Same Mark, Different Goods, Refused as "Related": Thor Tech Pairs and the Other Arguments That Worked

You are in this situation if your Section 2(d) refusal says your mark is identical, or within a space, a letter or a punctuation mark, of a registered mark, and that your goods or services, though different, are "related." With the marks matched, the fight is almost entirely over the goods.

The manual (the TMEP) explains why the examiner starts ahead: "If the marks of the respective parties are identical or virtually identical, the relationship between the goods or services need not be as close to support a finding of likelihood of confusion as would be required if there were differences between the marks" (TMEP 1207.01(a)). The same section of the manual still requires that the goods be related: the examiner has to show it.

Before you argue

If the owner of the cited registration will sign a consent agreement, that is usually the shortest path. If the cited registration is vulnerable, check that first. MILA filed a petition to cancel the cited MILLA registration three days before responding and told the examiner so: "Applicant filed a petition to cancel U.S. Registration No. 6289491 under 15 U.S.C. Section 1064 on October 24, 2023." The registration was canceled on March 20, 2024, and MILA was approved on May 2, 2024.

If the cited registration was not renewed, the manual explains the timing: "The examining attorney cannot withdraw a refusal of registration under §2(d) until the Trademark database shows that the registration is cancelled or expired" (TMEP 716.02(e)). VERANDA pointed to the calendar in its response: "Applicant notes that Reg. No. 2978902 had a renewal deadline of July 26, 2025. As of today's date, no renewal was filed." The wine registration was canceled on February 13, 2026, and VERANDA was approved twelve days later.

If you can live without the overlapping goods, you can delete them: PUREFLEX cut its clothing list to waistbands and told the examiner, "As noted above, however, 'pants' has been deleted from the application, and none of the registrations cover both 'footwear' and 'waistbands.'" It was approved the next day. Narrowing only works if the examiner's evidence no longer reaches what is left.

If you decide to argue: three arguments that carried cases on their own

The examiner weighs the du Pont factors, a list of considerations from the 1973 du Pont decision (factor 1 compares the marks, factor 2 the goods, factor 3 the trade channels). With identical marks, all three arguments below work on factor 2. Each approved case won with argument and evidence alone: no consent, no change of ownership and no change to the goods.

Whichever you choose, attach copies of the registrations, specimens and pages you rely on. A list typed into the response does not count as evidence.

1. Thor Tech pairs: the same mark already lives with different owners across your line (du Pont factor 2)

The factor: relatedness of the goods. In In re Thor Tech (Board, 2015) the examiner cited TERRAIN for trucks against TERRAIN for towable trailers. The Board reversed: "Applicant’s evidence of dozens of third-party registrations for the same or very similar marks owned by different entities for vehicles and recreational vehicle trailers rebuts the relevant, two third-party registrations made of record by the Trademark Examining Attorney." The reasoning matters most when the marks are identical: "The existence of almost fifty pairs of substantially identical marks for land motor vehicles and for towable recreational vehicle trailers on the federal Trademark Register suggests to us that businesses in these two industries believe that their respective goods are distinct enough that confusion between even identical marks is unlikely." The Board concluded: "Accordingly, we find that the similarity of the goods factor weighs against likelihood of confusion."

When it fits: the examiner's relatedness proof is a few registrations or websites, and the register shows the same name split between unrelated owners on either side of your dividing line.

What to file: pairs of the same mark, one owned by a company for your kind of goods and a different company's for the registrant's kind, with the registration records. Use exact matches, and aim for more pairs than the examiner has registrations.

In their words. SUNBURST's response: "Applicant has identified several third-party registrations for identical marks that cover the goods at issue here which coexist on the Register." OBSIDIAN's: "The coexistence of identical marks, such as 'MERCURY' or 'GENESIS' or 'TRUSTMARK,' demonstrates that consumers will not be misled or confused in connection with insurance and hedge fund services." The final refusal that answered VIBE: "Prior decisions and actions of other trademark examining attorneys in applications for other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board."

The pattern: each approved response used pairs of the same mark across the same dividing line as the refusal (razors and hair care, insurance and hedge funds, disc golf and ball golf) and attached the registrations. VIBE's table had two exact pairs out of five, and the examiner met it with the rule that other examiners' decisions do not bind. This record does not show how many pairs are enough.

2. Take the examiner's evidence apart (du Pont factor 2)

The factor: also relatedness of the goods, argued from the other side: the examiner has to prove it. The manual: "The examining attorney must provide evidence showing that the goods and services are related to support a finding of likelihood of confusion" (TMEP 1207.01(a)(vi)). And on registrations: "Third-party registrations that cover the goods or services of the applicant and registrant may have some probative value to the extent that they may serve to suggest that goods or services are of a type that may emanate from a single source, if the registrations are based on use in commerce" (TMEP 1207.01(d)(iii)).

When it fits: the examiner's proof is a set of registrations or a few websites.

What to file: open every registration and every page. Check whether a registration is based on use or on a foreign filing, what its specimen shows, whether each site sells both kinds of goods under its own brand, and whether the page still works. Attach what you find. SUNBURST (Argument 1) did this too: it answered the examiner's five registrations one by one, pointing to three registrants' websites and to one registration based on a foreign filing.

In their words. BIOFX's response: "Of the seven registrations, cited four are based on non-US registrations from countries which allow for claiming entire categories of goods without proof of use." BIG FLY's: "The 'Internet evidence' provided in the Office Action showing the Rawlings-provided bat grip spray consists of an image of an 'Out of Stock' product." The final refusal that answered STRATUS: "These companies offering goods of the applicant and registrant under one company umbrella or trade channel include Chemstar, Frigel, Evapco, SPX Cooling, Baltimore Air Coil, Seeley International, ISC Sales, MJC Inc., and Voltaire Systems."

The pattern: the approved responses found specific gaps in specific evidence: foreign-based registrations, specimens showing one product, an out-of-stock page. The two refused files argued about the kind of evidence, and the examiner answered with more pages (STRATUS) or with the wording of the cited identification (UNPAUSED).

3. Show what the registrant's goods really are (du Pont factor 2)

The factor: relatedness is judged on the written lists, and the manual says so: "An applicant may not restrict the scope of its goods and/or the scope of the goods covered in the registration by extrinsic argument or evidence, for example, as to the quality or price of the goods" (TMEP 1207.01(a)(iii)). The same section allows one use of the registrant's own materials: "In cases where the terminology in an identification is unclear or undefined, the Board has permitted an applicant to provide extrinsic evidence to show that the registrant's identification has a specific meaning to members of the trade."

When it fits: the cited list uses a term the examiner reads broadly but that means something narrow in the trade.

What to file: the registrant's specimen from its registration file, the registrant's own website or product page, and a dictionary entry for the term. Tie each to the exact wording of the cited list.

In their words. DURALIFE's response: "A review of the specimen of use submitted on May 8, 2020 in connection with the Cited Mark shows that the goods appear to be component parts for heavy duty mining equipment." BIOFX's concluded, "clearly a 'membrane substrate' is not a feed supplement." The final refusal that answered DUCIC: "Registrant's identification includes the broadly worded identification of 'Jewelry' and as such, this may include different items of which are commonly sold in the marketplace by the same entity that also provides clothing items."

The pattern: in DURALIFE and BIOFX the cited list used a specific trade term (power-operated hammers, chemical reagents) that the registrant's own filing explained. DUCIC's cited list said plain "Jewelry," and the examiner treated it as covering everything sold under that word. BIG FLY paired the specimen with the site-by-site answer in Argument 2.

Arguments that rarely carried a case alone

Different trade channels (the third du Pont factor), careful buyers, and the real-world difference between the businesses appear in refused files, and approved files made them too, but alongside one of the three arguments above (OBSIDIAN argued regulation and buyer care next to its pairs; DURALIFE argued channels next to the registrant's specimen). With identical marks, examiners answer buyer care directly: "even sophisticated purchasers are not immune from source confusion, especially in cases such as the present one involving identical marks and related goods" (UNPAUSED final refusal). The manual adds on channels: "The third DuPont factor—like the second factor—must be evaluated with an eye toward the channels specified in the application and registration, not those as they exist in the real world" (TMEP 1207.01(a)(iii)).

Finding cases like yours

GleanMark's Office Action research (Professional and Max plans) lets you select a Section 2(d) refusal and the argument hooks "Identical Marks" and "Related in Some Manner," then filter to cases won by argument alone. Each case opens the examiner's letter and the applicant's filed response. Its Thor Tech pairs tool searches the register for the pairs described above.

This article describes public USPTO records. It is not legal advice; each refusal turns on its own marks, goods and evidence.