Priority of Use Proven; 'Frac-Sure' Registration for Oil Fracturing Canceled

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A petitioner's submission of evidence, including a technical handbook, brochures, and declarations by employees, established by preponderance of the evidence that it had used the mark “Fracsure” in connection with oil well treatment and fracturing services earlier than the first date of use claimed by the holder of a registration for the term “Frac-Sure,” the Trademark Trial and Appeal Board ruled Oct. 28 (Weatherford/Lamb Inc. v. C&J Energy Services Inc., T.T.A.B., No. 92050101, 10/28/10).

Granting a petition to cancel the trademark registration, the board noted that even though the prior use was “limited,” it was sufficient to establish use in commerce.

Oil and Gas Well Treatment Services.

C&J Energy Services Inc. holds a federal trademark registration, issued in 2008, for the term “Frac-Sure” for “oil and gas well treatment services; oil and gas well fracturing services.” In applying for registration, C&J asserted a first use date of 2007.

Also in 2008, Weatherford/Lamb Inc. filed an application to register the term “Fracsure” with respect to similar services and submitted a petition to cancel C&J's registration, alleging that it had used the term as early as 2003. Both parties moved for summary judgment. The Patent and Trademark Office found that registration of Weatherford's trademark would create a likelihood of confusion with C&J registered mark and suspended Weatherford's application pending the outcome of the cancellation proceeding.

Objections Heard, But Dismissed.

Administrative Trademark Judge Thomas W. Wellington first noted that several of C&J's objections to the admission of evidence in the record were filed about a year after they were submitted. However, the board noted that Weatherford/Lamb had been given an opportunity to respond to those objections, and had indeed done so; thus the board found no prejudice against Weatherford in considering C&J's objections fully.

However, C&J's arguments essentially amounted to “arguments regarding the probative value of the objected-to statements and materials” and thus were not directed to admissibility, the board said, declining to strike the relevant evidence from the record.

Acknowledging that there was no dispute over the question of whether a likelihood of confusion in this case, the board nevertheless applied the relevant test and concluded that a likelihood of confusion did exist.

Turning to the issue of priority, the board first said that C&J's statement of first use in its registration application was not contradicted by any subsequent evidence submitted by C&J, and thus would be “the earliest date that [C&J] is entitled to rely on for purposes of priority.”

The board rejected C&J's argument that Weatherford's asserted mark, “Fracsure,” was not inherently distinctive, but rather is a “laudatorily descriptive” term for its services. There was no evidence in the record to support this assertion, the board said. Furthermore, the term “Fracsure” was “nearly … identical” to C&J's registered mark.

Turning to evidence of use, the board noted submission by Weatherford of a sworn declaration, a technical handbook distributed to consumers, and a brochure. The “cumulative effect” of the preponderance of the evidence proffered by Weatherford established its claim of prior use, the board concluded.

The board agreed with C&J's assertion that this evidence constituted “limited examples” of use; however, the board said, even if use is limited, that does not mean that it necessarily cannot establish use in commerce.

The board thus granted Weatherford's petition to cancel C&J's trademark registration.

The board's opinion was joined by Administrative Trademark Judges T. Jeffrey Quinn and Lorelei Ritchie.

Weatherford was represented by John C. Cain of Wong, Cabello, Lutsch, Rutherford & Brucculeri, Houston. C&J was represented by Paul C. Van Slyke of Locke, Lord, Bissell & Liddell, Houston.

By Anandashankar Mazumdar


Opinion at http://pub.bna.com/ptcj/WeatherfordTTABOct28.pdf