Drennon/Castillo, Ltd.-I

Trademark Trial and Appeal Board

Aug 9, 2000

No. 75185834 (T.T.A.B. Aug. 9, 2000)

Paper No. 14
RLS/MM
8/9/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Drennon/Castillo, Ltd.-I
________
Serial No. 75/185,834
_______
William D. Jackson of Locke, Purnell, Rain, Harrell for
Drennon/Castillo, Ltd.
Kim Saito, Trademark Examining Attorney, Law Office 109
(Ron Sussman, Managing Attorney).
_______
Before Simms, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Drennon/Castillo, Ltd.-I (applicant), a Texas limited
partnership doing business as Sierra Engineering, has
appealed from the final refusal of the Trademark Examining
Attorney to register the mark SIERRA ENGINEERING for the
following services:
on-site petroleum engineering services to
implement the treatment and stimulation of oil
and gas wells to enhance production, including
the design and the on-site supervision and
implementation of fracturing procedures by
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/185,834
2
hydraulic fracturing and well case perforating
procedures by gun perforating.1
The Examining Attorney has refused registration under
Section 2(d) of the Act, 15 USC §1052(d), on the basis of
two registrations, more fully discussed below. The
Examining Attorney has also made final a requirement for a
disclaimer for the word "ENGINEERING" apart from the mark
as shown, as well as a final requirement for an acceptable
identification of services. Applicant and the Examining
Attorney have submitted briefs but no oral hearing was
requested.
Disclaimer
The Examining Attorney has required that applicant
submit a disclaimer of the word "ENGINEERING." See Section
6 of the Trademark Act, 15 USC §1056, which requires the
disclaimer of unregistrable components of a mark. The
Examining Attorney argues that this word is merely
descriptive of applicant's services in view of the fact
that applicant offers petroleum engineering services.
Applicant, on the other hand, contends that no disclaimer
is necessary because its mark is a unitary one projecting a
single commercial impression, and that:

1 Application Serial No. 75/185,834, filed October 23, 1996,
based upon dates of use of January 1, 1991.
Ser. No. 75/185,834
3
The term "SIERRA" is subject to various
connotations ranging from uses to indicate an
irregular topological outline, to fish, to
communications codes. The term "SIERRA"
combines with the word "ENGINEERING" to create
an incongruity. This results in a mark which
indicates a thing which is essentially non-
existent, or an incongruity which is
necessarily unitary.
Applicant's brief, 11.
We fail to see the incongruity of which applicant
speaks. Nor is the asserted mark a unitary one. In
applicant's specimens of record (reproduced below), the
word "SIERRA" is in a more prominent and different style of
lettering than the word "ENGINEERING."
The requirement for a disclaimer of the descriptive word
“ENGINEERING” is affirmed.
Description of Services
The Examining Attorney maintains that applicant's
current description of services is unacceptable because it
is indefinite and too broad. More particularly, the
Examining Attorney argues that applicant's services could
fall into several classes -- oil and gas well drilling in
Class 37, oil well fracturing in Class 40, designing of new
Ser. No. 75/185,834
4
treatment and stimulation techniques that would be
encompassed by engineering services in Class 42.
…The applicant's recitation of services is
confusing because of the use of the "on-site
petroleum engineering services" prefatory
language. While the applicant may be
performing services that are in class 37 and
40, the inclusion of the "on-site petroleum
engineering services" language would lead the
people reading the recitation of services to
conclude that the applicant also performs
engineering services...
The recitation of services is indefinite
because the applicant has used words such as
"including"… in the recitation of services and
the exact nature and extent of the applicant's
services is unclear.
Examining Attorney's brief, 8-9.
Applicant, on the other hand, argues that its
engineering services are properly classified in Class 40
(and not Class 42) and that they are otherwise sufficiently
described. Applicant also argues:
Appellant's services, as are believed to be
properly classified in Class 40, include the
actual ongoing services involving the on-site
supervision of oil and gas well treatment and
stimulation services. While Appellant does not
provide, for example, the services of an oil
well service company in the sense of owning and
providing equipment for hydraulic fracturing or
gun perforating, Appellant’s services do
involve the actual stimulation of oil and gas
wells. In this respect, Appellant’s services
involve the provision of petroleum engineers
which actually function at the well site in the
day-to-day activities involved in well
stimulation, such as hydraulic fracturing. The
description of the services emphasize[s] that
Appellant's services involve on-site petroleum
Ser. No. 75/185,834
5
engineering services in the day-to-day
operation of supervising and implementing
fracturing and completion activities. The
excerpts from the Identification Manual
appended to the Office Action of April 24,
1998… would appear to support classification of
Appellant's mark in Class 40 as contrasted with
Class 42.
Applicant's brief, 11-12.
We note that the Examining Attorney proposed the
following description of services in her final refusal:
Class 40--oil and gas well fracturing by
hydraulic fracturing; oil and gas well casing
perforating procedures by gun perforating.
Class 42--petroleum engineering in the nature
of design and supervision of fracturing
procedures by hydraulic fracturing and well
case perforating procedures by gun perforating
for oil and gas wells.
After careful consideration of the arguments of the
attorneys, and considering the expertise of the Examining
Attorney in this matter, we believe that applicant's
existing description of services is deficient because the
services listed would appear to fall into at least two
separate classes—-oil and gas well hydraulic fracturing and
gun perforating services in Class 40 and petroleum
engineering services in Class 42. Accordingly, we affirm
the Examining Attorney's requirement insofar as it requires
a description of services which separate the services into
services properly placed in Class 40 and petroleum
engineering services in Class 42.
Ser. No. 75/185,834
6
Likelihood of Confusion
The Examining Attorney has refused registration under
Section 2(d), first, on the basis of Registration No.
1,185,205, issued January 5, 1982 (Sections 8 and 15 filed)
for the mark SIERRA GEOPHYSICS for research and consulting
services in geophysics and seismology. The registration
issued pursuant to Section 2(f) of the Act, 15 USC
§1052(f). The Examining Attorney argues that both
applicant's mark and this registered mark are dominated by
the primary origin-indicating word "SIERRA," and that the
words "GEOPHYSICS" and "ENGINEERING" in the respective
marks are of less significance in indicating origin and
distinguishing the marks.
With respect to the services, the Examining Attorney
requests that the Board take judicial notice of an excerpt
from The Wiley Encyclopedia of Energy and the Environment,
which notes that "The search for natural gas, the
exploration, drilling and production expressly for natural
gas, gained momentum after the advent of offshore
exploration and benefited most from the recent advances in
geophysics, particularly seismic work and data processing
and electronic computing." The Examining Attorney argues
that applicant's services in the petroleum field may
overlap with registrant's research and consulting services
Ser. No. 75/185,834
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in geophysics and seismology because both services involve
or may use geophysics. That is to say, according to the
Examining Attorney, geophysical and seismological studies
may be used in connection with petroleum engineering and in
the performance of a fracturing operation or perforating of
a well casing for oil and gas wells. The Examining
Attorney points out that applicant has admitted that
seismic surveys may be useful in identifying oil fields.
In this regard, the Examining Attorney points to Nexis
excerpts of record noting the fact that petroleum
engineering and geophysics may be related endeavors in the
exploration for oil and that seismology is used in the
discovery of gas deposits. The Examining Attorney has also
made of record third-party registrations covering oil
drilling and geophysical exploration services and others
covering engineering and consulting and research in
geophysics.
Applicant, on the other hand, argues that geophysical
services such as seismic surveys may be used to explore for
a variety of minerals not relating to the oil or gas well
drilling industry. Applicant argues that geophysics is
useful in the mining industry and not necessarily in oil
and gas production. According to applicant, the fact that
geophysics or seismic exploration may lead to the
Ser. No. 75/185,834
8
identification of geological structures suitable for
drilling does not mean that those services are related or
that they would travel in the same channels of trade.
Finally, applicant argues that the respective services
would be purchased by sophisticated purchasers after
careful consideration of the experience and reputation of
the provider of those services.
With respect to the marks, applicant maintains that
"SIERRA" is a common word in numerous marks and that there
have been no instances of actual confusion.2
Concerning the marks, we agree with the Examining
Attorney that each is dominated by the word "SIERRA," the
remaining word being descriptive or generic and of
relatively little source indication.

2 In her brief, the Examining Attorney for the first time
objected to the third-party registrations which applicant
attempted to make of record in response to the initial refusal of
registration. The Examining Attorney argues that the results of
a trademark search report may not be relied upon, but rather any
third-party registrations may be made of record by making copies
of the registrations themselves of record or the electronic
equivalent thereof, that is, printouts of the registrations from
the electronic records of the Patent and Trademark Office's
automated search system. It is not a good practice to ignore
and/or fail to timely object to evidence when a timely objection
may well have allowed applicant to have cured any deficiency
noted by the Examining Attorney. In any event, we agree with the
Examining Attorney that the subsisting registrations referred to
by applicant are for goods, such as firefighting equipment,
roofing and construction materials, wood paneling, windows, etc.,
which are unrelated to applicant's and registrant's services.
Accordingly, we have given the registrations very little weight.
Ser. No. 75/185,834
9
With respect to the services, the question is whether
applicant's and registrant's services are related in some
manner, or the conditions surrounding their marketing are
such that they could be encountered by the same purchasers
under circumstances that could give rise to the mistaken
belief that the services come from the same source, in view
of the similarity of the marks. We believe that this
record is sufficient to show a substantial relatedness
between registrant's research and consulting services in
geophysics and seismology and applicant's petroleum
engineering and oil and gas well services. While these
services are unquestionably specifically different, they
are nevertheless related in the sense that registrant’s
services may be used in the exploration for oil and gas,
and that applicant’s services are useful in the production
of oil and gas. A purchaser, even a relatively
sophisticated one in the oil and gas industry, aware of
registrant's SIERRA GEOPHYSICS services, who then
encounters applicant's SIERRA ENGINEERING petroleum
engineering and oil and gas well services is likely to
believe that those services are related in the sense that
they come from the same source or are sponsored by the same
entity. Finally, if we had any doubt about this matter,
Ser. No. 75/185,834
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this doubt should be resolved, as the Examining Attorney
points out, in favor of the prior user and registrant.
With respect to the other registration, Registration
No. 1,802,340, issued November 2, 1993, that registration
issued for the mark shown below.
The words "ENVIRONMENTAL SERVICES" are disclaimed. The
registration issued for "environmental cleanup services;
namely, ground water treatment, soil remediation,
analytical chemical services, preliminary site assessments,
and consulting services related thereto." While the
Examining Attorney argues that environmental cleanup
services are sometimes used in connection with oil and gas
wells, we believe that applicant's engineering/oil and gas
well services are sufficiently different from, and only
Ser. No. 75/185,834
11
possibly tangentially related to, registrant's
environmental cleanup services (which do not specifically
pertain to the cleanup of oil spills), that confusion is
unlikely.3
Decision: The refusal of registration in view of
Registration No. 1,185,205 is affirmed. The refusal of
registration with respect to Registration No. 1,802,340 is
reversed. The requirements with respect to the disclaimer
and identification of services are affirmed, as indicated
above.
R. L. Simms
G. D. Hohein
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board

3 While this cited registration has not been cancelled pursuant
to Section 8 of the Act, Office records, as of this date, show no
filing of any Section 8 affidavit, the last date for filing of
which would have been May 2, 2000.