Waste-Away Group, Ltd.

Trademark Trial and Appeal Board

Feb 5, 2013

No. 77887354 (T.T.A.B. Feb. 5, 2013)

Mailed: 2/5/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Waste-Away Group, Ltd.
________

Serial No. 77887354
_______

Gerard T. Gallagher of Barnes & Thornburg for Waste-Away Group,
Ltd.

Benji Paradewelai, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Quinn, Ritchie and Hightower,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Waste-Away Group, Ltd. filed, on December 7, 2009, an
application to register the term MECHANIC (in standard
characters) for “maintenance and installation of waste handling
equipment in the nature of compactors, pre-crushers and hoppers;
repair and maintenance of waste handling equipment in the nature
of refuse and waste handling trucks, compactors, pre-crushers
and hoppers” in International Class 37. By way of amendment,
applicant seeks registration on the Supplemental Register.
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser. No. 77887354

2

Applicant alleges first use anywhere and first use in commerce
at least as early as July 1989.
The trademark examining attorney refused registration on
the Supplemental Register under Section 23(c), 15 U.S.C. §
1023(c), on the ground that applicant’s proposed mark, as used
in connection with applicant’s services, is generic and, thus,
is incapable of registration.
Applicant originally sought registration on the Principal
Register. The examining attorney initially refused registration
on the ground of mere descriptiveness and, pursuant to Section
1209.02(a) of the TMEP (Oct. 2012), also advised applicant that
the proposed mark appeared to be generic; applicant responded
with a claim of acquired distinctiveness under Section 2(f), 15
U.S.C. § 1052(f). The examining attorney found the claim to be
insufficient, and again advised applicant that the proposed mark
appeared to be generic. Applicant then amended the application
to seek registration on the Supplemental Register, maintaining
that the mark sought to be registered is not generic. When the
refusal was made final, applicant appealed. Applicant and the
examining attorney filed briefs.
Applicant argues that the term is not generic for its
services:
The genus of services identified in the
present application is the maintenance,
repair and installation of various waste
Ser. No. 77887354

3

handling equipment. Applicant notes that in
all of the evidence produced by the
Examining Attorney, the term “mechanic” is
used to refer to a person who performs
certain services, not the services. Thus,
although the public may interpret the term
“mechanic” to mean someone who repairs and
maintains equipment, there is simply no
evidence that the relevant portion of the
public refers to this class of services as
“mechanic.” Nor is the term “mechanic” the
common descriptive name of maintenance,
installation and repair services for waste
handling equipment. (emphasis in original).

(Brief, pp. 2-3). Applicant submitted one of its flyers
describing the services rendered under its proposed mark.
The examining attorney maintains that the proposed mark
immediately identifies the genus or category of the provider of
the services, as well as a specific genus of service provided by
such persons. In this connection the examining attorney
contends that the name of the provider of the services may also
be the name of the services. According to the examining
attorney, the evidence of record shows that the term “mechanic”
identifies a type of repair and maintenance service. In support
of the refusal, the examining attorney introduced dictionary
definitions of the term “mechanic,” and excerpts of several
third-party websites allegedly showing generic usage of
“mechanic” in connection with repair and maintenance services,
some directed to waste handling equipment.
Ser. No. 77887354

4

To be registrable on the Supplemental Register, the matter
sought to be registered must be “capable of distinguishing
applicant’s goods or services” pursuant to Section 23 of the
Trademark Act, 15 U.S.C. § 1091. Generic terms are, by
definition, incapable of indicating a particular source of the
goods or services. “The critical issue in genericness cases is
whether members of the relevant public primarily use or
understand the term sought to be protected to refer to the genus
of goods or services in question.” In re 1800Mattress.com IP,
LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009),
citing H. Marvin Ginn Corp. v. International Association of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).
Determining whether a term is generic involves a two-step
inquiry: First, what is the genus of goods or services at
issue? Second, is the term sought to be registered understood
by the relevant public primarily to refer to that genus of goods
or services? Id. “Evidence of the public’s understanding of
the term may be obtained from any competent source, such as
purchaser testimony, consumer surveys, listings in dictionaries,
trade journals, newspapers, and other publications.” In re
Merrill Lynch, Fenner and Smith Inc., 828 F.2d 1567, 4 USPQ2d
1141, 1143 (Fed. Cir. 1987). To be generic, members of the
relevant public must primarily use or understand applicant’s
Ser. No. 77887354

5

term as referring to the genus of its goods or services. Marvin
Ginn, 228 USPQ at 530.
Registrability must be determined in this appeal on the
basis of the services as set forth in the application. Magic
Wand, Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed.
Cir. 1991); In re Grenliant Sys. Ltd., 97 USPQ2d 1078, 1081-82
(TTAB 2010); and In re Vehicle Information Network Inc., 32
USPQ2d 1542, 1544 (TTAB 1994). Registration will be denied if a
mark is generic of any of the services for which registration is
sought. See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 205
USPQ 505, 507 (CCPA 1980); and In re Analog Devices, Inc., 6
USPQ2d 1808, 1810 (TTAB 1988), aff’d, 871 F.2d 1097, 10 USPQ2d
1879 (Fed. Cir. 1989).
Our first task under Marvin Ginn is to determine, based on
the record before us, the genus of applicant’s services.
Applicant and the examining attorney are in essential agreement
on this first factor. We find that the genus of services at
issue, in relevant part, is repair and maintenance services for
refuse and waste handling trucks and equipment, such as
compactors, pre-crushers and hoppers.
We next determine whether the designation applicant seeks
to register, MECHANIC, is understood by the relevant public
primarily to refer to that genus of services. The relevant
public comprises waste handling companies that are in need of
Ser. No. 77887354

6

repair and maintenance services for their machinery and
vehicles.
Having established the foundations of our determination, we
now look to the evidence of record. The term “mechanic” is
defined, in pertinent part, as “a person who repairs and
maintains machinery, motors, etc.” (www.dictionary.com).
Applicant submitted an informational flyer wherein
applicant identifies its five business branches. One of the
branches renders repair and maintenance services, and applicant
summarizes its maintenance division’s offerings under the
proposed mark:
Mechanic
Mechanic, Inc. is a specialized equipment
maintenance support facility serving the
Waste-Away Group companies. Mechanic
provides expertise in maintenance and
installation as well as outside repair for
specialized equipment. Mechanic has an in-
house weld shop, fully stocked parts
department and tire room. Mechanic is
available for specialized equipment
installation and repair of commercial and
industrial customers. At Mechanic, “we keep
the compactors compacting and the trucks
trucking.” (emphasis in original).

There also are several Internet articles about mechanics
and the services they render in the waste management industry.
The articles include the following:
The mechanic is one of the waste management
jobs operating behind the scenes to keep the
fleet of waste management trucks and service
vehicles running. The mechanic will often
Ser. No. 77887354

7

be employed full time for truck repairs and
truck inspections. The size of the waste
management fleet may depend on the size of
the service area and the number of trucks in
the fleet.
(www.wisegeek.com)

The Compactor Company operations personnel
consist of professionally trained mechanics,
certified welders and experienced management
personnel. Our mechanics are well versed in
dealing with refuse repair and service. We
provide service and installation; complete
roll off equipment; and fabrication and
repairs.
(www.thecompactorcompany.com)

Let our staff of qualified mechanics extend
the life of your refuse vehicle....MAWS is
your service provider for problem equipment
or preventive or annual maintenance
inspections. Servicing ALL BRANDS of the
following: Front Loaders, Rear Loaders,
Roll-Offs, Hook Lifts, Sweepers.
(www.mawaste.com)

Premier Waste and Recycling operates a large
vehicle fleet that provides waste disposal
and recycling services throughout the
Midwest....Premier Waste also has a team of
skilled mechanics on-site to handle
maintenance and repairs on vehicles and
equipment, keeping our trucks and equipment
in excellent working condition.
(www.premierwaste.net)

Mechanics who repair garbage trucks and
recycling equipment serving most of Alameda
County went on strike over wages early today
in a move that could hobble trash pickups
throughout the county.
(www.articles.sfgate.com)

Mechanic....Our technicians, working under
limited supervision, perform preventative
maintenance, run inspections and diagnostic
Ser. No. 77887354

8

tests, and repair a variety of vehicle and
equipment.
(www.greatjobs.net)

In some ways, garbage trucks are just like
any other truck or vehicle on the road.
They need their oil changed, their batteries
installed, and their spark plugs replaced.
As a Garbage Truck Mechanic, you’re the one
who does these basic tasks, and more.
(www.insidejobs.com)

The evidence includes excerpts of third-party websites of
entities that are in the waste management industry and seeking
mechanics to repair and maintain their machinery. As for
example, Republic Services, Inc., a solid waste collection and
disposal company, seeks a “Truck Mechanic” to repair and
maintain equipment. (www.careerbuilder.com). Two other
representative job postings of third parties are set forth
below:
SOLID WASTE EQUIPMENT MECHANIC III. This is
highly skilled work at the master level in
the mechanical repair, maintenance,
remanufacturing and reconditioning of
gasoline or diesel powered solid waste
collection equipment.
(www.stpete.org)

Truck Mechanic
We have a Mechanic/Technician A (CDL)
position open in Amarillo, Texas. POSITION
SUMMARY: performs repairs and maintenance
on recycling equipment, compactors, Yellow
Equipment (front end loaders, forklifts,
skid steers) and light trucks to maximize
safe and productive operations.
(www.careerbuilder.com)

Ser. No. 77887354

9

As noted earlier, applicant contends that the evidence of
record goes to show only that the term “mechanic” is used to
refer to a person who performs certain services, not the
services themselves. Thus, according to applicant, although the
public may understand the term “mechanic” to mean someone who
repairs and maintains equipment, there is no evidence to
establish that the public understands the term “mechanic” to be
a generic name for such services. The examining attorney
contends, on the other hand, that the evidence shows that the
relevant public would understand the designation “mechanic” to
identify repair and maintenance services.
The central focus of applicant’s repair and maintenance
activities is the offering of the services of a mechanic. To
state the obvious, mechanics are necessarily an integral part of
repair and maintenance services for waste handling equipment.
That is to say, an integral part of applicant’s identified
services concerns offering the services of their mechanics;
repair and maintenance services and the mechanics who render
them are inextricably intertwined, and one does not exist
without the other. Thus, we find that members of the relevant
public, namely waste handling entities, would readily understand
the proposed mark MECHANIC to identify repair and maintenance
services which, by necessity, are rendered by a mechanic.
Because there is relevant precedent, we find applicant’s
Ser. No. 77887354

10

argument unavailing. See In re Reed Elsevier Properties Inc.,
482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007), aff’g 77 USPQ2d
1649 (TTAB 2005) (LAWYERS.COM is generic for “providing an
online interactive database featuring information exchange in
the fields of law, legal news and legal services”). See also In
re 1800Mattress.com IP, LLC, supra (MATTRESS.COM is generic for
“online retail store services in the field of mattresses, beds,
and bedding”); and In re Hotels.com, L.P., 573 F.3d 1300, 91
USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM is generic for
“providing information for others about temporary lodging; [and]
travel agency services, namely, making reservations and bookings
for temporary lodging for others by means of telephone and the
global computer network”). In this case, the evidence shows
that the term “mechanic” is necessarily used when repair and
maintenance services are mentioned. In this regard, the Board
previously has held that a term which is the name of the
provider of goods or services is also generic of those goods or
services. See, e.g., In re E.I. Kane, Inc., 221 USPQ 1203 (TTAB
1984) (OFFICE MOVERS, INC. is incapable of distinguishing office
facilities moving services); In re Career Employment Services,
Inc., 219 USPQ 951 (TTAB 1983) (THE PROFESSIONAL HEALTH CARE
PEOPLE is generic when used in connection with providing
temporary employment services for nurses, nurses aids and other
medical personnel); and In re Computer Store, Inc., 211 USPQ 72
Ser. No. 77887354

11

(TTAB 1981) (THE COMPUTER STORE for computers and computer book
outlet services is incapable of registration).
Given the widespread use of the term “mechanic” in
connection with repair and maintenance services, the term is
incapable of distinguishing applicant’s services from the same
or similar services of others. Accordingly, we conclude that
the proposed mark MECHANIC is generic for applicant’s repair and
maintenance services.
Decision: The refusal to register on the Supplemental
Register is affirmed.