The Trademark Trial and Appeal Board Sheds Light on the Zone of Natural Expansion
The Zone of Natural Expansion should only apply if the goods and services that are the subject of the cancellation are related. Otherwise, the zone does not apply because for unrelated goods and services. Presently, there are a lot of goods and services that used to be considered unrelated to each other but are suddenly related to each other. This is likely due to the ease in which ecommerce sites allow entities to list different kinds of goods.
In the case of Katharine Lee Streeter v. GuideOn Education Consulting LLC, Cancellation No. 92077751 (April 11, 2025), The Zone of Expansion was not applied, because the class 41 services were not considered to be related.
In the non-precedential Opinion, TTAB partially granted a petition to cancel a registration for the mark GUIDEON, covering services including online employment information (Class 35) and educational services (Class 41) directed toward veterans and military families.
Class 35: Likelihood of Confusion Found
The Board determined that a likelihood of confusion existed between the registrant’s Class 35 services and petitioner Katharine Lee Streeter’s existing registration for GUIDEON, which covers:
“Computer application software for smartphone operating systems, namely, software for a directory of listings with corresponding location primarily on military installations.”
Streeter successfully argued that her app is more than a basic mapping tool. It not only provides location data but also includes hyperlinks to online sources—including employment-related websites—placing it in close proximity to the registrant’s Class 35 services. The Board agreed that these services overlapped in function and purpose, and therefore confusion was likely.
Class 41: No Likelihood of Confusion or Natural Expansion
The Board denied cancellation with respect to Class 41 educational services. It found that these services were not related to Streeter’s goods, nor did the doctrine of natural expansion apply.
Streeter does not directly provide the educational services found through links in her application, nor does she control the content or quality of those services. The evidence she submitted—comprising three third-party registrations and a few relevant websites—was insufficient. The Board noted that the registrations involved unrelated services and that the websites were more relevant to Class 35 than to educational offerings.
Doctrine of Natural Expansion Rejected
As a secondary argument, Streeter invoked the doctrine of natural expansion, claiming that educational services were within the foreseeable growth of her business. The Board rejected this approach, emphasizing that the doctrine cannot be used offensively to cancel an intervening registration. As clarified in Dollar Fin. Grp., Inc. v. Brittex Fin., Inc., __ F.4th __, 2025 WL 850653, at *3, the doctrine serves to defend a senior user’s existing rights, not to retroactively expand them.
To evaluate applicability, the Board applied four nonexclusive factors:
Technological Continuity: The Board found that educational services represented a distinct departure from Streeter’s app technology.
Nature and Purpose: The goods and services were determined to serve different functions and audiences.
Channels of Trade and Consumer Classes: Some broad overlap was acknowledged.
Industry Practice: There was no meaningful evidence of other companies expanding from directory apps to educational services.
The Board concluded that allowing Streeter to claim rights over educational services merely because her app links to such content would improperly grant her rights in gross, extending trademark protection to unrelated services her app may reference.
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