an Examining Attorney stretches the law as well. Here, the Board clarified: legal presumption that trade channels and consumer classes overlap only applies when the underlying goods or services are identical or legally identical. If the services are different, the Examiner cannot rely on a blanket assumption. They must provide affirmative evidence that the "normal" trade channels for your specific services actually intersect with those of the cited registration. If an Examiner tries to use this rubber-stamped presumption where the services don't match, call it out. Don't let the USPTO escape its burden of proof by misapplying the law.

This case also underscores the line between attorney argument and concrete evidence. The Applicant made an intuitive, logical argument about suggestiveness that feels correct on its face, but the Board brushed it aside because there was no market evidence in the record to back it up.

By failing to submit data, third-party uses, or market context of commercial weakness, the Applicant missed an opportunity to notch an extra DuPont factor in their favor. Mere assertions of fact in a brief are not evidence. Although the other factors were ultimately strong enough to win the day here, it never hurts to stack as many cards in your favor as possible.

Have you noticed Examiners trying to broaden your niche service descriptions lately to force a conflict? How did you push back? Let's discuss in the comments.