New Wave Enviro Products, Inc.

Trademark Trial and Appeal Board

Jul 26, 2013

No. 85406293 (T.T.A.B. Jul. 26, 2013)

Mailed:
July 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re New Wave Enviro Products, Inc.
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Serial No. 85406293
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Neil P Movitz of the Law Office of Neil P Movitz, for New Wave
Enviro Products, Inc.

Matt Einstein, Trademark Examining Attorney, Law Office 115
(John Lincoski, Managing Attorney).
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Before Taylor, Ritchie, and Gorowitz, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

New Wave Enviro Products, Inc. (“applicant”) filed an
application to register the mark LITTER FREE LUNCH, in standard
character form, for goods identified as “Lunch bags; lunch bags
made of textile,” in International Class 16; and “Bottles sold
empty; drinking flasks; drinking vessels; household containers
for foods [sic]; thermal insulated bags for food or beverages,”
in International Class 21.1

1 Serial No. 85406293, filed August 24, 2011, pursuant to Section 1(a)
of the Trademark Act, 15 U.S.C. § 1051(a), alleging dates of first use
and first use of the mark in commerce on June 20, 2011 for both
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85406293
2
The Trademark Examining Attorney refused registration of
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark so
resembles the registered mark RUBBISH FREE LUNCH, also in
standard character form, for “Containers with lids for household
use; flexible or rigid, insulated or non insulated containers
for food or beverage for domestic use; insulated bags for food
or beverage for domestic use; drinking bottles sold empty;
plastic storage containers for domestic use,” in International
Class 21, 2 that when used on or in connection with applicant’s
identified goods, it is likely to cause confusion or mistake or
to deceive.
Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney filed
briefs, and applicant filed a reply brief. For the reasons
discussed herein, the Board affirms the refusal to register
under Section 2(d).
We base our determination under Section 2(d) on 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.,

classes, and disclaiming the exclusive right to use the term “LUNCH”
apart from the mark as shown.
2 Registration No. 3916286, issued February 8, 2011, and disclaiming
the exclusive right to use the term “LUNCH” apart from the mark as
shown.
Serial No. 85406293
3
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services.
See 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”).
The Goods and Channels of Trade

The application identifies “Lunch bags; lunch bags made of
textile,” in International Class 16; and “Bottles sold empty;
drinking flasks; drinking vessels; household containers for
foods [sic]; thermal insulated bags for food or beverages,” in
International Class 21, while the cited registration identifies
“Containers with lids for household use; flexible or rigid,
insulated or non insulated containers for food or beverage for
domestic use; insulated bags for food or beverage for domestic
use; drinking bottles sold empty; plastic storage containers for
domestic use,” in International Class 21. While worded slightly
differently, the goods overlap in part, including “bottles sold
empty”, “containers” (with lids/for food), and “insulated bags
for food or beverage.” The latter, included by both the
Serial No. 85406293
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application and the cited registration in International Class 21
may also encompass the “lunch bags” identified by the
application in International Class 16. Accordingly, the goods
are identical-in-part.
The examining attorney further demonstrated the close
relationship of the remaining goods by submitting web evidence
of “lunch bags” (applicant’s IC 16 goods) sold together, under
the same mark, with “containers with lids for household use,” as
identified by the cited registration, and “bottles sold empty,”
as identified by both, all clearly offered together as items for
lunch packaging. See www.norwood.com; www.landsend.com;
www.ecolunchboxes.com; and www.coollunchbags.com.
Because the goods described in the application and the
cited registration are identical-in-part, we must presume that
the channels of trade and classes of purchasers are the same.
See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003)
(“Given the in-part identical and in-part related nature of the
parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers,
these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade”); In
re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be presumed
to travel in the same channels of trade, and be sold to the same
Serial No. 85406293
5
class of purchasers”). Additionally, there is nothing in the
recital of goods in either the cited registration or the
application that limits either registrant’s or applicant’s
channels of trade. See In re Linkvest S.A., 24 USPQ2d 1716,
1716 (TTAB 1992) (because there are no limitations as to
channels of trade or classes of purchasers in either the
application or the cited registration, it is presumed that the
registration and the application move in all channels of trade
normal for those services, and that the services are available
to all classes of purchasers for the listed services).
Applicant’s argument that registrant has a 66a registration and
does not actually use its mark in commerce in the U.S. is not
relevant to this ex parte proceeding.3 Our decision must assume
that the goods and channels of trade are as written in the
identifications. Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990) (“[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

3 Any challenges to a registration, regardless of that registration’s
basis, must be made via an inter partes proceeding.
Serial No. 85406293
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of goods are directed.” [citations omitted]). Accordingly, we
find that these du Pont factors weigh heavily in favor of
finding a likelihood of consumer confusion.
The Marks
Preliminarily, we note that the more similar the goods at
issue, the less similar the marks need to be for the Board to
find a likelihood of confusion. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir.
1992). We consider and compare the appearance, sound,
connotation and commercial impression of the marks in their
entireties. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005).
In comparing the marks, we are mindful that 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
and/or services offered under the respective marks is likely to
result. San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5,
1992). The proper focus is on the recollection of the average
customer, who retains a general rather than specific impression
of the marks. Winnebago Industries, Inc. v. Oliver & Winston,
Serial No. 85406293
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Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975).
There is no question but that the first words of the two
marks, “RUBBISH,” and “LITTER,” do not look or sound alike. We
note, however, the following dictionary definitions for them:

Litter: 4a. trash, wastepaper, or garbage lying
scattered about. www.merriam-webster.com. (2011)

Rubbish: 1. useless waste or rejected matter: trash;
www.merriam-webster.com. (2011) synonyms: “litter.”

As such, we find that both have the same meaning in this context
of unwanted trash.
The remaining phraseology for both marks is the same
_ _ _ FREE LUNCH. We therefore find that, when considered in
their entireties, both marks have the same aural cadence, and
both have the same overall commercial impression. Accordingly,
this du Pont factor, too, favors finding a likelihood of
confusion.
Other Factors
Applicant urges us to consider a “prima facie case in favor
of New Wave as to its right to register another mark that also
contains LITTER FREE.” (appl’s brief at 8). This refers to
applicant’s prior registration for LITTER FREE LIVING,
Registration No. 3227490, for “plastic water bottles sold
empty.” We recognize that this registration was initially
mistakenly issued as a bar to registration in the prosecution of
the current application. However, the facts in this matter are
Serial No. 85406293
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different from the facts in applicant’s prior registration file,
particularly given the differences in the marks at issue.
Indeed, “[t]he cases are legion holding that each application
for registration of a mark for particular goods or services must
be separately evaluated. Section 20 of the Trademark Act, 15
USC Section 1070, gives the Board the authority and duty to
decide an appeal from an adverse final decision of the Examining
Attorney. This duty may not be delegated by adoption of
conclusions reached by Examining Attorneys on different records.
Suffice it to say that each case must be decided on its own
merits based on the evidence of record.” In re Sunmarks Inc.,
32 USPQ2d 1470, 1471(TTAB 1994)(internal citations omitted).
The mark in applicant’s prior registration is different from the
mark applicant seeks to register here. Compare In re Strategic
Partners, Inc., 102 USPQ2d 1397 (TTAB 2012) (applicant’s
previously existing, incontestable registration for the same
goods influenced the Board’s decision). Accordingly, the prior
registration does not assist applicant in establishing that
there is no likelihood of confusion.
Balancing the Factors
In summary, we have carefully considered all of the
evidence and arguments of record relevant to the pertinent du
Pont likelihood of confusion factors. As our precedent
dictates, we resolve doubt in favor of the prior registrant.
See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025 (Fed. Cir. 1988). We conclude that with in-part-identical
goods travelling in the same channels of trade, and marks with
Serial No. 85406293
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virtually identical connotations and commercial impression,
there is a likelihood of confusion between applicant’s mark
LITTER FREE LUNCH, for the goods which it seeks registration,
and the registered mark RUBBISH FREE LUNCH for the goods for
which it is registered.
Decision: The refusal to register is affirmed.