Weatherford/Lamb, Inc.v.C&J Energy Services, Inc.

Trademark Trial and Appeal Board

Oct 28, 2010

No. 92050101 (T.T.A.B. Oct. 28, 2010)

Mailed: October 28, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Weatherford/Lamb, Inc.

v.

C&J Energy Services, Inc.
_____

Cancellation No. 92050101
_____

John C. Cain, Esq., of Wong, Cabello, Lutsch, Rutherford &
Brucculeri, L.L.P. for Weatherford/Lamb, Inc.

Paul C. Van Slyke, Esq., of Locke, Lord, Bissell & Liddell,
LLP for C&J Energy Services, Inc.
______

Before Quinn, Wellington, and Ritchie,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Weatherford/Lamb, Inc. has petitioned to cancel
Registration No. 3496546 for the mark FRAC-SURE (in standard
characters) for services identified as, “Oil and gas well
treatment services; oil and gas well fracturing services” in
International Class 40.1

1 Registration No. 3496546 issued on September 2, 2008, based on
an allegation of first use anywhere and in commerce on November
19, 2007.
THIS OPINION IS
A PRECEDENT OF
THE TTAB
Opposition No. 92050101

2
As the ground for cancellation, petitioner alleges
priority of use and likelihood of confusion. Specifically,
petitioner pleads that it is the owner of an application for
the mark FRACSURE for “oil well fracturing [and] oil and gas
treatment” services and that said application initially was
suspended pending the final disposition of respondent’s
application that matured into the subject registration, and
later refused based on that registration;2 that petitioner
has used its mark FRACSURE “in connection with offering its
consumers well treatment and well fracturing services since
at least as early as October 2003” and that it has priority
of use vis-à-vis respondent and its mark; that “as a result
of the use and promotional efforts of [petitioner], the
FRACSURE mark has come to identify the services of
[petitioner]”; and that respondent’s registration is “an
impediment to [petitioner’s] registration of its mark
FRACSURE.”
Respondent filed an answer wherein it denied the
salient allegations in the notice of opposition.

2 Petitioner’s application Serial no. 77474360 was filed on May
14, 2008, prior to issuance of respondent’s registration; on
February 18, 2010, the USPTO refused registration of petitioner’s
mark based on a likelihood of confusion with the then registered
mark. Petitioner’s application has since been suspended by the
USPTO pending the outcome of this cancellation proceeding.
Opposition No. 92050101

3
The Parties’ Cross-Motions for Summary Judgment and
Accelerated Case Resolution (ACR)

On May 27, 2009, petitioner filed a motion for summary
judgment on the pleaded ground of priority and likelihood of
confusion. In its motion, petitioner limited its argument
to the issue of priority because “respondent’s own
admissions confirm the relatedness of the parties’ services
and that confusion is likely between the marks.” Brief, p.
5.
In response, respondent filed a motion for leave to
take limited discovery, which was granted by the Board to
the extent that petitioner was allowed time to respond to
certain outstanding discovery requests already propounded by
respondent. Petitioner’s discovery responses were served on
respondent,3 and respondent subsequently filed (on June 14,
2010) its opposition to petitioner’s summary judgment motion
and a cross-motion for summary judgment. On June 17, 2010,
respondent filed a “motion to strike” that essentially
consists of evidentiary objections to certain materials
submitted by petitioner in support of its summary judgment
motion.

3 Prior to serving its discovery responses, petitioner filed a
motion for protective order requesting that it need only produce
limited or “representative samples” of responsive documents. A
telephone conference between the assigned Board interlocutory
attorney and the parties took place on May 4, 2010, and the
motion was granted. A Board order issued on May 6, 2010,
summarizing the conference.
Opposition No. 92050101

4
The cross motions for summary judgment and motion to
strike were completely briefed by the parties.
Then, on August 26, 2010, respondent filed a copy of
the parties’ Stipulation for Application of Accelerated Case
Resolution (ACR) in Resolving Parties’ Cross-Motions for
Summary Judgment. Specifically, the parties stipulated that
the Board may “resolve this proceeding based on the parties’
summary judgment submissions”; that the Board “may consider
the parties’ summary judgment submissions as the parties’
final briefs”; and that the Board “may resolve any genuine
issues of material fact, including the drawing of reasonable
inferences from any such fact(s), presented by the parties’
cross motions.”
On August 31, 2010, the Board issued an order notifying
counsel for both parties that the stipulation to resolve the
instant proceeding by way of ACR was approved. To be
entirely clear, our resolution of this proceeding is based
on all submissions of the parties previously submitted in
support of their briefing of the cross motions for summary
judgment subject, of course, to respondent’s objections to
certain evidence discussed below. In other words, we do not
view the parties’ stipulation to have the merits of this
case resolved via the Board’s ACR procedure as including a
waiver or withdrawal of respondent’s previously briefed
motion to strike. Had the parties intended us to consider
Opposition No. 92050101

5
the cross motions for summary judgment and the merits of the
case without regard to such motion, the stipulation would
have so stated.4
Evidentiary Objections
In its motion to strike, respondent objects to certain
portions of the declarations (or exhibits thereto) submitted
by petitioner in support of its summary judgment motion. In
essence, respondent’s objections are attacks on the
probative value of the statements in the declarations or the
exhibits attached thereto. Respondent argues that certain
statements and exhibits are either “argumentative” or “state
a legal conclusion” or are “vague and conclusory” or
“irrelevant.” Respondent objects to some specific
statements regarding petitioner’s activities during certain
years despite the declarant stating that he retired prior to

4 Parties may confirm an agreement to proceed by ACR either by
informing the Board interlocutory attorney assigned to the
proceeding during a telephone conference or by filing a
stipulation. In proceedings where there are pending motions or
outstanding matters that do not necessarily go to the merits of
the claims or issues to be resolved by ACR, the parties opting to
use the ACR procedure must either address the status of the
motions or matters in their stipulation, or conference with the
interlocutory attorney in order to clarify the particular claims
issues that are in dispute and which are being submitted to the
Board for resolution by ACR.
In general, the Board encourages parties to consider use of ACR
and parties are required to discuss the possibility in their
initial settlement and discovery planning conference. To promote
discussion of ACR in that conference, or during any subsequent
discussions about the use of ACR, the Board has posted Frequently
Asked Questions (FAQs) and other material about ACR on its web
page, to illustrate the flexibility of the process and various
approaches to ACR that have been utilized in other cases. See:
http://www.uspto.gov/trademarks/process/appeal/index.jsp
Opposition No. 92050101

6
the years in question. Ultimately, respondent requests that
the objectionable evidence be stricken from the record.
In response, petitioner first objected to the
timeliness of respondent’s objections, noting that they were
not raised earlier with respondent’s Rule 56(f) motion, but
were filed shortly after respondent filed its substantive
response to petitioner’s summary judgment motion.
Petitioner nevertheless attempted to overcome the objections
by filing amended declarations for two of the declarants.5
Petitioner also argued the merits of the objections and the
relevance of the cases cited by respondent in support of the
objections.
Respondent did not address petitioner’s amended
declarations or otherwise address petitioner’s responses to
the objections.
We agree with petitioner that respondent’s objections
should have been raised promptly and not nearly one year
after the evidentiary submissions were received. However,
since petitioner did have an opportunity to respond to the
objections, and indeed did do so fully, we see no prejudice
to petitioner; thus we exercise our discretion and will
consider respondent’s objections despite any tardiness.

5 Petitioner attached (as Exhibits J and K) the amended
declarations of Messrs. Gaspar and King to its response (filed on
July 20, 2010).
Opposition No. 92050101

7
As mentioned, respondent’s objections are essentially
arguments regarding the probative value of the objected-to
statements and materials. That is, respondent’s objections
do not address admissibility, but request the Board to
strike the items of evidence because they have little or no
value as evidence. We decline to strike the evidence and
choose to evaluate all of the declarants’ statements and
exhibits for appropriate probative value, and to weigh the
evidence in its totality. Further, we find the declarations
(and attached exhibits) submitted by petitioner are
admissible and in compliance with Fed. R. Civ. P. 56(e) and
the Board’s rules. See TBMP § 528.05 (and subsections) (2d
ed. rev. 2004).
The Record
By operation of Trademark Rule 2.122, 37 C.F.R. §2.122,
the record in this case consists of the pleadings and the
file of the involved registration. In addition, pursuant to
the parties’ ACR stipulation, the parties’ summary judgment
submissions are of record.
In support of its motion for summary judgment,
petitioner filed the following: the declaration of Mr.
Barry B. Ekstrand, Global Director of Technologies with
Weatherford US, LP, and attached exhibits; the declaration
of Mr. Bob Gaspar, a former Senior Copywriter for a wholly-
Opposition No. 92050101

8
owned subsidiary of petitioner, and attached exhibits; the
declaration of Mr. Steve King, Sales and Technical Manager
with a wholly-owned subsidiary of petitioner, and attached
exhibits; a copy of a USPTO Office action suspending
petitioner’s pleaded application; a copy of respondent’s
response to petitioner’s first set of admission requests;
copies of respondent’s responses to petitioner’s first and
second sets of interrogatories; and a copy of an invoice
dated November 19, 2007. With its reply brief, petitioner
filed amended declarations of Messrs. King and Gaspar.
In support of its cross motion for summary judgment,
respondent filed a declaration of Thomas L. Casagrande, an
attorney with the law firm representing respondent, with
attached exhibits that include copies of representative
invoices and proposals from petitioner, and a copy of a
purported presentation made by petitioner, all produced by
petitioner in response to discovery requests.
Standing
Inasmuch as petitioner has made of record the USPTO
Office action suspending its pleaded application pending the
possible refusal to registration under Section 2(d) of the
Lanham Act based on an alleged likelihood of confusion with
respondent’s registration,6 there is no question that

6 See footnote 2.

Opposition No. 92050101

9
petitioner has standing to bring this petition for
cancellation. Cerveceria Modelo S.A. de C.V. v. R.B. Marco
& Sons, Inc., 55 USPQ2d 1298, 1300 (TTAB 2000). See also,
Hartwell Co. v. Shane, 17 USPQ2d 1569, 1570 (TTAB 1990); and
TBMP § 309.03(b) (2d ed. rev. 2004).
Likelihood of Confusion
With respect to the issue of likelihood of confusion,
we have, in making our determination, considered those
factors set forth in In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973) which are relevant
and for which there is evidence of record. However, we
point out that likelihood of confusion is not in dispute in
this proceeding. The parties are essentially in agreement
that their respective marks and services are the same (or
nearly so). Respondent has admitted that the parties’
respective marks are “phonetically identical”, “evoke[]
identical commercial impressions”, and “have the same
connotation.” Responses to Requests for Admissions Nos. 5,
6, 16. Respondent also admitted that the parties are
“competitors in the oil and gas well treatment and
fracturing services industry” and that “petitioner’s
customers of goods or services offered under petitioner’s
mark overlap with respondent’s customers of goods or
services offered under respondent’s mark.” Responses to
Opposition No. 92050101

10
Requests for Admissions Nos. 17 and 20. Our review of the
record confirms these admissions.
Ultimately, we conclude there is a likelihood of
confusion between the parties’ nearly identical marks as
used on their overlapping or identical oil and gas well
services. Accordingly, we proceed to the issue of priority.
Priority
It is well settled that in the absence of any evidence
of earlier use, the earliest date upon which respondent may
rely is the filing date of the underlying application that
matured into the subject registration. See Trademark Act
Section 7(c), 15 U.S.C. §1057(c). See also Larami Corp. v.
Talk to Me Programs, Inc., 36 USPQ2d 1840 (TTAB 1995). In
this case, the application that matured into the
registration at issue herein was accorded a filing date of
February 28, 2007. Inasmuch as respondent did not submit
evidence demonstrating use of its mark FRAC-SURE prior to
this constructive use date, this is the earliest date that
it is entitled to rely on for purposes of priority.
Thus, in order for petitioner to establish priority and
ultimately prevail in this proceeding, it must demonstrate
that it used its pleaded mark FRACSURE in commerce prior to
respondent’s priority date. See Trademark Act Section 2, 15
U.S.C. §1052 [to establish priority on a likelihood of
Opposition No. 92050101

11
confusion claim brought under Trademark Act § 2(d), a party
must prove that, vis-a-vis the other party, it owns “a mark
or trade name previously used in the United States ... and
not abandoned...”]. The prior use may, but need not, be
technical trademark use. Indeed, a party may establish
prior use through “use analogous to trademark use” which is
non-technical use of a trademark in connection with the
promotion of services “under circumstances which do not
provide a basis for an application to register, usually
because the statutory requirement for use on or in
connection with the sale of goods [or services] in commerce
has not been met.” Shalom Children's Wear Inc. v. In-Wear
A/S, 26 USPQ2d 1516, 1519 (TTAB 1993).
In the present case, petitioner relies on actual or
technical use of its mark in commerce. When we are
considering evidence of a party's alleged prior use in
commerce, we must not look at only the individual pieces of
evidence. Instead, we also must look at the total picture
that the evidence presents.
[W]hether a particular piece of evidence by itself
establishes prior use is not necessarily dispositive as
to whether a party has established prior use by
preponderance. Rather, one should look at the evidence
as a whole, as if each piece of evidence were part of a
puzzle which, when fitted together, establishes prior
use.
West Florida Seafood, Inc. v. Jet Restaurants, 31 F.3d 1122,
31 USPQ2d 1660 at 1663 (Fed. Cir. 1994).
Opposition No. 92050101

12
We note that respondent argues at great length in its
brief that petitioner’s pleaded mark, FRACSURE, is not
inherently distinctive and, in order for petitioner to
prevail, petitioner must show that “its use created
‘secondary meaning’ in the alleged mark” before respondent’s
priority date.7 Brief, p. 1-2. Respondent contends that
“[a]s petitioner uses it, FRACSURE is, at best a rarely-
employed laudatory advertising slogan that does not indicate
source.” Id. at p. 2. Petitioner, on the other hand,
argues that the parties’ marks, FRACSURE and FRAC-SURE, are
inherently distinctive and that proof of secondary meaning
is not required to establish rights therein.
“Under the rule of Otto Roth, a party opposing [or
seeking to cancel] registration of a trademark due to a
likelihood of confusion with his own unregistered term
cannot prevail unless he shows by a preponderance of the
evidence that his term is distinctive of his goods, whether
inherently or through the acquisition of secondary meaning
or through ‘whatever other type of use may have developed a
trade identity.’” Towers v. Advent Software Inc., 913 F.2d
942, 16 USPQ2d 1039, 1041 (Fed. Cir. 1990), citing, Otto

7 In its brief, respondent incorrectly states that its filing
date is November 19, 2007. However, this date is the date upon
which respondent alleges that it first used its mark and, as
noted in this decision, respondent may actually rely on the
filing date of the application, i.e., February 28, 2007, which is
earlier.
Opposition No. 92050101

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Roth & Co. v. Universal Food Corp., 640 F.2d 1317, 209 USPQ
40, 43 (CCPA 1981).
There are several problems with respondent’s assertion
that petitioner’s mark, FRACSURE, is not inherently
distinctive. First, respondent does not explain what
specific laudatory meaning it attributes to petitioner’s
mark. To the extent that respondent is arguing that
petitioner’s pleaded mark is, on its face, a “laudatorily
descriptive” term for the services rendered, there is no
evidence in the record to support this. “Fracsure” is not
found in the dictionary and the record does not establish
that the term has a recognized meaning in the industry other
than perhaps its suggestion of reliable oil well
“fracturing” services. Accordingly, it appears on the
record before us to be a coined term, albeit one that is
evocative of the term fracture. Finally, we would be remiss
if we did not point out that the subject registration, again
for nearly an identical mark and services, issued based on
the mark being presumptively inherently distinctive inasmuch
as there is no claim of acquired distinctiveness. With the
above in mind and based on the record before us, we conclude
that petitioner’s pleaded mark, FRACSURE, likewise is
inherently distinctive.
Apart from labeling petitioner’s mark “lauditorily
descriptive,” respondent also attacks petitioner’s use of
Opposition No. 92050101

14
its mark as “sporadic” and “not [as] a source identifier.”
Brief, p. 4. To the extent that respondent is arguing that
petitioner’s evidence of use does not amount to trademark
use or use analogous thereto, this is a fair argument. As
already noted, it is petitioner’s burden in this case to
establish, by a preponderance of the evidence, that it has
prior use of its mark. We therefore turn to the evidence
that petitioner has submitted.
In his declaration, Mr. Ekstrand states that he is
Global Director of Technologies, Pumping and Chemical
Services for a subsidiary and related company of petitioner.
He further states that petitioner has “since October 2003
... continuously used its FRACSURE Mark in commerce in
connection with its advertising and offering of oil well
fracturing services and oil and gas well treatment services”
(paragraph 4); that “[i]n late 2002 or early 2003 and
continuing into 2005, I, along with other [petitioner]
personnel, developed the Weatherford FracSureSM Technical
Handbook" (paragraph 7, copy of handbook attached as Exhibit
A1); that the purpose of the handbook was to “introduce
potential customers to [petitioner’s] services” and to
“provide customers and potential customers of [petitioner’s]
services with practical information that is useful in the
well fracturing process...” (paragraph 8); that in
“approximately December 2005 or January 2006, [petitioner]
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ordered 3,000 copies of the FracSureSM Technical Handbook
from Grover Printing. A true and correct copy of the
invoice...is attached” (paragraph 9, copy of invoice
attached as Exhibit A2); and that “to date, [petitioner has]
distributed more than 2,300 copies of [the handbook] to its
customers or potential customers in connection with the
advertising and performance of its FRACSURE services”
(paragraph 10); and that petitioner distributed a
“Weatherford WellNess Profile” brochure to approximately 187
employees of BP, one its customers, in 2004” (paragraph 11,
copy of brochure attached as Exhibit A3). The mark appears
in the brochure in the following manner:

Mr. Steve King, a U.S. Region, Sales and Technical
Manager with a wholly-owned subsidiary and related company
of petitioner, corroborates much of Mr. Ekstrand’s testimony
regarding the services that petitioner renders and the
“FracSure Technical Handbook.”8 Specifically, he states
that “while Mr. Barry Ekstrand was developing [the handbook]

8 All references are to Mr. King’s declaration, as amended.

Opposition No. 92050101

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in 2003, I created a list of individuals to whom I
anticipated distributing a copy” (paragraph 4, copy of Mr.
King’s “preliminary list of intended recipients” is attached
as Exhibit G1); that “after [petitioner’s handbook” was
printed, [petitioner’s] personnel, including myself, began
distributing copies of the handbook to [petitioner’s]
customers and potential customers” (paragraph 5); that he
initially “kept a list of the individuals to whom [he]
distributed a copy of the handbook” and a copy of that list
is attached as Exhibit G2; that petitioner’s personnel use
the handbook when communicating information to the customer
and the handbook is “a lead document that we use in
rendering well fracturing services” (paragraphs 7-8); and
that he has used the handbook “in front of [petitioner’s]
customers at least a hundred times” (paragraph 10).
Finally, Mr. Bob Gaspar states that he is a former
(retired in 2007) “senior copywriter” for a wholly-owned
subsidiary and related company of petitioner and currently
is a consultant to petitioner, “writing advertisements and
sales brochures for petitioner to the present day.”
(Paragraph 2). He avers that he “created the name FRACSURE
and brainstormed ways to used the FRACSURE Mark in
[petitioner’s] marketing and advertising materials at least
ten months prior to [petitioner’s] first use of the Mark in
October 2003” (paragraph 5) and that Exhibit B2 represents
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“internal emails and other documents relating to
[petitioner’s] advertising strategies for its FRACSURE mark;
that “on October 13, 2003, [petitioner] first published and
distributed brochures advertising its FRACSURE services” and
that Exhibit B1 is a “true and correct copy of one such
Brochure.” (paragraph 4). Mr. Gaspar attested to the
authenticity of other brochures and materials (attached as
exhibits to his declaration) used by petitioner prior to
February 28, 2007.
The cumulative effect of the aforementioned
declarations (with attached exhibits) establishes
petitioner's claim of prior use. That is, the totality of
the evidence shows that petitioner used the mark FRACSURE in
connection with its oil and gas well treatment services
prior to February 28, 2007. West Florida Seafood, 31 USPQ2d
at 1663. In the exhibits to the declarations, there are
clear examples of petitioner’s prior use of the mark
FRACSURE (appearing as “FracSure”) being used in connection
with oil and gas well services. While the housemark
WEATHERFORD or generic wording appears frequently with
petitioner’s mark FRACSURE, this does not detract from the
source-identifying nature of the mark. It is well settled
that a party may use more than one mark to identify a
product or service and thus may choose to use its housemark
in conjunction with other marks. Furthermore, use of a mark
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in conjunction with descriptive or generic terms, even
nouns, does not render the mark a mere laudatory adjective.
Respondent has attacked petitioner’s evidence based on
petitioner’s limited examples of use of the mark and the
absence of any evidence showing petitioner used the FRACSURE
mark on invoices or proposals, all in spite of petitioner’s
substantial revenue involving its oil and gas well services.
Although respondent is correct in many respects that
petitioner’s evidence of use is limited, this does not mean
that such use is so insubstantial that it cannot be
considered use in commerce or that it cannot be reasonably
inferred that there has been a public association with the
mark FRACSURE and petitioner’s services. To the contrary,
we find the evidence of petitioner’s prior use to be
sufficient for purposes of establishing use in commerce of
the mark FRACSURE in connection with oil and gas well
services, and that such use occurred prior to February 28,
2007. Ultimately, petitioner has proven priority.
In sum, we find that petitioner has shown by a
preponderance of the evidence that there is a likelihood of
confusion between the parties’ respective marks and
services, and that petitioner has also prior use of its
mark.
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DECISION: The petition for cancellation is granted,
and respondent’s registration (No. 3496546) will be
cancelled in due course.