Foresight USA, Inc.

Trademark Trial and Appeal Board

Jan 21, 2016

No. 86214501 (T.T.A.B. Jan. 21, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: January 21, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Foresight USA, Inc.
_____
Serial No. 86214501
_____

Matthew H. Swyers of The Trademark Company PLLC
for Foresight USA Inc.

Parker Howard, Trademark Examining Attorney, Law Office 117,
Hellen Bryan-Johnson, Managing Attorney.
_____
Before Taylor, Shaw and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

I. Background

Foresight USA Inc. (“Applicant”) has applied for registration on the Principal
Register of the mark ECO LOC in standard characters for the following goods:1

1 Application Serial No. 86214501 was filed March 7, 2014 based on intent to use under
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Applicant proposed an amendment
Serial No. 86214501
- 2 -
INT. CLASS 016: Biodegradable, compostable, oxo-biodegradable bags, namely,
plastic trash bags, plastic trash can liners and plastic leaf bags; biodegradable,
compostable, oxo-biodegradable paper bags; biodegradable, compostable, oxo-
biodegradable bags, namely, plastic bags, namely, general purpose plastic bags,
plastic trash can liners and plastic leaf bags and general purpose recycled plastic
bags

The Examining Attorney refused registration of Applicant’s mark under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), as likely to cause confusion with
the registered mark (“Registration”),2 described as “the
wording ‘ECOLOC’ in stylized characters,” for the following goods:
INT. CLASS 021: Containers for household or kitchen use; bath accessories,
namely, cup holders; spice racks; non-electric food blenders for household
purposes; cookery molds; holder for cutting board; bathroom holders for holding
razors; plastic bag holders for household use; shower caddies; household
utensils, namely, pot and pan scrapers, rolling pins, spatulas, turners; soap
dispensers; dish drying racks; sponge holders; squeegees for household use;
toothbrush holders; nozzles for watering cans; roses for watering cans; soap
dishes; trash cans; holders for toilet paper; cleaning brushes for household use;
towel rails and rings; toilet brush holders (emphasis added)

We affirm the refusal to register.
II. Likelihood of Confusion

The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
The likelihood of confusion analysis often focuses on two key considerations, the

of its identification of goods in its brief, and on remand, the Examining Attorney accepted
the amendment. April 2, 2015 Office Action.
2 Registration No. 4499370 issued March 18, 2014.
Serial No. 86214501
- 3 -
similarities between the marks and the relatedness of the goods. See In re Chatam
Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”).
With respect to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). The test
assesses not whether the marks can be distinguished in a side-by-side comparison,
but rather whether their overall commercial impressions are so similar that
confusion as to the source of the goods offered under the respective marks is likely
to result. Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Laboratories Inc. v. Lichter, 102
USPQ2d 1546, 1551 (TTAB 2012).
ECO LOC and consist of identical wording. Applicant attempts to
distinguish the mark in the Registration as stylized.3 However,
Applicant’s standard character claim would entitle it to protection in any font,
including that used in the stylized mark in the Registration. See In re Viterra Inc.,
671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); Citigroup Inc. v.
Capital City Bank Group, Inc., 637 F.3d 1344, 1353, 98 USPQ2d 1253, 1259 (Fed.

3 4 TTABVUE at 10.
Serial No. 86214501
- 4 -
Cir. 2011). Thus, they look very similar and could appear identical except for the
space included in Applicant’s mark, which makes little or no difference. See, e.g.,
Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks
‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical [internal
citation omitted].”); Stock Pot, Inc., v. Stockpot Rests., Inc., 220 USPQ 52, 54 (TTAB
1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question
that the marks of the parties [STOCKPOT and STOCK POT] are confusingly
similar. The word marks are phonetically identical and visually almost identical.”).
In addition, the marks sound exactly the same, reflecting how consumers would call
for the goods. See Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d
1424, 1431 (TTAB 2013). Applicant also argues that because it disclaimed “ECO,”
its applied-for mark “essentially becomes ‘LOC,’” and gives the impression of a bag
that locks closed while the Registration gives the impression of a bin or container
that locks shut.4 As for the disclaimed portion, it does not remove “ECO” from the
mark, which must still be considered in its entirety in the likelihood of confusion
comparison. See Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685
F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); see also In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1689-90 (Fed. Cir. 1993) (“The Board correctly held
that the filing of a disclaimer with the Patent and Trademark Office does not
remove the disclaimed matter from the purview of determination of likelihood of
confusion”). Moreover, we agree with Applicant’s concession that consumers would

4 4 TTABVUE at 10-11.
Serial No. 86214501
- 5 -
perceive the “LOC” portion of both marks as a reference to “lock.” Thus, overall we
find that these two marks consisting of identical wording appear quite similar
visually, share the same commercial impression, and sound identical. This du Pont
factor weighs heavily in favor of likely confusion.
Turning next to the goods, they need not be as closely related to support a
finding of likelihood of confusion when, as here, the marks qualify as virtually
identical. See Shell Oil Co., 26 USPQ2d at 1689; In re House Beer, LLC, 114
USPQ2d 1073, 1077 (TTAB 2015). With this principle in mind, we must determine
whether the degree of relatedness of the goods rises to such a level that consumers
would mistakenly believe the goods and services emanate from the same source.
The comparison must be based on the identifications in the Application and
Registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston
Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). If
likelihood of confusion exists with respect to any of Applicant’s identified goods in a
particular class, the refusal of registration must be affirmed as to all goods in that
class. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981).
Applicant’s goods include plastic trash bags, plastic trash can liners, general
purpose plastic bags, and biodegradable, compostable, oxo-biodegradable paper
bags. The Examining Attorney focuses the comparison to the Registration on the
trash cans and the plastic bag holders for household use included in the
Serial No. 86214501
- 6 -
identification. Although the goods in the Application and Registration do not
overlap, the record includes numerous examples of the types of bags in the
Application being sold under the same mark as trash cans and plastic bag holders,
as covered by the Registration. For example, the evidence shows:
• HEFTY used as a mark for trash bins and containers as well as for trash
and recycle bags, including plastic bags;5
• GENUINE JOE used as a mark for trash containers as well as for trash
bags and plastic trash can liners;6
• TOUGH GUY used as a mark for trash cans and for plastic and paper
trash bags and compostable can liners;7
• POOPBAGS and design used as a mark for plastic bags and plastic bag
holders;8 and
• SIMPLEHUMAN used on plastic trash bags, plastic bag holders, and
trash cans.9
The evidence demonstrates that consumers are accustomed to encountering trash
bags and trash cans sold under the same mark, and are accustomed to encountering
plastic bags and plastic bag holders sold under the same mark. In addition, the
evidence described above shows that consumers use trash cans, as identified in the
Registration, with plastic trash bags, as identified in the Application. Similarly,

5 April 2, 2015 Office Action at 2-5.
6 Id. at 6.
7 Id. at 7-9.
8 December 30, 2014 Office Action at 12-16.
9 June 13, 2014 Office Action at 11-23
Serial No. 86214501
- 7 -
consumers employ bag holders such as those covered by the Registration to hold the
types of bags set forth in the Application. Thus, the goods in the Application and in
the Registration would be considered complementary, which further supports
finding relatedness. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289, 1290 (Fed. Cir. 1984); see also Polo Fashions, Inc. v. La Loren, Inc.,
224 USPQ 509, 511 (TTAB 1984) (bath sponges deemed sufficiently related to bath
oil, soap and body lotion based on complementary nature in being purchased and
used together). Without addressing the relatedness evidence provided by the
Examining Attorney, Applicant notes that it does not make the same goods
identified in the Registration and makes conclusory arguments that “there is little,
if any, relation between the goods.”10 Mere attorney argument without evidentiary
support does not overcome the prima facie case. See In re Consolidated Specialty
Rests. Inc., 71 USPQ2d 1921 (TTAB 2004). The relatedness of the goods favors
likely confusion.
Because there are no limitations as to channels of trade or classes of purchasers
in the identifications of goods, we presume that the goods move in all normal
channels of trade and are available to all potential classes of ordinary consumers.
See Citigroup Inc. v. Capital City Bank Group Inc., 98 USPQ2d at 1261; In re Jump
Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). As reflected in the record, the
types of bags identified in the Application and trash cans and bag holders in the
Registration are common consumer goods that are sold to ordinary customers

10 4 TTABVUE at 12, 14, 16.
Serial No. 86214501
- 8 -
through retailers such as The Container Store, Bed Bath & Beyond, Linens-N-
Things, and Office Depot.11 Applicant improperly attempts to avoid the unrestricted
nature of its chosen identification of goods by arguing that it actually “is targeting
consumers in the food service supply industry.”12 However, “[t]he 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 Computers Servs. Inc., 16 USPQ2d at 1787. Thus, we
find that Applicant’s goods and the goods in the Registration move in the same
channels of trade and to the same ordinary members of the public. These overlaps
in trade channels and classes of purchasers weigh in favor of a finding of likelihood
of confusion.
Based on the similarity of the marks, as well as the relatedness of the goods, and
their travel in the same trade channels to the same class of purchasers, we find
confusion likely.
Decision: The refusal to register Applicant’s mark under § 2(d) is affirmed.

11 June 13, 2014 Office Action at 6-39; April 2, 2015 Office Action at 6
12 4 TTABVUE at 12.