Refused Over a Restaurant, Store or Product Name: The 'Something More' Rule, Thor Tech Pairs and the Other Arguments That Worked

You are in this situation if your Section 2(d) refusal pairs a product with a service built around products: your food, drink or goods against a registered restaurant, bar or store name, or your restaurant or store against a registered product name. The examiner reasons that restaurants serve that food, or stores sell those goods, so one company must stand behind both.

Before you argue

If the cited owner is related to you, a consent agreement can end the refusal: HONEYMOON DESSERT, food goods refused over a restaurant registration, told the examiner the two owners were "related companies under common and unified control," filed a signed consent agreement and was approved July 7, 2026. If you own the cited registration, say so: MATCHA LOVE said so in its response and was approved June 12, 2026. If you can live without the overlapping goods, delete them: ORANGE MOUNTAIN DESIGNS cut clothing, headwear and footwear from its store services (approved December 17, 2024), and SPACE TEA narrowed "Restaurant services" to "Restaurant services featuring boba drinks and desserts" (approved December 27, 2024). Narrowing only helps if the examiner's evidence no longer reaches what is left.

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

Examiners decide these refusals by weighing the du Pont factors, a list of considerations from the 1973 du Pont decision (factor 1 compares the marks, factor 2 the goods and services, and so on). All three arguments below work on factor 2, the relatedness of the product and the service. Each approved case won with argument and evidence alone: no consent, no ownership claim and no change to the goods or services, unless noted.

Whichever you choose, attach copies of the registrations or pages you rely on (USPTO status printouts or certificates). A list typed into the response does not count as evidence.

1. The "something more" rule: food or drink against a restaurant (du Pont factor 2)

The factor: the manual says there is no automatic link between food and restaurants: "While likelihood of confusion has often been found where similar marks are used in connection with both food or beverage products and restaurant services, there is no per se rule to this effect." When the link "is not evident, well known, or generally recognized, "something more" than the mere fact that the goods and services are used together must be shown" (TMEP 1207.01(a)(ii)). In In re Coors (Federal Circuit, 2003), the beer company showed that "there are about 1,450 brewpubs and microbreweries in the United States, there are over 800,000 restaurants," and the court found that "the degree of overlap between the sources of restaurant services and the sources of beer is de minimis."

When it fits: one side is a food or drink and the other a restaurant, bar or cafe, and the examiner's proof is a few registrations or websites showing that some restaurants sell their own products.

What to file: numbers. Count the examiner's dual-use registrations and set them against the number of restaurants, as Coors did. Add pairs of the exact same mark held by different owners, one for the food and one for restaurant services, or a register search for your word showing the two kinds of marks sit apart.

In their words. PRESTO! set the examiner's registrations against "over 700,000 restaurants in the United States". PIZZERIA ROMANA's search: "Of the 22 registered or cancelled marks that include the term 'ROMANA', 20 are in only one of class 30 or 43." The final refusal that answered WILDSEED: "The attached evidence shows the Registrant's services feature a 'WILDSEED' wine, showing there is an inherent relationship between Registrant’s bar and restaurant services and Applicant’s goods of wine."

The pattern: the approved files gave the examiner numbers, exact pairs or facts about the two businesses, and the examiner's evidence in them came from other companies. In both refused files the final refusal answered with evidence that the cited owner itself sells the applicant's kind of product, so check that owner's site and specimen first.

2. Thor Tech pairs: show the product and the service have separate owners (du Pont factor 2)

The factor: pairs go to the relatedness of the goods and services. In Thor Tech (Board, 2015) the Board reversed a refusal of TERRAIN for towable trailers over TERRAIN for trucks: "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." It concluded that "the similarity of the goods factor weighs against likelihood of confusion."

When it fits: the examiner's proof is a few registrations or pages showing one company offering both your product and the service. The register showing the same name split between unrelated owners across your two categories is evidence that buyers do not expect one company to sell both.

What to file: pairs of the same mark, one owner for your side (the store, the studio, the coffee shop) and a different owner for the cited side, with the certificates, and more pairs than the examiner has registrations.

In their words. MBS MIND BODY SOUL PILATES: "Indeed, this evidence shows that the USPTO routinely permits similar marks to coexist on the trademark register without apparent conflict." The final refusal that answered BULL AND BRIAR: "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 one that answered DEAD WAX: "However, when determining whether an applied-for mark is eligible for registration, each application must be considered on its own record."

The pattern: the approved files used pairs that were mostly the same name on both sides, each pairing a service with a product, in numbers of nine and ten. BULL AND BRIAR's pairs were different names or clothing against clothing, and four of DEAD WAX's six were different names; both drew the answer that other examiners' decisions do not bind this one.

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

The factor: this is factor 2 from the other side: the examiner has to prove the link. The manual puts the burden there: "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)).

When it fits: the examiner's proof is a handful of web pages, including the cited owner's own site or specimen, rather than a large set of registrations.

What to file: go through the pages one at a time, with your own screenshots. Does each page still load? Does the business sell both things under one brand, or only resell others' goods? Does the cited owner make your kind of product at all? How many pages did the examiner actually find?

In their words. CERVEZA DELRAY: "the cited webpages are no longer accessible and cannot be reviewed for context or accuracy." COPPER CASK, on the cited owner: it "is a distillery that offers whiskey – not a hospitality company." The final refusal that answered CAKEWALK SPECIALTY TREATS: the comparison "is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use".

The pattern: the approved responses went at what the examiner's pages actually show: pages that no longer load, distilleries that are not hospitality companies, advice pages that never show the product sold with the service. The refused one described how the applicant's own business works, which the written lists do not capture, and left the examiner free to add pages.

Arguments that rarely carried a case alone

Different buyers and stores (the third du Pont factor, trade channels), careful buyers, and descriptions of how either company really sells appear mostly in refused files, usually with no evidence. The manual quotes the Federal Circuit: "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)). A state registration and separate locations did not help SAX'S STEAK & PIZZA. Its final refusal: "state trademark registrations are of relatively little probative value," and "applicant seeks a geographically unrestricted registration." One approved file did win on real-business differences: TYPHOON, store services featuring sand blasting machines, showed in its response, with screenshots of both companies' sites, a machine priced at "less than $4,000 with shipping included" against large industrial ones.

A crowded-field showing (du Pont factor 6) accompanied some approvals above, next to one of the three arguments (COPPER CASK filed register searches for COPPER and CASK marks); see Refused Over a Shared Word and Related Goods. Other routes that apply to any Section 2(d) refusal, such as owning or canceling the cited registration, are covered in Fighting Back, Part 2.

Finding cases like yours

GleanMark's Office Action research (Professional and Max plans) lets you select a Section 2(d) refusal and the argument hook "Services Featuring Same Goods," add "Internet Evidence" if the examiner relied on websites, then filter to cases won by argument alone. Its Thor Tech pairs tool searches the register for the evidence described above.

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