To: | BJ Services, LLC (TMDocketing@wbd-us.com) |
Subject: | U.S. Trademark Application Serial No. 88721058 - TITAN - 107245.050.6 |
Sent: | March 12, 2020 05:27:10 PM |
Sent As: | ecom115@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 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88721058
Mark: TITAN
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Correspondence Address: WOMBLE BOND DICKINSON (US) LLP
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Applicant: BJ Services, LLC
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Reference/Docket No. 107245.050.6
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: March 12, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES:
PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO THE CLASS SPECIFIED THEREIN
Applicant has applied for the mark TITAN (in special form) for “Oil and gas well stimulation equipment, namely, equipment for hydraulic fracturing of oil and gas wells; oil and gas well equipment for hydraulic fracturing of oil and gas wells, namely, a mobile oil and gas well stimulation system having a turbine and a coupled fluid pump for supplying fracturing fluid to oil and gas wells” in International Class 7; and “Oil and gas well stimulation services, namely, hydraulic fracturing; oil and gas well stimulation services, namely, supplying fracturing fluid to oil and gas wells using mobile modules having a turbine and a coupled fluid pump” in International Class 37.
Please note that the stated refusal refers to “Oil and gas well stimulation services, namely, hydraulic fracturing; oil and gas well stimulation services, namely, supplying fracturing fluid to oil and gas wells using mobile modules having a turbine and a coupled fluid pump” in International Class 37 only and does not bar registration for the goods in International Class 7.
Registrant’s marks are:
Cited Registration Nos. 1, 2 and 3 are owned by Titan Oil Recover, Inc, a Delaware corporation.
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 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In the present case, applicant’s mark is TITAN, Cited Registration No. 1 is TITAN, Cited Registration No. 2 is TITAN OIL RECOVERY, INC., and Cited Registration No. 3 is TITAN PROCESS. 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). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34). In this case, the literal element of applicant’s mark is identical to the mark in Cited Registration No. 1.
Although Cited Registration Nos. 2 and 3 contain additional wording, disclaimed matter that is descriptive of or generic for a party’s services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). In this case, Cited Registration No. 2 has disclaimed “OIL RECOVERY, INC.” and Cited Registration No. 3 has disclaimed “PROCESS”. Thus, the wording “TITAN” is dominant for purposes of the likelihood of confusion analysis for each of these marks.
Although applicant’s mark and Cited Registration No. 2 contain design elements, 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 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)). Thus, the literal element of applicant’s mark, “TITAN”, and the literal element of Cited Registration No. 2, “TITAN OIL RECOVERY, INC.” is more dominant than the design for purposes of the likelihood of confusion analysis.
Therefore, applicant’s mark and registrant’s marks share the same commercial impression and are confusingly similar.
Comparison of Services
The 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).
Since the marks are similar and the services are related, there is a likelihood of confusion as to the source of the services. Therefore, applicant’s mark is refused registration under Section 2(d) of the Trademark Act.
Partial Refusal Advisory – Section 2(d) Refusal
(1) Deleting the services to which the refusal pertains; or
(2) Filing a Request to Divide Application form (form #3) to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
AMENDED DESCRIPTION OF MARK REQUIRED
The following description is suggested, if accurate:
The mark consists of the stylized word “TITAN” with a stylized leaf design extending outwardly from within the upper right portion of the letter “N” in “TITAN”.
AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED
The wording in the identification of goods and services must be clarified as indicated below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
First, the wording “oil and gas well stimulation equipment, namely, equipment for hydraulic fracturing of oil and gas wells” in International Class 7 is indefinite and too broad. The wording must be clarified because the nature of the goods are not clear and could identify goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). For example, “high-pressure pumps for use in oil or gas well hydraulic fracturing operations” is in International Class 7, but “bridge plugs and fracturing plugs composed of plastic and synthetic rubber for controlling pressure or fluids downhole” is in International Class 20.
Applicant may substitute the following wording, if accurate (suggested language in bold):
International Class 7: Oil and gas well stimulation equipment in the nature of equipment for hydraulic fracturing of oil and gas wells, namely, {identify specific types of equipment used for hydraulic fracturing of oil and gas wells in Class 7, e.g., high-pressure pumps for use in oil or gas well hydraulic fracturing operations, slurry blender machines for use in oil or gas well hydraulic fracturing operations}; oil and gas well equipment for hydraulic fracturing of oil and gas wells, namely, a mobile oil and gas well stimulation system comprised of a {list all components of system} turbine and a coupled fluid pump for supplying fracturing fluid to oil and gas wells
International Class 20: Oil and gas well stimulation equipment in the nature of equipment for hydraulic fracturing of oil and gas wells, namely, {identify specific types of equipment used for hydraulic fracturing of oil and gas wells in Class 20, e.g., bridge plugs and fracturing plugs composed of plastic and synthetic rubber for controlling pressure or fluids downhole}
International Class 37: Oil and gas well stimulation services, namely, hydraulic fracturing; oil and gas well stimulation services, namely, supplying fracturing fluid to oil and gas wells using mobile modules having a turbine and a coupled fluid pump
Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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 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
(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 already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least three (3) classes; however, applicant submitted fees sufficient for only two (2) 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
The USPTO changed the federal trademark rules to eliminate the TEAS RF application, which is now considered a “TEAS Standard” application. See 37 C.F.R. §2.6(a)(iii). The fee for adding classes to a TEAS Standard application is $275 per class. See id. For more information about these changes, see the Mandatory Electronic Filing webpage.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Pauline Ha/
Examining Attorney
Law Office 115
(571) 272-5005
pauline.ha@uspto.gov
RESPONSE GUIDANCE