To: | Schlumberger Technology Corporation (trademark@boulwarevaloir.com) |
Subject: | U.S. Trademark Application Serial No. 88665040 - SYMPHONY - STC-SYMPHONY |
Sent: | February 05, 2020 06:07:37 PM |
Sent As: | ecom122@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88665040
Mark: SYMPHONY
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Correspondence Address: |
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Applicant: Schlumberger Technology Corporation
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Reference/Docket No. STC-SYMPHONY
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: February 05, 2020
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4428480. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The applicant has applied to register the mark SYMPHONY in standard character format for “Technical support services and consultation in the field of oil and gas well equipment, tools, and control systems for drilling and production operations” in class 037 and “Technical support services and consultation for oil well testing to optimize drilling and production operations” in class 042.
The mark in Registration No. 4428480 is SYMPHONY in standard character format for “Geophysical services for the oil and gas industries, namely, seismic data acquisition with spatially optimized source and receiver distribution” in class 042.
Please note, both marks are in standard character format.
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 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 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.
Comparison of the Marks
In the present case, applicant’s mark is SYMPHONY and registrant’s mark is SYMPHONY. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective services. Id.
Therefore, the marks are confusingly similar.
Comparison of the Services
The applicant’s services are “Technical support services and consultation in the field of oil and gas well equipment, tools, and control systems for drilling and production operations” in class 037 and “Technical support services and consultation for oil well testing to optimize drilling and production operations” in class 042.
The registrant’s services in Registration No. 4428480 are “Geophysical services for the oil and gas industries, namely, seismic data acquisition with spatially optimized source and receiver distribution” in class 042.
As the attached evidence shows, the applicant's technical support and consultation services in the fields of oil well testing and oil and gas well equipment, tools, and control systems and registrant’s seismic data acquisition services for the oil and gas industries in Registration No. 4428480 are commercially related, because many companies provide these types of services.
The attached Internet evidence consists of screenshots from SRC Subsurface Resource Consulting, Spider Egypt for Petroleum Services, EPI Group and SRK Consulting. See http://www.subresconsult.com/services, http://www.spiderpetroleum.com/consulting-services/geoscience, http://www.spiderpetroleum.com/consulting-services/reservoir-engineering, http://www.spiderpetroleum.com/consulting-services/production-engineering, http://www.spiderpetroleum.com/consulting-services/technical-consultants, http://www.epigroup.com/services/seismic/, http://www.epigroup.com/services/drilling/, http://www.epigroup.com/services/geoscience/, http://www.srk.com/en/our-services/petroleum/exploration/ww-geophysics and http://www.srk.com/en/our-services/petroleum/ww-coal-bed-methane. This evidence establishes that the same entity commonly provides the relevant services and markets the services under the same mark. Thus, applicant’s and registrant’s 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). Accordingly, purchasers are likely to be confused as to the source of the services when they encounter technical support and consultation services in the fields of oil well testing and oil and gas well equipment, tools, and control systems and seismic data acquisition services for the oil and gas industries offered under highly similar marks. Therefore, applicant's services and registrant's services are considered related for likelihood of confusion purposes.
In summary, the marks are confusingly similar and the services are related. Therefore, purchasers are likely to be confused as to the source of the services. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.
IDENTIFICATION OF SERVICES REQUIREMENT
The wording “Technical support services and consultation in the field of oil and gas well equipment, tools, and control systems for drilling and production operations” in the identification of services is indefinite and must be clarified because applicant must further specify the type of technical support services provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
International Class 042
The wording “Technical support services and consultation for oil well testing to optimize drilling and production operations” in the identification of services is indefinite and must be clarified because applicant must further specify the type of technical support services provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate:
Class 037: “Technical support services, namely, technical consulting related to the installation of oil and gas well equipment, oil and gas well tools, and control systems for oil and gas well drilling and production operations”
Class 042: “Technical support services, namely, providing technical advice related to oil well testing to optimize drilling and production operations; Technical support services, namely, technical consultation in the field of oil well testing to optimize drilling and production operations”
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.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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 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.
How to respond. Click to file a response to this nonfinal Office action.
/Rebecca Lee/
Examining Attorney
Law Office 122
(571) 272 - 7809
Rebecca.Lee1@uspto.gov
RESPONSE GUIDANCE