Archer (UK) Ltd.

Trademark Trial and Appeal Board

Sep 4, 2013

No. 79094466 (T.T.A.B. Sep. 4, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: September 4, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Archer (UK) Ltd.
________

Serial No. 79094466
_______

William J. Seiter of Seiter & Co. for Archer (UK) Ltd.

Josette M. Beverly, Trademark Examining Attorney, Law
Office 115 (John Lincoski, Managing Attorney).
_______

Before Bucher, Cataldo and Shaw,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Archer (UK) Ltd., filed an application to
register on the Principal Register the standard character
mark LEAKPOINT for the following goods and services, as
amended:
Apparatus and instruments for inspecting and
evaluating the integrity and performance of oil,
gas and water wells using ultrasound measurement,
recording and display technology devices and
other measurement technology devices, namely,
high-definition ultrasound inspection,
measurement and imaging apparatus and instruments
and their and [sic] related parts and components
sold as a unit; survey and measurement sensors
for oil, gas and water wells and related process
Ex Parte Appeal No. 79094466

2
and production systems, comprising blow out
preventers, valves, pipes, tanks and other
components through which hydrocarbons might flow
from the well to a destination point for
measurement of oil, gas and water well integrity
and performance

in International Class 9;

Building construction pertaining to oil, gas and
water wells; repair services pertaining to oil,
gas and water wells; installation services
pertaining to oil, gas and water wells; drilling
of wells for exploitation of oil and gas;
assessment of wells for exploitation of oil and
gas through drilling; installation of wirelines
for oil, gas and water wells; building
construction and repair services using high-
definition ultrasound imaging technologies for
non-destructive testing, inspection and
evaluation of the structural integrity of oil,
gas and water wells and their supporting
structures during construction and repair
activities

in International Class 37; and

Scientific research and technological materials
testing and evaluation services relating to oil
and gas exploration and production; high-
definition ultrasound surveying of oil, gas and
water wells to evaluate integrity and
performance; non-medical ultrasound measurement,
inspection and imaging services in the field of
oil and gas drilling in the nature of providing
measurements and down hole imaging telemetry
while drilling; well logging and wireline testing
services relating to the testing and evaluation
of oil, gas and water wells; geological surveying
services of oil, gas and water wells

in International Class 42.1

1 Application Serial No. 79094466 was filed on December 3, 2010
seeking an extension of protection under Trademark Act Section
66(a), as amended, based upon International Registration No.
1069459.
Ex Parte Appeal No. 79094466

3
The examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on
the ground that applicant’s mark, when applied to
applicant’s goods and services, so resembles the previously
registered mark displayed below

(leak disclaimed) for
plumbing services, namely, leak location services
in pools, spas, pipe systems, other water
features, sewer, water, and gas piping systems
and utilities; plumbing services; plumbing
contractor services; repair or maintenance of gas
water heaters; installation, maintenance and
repair of pipe systems, sewer lines, water lines,
gas lines and utility systems

in International Class 37, that confusion is likely among
consumers as to the source of those goods and services.2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal.

2 Registration No. 3962420 issued on May 17, 2011. “The color(s)
blue and black is/are claimed as a feature of the mark. The mark
consists of the letters ‘L’ and ‘P’ appearing in blue and
outlined in black with the term ‘leak’ appearing in black to the
right of the top portion of the ‘L’ and the term ‘point’
appearing in black to the right of the bottom portion of the
‘P’.”
Ex Parte Appeal No. 79094466

4
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. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See 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”).
The Marks
We first consider the similarities and dissimilarities
between the marks. In coming to our determination, we must
compare the marks in their entireties as to appearance,
sound, connotation and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The
test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
Ex Parte Appeal No. 79094466

5
the marks are sufficiently similar in their entireties that
confusion as to the source of the goods or services offered
under the respective marks is likely to result.
In this case, we find that applicant’s LEAKPOINT mark
is highly similar to the mark

in the cited registration inasmuch as the wording in
applicant’s mark is subsumed in that of registrant. The
mere presentation of registrant’s mark in stylized script
and the truncation of applicant’s mark into a single term
are not sufficient to distinguish them. Because
applicant’s mark is in standard character form we must
consider all reasonable presentations of that mark
including in the same stylization found in registrant’s
mark. See Phillips Petroleum v. C.J. Webb, 442 F.2d 1376,
170 USPQ 35, 36 (CCPA 1971). See also Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed.
Cir. 2000). Further, the presence or absence of a space
between virtually the same words is not a significant
difference. Stockpot, Inc. v. Stock Pot Restaurant, Inc.,
220 USPQ 52, 54 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ
Ex Parte Appeal No. 79094466

6
665 (Fed. Cir. 1984); and In re Best Western Family Steak
House, Inc., 222 USPQ 827, 827 (TTAB 1984).
Similarly, the addition of the letters “LP” which, due
to their placement in registrant’s mark, clearly are
intended to serve as an initialism for LEAK POINT, is not
sufficient to create a commercial impression that is
separate and distinct from that of applicant’s mark. As a
result, we find that the marks are highly similar in
appearance, sound and meaning and that, when taken as a
whole, present highly similar commercial impressions.
As such, this du Pont factor favors a finding of
likelihood of confusion.
In its brief, applicant argues (p. 7) that “weak
designations, such as the cited mark, are entitled to a
narrower scope of protection than an entirely arbitrary or
coined word, such as Applicant’s applied-for mark.” First,
as discussed above, the wording LEAKPOINT comprising
applicant’s mark is identical to wording in the registered
mark, LEAK POINT LP. Applicant does not explain how, under
these circumstances, its own mark can be arbitrary as
applied to the recited goods and services while that of
registrant is weak as used in connection with the services
recited in the registration. Furthermore, while we observe
that the term “LEAK” is, at best, suggestive of
Ex Parte Appeal No. 79094466

7
registrant’s services, applicant has introduced no evidence
of the asserted weakness of the mark in the cited
registration. As a result, the record on appeal does not
support applicant’s contention that the cited mark is weak
or otherwise should be accorded a narrow scope of
protection.
The Goods and Services
We turn then to consider the du Pont factor regarding
the similarity/dissimilarity between the goods and
services. When comparing the goods and services, the
respective identifications in the application and the cited
registration control the analysis. In re Giovanni Food
Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
In this case, the examining attorney has made of
record evidence from four commercial Internet websites
suggesting that third parties providing plumbing, leak
location, and installation, maintenance and repair of water
and gas pipes and lines also provide installation, repair
and maintenance of water wells of the type recited in Class
37 of the involved application. These include
edmondair.com; mckinleyplumbingservices.com;
waterwellservice.com; and northseaplumbing.com. The
foregoing evidence suggests that registrant’s services may
Ex Parte Appeal No. 79094466

8
emanate from the same sources as certain of the services
recited in Class 37 of the involved application.
In addition, the examining attorney has made of record
two use-based third-party registrations which show that
various entities have adopted a single mark for services of
a type similar to those identified in Class 37 of the
involved application and the cited registration. These
include Registration Nos. 3099250 and 2948364. Third-party
registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993). The evidence of record establishes that certain of
applicant’s services recited in Class 37, in particular,
those services related to installation, maintenance and
repair of water wells, are related to the services
identified in the cited registration, and further may be
identified under the same mark. As such, this du Pont
factor favors a finding of likelihood of confusion as to
the services identified in Class 37.
However, the examining attorney has introduced no
evidence of a relationship between the services in the
cited registration and applicant’s Class 9 goods or Class
Ex Parte Appeal No. 79094466

9
42 services. The examining attorney argues (brief, p. 7)
that
The application uses broad wording to describe
its apparatus and instruments, building
construction, installation and repair and
scientific services pertaining to water wells and
water systems. Therefore, the applicant’s
identification of goods and services could be
construed to include services and goods used in
connection with the type of plumbing services,
leak location services, installation, maintenance
and repair services identified in the
registrant’s identification.

However, the examining attorney does not explain how
registrant’s services and applicant’s goods or Class 42
services are related, or how the recitation of these goods
and services may be construed to encompass the services
identified in the cited registration. The examining
attorney further argues (Id. at 9) that
As the third-party website excerpts from Meeks,
Edmond, McKinley and 4D Plumbing evidences, these
businesses utilize high tech equipment in
connection with building construction,
installation, repair and maintenance services
pertaining to plumbing, leak detection and well
pump and drilling services. Potential consumers
of the applicant’s goods and registrant’s
services encountering the use of a similar mark
with services featuring or related to
complementary goods are likely to erroneously
believe that the goods and services emanate from
a common source.

Again, the examining attorney does not support this
somewhat conclusory statement with evidence of such a
relationship, or explain how consumer confusion is likely
Ex Parte Appeal No. 79094466

10
on the face of the respective identifications of goods and
services. In other words, the mere fact that a plumbing
service may utilize highly technical equipment in, for
example, leak location, it does not necessarily follow that
consumers will mistakenly view the plumbing service as a
source for such goods. As a result, we find that neither
the evidence of record nor the face of the identification
of goods and services supports a finding that applicant’s
Class 9 goods or Class 42 services are related to the
services identified in the cited registration.
Channels of Trade
Turning to the relatedness of the parties’ channels of
trade, we look as we must to the goods and services as
identified in the involved application and cited
registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
It is presumed that registrant’s plumbing services and
applicant’s water well installation, maintenance and repair
services move in all channels of trade normal for such
services, and that they are purchased by all of the usual
consumers for such services. In re Elbaum, 211 USPQ 639,
640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart,
Ex Parte Appeal No. 79094466

11
Inc., 119 USPQ 139 (CCPA 1958). Here, the examining
attorney’s Internet evidence clearly suggests that the
services are not only related, but may in fact be offered
by the same firms, to the same customers. As such, this
du Pont factor favors a finding of likelihood of confusion
as to the services recited in Class 37 of the involved
application.
However, and as discussed above, neither applicant’s
Class 9 goods or Class 42 services as identified nor
examining attorney’s evidence clearly suggests that the
goods or Class 42 services are related or may be offered by
the same entities, to the same customers. Thus, we do not
presume a similarity in trade channels. Further, there is
no evidence that such goods or Class 42 services move in
common trade channels or would be purchased by the same
customers. As such, this du Pont factor favors a finding
of no likelihood of confusion as to the goods in Class 9
and the services in Class 42.
Sophistication of Purchasers
Neither the application nor the cited registration
includes any limitation on the customers to whom the
respective goods or services are rendered so we must
consider the relevant purchasers to include all of the
usual customers for the recited goods and services. Id.
Ex Parte Appeal No. 79094466

12
We recognize that applicant’s goods and services will be
used, at least in part, by individuals and entities seeking
to exploit oil and gas deposits. These goods and services
thus would appear on their face to be highly specialized in
nature and their purchase may be subject to a high degree
of care. Registrant’s plumbing services, on the other
hand, are likely to be purchased, inter alia, by ordinary
consumers.
Thus it would appear, in considering the fourth
du Pont factor, that at least some of applicant’s goods and
services may be the subject of sophisticated purchases.
Our primary reviewing Court cautions “[t]hat the relevant
class of buyers may exercise care does not necessarily
impose on that class the responsibility of distinguishing
between similar trademarks for similar goods. ‘Human
memories even of discriminating purchasers ... are not
infallible.’” In re Research and Trading Corp., 793 F.2d
1276, 230 USPQ 49, 50 (Fed. Cir. 1986), quoting Carlisle
Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d
1403, 168 USPQ 110, 112 (CCPA 1970). However, in this
case, there is insufficient evidence that applicant’s Class
9 goods or Class 42 services are related to the services
identified in the cited registration. See, e.g., Edwards
Lifesciences Corp v Vigilanz Corp., 94 USPQ2d 1399 (TTAB
Ex Parte Appeal No. 79094466

13
2010) (no likelihood of confusion found despite nearly
identical marks where goods were sold to different medical
professionals with high level of sophistication). As a
result, the degree of care exercised in the purchase of at
least some of applicant’s goods and services combined with
the absence of evidence of a similarity of the Class 9
goods and Class 42 services to those of registrant result
in this du Pont factor slightly favoring a finding of no
likelihood of confusion with regard to the Class 9 goods
and services recited in Class 42.
Summary
We find that due primarily to the similarity between
the marks, and evidence of a relationship between
applicant’s Class 37 services and the services identified
in the cited registration, the examining attorney has met
her burden of demonstrating that a likelihood of confusion
exists between the marks as used in connection with these
services.
However, in view primarily of the lack of evidence of
a relationship between applicant’s Class 9 goods and Class
42 services and the services identified in the cited
registration, we find that the examining attorney has not
met her burden of demonstrating that a likelihood of
Ex Parte Appeal No. 79094466

14
confusion exists between applicant’s Class 9 goods and
Class 42 services and the services provided by registrant.
Decision: The refusal of registration is affirmed as
to the services recited in Class 37 and reversed as to the
goods identified in Class 9 and the services recited in
Class 42.
Accordingly, the involved application will be
forwarded for publication in due course as to the Class 9
goods and Class 42 services.