TTAB Partially Grants GUIDEON Cancellation Petition but Rejects Zone-of-Natural-Expansion Claim

The Board granted in part this petition for cancellation of a registration for the mark GUIDEON for, inter alia, providing online employment information (class 35) and educational services (class 41) to veterans and military families, finding confusion likely as to the class 35 services with the identical mark registered for "Computer application software for smartphone operating systems, namely, software for a directory of listings with corresponding location primarily on military installations." Registrant's class 41 services, however, were deemed not related to Petitioner Streeter's services, nor did the zone-of-natural-expansion apply. Katharine Lee Streeter v. GuideOn Education Consulting LLC, Cancellation No. 92077751 (April 11, 2025) [not precedential] (Opinion by Judge David K. Heasley).

Class 35 services: The Board found that the Streeter registration's broad language, "a directory of listings with corresponding location primarily on military installations,” encompassed Registrant's provision of online employment information. The Board agreed with Streeter that her software is more than a "map app," because it provides not only location information but also links "to online/website locations," including links to employment-related information and websites.

Class 41 services: Because Streeter does not offer the services that may be found at the links provided, nor control the nature of quality of those services, Streeter's identification of goods does not "encompass" Registrant's educational services. Her evidence of relatedness consisted of three third-party registrations - "too few in number to carry much probative value" and covering unrelated services - and a few websites that were relevant to Registrant's class 35 services, but not to educational services.

As a "fallback" position, Streeter contended that Respondent’s services are within the natural zone of expansion of her software. No way, said the Board.

Under the doctrine of natural expansion, "the first user of a mark in connection with particular goods or services possesses superior rights in the mark as against subsequent users of the same or similar mark for any goods or services which purchasers might reasonably expect to emanate from it in the normal expansion of its business under the mark." Dollar Fin. Grp., Inc. v. Brittex Fin., Inc., __ F.4th __, 2025 WL 850653, at *3.

Defensive use of the doctrine "allow[s] the senior user to prevent the junior user's registration of a similar mark on logically related goods." Here, Streeter attempted to use the doctrine offensively to defeat Respondent's intervening rights. That is not allowed.

To determine whether the doctrine is applicable in a particular case, the Board considers a number of nonexclusive factors:

1. Whether the second area of business (that is, the subsequent user’s area of business into which the first user has or potentially may expand) is a distinct departure from the first area of business (of the prior user), thereby requiring a new technology or know-how, or whether it is merely an extension of the technology involved in the first area of business; 
2. The nature and purpose of the goods or services in each area;
3. Whether the channels of trade and classes of customers for the two areas of business are the same, so that the goodwill established by the prior user in its first area of business would carry over into the second area; and 
4. Whether other companies have expanded from one area to the other.

Under the first factor, the Board found that Respondent’s educational services "are not merely an extension of the technology involved in Petitioner’s registered, identified goods," but are "a distinct departure from simply providing an app that leads users to various service providers." Under the second factor, "[t]he nature and purpose of the goods or services in each area are quite distinct."

Under the third factor, there is some "broad overlap" in trade channels and classes of consumers. Under the fourth factor, there was a dearth of evidence showing that other companies have expanded from one area to the other.

Overall, Petitioner cannot rely on the doctrine to expand into Respondent’s Class 41 services. To expand Petitioner’s rights beyond those specified in her identification of goods would, in effect, accord her trademark rights in gross, covering all of the same or similarly named websites, businesses and service providers to which her app may lead her customers.

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TTABlogger comment: The distinction between "offensive" and "defensive" use of the zone-of-natural-expansion doctrine doctrine seems rather murky to me. Would it be better to just drop those two terms? If this was a prohibited "offensive" use of the zone doctrine, why go through the four factors? Moreover, if the DuPont factors say the services are not related, as here, shouldn't that be the end of the story? Why do we even need this doctrine?

Text Copyright John L. Welch 2025.