How Scope Limitation and Connotation Defeated a 2(d) Refusal

Overcoming a Section 2(d) refusal takes a lot more than just looking at two marks side by side. The real beauty of the DuPont framework is its flexibility, it lets you look at the big picture of market realities and how consumers actually perceive brands. Even when two marks share identical words, like the term "PRO-GO" did in this case, a thorough analysis can prove they occupy completely different niches in the minds of consumers.

This case is a fantastic reminder that the Board is more than willing to look past identical text if the real-world market context support no likelihood of confusion. By proactively narrowing its description of goods, the Applicant put up a major roadblock for the Examining Attorney, making it more difficult to find solid evidence of relatedness. Ultimately, this appeal is a prime example of how pairing a hyper-focused commercial impression with a lack of product relatedness can successfully shift the balance in favor of registration.

Background

The Applicant, Sun Tube, LLC, sought to register the standard character mark PRO-GO for "lotion containers sold empty for domestic use, namely, bendable tubing for personal transport of such lotions" in Class 21.

The Trademark Examining Attorney issued a final Section 2(d) refusal based on a prior registration for HANDY PRO-GO. This cited mark covered "portable plastic containers, namely, pails," also in Class 21.

The refusal rested on a straightforward, mechanical comparison: the Examining Attorney argued that the marks were highly similar because the Applicant’s mark was entirely encompassed within the registered mark, and the goods were related because both fit under the broad umbrella of plastic containers.

The Applicant appealed to the Board, arguing that its specialized bendable tubing (after amendment) occupied an entirely different commercial realm than industrial pails.

How the Board Analyzed the DuPont Factors

DuPont #2: Similarity or Dissimilarity of the Goods

The Board began its analysis with the second DuPont factor, noting that the question of registrability must be decided based strictly on the identifications set forth in the application and the cited registration.

The Applicant argued that the goods were completely unrelated because the cited registration was explicitly limited to "pails," whereas the Applicant’s goods were narrowly defined as "lotion containers sold empty for domestic use, namely bendable tubing for personal transport of such lotions."

To establish relatedness, the Examining Attorney submitted screenshots from nine websites, arguing that the same entities commonly provide both lotion containers and plastic pails under a single mark. However, the Board found only three of these websites probative. Those three relevant examples featured soft plastic bottles or tubes alongside pails. The remaining six websites lacked probative value because they featured generic containers rather than the specific soft, bendable tubing specified in the Applicant's description.

Furthermore, the Board observed that the Examining Attorney failed to establish whether the soft plastic lotion bottles found on those three probative websites were "effectively the same" as the Applicant’s specific type of container. Even if they were, the Board ultimately concluded that this meager evidence failed to support a finding of relatedness, weighing against a likelihood of confusion.

DuPont #3 and #4: Similarity of Trade Channels and Classes of Consumers

Relying on the Registrant’s specimen and website, the Applicant argued that the cited mark’s goods are targeted exclusively toward professionals, such as professional painters, and therefore travel through a different trade channel to a different class of consumers.

The Board dismissed this argument, noting that it cannot read limitations from a website or specimen into a registration if the identification itself is not explicitly limited. Because the cited registration covered "pails" generally, the Board had to presume they were available to the same general public that would buy the Applicant's travel tubes from a broad container retailer.

Using the same third-party websites evaluated under the relatedness of the goods, the Board found that there was indeed an overlap in trade channels and customer classes on the record. As a result, the Board concluded that these factors weighed in favor of a finding of a likelihood of confusion.

DuPont #1 Similarity or Dissimilarity of the Marks

In evaluating the first DuPont factor, the Board compared the marks PRO-GO and HANDY PRO-GO in their entireties.

The Board acknowledged that both marks share the identical "PRO-GO" component, including the hyphen. Consequently, the marks were found to be similar in appearance and sound to an extent because one mark incorporates the entirety of the other.

Turning to connotation and commercial impression, the Applicant argued that the term "HANDY" in the cited mark was dominant and significantly altered the overall impression. According to the Applicant, "HANDY" evokes the impression of a "skilled craftsman, such as a painter," and this "connotation is further supported by the use of ‘PRO’ which is a reference to professional."

While the Board disagreed that "HANDY" was necessarily the dominant term, it did agree with the Applicant that the mark HANDY PRO-GO "might suggest professional painters’ buckets," noting that "the HANDY component reinforces this, as in a handyman."

The Board rejected the Examining Attorney’s argument that the Applicant’s mark is likely to appear to prospective purchasers as a shortened form of Registrant’s mark. Instead, the Board noted that the "PRO-GO" component itself has multiple potential meanings: it could mean "professional," a combination of the "pros" in "pros and cons" with "go," or a shortened version of "on the go."

It was this flexibility of meaning that allowed the Board to distinguish the two marks in the marketplace. The Board observed that the professional connotations associated with the Registrant's pail simply do not carry over to a personal travel accessory emphasizing speed. The Board stated:

"Here, PRO-GO for travel lotion containers certainly leans on the “go” aspect of travel and portability, but the other meanings of PRO do not carryover as well; travel lotion containers for personal use do not so clearly suggest a professional use in the same manner as a plastic pail."

Therefore, despite their superficial similarities in sound and appearance, the marks created entirely different commercial impressions" when viewed in connection with their respective goods. The Board ultimately concluded that the marks were not sufficiently similar, a finding that heavily weighed against a likelihood of confusion.

Board’s Decision

The Board’s final determination rested on a careful balancing of the relevant DuPont factors. While the Board found an overlap in trade channels and classes of customers, it determined that the first and second factors—the similarity of the marks and the relatedness of the goods—were the most significant and ultimately determinative. In doing so, the Board reiterated the fundamental principle that a likelihood of confusion inquiry must focus on the "cumulative effect of differences in the essential characteristics of the goods and differences in the marks."

Applying this principle, the Board found that the goods were not sufficiently related; the evidence failed to show that consumers would expect a single source to provide both bendable personal lotion tubes and industrial-style plastic pails. Furthermore, because of these distinct market contexts, the Board found that the marks created entirely different commercial impressions when applied to their respective products.

Consequently, the Board held that the balance of factors tipped decisively against a likelihood of confusion. The Trademark Trial and Appeal Board reversed the Section 2(d) refusal, clearing the way for the registration of Sun Tube, LLC’s PRO-GO mark.

Although this case is not prcedential, I still think that this reversal offers some great takeaways for practitioners dealing with Section 2(d) refusals, especially when the Examining Attorney is relying on broad, generic categories of goods or stretching the relevance of internet evidence.

1. The Power of the Hyper-Specific Amendment

In my view, the absolute chess master move here was the Applicant’s decision to amend the identification of goods. Moving from a broad category like "lotion containers sold empty for domestic use" to the highly specific "namely, bendable tubing for personal transport of such lotions" completely changed the battlefield.

By narrowing the scope, the Applicant handed the Examining Attorney a much heavier evidentiary burden. Think about it: it’s incredibly easy for an Examiner to pull internet evidence showing a single brand that sells generic plastic pails and standard plastic bottles. But finding a single source that sells industrial pails and highly specific, travel-friendly bendable lotion tubing? That is a much taller order.

2. Don't Settle for "Close Enough" Evidence

Because the Applicant narrowed that description, it allowed them to aggressively scrutinize the Office’s evidence. I loved seeing the Board call out the Examining Attorney’s website screenshots. Out of nine websites submitted to show relatedness, the Board tossed six of them out right away because they featured generic containers, not the specialized tubing the Applicant specified. And for the remaining three? The Board noted the Examiner failed to explain how rigid or standard squeeze bottles were "effectively the same" as bendable tubing.

The lesson for us here is clear: never let "close enough" evidence slide. If the Office’s evidence doesn't precisely match the specific limitations you've carved out in your identification, highlight that gap aggressively. The burden of proving relatedness stays on the Office, and we should hold them to it.

3. Rewriting the Impression with Connotation

Another lesson I took away from this case is to focus on the connotation of the additional wording. When you review and evaluate an office action, it’s completely natural to immediately focus on the shared portions of the marks. After all, that forms the basis of the Examining Attorney's argument. But this case proves that a single extra word, even a descriptive one like "HANDY", can completely rewrite the commercial impression and tip the balance in your favor.

Instead of just pointing out that the marks look different, you need to show why that extra word forces the consumer to make a completely different mental leap. Here, the Applicant successfully argued that "HANDY" reframes "PRO" into a reference to a handyman or professional craftsman. Meanwhile, in its own mark, "PRO-GO" simply hooks into the idea of portability or being "on the go." It's this kind of real-world, contextual analysis that can dismantle a refusal, even when the marks have common elements.