Fresh Creek Technologies, Inc.

Trademark Trial and Appeal Board

Jul 25, 2013

No. 85358621 (T.T.A.B. Jul. 25, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
July 25, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Fresh Creek Technologies, Inc.
_____

Serial No. 85358621
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Michael J. Femal of Much Shelist PC for Fresh Creek Technologies, Inc.

Odessa Bibbins, Trademark Examining Attorney, Law Office 105 (Thomas G.
Howell, Managing Attorney).
_____

Before Zervas, Ritchie, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Fresh Creek Technologies, Inc. filed an application to register the mark
TRASH GUARD in standard character form on the Principal Register for the
following goods and services:
Separators for the cleaning and purification of liquids;
Sustainable onsite water recycling and wastewater
treatment systems; Waste water purification apparatus,
installations and tanks; Waste water purification units;
Water purification and filtration apparatus; Water
purification installations; Water purification units; Water
purification, sedimentation and filtration apparatus for
clarification, thickening and filtration of water, waste
water and industrial water; Water treatment apparatus,
namely, clarification and thickening machines for use in
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treatment of liquids in the nature of water, waste water
and industrial water; Water treatment equipment,
namely, water filtration units, in International Class 11;
Management of discharge system units for waste water
treatment made to order and/or specification of others, in
International Class 35;
Refuse cleanup, namely, removing trash and floatables
from waste water and storm water runoff for
municipalities, industrial and commercial sources, in
International Class 37; and
Custom building of waste water purification units;
Custom construction of floatables removal systems for
waste water; Custom manufacture of waste water trash
and floatables control units; Manufacture of general
product lines in the field of waste water, storm water and
urban runoff purification and trash removal units to the
order and specification of others; Manufacture of
discharge system units for waste water treatment to order
and/or specification of others; Recycling of waste and
trash; Treatment of waste water; Waste management;
Waste treatment; Waste water treatment services; Waste
water treatment services for industrial purposes; Water
treatment and purification; Water treatment services, in
International Class 40.1
The trademark examining attorney refused registration as to each class of goods
and services under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark, as used in connection with applicant’s goods and services, so
resembles the registered mark Trash Guard as to be likely to cause confusion, or to
cause mistake, or to deceive. The cited mark is registered on the Principal Register
in standard character form for “Non-metal storm water screens.”2 When the refusal
was made final, applicant filed a notice of appeal with a request for reconsideration.

1 Application Serial No. 85358621, filed under Trademark Act § 1(b), 15 U.S.C. §1051(b), on
June 28, 2011.
2 Reg. No. 3483870, issued on August 12, 2008.
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On reconsideration, the examining attorney maintained her refusal and this appeal
ensued. Applicant and the examining attorney have submitted briefs and applicant
has filed a reply brief.
I. Evidentiary Objection.
We turn first to an evidentiary objection raised by the examining attorney in
her brief. Applicant submitted with its brief, for the first time, information relating
to the prices of various goods of registrant (marked Annexure 1); and a list of
application and registration numbers relating to various marks, apparently derived
from the online TESS database of the U.S. Patent and Trademark Office (Annexure
2). The examining attorney objected to this evidence on the ground that it is
untimely.3 Trademark Rules provide, “The record in the application should be
complete prior to the filing of an appeal. The Trademark Trial and Appeal Board
will ordinarily not consider additional evidence filed with the Board by the
appellant or by the examiner after the appeal is filed.” 37 C.F.R. § 2.142(d). See
also TBMP § 1207.01.
Applicant contends that Annexure 1 does not constitute “new evidence”
because “the pricing between applicant’s and registrant’s goods was made an issue
on the record,” citing applicant’s arguments contained in its response of April 20,
2012.4 However, merely raising an issue in argument is no substitute for actually
making evidence of record.

3 Examining Attorney’s brief, unnumbered p. 4.
4 Applicant’s reply brief at 3.
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With respect to Annexure 2, applicant argues that “such marks are public
record on the USPTO website and the TTAB is free to judicially recognize or not any
such listings….”5 It is the Board’s well-established practice not to take judicial
notice of third-party registrations. TBMP § 1208.02. To make a third-party
registration of record, a copy of the registration, either a copy of the paper USPTO
record or a copy taken from the electronic records of the Office, should be submitted
during examination of the application. In re Compania de Licores Internacionales
S.A., 102 USPQ2d 1841, 1843 (TTAB 2012). Mere listings of registrations are not
sufficient to make the registrations of record. Id.; In re Hoefflin, 97 USPQ2d 1174,
1177 (TTAB 2010). Neither does the Board take judicial notice of pending or
expired applications. See In re Binion, 93 USPQ2d 1531, 1535 n.3 (TTAB 2009).
The applicant has the responsibility to make sure that the record is complete
prior to filing a notice of appeal. In re Van Valkenburgh, 97 USPQ2d 1757, 1768 n.
32, 1769 (TTAB 2011). Accordingly, the Board has not considered Annexures 1 and
2 to applicant’s brief.
II. Likelihood of Confusion.
We turn next to the merits of the examining attorney’s refusal. Our
determination under Section 2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion, as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key

5 Id.
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considerations are the similarities between the marks and the similarities between
the goods and services at issue. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, applicant and the
examining attorney have also submitted evidence and arguments regarding the
channels of trade, classes of customers and their sophistication, the degree of care
taken in the selection of the goods and services, similar marks in the marketplace,
and absence of actual confusion.
(a) The marks.
We address first the similarity or dissimilarity of the marks as to appearance,
sound, connotation and commercial impression. Du Pont, 177 USPQ at 567.
Applicant’s mark is identical to the mark in the cited registration. Although
applicant initially argued against this point,6 in its reply brief applicant appears to
concede that the marks are identical.7 Applicant’s concession is appropriate,
because both the mark in the application and the cited registered mark are
“standard character” marks. Marks presented in standard characters are not
limited to any particular depiction. The rights associated with a mark in standard
characters reside in the wording and not in any particular display. Squirtco v.
Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983); In re RSI Systems,
LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Pollio Dairy Products Corp., 8
USPQ2d 2012, 2015 (TTAB 1988). Accordingly, even though registrant may
currently display its mark in a particular design format and in a particular color, as

6 Applicant’s brief at 7-9.
7 Applicant’s reply brief at 11 (“applicant agrees that the marks are identical”).
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applicant contended, registrant may change the format of its display and its
attendant registration rights will continue to apply.
Applicant nonetheless appears to argue that the marks differ in meaning,
stating that “applicant has submitted evidence establishing that applicant’s “Trash
Guard” and registrant’s “Trash Guard” are recognized differently when associated
with their respective goods because the goods/services of applicant are so dissimilar
in the minds of the purchaser.”8 We disagree. Applicant’s mark and registrant’s
mark are both used in connection with goods and/or services whose purpose is to
create a barrier against trash and other forms of waste in order to protect bodies of
water from contamination. As both marks are used in such similar contexts, we see
no reason to believe that the marks would be perceived to have different meanings
or to create different commercial impressions among likely customers. Accordingly,
we find that the factor regarding the identity of the marks weighs heavily in favor
of a finding of likelihood of confusion.
(b) The goods and services at issue.
We turn next to the respective goods and services of applicant and registrant
in order to determine whether they are sufficiently related to give rise to potential
confusion. Applicant argues that the goods of applicant and registrant are
dissimilar because applicant’s goods are “prefabricated” of “plastic,” “not custom
made,” available “in only three sizes”, and “require no pre-engineering or custom

8 Reply brief at 11-12.
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design.”9 Arguments of this type are unavailing because they seek to limit the
nature of registrant’s goods in ways that are not set forth in the cited registration.
In considering the scope of the cited registration, we must look to the registration
itself, and not to extrinsic evidence about the registrant’s actual goods, customers,
or channels of trade. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart
Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958). Registrant’s goods are
identified as “non-metal storm water screens.” Although they are not of metal, they
are not limited to plastic. The protections of the registration are not limited to
prefabricated screens in only three sizes; if registrant makes, whether now or in the
future, custom-designed screens in a variety of sizes, they will be within the scope of
the registration’s protection. There is nothing about the inherent nature of “non-
metal storm water screens” to exclude them from projects in which “pre-
engineering” is required (or at least there is no evidence in the record to so
indicate). Bearing in mind this general concept of the goods identified in the
registration, we will consider in turn each class of applicant’s goods and services, to
determine whether they are sufficiently related to registrant’s goods such that
marketing them under a mark identical to the registered mark would likely give
rise to the mistaken belief that they originate from or are associated with the same
producer. Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399. 1410
(TTAB 2010); Schering Corporation v. Alza Corporation, 207 USPQ 504, 507 (TTAB

9 Applicant’s brief at 9-10.
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1980); Oxford Pendaflex Corporation v. Anixter Bros. Inc., 201 USPQ 851, 854
(TTAB 1978).
(i) Applicant’s goods in International Class 11.
Applicant’s goods include several broadly defined types of water filtration
devices, including “Water… filtration apparatus” and “Water treatment equipment,
namely, water filtration units.” To a layperson, a “storm water screen,” as
identified in the registration, might constitute a type of water filtration apparatus.
Even if this is not so, the record suggests that a storm water screen may be a
component of a water filtration apparatus or unit: marketing material of applicant
describing the Kingston Pump Station installation depicts, as a component of the
system, an “overflow screen” (albeit a screen that appears to be of metal, rather
than non-metal).10 The record also indicates that the goods of applicant and
registrant have the same purpose. Registrant’s goods are designed to “capture[ ]
debris, sediments & floatables” so as to result in “trash free stormwater
discharge.”11 Similarly, applicant’s system installed at Kingston Pump Station is
described as a “solution[ ] to the growing problem of trash and debris being dumped
into the lakes….”12 Moreover, while some of applicant’s goods are identified as
“waste water” filtration systems, rather than “storm water” filtration systems, the
evidence suggests that storm water is a type of waste water or a component of waste
water. “Fresh Creek systems use rugged custom-knitted disposable mesh nets to

10 Evidence submitted with applicant’s response of April 14, 2012.
11 See , submitted with the Office action of October 13, 2011.
12 “Kingston Pump Station Installation” brochure, submitted with applicant’s response of
April 14, 2012.
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capture and remove trash, floatables and solids from stormwater, urban runoff and
combined sewer overflow (CSO) discharges.”13 Applicant also characterizes its
goods as “designed to capture and then remove floatable trash, debris, oil and other
hazardous sediments to purify the storm water outflow and discharge….”14
Because the goods of registrant, as identified, may be components of systems
of the types identified in the application, and because applicant’s and registrant’s
goods have similar purposes, we find the goods of applicant and registrant to be
related. We need not make this finding with respect to every item in applicant’s
identification of goods. For purposes of likelihood of confusion analysis, it is
sufficient to make the finding with respect any item within a class of identified
goods. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d
1393, 1398 (TTAB 2007). Accordingly, with respect to the goods in International
Class 11, the du Pont factor of the similarity or dissimilarity of the goods favors a
finding of likelihood of confusion.
(ii) Applicant’s services in International Class 35.
Applicant’s Class 35 services are “management of discharge system units for
waste water treatment made to order and/or specification of others.” Such services
are, by their nature, facilities operation services or business administration
services. Services of this type are inherently different in nature from any kind of

13 “End-Of-Pipe, In-Line, Channel and Floating Systems” (emphasis supplied), submitted
with applicant’s request for reconsideration of October 22, 2012.
14 Applicant’s reply brief at 8 (emphasis supplied).
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manufacture or other production of a hardware product such as a storm water
screen. There is no reason to expect that a business that provides personnel to
operate a facility would also be a source of the equipment of which the facility is
constructed. The examining attorney has not made of record any evidence to
demonstrate a degree of relatedness between the identified services and registrant’s
goods. Accordingly, on this record the du Pont factor of the similarity or
dissimilarity of the goods and services weighs against a finding of likelihood of
confusion with respect to the services in Class 35.
(iii) Applicant’s services in International Class 37.
Applicant’s Class 37 services are “Refuse cleanup, namely, removing trash
and floatables from waste water and storm water runoff for municipalities,
industrial and commercial sources.” Such services might involve, in their rendition,
use of a device such as a storm water screen. However, customers of such services
would not naturally assume that the service provider produces its own equipment
and machinery and markets such equipment at retail. There is no evidence of
record to the contrary. Accordingly, on this record the du Pont factor of the
similarity or dissimilarity of the goods and services weighs against a finding of
likelihood of confusion with respect to the services in Class 37.
(iv) Applicant’s services in International Class 40.
Applicant’s services include “manufacture of general product lines in the field
of waste water, storm water and urban runoff purification and trash removal units
to the order and specification of others.” Registrant’s “storm water screen” is within
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the scope of products produced by a manufacturer of “general product lines in the
field of… storm water… purification.” Customers for such goods, as well as
customers for the specialized manufacturing services identified in the application,
would readily expect that a business that provides custom manufacture of storm
water purification products could also be the source of retail products such as storm
water screens. For this reason, we find registrant’s identified goods to be closely
related to the custom manufacturing service identified in the application. As noted
above, we need not make the same finding with respect to every service identified in
Class 40. Tuxedo Monopoly, 209 USPQ at 988. Accordingly, with respect to the
services in International Class 40, the du Pont factor of the similarity or
dissimilarity of the goods and services favors a finding of likelihood of confusion.
(c) The channels of trade.
Applicant argues that, because of the technical complexity of installing its
water treatment systems, its goods and services are marketed in a manner different
from the manner in which registrant’s goods are marketed:
It requires Civil Engineering, General Contractors and
EPA approval before installation… Applicant’s
goods/services take years of planning with municipalities
and approvals of governmental agencies prior to the
custom installation by a general contractor pursuant to
engineered specification related to the site to make up its
goods/services. … Applicant’s goods/services require
professional engineers to design and specifiy [sic] the
custom built goods/services associated with its
application….15

15 Applicant’s brief at 10.
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Applicant contends that, by contrast, “Registrant’s goods are bought off the shelf…
without any engineering or classes conducted to aid in the specification of the goods
to meet a particular site.”16
Even though registrant’s goods, by their nature, would constitute only one
component of a storm water filtration system, we see no reason to believe that they
would be excluded from the trade channel described by applicant. Assuming that
applicant’s goods and services are marketed directly to municipal leaders, engineers
and contractors, there is no reason to believe that equipment and components, such
as registrant’s goods, would not also be marketed directly to such decision-makers.
If these potential customers decide to engage applicant to provide its goods and
services, it is not a foregone conclusion that they will also decide to obtain all
equipment and components from applicant. Storm water screens are likely to be
marketed through the same trade channels as storm water control services and
goods. Accordingly, we find that the du Pont factor of trade channels favors a
finding of likelihood of confusion.
(d) Customers.
As to the customers for applicant’s goods and services, applicant argues that :
[applicant’s goods and services] target a particular area
of an organization, more specifically the Civil Engineering
Departments of Municipalities and Governments as well
as Civil and Environmental Engineers from the U.S. EPA.
In contrast, the Registrant’s goods on the other hand, are
targeted towards consumers in general streets and
sanitation departments of municipalities without Civil
engineers, General Contractor to custom install or the

16 Id. at 12-13.
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EPA approval to insert within a catch basin under a curb
sewer grate.17
The examining attorney responds by referring to registrant’s web site which
contains indications that registrant also considers municipalities and engineers to
be its customers:
Provides your city with an inexpensive solution to storm
water pollution.
…
Trash Guard, Inc. has developed a patented catch-basin
trash screen for municipalities to have trash free
stormwater discharge.
…
Trash Guard offers a product screen sizing calculations
computerized program that can assist engineers in
selecting the correct screen size.18

Applicant’s contention that registrant’s goods are offered to consumers or to city
departments different from the departments to which applicant sells its goods and
services is speculative and unsupported by evidence. There is nothing in this record
to support a finding that registrant’s goods and applicant’s goods and services are
directed to distinct classes of customers. The similarity of the classes of customers
to whom the goods and services are offered favors a finding of likelihood of
confusion.
(e) Careful selection by sophisticated customers.
Applicant next contends that its customers exercise a high degree of care in
selecting its goods and services because their goal is “to meet EPA standards” and
“it is critical for a corporation or municipality to avoid severe financial penalties by

17 Applicant’s brief at 11.
18 , submitted with Office action of October 13, 2011.
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not meeting EPA standards for discharging into waterways….”19 We note that
there is nothing in the identification of applicant’s goods and services to indicate
that their purpose is compliance with EPA regulations. In any event, the record
does indicate that applicant’s goods and services are costly and generally complex in
nature. They are the types of goods and services that are likely to be selected by
means of a bidding process or a request for proposals, involving careful
consideration by the decision makers. On the other hand, registrant’s goods, which
are a single component rather than an entire system, would likely be selected with
substantially less care and possibly at a different stage of project planning. (For
example, a single component might be selected as a replacement part after
completion of the project, rather than at the time the system is originally built.)
Moreover, we note that even sophisticated purchasers are not immune from source
confusion, especially where the marks are identical. See In re Research Trading
Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle Chemical
Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA
1970); In re Decombe, 9 USPQ2d 1812 (TTAB 1988). Overall, however, we find that
the factor of careful selection of the goods and services weighs against a finding of
likelihood of confusion.

19 Applicant’s brief at 14-15.
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(f) Lack of actual confusion.
Applicant argues that it has been using its mark since June of 2000 and it is
not aware of any confusion involving the marks of applicant and registrant.20 In an
ex parte context, where we have no input from the registrant, applicant’s
uncorroborated statement of no known instances of actual confusion is of little
evidentiary value. In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1205 (Fed. Cir. 2003); In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ
528, 529 (CCPA 1973). In any event, the record lacks evidence of the length of time
during which applicant has used its mark and of the extent of such use; accordingly,
applicant has not demonstrated that there have been meaningful opportunities for
instances of actual confusion to have occurred in the marketplace. See Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); and
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
Accordingly, the du Pont factor of the length of time during and conditions under
which there has been contemporaneous use without evidence of actual confusion is
neutral.
(g) Similar marks in the marketplace.
Applicant contends that there are at least three marks similar to the mark at
issue in use in the marketplace, that such third-party use renders the mark TRASH
GUARD weak as a source indicator, and accordingly the likelihood of confusion is
reduced. However, applicant has not effectively made of record any evidence of

20 Applicant’s brief at 16.
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actual use of any similar third-party mark; nor has it made of record evidence of
any third-party trademark registrations or applications. (See discussion at Part I
above.) Accordingly, there is no basis for a finding that the mark TRASH GUARD
is weakened by dilution.
Applicant also contends that the mark at issue is inherently weak.21 This
point is well taken. The examining attorney has made of record a dictionary
definition of the word TRASH indicating that it means “waste.”22 The record also
contains many indications that the control of trash is the purpose of the registrant’s
goods and applicant’s goods and services. The word GUARD, as a verb, has the
following meaning:
2 b : to stand on the border or at the entrance of as if on
guard… or as a barrier.23
As a noun, GUARD means:
6 : a fixture or attachment designed to protect or secure
against injury, soiling, defacement, theft, or loss.24
It is clear, therefore, that the mark TRASH GUARD is highly suggestive of the
nature and function of goods and services whose purpose is to create a barrier
against trash and other forms of waste in order to protect bodies of water from
contamination. Accordingly, we agree with applicant that the registered mark is inherently
weak and thus may not be entitled to the wide scope of protection that we would normally accord

21 Applicant’s reply brief at 12.
22 Cambridge Dictionaries Online, submitted with Office action of October 13, 2011.
23 WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993), p. 1007.
24 Id. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du
Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
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a non-suggestive, stronger mark. We note, however, that even weak marks are entitled to
protection against confusion. Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V.,
98 USPQ2d 1558, 1567 (TTAB 2011); King Candy Company v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974) (“likelihood of confusion is to be avoided, as
much between ‘weak’ marks as between ‘strong’ marks, or as between a ‘weak’ and ‘strong’
mark.”). Overall, this factor weighs against a finding of likelihood of confusion.
(h) Balancing the factors.
Having considered all of the evidence and arguments of record and all
relevant du Pont factors, including those not specifically discussed herein, we find,
with respect to applicant’s goods in Class 11 and applicant’s services in Class 37,
that applicant’s mark, as applied to those goods and services, so closely resembles
the cited registered mark as to be likely to cause confusion, mistake or deception as
to the source of applicant’s services. However, with respect to applicant’s services in
Classes 35 and 40, no such likelihood has been demonstrated.
Decision: With respect to applicant’s goods in Class 11 and applicant’s
services in Class 37, the refusal to register the mark is affirmed; with respect to
applicant’s services in Classes 35 and 40, the refusal to register the mark is
reversed.