Arch Rental, LLC

Trademark Trial and Appeal Board

Feb 7, 2020

87727814 (T.T.A.B. Feb. 7, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 7, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Arch Rental, LLC
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Serial Nos. 87727814 & 878085711
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Cara M. Pinto of Law Office of K&L Gates LLP
for Arch Rental, LLC.

Jules Dean,2 Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____
Before Zervas, Lykos, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

1 Because the cases have common questions of fact and law, the appeals are hereby
consolidated. See, e.g., In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012) (the Board sua
sponte consolidated two appeals). Citations to the TSDR and TTABVUE record are for
Application Serial No. 87727814, the parent case, except where indicated.
2 The applications initially were examined by Gaynne Zimmerman, then were reassigned to
Jules Dean at the briefing stage.
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I. Background and Evidentiary Objection
Arch Rental, LLC (“Applicant”) seeks registration on the Principal Register of the
mark ARCH RENTAL in standard characters and the mark ,
both with disclaimers of “RENTAL,” for:
Rental services in the fields of rotating control devices,
diverters, and various rubbers such as stripper, wiper, and
casing rubbers for use in general drilling applications for
oil, gas, water, and geothermal drilling including oil and
gas spudding applications, water well applications,
geothermal applications, geotechnical applications, open
pit mining applications, underground mining applications,
construction applications, monitoring well applications,
blast hole sampling applications, mineral grade control
applications, and anchor hole drilling applications in
International Class 37.3
The Examining Attorney refused registration in both applications under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion
with the registered mark ARCHROCK in standard characters for goods and services
including “leasing natural gas and oil compression and extraction equipment,
petrochemical compression and extraction equipment” in International Class 37.
After the Examining Attorney made the refusal final, Applicant requested

3 Application Serial No. 87727814 for the composite mark was filed December 20, 2017 under
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on an alleged use of the mark
in commerce. The application includes the following description of the mark: “The mark
consists of the stylized words ‘ARCH RENTAL’ with the ‘A’ in ‘ARCH’ formed by an image of
an oil drilling rig.” Application Serial No. 87808571 for the standard-character mark was
filed February 23, 2018 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based
on an alleged use of the mark in commerce.
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reconsideration and appealed. Once the Examining Attorney denied reconsideration,
the appeals resumed.
The Examining Attorney objects to Applicant’s inclusion in its Briefs of a list of
four third-party registrations that were not included in the record. Applicant offers
no justification for the untimely evidence. As noted in In re Promo Ink, 78 USPQ2d
1301, 1303-04 (TTAB 2006):
First, the submission of this evidence for the first time in
applicant’s briefs is untimely. 37 CFR § 2.142(d). Second, if
applicants or examining attorneys would like to rely on
third-party registrations for support of their position, they
must submit a copy of those registrations. Simply
providing a list of registrations is not sufficient. In re
Duofold, Inc., 184 USPQ 638, 640 (TTAB 1974) (“The
submission of a list of registrations is insufficient to make
them of record”). Applicant did not do that in this case and,
therefore, we will not consider as evidence the registrations
listed in applicant’s briefs.
Accordingly, we sustain the objection and the list of third-party registrations referred
to for the first time in Applicant’s Briefs is excluded.4 See In re Inn at St. John’s, LLC,
126 USPQ2d 1742, 1744 (TTAB 2018), aff’d, Slip Op. No. 18–2236 (Fed. Cir. Sept. 13,
2019) (mem).
For the reasons set forth below, we affirm the refusal to register in both
applications.

4 As a result, Applicant’s argument that the cited mark is weak and entitled to a narrow scope
of protection lacks any supporting evidence, and so is unpersuasive.
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II. Likelihood of Confusion
Our determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. duPont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, referred to as “DuPont factors”); see also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont
factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Two key considerations are the
similarities between the marks and the relatedness of the services. See In re Chatam
Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004); Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”).
If likelihood of confusion exists with respect to any of Applicant’s identified
services, the refusal of registration must be affirmed as to all services in that class.
See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981).
A. The Services, Trade Channels, and Classes of Consumers
“[L]ikelihood of confusion can be found ‘if the respective goods [and services] are
related in some manner and/or if the circumstances surrounding their marketing are
such that they could give rise to the mistaken belief that they emanate from the same
source.’” Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
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1722 (Fed. Cir. 2012) (internal citations omitted). In analyzing the second DuPont
factor, we look to the identifications in the applications and cited registration. See
Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
The Examining Attorney argues that the services in the applications and cited
registrations overlap because the registration broadly identifies in Class 37 leasing
natural gas and oil compression and extraction equipment, which encompasses
Applicant’s narrower recitation of the rental of specific types of oil and gas drilling
equipment. To support this proposition, the record includes relevant definitions of
“rent” and “lease” indicating that the terms are essentially interchangeable in this
context,5 as well as evidence that the “extraction” of oil and gas is accomplished
through drilling.6 In addition to relying on the presumption that overlapping services
are legally identical, the Examining Attorney also argues relatedness, relying on
third-party websites on which a wide variety of oil and gas drilling equipment rental
services are promoted under the same mark. For example:7

5 TSDR April 9, 2018 Office Action at 6-11 (American Heritage online dictionary).
6 E.g., website evidence attached to May 22, 2019 Denial of Reconsideration discussing the
extraction of natural gas and oil by drilling at 5 TTABVUE 6-7; 6 TTABVUE 2; 8 TTABVUE
5-7, 13-14; 9 TTABVUE 2-7.
7 The Examining Attorney included evidence with the April 9, 2018, October 31, 2018, and
May 22, 2019 Office Actions.
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• Strata Energy Services promotes under the heading “Equipment and Rentals”
its performance drilling equipment including rotating control devices.8
• Weatherford promotes its drilling equipment rental services and specifically
features rotating control devices.9
• SydCo System promotes its rental of rotating control devices for “the oilfield.”10
• Tiger Industrial promotes under that mark rental and leasing of a “vast
selection” of industrial equipment, including for drilling, with “a large client
base in the oil and gas industry.”11
• “Quail Tools, a subsidiary of Parker Drilling, is a specialized oil and gas rental
tool company providing high-quality, reliable equipment used for drilling….”12
• “Graco is one of the top oilfield equipment rental companies within the oil and
gas industry in our drilling and production markets….”13
• Wellsite Fishing & Rental Services “focuses on offering comprehensive rental
equipment solutions for oil and gas service companies…. That includes
specialty rental equipment and hard-to-find tools needed for oil and gas
projects.”14

8 TSDR October 31, 2018 Office Action at 2-4.
9 TSDR April 9, 2018 Office Action at 57-63.
10 TSDR April 9, 2018 Office Action at 65, 68.
11 TSDR April 9, 2018 Office Action at 12-16.
12 TSDR April 9, 2018 Office Action at 31.
13 TSDR April 9, 2018 Office Action at 32.
14 TSDR April 9, 2018 Office Action at 42-47.
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• Diversified Drilling promotes itself to the “Oil & Gas industry with its main
focus on the Drilling and Workover sector,” offering rental of “a large asset base
of more than 2,000 pieces of equipment that is in continuous expansion.”15
• Tryton Rentals describes itself as “offering a broad range of oilfield rental
equipment to oil and gas producers, drilling contractors, service rig contractors
and rental companies for over 50 years.”16
The Examining Attorney also introduced several use-based third-party
registrations, asserting that they show that these types of services may emanate from
the same source. In re Aquamar, Inc., 115 USPQ26 1122, 1126 n.5 (TTAB 2015); In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
Applicant seems to acknowledge at least some partial legal identity of the
recitations in its applications and the cited registration by asserting that they
“include very few instances of any possible overlap.”17 Nonetheless, Applicant argues
that its services are sufficiently unrelated to those in the cited registration to avoid
likely confusion. According to Applicant, “the leasing services covered by the Cited
Mark only go so far as to mention extraction equipment but do not recite any specifics
as to drilling equipment like the services of the Applicant’s mark.”18 Applicant also
requests that the Board consider its website to show that it rents drilling equipment

15 TSDR October 31, 2018 Office Action at 15.
16 TSDR October 31, 2018 Office Action at 84.
17 12 TTABVUE 16 (Applicant’s Brief).
18 12 TTABVUE 17 (Applicant’s Brief).
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and the website associated with the cited mark to show that the registrant leases gas
compression equipment.
We find that Applicant’s services overlap in part with the Class 37 services in the
cited registration. The cited registration includes “leasing natural gas and oil
compression and extraction equipment, petrochemical compression and extraction
equipment.” We must presume that this recitation encompasses all such leasing
services featuring any type of natural gas and oil extraction equipment. See, e.g., In
re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s
broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s
narrowly identified ‘residential and commercial furniture.’”); In re Linkvest S.A., 24
USPQ2d 1716, 1716 (TTAB 1992) (“Registrant’s goods are broadly identified as
computer programs recorded on magnetic disks, without any limitation as to the kind
of programs or the field of use. Therefore, we must assume that registrant’s services
encompass all such computer programs including those which are for data integration
and transfer.”). Applicant’s recitation of services includes rental services in the fields
of specifically identified equipment (rotating control devices, diverters, and various
rubbers such as stripper, wiper, and casing rubbers) for use in general drilling
applications for oil and gas.
Oil and gas drilling is a type of extraction. As one article titled “Extracting Crude
Oil and Natural Gas” describes it, “[i]n conventional fields, the gas and oil is found
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free in large areas and so much can be obtained by drilling a bore vertically.”19
Typically, wells are drilled that are “designed to extract crude oil and natural gas
from below the ground.”20 Thus, Applicant’s rental services for specific types of oil
and gas drilling equipment fall within the scope of the cited registration’s rental of
oil and gas extraction equipment.
In addition, the Examining Attorney’s third-party website evidence corroborates
that consumers would be accustomed to encountering rental services for a wide
variety of oil and gas extraction equipment, such as Applicant’s and the registrant’s,
under a single mark. This supports the relatedness of Applicant’s services to those in
the cited registration. In re Detroit Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051
(Fed. Cir. 2018) (evidence of third parties offering the goods and services at issue
under one mark shows relatedness); Hewlett-Packard Co. v. Packard Press, Inc., 281
F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (stating that evidence that “a
single company sells the goods and services of both parties, if presented, is relevant
to a relatedness analysis”).
We reject Applicant’s attempt to characterize the services more narrowly than
they are identified, based on website evidence of marketplace use. Indeed, “[t]he
authority is legion that the question of registrability of an applicant’s mark must be
decided on the basis of the identification of [services] set forth in the application

19 5 TTABVUE 7 (“Extracting Crude Oil and Natural Gas” from The Essential Chemical
Industry).
20 9 TTABVUE 7 (Corken.com website); see also, e.g., 9 TTABVUE 2; 8 TTABVUE 13-14;
TSDR April 9, 2018 Office Action at 44-45.
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regardless of what the record may reveal as to the particular nature of an applicant’s
[services], the particular channels of trade or the class of purchasers to which sales
of the [services] are directed.” Octocom Syst., 16 USPQ2d at 1787. Thus, we must
compare the services in the applications and cited registration as they are identified,
not based on extrinsic evidence of actual use. See Stone Lion Capital Partners, 110
USPQ2d at 1162; Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1848 (Fed. Cir. 2000) (holding that the appellant “misstates the law” in arguing that
the Board must focus on the goods as sold in the marketplace, and stating that “the
Board must look to the registrations themselves to determine the scope of goods
covered”).
Turning to the trade channels and consumers, because the services are in part
legally identical, we presume that they also move in identical channels of trade and
are available to some of the same classes of potential consumers. See In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was
no evidence regarding channels of trade and classes of consumers, the Board was
entitled to rely on this legal presumption in determining likelihood of confusion); In
re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where
there are legally identical goods, the channels of trade and classes of purchasers are
considered to be the same). In addition, the relatedness evidence discussed above also
demonstrates that services such as Applicant’s and the Class 37 services in the cited
registration are featured together on the same websites, and would be encountered
by the same consumers.
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Thus, the second and third DuPont factors weigh heavily in favor of likely
confusion.
B. Similarity of the Marks
We next compare and ARCH RENTAL to ARCHROCK “in their
entireties as to appearance, sound, connotation and commercial impression.” Palm
Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). “Similarity
in any one of these elements may be sufficient to find the marks confusingly similar.”
In re Inn at St. John’s, 126 USPQ2d at 1746) (citing In re Davia, 110 USPQ2d 1810,
1812 (TTAB 2014)). The test assesses not whether the marks can be distinguished in
a side-by-side comparison, but rather whether their overall commercial impressions
are so similar that confusion as to the source of the services offered under the
respective marks is likely to result. Coach Servs., 101 USPQ2d at 1721; see also Edom
Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012).
We find the marks to look and sound similar in large part because of the identical
word “ARCH” found at the beginning of each. The first part of these marks, ARCH,
dominates them. Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (first part of a mark “is most likely to be impressed upon the mind of a
purchaser and remembered.”); see also Palm Bay Imps., 73 USPQ2d at 1692. In
addition, the second word in Applicant’s marks, RENTAL, is disclaimed as descriptive
or generic. This reduces its significance in the likelihood of confusion analysis because
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consumers are less likely to rely on descriptive or generic wording to indicate source.
See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)
(in comparing THE DELTA CAFÉ to DELTA, the generic term CAFÉ lacks sufficient
distinctiveness to create a different commercial impression). An additional
commonality between Applicant’s marks and the cited mark stems from the second
word beginning with the letter “R,” increasing the visual and phonetic similarities.
While the second words in the marks differ – RENTAL and ROCK, we nonetheless
find that because of the shared initial term ARCH, overall the wording in the marks
looks and sounds similar.
While Applicant argues that in , the oil-rig design element incorporated
into the “A” dominates the mark, we disagree. First, while there is no absolute rule,
more weight typically is given to wording in a mark than a design, as consumers will
use the wording to call for the services. See, e.g., In re Viterra 101 USPQ2d at 1909;
see also In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010) (holding
that the addition of a design element to a word that is identical to another mark does
not avoid likely confusion, noting that the “addition of a column design to the cited
mark ... is not sufficient to convey that [the] marks ... identify different sources for
legally identical insurance services”). Second, the design element in Applicant’s mark
is not particularly prominent, to the point that consumers might even overlook it
merely as part of the stylization of the wording. See In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[I]n articulating reasons for reaching a
conclusion on the issue of confusion, there is nothing improper in stating that, for
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rational reasons, more or less weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of the marks in their
entireties”). And because the cited registration is for a standard-character mark that
is entitled to protection in any font, the stylization of the remaining lettering used in
cannot serve as the basis to distinguish it. See Viterra Inc., 101 USPQ2d at
1911.
As to the connotation and commercial impression of the marks, we also find them
similar. Consumers would attribute the same meaning to the shared word, ARCH in
Applicant’s marks as they would in the cited mark.21 The additional words in the
respective marks, RENTAL and ROCK, and the design element in , do not
change the meaning or impression of the shared dominant term ARCH. And they do
not significantly distinguish the marks in terms or meaning or impression. As noted
above, the descriptive or generic nature of RENTAL means that its relatively minimal
contribution to the overall meaning and connotation is merely to reinforce the nature
of the services. The inconspicuous design of an oil rig that also reinforces the nature
of the services also makes a minimal contribution to the overall meaning and
connotation. While ROCK is neither descriptive nor generic, it is somewhat
suggestive, as it refers to a substance on which the identified extraction equipment

21 An arch is “a typically curved structural member spanning an opening and serving as a
support (as for the wall or other weight above the opening).” Merriam-webster.com entry for
“arch,” accessed February 6, 2020. See In re White Jasmine LLC, 106 USPQ2d 1385, 1392
n.23 (TTAB 2013) (Board may take judicial notice of online dictionaries that exist in printed
format or have regular fixed editions).
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might be used. So it also makes a lesser contribution to the overall meaning and
commercial impression of the mark.
Given their resemblance in sound, appearance, connotation and commercial
impression, we find the marks very similar. This factor weighs in favor of a likelihood
of confusion.
C. Degree of Care in Purchasing
Applicant argues that consumers of the relevant services are sophisticated. We
agree that by their nature, these types of leasing and rental services would involve
some degree of care in purchasing. See Elec. Design & Sales Inc. v. Elec. Data Sys.
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992) (“Just from the record
description of goods and services here one would expect that nearly all of opposer’s
and applicant’s purchasers would be highly sophisticated.”).
However, Applicant goes on to contend that based on alleged marketplace
realities, differences in the actual equipment rented by Applicant and the registrant
would preclude confusion. We again reject the improper attempt to limit the services
in ways not reflected in the recitations of services.
Because of the specialized industrial nature of these services, and the resulting
degree of care in purchasing them, this DuPont factors weighs somewhat against
likely confusion.
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III. Conclusion
The overall similarity of the marks for legally identical services that move in at
least some of the same channels of trade to the same classes of customers renders
confusion likely, even by consumers exercising a somewhat heightened degree of care.
Decision: The refusals to register Applicant’s marks are affirmed.