A. W. Farrell & Son, Inc.

This Opinion Is Not a
Precedent of the TTAB
Mailed: August 10, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re A.W. Farrell & Son, Inc.
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Serial No. 98597246
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Gerald T. Walsh, of Zdarsky, Sawicki & Agostinelli LLP, for A.W. Farrell & Son,
Inc.
Christopher Ladner, Trademark Examining Attorney, Law Office 112, Matthew
Cuccias, Managing Attorney.
_____
Before Goodman, Thurmon and Bradley, Administrative Trademark Judges.
Opinion by Thurmon, Administrative Trademark Judge:
A.W. Farrell & Son, Inc. (“Applicant”) seeks registration on the Principal Register
of the mark shown below for “Roofing contracting; Roofing installation; Roofing
maintenance; Roofing repair; Roofing services,” in International Class 37.
(with ROOFING disclaimed)1
1 Application Serial No. 98597246 was filed on June 12, 2024, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging first use in commerce and anywhere at least as
early as May 16, 1999. The mark is described as “consist[ing] of a blue stylized letter ‘F’,
behind a gray and white drawing of three connected buildings of varied height placed over

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The Trademark Examining Attorney issued a final refusal of registration in both
Applications under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), finding a
likelihood of confusion, based on the three co-owned, registered marks listed below,
all for “construction of buildings; real estate development; building construction
services,” in International Class 37.
FARRELL BUILDING COMPANY2
3
FERRELL COMPANIES4
two curved gray lines, with the word ‘FARRELL’ in blue to the right of the design
immediately above the word ‘ROOFING’ in gray.” The colors blue, gray, and white are
claimed as a feature of the mark.
2 Registration No. 5020416, issued August 16, 2016, on the Principal Register. The mark is
registered in standard characters. A Sections 8 and 15 combined declaration has been
accepted and acknowledged. “BUILDING COMPANY” is disclaimed and acquired
distinctiveness under Section 2(f) is claimed as to the mark as a whole.
3 Registration No. 5178933, issued April 11, 2017, on the Principal Register. A Sections 8 and
15 combined declaration has been accepted and acknowledged. “BUILDING COMPANY” is
disclaimed and acquired distinctiveness under Section 2(f) is claimed as to the mark as a
whole. The mark is described as follows: “The mark consists of the word ‘FARRELL’ in a
stylized font atop the words ‘BUILDING COMPANY’ inside a blue square surrounded by a
gray frame. ‘FARRELL BUILDING COMPANY’ is displayed in white.” The colors blue, gray
and white are claimed as a feature of the mark.
4 Registration No. 7562688, issued November 12, 2024, on the Principal Register. The mark
is registered in standard characters. “COMPANIES” is disclaimed and acquired
distinctiveness under Section 2(f) is claimed as to the mark as a whole.

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The appeal is fully briefed and ready for final decision. We affirm the refusal to
register based on the first cited mark shown above: FARRELL BUILDING
COMPANY, registered in standard characters, the cited mark that is most similar to
Applicant’s mark. Because we find confusion likely based on the mark and services
in this registration, we need not consider the likelihood of confusion between
Applicant’s mark and the marks in the other cited registrations. See In re I-Coat Co.,
LLC, No. 86802467, 2018 TTAB LEXIS 171, at *11-12 (considering one of the cited
registrations because “[i]f likelihood of confusion is found as to the mark and goods
in this registration, it is unnecessary to consider the other cited registration”).
Section 2(d) – Applicable Law
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. DuPont
de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”), cited in B&B
Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015); see also In re Majestic
Distilling Co., 315 F.3d 1311, 1314 (Fed. Cir. 2003). We must consider each DuPont
factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912
F.3d 1376, 1378-79 (Fed. Cir. 2019). “Whether a likelihood of confusion exists between
an applicant’s mark and a previously registered mark is determined on a case-by-case
basis, aided by application of the thirteen DuPont factors.” Omaha Steaks Int’l, Inc.
v. Greater Omaha Packing Co., 908 F.3d 1315, 1318 (Fed. Cir. 2018). When analyzing
these factors, the overriding concerns are not only to prevent buyer confusion as to
the source of the goods or services, but also to protect the registrant from adverse

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commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil
Co., 992 F.2d 1204, 1208 (Fed. Cir. 1993).
“Each case must be decided on its own facts and the differences are often subtle
ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 1199 (CCPA 1973). Varying
weights may be assigned to each DuPont factor depending on the evidence presented.
See Citigroup Inc. v. Cap. City Bank Grp. Inc., 637 F.3d 1344, 1356 (Fed. Cir. 2011);
Shell Oil, 992 F.2d at 1206 (“the various evidentiary factors may play more or less
weighty roles in any particular determination”). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods or services. See In re i.am.symbolic, LLC, 866 F.3d
1315, 1322 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
1156, 1164-65 (Fed. Cir. 2002)); In re Chatam Int’l Inc., 380 F.3d 1340, 1342 (Fed.
Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103
(CCPA 1976) (“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.”).
Likelihood of Confusion – Analysis
A. Similarity of the Marks
To evaluate the similarity of the marks under the first DuPont factor, we consider
the marks in their entireties as to appearance, sound, connotation and commercial
impression. See, e.g., Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 1371 (citing DuPont, 476 F.2d at 1361). “Similarity

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in any one of these elements may be sufficient to find the marks confusingly similar.”
In re Inn at St. John’s LLC, No. 87075988, 2018 TTAB LEXIS 170, at *13 (quoting In
re Davia, No. 85497617, 2014 TTAB LEXIS 214, at *4), aff’d mem., 777 F. App’x 516
(Fed. Cir. 2019); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732
(CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone
is likely to cause confusion.”) (citation omitted).
“The proper test is not a side-by-side comparison of the marks, but instead
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.” Coach Servs. Inc. v. Triumph Learning, LLC, 668 F.3d 1356,
1368 (Fed. Cir. 2012). The focus is on the recollection of the average purchaser, who
normally “retains a general rather than a specific impression of marks.” In re
i.am.symbolic, llc, No. 85916778, 2018 TTAB LEXIS 281, at *11.
Applicant’s mark consists of the literal elements “Farrell Roofing” and a design
element that shows the outline of a multi-story building superimposed over a large
capital “F.” While the design element is noticeable, we find the word “Farrell” is the
most distinctive part of the mark and the part consumers are most likely to recall and
use to ask for the services. The word Farrell appears first, is bolder and in a larger
font than the remaining textual portion of the mark. The word “Roofing” is disclaimed
and is descriptive, if not generic, for the roofing services identified in the Application.
The design is significant, but it is not likely to be used to ask for the services.

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The cited mark FARRELL BUILDING COMPANY is similar in structure and
shares the key element “FARRELL.” The words “BUILDING COMPANY” are
disclaimed, similar to the disclaimer of “ROOFING” in the applied-for mark. The first
literal element of both marks is “FARRELL,” and this creates a high degree of
similarity between the marks. We often find that the first element of a multi-element
mark is likely to be the most remembered by consumers, and that finding is especially
appropriate here where all other literal elements have been disclaimed. See In re
Detroit Athletic Co., 903 F.3d 1296, 1303 (Fed. Cir. 2018) (finding “the identity of the
marks’ two initial words is particularly significant because consumers typically notice
those words first”); Palm Bay Imps., 396 F.3d at 1372-73; Presto Prods., Inc. v. Nice-
Pak Prods. Inc., No. 91074797, 1988 TTAB LEXIS 60, at *8 (“it is often the first part
of a mark which is most likely to be impressed upon the mind of a purchaser and
remembered”).
While we consider the marks in their entireties, it is striking that all other words
in these marks were disclaimed, showing that the leading word “FARRELL” is the
element consumers are mostly likely to remember and use. In re Nat’l Data Corp.,
753 F.2d 1056, 1060 (Fed. Cir. 1985) (“[I]n articulating reasons for reaching a
conclusion on the issue of confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of the marks in their
entireties.”).

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“[W]e also keep in mind the penchant of consumers to shorten marks.” In re Bay
State Brewing Co., No. 85826258, 2016 TTAB LEXIS 46, at *9. In this case, we find
that most consumers are likely to refer to the applied-for mark and cited mark as
“FARRELL” when asking for or referring to the services. This type of similarity
increases the likelihood of confusion. See Detroit Ath. Co., 903 F.3d at 1303; Palm Bay
Imps., 396 F.3d at 1372-73; Presto Prods, 1988 TTAB LEXIS 60, at *8.
These marks are structured similarly, a fact that further increases the likelihood
of confusion. The first word in each mark, “Farrell,” is followed by “Building
Company” or “Roofing.” In both the applied-for mark and the cited FARRELL
BUILDING COMPANY mark, consumers will see a distinctive word followed by a
word or words that describe the business. The similar structures and shared use of
the word “Farrell” will lead consumers to believe the businesses are co-owned or
otherwise related.
Applicant argues that the design element and the word “roofing” distinguish its
mark from the cited marks.5 These are differences in the marks, but for the reasons
stated above, the shared use of the word or name “Farrell” is likely to have far more
impact on consumers than the design element or the disclaimed parts of these marks.
The marks are similar in appearance, very similar in sound (identical when the
marks are shortened to FARRELL), have similar meanings (likely a family business
involved in building construction or roofing)6 and create very similar commercial
5 4 TTABVUE 5.
6 The Applicant is A.W. Farrell & Son, Inc.

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impressions. We find the marks similar. The first DuPont factor supports the Section
2(d) refusal.
B. Relatedness of the Services
We evaluate the second DuPont factor based on the services identified in the
Application and the cited registration. See Stone Lion Cap. Partners, LP v. Lion Cap.
LLP, 746 F.3d 1317, 1323 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Comput. Servs.
Inc., 918 F.2d 937, 942 (Fed. Cir. 1990). This point is important here, because
Applicant presented arguments based on marketplace circumstances that are not
reflected in the Application or the cited registration. We will return to this point
below.
It is sufficient for a finding of likelihood of confusion if relatedness is established
between any of the services identified in the Application and cited registration.
Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 1336 (CCPA 1981); see
also Double Coin Holdings Ltd. v. Tru Dev., No. 92063808, 2019 TTAB LEXIS 347, at
*18; In re Aquamar, Inc., No. 85861533, 2015 TTAB LEXIS 178, at *9 n.5. In addition,
the services need only be sufficiently related that a relevant consumer would be likely
to assume, upon encountering services marketed under the marks at issue, that the
services originate from, are sponsored or authorized by, or are otherwise connected
to the same source. See, e.g., In re Save Venice N.Y., Inc., 259 F.3d 1346, 1355 (Fed.
Cir. 2001); Black & Decker Corp. v. Emerson Elec. Co., No. 91158891, 2007 TTAB
LEXIS 50, at *25-26.
The cited registration identifies “construction of buildings; real estate
development; building construction services,” and the Application identifies “Roofing

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contracting; Roofing installation; Roofing maintenance; Roofing repair; Roofing
services.” To construct a building, one must also construct a roof. The “roofing
installation” service identified in the Application, therefore, is a subset of the
“construction of buildings” service identified in the cited registration. To this extent,
the services overlap.
The Trademark Examining Attorney did not argue that the services overlap, but
did argue that the services are related.7 The Trademark Examining Attorney
submitted evidence of third-party registrations and Internet uses that show both
building construction services and roofing services offered under a single mark.8 It is
not surprising that businesses engaged in building construction also do roofing work,
and the evidence submitted by the Trademark Examining Attorney confirms this fact.
Because it is common for businesses to offer both types of services under a single
mark, consumers of these services are accustomed to this practice and are more likely
to believe that Applicant’s business is related in some way to the business that owns
the cited registration. The services are closely related and this fact increases the
likelihood of confusion.
7 6 TTABVUE 3-4.
8 Office Action dated January 13, 2025, at 13-28 (eight third-party use-based registrations
that identify both building construction services and roofing services); Final Office Action
dated August 19, 2025, at 10-87 (eight third-party uses shown via Internet screenshots where
each third-party mark is used with both building construction services and roofing services).
Based on the evidence of record, it appears the third-party registration and Internet evidence
identify unique businesses, so that we have evidence of sixteen third-party uses of marks
with services identified in the Application and the cited registration.

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Applicant argues that it operates in a “different sector[]” than the owner of the
cited registration.9 According to Applicant, it operates “in the commercial and
governmental market sectors, not the residential market, a crucial distinction.”10
There are no limitations on the roofing services identified in the Application. We must
base our analysis on the services identified in the Application and cited registration,
not on what Applicant’s counsel tells us (with no supporting evidence) about the
actual market. If the difference between the commercial and residential roofing
market sectors is in fact “a crucial distinction,” Applicant should have limited the
services identified in the Application to those types of roofing services. The
Trademark Examining Attorney explained the proper context for the analysis under
the second DuPont factor, but Applicant ignored that explanation and repeatedly
made arguments that conflict with the broad identification of roofing services in the
Application.
Applicant also argues that there is no likelihood of confusion because of the
geographic separation between its business (in upstate New York) and the business
of the owner of the cited registrations (on Long Island, New York).11 This argument
also misses the point, because the cited registrations are not geographically limited
and Applicant seeks a nationwide registration. Geographic separation between the
businesses has no relevance to the questions before us. The Trademark Examining
9 4 TTABVUE 7.
10 7 TTABVUE 2.
11 4 TTABVUE 10.

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Attorney made this point, too, but again Applicant ignored the Trademark Examining
Attorney’s characterization of the required legal analysis.
C. Trade Channels
The third-party evidence described above is the only evidence in the record. The
evidence shows that some businesses provide both building construction and roofing
services under a single mark. It follows that these businesses operate in the same
trade channel, which shows that building construction services and roofing services
tend to flow through the same trade channels. The evidence is limited, as it does not
show more of the market. For this reason, while we find the trade channels overlap,
we place less weight on this factor because the record is somewhat thin on the trade
channel issue.
D. Customer Care
The fourth DuPont factor considers the likely care exercised by relevant
consumers. DuPont, 476 F.2d at 1361 (“The conditions under which … sales are made,
i.e. ‘impulse’ vs. careful, sophisticated purchasing ….”). Applicant argues,
“Remarkably, the trademark examining attorney did not at all consider the
sophistication of consumers who utilize commercial roofing services in the context of
complex contractual negotiations at an elevated level of care for viable commercial
projects.”12 There is nothing remarkable about the Trademark Examining Attorney’s
rejection of Applicant’s consumer sophistication argument. What is at least somewhat
remarkable is that Applicant ignored the Trademark Examining Attorney’s
12 4 TTABVUE 9.

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explanation and then apparently did no legal research. If any such research had been
done, Applicant would have realized that we must conduct the DuPont factor four
analysis based on the services identified in the Application and cited registrations.
There is no limitation in the Application to commercial roofing services. Applicant’s
consumer sophistication argument is not supported by the record.13 The fourth
DuPont factor is neutral.
E. Other DuPont Factors
Applicant listed all thirteen DuPont factors and made brief statements about each
one.14 As to the first four DuPont factors discussed above, Applicant’s statements
simply repeat part of the arguments we reviewed above. The fifth and sixth DuPont
factors consider the strength of the cited mark and evidence is required to evaluate
these factors. Applicant presented no evidence, and we find these factors are neutral.
Applicant further argues there is no actual confusion and that it has coexisted
with the owner of the cited registration for “decades.”15 If we had evidence showing
that these two marks coexisted in the same geographic region and served the same
types of consumers within that region, we could evaluate whether there was
meaningful coexistence without confusion. In re Guild Mortg.¸ 912 F.3d at 1380-81
13 Applicant cites three federal court cases for the point that geographic separation can reduce
or eliminate the likelihood of confusion. 4 TTABVUE 10. These courts were not conducting
the analysis required in this appeal, but were evaluating trademark infringement claims.
While the likelihood of confusion standard is used in both contexts, our analysis of the
services, trade channels and consumer sophistication are limited to the services as identified
in the Application and cited registrations.
14 4 TTABVUE 7-9.
15 4 TTABVUE 8.

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(suggesting that “evidence of concurrent use of the two marks for a particularly long
period of time—over 40 years—in which the two businesses operated in the same
geographic market—southern California—without any evidence of actual confusion”
may be probative under the eighth DuPont factor). Applicant, however, submitted no
evidence that would allow such a determination.16 Martahus v. Video Duplication
Servs. Inc., 3 F.3d 417, 420 (Fed. Cir. 1993) (“[M]ere attorney arguments
unsubstantiated by record evidence are suspect at best.”). DuPont factors seven and
eight are neutral.
We find the remaining DuPont factors are not relevant to this appeal.
F. Conclusion: Weighing the Factors
The marks are similar, and the services are related. There is some evidence that
the trade channels overlap. There is no evidence concerning consumer care in
purchasing the services, and Applicant’s arguments on this point are based on
services that differ from those identified in the Application. The first two DuPont
factors weigh heavily here, and both support the Section 2(d) refusal. The third
DuPont factor also supports the refusal. No factor points the other way. The record
shows that confusion is likely.
Decision: The Section 2(d) refusal is affirmed.
16 In fact, Applicant contends that there is geographic separation between the businesses,
which would undermine the probativity of any period of coexistence.