| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88245528 |
| LAW OFFICE ASSIGNED | LAW OFFICE 105 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88245528/mark.png |
| LITERAL ELEMENT | BLUE BOX |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
LIKELIHOOD OF CONFUSION Trademark Examining Attorney (TEA) refused registration of the mark because of a likelihood of confusion with the mark in U.S. Registration No. 5381041 (the ‘014 Mark) for BLUE BOX for, sevices in Classes 37 and 42. The TEA’s reasoning, relying on In re i.am.symbolic, llc, 866 F.3d at 1322, (quoting Herbeko Int’l v. Kappa Books, Inc., 308 F.3d 1156 (Fed. Cir. 2002)), includes only two of the du Pont factors: (1) similarities between the compared marks, and (2) relatedness of the services. This analysis does not take into consideration factors that heavily favor Applicant such as the differing channels of trade between Applicant and owner of the ‘041 Mark, the sophisticated purchase conditions, the co-existence without confusion and the recognition in the oil and gas exploration and production industry of the color blue associated with the Applicant. At the outset, Applicant concedes the marks are the same, but the other DuPont factors support no likelihood of confusion. Applicant requests reconsideration because the facts of In re i.am.symbolic, llc are not comparable to the instant application, and certain du Pont factors were not considered by the TEA. The goods and services at issue in In re i.am.symbolic, llc were not distinguished from Registrant’s as to channels of trade and class of customers, and there were no sophisticated purchase conditions. However, in the instant application, Applicant’s services are distinguished from Registrant’s as to channels of trade and class of customers, and there are sophisticated purchase conditions that must be considered in addition to other factors. Thus, in failing to consider the sophistication of
purchasers in the instant application, Examining Attorney has not applied the proper legal test for likelihood of confusion. 1. Sophisticated Purchasing Conditions Examining Attorney did not consider sale conditions such as the sophistication of the purchasers to whom and the conditions under which sales are made. The Applicant’s services are: Economic feasibility consultation services, namely, providing standard vendor and pricing list configurations to others for subsea product offerings that leverages standardized specifications and designs to maximize capital efficiency and economic viability for projects in the subsea oil and gas environment, in Class 35. The services for the ‘041 Mark are in Classes 37 and 42 for various services for equipment installation and technical consulting and engineering services, none of which are for subsea economic feasibility consulting. Consumers for services in the highly technical areas of economic feasibility studies on one hand and heavy equipment installation and engineering technical consulting on the other, are not only sophisticated, but highly sophisticated as to discerning the source of the services. This failure to consider these sale conditions has been found to be a legal error in Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 718 (Fed. Cir. 1992) (“The Board also apparently failed to consider, and certainly failed to address, the sophistication of the buyers.”). TMEP §1207.01(d)(vii) (citing In re N.A.D., Inc., 754 F.2d 996, 999-100, 224 U.S.P.Q. 969, 971 (Fed. Cir. 1985) expressly states “because only sophisticated purchasers exercising great care would purchase the relevant goods, there would be no likelihood of confusion merely because of the similarity between the marks NARCO and NARKOMED”) (emphasis added). See also Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270, 284 (3rd Cir. 2001) (“When consumers exercise heightened care in evaluating the relevant products before making purchasing decisions, courts have found there is not a strong likelihood of confusion. Where the relevant products are expensive, or the buyer class consists of sophisticated or professional purchasers, courts have generally not found Lanham Act violations.”) (emphasis added); Astra Pharma. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206, 220 U.S.P.Q. 786, 790 (1st Cir. 1983) (“there is always less likelihood of confusion where goods are expensive and purchased after careful consideration.”) (emphasis added); Sensient Techs. Corp. v. SensoryEffects Flavor Co., 613 F.3d 754, 765-66 (8th Cir 2010) (“The parties agree the ordinary customer of their products is sophisticated and any particular sale is the result of a long, collaborative process. Taking into consideration the sophistication of the customers and the nature of the purchasing process, the district court correctly determined the ordinary consumer would not find the marks confusingly similar”) (emphasis added). Failure to consider this factor conflicts with case law requiring an Examining Attorney to consider all relevant factors. See In re Shell Oil Co., 992 F.2d 1204, 1208 (Fed. Cir. 1993) (“The discrimination and degree of care by users of the respective services must be considered, along with other relevant factors, and given appropriate weight.”) (emphasis added). The TTAB has reversed a likelihood of confusion refusal where the average price of applicant’s service is $25,000, and “in making a decision to purchase applicant’s services, the relevant facility owners and general contractors are all sophisticated, discriminating purchasers exercising heightened care… This du Pont factor weighs heavily in favor of reversing the Trademark Examining Attorney.” In re Pyro-Stop, LLC, 2003 WL 21500718, at *3 (T.T.A.B June 25, 2003) (reversing likelihood of confusion of Applicant’s mark PYRO-STOP over registrant’s mark PYROSTOP)(emphasis added). Similarly, Applicant’s services are offered to purchasers who are making investments often in the millions of dollars for off-shore projects. Furthermore, due to the nature of the services and the industry in which they are deployed, the consumers often require multiple interactions to discuss the Applicant’s services offering; therefore, the consumers spend significant time and effort in choosing these types of services. The services provided that are connected with the ‘041 Mark and Applicant involve sophisticated purchasing conditions because of the substantial investment of money and time on the purchaser’s behalf. Therefore, potential purchasers of Applicant’s services are highly sophisticated and informed, and they spend a great deal of time in determining what subsea products to purchase. No likelihood of confusion could occur due to the purchase conditions and purchaser’s heightened care, in keeping with the case law. 2. Dissimilar services and dissimilar channels of trade Examining attorney asserted that Applicant’s services in Class 35 and services of the ‘041 Markin Class 42 are so related that this factor would support likelihood of confusion. On first blush, one could assume this is the case, but one must consider the channel of trade for each service. The Applicant’s economic feasibly services, limited to the subsea environment, are for the front end of a process that only very sophisticated purchasers, primarily multi-national oil companies, engage in. The Applicant’s services are for managers to determine if an off-shore project will fit a budget, profit projections and forecasting required before the project is even initiated. The Registrant’s services come into play after the decision has been made to go forward with a project. Moreover, the Registrant’s services do not even mention subsea or off-shore services which is the focus of the Applicant’s goods. On shore and off-shore are different channels of trade in and of themselves. The Registrant’s services of installation and consulting are directed to engineers who are involved in the field operations. The Applicant’s and Registrant’s services are directed to different functions within a company and different environments and therefor are dissimilar and different channel of trade. 3. Both Marks Are Co-Existing One of the duPont factors is the length of time during, and the conditions under which, there has been concurrent use without evidence of actual confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361,(C.C.P.A. 1973). Applicant has been using the mark since at least as early as April 2016. Registrant has used its mark possibly a few months longer, since October 2015. There has been no confusion, since both parties have used their respective marks for almost the same amount of time. This factor favors Applicant’s position that there is no likelihood of confusion. 4. Applicant is Known for Its Blue Color Use Applicant is a Schlumberger Company (http://www.onesubsea.slb.com/ ) and one of the impetus for using the mark BLUE BOX, was to associate with the strong identification with Schlumberger. Schlumberger is commonly referred to as “BIG BLUE”, because it logos and company color scheme feature a recognizable blue color. In fact, the media sometimes refers to Schlumberger as Big Blue as shown in the Barron’s article included as Exhibit A hereto. Schlumberger uses the color blue for company promotion and identity as shown in Exhibit B hereto. To preclude a Schlumberger company from registering a “BLUE” service mark that does not conflict with a third party use would be a harsh and incorrect result, especially given the strong identification of the blue color with The Schlumberger Group of companies. This is another factor to be considered that favors registration.
|
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_21620125078-20190917112120814789_._Exhibit_A_BLUE_BOX__U.S._APPLICATION_SERIAL_NO.__88245528.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\882\455\88245528\xml4\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\882\455\88245528\xml4\ROA0003.JPG | |
| ORIGINAL PDF FILE | evi_21620125078-20190917112120814789_._Exhibit_B_BLUE_BOX__U.S._APPLICATION_SERIAL_NO._88245528.pdf |
| CONVERTED PDF FILE(S) (5 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\882\455\88245528\xml4\ROA0004.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\882\455\88245528\xml4\ROA0005.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\455\88245528\xml4\ROA0006.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\455\88245528\xml4\ROA0007.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\455\88245528\xml4\ROA0008.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A is a copy of a media article, and Exhibit B is a copy of a company promotional brochure. |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| Providing standard configurations to others for subsea product offerings that leverages standardized specifications and designs to maximize capital efficiency and economic viability for projects in the subsea oil and gas environment | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 04/00/2016 |
| FIRST USE IN COMMERCE DATE | At least as early as 04/00/2016 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 035 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Economic feasibility consultation services, namely, providing standard vendor and pricing list configurations to others for subsea product offerings that leverages standardized specifications and designs to maximize capital efficiency and economic viability for projects in the subsea oil and gas environment | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 04/00/2016 |
| FIRST USE IN COMMERCE DATE | At least as early as 04/00/2016 |
| ATTORNEY SECTION (current) | |
| NAME | Margaret A. Boulware |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | BOULWARE & VALOIR |
| INTERNAL ADDRESS | SUITE 1350 |
| STREET | 2603 AUGUSTA DRIVE |
| CITY | HOUSTON |
| STATE | Texas |
| POSTAL CODE | 77057 |
| COUNTRY | US |
| PHONE | 832-369-7852 |
| FAX | 7136506458 |
| DOCKET/REFERENCE NUMBER | STC-1SS-blue |
| ATTORNEY SECTION (proposed) | |
| NAME | Margaret A. Boulware |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | BOULWARE & VALOIR |
| INTERNAL ADDRESS | SUITE 1350 |
| STREET | 2603 AUGUSTA DRIVE |
| CITY | HOUSTON |
| STATE | Texas |
| POSTAL CODE | 77057 |
| COUNTRY | United States |
| PHONE | 832-369-7852 |
| FAX | 7136506458 |
| trademark@boulwarevaloir.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | STC-88245528 |
| CORRESPONDENCE SECTION (current) | |
| NAME | MARGARET A. BOULWARE |
| FIRM NAME | BOULWARE & VALOIR |
| INTERNAL ADDRESS | SUITE 1350 |
| STREET | 2603 AUGUSTA DRIVE |
| CITY | HOUSTON |
| STATE | Texas |
| POSTAL CODE | 77057 |
| COUNTRY | US |
| PHONE | 832-369-7852 |
| FAX | 7136506458 |
| trademark@boulwarevaloir.com; mboulware@boulwarevaloir.com; tmarshall@boulwarevaloir.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | STC-1SS-blue |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Margaret A. Boulware |
| FIRM NAME | BOULWARE & VALOIR |
| INTERNAL ADDRESS | SUITE 1350 |
| STREET | 2603 AUGUSTA DRIVE |
| CITY | HOUSTON |
| STATE | Texas |
| POSTAL CODE | 77057 |
| COUNTRY | United States |
| PHONE | 832-369-7852 |
| FAX | 7136506458 |
| trademark@boulwarevaloir.com; mboulware@boulwarevaloir.com; dkannegenti@boulwarevaloir.com; nseigel@boulwarevaloir.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | STC-88245528 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /margaret a. boulware/ |
| SIGNATORY'S NAME | Margaret A. Boulware |
| SIGNATORY'S POSITION | Attorney of record, State Bar of Texas member |
| SIGNATORY'S PHONE NUMBER | 832-369-7850 |
| DATE SIGNED | 09/17/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Sep 17 14:57:55 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XX- 20190917145755683174-8824 5528-610b1336ff4d7585188f e1da535b8eacf42a1d7215238 0e6abf34bb371f4ded-N/A-N/ A-20190917145132517965 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
LIKELIHOOD OF CONFUSION
Trademark Examining Attorney (TEA) refused registration of the mark because of a likelihood of confusion with the mark in U.S. Registration No. 5381041 (the ‘014 Mark) for BLUE BOX for, sevices in Classes 37 and 42. The TEA’s reasoning, relying on In re i.am.symbolic, llc, 866 F.3d at 1322, (quoting Herbeko Int’l v. Kappa Books, Inc., 308 F.3d 1156 (Fed. Cir. 2002)), includes only two of the du Pont factors: (1) similarities between the compared marks, and (2) relatedness of the services. This analysis does not take into consideration factors that heavily favor Applicant such as the differing channels of trade between Applicant and owner of the ‘041 Mark, the sophisticated purchase conditions, the co-existence without confusion and the recognition in the oil and gas exploration and production industry of the color blue associated with the Applicant. At the outset, Applicant concedes the marks are the same, but the other DuPont factors support no likelihood of confusion.
Applicant requests reconsideration because the facts of In re i.am.symbolic, llc are not comparable to the instant application, and certain du Pont factors were not considered by the TEA. The goods and services at issue in In re i.am.symbolic, llc were not distinguished from Registrant’s as to channels of trade and class of customers, and there were no sophisticated purchase conditions. However, in the instant application, Applicant’s services are distinguished from Registrant’s as to channels of trade and class of customers, and there are sophisticated purchase conditions that must be considered in addition to other factors.
Thus, in failing to consider the sophistication of
purchasers in the instant application, Examining Attorney has not applied the proper legal test for likelihood of confusion.
1. Sophisticated Purchasing Conditions
Examining Attorney did not consider sale conditions such as the sophistication of the purchasers to whom and the conditions under which sales are made. The Applicant’s services are:
Economic feasibility consultation services, namely, providing standard vendor and pricing list configurations to others for subsea product offerings that leverages standardized specifications and designs to maximize capital efficiency and economic viability for projects in the subsea oil and gas environment, in Class 35.
The services for the ‘041 Mark are in Classes 37 and 42 for various services for equipment installation and technical consulting and engineering services, none of which are for subsea economic feasibility consulting. Consumers for services in the highly technical areas of economic feasibility studies on one hand and heavy equipment installation and engineering technical consulting on the other, are not only sophisticated, but highly sophisticated as to discerning the source of the services.
This failure to consider these sale conditions has been found to be a legal error in Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 718 (Fed. Cir. 1992) (“The Board also apparently failed to consider, and certainly failed to address, the sophistication of the buyers.”). TMEP §1207.01(d)(vii) (citing In re N.A.D., Inc., 754 F.2d 996, 999-100, 224 U.S.P.Q. 969, 971 (Fed. Cir. 1985) expressly states “because only sophisticated purchasers exercising great care would purchase the relevant goods, there would be no likelihood of confusion merely because of the similarity between the marks NARCO and NARKOMED”) (emphasis added). See also Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270, 284 (3rd Cir. 2001) (“When consumers exercise heightened care in evaluating the relevant products before making purchasing decisions, courts have found there is not a strong likelihood of confusion. Where the relevant products are expensive, or the buyer class consists of sophisticated or professional purchasers, courts have generally not found Lanham Act violations.”) (emphasis added); Astra Pharma. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206, 220 U.S.P.Q. 786, 790 (1st Cir. 1983) (“there is always less likelihood of confusion where goods are expensive and purchased after careful consideration.”) (emphasis added); Sensient Techs. Corp. v. SensoryEffects Flavor Co., 613 F.3d 754, 765-66 (8th Cir 2010) (“The parties agree the ordinary customer of their products is sophisticated and any particular sale is the result of a long, collaborative process. Taking into consideration the sophistication of the customers and the nature of the purchasing process, the district court correctly determined the ordinary consumer would not find the marks confusingly similar”) (emphasis added). Failure to consider this factor conflicts with case law requiring an Examining Attorney to consider all relevant factors. See In re Shell Oil Co., 992 F.2d 1204, 1208 (Fed. Cir. 1993) (“The discrimination and degree of care by users of the respective services must be considered, along with other relevant factors, and given appropriate weight.”) (emphasis added).
The TTAB has reversed a likelihood of confusion refusal where the average price of applicant’s service is $25,000, and “in making a decision to purchase applicant’s services, the relevant facility owners and general contractors are all sophisticated, discriminating purchasers exercising heightened care… This du Pont factor weighs heavily in favor of reversing the Trademark Examining Attorney.” In re Pyro-Stop, LLC, 2003 WL 21500718, at *3 (T.T.A.B June 25, 2003) (reversing likelihood of confusion of Applicant’s mark PYRO-STOP over registrant’s mark PYROSTOP)(emphasis added). Similarly, Applicant’s services are offered to purchasers who are making investments often in the millions of dollars for off-shore projects. Furthermore, due to the nature of the services and the industry in which they are deployed, the consumers often require multiple interactions to discuss the Applicant’s services offering; therefore, the consumers spend significant time and effort in choosing these types of services.
The services provided that are connected with the ‘041 Mark and Applicant involve sophisticated purchasing conditions because of the substantial investment of money and time on the purchaser’s behalf. Therefore, potential purchasers of Applicant’s services are highly sophisticated and informed, and they spend a great deal of time in determining what subsea products to purchase. No likelihood of confusion could occur due to the purchase conditions and purchaser’s heightened care, in keeping with the case law.
2. Dissimilar services and dissimilar channels of trade
Examining attorney asserted that Applicant’s services in Class 35 and services of the ‘041 Markin Class 42 are so related that this factor would support likelihood of confusion. On first blush, one could assume this is the case, but one must consider the channel of trade for each service. The Applicant’s economic feasibly services, limited to the subsea environment, are for the front end of a process that only very sophisticated purchasers, primarily multi-national oil companies, engage in. The Applicant’s services are for managers to determine if an off-shore project will fit a budget, profit projections and forecasting required before the project is even initiated.
The Registrant’s services come into play after the decision has been made to go forward with a project. Moreover, the Registrant’s services do not even mention subsea or off-shore services which is the focus of the Applicant’s goods. On shore and off-shore are different channels of trade in and of themselves. The Registrant’s services of installation and consulting are directed to engineers who are involved in the field operations. The Applicant’s and Registrant’s services are directed to different functions within a company and different environments and therefor are dissimilar and different channel of trade.
3. Both Marks Are Co-Existing
One of the duPont factors is the length of time during, and the conditions under which, there has been concurrent use without evidence of actual confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361,(C.C.P.A. 1973). Applicant has been using the mark since at least as early as April 2016. Registrant has used its mark possibly a few months longer, since October 2015. There has been no confusion, since both parties have used their respective marks for almost the same amount of time. This factor favors Applicant’s position that there is no likelihood of confusion.
4. Applicant is Known for Its Blue Color Use
Applicant is a Schlumberger Company (http://www.onesubsea.slb.com/ ) and one of the impetus for using the mark BLUE BOX, was to associate with the strong identification with Schlumberger. Schlumberger is commonly referred to as “BIG BLUE”, because it logos and company color scheme feature a recognizable blue color. In fact, the media sometimes refers to Schlumberger as Big Blue as shown in the Barron’s article included as Exhibit A hereto. Schlumberger uses the color blue for company promotion and identity as shown in Exhibit B hereto.
To preclude a Schlumberger company from registering a “BLUE” service mark that does not conflict with a third party use would be a harsh and incorrect result, especially given the strong identification of the blue color with The Schlumberger Group of companies. This is another factor to be considered that favors registration.
