Waste-Bid.com, Inc.

Trademark Trial and Appeal Board

Sep 29, 2004

No. 76001834 (T.T.A.B. Sep. 29, 2004)

Mailed: September 29, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re WasteBid.com, Inc.
___________
Serial No. 76001834
___________
Mark B. Harrison and Jacqueline Levasseur Patt of Venable,
Baetjer, Howard & Civiletti for WasteBid.com, Inc.
Michael W. Baird, Trademark Examining Attorney, Law Office
116 (Meryl L. Hershkowitz, Managing Attorney).
____________
Before Seeherman, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
WasteBid.com, Inc. has filed an application to register
on the Principal Register the mark WASTEBID.COM for, as
amended, the following services:
“providing a website through which waste and
recycling collectors, processors and disposers may
submit bids to waste generators seeking to
purchase their services and related products,” in
International Class 35; and
“providing information via an Internet web site in
the fields of waste collection, recycling
collection, and waste disposal, to facilitate the
business to business purchasing of such services
and related equipment and materials through the
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76001834
2
Internet, and to facilitate electronic
negotiations between buying organizations and
their trading partners in these fields,” in
International Class 37.1
The Trademark Examining Attorney has issued a final
refusal to register, under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. 1052(e)(1), on the ground that applicant’s
mark is merely descriptive of its services.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
The Examining Attorney contends that “the compound term
WASTEBID merely indicates that applicant provides a web-
based forum for making bids on waste removal contracts, and
provides information in the field of waste removal bidding”
(brief, p. 1); that “the deletion of the space between the
terms ‘WASTE’ and ‘BID,’ and the addition of the non-
distinctive suffix ‘.COM’ did not significantly alter the
commercial impression of the wording [and] the relevant
purchasers would view the compressed wording as a domain
name and interpret the term accordingly” (brief, p. 3); and
that “applicant has simply selected two salient features of

1 Serial No. 76001834, filed March 16, 2000. No basis was originally
stated, but a declaration was subsequently submitted asserting a bona
fide intention to use the mark in commerce. On December 10, 2001,
applicant submitted an amendment to allege use and specimen of use.
Applicant alleges first use and use in commerce as of August 2000, and
the specimen is a printout from applicant’s web site. The application
includes, by amendment, a claim of ownership of Registration No.
2689708.
Serial No. 76001834
3
its services, the field of waste and the activity of
bidding, and combined the terms to form the Internet domain
‘WASTEBID.COM’ [the combination of which] is in no way novel
or incongruous, nor does it create a separate, non-
descriptive commercial impression” (brief, 5).
In support of his position, the Examining Attorney
submitted with its brief definitions, of which we take
judicial notice, from The American Heritage Dictionary of
the English Language (3rd ed. 1992) of “bid” as “an offer or
proposal of a price” and of “waste” as “garbage; trash”;
and, from The Computer Glossary (Alan Freedman, 9th ed.
2001) of “.com” as “a top level domain name, used as part of
an Internet address to indicate that the operator of the
identified Internet domain is a commercial entity” (brief,
p. 2). The Examining Attorney also submitted excerpts from
several third-party Internet web sites “to support his
assertion that companies do, in fact, bid on waste removal
contracts” (brief, p. 4).
Applicant contends that its mark is, at most,
suggestive; that “consumers are not ‘bidding’ on ‘waste’ as
the terms considered separately might suggest[;] in that
context, the mark would invoke an image of a heap of trash
for which customers are offering money to purchase” (brief,
pl 2); that “a consumer encountering applicant’s web site
would not immediately understand the nature and purpose of
Serial No. 76001834
4
the applicant’s services” (brief, p. 3); and that the
evidence does not support the Examining Attorney’s
contention that the mark is descriptive. Applicant asserts
that the definitions submitted by the Examining Attorney are
not the primary definitions of those terms and, thus, that
customers will not immediately know the nature of
applicant’s services. Applicant references its recently
issued registration for the mark shown below for essentially
the same services as are involved herein and argues that the
mark should also register and that, if any doubt exists,
such doubt should be resolved in favor of publication of the
mark for opposition.
2
The Examining Attorney asserts that this registration
is inapposite because it has a significant design element
and the words and design form a unitary commercial
impression, so that a disclaimer of the words would be
inappropriate.

2 Registration No. 2689708, issued February 25, 2003, for the same
services as those identified in the present application, namely,
“providing a web site through which waste and recycling collectors,
processors and disposers may submit bids to waste generators seeking to
purchase their services and related products,” and “providing
information via an Internet web site in the fields of waste collection,
recycling collection, and waste disposal, to facilitate the business to
business purchasing of such services and related equipment and materials
through the Internet, and to facilitate electronic negotiations between
buying organizations and their trading partners in these fields.”
Serial No. 76001834
5
Applicant’s Internet web site, which, along with a
trade show letter introducing the company, comprise the
specimens of record, includes the following statements
describing its business:
Q: What is WasteBid.com?
A: WasteBid.com is an on-line marketplace for the
buying of waste and recycling services,
equipment and products. Waste generators
[customers] post their waste and recycling
service requirements and pre-approved Service
Providers submit a bid. WasteBid.com also
provides other services, such as government RFP
postings, downloads of entire bidding
documents, and waste generation and recycling
reporting. For buying and selling equipment
and other products, WasteBid.com currently
offers an online auction and is developing a
comprehensive online store. WasteBid is also a
leading source for industry news and other
technical and regulatory information.
. . .
Using our “smart engine” technology, we analyze
your solid waste service needs and recycling
opportunities to maximize savings. We then get
competitive bids from pre-qualified service
providers. You choose the winner. You save
time and money.
Applicant’s specimen letter to trade conference
attendees includes the following statement:
The WasteBid website provides a venue for waste
and recycling collectors, processors, and
disposers (“Service Providers”) to bid waste
generators (“Generators”) seeking to purchase
these services and related products through
WasteBid’s Internet-based catalog, bidding,
auction and proposal systems.
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function, ingredient,
Serial No. 76001834
6
attribute or feature of the product or service in connection
with which it is used, or intended to be used. In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find that a mark is merely
descriptive, that the mark describe each feature of the
goods or services, only that it describe a single,
significant quality, feature, etc. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-
established that the determination of mere descriptiveness
must be made not in the abstract or on the basis of
guesswork, but in relation to the goods or services for
which registration is sought, the context in which the mark
is used, and the impact that it is likely to make on the
average purchaser of such goods or services. In re
Recovery, 196 USPQ 830 (TTAB 1977).
If, however, when the goods or services are encountered
under a mark, a multistage reasoning process, or resort to
imagination, is required in order to determine the
attributes or characteristics of the product or services,
the mark is suggestive rather than merely descriptive. See
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215
(CCPA 1978); and In re Atavio, 25 USPQ2d 1361, 1362 (TTAB
1992). To the extent that there is any doubt in drawing the
line of demarcation between a suggestive mark and a merely
Serial No. 76001834
7
descriptive mark, such doubt is resolved in applicant’s
favor. In re Atavio, supra at 1363.
The Examining Attorney bears the burden of showing that
a mark is merely descriptive of the identified goods or
services. See In re Merrill, Lynch, Pierce, Fenner, and
Smith Inc., 828 F.2d 21567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987).
There is no question that the “.COM” portion of the
mark is of no trademark significance as it is merely an
Internet domain name. Further, the terms “WASTE” and “BID”
are, separately, descriptive of aspects of applicant’s
services. However, we agree with applicant that several
mental steps are required to move from the combined term
WASTEBID.COM to an understanding of the nature of
applicant’s services. The combination of the two
individually descriptive words, WASTE and BID, into WASTEBID
results in an incongruous compound term. A prospective
purchaser must mentally reorder the words and add words to
make sense of the phrase, i.e., to understand that the
services involve submitting bids to dispose of waste.
Therefore, we conclude that the Examining Attorney has
not established that the term WASTEBID.COM when applied to
applicant’s services is merely descriptive; that some mental
processing or cogitation is required in order for purchasers
of and prospective customers for applicant’s services to
Serial No. 76001834
8
understand the significance of the term WASTEBID.COM as it
pertains to applicant’s services.
Decision: The refusal under Section 2(e)(1) of the Act
is reversed.