Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86348551 CENTURION(Standard Characters, see http://uspto.report/TM/86348551/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Examining Attorney issued rejection for the instant Application for the mark CENTURION on the basis of a likelihood of confusion with the registered mark CENTURION, U.S. Reg. 2769187. The significant differences in the goods and services between the Application and the registration means that there is no likelihood of confusion. Accordingly, Applicant respectfully traverses this rejection and requests the mark be passed to publication. Examining Attorney quite correctly identifies the similarity of the marks themselves. Although the marks are similar, there is no likelihood of confusion between the registration and the Application because of the disparity in the goods claimed as to each. The registration is in class 007 for "Apparatus for use in the cleaning of oil wells including the cleaning of casing strings, liners and other well tubing, namely power operated wipers, scrapers, brush tools, polishers and scourers and power operated circulation tools, namely power operated fluid circulators that cause downhole fluid to impact the interior of the casina or a liner within a well bore to provide a cleaning action and which select a path for fluid travel in the casing or a liner within a well bore." Applicant seeks registration in class 001 for "Chemicals for use in the field of oil exploration and production." Initially Applicant would observe that the goods at issue are in two completely different classes. Fundamentally, the registration is for apparatuses; the Application is for chemicals. While the Examining Attorney accurately identifies a nexus between the descriptions in that each is used with relation to oil wells, the two marks denote such completely different goods used on such completely different phases of a well such that there is almost no relatedness of the goods described, as required by In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Specifically, when we examine the dissimilarity of the trade channels, the conditions under which and buyers to whom sales are made, and the number and nature of similar marks in use (see TMEP ?1207.01), a conclusion that there is no likelihood of confusion is evident. The Examining Attorney correctly points out that goods and services need not be identical in order for there to be a likelihood of confusion. However, it is equally true that, "if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely." TMEP ?1207.07(a)(i), citing, Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012). In this particular case, the Application is for chemicals used during exploration and production. Exploration refers to the time when a well is initially drilled and evaluated for hydrocarbon production; production refers to the time when hydrocarbons are produced from the well. By contrast, the registration refers to apparatus (e.g. tools) used to clean wells after production has been halted. Accordingly, not only are the two goods in this instance secured through different channels of trade (chemicals versus tools), but they are used at different times in the life of the well. Applicant respectfully points to the evidence cited by the Examining Attorney for support, noting that in none of the cases do the two goods appear on the same webpage. When these two types of goods are offered by the same company, they are offered by different segments or divisions and marketed separately. Applicant would further point to the size and sophistication of the buyers of these goods as an additional factor in their not being likely to be confused. The hydrocarbon drilling business requires major investment and is undertaken by some of the largest companies in the world. Buyers of these goods do not buy on impulse, but after careful study made by experts in the field. Goods are not ordered online or provided off-the-shelf. Rather, each of these sets of goods is sold through individual sales visits over long periods of time, frequently subject to extensive sales contracts. The likelihood that any of these sophisticated buyers would be confused by two such disparate items purchased at very separate times is nil. Finally, Applicant points to a plethora of the use of the word "centurion" in the oil and gas business, none of which is likely to cause confusion. Applicant notes Centurion Pipeline (http://www.centruionpipeline.com), affilated with Oxy, Centurion Oil Company (http://www.centurionoil.com), the Centurion service offered by Paradigm (see http://www.prnewswire.com/news-releases/paradigm-oil-and-gas-fires-up-centurion-going-into- 2013-183214381.html) and a host of other uses of the term in the very broad oil and gas field. None of these causes confusion in the marketplace because of the very broadness of the field and all of the different and distinct products and services used at the different times within that field. Accordingly, Applicant respectfully submits that there is no likelihood of confusion with the instant Application. Applicant requests reconsideration of the rejection and a passing of the Application to publication. Respectfully submitted, /tmd/ Timothy M. Donoughue, Intellectual Property Senior Counsel, Baker Hughes Incorporated, Texas Bar Member, USPTO Reg. 46,668

SIGNATURE(S)
Response Signature
Signature: /tmd/     Date: 11/21/2014
Signatory's Name: Timothy M. Donoughue
Signatory's Position: Intellectual Property Senior Counsel, Attorney of Record, Texas Bar Member

Signatory's Phone Number: 713-439-8177

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 86348551
Internet Transmission Date: Fri Nov 21 17:47:34 EST 2014
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20141121174734
139008-86348551-500da1e1c8480751cdb56bf5
67c335977a288c0ca8aa69368646e3e773c2f807
1-N/A-N/A-20141121170612156287