George J. Hayden Inc.

Trademark Trial and Appeal Board

Dec 11, 2012

No. 77885554 (T.T.A.B. Dec. 11, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
December 11, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re George J. Hayden Inc.
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Serial No. 77885554
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Eric F. Wert of Flamm Walton PC for George J. Hayden Inc.

Rebecca L. Gilbert, Trademark Examining Attorney, Law Office 103 (Michael
Hamilton, Managing Attorney).
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Before Zervas, Wellington, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
George J. Hayden Inc. has applied to register on the Principal Register the
mark HAYDEN ELECTRIC in standard character form for “Electrical and
Communications Contractor Services,” in International Class 37.1 In response to a
requirement of the trademark examining attorney, applicant disclaimed the
exclusive right to use ELECTRIC apart from the mark as a whole. Applicant also
averred that the mark has become distinctive of applicant’s services through the

1 Application Serial No. 77885554, filed under Trademark Act § 1(a), 15 U.S.C. §1051(a), on
December 3, 2009, based on an allegation of first use anywhere and in commerce of 1975.
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applicant’s substantially exclusive and continuous use in commerce for at least the
five years immediately preceding its verified statement.
The examining attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, when
applied to its services, so resembles the mark HAYDEN HOMES, which is
registered on the Principal Register in standard character form for “Residential
building construction services,”2 as to be likely to cause confusion, or to cause
mistake, or to deceive. When the examining attorney made her refusal final,
applicant appealed. Applicant and the examining attorney have filed their briefs.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). The two key considerations in this case are the
similarities between the marks and the similarities between the services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976).
We turn first to the similarity or dissimilarity of the marks as to appearance,
sound, connotation and commercial impression. Du Pont at 567. Applicant
correctly urges us to avoid dissection of the marks, as our determination must be
based on a consideration of the marks in their entireties. In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). However, it is permissible to

2 Reg. No. 2871259, issued on August 10, 2004.
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give more or less weight to a particular feature of a mark, for rational reasons,
provided the ultimate conclusion rests on a consideration of each mark in its
entirety. National Data at 751. Viewing the marks HAYDEN ELECTRIC and
HAYDEN HOMES, we note that each contains a term that is descriptive or generic
with respect to the services for which it is used, i.e., ELECTRIC for electrical
contracting and HOMES for residential building construction. In each case, the
descriptive or generic term has been appropriately disclaimed. Such terms have
weaker ability to designate a single source of goods or services and, accordingly,
may be given reduced weight in reaching a conclusion regarding likelihood of
confusion. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1846 (Fed. Cir. 2000); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB
2001) (disclaimed matter is often “less significant in creating the mark’s commercial
impression”). Consequently, HAYDEN is the dominant portion of each mark. We
do note that, because of the difference between ELECTRIC and HOMES, the two
marks are, at least in part, different in sound and meaning. We will give further
consideration to these factors in our analysis below.
We next consider the similarity or dissimilarity of the services at issue. For
purposes of determining the scope of the services of applicant and registrant, we
look only to the services as they are identified in the applicant’s application and the
cited registration. Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Elbaum, 211 USPQ 639, 640
(TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ
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139 (CCPA 1958). The applicant contends that its customers are limited to “general
contractors (such as Registrant) or business owners.”3 We may not consider this
limitation, because there is no such limitation in the identification of applicant’s
services as set forth in its application.
The 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 sales
of the goods are directed.
Octocom at 1787.
Applicant seeks registration of its mark for all “Electrical and
Communications Contractor Services,” not merely such services offered to general
contractors and commercial enterprises. Virtually all modern buildings, including
residential, commercial, and industrial facilities, include electrical systems and
most are likely to include communications equipment and wiring. Applicant’s
services, as identified, include services that would be provided not only to general
contractors and business owners, but also to owners of single family homes, and
owners and managers of larger residential facilities such as apartment buildings,
condominiums, and multi-family structures.
The services identified in the cited registration are “Residential building
construction services.” Applicant contends that registrant “markets its services in
the states of Washington, Idaho and Oregon” and that registrant “does not, by itself,

3 Applicant’s brief at 5.
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provide electrical work of any kind, nor does it sell electrical supplies…. It does not
provide communications-related services such as running telecommunications
cables or otherwise.”4 As before, we cannot consider such limitations on the
registrant’s services. We must look to the registration itself, and not to extrinsic
evidence about the registrant’s actual services, customers, or channels of trade.
Elbaum at 640. There are no geographic restrictions in the cited registration and
the scope of protection is nationwide. In addition, electrical and communications
projects are not excluded in any way from the services covered by the registration.5
As noted above, all modern residential buildings include electrical wiring and
equipment and many would include communications wiring and equipment. It
would be impossible to construct a modern residence without providing installation
of electrical and communications wiring (which is the essence of applicant’s service).
Consequently, applicant’s services are included within the scope of the services
identified in the cited registration, and to that extent they are identical to
registrant’s services. We appreciate that many residential builders might not do
electrical work themselves. However, in those cases the builder would arrange for
an electrical contractor or subcontractor to perform the electrical work for the
builder’s customers. (Applicant itself refers to registrant as a type of customer to
which applicant offers its services.6) Accordingly, even if applicant’s services were

4 Applicant’s brief at 6.
5 We note, moreover, that the evidence relating to registrant’s services does not support
applicant’s contention that registrant does not, itself, provide electrical or communication
services.
6 Applicant’s brief at 5.
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not encompassed within the services of registrant, they must be considered closely
related.7
Our analysis indicates that customers for registrant’s services are also
customers of electrical contractors; and that a residential builder like registrant
might well provide electrical services under its own mark or, alternatively, arrange
for such services to be provided to its customers in close association with its
building construction services. In our view, customers who are exposed to the
marks HAYDEN ELECTRIC for electrical contracting and HAYDEN HOMES for
residential construction services, under the normal circumstances in which such
services are marketed, are likely to discount the difference between the descriptive
or generic terms ELECTRIC and HOMES. They may believe that ELECTRIC
merely describes a subset of the services that are offered by residential construction
companies, or for other reasons fail to ascribe significant source-indicating function
to the descriptive or generic portions of the marks, and thereby mistakenly conclude
that the two marks are in some way associated with the same service provider.
Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010);
Schering Corporation v. Alza Corporation, 207 USPQ 504, 507 (TTAB 1980); Oxford
Pendaflex Corporation v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978). For

7 This determination is supported by the examining attorney’s submission of numerous use-
based, third-party registrations that list both building construction and electrical contractor
services. Such third-party registrations serve to suggest that the listed services are of types
which may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988).

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the foregoing reasons, we find that applicant’s mark, as applied to the identified
services, is likely to cause confusion with respect to the cited registered mark.8
Decision: The refusal to register is affirmed.

8 We have noted applicant’s argument that there has been no actual confusion involving the
marks at issue. Applicant’s brief at 6-7. However, applicant has not submitted any
evidence to support its assertions, such as a declaration of a person with first-hand
knowledge or evidence relating to the extent of use of applicant’s and registrant’s marks
and, thus, whether there have been meaningful opportunities for instances of actual
confusion to have occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000). We give little evidentiary weight to
uncorroborated statements of no known instances of actual confusion. In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).