992 F.2d 1204 (Fed. Cir. 1993)
How the Federal Circuit affirmed a Section 2(d) refusal of identical RIGHT-A-WAY marks even though Shell's lubrication services and the registrant's auto-parts distributorship were not competitive — the holding, the relatedness test, how to cite it, its limits, and the USPTO records.
The 30-second version
In 1988, Shell Oil Company wanted a name for the quick oil-and-lube bays at its service stations: RIGHT-A-WAY, set beside a small arrow. It was a tidy pun — a right way to do an oil change, and right away. The trouble was that a small registrant, R. A. Industries, already owned RIGHT-A-WAY with its own arrow, registered four years earlier for distributorship services in automotive parts.
To Shell, the two businesses barely touched. One changes your oil; the other wholesales parts to dealers. Different services, different customers — surely no one would confuse a national oil company's service bays with a parts distributor. Shell even disclaimed nothing it had to and pointed out how small the registrant was. The examiner refused under Section 2(d) anyway, and the Board agreed.
On appeal to the Federal Circuit, Shell lost again. Judge Newman's opinion is why first-years still read this case: when two marks are this close to identical, the services do not have to compete, or even be closely related, for confusion to be likely. They only have to reach enough of the same consumers that those consumers would assume one source. The arrow logos sealed it.
R. A. Industries, Inc. begins using RIGHT-A-WAY (with an arrow design) for distributorship services in the field of automotive parts.
R. A. Industries obtains Reg. 1,264,537 (Serial 73/359,467) for RIGHT-A-WAY plus arrow — the senior mark that would later block Shell.
Shell Oil Company first uses RIGHT-A-WAY plus arrow on August 5, 1988 for service-station oil and lubrication-change services, and files Serial 73/753,045 on September 19, 1988.
The examining attorney refuses over R. A. Industries' registration: the marks are nearly identical and the automotive services are related. The refusal is made final.
On ex parte appeal, the Trademark Trial and Appeal Board affirms — the near-identity of the marks plus overlapping automotive consumers points to a likelihood of confusion.
In an opinion by Judge Newman (Plager joining; Michel dissenting), the Federal Circuit affirms. Doubt about relatedness is resolved against Shell as the newcomer. Judge Michel would have reversed, calling the relatedness finding speculation unsupported by record evidence about the registrant's customers and trade channels.
Shell's RIGHT-A-WAY application (Serial 73/753,045) never registered and went abandoned after the appeal; it carries no registration number.
Sit in Shell's chair and the refusal looks beatable. The two businesses genuinely do different things — an oil-change bay is not a parts distributorship, they are not competitors, and a national oil company is hardly going to be mistaken for a small wholesaler. That is exactly the intuition Shell argued, and it is the intuition this case is built to puncture. The problem is the marks: RIGHT-A-WAY-plus-arrow against RIGHT-A-WAY-plus-arrow is about as close as two marks get without being literally the same drawing — the court called them substantially identical. When marks are that close, the relatedness bar drops. The services do not have to be competitive or intrinsically related; it is enough that the same automotive consumers encounter both. Shell's disclaimer did not pull the shared words out of the comparison, and the registrant's small size did not shrink the scope of its registration. With the marks essentially identical, the relatedness prong required only that the same automotive consumers encounter both — which they did.
Prong 1 — the marks
Similarity of the marks — in sound, appearance, meaning, and commercial impression. Here the court treated the marks as substantially identical: RIGHT-A-WAY with an arrow design on both.
Prong 2 — the goods
Relatedness of the goods or services — whether buyers exposed to both would assume a common source. The two prongs interact: the closer the marks, the less relatedness is needed to find confusion.
This is the teaching shorthand. Formally, likelihood of confusion is the thirteen-factor DuPont balancing test, and any factor can control. Shell Oil is the relatedness-prong counterweight to coexistence cases: it holds that substantially identical marks need not be on competitive or intrinsically related services to confuse — overlap of exposed consumers can suffice. The court borrowed that principle from Philip Morris Inc. v. K2 Corp., 555 F.2d 815 (CCPA 1977). Note the directional caution: Shell Oil cuts in favor of relatedness; do not read it as a coexistence holding.
These are the two factors that usually decide §2(d), but the governing standard is the full 13-factor DuPont likelihood-of-confusion test — any factor can control on the right record.
Substantial identity of the marks (with arrows)
Both marks were RIGHT-A-WAY accompanied by an arrow design. The court treated the marks as substantially identical, which is what lowered the relatedness threshold — the more similar the marks, the less the services need to overlap.
Overlap of exposed consumers
Both services are aimed at automobile owners and the automotive trade. The court found it relevant that the same consumers would be exposed to both RIGHT-A-WAY marks, which supports an assumption of common source even where the services are not competitive.
Disclaimer did not remove the words
Shell's disclaimer did not pull RIGHT-A-WAY out of the likelihood-of-confusion analysis. A disclaimer concedes no exclusive right in the disclaimed matter, but the words still count when comparing the marks as a whole.
Registrant's size was not dispositive
That R. A. Industries was a small company did not narrow the scope of protection its registration was entitled to. A registration's reach is defined by its identified services, not the registrant's market footprint.
Doubt resolved against the newcomer
As the later applicant, Shell bore the consequence of any doubt about whether the services were related — a settled tie-breaker that runs against the junior party in an ex parte 2(d) appeal.
“It is relevant to consider the degree of overlap of consumers exposed to the respective services, for … even when goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source.”
The rule to memorize
The more similar the marks, the less related the goods or services need to be to find confusion. When the marks are substantially identical, the services need not compete or even be intrinsically related — it is enough that the same consumers are exposed to both and would assume a common source. Shorthand: near-identical marks pull the relatedness bar down, and doubt goes against the newcomer.
The Examining Attorney's relatedness analysis misreads the governing standard. Under In re Shell Oil Co., 992 F.2d 1204 (Fed. Cir. 1993), the degree of relatedness required to support a Section 2(d) refusal falls as the similarity of the marks rises — when marks are substantially identical, services need not be competitive or intrinsically related so long as the same consumers are exposed to both. Here, by contrast, Applicant's [mark] and Registrant's [mark] are [meaningfully different in sound, appearance, and commercial impression], so the relaxed relatedness threshold of Shell Oil does not apply, and the [unrelated services / distinct consumer channels] cannot be bridged by mark similarity that is not present.
This case usually helps the examiner, so most often you are distinguishing it, not relying on it. The lever is the marks-prong: Shell Oil only relaxes relatedness when the marks are substantially identical. If your marks are genuinely different, say so first, then show the relatedness shortcut never opens. Applicants citing Shell Oil affirmatively are rare — it is a refusal-affirming case.
Of 195 applications that cited this case against a §2(d) likelihood of confusion refusal, 52 have reached a final outcome — 23.1% registered, below the 37.6% §2(d) baseline (N=10,097).
No verified registration-rate figures for applications citing this case are available in our corpus, so we make no empirical claim about outcomes. What the citation pattern reflects is directional: Shell Oil is most often invoked by examiners (and quoted in TMEP §1207.01(a)) to support a relatedness finding when marks are near-identical, so its appearance in a file usually signals a hard marks-prong refusal rather than a winning applicant argument. Any correlation with outcomes would be selection bias, not cause — the citation marks the fight, not the result.
These rates are correlational, not causal. Citing a case does not “win” it — a response that cites a precedent often faced a harder, more contested refusal to begin with. Every rate is shown against its refusal-ground baseline and the number of terminal (finally-decided) applications it is based on; pending applications are excluded. This is a descriptive picture of how the profession argues, not legal advice.
SHELL OIL COMPANY · Serial 73753045
Applicant's mark — service-station oil and lubrication-change services (International Class 39), RIGHT-A-WAY plus arrow. The refusal the Federal Circuit affirmed; the application went abandoned after the appeal and carries no registration number.
R. A. Industries, Inc. · Serial 73359467
The cited senior registration — Reg. 1,264,537, distributorship services in the field of automotive parts (International Class 42), RIGHT-A-WAY plus arrow. First use March 1982; later cancelled under Section 8 in 2017.
Live USPTO records in GleanMark — click through for full prosecution history.
There is a quiet symmetry in how this one ended. Shell's RIGHT-A-WAY application went abandoned after the appeal and never issued — there is no registration number on the record. The senior mark that beat it outlasted its victory by decades: R. A. Industries' Reg. 1,264,537 stayed on the register until it was cancelled under Section 8 in 2017, some twenty-four years after the decision. Both marks are gone from the live register now. What survives is the principle Judge Newman drew from Philip Morris — that an identical mark can imply a common source even across services that never compete — which the Office still cites three decades later.
What is the holding of In re Shell Oil?
The Federal Circuit affirmed a Section 2(d) refusal of Shell's RIGHT-A-WAY-plus-arrow mark over a near-identical registered RIGHT-A-WAY-plus-arrow mark. It held that when marks are substantially identical, the services need not be competitive or intrinsically related to support a likelihood of confusion — it is enough that the same consumers are exposed to both and would assume a common source. Doubt was resolved against Shell as the newcomer; Judge Michel dissented, arguing the relatedness finding rested on speculation rather than record evidence.
Do goods or services have to be competitive to be related under Section 2(d)?
No. In re Shell Oil holds that goods or services do not have to compete, or even be intrinsically related, when the marks are substantially identical. What matters is whether the same consumers are exposed to both marks such that they would assume a common source — the closer the marks, the less relatedness is required.
Does a disclaimer remove words from a likelihood-of-confusion analysis?
No. In re Shell Oil confirms that a disclaimer does not pull the disclaimed words out of the comparison. A disclaimer means you claim no exclusive right in that matter, but the marks are still compared as a whole, disclaimed words included.
In re E.I. du Pont de Nemours & Co.
The §2(d) factors · 26.6% registered
Juice Generation, Inc. v. GS Enterprises LLC
Crowded field of weak marks · 22.6% registered
In re i.am.symbolic, llc
Marks compared in their entireties · 32.1% registered
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Foreign equivalents & fame · 41.7% registered
Jack Wolfskin Ausrüstung für Draußen GmbH v. New Millennium Sports, S.L.U.
Crowded field; weak design elements · 26.7% registered
Coach Services, Inc. v. Triumph Learning LLC
Fame as a §2(d) factor · 33% registered
In re Gyulay
Mere descriptiveness · 53.6% registered
In re Abcor Development Corp.
Descriptiveness standard · 61.7% registered
In re Viterra Inc.
Similarity; standard-character display · 34.2% registered
In re Thor Tech, Inc.
Goods-relatedness coexistence · 21.4% registered
In re National Data Corp.
Dominant feature; disclaimed matter · 41.1% registered
In re Detroit Athletic Co.
First-word dominance; similarity · 40.6% registered
Stone Lion Capital Partners, L.P. v. Lion Capital LLP
Least-sophisticated purchaser · 42.9% registered
In re Bayer Aktiengesellschaft
Descriptiveness; internet evidence · 54.2% registered
GleanMark turns the same prosecution data behind this analysis into clearance, coexistence evidence, and a structured Office Action response draft — in minutes.
Start a Free Trial