The Garbage-Man.Com LLC

Trademark Trial and Appeal Board

Feb 24, 2020

87543572 (T.T.A.B. Feb. 24, 2020)

This Opinion Is Not a
Precedent of the TTAB

Mailed: February 24, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

The GarbageMan.Com LLC
_____

Serial No. 87543572
_____

Daniel H. Bliss of Howard & Howard Attorneys PLLC for The GarbageMan.Com
LLC.

Sandra Snabb, Trademark Examining Attorney, Law Office 120, David Miller,
Managing Attorney.
_____

Before Thurmon, Deputy Chief Administrative Trademark Judge, Taylor and Hudis,
Administrative Trademark Judges.

Opinion by Thurmon, Deputy Chief Administrative Trademark Judge:
Applicant seeks registration on the Supplemental Register of the mark
THEGARBAGEMAN.COM (standard characters) for the following services:1

1 Application Serial Number 87543572, filed on July 26, 2017 based on an alleged use of the
mark in commerce in the United States, 15 U.S.C. §§ 1051(a). The Application originally
sought registration on the Principal Register, but was later amended to the Supplemental
Register following a refusal, now withdrawn, on the ground of descriptiveness under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1).
Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
and orders on appeal are to the Board’s TTABVUE docket system. Coming before the
designation TTABVUE is the docket entry number; and coming after this designation are the
page references, if applicable.
Serial No. 87543572

- 2 -

trash services, namely, rental of dumpsters, in
International Class 39; and,
recycling; trash services, namely, trash incineration; rental
of waste compacting machines, in International Class 40.
The Examining Attorney refused registration on the ground of likelihood of confusion
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on the following
registered mark

for the following services:
Collection of recyclable materials, namely, paper,
cardboard, metal cans, glass and plastic for recycling, in
International Class 37; and,
Garbage collection, in International Class 39.2
This appeal has been fully briefed. . We find there is a likelihood of confusion between
the marks identified above and affirm the refusal to register.
I. The Record and the Prosecution History
The application was originally filed for “recycling; trash services; rental of
dumpsters; removal of waste and recyclable materials; rental of compactors” in
International Class 40.3 The Examining Attorney initially refused registration on

2 Registration Number 3755458, issued March 2, 2010 from an application filed June 10,
2008. The words GARBAGE MAN and A GREEN COMPANY are disclaimed in the
Registration and the mark is described as consisting “of the words ‘GarbageMan A Green
Company’ with an image of the earth appearing to the left of the words.” Color is not claimed
as an element of the mark.
3 Application Serial Number 87543572.
Serial No. 87543572

- 3 -

grounds of likelihood of confusion under Trademark Act Section 2(d), and required
Applicant to clarify the services, suggesting the identified services were in three
classes rather than one.4 The initial Office Action included Internet evidence showing
the following third parties that offer services similar to those identified in the
Application and Registration:
• Heiberg Garbage & Recycling – garbage and recycling pickup, large drop
box rental (10, 20, and 30 cubic yard boxes-ranging from 4’ x 8’ x 12’ to 7’ x
8’ x 20’), and trash compaction system rental;5
• Waste Tech Disposal – garbage and recycling pickup and dumpster rental;6
and,
• Waste Management – garbage and recycling pickup and dumpster rental.7
The Examining Attorney also submitted evidence of the following registered marks
for the services shown:8
Registration Mark Services
3852601

Trash services, namely, garbage collection
and rental of dumpsters, in International
Class 39; and,
Recycling and destruction of waste and
trash, in International Class 40

4 Office Action dated November 2, 2017. The Examining Attorney proposed dividing the
services into classes 37, 39, and 40.
5 Id. at 11-18.
6 Id. at 19-35.
7 Id. at 36-40.
8 Id. at 41-66. Some of these marks are registered on the Principal Register and others on the
Supplemental Register. We make no note of the distinction because any registered mark may
be used as the basis for a likelihood of confusion refusal under Trademark Act Section 2(d).
In re Clorox Co., 578 F.2d 305, 308 (CCPA 1978) (“a mark registered on the Supplemental
Register can be used as a basis for refusing registration to another mark under § 2(d) of the
Act.”).
Serial No. 87543572

- 4 -

4079225 1-800-JUNKPRO Garbage collection; Junk removal; Junk,
trash and debris removal; Trash services,
namely, rental of dump trailers and roll-
off trailers; Trash services, namely, rental
of dumpsters, in International Class 39
4145409

Garbage collection; Junk, trash and debris
removal; Trash services, namely, rental of
dump trailers and roll-off trailers; Trash
services, namely, rental of dumpsters, in
International Class 39
4330891

Garbage collection; Hazardous waste
transportation services; Junk removal;
Junk, trash and debris removal; Rental of
recycling containers; Trash services,
namely, rental of dump trailers and roll-
off trailers; Trash services, namely, rental
of dumpsters; Truck hauling; Trucking
services, namely, hauling of trash,
garbage, waste, trash dumpsters, and
refuse, in International Class 39
4378956

Waste disposal for others; solid waste
landfill services; providing on-line
information in the field of waste disposal
and solid waste landfill services, in
International Class 37;
Trash services, namely, rental of
dumpsters, containers and roll-off
containers; Garbage collection; providing
on-line information in the field of garbage
collection and trash services, in
International Class 39; and,
Waste management; Destruction of waste
and trash; Recycling of waste and trash;
Waste-to-energy generation services;
Technical consulting in the field of solid
and hazardous waste management;
providing on-line information in the field
of waste management, destruction and
recycling of waste and trash and waste to
energy generation services, in
International Class 40
Serial No. 87543572

- 5 -

4749723

Garbage collection; Junk, trash and debris
removal; Trash services, namely, rental of
dumpsters, in International Class 39
4751828 I GOT DUMPED Garbage collection; Junk removal; Junk,
trash and debris removal; Trash services,
namely, rental of dumpsters, in
International Class 39
4985656 AMERICAN QUALITY
WASTE REMOVAL
Garbage collection; Junk, trash and debris
removal; Transport and storage of trash;
Transport and storage of waste; Trash
services, namely, rental of dumpsters, in
International Class 39
5260611 “WE DUMP YOUR
JUNK”
Garbage collection; Junk removal; Trash
services, namely, rental of dumpsters;
Trucking services, namely, hauling of
junk, in International Class 39
5276425 SANTEK Collection of paper products, aluminum,
glass, steel and plastics for recycling;
Garbage collection; Transport and storage
of waste; Trash services, namely, rental of
dump trailers and roll-off trailers; Trash
services, namely, rental of dumpsters, in
International Class 39

The Examining Attorney also submitted dictionary evidence showing that
“garbageman” is defined as “one who collects and hauls away garbage.”9
Applicant responded by arguing against the likelihood of confusion refusal, and
by amending the services and separating them into classes 39 and 40.10 The

9 Id. at 67.
10 Response to Office Action dated April 20, 2018.
Serial No. 87543572

- 6 -

Examining Attorney then reissued the initial Office Action with the likelihood of
confusion refusal and noted that Applicant had failed to provide dates of first use for
the class 39 services.11 With this reissued first Office Action, the Examining Attorney
submitted Internet evidence of two more third parties offering similar services and
ten additional registrations showing services similar to those listed in the table
above.12
Applicant responded by amending the identification of services, and arguing
against the likelihood of confusion refusal.13 Applicant also submitted with this
response evidence of the following three trademark registrations, which it argued
supported its likelihood of confusion arguments:14

Registration Mark Goods or Services
5575723

Junk, trash and debris removal, in
International Class 39
4401576 THE GARBAGEMAN’S
GUIDE
A series of books, written articles,
handouts and worksheets in the field of
self help, in International Class 9
4180063 GARBAGE PANTZ Fitted trash receptacle covers, in
International Class 21

11 Office Action dated May 10, 2018.
12 Id. at 9-15 (Internet evidence); 16-45 (registrations).
13 Response to Office Action dated November 9, 2018
14 Id. at 18-22. The third registration has been cancelled for failure to file a statement of
continued use under Section 8, and the second registration is currently past-due for the filing
of such a statement. See further discussion in Note 19 below.
Serial No. 87543572

- 7 -

Finally, Applicant submitted evidence of an abandoned application for the mark
GARBAGEMAN.COM for similar services, noting the mark was not refused
registration under Section 2(d).15
The Examining Attorney made the Section 2(d) refusal final and submitted
Internet evidence of two more third parties offering similar services.16 Applicant
submitted a Request for Reconsideration making essentially the same arguments
presented in its prior responses and submitting no new evidence.17 The Examining
Attorney denied the Request for Reconsideration and submitted with the denial
Internet evidence showing six more third parties offering similar services and four
more registrations showing services that overlap with those in the Application and
Registration.18 Though we have not listed all the specific evidence submitted by the
Examining Attorney after the first Office Action, that evidence is similar to what we
have identified in detail above. The additional evidence is relevant and probative, but
is not listed here in detail merely because it is so similar to what is identified above.
II. Applicable Law
We base our determination of likelihood of confusion under Trademark Act Section
2(d), 15 U.S.C. § 1052(d), on an analysis of all of the probative facts in evidence that
are relevant to the factors enunciated in In re E. I. du Pont de Nemours & Co., 476

15 Id. at 24.
16 Office Action dated November 30, 2018 at 10-14.
17 Request for Reconsideration dated May 29, 2019.
18 Denial of Request for Reconsideration dated June 18, 2019 at 7-81 (Internet evidence); 82-
93 (registrations).
Serial No. 87543572

- 8 -

F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We consider
each du Pont factor for which there is evidence or argument. See, e.g., In re Guild
Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). However,
“each case must be decided on its own facts and the differences are often subtle ones.”
Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973).
Varying weights may be assigned to each du Pont factor depending on the evidence
presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play more or less
weighty roles in any particular determination”). Two key considerations in most cases
are the similarities between the marks and the similarities between the goods or
services. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed.
Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d
1375 (Fed. Cir. 2002) (“The likelihood of confusion analysis considers all du Pont
factors for which there is record evidence but ‘may focus ... on dispositive factors, such
as similarity of the marks and relatedness of the goods.’”)).
III. Analysis
A. Similarity of the Marks
We compare the marks in their entireties as to appearance, sound, connotation
and commercial impression. du Pont, 177 USPQ at 567. “Similarity in any one of
these elements may be sufficient to find the marks confusingly similar.” In re Davia,
Serial No. 87543572

- 9 -

110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling
Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity
in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted).
The test is not whether the marks can be distinguished when subjected to a side-
by-side comparison, but rather whether the marks are sufficiently similar in terms of
their overall commercial impression so that confusion as to the source of the goods or
services offered under the respective marks is likely to result. Cai v. Diamond Hong,
Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); Midwestern Pet Foods,
Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed.
Cir. 2012). The focus is on the recollection of the average purchaser, who normally
retains a general rather than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
The marks at issue here are similar in appearance, sound, connotation and
commercial impression. The marks share the word “garbageman.” Neither the
definite article “the” at the beginning of Applicant’s mark nor the “.com” suffix at its
end distinguish it from the registered mark. See In re Thor Tech Inc., 90 USPQ2d
1634, 1635 (TTAB 2009) (“The addition of the word ‘The’ at the beginning of the
registered mark does not have any trademark significance.”); In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, (TTAB 2012) (The Board found the top
level domain indicator “.com” to have no source-identifying significance.).
Applicant’s mark is effectively subsumed within the Registrant’s mark, and that
fact alone shows the marks are similar. There are other elements in the cited mark
Serial No. 87543572

- 10 -

that are absent in Applicant’s mark, but we find the marks remain similar in
appearance. The GarbageMan element is the largest, most prominent element of the
cited mark and is clearly the most dominant literal element in the mark (due to size
and positioning). Applicant correctly notes that the only non-disclaimed element in
the cited mark is the globe image on the left, and that image is an important element
of the mark. But it is very unlikely that consumers asking for the Registrant’s
services will refer to the globe design. Instead, consumers are likely to ask for
Registrant’s services by using the wording “GarbageMan” or the “GarbageMan,”
which shows both the similarity in sound of the two marks and why such similarity
is important.
The globe design and the phrase “a green company” in the Registrant’s mark are
distinctions. These elements together create an image of a garbage business that is
environmentally friendly, or “green” in modern parlance. Applicant’s mark
THEGARBAGEMAN.COM does not directly conjure up a “green” business. But
Applicant identifies “recycling” as one of the services provided under its mark, and
recycling is likely to be seen as a “green” or environmentally friendly service.
We must evaluate the meaning and commercial impression of the marks from the
perspective of a relevant consumer who is familiar with the services provided under
the mark. In re Oppedahl & Larson LLP, 373 F.3d 1171, 1176 (Fed. Cir. 2004) (“The
Board must, of course, determine the commercial impression of a mark in the proper
context of the goods or services associated with that mark.”). When we do that, we
see that even the differences in the Registrant’s mark that create an impression of a
Serial No. 87543572

- 11 -

“green” business are not all that different from the impression created by Applicant’s
mark when used in connection with recycling services.
We note that “the presence of an additional term in the mark does not necessarily
eliminate the likelihood of confusion if some terms are identical.” In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260-61(Fed. Cir. 2010) (finding ML in
standard characters confusingly similar to ML MARK LEES in stylized form); see
also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1162 (Fed. Cir. 2014) (finding STONE LION CAPITAL confusingly
similar to LION and LION CAPITAL); In re Toshiba Medical Systems Corp., 91
USPQ2d 1266, 1271 (TTAB 2009) (VANTAGE TITAN likely to be confused with
TITAN); In re Fiesta Palms LLC, 85 USPQ2d 1360, 1367 (TTAB 2007) (affirming
refusal to register CLUB PALMS MVP based on prior registration of MVP, finding
consumers “likely to believe that the CLUB PALMS MVP casino services is simply
the now identified source of the previously anonymous MVP casino services).
The “garbageman” element of the two marks has the same meaning and the
marks, in their entireties, create similar commercial impressions. According to
Applicant, a “garbageman” is “a man employed to take away household garbage,”
showing that this term is descriptive of some of the services identified in the
application.1 Registrant disclaimed “garbageman,” which shows this term is also
Serial No. 87543572

- 12 -

weak as used in the Registrant’s mark. We find “garbageman” is a weak term as used
in these marks.19
Though it is well-established that non-distinctive elements of a mark are given
less weight when assessing the similarity of two marks, Anheuser-Busch, LLC v.
Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam
Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)), we cannot
ignore the “garbageman” elements of the marks at issue here. So while it is true that
consumers are less likely to notice and remember the less distinctive elements of a
mark, we are still required to determine whether the marks in their entireties are
similar.
We have compared the marks in their entireties and find them more similar than
dissimilar. Though we note the weakness of the literal elements of both marks, we
have considered the entire marks. “There is no general rule as to whether letters or
design will dominate in composite marks; nor is the dominance of letters or design
dispositive of the issue. No element of a mark is ignored simply because it is less
dominant, or would not have trademark significance if used alone.” In re Electrolyte
Labs., Inc., 929 F.2d 645, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990).

19 Applicant argued that the three registrations it put into evidence show that “consumers
are not likely to focus on the shared wording ‘GARBAGE’ or ‘GARBAGEMAN’, but the marks
in their entirety.” 11 TTABVUE 9. We agree the garbageman element of these marks is weak,
but as Applicant notes, we cannot exclude these elements from the marks.
Serial No. 87543572

- 13 -

B. Similarity of Goods, Trade Channels, and Buying Conditions
“The authority is legion that the question of registrability of an applicant’s mark
must be decided on the basis of the identification of goods set forth in the application
regardless of what the record may reveal as to the particular nature of an applicant’s
goods, the particular channels of trade or the class of purchasers to which the sales
of goods are directed.” Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Stone Lion Capital Partners,
LP, 110 USPQ2d at 1161; Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901,
177 USPQ 76, 77 (CCPA 1973). We group these three du Pont factors because of the
shared focus on the identification of the goods, but we will discuss each factor under
a separate heading below because that is how Applicant addressed these issues in its
brief.20
1. Similarity of the Services
The services identified in the Application and Registration are presented in the
table below for ease of comparison.
Applicant’s Services Registrant’s Services
trash services, namely, rental of
dumpsters, in International Class 39
Garbage collection, in International
Class 39

20 Our analysis here covers the second, third and fourth du Pont factors: “The similarity or
dissimilarity and nature of the goods or services as described in an application or registration
or in connection with which a prior mark is in use;” “The similarity or dissimilarity of
established, likely-to-continue trade channels;” and, “The conditions under which and buyers
to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.” du Pont 177
USPQ at 567.
Serial No. 87543572

- 14 -

recycling; trash services, namely, trash
incineration; rental of waste compacting
machines, in International Class 40
Collection of recyclable materials,
namely, paper, cardboard, metal cans,
glass and plastic for recycling, in
International Class 37

Applicant offers “recycling” services and Registrant offers “collection of recyclable
materials.” We find “recycling” services as used in the Application encompasses the
“collection of recyclable materials” services identified in the Registration, making
these services identical in part.21 “In the context of likelihood of confusion, it is
sufficient to find likelihood of confusion as to the entire class if likelihood of confusion
is found with respect to use of the mark on any item in a class that comes within the
description of goods.” Inter IKEA Sys. B.V. v. Akea, LLC, 110 U.S.P.Q.2D 1734, 1745
(TTAB 2014) (citing Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981) and Apple Computer v. TVNET.Net, Inc., 90
USPQ2d 1393, 1398 (TTAB 2007)).
In an attempt to distinguish its services from those of the Registrant, Applicant
argues that it does not include garbage collection services and Registrant does not
include dumpster, trash incineration, or waste compacting machine rental services.22
This distinction does not withstand scrutiny. The Examining Attorney submitted

21 The “collection of recyclable materials” services are identified in International Class 37 in
the Registration. That appears to be a misclassification, as such services probably should
have been in International Class 39 together with the “garbage collection” services. Similarly,
we note that the “recycling” services in the Application also may be misclassified, and may
be more appropriately included in International Class 39, too. Despite the fact that the two
variants of recycling services at issue here were placed in different International Classes does
not change the fact that the services are identical in part for the reasons given above.
22 11 TTABVUE 13-14.
Serial No. 87543572

- 15 -

extensive evidence, samples of which are described above, to show that third parties
commonly offer garbage collection, recycling, and dumpster rental services under a
common mark. A few examples from the Internet evidence of record are summarized
below (the record contains 13 examples of these types of services offered by third
parties under house marks).
• Waste Tech, a business in Rehoboth, MA, offers garbage and recycling
collection services and dumpster rental services under its mark. Its website
claims 56 years of operation. Waste Tech also rents trash compaction
systems, another service included in the Application here.23
• Waste Management offers garbage and recycling collection services. It also
yard waste pickup, bulk waste pickup, hazardous waste pickup and food
and organic waste pickup. Waste Management offers dumpster rental,
too.24
• Advanced Disposal offers garbage and recycling collection and dumpster
rental.25
• Republic Services offers garbage and recycling collection and dumpster
rental. It also offers trash compaction system rentals.26
• Whitetail Disposal offers garbage and recycling collection and dumpster
rental. It also offers trash compaction system rentals.27
• Athens offers garbage and recycling collection and dumpster rental.28

23 Office Action dated November 2, 2017 at 19-35.
24 Id. at 36-40.
25 Office Action dated May 10, 2018 at 12-15.
26 Denial of Request for Reconsideration dated June 18, 2019 at 7-25.
27 Id. at 49-58.
28 Id. at 59-76.
Serial No. 87543572

- 16 -

The Examining Attorney also submitted records of 24 registered marks that offer
some combination of the services identified in the Application and Registration.29 Ten
examples of these are described in detail above, and the others are similar. This
evidence shows that third parties have registered marks for use on ranges of services
that overlap with the services at issue here. We find the evidence of record shows the
services identified in the Application are similar or related to the services identified
in the cited Registration. See, e.g., Joel Gott Wines LLC v. Rehoboth Von Gott Inc.,
107 USPQ2d 1424, 1432 (TTAB 2013) (finding that third-party registrations covering
both wine and water were probative of the relatedness of those beverages). This
evidence shows that consumers are accustomed to seeing these services provided
under a single mark. In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988) (Third-party registrations which cover a number of differing goods and/or
services, and which are based on use in commerce … have some probative value to
the extent that they may serve to suggest that such goods or services are of a type
which may emanate from a single source.”). The similarity and relationship between
the services make confusion more likely.
2. Similarity of Trade Channels
Our analysis of the trade channels also focuses on the identification of services
found in the application and registration. “We must presume that Applicant’s and
Registrant’s [recycling services] will be sold in the same channels of trade and will be

29 Office Action dated November 2, 2017 at 11-40; Office Action dated May 10, 2018 at 16-45;
Denial of Request for Reconsideration dated June 18, 2019 at 82-93.
Serial No. 87543572

- 17 -

bought by the same classes of purchasers, because the [recycling services] are
identical and legally identical in part and there are no limitations as to channels of
trade or classes of purchasers in either the application or cited registration.” In re
i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Though no presumption applies
to the other services, the evidence shows these services flow through the same trade
channels to the same customers.30
We can consider extrinsic evidence to help explain the type of trade channels
typically used with the specific goods identified in the application and registration,
but we cannot impose limits on the likely trade channels that are inconsistent with
the identifications. In re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB
1986) (“[T]he question of likelihood of confusion must be determined by an analysis
of the marks as applied to the goods identified in the application vis-a-vis the goods
recited in the registration, rather than what extrinsic evidence shows those goods to
be.”). For example, as we noted above, the Examining Attorney submitted evidence
showing many third parties offer under their own house marks some or all of the
services identified in the Application and Registration. The evidence shows these
services move through the same trade channels.
Applicant, on the other hand, argues the trade channels are different because
Applicant serves mostly commercial customers in the Midwest, while Registrant

30 The Internet evidence cited and discussed above shows that all of the services identified in
the Application and cited Registration often flow through identical trade channels.
Serial No. 87543572

- 18 -

serves mostly residential customers in the Rocky Mountain region.31 These assertions
may accurately describe the actual marketing practices of Applicant and Registrant,
but they contradict the identifications found in the record. Octocom Sys., Inc. v.
Houston Computer Servs., Inc., 918 F.2d 937, 942 (Fed. Cir. 1990) (the application
controls “regardless of what the record may reveal as to the particular nature of an
applicant’s goods”).
We therefore cannot impose any geographic limitations on the trade channels or
trade areas of Applicant or Registrant. Moreover, neither the Application nor the
Registration limits the trade channels to commercial or residential customers. The
evidence of record shows many third parties offer these services to both commercial
and residential customers.32 We find the relevant consumer is either a commercial or
residential customer needing any of the services identified in the Application or the
cited Registration.
The evidence makes clear that the likely trade channels overlap. Consumers are
accustomed to seeing a single party offer these types of services under a single mark
and through the same trade channel. Indeed, the evidence shows that many third
parties offer Internet service requests from customers (both commercial and

31 11 TTABVUE 14-15.
32 See notes 24-30, supra.
Serial No. 87543572

- 19 -

residential), which is further evidence of shared trade channels.33 The similar trade
channels make confusion more likely.
3. Similarity of Purchasing Conditions
The analysis presented above regarding the trade channels is applicable here, too,
because the evidence shows that these services are offered in a similar way to a range
of consumers. Applicant argues that consumers of the services at issue here “are
highly sophisticated and discriminating purchasers in selecting the services they
want to use.”34 There is no evidence to support this argument and there are no
limitations on the type of consumers in the identifications of goods and services. See
In re Bercut-Vandervoort, 229 USPQ at 764 (evidence that relevant goods are
expensive wines sold to discriminating purchasers must be disregarded given the
absence of any such restrictions in the application or registration).
We thus cannot limit Applicant’s broad identification of “recycling” services to
sophisticated, commercial customers. Nor can we assume that all residential
customers of trash and recycling collection services (i.e., the services provided by
Registrant) are sophisticated. Indeed, we find such an assumption entirely
unwarranted here where the collection services tend to be offered to entire
communities. Finally, in making our findings regarding whether confusion is likely,
we must take into account the least sophisticated consumer. Stone Lion Capital

33 The Internet materials of Waste Management provide a good example of this practice, but
other third parties also appear to use the Internet to transact business with customers. Office
Action dated November 2, 2017 at 36-40.
34 11 TTABVUE 15.
Serial No. 87543572

- 20 -

Partners, LP, 110 USPQ2d at 1163; Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d
1301, 1306 (TTAB 2004). We find the purchasing conditions factor neutral.
C. Strength of the Registrant’s Mark
In identifying “strength” as a single factor, we are combining two of the du Pont
factors.35 “A mark’s strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength (secondary meaning).” In re
Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010)); see
also Top Tobacco, L.P. v. North Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-72
(TTAB 2011); Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB
2006); 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 11:83 (5th ed. 2019). Our focus is on the strength of the senior user, or the registered
mark in this context. We have no evidence of market strength, 36 so we focus here only
on conceptual strength.
To evaluate the conceptual strength of word marks, we place the mark in one of
the following classes: “(1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or
fanciful. The lines of demarcation, however, are not always bright.” Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). The registered mark
consists of a globe design and literal elements there all were disclaimed. The globe

35 In Du Pont, the court identified the fifth and sixth factors as follows: “the fame of the prior
mark” and “the number and nature of similar marks in use on similar goods.” In re E.I. du
Pont de Nemours & Co., 177 USPQ at 567. These two factors go to the strength of Plaintiff’s
mark and, therefore, are treated together here.
36 In re Integrated Embedded, 120 USPQ2d 1504, 1512 (TTAB 2016) (“the owner of the cited
registration is not a party to this ex parte appeal, and the Examining Attorney is under no
obligation to demonstrate the fame of a cited mark.”).
Serial No. 87543572

- 21 -

design is not particularly dominant in the cited mark and tends to complement the
phrase “a green company,” by reminding consumers of the need to protect the Earth.
We find the Registrant’s mark is inherently distinctive, at most suggestive, but is not
a strong mark in the conceptual sense (that is, not arbitrary or fanciful). We thus find
the strength of the Registrant’s mark to be a neutral factor in the likelihood of
confusion analysis.
D. Conclusion – There is a Likelihood of Confusion
We have considered all du Pont factors for which there is evidence or argument.
The marks are similar. The services are identical in part or closely related and the
likely trade channels overlap. The strength of the registered mark and the purchasing
conditions do not materially impact our analysis. These findings show that confusion
is likely. Indeed, there are no likelihood of confusion factors that suggest otherwise.
Decision: The refusal to register based on Trademark Act Section 2(d) is affirmed.