Scrap-It, LLC

OCR transcription for search; preserved printed pages are authoritative

This opinion is not a
precedent of the TTAB

Mailed: August 6, 2026

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

In re Scrap-It, LLC

Serial No. 98080185

Bobby W. Braxton, of Braxton IP PLLC,
for Scrap-It, LLC.

Andrea Cornwell, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.

Before Thurmon, Elgin, and Casagrande, Administrative Trademark Judges.

Opinion by Casagrande, Administrative Trademark Judge:

Applicant Scrap-It, LLC, applied to register the composite mark

SCRAP-IT

WASTE MANAGEMENT

A GREENER SOLUTION

on the Principal Register for goods ultimately identified as

“downloadable software application for mobile phones for scheduling debris removal

Serial No. 98080185
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services,” in International Class 9.1 The application was refused registration for two
reasons:
(1) under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), due
to likelihood of confusion with the standard-character mark SCRAP-IT!
(standard characters) for “Software as a service (SAAS) services
featuring software for connecting customers wanting items removed
from a location with companies and people that can haul away the
items,” in International Class 42;2 and
(2) under Sections 1 & 45 of the Act, 15 U.S.C. §§ 1051 & 1127,
because the specimens Applicant submitted do not display the applied-
for mark being used in commerce in connection with the identified goods.
After final refusal,3 Applicant requested reconsideration and appealed.4 We
suspended the appeal and remanded to the Examining Attorney to consider the
reconsideration request.5 After the request was denied,6 the appeal resumed.7 Both
1 Application Ser. No. 98080185 was filed on July 11, 2023, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), claiming a date of first use anywhere and in commerce
of August 13, 2019. The mark is described as follows: “The mark consists of a goat with horns
sitting atop a cliff to the left of the terms ‘SCRAP-IT’ above the underlined words ‘WASTE
MANAGEMENT’ above the words ‘A GREENER SOLUTION’.” The words “WASTE
MANAGEMENT” are disclaimed, and color is not claimed as a feature of the mark.
2 Registration No. 6531294 issued on October 19, 2021.
3 See May 3, 2025, Final Office Action. Citations to specific pages of prosecution filings are
to .pdf-format versions of the documents as downloaded from the USPTO’s TSDR electronic
trademark docketing system. There were other refusals and requirements during
prosecution, but they were resolved.
4 See November 3, 2025, Request for Reconsideration; Notice of Appeal; 1 TTABVUE.
References to the briefs and record cite to the Board’s TTABVUE electronic docket system.
The number preceding “TTABVUE” represents the docket number of the filing in TTABVUE
and any number immediately following “TTABVUE” is the specifically-cited page(s), if any.
5 See 2 TTABVUE.
6 See November 26, 2025, Denial of Reconsideration (also at 4 TTABVUE).
7 See 5 TTABVUE.

Serial No. 98080185
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Applicant and the Examining Attorney filed appeal briefs.8 Applicant filed a reply
brief.9 For the reasons explained below, we affirm the refusal to register.
PRELIMINARY MATTER
Applicant’s appeal brief includes this statement: “Applicant requests remand.
Applicant respectfully submits there is good cause to remand the mark [sic] for
additional consideration.”10 Trademark Rule 2.142(d)(1), 37 C.F.R. § 2.142(d)(1),
permits an applicant to file a request for a remand to “introduce additional evidence,”
but Applicant does not identify, even generally, what additional evidence it wants to
introduce. We also will entertain a request for a remand to amend an application, in
some cases, but Applicant does not mention a desire to amend. As the TBMP makes
plain: “No matter what the purpose, the request for remand must include a showing
of good cause.” TBMP § 1209.04 (citations omitted). A showing of good cause requires
more than a statement, with no explanation, that good cause exists. Applicant has
not shown good cause, so the remand request is denied.11
ANALYSIS
We begin with the Section 2(d) refusal.
8 See 6 TTABVUE (Applicant’s brief); 8 TTABVUE (Examining Attorney’s brief).
9 See 9 TTABVUE.
10 See 6 TTABVUE 3.
11 Conclusory, boilerplate requests like this are essentially useless. They’re not developed
enough to demonstrate good cause and, likely, to preserve the issue for appeal. Cf. Fresenius
USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1296 (Fed. Cir. 2009) (“If a party … presents
only a skeletal or undeveloped argument to the trial court, we may deem that argument
waived on appeal … .”) (citations omitted).

Serial No. 98080185
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I. The Section 2(d) refusal
As mentioned earlier, the application was finally refused due to a likelihood of
confusion with the standard-character registered mark SCRAP-IT! for “Software as
a service (SAAS) services featuring software for connecting customers wanting items
removed from a location with companies and people that can haul away the items.”
A. Section 2(d) generally
Section 2(d) of the Trademark Act prohibits registration of a mark that “so
resembles a mark registered in the Patent and Trademark Office … as to be likely,
when used on or in connection with the goods of the applicant, to cause confusion, or
to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). We determine whether confusion
is likely by analyzing all probative facts in evidence relevant to the likelihood-of-
confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
1361 (CCPA 1973). See, e.g., In re Charger Ventures LLC, 64 F.4th 1375, 1379 (Fed.
Cir. 2023). Though du Pont lists thirteen numbered factors (some with subparts), we
generally address only those that are relevant and material to the case before us, see,
e.g., Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1241 (Fed. Cir. 2004); Octocom
Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 943 (Fed. Cir. 1990).
Typically, these are the factors addressed in the briefs and on which there is relevant
evidence in the record. See, e.g., Dollar Fin. Grp., Inc. v. Brittex Fin., Inc., 132 F.4th
1363, 1371-72 (Fed. Cir. 2025); Cunningham v. Laser Golf Corp., 222 F.3d 943, 946-
47 (Fed. Cir. 2000). We then weigh our findings on these factors to determine if, on

Serial No. 98080185
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balance, confusion is likely. See, e.g., Charger Ventures, 64 F.4th at 1381; In re
Majestic Distilling Co., 315 F.3d 1311, 1319 (Fed. Cir. 2003).
B. Comparison of the marks
The first likelihood-of-confusion factor assesses “[t]he similarity or dissimilarity
of the marks in their entireties as to appearance, sound, connotation and commercial
impression.” du Pont, 476 F.2d at 1361. Because the comparison of the marks is
always an important inquiry, see, e.g., Herbko Int’l, Inc. v. Kappa Books, Inc., 308
F.3d 1156, 1165 (Fed. Cir. 2002); Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 1103 (CCPA 1976), we next set forth the parameters governing how we
compare the marks.
We assess marks on the basis of their “appearance, sound, connotation and
commercial impression.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
1340 (Fed. Cir. 2015) (citation omitted); accord In re i.am.symbolic, llc, 866 F.3d 1315,
1324 (Fed. Cir. 2017). Similarity in all aspects is not required, however. This factor
supports refusal “if the similarity in either form, spelling or sound alone is likely to
cause confusion.” Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732 (CCPA
1968) (citation omitted); see also Hancock v. Am. Steel & Wire Co., 203 F.2d 737, 740
(CCPA 1953) (“it is proper to consider [the marks’] appearance, sound and meaning
… but a combination of all three factors need not necessarily exist”) (cleaned up;
citations omitted).
We do not compare the marks side-by-side, as though in a laboratory. Rather, we
keep in mind both that consumers depend on their recollection of marks to which

Serial No. 98080185
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they’ve previously been exposed and that their memories are fallible. See, e.g., In re
St. Helena Hosp., 774 F.3d 747, 751 (Fed. Cir. 2014); Franklin Mint Corp. v. Master
Mfg. Co., 667 F.2d 1005, 1007 (CCPA 1981).
While we compare marks in their entireties, see, e.g., Oakville Hills Cellar, Inc. v.
Georgallis Holdings, LLC, 826 F.3d 1376, 1380 (Fed. Cir. 2016), sometimes “one
feature of a mark may be more significant than another, and it is not improper to give
more weight to this dominant feature in determining the commercial impression
created by the mark,” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
1368 (Fed. Cir. 2012) (citations omitted).
Finally, “[s]imilarity is not a binary factor but is a matter of degree.” St. Helena
Hosp., 774 F.3d at 752 (citation omitted). “The proper test is … whether the marks
are sufficiently similar in terms of their commercial impression such that persons
who encounter the marks would be likely to assume a connection between the
parties.” In re i.am.symbolic, llc, 866 F.3d 1315, 1323 (Fed. Cir. 2017) (citation
omitted); see also Phillips Petroleum Co. v. Knox Indus. Corp., 277 F.2d 945, 947
(CCPA 1960) (“The issue is whether the marks are confusingly similar, not whether
they are identical.”) (citation omitted).
Here, the mark in the cited registration is SCRAP-IT! in standard characters.
Applicant’s mark is .

Serial No. 98080185
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The most prominent and first-listed literal element of Applicant’s mark is SCRAP-
IT, which is essentially identical to the registered mark.12 Applicant emphasizes the
additional wording after SCRAP-IT in its mark,13 which does create visual and aural
distinctions between the marks. But, generally, first terms in marks tend to
contribute more than terms that follow in creating a mark’s commercial impression,14
especially when the following terms are disclaimed, descriptive terms.15 Similarly,
terms appearing in significantly smaller-sized typefaces (like the additional terms
Applicant’s mark contains) tend to contribute less to a mark’s overall commercial
impression.16 Here, SCRAP-IT appears in a significantly bigger typeface than the
12 Applicant notes the exclamation point, see 6 TTABVUE 6, but does not argue that it
changes the meaning of “SCRAP-IT” in the cited registration to something other than what
“SCRAP-IT” means in Applicant’s mark. See, e.g., St. Helena Hosp., 774 F.3d at 752 (where
an exclamation point did not change the meaning of the words to which it was appended, it
did “not affect the commercial impression of [the] mark”) (citation omitted).
13 See 6 TTABVUE 6, 7.
14 See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1303 (Fed. Cir. 2018) (“The identity of
the marks’ initial two words is particularly significant because consumers typically notice
those words first.”) (citations omitted); Edom Lab’ys, Inc. v. Llichter, No. 91193427, 2012 WL
1267961, at *7 (TTAB 2012) (“The term CHIRO, as the first part of opposer’s mark, is most
likely to be impressed upon the mind of a purchaser and remembered.”) (cleaned up, citation
omitted); see also Sabhnani v. Mirage Brands, LLC, No. 92068086, 2021 WL 6072822, at *18
(TTAB 2021) (observing the “penchant of consumers to shorten marks and drop the non-
source-identifying word”) (cleaned up; citations omitted).
15 See, e.g., Citigroup Inc. v. Cap. City Bank Grp., Inc., 637 F.3d 1344, 1351 (Fed. Cir. 2011)
(“CCB’s applications disclaim BANK and when a mark consists of two or more words, some
of which are disclaimed, the word not disclaimed is generally regarded as the dominant or
critical term.”) (citation omitted); Century 21 Real Estate Corp. v. Century Life of Am., 970
F.2d 874, 876 (Fed. Cir. 1992) (Board correctly found that “Century” is the “dominant element
of CENTURY LIFE OF AMERICA due to applicant’s disclaimer of the rest of its mark” and
because “upon encountering each mark, consumers must first notice this identical lead
word”).
16 See, e.g., In re Coors Brewing Co., 343 F.3d 1340, 1344 (Fed. Cir. 2003) (where the “Blue
Moon Brewing Co.” appeared “at the bottom of the mark in significantly smaller font, it was
reasonable for the Board to find that those words do not significantly contribute to
distinguishing the two marks”); Rocket Trademarks Pty Ltd. v. Phard S.p.A., No. 91172486,

Serial No. 98080185
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terms that follow (“WASTE MANAGEMENT A GREENER SOLUTION”), which
include the disclaimed descriptive term “WASTE MANAGEMENT.”
Applicant also notes “the prominent Goat logo.”17 This a visual difference, to be
sure. We note, however, that words tend to contribute more to the commercial
impression of word+design marks because the words are what consumers use when
orally talking or asking about a brand and what they hear when the brand is spoken
to them. See, e.g., Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium
Sports, S.L.U., 797 F.3d 1363, 1371 (Fed. Cir. 2015); In re Viterra Inc., 671 F.3d 1358,
1366 (Fed. Cir. 2012); Giant Food, Inc. v. Nation’s Foodserv., Inc., 710 F.2d 1565, 1571
(Fed. Cir. 1983).18 Applicant offers no evidence that consumers’ main commercial
take-away of its mark is the goat logo as opposed to the prominent literal element
SCRAP-IT.
2011 WL 810221, at *8 (TTAB 2011) (“The term ZU appears significantly larger and very
prominently above the smaller font-sized ELEMENTS. ZU visually dominates applicant’s
mark and, consequently, is the term that will most likely be impressed in the minds of
consumers.”).
17 See 6 TTABVUE 6.
18 Accord Jansen Enters., Inc. v. Rind, No. 92042871, 2007 WL 809857, at *5 (TTAB 2007)
(word “IZZY’S” found to be dominant element in a composite mark that included a large boy
design and a Brooklyn Bridge design because it appeared in a larger typeface than the
disclaimed words “The Authentic Flavor Brooklyn Bagels Kosher,” and all of these other
elements were “unlikely to be used in calling for the services”).
Past decisions have noted that sound may take on special significance depending on the
communication trends of the day. See, e.g., TBC Corp. v. Holsa, Inc., 126 F.3d 1470, 1472
(Fed. Cir. 1997) (“And particularly we feel that in this age of business over the telephone and
advertising on TV and radio the close similarity in sound between GRAND SLAM and
GRAND AM would be likely to result in mistake if not confusion.”); Traders Oil Mill Co. v.
Lever Bros. Co., 100 F.2d 249, 251 (CCPA 1939) (“In these days of radio advertising the sound
of trade-marks has become very important.”). These days, podcasts are a fast-growing
medium in which advertisements are heard.

Serial No. 98080185
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Thus, overall, while the marks are not identical, we find them to be very similar.
C. Comparison of the goods and services
The second likelihood-of-confusion factor assesses “[t]he similarity or dissimilarity
and nature of the goods or services as described in an application or registration.” du
Pont, 476 F.2d at 1361. This, along with the comparison of the marks, is a key
consideration. Federated Foods, 544 F.2d at 1103 (“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.”). We compare the services
as they are set forth in the applications and registration, see, e.g., Detroit Athl., 903
F.3d at 1307; i.am.symbolic, 866 F.3d at 1325, focusing on how consumers perceive
the respective goods/services. See, e.g., St. Helena Hosp., 774 F.3d at 752 (the second
factor “considers whether the consuming public may perceive the respective goods
and services of the parties as related enough to cause confusion about the source or
origin of the goods and services”) (cleaned up; citations omitted).
The first stop in any comparison of the goods/services is the identifications in the
application and the registration. Here, Applicant’s goods are “downloadable software
application for mobile phones for scheduling debris removal services.” The cited
registration covers “Software as a service (SAAS) services featuring software for
connecting customers wanting items removed from a location with companies and
people that can haul away the items.”

Serial No. 98080185
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The March 21, 2024, Nonfinal Office Action, found—and the Examining Attorney
asserts in her brief19—that Applicant’s goods and the services in the cited registration
are legally identical.
Applicant provides a downloadable mobile app with software that permits
customers to connect with someone who will haul their debris away. The service in
the cited registration provides software to connect customers with someone who will
haul the customers’ “items”—a broad term that includes debris—away. Both involve
facilitating a customer to arrange the time and place of the service with a service
provider. And both are in the same field: scheduling hauling away unwanted items
or debris. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1383 (Fed. Cir.
2006) (“[I]t was proper for the board to ground its determination of relatedness in the
fields for which the goods are created, rather than the media format in which they
are delivered.”).
That the USPTO technically classifies one as a good and the other as a service is
of no moment. “Classification is solely for the ‘convenience of Patent and Trademark
Office administration,’ 15 U.S.C. § 1112, and ‘is wholly irrelevant to the issue of
registrability under section 1052(d), which makes no reference to classification.’”
Detroit Athl., 903 F.3d at 1307 (quoting Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971,
975 (Fed. Cir. 1993)). And as the Federal Circuit has observed, “with modern
technology, the line between services and products sometimes blurs.” In re Jobdiva,
Inc., 843 F.3d 936, 940 (Fed. Cir. 2016).
19 See 8 TTABVUE 9.

Serial No. 98080185
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Still, we’re not persuaded, at least on this record, that the goods in the application
are legally identical to the SAAS in the registration. They are functionally equivalent,
but technically they are not the same.
But the goods and services “need not be identical—the evidence need only
establish that the respective products [and/or services] are related in some manner
and/or that the circumstances surrounding their marketing are such that they could
give rise to the mistaken belief that they emanate from the same source.” Apex Bank
v. CC Serve Corp., 156 F.4th 1230, 1234 (Fed. Cir. 2025) (cleaned up; citation
omitted). Here, the record contains evidence that several companies offer the goods
in the application and the services in the cited registration under the same mark.20
This is evidence that consumers perceive the goods and services to be related. See,
e.g., Naterra Int’l, Inc. v. Bensalem, 92 F.4th 1113, 1117 (Fed. Cir. 2024); Detroit Athl.,
903 F.3d at 1306; Hewlett-Packard, 281 F.3d at 1267. The more consumers are
exposed to companies offering good X and service Y under one mark, the more they
tend to see those goods and services as related, in the sense that they emanate from
a single source.
In the same vein, evidence that third parties have registered the same mark for
both types of goods/services is relevant. See, e.g., Made in Nature, LLC v. Pharmavite
LLC, No. 91223352, 2022 WL 2188890, at *24 (TTAB 2022); In re Country Oven, Inc.,
20 The following companies offer scheduling of trash/debris removal via their websites and
via their mobile phone apps: Taskrabbit, October 9, 2024, Nonfinal Office Action, at TSDR 9-
14; Thumbtack, id. at 16-24; Yelp, id. at 25-53; Frontier Waste Solutions, November 26, 2025,
Denial of Reconsideration, at TSDR 4-17; Junk Shot, id. at 19-30.

Serial No. 98080185
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No. 87354443, 2019 WL 6170483, at *5 (TTAB 2019); see also In re Halo Leather Ltd.,
735 F. App’x 722, 727 (Fed. Cir. 2018). Here again, the record reflects four use-based
third-party registrations covering the goods of Applicant as well as the service of the
registrant.21
Applicant does not address this evidence of third parties using or registering the
same mark for the goods in the application and the services in the cited registration.
Applicant’s only rejoinder to the relatedness evidence adduced by the Examining
Attorney amounts to a non sequitur. It argues:
It is first noted that Applicant owns Registration No.
6199149. Registration No. 6199149 was registered and
coexisted with the Cited Registration (Reg. No. 6531294).
Thus, Applicant respectfully submits that this serves as
proof that the goods and services of the applied for mark
are dissimilar when compared to Reg. No. 653129422
The services in Applicant’s Registration No. 6199149 are: “Business consulting,
management, and planning services in the field of field of debris removal from sites
21 See RUBICON (Reg. No. 5863489), November 26, 2025, Denial of Reconsideration, at
TSDR 31-32; VALET LIVING RESIDENT (Reg. No. 7443648), id. at 33-35; ROLL-OFF
DONE RIGHT (Reg. No. 6125617), id. at 36-37; JOBATORY (Reg. No. 7317624), id. at 38-39.
22 6 TTABVUE 7. Applicant attached the status and title copy of its registration to its appeal
brief. “As a general rule, the Board discourages attaching [evidence] to briefs.” In re Lorillard
Licensing Co., No. 76680117, 2011 WL 3212246, at *2 (TTAB 2011) (citations omitted). This
is especially unnecessary when the attached evidence is, as here, already in the record. See
April 4, 2025, Response to Office Action, at TSDR 9-13. Because everything in the prosecution
record is automatically part of the appeal, see, e.g., In re Thor Tech, Inc., No. 78487208, 2007
WL 3282064, at *1 n.3 (TTAB 2007) (“matter submitted during examination … is already of
record as part of the application file”); In re Caterpillar Inc., No. 74404325, 1997 WL 424965,
at *1 (TTAB 1997) (materials “submitted during the prosecution of the application … properly
form part of the appeal record”), this just creates more work for the Board, which has to
determine whether the attached evidence is, in fact, in the prosecution record or is new
evidence that cannot be considered, see, e.g., In re Info. Builders Inc., No. 87753964, 2020 WL
2094122, at *2 n.4 (TTAB 2020); In re Michalko, No. 85584271, 2014 WL 2531202, at *1
(TTAB 2014).

Serial No. 98080185
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of building construction, renovation, restoration and demolition.” We fail to see how
the existence of another registration with services different from those in either the
application or the cited registration “serves as proof” that relevant consumers of the
goods in the application here will perceive those goods as dissimilar to the services in
the cited registration.
In short, the evidence here shows that the respective goods and services are very
closely related, and we so find.
D. Comparison of the channels of trade and classes of customers
Two more factors that may bear on whether confusion is likely are “[t]he similarity
or dissimilarity of established, likely-to-continue trade channels” and “buyers to
whom sales are made.” du Pont, 476 F.2d at 1361; In re Shell Oil Co., 992 F.2d 1204,
1207 (Fed. Cir. 1993) (“It is relevant to consider the degree of overlap of consumers
exposed to the respective services … .”). Here, the evidence placed in the record by
the Examining Attorney of third-party use (which we discussed in the preceding
subsection) is relevant. It shows that third parties operating in the trash-removal
field offer the goods in the application and the services in the cited registration to
customers via their respective websites. This shows that the respective goods and
services are offered to the same classes of customers through the same channel of
trade.23 See Charger Ventures, 64 F.4th at 1382 (affirming the Board’s finding of
overlap in trade channels where “the record shows that companies are known to offer
both residential and commercial services under the same mark and, often, on the
23 See supra fn. 20 and accompanying text.

Serial No. 98080185
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same website”); On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1087 (Fed.
Cir. 2000) (“[T]he two services at issue are offered through the same channel, i.e., the
Internet. Furthermore, the record shows that the two companies target similar
consumers and employ similar advertising and marketing channels. Therefore, we
conclude that substantial evidence supports the TTAB’s finding on this issue.”); Made
In Nature, 2022 WL 2188890, at *26 (TTAB 2022) (finding overlap in trade channels
and classes of customers based in part on evidence that third parties offered the
respective goods online).
When it comes to the final weighing and balancing of the factors, these two factors
will lend some measure of additional support to a conclusion that confusion is likely.
E. Applicant’s other argument
Applicant, while contesting the relatedness of the goods and services, argues that
the fact that its Registration No. 6199149 and the cited registration have co-existed
on the Principal Register since 2021 means that the application should be allowed.24
In some cases, we have analyzed arguments of this type under the thirteenth du Pont
factor, which allows us to assess “[a]ny other established fact probative of the effect
of use” on the issue of whether confusion is likely. See du Pont, 476 F.2d at 1361. For
example, in In re Strategic Partners, Inc., No. 77903451, 2012 WL 1267930 (TTAB
2012)—a decision cited by the Examining Attorney in response to this argument25—
we found confusion unlikely where the applicant’s existing registration was for a
24 See 6 TTABVUE 8-9.
25 See 8 TTABVUE 10.

Serial No. 98080185
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mark nearly identical to the one in the application before the Board and that the
goods were the same. Id. at *3. Here, however, as pointed out above, the services in
Applicant’s existing registration are different from the goods in the current
application. For this reason, we do not think Applicant’s reliance on its prior
registration says anything about whether confusion is likely as to the application
before us. This consideration, whichever du Pont factor it falls under, is neutral.
F. Weighing the findings on the relevant factors together
Having made findings on each of the relevant likelihood-of-confusion factors, our
final step is to weigh those findings together to determine if they indicate that
confusion is likely. See, e.g., Charger Ventures, 64 F.4th at 1384.
In this case, the marks are very similar and the services are very closely related.
These are two key confusion factors. See, e.g., Federated Foods, 544 F.2d at 1103 (“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.”); In re Max
Cap. Grp. Ltd., No. 77186166, 2010 WL 22358, at *1 (TTAB 2010) (“In any likelihood
of confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods and/or services.”) (citations omitted). Here,
they both support a conclusion that confusion is likely. Further, the classes of
customers and trade channels overlap. No factor supports the opposite conclusion. On
the record in this case, we have no difficulty concluding that confusion is likely as
between the mark in the application and that in the cited registration.
Thus, registration must be refused under Section 2(d).

Serial No. 98080185
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II. The specimen refusal
Though the Section 2(d) refusal is sufficient to dispose of this appeal, in the
interest of completeness, we will now address the specimen refusal under Sections 1
& 45.
As set forth above, the mark that Applicant seeks to register is
. When Applicant filed its application, it submitted a specimen
of use consisting of a screenshot of a third-party webpage (the Google Play app store)
that depicts an app available for download:

Serial No. 98080185

Scrap-It - Apps on Google Play https://play.google.com/store/apps/details ?id=cc
| Google Play Qa e
Games Apps Movies & TV Books Kids

fam = Scrap-lit
A Scrap-It Waste Management

50+ €

Downloads Everyone ©

Install

[] Add to wishlist

[OG You don't have any devices

‘4

About this app 2

We offer a wide range of waste and cleaning services on construction build sites to

-17-

Serial No. 98080185
- 18 -
The Examining Attorney rejected this original specimen, explaining that the
“[m]ark shown on drawing does not match mark on specimen.”26 In response,
Applicant submitted a “substitute specimen”27 depicting the mark set forth in the
application, consisting of screenshots of Applicant’s website, the pertinent excerpts of
which are depicted below:
26 March 21, 2024, Nonfinal Office Action, at TSDR 5.
27 Sept. 23, 2024, Response to Nonfinal Office Action, at TSDR 9.

Serial No. 98080185

9/18/24, 9:18 AM

Scrap-it | Waste Management | Dallas

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28

See id. at 12-14.

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Serial No. 98080185
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The Examining Attorney rejected this substitute specimen as well, but for a
different reason: the substitute specimen “is not acceptable as a display associated
with the goods” because a “webpage or catalog display specimen (1) must show use of
the mark directly associated with the goods and (2) such use must be of a point-of-
sale nature. 37 C.F.R. §2.56(b)(1).”29 The Examining Attorney explained that “such
material is mere advertising, which is not acceptable as a specimen for goods.”30
On appeal, Applicant, focusing solely on the substitute specimen, argues as
follows:
Applicant notes that the “Book Debris Removal” button
seeks contact information. There is even a cart for
purchasing. Applicant submits that the “book” shows that
the user can “book & rebook online or on our app”. It even
shows a picture of the user holding an application.
Therefore, Applicant submits that the specimen
demonstrates the goods [sic].31
The specimen requirement is integrally linked to the Trademark Act’s statutory
“use in commerce” requirement. Section 1(a) of the Act provides for registration of
marks “used in commerce.” 15 U.S.C. § 1051(a). Section 45’s definitional provisions
provide that, as to goods, “use in commerce” occurs when the mark “is placed in any
manner on the goods or their containers or the displays associated therewith or on
the tags or labels affixed thereto, or if the nature of the goods makes such placement
impracticable, then on documents associated with the goods or their sale.” 15 U.S.C.
§ 1127.
29 See October 9, 2024, Nonfinal Office Action, at TSDR 5-6.
30 See id. at 6 (citations omitted).
31 See 6 TTABVUE 9.

Serial No. 98080185
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The good identified in the application is a “downloadable software application for
mobile phones for scheduling debris removal services.” In evaluating whether the
substitute specimen, which displays pages from Applicant’s website (not from a
mobile phone app), passes muster as a specimen for this identified good, it is crucial
to determine whether the webpages constitute a “display[ ] associated” with the app,
see 15 U.S.C. § 1127, or something else. The Federal Circuit has made clear that, in
doing this, it is important to distinguish such a display from “mere advertising,”
which “is not enough to qualify as such a display.” In re Siny Corp., 920 F.3d 1331,
1335-36 (Fed. Cir. 2019) (citing, inter alia, Powermatics, Inc. v. Globe Roofing Prods.
Co., 341 F.2d 127, 130 (CCPA 1965)).
We find that the webpages are mere advertising. They cannot be considered “point
of sale” materials, which would qualify as a display associated with the good, see
Trademark Rule 2.56(b)(1), 37 C.F.R. § 2.56(b)(1), because the webpages contain no
means to purchase, order, or download the app. See Siny Corp., 920 F.3d at 1336-37
(holding that the Board properly found that the webpage was insufficient as a
specimen because it lacked “information … essential to a purchasing decision, such
as a price or range of prices for the goods, the minimum quantities one may order,
accepted methods of payment, or how the goods would be shipped” and provided no
“means of ordering the product”). As Applicant notes, the webpages show a shopping
cart icon in the upper right corner of the first webpage, but there’s nothing on the
pages indicating that an app can be purchased and placed in the virtual cart. The
only thing that appears potentially amenable to being placed in the virtual cart is the

Serial No. 98080185
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adjacent button that says “Book Debris Removal.” But booking a service on a webpage
is not the same thing as clicking on something that would result in the download or
purchase of a mobile phone app for booking a service—which is the good at issue here.
Even together with the webpage’s invitation to “book & rebook online or on our
app” and the “picture of the user holding an application” on a mobile phone, the
specimen is insufficient to qualify as a “point of sale display” because it “requires
additional steps to consummate a sale” of the app.32 In re U.S. Tsubaki, Inc., No.
85267349, 2014 WL 986175, at *5 (TTAB 2014), cited with approval in Siny Corp.,
920 F.3d at 1336.
We find the substitute specimen fails to show the mark in use in commerce for
“downloadable software application for mobile phones for scheduling debris removal
services.”
Decision: We affirm the refusal on both grounds.
32 Had the original specimen—the Google Play page for downloading the app—used the
mark at issue here, it may well have qualified as a valid specimen. But it used marks other
than the mark in this application.