Impact Fluid Solutions, LLC

Trademark Trial and Appeal Board

Sep 24, 2015

No. 86080542 (T.T.A.B. Sep. 24, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 24, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Impact Fluid Solutions, LLC
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Serial No. 86080542
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John Courtney of Andrews Kurth LLP,
for Impact Fluid Solutions, LLC.
Jillian R. Cantor, Trademark Examining Attorney, Law Office 117,
Hellen Bryan Johnson, Managing Attorney.
_____

Before Bergsman, Lykos and Gorowitz,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Impact Fluid Solutions, LLC (“Applicant”) seeks registration on the Principal
Register of the mark StAR SAND SEAL (stylized) for the following goods (as
amended): “non-chemical additive for drilling fluid used and marketed solely in
connection with oil and gas drilling and excluding use with other forms of drilling,
digging, or excavation; namely, bridging particles to control seepage and lost
circulation when drilling an oil or gas well through high permeability or fractured
Serial No. 86080542
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formations,” in International Class 4.1 Applicant disclaimed the exclusive right to
use the term “Sand Seal.”2
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the
ground that Applicant’s mark so resembles the registered mark SANDSEAL (typed
drawing form) for “additives for earth boring and excavation fluids,” in Class 1, as to
be likely to cause confusion.3
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Preliminary Issue
Applicant’s original description of goods read as follows: “additive for drilling
fluid, namely, bridging particles to control seepage and lost circulation when
drilling through high permeability or fractured formations.”

1 Application Serial No. 86080542 was filed on October 2, 2013, under Trademark Act
Section 1(a) based upon Applicant’s claim of first use anywhere and use in commerce since
at least as early as March 19, 2012.
2 The Trademark Examining Attorney required Applicant to disclaim the exclusive right to
use the term “Sand Seal” on the ground that the word “sand” merely describes a
characteristic or feature of the goods and that the word “seal” merely describes the function
of the goods. The Trademark Examining Attorney submitted dictionary definitions of “sand”
and “seal” to support the requirement for a disclaimer. January 22, 2014 Office Action.
There was no evidence regarding the term “Sand Seal.”
When an applicant elects to enter a disclaimer and not appeal the requirement, then the
disclaimer constitutes a concession that the matter is not inherently distinctive. See In re
RiseSmart Inc., 104 USPQ2d 1931, 1932 (TTAB 2012).
3 Registration No. 2014016, issued November 5, 1996; renewed.
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In its July 21, 2014 response to an Office Action, Applicant amended the
description of goods to read as follows: “non-chemical additive for drilling fluid,
namely, bridging particles to control seepage and lost circulation when drilling
through high permeability or fractured formations.”
In its February 25, 2015 response to an Office Action, Applicant further
amended the description of goods to read as follows: “non-chemical additive for
drilling fluid used and marketed solely in connection with oil and gas drilling and
excluding use with other forms of drilling, digging or excavation; namely, bridging
particles to control seepage and lost circulation when drilling an oil or gas well
through high permeability or fractured formations.”
Applicant’s proposed amendment to restrict the description of goods to exclude
“use with other forms of drilling digging or excavation” is ambiguous because it can
be interpreted to include “bridging particles to control seepage and lost circulation
when drilling an oil or gas well through high permeability or fractured formations.”
However, we interpret Applicant’s description of goods to be a non-chemical additive
for drilling fluid, namely, bridging particles to control seepage and lost circulation
when drilling an oil or gas well through high permeability or fractured formations,
marketed solely in connection with oil and gas drilling.4

4 Because the goods are “marketed solely in connection with oil and gas drilling” the
restriction of “excluding use with other forms of drilling, digging or excavation” is
redundant. Nevertheless, we recognize that Applicant is restricting its goods to oil and gas
drilling to distinguish them from Registrant’s other earth boring and excavation channels of
trade.
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II. Applicable Law
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 Co., 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 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.”). These factors, and any
other relevant du Pont factors in the appeal now before us, will be considered in this
decision.
A. The similarity or dissimilarity and nature of the goods and the established,
likely-to-continue trade channels.
Because the scope of the registration Applicant seeks is defined by the
description of goods in the application (and not actual use), it is the description of
goods in the application (and not actual use) that we must look to in determining
Applicant’s right to register:
The authority is legion that the question of registrability
of an applicant's mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant's goods, the particular
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channels of trade or the class of purchasers to which sales
of the goods are directed.
Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). Likewise, in considering the scope of the cited registration, we
look to the description of goods in the registration, and not to extrinsic evidence
about the Registrant’s actual goods, customers, or channels of trade. In re Elbaum,
211 USPQ 639, 640 (TTAB 1981) (citing Kalart Co., Inc. v. Camera-Mart, Inc., 258
F.2d 956, 119 USPQ 139 (CCPA 1958)).
The description of goods in the cited registration is “additives for earth boring
and excavation fluids.” Because Registrant’s additives are not limited in any
fashion, they include all types of additives such as chemical and non-chemical
additives.
The word “earth” is defined, inter alia, as “the solid matter of this planet; dry
land; ground.”5
The word “boring” is defined as “the act or process of making or enlarging a
hole.”6 A “borehole” is defined as “a deep, narrow hole made in the ground,
especially to locate water or oil.”7
The word “excavate” is defined as “make (a hole or channel) by digging,” “dig out
material from (the ground),” and “extract (material) from the ground by digging.”8

5 The Random House Dictionary of the English Language (Unabridged) (2nd ed.
1987). The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du
Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
6 Id.
7 Oxford Dictionaries (oxforddictionaries.com/us) attached to the August 26, 2014 Office
Action
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The word “drill” is defined as “a hand tool, power tool or machine with a rotating
cutting tip or reciprocating hammer or chisel, used for making holes,” and to
“produce (a hole) in something by or as if by boring with a drill.”9
By definition, Registrant’s description of goods comprises chemical and non-
chemical additives for fluids used to dig holes in the earth, inter alia, for the
purpose of locating water or oil. Thus, Registrant’s description of goods is broad
enough to encompass Applicant’s description of goods despite Applicant’s efforts to
restrict its description and, therefore, the goods are legally identical.10
Applicant’s argument that the fundamental nature of the goods may not be
disregarded and improperly broadened to find relatedness when there is none is
inapposite because Applicant failed to recognize that we must analyze the goods
based on the description of goods in the application and registration and not on
actual use.11 We cannot resort to extrinsic evidence to restrict registrant’s goods.
See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (evidence that
relevant goods are expensive wines sold to discriminating purchasers must be
disregarded given the absence of any such restrictions in the application or
registration).

8 Id.
9 Id.
10 That the goods are in different International Classes has no bearing on our analysis. The
classification of goods and services by the USPTO is a purely administrative determination
and has no bearing on the issue of likelihood of confusion. Jean Patou Inc. v. Theon Inc., 9
F.3d 971, 29 USPQ2d 1771, 1773 (Fed. Cir. 1993); National Football League v. Jasper
Alliance Corp., 16 USPQ2d 1212, 1216 n.5 (TTAB 1990). See also 37 CFR Section 2.85(f)
(“Classification schedules shall not limit or extend the applicant's rights.”).
11 4 TTABVUE 10 n.4
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Because the goods described in the cited registration and the goods described in
the application, including Applicant’s restriction to the oil and gas drilling industry
and exclusion of other earth boring and excavation channels of trade, are legally
identical, we must presume that the channels of trade and classes of purchasers are
the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (legally identical goods are presumed to travel in same channels of trade to
same class of purchasers); 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); United Global Media Grp.,
Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); American Lebanese Syrian
Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022,
1028 (TTAB 2011).
In view of the foregoing, we find that the goods are legally identical and,
therefore, we must presume that they move in the same channels of trade.
B. The degree of consumer care.
Even though Applicant did not argue this du Pont factor, we recognize that the
relevant consumers exercise an elevated degree of care in purchasing the products
involved herein. If there is a likelihood of confusion, it must be based on the
confusion of the relevant consumer. The record shows that in the oil drilling
industry, liquid drilling fluid is called drilling mud.12 The oil field service company
individual who is charged with maintaining a drilling fluid system on an oil or gas

12 4 TTABVUE 71.
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drilling rig is a “mud engineer.”13 The mud engineer “typically works for the
company selling the chemicals for the job and is specifically trained with those
products.”14 “”The role of the mud engineer … is very critical to the entire drilling
operation because even small problems with mud can stop the whole operations [sic]
on the rig.”15 “Large cost savings result when the mud engineer and fluid performs
adequately.”16 Since Registrant’s “additives for earth boring and excavation fluids”
may encompass Applicant’s “non-chemical additive for drilling fluid used and
marketed solely in connection with oil and gas drilling,” the relevant consumers
may be the same.
We find that these consumers will exercise an elevated degree of care for the
following reasons:
1. The purchaser has a specific need or purpose for the products;
2. The nature of the purchase is complex and integral to the success of the oil
and gas drilling process; and
3. The purchase will be conducted with knowledgeable sales persons and in
consultation with experts and through a comparison of products.
C. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.

13 4 TTABVUE 80.
14 Id.
15 Id.
16 4 TTABVUE 81.
Serial No. 86080542
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We turn now to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In a particular case, “two marks may
be found to be confusingly similar if there are sufficient similarities in terms of
sound or visual appearance or connotation.” Kabushiki Kaisha Hattori Seiko v.
Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216
(Fed. Cir. 1992) (citation omitted). See also Eveready Battery Co. v. Green Planet
Inc., 91 USPQ2d 1511, 1519 (TTAB 2009) (citing Krim-Ko Corp. v. Coca-Cola Co.,
390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in
either form, spelling or sound alone is likely to cause confusion.”)).
In comparing the marks, we are mindful that where, as here, the goods are
legally identical, the degree of similarity necessary to find likelihood of confusion
need not be as great as where there is a recognizable disparity between the goods.
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind,
85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v.
Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). “The proper test is not a
side-by-side comparison of the marks, but instead ‘whether the marks are
sufficiently similar in terms of their commercial impression’ such that persons who
encounter the marks would be likely to assume a connection between the parties.”
Serial No. 86080542
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Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721. See also San
Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196
USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d
1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The proper
focus is on the recollection of the average customer, who retains a general rather
than specific impression of the marks. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434,
1438 (TTAB 2012); Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ
335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975). As discussed above, the average customers are engineers, specifically
“mud engineers” in charge of drilling fluids, and other engineers involved in drilling
and excavating projects who exercise an elevated degree of care.
Applicant’s mark is StAR SAND SEAL (stylized) and the registered mark is
SANDSEAL in typed drawing form.17 The marks are similar because they both
contain the term “Sand Seal” and they are different because Applicant’s mark
includes the word “StAR.” Applicant argues that “when the marks are taken as a
whole they are different in appearance, sound, connotation, and commercial
impression.”18
That there is space between the words “Sand and Seal” in Applicant’s and no
space in the registered mark does not serve to distinguish the marks because the
registered is a typed drawing and may be presented as SandSeal which is similar

17 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings. A typed mark is the legal equivalent of a standard character mark. TMEP §
807.03(i) (January 2015).
18 7 TTABVUE 8.
Serial No. 86080542
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in appearance to the term SAND SEAL as displayed in Applicant’s mark. Marks
presented in standard or typed characters are not limited to any particular
depiction. The rights associated with a mark in standard or typed characters reside
in the wording and not in any particular display. In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1909-11 (Fed. Cir. 2012); Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 939 (Fed. Cir. 1983); In re RSI Systems, LLC, 88 USPQ2d 1445,
1448 (TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB
1988).
Moreover, although the registered mark is presented without a space, consumers
are likely to view and verbalize it as SAND SEAL, based on normal English
pronunciation. Thus, the presence or absence of a space between the two words is
an inconsequential difference that even if noticed or remembered by consumers
would not serve to distinguish these marks. See, e.g., Giersch v. Scripps Networks
Inc., 90 USPQ2d 1020, 1025 (TTAB 2009) (finding that DESIGNED TO SELL does
not create a distinct commercial impression from DESIGNED2SELL); Seaguard
Corp. v. Seaward International, Inc., 223 USPQ 48, 51 (TTAB 1984) (SEA GUARD
and SEAGUARD are "essentially identical"); In re Best Western Family Steak
House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“there can be little doubt that the
marks [BEEFMASTER for restaurant services and BEEF MASTER for frankfurters
and bologna] are practically identical and indeed applicant has not argued
otherwise.”).
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While SAND SEAL is disclaimed in Applicant’s mark, Registrant’s mark
SANDSEAL is registered on the Principal Register with no disclaimer and no claim
of acquired distinctiveness pursuant to Section 2(f) of the Trademark Act.
Therefore, the mark in the cited registration is entitled to the presumptions flowing
from Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b) (“A certificate of
registration of a mark upon the principal register provided by this chapter shall be
prima facie evidence of the validity of the registered mark and of the registration of
the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right
to use the registered mark in commerce on or in connection with the goods or
services specified in the certificate.”). In other words, Registrant is entitled to
protect its mark SANDSEAL, because it must be considered suggestive at the very
least. In this regard, we note that it is well settled that the likelihood of confusion is
to be avoided as much between “weak” marks as between “strong” marks; and as
between a “weak” and a “strong” mark. See King Candy Company v. Eunice King's
Kitchen, Inc., 496 USPQ 1400, 182 USPQ 108 (CCPA, 1974).
In analyzing the similarity or dissimilarity of the marks in view of the fact that
both marks consist, in whole or in part of the term “Sand Seal,” it is well settled
that the addition of matter has been found sufficient to distinguish the marks under
circumstances where the common element is descriptive or highly suggestive and/or
has been frequently used and/or registered by others in the same or related fields.
See, e.g., Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066 (TTAB
2011) (ZU ELEMENTS, stylized, not confusingly similar to ELEMENTS for
Serial No. 86080542
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identical apparel); Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313
(TTAB 2005) (NORTON MCNAUGHTON ESSENTIALS for ladies’ sportswear not
confusingly similar to ESSENTIALS for women's clothing because ESSENTIALS is
a highly suggestive term for articles of clothing); In re Hunke & Jochheim, 185
USPQ 188, 189 (TTAB 1975) (HIG-DURABLE for stationery articles not likely to
cause confusion with DURABL, on the Supplemental Register, for record books); In
re Merchandising Motivation, Inc., 184 USPQ 364 (TTAB 1974) (MEN'S WEAR for a
semi-monthly magazine not confusingly similar to MMI MENSWEAR for fashion
consulting for men because “MENSWEAR” is merely descriptive of such services).
In this case, the only evidence regarding the strength of the term “Sand Seal”
comprises dictionary definitions of the words “sand” and “seal.” There is no evidence
regarding whether the term “Sand Seal” is merely descriptive, no third-party
registrations consisting, in whole or in part, of the term “Sand Seal,” and no third-
party use, in whole or in part, of the term “Sand Seal.”
In view of the foregoing, the totality of Applicant’s mark and the nature of the
term “Sand Seal” with regard to the goods at issue, we find that the similarities
between the marks outweigh the dissimilarities.
D. Balancing the factors.
Despite the fact that the relevant consumers are knowledgeable and will
exercise an elevated degree of care, because the marks are similar, the goods are
legally identical and we must presume that the goods move in the same channels of
trade and are sold to the same classes of consumers, we find that Applicant’s mark
Serial No. 86080542
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StAR SAND SEAL for “non-chemical additive for drilling fluid used and marketed
solely in connection with oil and gas drilling and excluding use with other forms of
drilling, digging, or excavation; namely, bridging particles to control seepage and
lost circulation when drilling an oil or gas well through high permeability or
fractured formations” is likely to cause confusion with the registered mark
SANDSEAL for “additives for earth boring and excavation fluids.” See HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff’d,
Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840,
1841-42 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated
purchasers, careful purchasing decision, and expensive goods).
Decision: The refusal to register Applicant’s mark StAR SAND SEAL under
Trademark Act Section 2(d) is affirmed.