The Murray Company

Trademark Trial and Appeal Board

Jul 21, 2005

No. 76465812 (T.T.A.B. Jul. 21, 2005)

Mailed: July 21, 2005
KSK

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Murray Company
________

Serial No. 76465812
_______

Thad N. Leach of Lewis, Rice & Fingersh, L.C. for The
Murray Company

Kristina Kloiber, Trademark Examining Attorney, Law Office
116 (M. L. Hershkowitz, Managing Attorney).
_______

Before Hohein, Hairston and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

The Murray Company has filed an application to
register the mark shown below for “construction management”
services in International Class 37.1

1 Application Serial No. 76465812, filed November 8, 2002,
alleging a date of first use anywhere and date of first use in
commerce of February, 2002, and disclaiming COMPANY apart from
the mark as shown.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76465812
2

Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark shown below, when used on its identified
goods, so resembles the registered mark for “industrial,
commercial and residential construction and general
contractor services” in International Class 37,2 as to be
likely to cause confusion, mistake or deception.

When the refusal was made final, applicant appealed.3
Briefs have been filed, but applicant did not request an
oral hearing. 4 We affirm the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative

2 Registration No. 1264473, issued January 17, 1984, Section 9
renewal granted.

3 Applicant’s original notice of appeal, filed on April 13, 2004,
was deemed untimely; however, applicant’s petition to revive was
granted on September 28, 2004 and applicant subsequently filed a
timely notice of appeal.

4 This application was originally examined by another examining
attorney, but was subsequently reassigned to the attorney whose
name is shown above to prepare the appeal brief.
Ser No. 76465812
3
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Similarity of the Marks
In articulating her determination that the marks are
similar, the examining attorney focuses on two common
elements in the marks, specifically, the name MURRAY and
the emphasis on the first letter M in both marks. To
explain why her analysis of the marks accords greater
weight to the name MURRAY in the involved marks, the
examining attorney argues that: when a mark consists of
words and design elements, the words tend to dominate; the
word COMPANY in applicant’s mark has been disclaimed and
therefore may be regarded as less significant; the MURRAY
name would be used to call for registrant's and applicant’s
services; and, for these reasons, the MURRAY name is the
Ser No. 76465812
4
dominant element of the marks in the application and the
cited registration. In contrast, applicant relies on the
plumb bob design in its mark, the separate M in
registrant’s mark and the stylization in both marks, to
distinguish the marks.
Examining the marks in terms of their appearance,
sound, meaning, and commercial impression, we find the
marks to be similar. The test of likelihood of confusion
is not whether the marks can be distinguished when
subjected to a side-by-side comparison. The question is
whether the marks create the same overall impression.
Visual Information Inst., Inc. v. Vicon Indus. Inc., 209
USPQ 179 (TTAB 1980). While it is true that marks must be
considered in their entireties in determining likelihood of
confusion, it is also well established that there is
nothing improper in giving more or less weight to a
particular portion of a mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Hilson
Research Inc. v. Society for society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993). We agree that the
dominant element in both marks is the name MURRAY. A
potential consumer would call for the services by the name
MURRAY which is the common literal portion of the marks.
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Ser No. 76465812
5
Moreover, both marks emphasize the first letter of the name
MURRAY, which at a minimum, contrary to applicant’s
argument, does not serve to distinguish the marks, and in
fact, as argued by the examining attorney, may increase the
likelihood of confusion. The differences in the marks, the
plumb bob design and the word COMPANY in applicant’s mark,
the separate M in registrant’s mark and the different
stylization, do not create a different commercial
impression or distinguish the marks. The portion of the
respective marks which would be most likely to be viewed as
an indication of source and to be used in referring to the
services is the same, namely, the name MURRAY. In view
thereof, and for reasons articulated by the examining
attorney, we agree that the marks are similar.
Similarity of the Services
The similarity of the services and overlapping trade
channels do not appear to be in dispute. Applicant has
stated that “[b]oth of the cited services fall within the
construction industry, and therefore, are related [and]
[a]lthough the services in this case are similar and may
travel through the same channels of trade, the importance
of the issue of similarity of services is diminished due to
the fact that the applicant’s mark and the cited mark are
so different.” (Brief, p. 10) However, for completeness we
Ser No. 76465812
6
note that the examining attorney, in support of her
argument that the services are similar, referred to
excerpts from the online glossaries Homeglossary.com and
National Contractor Referrals and License Bureau Glossary,
wherein a general contractor is listed as a party who is
hired to oversee a construction project and the duties of a
general contractor are to manage construction projects.5
Homeglossary.com, www.yourwebassistant.net/glossary/g3.htm.
Further “construction management” is defined as “activities
over and above normal architectural and engineering
services, conducted during the predesign, design, and
construction phases, that contribute to the control of time
and cost.” See National Contractor Referrals and License
Bureau Glossary, www.contractorreferral.com/-bin/glossary.
The examining attorney also pointed to applicant’s
specimen of use, a brochure, which includes “general
contractor” directly under “construction manager” in its
list of capabilities. (Brief, p. 10)
It is well settled that goods or services need not be
similar or competitive in nature to support a finding of
likelihood of confusion. The question is not whether
purchasers can differentiate the goods or services

5 These excerpts were included in the October 9, 2003 Final
action.
Ser No. 76465812
7
themselves, but rather whether purchasers are likely to
confuse the source of the goods or services. See Helene
Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618
(TTAB 1989). Further, we must consider registrant's goods
or services as they are described in the registration and
we cannot read limitations into those goods or services.
See Octocom Systems Inc. v. Houston Computer Services Inc.,
918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987); Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001 (Fed. Cir. 2002). If the cited registration describes
goods or services broadly, and there is no limitation as to
the nature, type, channels of trade or class of purchasers,
it is presumed that the registration encompasses all goods
or services of the type described, that they move in all
normal channels of trade, and that they are available to
all classes of purchasers. See In re Linkvest S.A., 24
USPQ2d 1716 (TTAB 1992).
In view of the above and to the extent this is in
dispute, we find that the recited services of applicant and
registrant, as supported by the evidence of record, are
identical or highly similar. In addition, inasmuch as
there are no limitations in the respective recitations of
services, we presume an overlap in trade channels and that
Ser No. 76465812
8
the services would be offered to all normal classes of
purchasers.
Sophisticated Purchasers/Actual Confusion
Applicant relies heavily on its argument that the
purchasers of construction management services are highly
sophisticated. We have considered applicant's contention
that its services are extremely expensive, and its
customers are sophisticated and take great care in the
purchasing decision, including “individual property
owners.” While there is no evidence on this point, even
assuming such is the case, we find that the substantial
similarity of the marks and services clearly outweigh any
purchaser sophistication. 6 In re Decombe, 9 USPQ2d 1812
(TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558
(TTAB 1983). See also HRL Associates, Inc. v. Weiss
Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and
marks outweighed sophisticated purchasers, involved
purchasing decision, and expensive goods).

6 Applicant’s reliance on Perini Corp. v. Perini Const., Incl.,
915 F.2d 121 (4th Cir. 1990) is not persuasive of a different
result. There, the Fourth Circuit reversed a grant of summary
judgment to plaintiff because the district court failed to take
into account the sophistication of the purchasers and the issue
of likelihood of confusion remained for trial.
Ser No. 76465812
9
Moreover, the fact that purchasers are sophisticated
in a particular field does not necessarily mean that they
are knowledgeable in the field of trademarks or immune from
source confusion. In re Total Quality Group Inc., 51
USPQ2d 1474, 1477 (TTAB 1999); In re Hester Industries,
Inc., 231 USPQ 881, 883 (TTAB 1986) ("While we do not doubt
that these institutional purchasing agents are for the most
part sophisticated buyers, even sophisticated purchasers
are not immune from confusion as to source where, as here,
substantially identical marks are applied to related
products.”)
Finally, we do not accord significant weight to
applicant's contention that there have been no instances of
actual confusion despite an asserted two years of
concurrent use of the respective marks. The Federal
Circuit has recently addressed the question of the weight
to be given to an assertion of no actual confusion by an
applicant in an ex parte proceeding:
With regard to the seventh DuPont factor, we
agree with the Board that Majestic's
uncorroborated statements of no known instances
of actual confusion are of little evidentiary
value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating
that self-serving testimony of appellant's
corporate president's unawareness of instances of
actual confusion was not conclusive that actual
confusion did not exist or that there was no
likelihood of confusion). A showing of actual
Ser No. 76465812
10
confusion would of course be highly probative, if
not conclusive, of a high likelihood of
confusion. The opposite is not true, however.
The lack of evidence of actual confusion carries
little weight, [citation omitted], especially in
an ex parte context.

Majestic Distilling, 65 USPQ2d at 1205.

Accordingly, while examples of actual confusion may
point toward a finding of a likelihood of confusion, an
absence of such evidence is not as compelling in support of
a finding of no likelihood of confusion. Thus, we cannot
conclude from the lack of instances of actual confusion
that confusion is not likely to occur.
In conclusion, we find that these marks are so similar
that, as applied to essentially identical services,
confusion would be likely.
Decision: The refusal to register is affirmed.