UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 3/19/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Section 2(d) Partial Refusal – Likelihood of Confusion with U.S. Registration Nos. 3680660, 368066, and 5492591
• Section 2(d) Refusal – Likelihood of Confusion with U.S. Registration Nos. 5096161, 4849923, and 5332914
• Prior Filed Application
• Identification of Goods and Services – Amendment Required
• Multiple-Class Application Requirements
• Section 44 Basis

 

SECTION 2(d) PARTIAL REFUSAL – LIKELIHOOD OF CONFUSION WITH U.S. REGISTRATION NOS. 3680660, 3680661, AND 5492591

 

THIS PARTIAL REFUSAL APPLIES TO CLASS 9 ONLY

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3680660, 3680661, and 5492591.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

The Applicant’s Mark is “INVISION” presented in standard character form for use in association with, in relevant part: “computer software for the collection of data for oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations; oil and gas well downhole survey and measurement equipment; oil and gas well survey and measurement equipment for use at the wellhead; oil and gas well downhole survey and measurement equipment; oil and gas well survey and measurement equipment for use at the wellhead; magnetic object detectors; proximity sensors; motion sensors; temperature sensors; wellbore tubing joint counting sensors; coiled-tubing detecting sensors; wireline-tool detecting sensors; sensors for use during a drilling operation, namely, onshore drilling operations and offshore drilling operations; sensors for use during a well stimulation operation, such as a hydraulic fracturing operation; sensors for use during a well workover operation; sensors for use during a well staging operation; sensors for use with a wireline assembly; sensors for use during a wellbore fishing operation; sensors for use during a coiled tubing operation; sensors for use during a snubbing operation; sensors for use during imaging of a bottom-hole assembly; sensors for use during wellbore data logging operations; and sensors for use during blow-out prevention operations” in International Class 9.

 

Registration No. 3680660 is for “ENVISION” presented in standard character form for use in association with: “Gas monitors, namely, gas sensors for identifying and/or measuring gas concentration for certain types of gasses; landfill gas analyzers; gas migration monitoring probes for identifying, monitoring and/or measuring gas concentration for various types of gasses; computer software for collecting, storing and analyzing data from gas analyzers; computer software for generating environmental compliance reports; calibration checkers to measure gas properties; leachate level monitors for measuring concentration of materials escaping landfills; computer hardware in the nature of a field computer for gathering gas data; temperature profiler, namely, temperature sensors” in International Class 9.

 

Registration No. 3680661 is for “ENVISION” presented in design plus stylized form for use in association with: “Gas monitors, namely, gas sensors for identifying and/or measuring gas concentration for certain types of gasses; landfill gas analyzers; gas migration monitoring probes for identifying, monitoring and/or measuring gas concentration for various types of gasses; computer software for collecting, storing and analyzing data from gas analyzers; computer software for generating environmental compliance reports; calibration checkers to measure gas properties; leachate level monitors for measuring concentration of materials escaping landfills; computer hardware in the nature of a field computer for gathering gas data; temperature profiler, namely, temperature sensors” in International Class 9.

 

Registration No. 5492591 is for “ENVISION” presented in design plus stylized form for use in association with: “Central processing units (CPU); Computer operating programs, recorded; Computer operating software; Computers; Data processing equipment, namely, couplers; Meteorological instruments; Surveying machines and instruments.”

 

Registration Nos. 3680660 and 3680661 are owned by the same entity.

 

Similarity of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

Here, the marks “INVISION” and “ENVISION” are similar in terms of sound, appearance, and overall commercial impression. The terms INVISION and ENVISION are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

The design elements in Registration Nos. 3680661 and 5492591 do not significantly change the overall commercial impression of the registered marks. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Consequently the Applicant’s mark and the Registrants’ marks are confusingly similar.

 

Relatedness of the Goods

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application and registrations use broad wording to describe certain goods which presumably encompasses all goods of the type described as provided below:

 

The applicant’s “sensors for use during a drilling operation, namely, onshore drilling operations and offshore drilling operations; sensors for use during a well stimulation operation, such as a hydraulic fracturing operation; sensors for use during a well workover operation; sensors for use during a well staging operation; sensors for use with a wireline assembly; sensors for use during a wellbore fishing operation; sensors for use during a coiled tubing operation; sensors for use during a snubbing operation; sensors for use during imaging of a bottom-hole assembly; sensors for use during wellbore data logging operations; and sensors for use during blow-out prevention operations” encompass Registration Nos. 3680660 and 3680661’s “gas sensors for identifying and/or measuring gas concentration for certain type of gases.” In other words, Applicant’s sensors would encompass “gas sensors for identifying and/or measuring gas concentration for certain type of gases.” The registrant did not limit the use of their gas sensors to a specific field therefore they are presumed to travel in the same channels of trade and to the same class of purchasers as those of the applicant.

 

The applicant’s “computer software for the collection of data for oil and gas operations” encompass Registration Nos. 3680660 and 3680661’s “computer software for collecting […] data from gas analyzers.” Again, the registrant did not limit their software to a specific field therefore it is presumed to travel in the same channels of trade and to the same class of purchasers as the applicant’s software.

 

Registration No. 5492591’s “surveying machines and instruments” goods encompass the applicant’s “oil and gas well survey and measurement equipment for use at the wellhead” goods.

 

 See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods of the Registrant have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrants’ goods are related.

 

Finally, the “temperature sensors” goods in the application and Registration Nos. 3680660 and 3680661 are identical.  Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and registrant’s goods are related.  

 

Conclusion

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Accordingly, since the Applicant’s mark and the Registrants’ marks are similar and their goods related, registration must be refused under Trademark Act Section 2(d). Applicant should note the following additional ground for refusal.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION WITH U.S. REGISTRATION NOS. 5096161, 4849923, and 5332914

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5096161, 4849923, and 5332914.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

The Applicant’s Mark is “INVISION” presented in standard character form for use in association with:

 

  IC 009: Computer software for the collection of data for oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations; oil and gas well downhole survey and measurement equipment; oil and gas well survey and measurement equipment for use at the wellhead; magnetic object detectors; proximity sensors; motion sensors; temperature sensors; wellbore tubing joint counting sensors; coiled-tubing detecting sensors; wireline-tool detecting sensors; sensors for use during a drilling operation, namely, onshore drilling operations and offshore drilling operations; sensors for use during a well stimulation operation, such as a hydraulic fracturing operation; sensors for use during a well workover operation; sensors for use during a well staging operation; sensors for use with a wireline assembly; sensors for use during a wellbore fishing operation; sensors for use during a coiled tubing operation; sensors for use during a snubbing operation; sensors for use during imaging of a bottom-hole assembly; sensors for use during wellbore data logging operations; and sensors for use during blow-out prevention operations

 

        IC 035: Rental of equipment for use during oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations; rental of computer software, computer hardware and computer peripherals, including sensors, for use during oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations

 

        IC 037: Commissioning and decommissioning services of equipment for use during oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations

 

        IC 042: Data analysis services for oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations; data collection services for oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations; technical support services in the form of troubleshooting of problems with equipment, namely, computer software, computer hardware and computer peripherals, including sensors

 

Registration No. 5096161 is for “INVIZION” presented in standard character form for use in association with: “Oil and gas well testing services; performing oil and gas well diagnostics in the field of oil and gas well integrity, stimulation treatment, production optimization, zonal isolation, cementing placement and well logging data; providing technology information relating to the oil and gas industry; well logging” in International Class 42.

 

Registration No. 4849923 is for “INVIZION EVALUATION” presented in standard character form for use in association with: “Oil and gas well testing services; performing oil and gas well diagnostics in the field of oil and gas well integrity, stimulation treatment, production optimization, zonal isolation, cementing placement and well logging data; providing technology information relating to the oil and gas industry; well logging” in International Class 42.

 

Registration No. 5332914 is for “INVIZION RT” presented in standard character form for use in association with: “software for oil and gas well testing services” in International Class 9.

 

Registration Nos. 5096161, 4849923, and 5332914 are owned by the same entity.

 

Similarity of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

Here, the marks “INVISION”, “INVIZION”, “INVIZION EVALUATION”, and “INVIZION RT” are similar in terms of sound appearance and overall commercial impression. The terms “INVISION” and “INVIZION” are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

The term “EVALUATION” does not significantly change the overall commercial impression of the applied-for mark. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).

 

The registrant has disclaimed the term “EVALUATION” thus this wording is less significant in terms of affecting the registered mark’s commercial impression, and renders the wording “INVIZION” the more dominant element of the registered for mark

 

Consequently the Applicant’s mark and the Registrant’s marks are confusingly similar.

 

Relatedness of the Goods and Services

 

The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods and services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

The attached Internet evidence, consisting of third party website evidence from Halliburton and Schlumberger, establishes that the same entity commonly manufactures and provides the relevant goods and services and markets the goods and services under the same mark.  Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Conclusion

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Accordingly, since the Applicant’s mark and the Registrant’s marks are similar and their goods and services related, registration must be refused under Trademark Act Section 2(d).

 

PRIOR-FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 87847069 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS AND SERVICES - AMENDMENT

 

Applicant must clarify the wording “wellbore tubing joint counting sensors; coiled-tubing detecting sensors; wireline-tool detecting sensors; sensors for use during a drilling operation, namely, onshore drilling operations and offshore drilling operations; sensors for use during a well stimulation operation, such as a hydraulic fracturing operation; sensors for use during a well workover operation; sensors for use during a well staging operation; sensors for use with a wireline assembly; sensors for use during a wellbore fishing operation; sensors for use during a coiled tubing operation; sensors for use during a snubbing operation; sensors for use during imaging of a bottom-hole assembly; sensors for use during wellbore data logging operations; and sensors for use during blow-out prevention operations” in the identification of goods in International Class 9 because it is indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because the nature of the sensors must be further specified. Either the type of sensor (electronic, gas, etc.) or the function of the sensor (e.g., what the sensor measures or detects) must be specified. 

 

Applicant must clarify the wording “rental of equipment for use during oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations” in the identification of services in International Class 35 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because the general type of goods must be specified (e.g., rental of office equipment for use during oil and gas operations, rental of construction equipment for use during oil and gas operations, etc.).  Rental services are in principle classified in the same classes as the services provided by means of the rented objects, e.g., rental of construction equipment is in Class 37, rental of telephones is in Class 38, and rental of motor vehicles are in Class 39. Further, this wording could identify services in more than one international class.  For example, “rental of office equipment for use during oil and gas operations” is in International Class 35 and “Rental of oil-well testing equipment for use in oil and gas operations” are in International Class 42. 

 

The services “rental of computer software, computer hardware and computer peripherals, including sensors, for use during oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations” in International Class 35 are classified incorrectly.  Applicant must amend the application to classify the services in International Class 42.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). In addition, the wording “including sensors” in the identification of services is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific services.  See TMEP §1402.03(a).

 

 

 

Applicant must clarify the wording “commissioning and decommissioning services of equipment for use during oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations” in the identification of services in International Class 37 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the services are. For example commissioning services involve installation, inspection, and testing services. Also the type of equipment must be specified. Further, this wording could identify services in more than one international class.  For example, “installation of oil-well and gas-well equipment” is in International Class 35 and “testing the functionality of apparatus and instruments in the nature of oil and gas equipment” is in International Class 42. 

 

Applicant must clarify the wording “data analysis services for oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations” and “data collection services for oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations” in the identification of services in International Class 42 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the services are.  Applicant must specify whether the purpose of the data analysis and data collection services is for business purposes or a Class 42 function. Further, this wording could identify services in more than one international class.  For example, “business data analysis services in the field of oil and gas operations” are in International Class 35. 

 

Applicant must clarify the wording “technical support services in the form of troubleshooting of problems with equipment, namely, computer software, computer hardware and computer peripherals, including sensors” in the identification of services in International Class 42 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because the nature of the troubleshooting services must be further specified. For instance, “troubleshooting of problems” could refer to repair services or diagnosing of problem services.  Further, this wording could identify services in more than one international class.  For example, “technical support services, namely, troubleshooting in the nature of the repair of computer hardware” are in International Class 37 and “Technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems” are in International Class 42. 

 

Applicant may substitute the following wording, if accurate:

 

            Class 9: Computer software for the collection of data for oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations; oil and gas well downhole survey and measurement equipment; oil and gas well survey and measurement equipment for use at the wellhead; magnetic object detectors; proximity sensors; motion sensors; temperature sensors; wellbore tubing joint counting electric sensors; coiled-tubing detecting electric sensors; wireline-tool detecting electric sensors; electric sensors for use during a drilling operation, namely, onshore drilling operations and offshore drilling operations; electric sensors for use during a well stimulation operation, such as a hydraulic fracturing operation; electric sensors for use during a well workover operation; electric sensors for use during a well staging operation; electric sensors for use with a wireline assembly; electric sensors for use during a wellbore fishing operation; electric sensors for use during a coiled tubing operation; electric sensors for use during a snubbing operation; electric sensors for use during imaging of a bottom-hole assembly; electric sensors for use during wellbore data logging operations; and electric sensors for use during blow-out prevention operations

 

            Class 35: Rental of office equipment for use during oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations; Business data analysis services for oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations;

 

            Class 37: Commissioning and decommissioning services, namely, installation and removal of oil and gas equipment for use during oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations; technical support services, namely, troubleshooting in the nature of repairing problems with equipment, namely, computer hardware and computer peripherals, in particular sensors; Rental of oil-well and gas-well drilling equipment for use during oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations

 

            Class 42: data analysis in the nature of monitoring services for oil and gas equipment for oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations; data collection services in the nature of monitoring purposes for oil and gas equipment for oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations; technical support services, namely, troubleshooting in the nature of diagnosing problems with equipment, namely, computer software, computer hardware and computer peripherals, including sensors; Rental of oil-well and gas-well testing equipment for use during oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations; rental of computer software, computer hardware and computer peripherals,  in particular sensors, for use during oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations; Commissioning services, namely,  testing the functionality of apparatus and instruments in the nature of  oil and gas equipment for oil and gas operations, namely, drilling operations, well stimulation operations, well workover operations, well staging operations, wireline operations, fishing operations, coiled tubing operations, snubbing operations and well blow-out prevention operations

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 6 classes; however, applicant submitted a fee(s) sufficient for only 4 classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Section 44 Basis

 

The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided.  See 15 U.S.C. §1126(d), (e). 

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(a).

 

If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).  

 

 

 

Assistance

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

 

Jimmy Stein

/Jimmy Stein/

Examining Attorney

Law Office 107

james.stein@uspto.gov (informal communications only)

(571) 272-3056

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/19/2019 FOR U.S. APPLICATION SERIAL NO. 88243234

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/19/2019 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.