Relatedness of Trademarked Goods – Cosmetics vs Water
On February 18, 2025, the Trademark Trial and Appeal Board (TTAB) issued a non-precedential decision in Givn Goods, Inc. v. IBMG, LLC, Opposition Nos. 91281529 & 91281530, rejecting an trademark opposition based on a straightforward but instructive question: Are bottled water and cosmetics related enough to support a likelihood of confusion under Section 2(d) of the Lanham Act?
Both parties used the identical word trademark GIVN. Givn Goods, Inc. owned a trademark registration for GIVN covering various types of bottled drinking water. IBMG, LLC applied to register GIVN for a broad list of cosmetics and for online retail store services in the field of cosmetics and related products. Despite the trademarks being identical and the goods being relatively inexpensive consumer products, the Board held that Givn Goods failed to meet its burden to show the goods and services were related or traveled in overlapping trade channels.
This decision underscores several important trademark law doctrines, including the related goods doctrine, the natural zone of expansion, and how third-party evidence is weighed in establishing relatedness. It also illustrates the kind of evidence that examining attorneys and opposers must marshal to succeed in similar trademark disputes.
Identical Marks, Very Different Goods?
There was no dispute that the trademarks at issue—GIVN—were identical in appearance, sound, and commercial impression. Nor was there a dispute that Givn Goods had priority. The opposition turned entirely on whether cosmetics and bottled water are sufficiently related in the minds of consumers to cause confusion.
This case is a classic example of where similarity of trademarks alone is not dispositive. The Board reiterated that the “cumulative effect” of similarities in the trademarks and the goods is what matters under the DuPont test.
The Related Goods Doctrine: How Close Is Close Enough?
One of the most significant takeaways from this decision is how the Board approaches the question of relatedness when the goods themselves appear, on their face, to be very different.
Givn Goods relied on third-party evidence to argue that cosmetics and water can come from the same source. Specifically, it pointed to:
But the Board scrutinized this evidence closely. It discounted:
Ultimately, the Board found that the third-party evidence—two examples of dual use and one live registration—was “too sparse” to prove that consumers are accustomed to encountering cosmetics and water sold under the same trademark. This is the standard the TTAB applies when determining whether the related goods doctrine supports a likelihood of confusion claim.
Key lesson: Even if two types of goods are inexpensive and might be found in the same store, you must show either a pattern in the marketplace of the same trademark being used for both or persuasive evidence that consumers are conditioned to expect the goods to come from the same source.
What About the Natural Zone of Expansion?
Interestingly, the TTAB decision did not explicitly invoke the natural zone of expansion doctrine, but the case invites discussion of it. This doctrine allows a trademark owner to block a later user of a similar trademark for goods that the senior user is likely to expand into.
However, the TTAB has historically applied this doctrine narrowly in opposition proceedings. Givn Goods made no claim that it had current plans to expand into cosmetics, and in fact, admitted during discovery that it had no such plans. Without intent to expand, or evidence that cosmetics are a natural extension of a bottled water brand, the Board had no reason to consider this doctrine.
Takeaway: Without clear evidence of actual expansion plans or a demonstrated market pattern (e.g., multiple beverage companies offering personal care lines), the natural zone of expansion is a tough argument to win at the TTAB.
Third-Party Evidence: Quality, Quantity, and Admissibility Matter
This case also offers a masterclass in what not to do when submitting evidence. Opposer’s case was hampered by procedural missteps. The Board excluded a substantial portion of Givn Goods’ rebuttal evidence, including screenshots and third-party materials, because they were improperly submitted during rebuttal when they should have been introduced during the main trial period.
Additionally, many of Opposer’s exhibits were inadmissible discovery responses or internal documents not suitable for submission via notice of reliance. The Board reminded both parties that discovery materials may be submitted only under narrow exceptions or through testimony—not by notice of reliance alone.
Key practice point: Trademark litigation at the TTAB requires early and careful planning of your evidentiary record. Don’t count on cleaning up your case during rebuttal.
Channel of Trade and Consumer Overlap: Don’t Assume
Another important DuPont factor—whether the goods travel through the same trade channels to the same types of consumers—also weighed against Givn Goods. While the goods were both relatively inexpensive, the Board found no persuasive evidence that they were sold together or promoted together.
Evian, for example, used separate websites for its water and facial spray. Aquafina sold lip balm on Amazon, but its bottled water was sold through grocery channels. Even though Amazon sells both products, the Board was not persuaded that being sold on the same massive online marketplace meant they were in the same “trade channel” for legal purposes.
Pro tip: To show overlapping trade channels, you need more than shared shelf space or online availability. Look for co-branding, same-website use, or marketing efforts that tie the goods together.
Degree of Consumer Care and Impulse Buying
The Board did note that both types of goods—water and cosmetics—could be subject to “impulse” purchases, especially given the low price points. However, because the goods were so dissimilar and there was no convincing evidence that they came from a common source, this factor did not move the needle.
No Bad Faith, No Win Under the 13th DuPont Factor
Givn Goods argued that IBMG lacked a bona fide intent to use the GIVN mark and therefore acted in bad faith. The Board rejected this, clarifying that a lack of bona fide intent to use is a separate claim not pleaded in the opposition. Bad faith under DuPont requires intent to cause confusion—not just speculative business intent.
Final Thoughts: The Burden Is Real
Ultimately, this decision reminds trademark owners that even identical marks are not enough to win a Section 2(d) claim without evidence showing the real-world relationship between the goods or services. The Board emphasized that each case rests on its own record and that assumptions about what “might” be related won’t suffice.
If you’re a brand owner looking to expand, this case is also a cautionary tale about how carefully courts and the TTAB assess market overlap. Without strong evidence of relatedness, your rights may not extend as far as you think.
