Impact Fluid Solutions, LLC

Trademark Trial and Appeal Board

Sep 24, 2015

No. 86080526 (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
_____

Trademark Trial and Appeal Board
_____

In re Impact Fluid Solutions, LLC
_____

Serial No. 86080526
_____

John P. 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 SEAL 4000 (stylized) for the goods set forth below as
amended:
Gravel and sand sealant additive for drilling fluids used
and marketed solely in connection with oil and gas
drilling and completing oil and gas wells, in International
Class 4.1

1 Application Serial No. 86080526 was filed on October 2, 2013 based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as January 7, 2011.
Serial No. 86080526
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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 marks set forth below as
to be likely to cause confusion:
1. Registration No. 2048789 for the mark STARSEAL (typed drawing form);2
and
2. Registration No. 3733362 for the mark STARSEAL EF ECO FRIENDLY
PRODUCTS and design, shown below.3

The identification of goods in both of the cited registrations reads as follows:
Chemicals for waterproofing, dustproofing and hardening
concrete surfaces; chemical penetrating sealers in the
nature of volatile organic compounds (V.O.C.) for porous
concrete; chemical additives for concrete and masonry,
namely, release agents, bonding agents, bond breakers
and evaporation retarders; concrete admixtures, in Class
1; and
Primers for preparing concrete surfaces to be painted;
paint-like sealer coatings for concrete; paint-like anti-
graffiti coatings for concrete; paint-like elastomeric and
epoxy coatings for concrete; waterproofing paints for
concrete; and concrete paints, in Class 2.

2 Registered April 1, 1997; renewed. 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) (July 2015).
3 Registered January 5, 2010. Registrant disclaimed the exclusive right to use the term “Eco
Friendly Products.”
Serial No. 86080526
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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 reverse the refusal to register.
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 proceeding now before us, will be considered in
this decision.
Because the letters EF, the term “Eco Friendly Products,” and the design
element in the cited mark STARSEAL EF ECO FRIENDLY PRODUCTS and design
contain additional points of difference with Applicant's mark, we confine our
analysis to the issue of likelihood of confusion between Applicant's mark and the
cited registration for the mark STARSEAL in typed drawing form. That is, if there
is no likelihood of confusion between Applicant's mark and STARSEAL in typed
form, then there would be no likelihood of confusion with the mark STARSEAL EF
Serial No. 86080526
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ECO FRIENDLY PRODUCTS and design. See, e.g., In re Max Capital Group Ltd.,
93 USPQ2d 1243, 1245 (TTAB 2010).
A. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.
We turn first 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 “[t]he 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.” Coach
Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012). 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.
Serial No. 86080526
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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 below, the average customers
are engineers, a “mud engineer” in charge of drilling fluids, and an engineer who
supervises well cementing, both of whom will exercise an elevated degree of care.
Applicant’s mark is StAR SEAL 4000 and the mark in the cited registration is
STARSEAL. The marks are similar because they both include the term “Star Seal”
and they are different because (i) Registrant’s mark STARSEAL is one word and
“StAR SEAL” in Applicant’s mark is two words, (ii) Applicant’s mark has a lower
case letter “t” in the word “Star,” and (iii) Applicant’s mark includes the numeral
4000.
The presence or absence of a space between the words “Star” and “Seal” is an
inconsequential difference that even if noticed or remembered by consumers would
not serve to distinguish these marks. See, e.g., 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.”). Cf. Minn.
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Mining & Mfg. Co. v. Addressograph-Multigraph Corp., 155 USPQ 470, 472 (TTAB
1967) (“[i]t is almost too well established to cite cases for the proposition that an
otherwise merely descriptive term is not made any less so by merely omitting
spaces between the words”). In this regard, because the registered mark is in typed
drawing form, it could be displayed as StarSeal, thus, engendering the commercial
impression of two terms.4
Likewise, Applicant’s lower case letter “t” in the word “Star” is inconsequential
because it does not change the sound, connotation or commercial impression
engendered by the marks. Also, Registrant’s typed drawing mark STARSEAL could
be displayed as StARSEAL. In any event, the slight difference between an upper
case and lower case letter in the middle of a term, even if noticed, would not create
dissimilar marks. See In re Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB
1985) (“Moreover, although there are certain differences between the [marks’
CAYNA and CANA] appearance, namely, the inclusion of the letter ‘Y’ and the
design feature in applicant’s mark, there are also obvious similarities between
them. Considering the similarities between the marks in sound and appearance,
and taking into account the normal fallibility of human memory over a period of
time (a factor that becomes important if a purchaser encounters one of these

4 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). Thus, Applicant’s argument that
“when the size, layout, design, and logotype of the [Registrant’s] marks are taken into
consideration and properly weighed, it is apparent that the marks are actually quite
different and convey very different commercial impressions,” is inapposite. 7 TTABVUE 12.
Serial No. 86080526
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products and some weeks, months, or even years later comes across the other), we
believe that the marks create substantially similar commercial impressions”). See
also United States Mineral Products Co. v. GAF Corp., 197 USPQ 301, 306 (TTAB
1977) (“‘AFCO’ and ‘CAFCO,’ which differ only as to the letter ‘C’ in USM’s mark,
are substantially similar in appearance and sound”) and In re Bear Brand Hosiery
Co., 194 USPQ 444, 445 (TTAB 1977) (“The mark of the applicant, ‘KIKS’ and the
cited mark ‘KIKI’ differ only in the terminal letter of each mark. While differing in
sound, the marks are similar in appearance and have a somewhat similar
connotation”).
Finally, the numeral 4000 in Applicant’s mark is likely to be viewed as a specific
line of STAR SEAL products rather than as a separate and distinct indicator of
source. See Clorox Co. v. State Chem. Mfg. Co., 197 USPQ 840, 844 (TTAB 1977)
(Applicant’s mark FORMULA 999 is similar to Opposer’s registered mark
FORMULA 409). See also Nabisco Brands, Inc. v. Kaye, 760 F.Supp. 25, 19 USPQ2d
1465, 1466 (D.Conn. 1991) (A.2 for steak sauce is similar to A.1 for steak sauce). In
this regard, Applicant’s mark incorporates Registrant’s entire mark. While there is
no explicit rule that likelihood of confusion automatically applies where a junior
user’s mark contains in part the whole of another mark, the fact that Registrant’s
mark is subsumed by Applicant’s mark increases the similarity between the two.
See, e.g., In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009)
(applicant’s mark VANTAGE TITAN for medical magnetic resonance imaging
diagnostic apparatus confusingly similar to TITAN for medical ultrasound
Serial No. 86080526
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diagnostic apparatus); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB
1988) (applicant’s mark MACHO COMBOS for food items confusingly similar to
MACHO for restaurant entrees); In re Riddle, 225 USPQ 630, 632 (TTAB 1985)
(RICHARD PETTY’S ACCU TUNE for automotive service centers confusingly
similar to ACCU-TUNE for automotive testing equipment).
In view of the foregoing, we find that the term “StAR SEAL” is the dominant
element of Applicant’s mark and it is essentially identical to Registrant’s mark
STARSEAL. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985) (there is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks in their entireties).
The significance of the term “StAR SEAL” as the dominant element of
Applicant’s mark StAR SEAL 4000 is reinforced by its location as the first part of
the mark. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most
prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word
in the mark and the first word to appear on the label); Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)
(upon encountering the marks, consumers will first notice the identical lead word);
Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(“it is often the first part of a mark which is most likely to be impressed upon the
mind of a purchaser and remembered”).
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We find that Applicant’s mark StAR SEAL 4000 is similar to the registered
mark STARSEAL in appearance, sound, connotation and commercial impression.
B. The similarity or dissimilarity and nature of the goods and the established,
likely-to-continue trade channels, and the degree of consumer care.
These three du Pont factors are interrelated and will be considered together.
While Applicant has restricted its identification of goods to the oil and gas
drilling industry, the registered mark is not restricted to any channels of trade. In
comparing the similarity or dissimilarity and nature of the goods, we must
determine whether Registrant’s chemical additives and admixtures for concrete
may be used in the oil and gas drilling industry such that they might be
encountered by consumers for Applicant’s gravel and sand sealant additive for
drilling fluids.5 In other words, the issue before us is whether Applicant’s gravel and
sand sealant additive and Registrant’s chemical additives and admixtures for
concrete are related in some manner and/or that conditions and activities
surrounding marketing of these goods are such that they would or could be
encountered by same persons under circumstances that could, because of
similarities of marks used with them, give rise to the mistaken belief that they
originate from or are in some way associated with the same producer. Coach Servs.,

5 “Admixture” is defined as “1. The act of mixing; state of being mixed. 2. Anything added;
any alien element or ingredient … 3. A compound containing an admixture.” THE RANDOM
HOUSE DICTIONARY OF THE ENGLISH LANGUAGE (UNABRIDGED), p. 26 (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). According to the USALCO website (usalco.com) “Other terms for
Concrete Additives” include concrete admixtures, cement additives, and cement
admixtures. (August 20, 2014 Office Action).
Serial No. 86080526
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Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722; Edwards Lifesciences Corp. v.
VigiLanz Corp., 94 USPQ2d 1399. 1410 (TTAB 2010); Schering Corporation v. Alza
Corporation, 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corporation v.
Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978).
As noted above, Applicant’s goods are a gravel and sand sealant additive for
drilling fluids in the oil and gas industry. “[D]rilling fluid is used to aid the drilling
of boreholes into the earth.”6 One of the functions of the drilling fluid is to seal
permeable formations.7
How Drilling Mud Additives Work8
In drilling muds, granular sodium aluminate, liquid
sodium aluminate, and potassium aluminate provide
alumina which reacts with the minerals and clays in the
cuttings and along side [sic] of the bore hole. The
alkalinity also dissolves silica which provides the same
function.
The chemical reaction between the minerals in the drill
shaft and the alumina and silica form insoluble
participates at the interface of the bore hole and the
formation. This in turn helps preserve and stabilize the
shaft until a casing is inserted and cemented.
The “Mud engineer” is in charge of the drilling fluid.
“Mud engineer” is the name given to an oil field service
company individual who is charged with maintaining a
drilling fluid or completion fluid system on an oil and/or
gas rig. This individual typically works for the company

6 “Drilling fluid,” Wikipedia at 4 TTABVUE 27. A “borehole” is defined as “a hole drilled in
the earth, as for the purpose of extracting a core, releasing gas, oil, water, etc.” THE
RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE (UNABRIDGED), p. 242.
7 Id. at 32.
8 USALCO website (usalco.com) attached to the August 20, 2014 Office Action. “Liquid
drilling fluid is often called drilling mud.” 4 TTABVUE 27.
Serial No. 86080526
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selling the chemicals for the job and is specifically trained
with those products, though independent mud engineers
are still common. The role of the mud engineer or more
properly Drilling Fluids Engineer is very critical to the
entire drilling operation because even small problems
with mud can stop the whole operations on [a] rig.9
“Well cementing is the process of introducing cement into the annular space
between the well-bore and casing or to the annular space between two successive
casing strings.”10 “Cement” is defined as “any of various calcined mixtures of clay
and limestone, usually mixed with water and sand, gravel, etc. to form concrete,
that are used as building material.”11 “Concrete” is defined, inter alia, as “an
artificial, stonelike [sic] material used for various structural purposes, made by
mixing cements and various aggregates, as sand, pebbles, gravel or shale, with
water and allowing the mixture to harden.”12
Although the terms cement and concrete often are used
interchangeably, cement is actually an ingredient of
concrete. Concrete is a mixture of aggregates and paste.
The aggregates are sand and gravel or crushed stone; the
paste is water and portland cement. Other materials and
chemicals may be included to help improve concrete
performance.
Cement comprises from 10 to 15 percent of the concrete
mix by volume. Through a chemical reaction called
hydration, the cement and water harden and bind the
aggregates into a rocklike mass. The hardening process

9 “Drilling fluid,” Wikipedia at 4 TTABVUE 36-37.
10 “Well cementing,” Wikipedia at 4 TTABVUE 41. “Annular” is defined as “having the form
of a ring.” THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE
(UNABRIDGED), p. 84.
11 THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE (UNABRIDGED), p.
334.
12 THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE (UNABRIDGED), p.
424.
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continues for years meaning that concrete gets stronger
as it gets older.
Portland cement is not a brand name, but the generic
term for the type of cement used in virtually all concrete,
just as stainless is a type of steel and sterling a type of
silver. Therefore, there is no such thing as cement
sidewalk, or a cement mixer; the proper terms are
concrete sidewalk and concrete mixer.13
In view of the foregoing, “well cementing” could be construed as “well concreting.”
“The most important function of cementing is to achieve zonal isolation. Another
purpose of cementing is to achieve a good cement-to-pipe bond. Too low an effective
confining pressure may cause the cement to become ductile.”14 “Given the multitude
of cement parameters the best and most thorough and practical method of designing
a cement blend is through laboratory testing. The tests should be conducted on a
sample that represents the cement to be used on the job site.”15
There are eight general categories of additives.
1. Accelerators reduce setting time and increase the
rate of compressive strength build up.
2. Retarders extend the [s]etting time.
3. Extenders lower the density.
4. Weighting agents increase the density.
5. Dispensers reduce viscosity.
6. Fluid loss control agents.
7. Lost circulation control agents.

13 “Frequently Asked Questions,” PCA America’s Cement Manufacturer’s website (cement.
org) attached to the January 22, 2014 Office Action.
14 “Well cementing,” Wikipedia at 4 TTABVUE 41.
15 Id.
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8. Specialty agents.16
The foregoing evidence establishes that the oil and gas industry uses both
drilling fluids and concrete/cement products. In her August 20, 2014 Office Action,
the Trademark Examining Attorney submitted excerpts from third-party websites
showing that the same companies manufacture and sell drilling fluid additives and
concrete additives and admixtures.
1. Clariant website (clariant.com) advertises its oil and gas well “leading-edge
specialty additives for drilling, cementing, completion and stimulation.”
Clariant Oil Services provides innovative chemical
technologies for the following segments:
* * *
DRILLING, CEMENTING, COMPLETION AND
WORKOVER
● Defoamers17
● Cement dispersants
● Fluid loss additives
● Shale inhibitors
● Multipurpose Surfactants/Detergents18
2. Omnova Solutions website (omnova.com) advertises its sale of chemicals for
use in drilling fluids and cementing.

16 Id. at 43.
17 “Defoamers destabilize any foam which builds up during the mixing process and reduce
the air content.” They are widely used in concrete. Clariant.com
18 A “surfactant” is a “surface-active agent” which is defined as “any substance that when
dissolved in water or an aqueous solution reduces its surface tension or the interfacial
tension between it and another liquid.” THE RANDOM HOUSE DICTIONARY OF THE
ENGLISH LANGUAGE (UNABRIDGED), p. 1914.
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Omnova’s Oil & Gas business is a leading manufacturer
of specialty chemical wellbore stabilization components
used in a wide range of applications, including fluid loss
control and sealing, flow control and cementing properties
enhancement, and gel additives for fracking fluids and
strengthening agents.
Omnova has the distinct capability and core competency
to design synthetic polymers that meet oilfield exploration
and production (E&P) requirements in conventional and
unconventional drilling processes, including:
» Solubility in the various oil based muds for efficient
fluid loss control
» High-temperature/high pressure performance
» Sealing in shales
» Ionic (salt) stability in high performance water-based
muds
With respect to cementing additives for oil and gas applications, the Omnova
website includes the following information:
Omnova produces liquid and dry cementing additives that
contribute to beneficial flow and structural properties. …
Omnova provides advances cementing latexes to enhance
cement flow and prevent annular gas migration, which
are particularly effective under continually higher high-
temperature and high-pressure bottom-hole
environments. GenCeal® latex particles efficiently plug
porous spaces during cement hydration, providing fluid
loss and gas migration control. The microparticles tolerate
high temperatures and salts, enabling easy and uniform
dispersion into cement slurries, while reducing its
density. When the cement sets the lattices act as a film-
forming binder, and also contribute to the enhanced
strength properties of the cement.
3. USALCO website (usalco.com) advertises the sale of concrete additives and
admixtures “used in the oilfield for lost circulation and well cementing” and
“chemical additives for water-based oilfield drilling muds.”
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The products for drilling mud additives are:
● Granular Sodium Aluminate (GUSS)
● Liquid Sodium Aluminate
● Potassium Aluminate
4. Imerys website (imerys-perfmins.com) website advertises its oil well drilling
and cementing products.
Oil Well Drilling/Cementing
Imerys is a world leader in the extraction and processing
of industrial minerals. The Minerals for the Petroleum
Industry team within Imerys is dedicated to providing a
wide range of minerals and mineral-based products and
services to oilfield service companies and also other
manufacturers of drilling fluids and cementing and other
products for oilfield use.
* * *
Diatomite
Imerys diatomites … find application for drilling fluids
and also in oilwell cementing.
Diatomite can be used as a loss circulation material in
drilling fluids to form a rapid dewatering plug and block
loss of fluid. Diatomite is also used as filtration material,
in diatomite filter units, to removes solids from
completion and work-over fluids.
Diatomite is used in oilwell cementing as an extender and
as a pozzolanic additive to reduce the permeability of the
hardened cement to liquids and gasses.19
5. 3M (3m.com) advertises glass bubbles used in both oil drilling fluids and
cements.

19 “Pozzolanic” is defined as “having properties similar to those of pozzolana” which is “a
variety of volcanic tuff or ash used in making hydraulic cement.” THE RANDOM HOUSE
DICTIONARY OF THE ENGLISH LANGUAGE (UNABRIDGED), p. 1517.
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3M Glass Bubbles HGS Series are engineered hollow
glass spheres used as density-reducing agents in oil and
gas drilling fluid and cements. They are specially
formulated for a high strength-to-weight ratio, allowing
greater survivability under demanding downhole
conditions.
The Trademark Examining Attorney has demonstrated that the same companies
manufacture drilling fluid additives, concrete additives and admixtures used in the
oil and gas drilling industry albeit not necessarily under the same mark. However,
the evidence also shows that an expert “mud engineer” is in charge of the drilling
fluid20 while the well cementing is supervised by a different type of engineer.21 The
most favorable inference that may be drawn from the evidence regarding the
similarity of goods is that they are both used in the oil and gas drilling industry.
However, such an inference is not sufficient to demonstrate that the relevant
consumers will encounter both marks under circumstances likely to give rise to the
mistaken belief that the products emanate from the same source. See Bose v. QSC
Audio, 293 F.3d 1367, 63 USPQ2d 1303, 1310 (Fed. Cir. 2002) (“a broad general
market category is not a generally reliable test of relatedness of products”);
Electronic Data Sys. v. EDSA Micro Corp., 23 U.S.P.Q.2d 1460, 1463 (TTAB 1992)
(products are not related simply because each involve the use of computers); Harvey
Hubbell, Inc. v. Tokyo Seimitsu Co., 188 USPQ 517, 520 (TTAB 1975) (“In

20 As noted above, ‘“Mud engineer’ is the name given to an oil field service company
individual who is charged with maintaining a drilling fluid or completion fluid system on an
oil and/or gas rig. This individual typically works for the company selling the chemicals for
the job and is specifically trained with those products.”
21 As noted above, “Given the multitude of cement parameters the best and most thorough
and practical method of designing a cement blend is through laboratory testing. The tests
should be conducted on a sample that represents the cement to be used on the job site.”
Serial No. 86080526
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determining whether products are identical or similar, the inquiry should be
whether they appeal to the same market, not whether they resemble each other
physically or whether a word can be found to describe the goods of the parties.”).
The decision to purchase Applicant’s gravel and sand sealant additive for
drilling fluids is made by the mud engineer. The decision to purchase specific
additives for the concrete mixture used for well cementing is made by an engineer
with expertise in well cementing. There is no evidence that either engineer is
involved in the purchasing decision outside of his/her area of expertise.
Perhaps the most critical factor in this analysis is the degree of care that will be
exercised by the relevant purchasers.22 If there is a likelihood of confusion, it must
be based on the confusion of the relevant consumer. As we noted above, the relevant
purchasers are different. Moreover, each purchaser will exercise an elevated degree
of purchasing 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 proposals.

22 The Trademark Examining Attorney discounts this du Pont arguing that Applicant did
not provide any evidentiary support and relying on the boilerplate argument that even
sophisticated consumers are not immune to source confusion. 9 TTABVUE 14. While the
better practice would have been for Applicant to provide evidence setting forth a detailed
explanation of the purchasing process, the inherent nature of the goods is such that the
relevant consumer is going to exercise an elevated degree of care.
Serial No. 86080526
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On the other hand, the websites show that the companies in the field of selling
additives for drilling fluids and for well cementing advertise as if the purchasing
decision were made by one person.23 However, we must look at the entire record and
there is no evidence that the oil and gas drilling industry is a homogenous whole;
rather, it appears to be composed of separate parts with diverse requirements
which, in effect, constitute different markets for the respective products. In sum,
because different consumers are making the purchasing decisions, and because
those different consumers exercise an elevated degree of care in making those
decisions, we find that these du Pont factors weigh against finding that there is a
likelihood of confusion.
C. Balancing the factors.
Although the marks are similar, because the evidence regarding the relatedness
of the goods, channels of trade and degree of consumer care do not support finding
that there is a likelihood confusion, we find that Applicant’s mark StAR SEAL
4000 for “gravel and sand sealant additive for drilling fluids used and marketed
solely in connection with oil and gas drilling and completing oil and gas wells” is not
likely to cause confusion with the previously registered marks STAR SEAL and
STARSEAL EF ECO FRIENDLY PRODUCTS and design for the goods set forth
in those registrations.

23 In her brief, the Trademark Examining Attorney asserted that “[t]he goods of the
applicant and registrant are commonly made by the same entity and sold together.” 9
TTABVUE 11. This is not entirely accurate. The evidence of record shows that the goods
may be made by the same entity and, as noted, they may be advertised together, but there
is no evidence regarding how the sales of the goods are made and whether they are, in fact,
sold together. As discussed in the order, the purchasing decisions appear to be made by
different engineers.
Serial No. 86080526
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Decision: The refusal to register Applicant’s mark StAR SEAL 4000 is
reversed.