Archer (UK) Limited

Trademark Trial and Appeal Board

Sep 4, 2013

No. 79107852 (T.T.A.B. Sep. 4, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
September 4, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Archer (UK) Limited
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Serial No. 79107852
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William J. Seiter of Seiter Legal Studio for Archer (UK) Limited.

Daniel F. Capshaw, Trademark Examining Attorney, Law Office 110 (Chris A. F.
Pedersen, Managing Attorney).
_____

Before Quinn, Masiello, and Hightower, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Archer (UK) Limited1 filed an application2 for extension of protection to the
United States of its International Registration of the trademark TASK, in standard
character form, for goods identified as “Chemicals for dissolving scale in pipelines
for use in oil and gas production,” in International Class 1.

1 Applicant has undergone a change of name from Seawell Limited to its current name,
Archer (UK) Limited.
2 Application Serial No. 79107852, filed on September 23, 2011 under Trademark Act
§ 66(a), 15 U.S.C. § 1141f(a), with a priority filing date of March 23, 2011, based on
International Registration No. 1103434.
Serial No. 79107852

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The trademark examining attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, as used in
connection with applicant’s goods, so resembles the two marks identified below as to
be likely to cause confusion, or to cause mistake, or to deceive.

The mark above is registered for:
Analysis of geological research and surveys related to oil
and gas exploration and production, namely, core analysis
and testing, structural analysis including borehole
imaging; technical research projects and studies related to
oil and gas exploration and production in the fields of
structural geology, geophysics, sedimentology, seismology,
petrography and petrology, in International Class 42.3

The mark above is registered for:
Geological computer software which aids analysis of oil-
field exploitation, geological prospecting research and
surveys, in International Class 9;
Design, development, programming, installation,
maintenance, repairs, leasing, and renting of geological
computer software which aids analysis of oil-field

3 Reg. No. 3405681, issued April 1, 2008; affidavits under Sections 15 and 71 filed. No claim
is made to the exclusive right to use GEOSCIENCE apart from the mark as shown. The
colors dark blue, green, light blue, white and red are claimed as features of the mark.
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exploitation, geological prospecting research and surveys,
in International Class 42.4
The two cited registrations are owned by different entities.
When the refusal was made final, applicant filed a notice of appeal and a
request for reconsideration. On reconsideration, the examining attorney
maintained his refusal and this appeal resumed. Applicant and the examining
attorney have filed briefs.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, applicant
and the examining attorney have also submitted evidence and arguments regarding
the relevant classes of customers for the goods and services.
1. The marks.
We first address the similarity or dissimilarity of the marks at issue as to
their appearance, sound, connotation and commercial impression. Applicant
correctly urges us to consider the marks at issue in their entireties. Applicant
argues that we “must not focus on certain prominent features that both parties’

4 Reg. No. 3889272, issued December 14, 2010. No claim is made to the exclusive right to
use GEOMODELLING apart from the mark as shown. The colors blue, green, orange, red,
yellow, fuchsia and turquoise are claimed as features of the mark.
Serial No. 79107852

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marks have in common, to the exclusion of others which cause the parties’ marks as
a whole to create in the minds of consumers different impressions,” quoting
Worthington Foods, Inc. v. Kellogg Co., 732 F. Supp. 1417, 1439 (S.D. Ohio 1990).
Applicant argues further that “No element of a mark is ignored simply because it is
less dominant or even if it would not have trademark significance if used alone,”
citing B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727 (Fed. Cir.
1988). We agree that no element of a mark should be ignored (including generic
and descriptive matter). However, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a
mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985).
The marks at issue are manifestly not identical. However, they all do share
the distinctive element TASK, so that to the extent of this shared term they are
similar in appearance, sound, and meaning. We agree with the examining attorney
in finding TASK to be the dominant portion of each of the two cited marks. In each
of the registered marks TASK is presented in taller and bolder lettering than the
other wording and has stronger source-identifying potential than the other wording,
which has been disclaimed. Disclaimed matter may be given less weight in an
analysis of likelihood of confusion. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000); In re National Data Corp., 224 USPQ
at 752. Nonetheless, even disclaimed matter contributes to the overall commercial
impression created by the mark, and accordingly we give due consideration to the
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designations GEOSCIENCE and GEOMODELLING as they appear in the cited
marks.
Considering applicant’s mark and the cited registered marks in their
entireties in terms of appearance, sound, meaning, and overall commercial
impression, we find that their similarities outweigh their differences. Accordingly,
this du Pont factor weighs in favor of a finding of likelihood of confusion.
2. The goods and services at issue.
We turn next to consider the similarity or dissimilarity of the goods and
services at issue. We note initially that the goods and services are fundamentally
different in nature. Applicant’s goods are a chemical substance. The TASK
GEOSCIENCE services are scientific analysis services. The TASK
GEOMODELLING goods and services are computer software and services that
facilitate the use of such software. All of the goods and services at issue are, as
applicant admits, for use in the field of oil and gas exploration and exploitation.5
Applicant argues that the marks of applicant and registrants “represent
activities in very different oilfield categories and disciplines.”6 Applicant
emphasizes that its own chemical goods are used by “production technologists and
well maintenance engineers” and states:
… Applicant’s TASK [product] is a chemical that
effectively removes all types of scale safely, reliably and
rapidly, without harming people, the environment, or well
components.
…

5 Applicant’s brief at 5-6.
6 Id. at 7, item xii.
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Importantly, the presence of scale only occurs after a well
is put on stream and the appearance of scale can take
several months or years to manifest.7

Applicant describes the TASK GEOSCIENCE services as consulting services
that provide:
data processing, borehole interpretation and reservoir
modeling services to the oil and gas industry, specialized
in the analysis and integration of core, borehole image,
dipmeter, waveform sonic and wireline log data.8
Applicant describes the TASK GEOMODELLING product as software that is used
by the providers of the TASK GEOSCIENCE services.9 Applicant argues that the
registrants’ respective consulting services and software goods are used “mainly
before a well is actually drilled and also during well construction.” These services
and goods are used in the process of “developing a common understanding of the
geology of a reservoir and [determining] where a well should be drilled
geometrically or geologically within the subsurface.”10 Applicant contends that the
goods of applicant and the goods and services of registrant are used “at opposite
ends of the life of a well.”11
The examining attorney contends that the goods and services of applicant
and registrants are commercially similar in that they are all for use by oil and gas
well producers and that it is not unusual for a single company to provide such goods

7 Id. at 7-8.
8 Id. at 7, item xii.
9 Id.
10 Id. at 7-8.
11 Id. at 8.
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and services “throughout all stages of an oil and gas well from exploration through
production.”12 In order to demonstrate that certain individual companies supply
scale-control chemicals, geological analysis consulting services, and software, the
examining attorney has submitted screenshots from websites of the following
companies offering the following goods and services to oil and gas operations:
WEATHERFORD: scale inhibitor chemicals; borehole seismic surveys;
subsurface evaluation services; analytic software.

HALLIBURTON: electric borehole imaging and visualization; “Six Arm
Dipmeter” service; wireline imaging service; “a suite of
scale inhibitors including a variety of liquid and solid
inhibitors.”

SCHLUMBERGER: carbonate scale dissolver; seismic consulting and
interpretation; borehole imaging; software for
geophysicists.

BAKER HUGHES: solid chemical scale inhibitors; borehole seismic services
including application design, data processing and
interpretation; circumferential borehole imaging; software
for reservoir modeling, geomechanics, and hydraulic
fracturing simulation.13

The examining attorney also points out that the website located at
, apparently associated with applicant, indicates that applicant
itself provides “wellbore imaging” services similar to those offered under the TASK
GEOSCIENCE mark.14
The examining attorney has submitted several use-based third-party
registrations relating to the oil and gas industries that cover both chemicals and

12 Examining attorney’s brief at 8.
13 Internet evidence submitted with the examining attorney’s Office action of August 14,
2012.
14 Id. and examining attorney’s brief at 9.
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analysis and consulting services.15 Such registrations may have some probative
value to the extent that they serve to suggest that the listed goods and services are
types that may emanate from the same source. In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988).
We are not persuaded that applicant’s chemical goods are commercially
related to the computer software, scientific analysis services, and software services
of registrants. It is true that all of the goods and services are for use in the oil and
gas industry. However, the goods and services are not directed to the same users
and are not used together in the same business processes. The goods and services
are utterly disparate in nature, and there can be no doubt that the manufacture of
chemicals is technically distinct from the processes for producing computer software
or providing scientific analysis services. The evidence showing that the goods and
services at issue are offered by four large companies that apparently seek to offer
everything to the oil and gas industries does not persuade us that chemical products
would be perceived as emanating from the same source as software and scientific
analysis services. The third-party registrations offered by the examining attorney
are few in number and do not clearly relate to the specific type of goods identified in
applicant’s application. Moreover, they are not evidence of actual marketing of the
listed goods and services under a single mark. Overall we find them to be of very
limited probative value.

15 Evidence submitted with the Office actions of January 30, 2012 and August 14, 2012.
Serial No. 79107852

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Because of the disparate nature of applicant’s chemicals and the software and
scientific analysis services of registrants, we think it most likely that relevant
customers would expect them to emanate from different sources. Accordingly, the
du Pont factor of the similarity or dissimilarity of the goods and services weighs
against a finding of likelihood of confusion.
3. Classes of customers.
Applicant argues that services under the TASK GEOSCIENCE mark are
offered to geologists and geoscientists; and that software under the TASK
GEOMODELLING mark is offered to the provider of the TASK GEOSCIENCE
services. Applicant argues that “Geologists… typically interface with other
complementary disciplines such as reservoir specialists and geophysicists but will
rarely, if at all, interface with production technologists or well maintenance
engineers.” By contrast, applicant states that its goods are offered to or used by
“production technologists or well maintenance engineers” who “spend most of their
time dealing with technology and issues related to the design, construction and
maintenance of the mechanical parts of a well…” and argues that the respective
users of the goods and services of applicant and registrant “are poles apart in their
respective technical domain, core activity, and at opposite ends of the life of a
well.”16 Applicant argues, “In the unlikely event a geologist who was familiar with
Task Geomodeling or Task Geoscience heard or read about [applicant’s goods], it

16 Applicant’s brief at 7-8.
Serial No. 79107852

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would only be from a well maintenance engineer and/or in the context of scale
removal….”17
Neither the application nor the cited registrations set forth any limitations as
to classes of purchasers in their descriptions of goods or services. Accordingly, we
presume that the goods and services are available to all classes of purchasers for
those products. See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d
901, 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119
USPQ 139 (CCPA 1958); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
Despite the evidence that seemingly indicates that TASK GEOMODELLING
software and services are provided only to Task Geoscience Limited,18 the relevant
customers would nonetheless include all persons who may need software to assist in
geological analysis of oilfield exploitation issues. The customers for TASK
GEOSCIENCE services would not necessarily be limited to geologists and
geoscientists, but would also encompass persons capable of making use of the types
of analytical reports generated as a result of such services. Applicant contends that
the relevant customers are “expert consumers” who are “reasonable, well-informed
and circumspect” and, accordingly, not likely to suffer confusion.19
We find persuasive applicant’s characterization of the relevant customers as
very separate and distinct groups. On the one hand, we see geologists,

17 Id. at 8.
18 Submitted with applicant’s response of July 23, 2012. We do note that, while the
registrants are two different entities, Trademark Office records indicate that they are
located in the same office park in Aberdeen, Scotland.
19 Applicant’s brief at 6-7.
Serial No. 79107852

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geoscientists, and those who receive their reports working to plan and locate an oil
or gas project; on the other hand we see well maintenance engineers and production
technologists dealing with issues that arise in the operation of the well, long after
the well has been built. We anticipate that personnel who have technical expertise
in the highly specialized field of oil and gas exploration would bring a substantial
degree of care and a thorough understanding of their field to the selection of goods
and services.
We appreciate that the geologists, geoscientists, production technologists and
well maintenance engineers discussed by applicant might be personnel of a single
oil or gas production company. However, the courts have recognized that the
separate departments of a complex organization can constitute “different markets
for the parties’ respective products.” Astra Pharmaceutical Products, Inc. v.
Beckman Instruments, Inc., 718 F.2d 1201, 220 USPQ 786, 791 (1st Cir. 1983). Our
principal reviewing court, citing Astra with approval, has stated:
[I]t is error to deny registration simply because ‘applicant
sells some of its goods in some of the same fields in which
opposer provides its services,’ without determining who
are the ‘relevant persons’ within each corporate customer.
…
[T]he mere purchase of the goods and services of both
parties by the same institution does not, by itself,
establish similarity of trade channels or overlap of
customers.

Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21
USPQ2d 1388, 1391 (Fed. Cir. 1992) (internal citations omitted). The Astra and
Electronic Design courts both found that the relevant customers were technical
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personnel having specialized knowledge with respect to the goods and services, and
found that their sophistication would be sufficient to render confusion unlikely.
Considering the highly specialized and disparate nature of the goods and
services in the case before us, the relevant customers are likely to be separate
classes of highly informed, careful, and sophisticated purchasers, so that neither
class is likely to have exposure to the goods and services of interest to the other.
See Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399 (TTAB 2010).
For the reasons noted, we find that the du Pont factor relating to the classes of
customers weighs against a finding of likelihood of confusion.
4. Channels of trade.
Although applicant and the examining attorney briefly mention channels of
trade, neither has put forward substantial evidence or arguments on this point. We
have considered applicant’s argument that software under the TASK
GEOMODELLING mark is offered only to the TASK GEOSCIENCE company.
However, as the examining attorney points out, in considering the relevant trade
channels we must look to the registration itself and not to extrinsic evidence about
the registrant’s actual channels of trade. In re Elbaum, 211 USPQ 639, 640 (TTAB
1981). As we have no other substantial evidence on this point we regard the factor
of trade channels to be neutral.
5. Balancing the factors.
Having considered all of the evidence and arguments of record and all
relevant du Pont factors, including those not specifically discussed herein, we find
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that applicant’s mark, as applied to applicant’s goods, is not likely to cause
confusion, mistake or deception as to the source of applicant’s goods.
Decision: The refusal is reversed.