TTAB Reverses Two Section 2(d) Refusals: Cited Third-Party Websites Failed to Show Relatedness of Charitable Food Distribution and Fundraising Services

In a lengthy, detailed opinion, the Board reversed Section 2(d) refusals of the mark POTS in standard character and logo form (shown below) for food distribution and charitable services, in view of the mark POTS for fundraising software and services. Relying on the Board's OSF Healthcare decision [pdf here] in analyzing the relatedness issue, the Board found that the differences in the goods and services, channels of trade, and classes of consumers outweighed the identity and similarity of the marks, making confusion unlikely. In re Part of the Solution, Serial Nos. 97791804 and 97791806 (December 18, 2025) [not precedential] (Opinion by Judge Christopher C. Larkin).

In seeking to prove the relatedness of the involved goods and services, the Examining Attorney relied  solely on extrinsic evidence in the form of eight third-party websites of charitable organizations. The Board found that evidence "insufficient in quantity and quality to establish relatedness." 

In view of the number of charitable organizations in United States that provide goods and render services to those in need, "eight websites strike us as too few in number to show that 'the same entity commonly manufactures, produces, or provides the relevant goods and/or services and markets the goods and/or services under the same mark,' 10 TTABVUE 5 (emphasis added), even if the websites were probative of that issue." Moreover, ....

The websites here are not probative of that issue, however, because they do not show that the same entities offer both the services actually identified in the ’804 and ’806 Applications and the goods or services actually identified in the ’860 Registration. As the Board explained in OSF Healthcare, under the second DuPont factor, examining attorneys must focus on the actual language in the identification of goods or services in an application, rather than on broadened or generalized descriptions of the identified goods or services. OSF Healthcare, 2023 WL 6140427, at *12. (emphasis supplied)

In OSF Healthcare, the Board explained that “[w]ith respect to Internet evidence, in determining exactly what services are offered through the respective websites, we acknowledge that services may not be explicitly described at all, or may be described in colloquial language that does not track the technical language of acceptable identifications of goods and services in applications and registrations, including those involved here.” OSF Healthcare, 2023 WL 6140427, at *10 (citation omitted). “In such instances, we must determine the nature of the services that are offered, and decide whether they fall within the full scope of the language in the involved identifications.”

The Examining Attorney did not follow OSF Healthcare because "she quotes only snippets of the Class 36 identification in the ’860 Registration, and otherwise paraphrases the involved identifications of goods and services."

We agree with the Examining Attorney that the evidence shows that charitable organizations such as Applicant engage in fundraising; indeed, money or in-kind donations raised through such efforts are the lifeblood of those organizations. But unlike the fundraising-related goods and services identified in the ’860 Registration, which are necessarily provided to, and for the benefit of, entities other than Registrant, the fundraising activities of Applicant and other charitable organizations are for the benefit of the organizations themselves and are not provided to, and for the benefit of, other entities. As a result, those fundraising activities are not “services” for purposes of the second DuPont factor.

The Board concluded that the goods and services identified in the cited registration and the services identified in the subject applications are not related, and "the second DuPont factor strongly supports a conclusion that confusion is not likely...."

Furthermore, the evidence "also does not establish that the channels of trade or classes of consumers for these [goods and] services overlap."

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TTABlogger comment: Judge Larkin also wrote the opinion in OSF Healthcare.

Text Copyright John L. Welch 2025.