Trademark Daily Wrap up, TRADEMARK NEWS—TTAB: Composite mark for consulting services proceeds for registration; refusal affirmed for software services, (Oct 10, 2025)

By Ravindra Kumar Singh, B.L.

Applicant’s specimen was sufficient to establish use for consulting and planning services, but was confusable with an existing registration for software-based services.

In a non-precedential decision involving applications for registration of a composite mark—featuring an image of goat and the words “SCRAP-IT,” “WASTE MANAGEMENT,” and “A GREENER SOLUTION”—under two international classes, the Trademark Trial and Appeal Board (TTAB) delivered a mixed ruling. The Board reversed the refusal to register the mark for business consulting and planning services, finding that the applicant’s specimen sufficiently demonstrated actual use of the mark in commerce. However, it affirmed refusal of registration for software-based scheduling services, concluding that use of the same mark for software-as-a-service (SaaS) offerings was likely to cause confusion with an existing registration for a similar SCRAP-IT! mark covering related software (In re Scrap-It, LLC, Serial Nos. 98080167 & 98080224 (T.T.A.B. Oct. 8, 2025)).

Background. Scrap-It, LLC filed two applications seeking registration on the Principal Register for a composite mark consisting of a goat with horns sitting on a cliff beside the words “SCRAP-IT” above “WASTE MANAGEMENT,” followed by a line and the tagline “A GREENER SOLUTION.” The applicant disclaimed exclusive rights to “WASTE MANAGEMENT” and did not claim color as a feature.

The first application covered International Class 35 for “Business consulting, management, and planning services in the field of debris removal from sites of building construction, renovation, restoration, and demolition.” The second covered International Class 42 for “Providing temporary use of a non-downloadable web application for scheduling debris removal services.” Both applications claimed first use in commerce as of August 13, 2019.

The two applications were examined together by the same Trademark Examining Attorney. The Class 35 application was refused for failing to show use of the mark for the identified services. In contrast, the Class 42 application was refused under Section 2(d) of the Lanham Act for a likelihood of confusion with Registration No. 6531294 for SCRAP-IT! (standard characters), covering “Software as a service (SAAS) services featuring software for connecting customers wanting items removed with providers who can haul away such items.”

The applicant sought reconsideration and a remand to submit additional evidence, but the TTAB denied the request for lack of good cause and proceeded to decide both appeals together.

Specimen adequacy. The Board reversed the refusal of the Class 35 application, finding that Scrap-It’s specimen satisfied Section 1(a) of the Lanham Act. Relying on In re Bose Corp., 546 F.2d 893 (C.C.P.A. 1976), and In re Universal Oil Prods. Co., 476 F.2d 653 (C.C.P.A. 1973), the TTAB emphasized that specimens must show the mark “as actually used in commerce” in connection with the identified services.

The applicant’s specimen included website excerpts bearing the mark with statements such as “CUSTOM SERVICES FOR WASTE REMOVAL” and “We’ll work with you on your project to meet its needs,” demonstrating planning and consultation activities consistent with the identified services. The Board determined that this evidence created a clear association between the mark and the business consulting and planning functions described in the application.

Distinguishing In re Weiss, No. 88621608, 2024 WL 3617597 (T.T.A.B. 2024), where a mismatch between specimen and services justified refusal, the Board concluded that Scrap-It’s specimen directly reflected the services claimed. The refusal was therefore reversed.

DuPont analysis. The Board evaluated the likelihood of confusion under the framework set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973), considering each relevant factor for which there was evidence.

Similarity of the marks. The Board found the marks highly similar in appearance, sound, and meaning. Both included the identical term “SCRAP-IT,” which dominated the applicant’s mark visually and conceptually. Citing In re Detroit Athletic Co., 903 F.3d 1297 (Fed. Cir. 2018), and Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369 (Fed. Cir. 2005), the TTAB observed that the first and most distinctive word in a composite mark generally creates the dominant commercial impression.

The additional descriptive wording “WASTE MANAGEMENT A GREENER SOLUTION” and the goat logo did not significantly alter the mark’s impression. The Board cited Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344 (Fed. Cir. 2011) to reaffirm that disclaimed terms and minor design features carry limited weight in distinguishing marks. The TTAB concluded that the marks were “very similar,” weighing this factor strongly in favor of confusion.

Similarity of the services. The Board also held that the applicant's and registrant's services were legally identical, even though they were described differently. The applicant's "non-downloadable web application for scheduling debris removal" and the registrant's SaaS offering both provided online platforms connecting customers with service providers for waste or debris removal.

Citing De Walt, Inc. v. Magna Power Tool Corp., 289 F.2d 656 (C.C.P.A. 1961), the TTAB reiterated that services may be legally identical when their commercial functions overlap despite differences in phrasing. Marketplace evidence from platforms such as Thumbtack and Angi further confirmed that similar software tools perform both scheduling and connection functions within the same field.

Prior registration. Scrap-It argued that its existing registration for the mark in Class 35 (Reg. No. 6199149) had coexisted on the Principal Register with the cited SCRAP-IT! registration, suggesting that coexistence proved no likelihood of confusion. The Board rejected this argument, noting that the prior registration covered different services and did not control the outcome.

Relying on In re Cordua Restaurants, Inc., 823 F.3d 594 (Fed. Cir. 2016), the TTAB emphasized that each application must be independently evaluated and that past registrations cannot justify new approvals when confusion is likely.

Balancing of factors. After weighing the du Pont factors, the TTAB found that both the similarity of the marks and the identity of the services strongly favored a finding of confusion, with no evidence to the contrary. Thus, it ruled that the cumulative effect of similarities in marks and services supported a finding of likelihood of confusion.

The Case is Serial Nos. 98080167 & 98080224.

Judge: Casagrande. T.

Attorneys: Bobby W. Braxton (Braxton Perrone, PLLC) for Scrap-It, LLC. Andrea Cornwell for the USPTO.

Companies: Scrap-It, LLC

Cases: Trademark USPTO