November/December 2010 Issue
TTAB Cases
Weatherford/Lamb, Inc. v. C&J Energy Servs., Inc.,
Canc. No. 92050101 (TTAB Oct. 28, 2010)
ABSTRACT
In this cancellation proceeding, Petitioner and Respondent elected to proceed under the TTAB’s Accelerated Case Resolution (“ACR”) procedure, stipulating to have the TTAB decide the case based on their cross-motions for summary judgment. The TTAB concluded that there was a likelihood of confusion between the parties’ nearly identical FRAC-SURE and FRACSURE marks as used in connection with their overlapping or identical oil and gas-well services. On Petitioner’s priority claim, the TTAB found that Petitioner had established prior use based on evidence contained in the declaration testimony of three of Petitioner’s witnesses, and the attached exhibits showing use of the FRACSURE mark. Accordingly, the TTAB cancelled Respondent’s registration.
CASE SUMMARY
FACTS
Weatherford/Lamb, Inc. (“Petitioner”) filed a petition to cancel C&J Energy Services, Inc.’s (“Respondent”) registration for the FRAC-SURE mark for “oil and gas well treatment services; oil and gas well fracturing services” on the grounds of priority of use and likelihood of confusion. Specifically, Petitioner alleged that it owned prior rights in the confusingly similar mark FRACSURE in connection with well-treatment and well-fracturing services.
Petitioner filed a motion for summary judgment on the grounds of priority and likelihood of confusion. Petitioner limited its argument to the issue of priority, however, because Respondent’s admissions arguably confirmed the relatedness of the parties’ services and that confusion was likely. After engaging in limited Rule 56(f) discovery approved by the TTAB, Respondent filed its opposition to Petitioner’s summary-judgment motion, a cross-motion for summary judgment, and a motion to strike certain evidence submitted by Petitioner in support of its summary-judgment motion. Several months later, Respondent filed a copy of the parties’ Stipulation for Application of Accelerated Case Resolution (ACR) in Resolving Parties’ Cross-Motions for Summary Judgment. The parties had stipulated that the TTAB may “resolve this proceeding based on the parties’ summary judgment submissions,” “consider the parties’ summary judgment submissions as the parties’ final briefs,” and “resolve any genuine issues of material fact, including the drawing of reasonable inferences from any such fact(s), presented by the parties’ cross motions.” The TTAB approved the ACR stipulation.
ANALYSIS
Based on the parties’ ACR stipulation, the TTAB noted that its resolution of the proceeding was based on all submissions of the parties previously submitted in support of their briefing of the cross-motions for summary judgment, subject to Respondent’s objections to certain evidence. The TTAB did not view the parties’ ACR stipulation as a waiver or withdrawal of Respondent’s previously briefed motion to strike. The TTAB indicated that the parties would have stated that the motion to strike should be disregarded in their ACR stipulation if that was their intent. In a footnote, the TTAB expanded on this point and its ACR procedures:
Parties may confirm an agreement to proceed by ACR either by informing the Board interlocutory attorney assigned to the proceeding during the 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 [and] issues that are in dispute and which are being submitted to the Board for resolution by ACR.
The TTAB further noted that it “encourages parties to consider use of ACR” and has provided materials about ACR on its website “to illustrate the flexibility of the process and various approaches to ACR that have been utilized in other cases.”
Regarding Respondent’s evidentiary objections, Respondent had objected to portions of the declarations (or exhibits thereto) submitted by Petitioner in support of its summary-judgment motion because certain statements were argumentative, stated legal conclusions, were vague and conclusory, or were irrelevant. Further, some statements in the declarations allegedly related to activities occurring during years after the declarants had retired. In response, Petitioner 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.
The TTAB agreed with Petitioner that Respondent’s objections should have been made promptly and not nearly one year after the evidentiary submissions were received. However, because Petitioner did have an opportunity to respond to the objections, and did so fully, the TTAB found no prejudice to Petitioner and exercised its discretion to consider Respondent’s objections despite any tardiness. The TTAB then declined to strike the evidence and, instead, chose to evaluate all of the declarants’ statements and exhibits for appropriate probative value, and to weigh the evidence in its totality.
On the claim of likelihood of confusion, the TTAB noted that the issue was not in dispute because the parties had agreed that their respective marks and services were the same (or nearly so) and Respondent had made a number of admissions during discovery to this effect. The TTAB’s review of the record confirmed these admissions and it concluded that there was a likelihood of confusion between the parties’ nearly identical marks as used in connection with their overlapping or identical oil and gas services.
With respect to priority, the TTAB found that Respondent’s filing date of February 28, 2007, was the earliest date on which it was entitled to rely because it did not submit any evidence demonstrating use of its FRAC-SURE mark before that date, and found that Petitioner had established priority. The TTAB concluded that Petitioner’s FRACSURE mark was inherently distinctive because it was not found in the dictionary and the record did not establish that the term had a recognized meaning in the industry other than the suggestion of reliable oil-well “fracturing” services, and Respondent’s registration for the nearly identical mark and services issued without a claim of acquired distinctiveness. The TTAB then dismissed Respondent’s argument that Petitioner’s use was “sporadic” and “not [as] a source identifier” by finding that Petitioner’s declaration testimony of three separate witnesses and exhibits to the declarations showing use of the mark supported its claim of use of the mark prior to Respondent. The TTAB explained that the use of the housemark WEATHERFORD or generic wording with Petitioner’s FRACSURE mark did not detract from the source-identifying nature of the mark because 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. Further, use of a mark in conjunction with descriptive or generic terms (even nouns) does not render the mark a mere laudatory adjective. The TTAB also found that although Petitioner’s use was limited, it was not so insubstantial to fall short of establishing use in commerce or supporting the reasonable inference that there had been a public association with the FRACSURE mark and Petitioner’s services.
Thus, the TTAB held that Petitioner had shown a likelihood of confusion and priority, and granted its petition for cancellation.
CONCLUSION
If parties elect to proceed under ACR, the TTAB recommends that they address any pending motions or outstanding matters that do not go to the merits of the claims or issues to be resolved by ACR in their ACR stipulation, or conference with the interlocutory attorney to clarify the particular claims and issues that are in dispute and that are being submitted for resolution by ACR.
