Schlumberger Technology Corporation

Trademark Trial and Appeal Board

Sep 27, 2019

86071560 (T.T.A.B. Sep. 27, 2019)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 27, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Schlumberger Technology Corporation
_____

Serial No. 86071560
_____

Margaret A. Boulware of Boulware & Valoir,
for Schlumberger Technology Corporation.
John M. Gartner, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
_____

Before Cataldo, Lynch, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
I. Background
Schlumberger Technology Corporation (“Applicant”) seeks registration on the
Principal Register of the standard character mark POWERDRIVE ORBIT for the
following goods and services: 1

1 Application Serial No. 86071560 was filed on September 23, 2013, based on an allegation of
a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b). Applicant filed its Statement of Use on April 11, 2017, claiming 2014 as
both the date of first use and the date of first use in commerce.
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Well drilling machines; machine tools for well drilling, in
International Class 12; and

Well drilling services for others, in International Class 37.
As noted, Applicant initially based its application on its allegation of a bona fide
intention to use the mark in commerce. After the notice of allowance issued, Applicant
filed a statement of use2 with a specimen that consists of an eight-page brochure that
Applicant describes as “print advertising” and “point of sale material.”3 The specimen,
in its entirety, is reproduced below:4

2 Applicant, in its Statement of Use, stated that “the Applicant does not package their goods
or mark the trademark on their goods because of their [sic] nature of the goods and channels
of trade,” and added that the specimens were “print advertising and point of sale material
because the instruments and their method of use are not conducive to traditional labeling.”
See Applicant’s April 11, 2017 Statement of Use. This is a reference to 15 U.S.C. §1127, which
allows alternate specimens in cases where the nature of the goods makes it “impracticable”
to place the mark on the goods, their packaging or displays associated with the goods. In
submitting what it identified as printed point-of-sale display material, however, Applicant
was not, in fact, resorting to the impracticability exception of 15 U.S.C. §1127, since such
displays do constitute traditional specimens for goods. Similarly, in his declaration attached
to Applicant’s February 23, 2018 Request for Reconsideration, Applicant’s general counsel
declared that “the goods are large technically complex downhole well drilling tools and are
not susceptible to typical labeling.” In the body of the request for reconsideration, Applicant
argued that the specimens should be accepted as either print or online point-of-purchase
displays, which are traditional specimens, but added, “Alternatively, the tools used in down
hole well drilling cannot be labeled easily and Applicant requests consideration under 15
USC § 1127 for goods that are impractical to mark.”
A mere assertion of impracticability does not suffice to establish that traditional trademark
use is impracticable and Applicant did not elaborate on this statement or provide the evidence
necessary to establish that it was, in fact, impracticable to place the mark on the goods,
especially given that traditional trademark usage is typically employed with International
Class 7 machinery and equipment. Applicant did not reference the impracticability exception
in its appeal brief. Thus, we have given no consideration to the issue of the impracticability
exception under 15 U.S.C. §1127 in this decision.
3 Applicant’s April 11, 2017 Statement of Use; TSDR p. 4.
4 Applicant’s April 11, 2017 Specimen; TSDR pp. 1-8.

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The Examining Attorney refused registration under Sections 1 and 45 of the
Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the ground that the specimen
submitted by Applicant with its Statement of Use (1) is an inappropriate and
unacceptable specimen for the goods identified, and (2) does not show Applicant’s
mark in use in connection with any of the recited services.5 Specifically, the
Examining Attorney explained that while print advertising material may constitute

5 May 2, 2017 Office Action; TSDR p. 1.
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as an acceptable specimen of use for goods, such advertising must be used in
conjunction with a point-of-sale display of the goods.6 Here, the Examining Attorney
maintains that Applicant has failed to demonstrate that its print advertising is used
in association with any point-of-sale display for its goods.7 Additionally, the
Examining Attorney found that the specimen does not show use of the applied-for
mark in commerce in connection with any of the identified International Class 37
services.8
In response to the Examining Attorney’s initial office action, Applicant submitted
an additional specimen for its International Class 7 goods that it contends is a
screenshot of its website.9 The screenshot is reproduced below:

6 Id.
7 Id.
8 Id.
9 September 22, 2017 Response to Office Action, TSDR pp. 7 and 12.
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Applicant argues that “webpage displays are acceptable specimens for goods if
they contain 1) a picture or textual description of the goods, 2) show the mark in
association with the goods, and 3) provides a means for ordering the identified
goods.”10 Applicant contends that this new substitute specimen provides all three.
Specifically, Applicant maintains that the webpage describes the “pad actuation
design, the six-axis continuous inclination and azimuth capability, and information
regarding the speed of the drilling.”11 Applicant also asserts that its applied-for
POWERDRIVE ORBIT mark is clearly displayed at the top of the column containing
the description of the goods and is mentioned in the description.12 Finally, Applicant

10 Id., TSDR p. 7.
11 Id.
12 Id.
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contends that the webpage provides a means for ordering the goods. In particular,
Applicant argues that while the webpage does not include an “Add to the Cart”
ordering option as would be available for consumer goods such as clothes, towels,
sunglasses, etc., the webpage nonetheless has a means for ordering Applicant’s
identified goods. Applicant specifically maintains that since its goods are specialized
industrial products for very specific drilling applications, a customer would need to
consider the technical information for this system prior to placing an order and would
likely require technical assistance when purchasing the drilling system.13 Applicant
contends that the webpage provides the methods to obtain assistance and technical
information prior to placing an order for its goods.14
In support of its arguments, Applicant relies on the Board’s decision in In re
Valenite, Inc., 84 USPQ2d 1346 (TTAB 2007). In Valenite, the Board found that
appellant's webpage was an acceptable display used in association with the goods
because it functioned as a point-of-sale display. The webpage contained links to
appellant's “Technical Resource Center,” including specification sheets, online
calculators, and reference tables, as well as providing appellant's toll-free customer
service telephone numbers. Accordingly, the Board found that appellant's webpage
“provides an on-line catalog, technical information apparently intended to further the
prospective purchaser's determination of which particular product to consider, an
online calculator and both a link to, and phone number for, customer service

13 Id. at TSDR p. 8.
14 Id.
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information. Therefore, applicant's website provides the prospective purchaser with
sufficient information that the customer can select a product and call customer
service to confirm the correctness of the selection and place an order.” In re Valenite,
Inc., 84 USPQ2d at 1349-50.
Applicant argues that, like Valenite, the webpage specimen submitted also has
links to request more information and web links to a Contact page with contact
information for sales.15 Additionally, Applicant maintains that the webpage includes
web links to a library with Tech Reports, product sheets, and technical papers. As
such, Applicant contends that the web page should be viewed as a means to place an
order because its goods are specialized industrial products for specific drilling
applications and, therefore, technical support will be needed to ensure prospective
purchasers are purchasing the right system for their particular needs.16 Finally,
Applicant argues that the fact that the web page does not allow a purchaser to click
on a product and place it in a shopping cart should not result in a different finding.17
With regard to the Class 37 services, Applicant maintains that the original
specimen submitted, i.e., the eight-page brochure, clearly demonstrates service mark
usage of its POWERDRIVE ORBIT mark. Specifically, Applicant contends that the
first page of the specimen shows a photograph of workers wearing outfits with
Applicant’s SCHLUMBERGER trade name and rending the well-drilling services.

15 Id.
16 Id.
17 Id. at TSDR p. 9.
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To further support Applicant’s use of its mark as a service mark in commerce,
Applicant submitted an additional specimen for consideration which it describes as
“promotional material.”18 The additional specimen is reproduced below:19

Applicant also submitted an excerpt of the same specimen reproduced above,
highlighting certain language in the specimen, as displayed below:

18 Id. at TSDR p. 10.
19 Id. at TSDR p. 13.
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Applicant argues that this additional specimen demonstrates service mark usage
of its POWERDRIVE ORBIT mark because it provides information regarding
“modeling the reservoir,” “recommending how to drill the well,” and “conducting tests
to avoid collision with other wells.”
The Examining Attorney rejected the substitute specimens and maintained and
made final the refusal that none of the specimens of record show use of Applicant’s
mark in connection with either its identified goods or services.20
After the Examining Attorney issued his final refusal, Applicant appealed and
requested reconsideration. In its request for reconsideration, Applicant submitted yet
another specimen, which Applicant describes as an invitation to an event at an
industry conference promoting the sale of its POWERDRIVE ORBIT goods and
services.21 The additional specimen is reproduced below:

20 October 16, 2017 Office Action.
21 February 23, 2018 Request for Reconsideration, TSDR pp. 4-5. With its request for
reconsideration, Applicant also attached two articles that purportedly ran in the January
2018 and October 2017 issues of EPmag.com. Id. at TSDR pp. 8-12. The articles were attached
as evidence, not as substitute specimens. In any event, while the articles do use the mark in
connection with the goods, they do so in the manner of an advertisement for the goods. As
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With its request for reconsideration, Applicant also submitted the declaration of
its General Counsel, Mr. Matthias Abrell, who testified, inter alia, to the following:22
The mark POWERDRIVE ORBIT has been used by Applicant since 2014
for both goods and services applied for in connection with well tools and
drilling wells for others. The goods and services are used and sold to
multi-national companies and other large oil and gas customers. The
goods and services are advertised on the www.slb.com website and
brochures are available for download on the website for consumer to use
in purchasing the same. The website screen shot specimen provided by
Applicant is used to solicit customers. The button “Request More
Information” is used by purchasers to connect with the Applicant’s sales
force. The goods are largely technically complex downhole well drilling
tools and are not susceptible to typical labeling. The tools are used in
combination with the services provided by Applicant utilizing the
POWERDRIVE ORBIT mark as shown and described in the brochure
provided as a specimen of use.

The customers for the POWERDRIVE ORBIT goods and services
recognize the mark from the use on the Applicant’s website including
the case studies on www.slb.com promoting the Applicant’s goods and
services also provided as specimen of use. The current sales

such, they do not constitute acceptable specimens for Applicant’s Class 7 goods. Moreover,
the articles do not use Applicant’s mark in association with the identified Class 37 services.
22 Id. at TSDR pp. 15-16.
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environment is dependent on the Internet for sales of sophisticated oil
and gas goods and services. 23

The Examining Attorney denied Applicant’s request for reconsideration
essentially repeating his argument that none of the specimens submitted show
service mark usage for the identified Class 37 services and that the specimens are
mere advertisements for the Class 7 goods and, therefore, are unacceptable for use as
a specimen for such goods.24
This appeal resumed after the denial of Applicant’s request for reconsideration.
Both Applicant and the Examining Attorney filed briefs. As explained below, we
affirm the refusal as it pertains to the International Class 37 services, but reverse
the refusal as it concerns the International Class 12 goods.
II. Failure to Show Use of the Mark for the Identified Class 37
Services
Section 45 of the Trademark Act specifies that “a mark shall be deemed to be in
use in commerce . . . on services when it is used or displayed in the sale or advertising
of services and the services are rendered in commerce . . . .”
Use as a service mark may be established by: (1) showing the mark used or
displayed as a service mark in the sale of the services, which includes use in the

23 Mr. Abrell also testified that “[s]ince 2014 Applicant has sold over $10 Million each year of
the POWERDRIVE ORBIT branded services using the goods, to its customers in commerce
in the US.” Mr. Abrell’s testimony regarding the amount of sales Applicant has made while
in business, the size of Applicant’s company, the scope of Applicant’s efforts at advertising its
goods and services and the relative strength of Applicant’s mark, however, is not relevant to
the issue before us, namely, whether the specimens submitted by Applicant demonstrate
trademark or service mark usage of its applied-for POWERDRIVE ORBIT mark in
connection with the identified goods and services.
24 February 27, 2018 Denial of Request for Reconsideration.
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course of rendering or performing the services, or (2) showing the mark used or
displayed as a service mark in advertising the services, which encompasses
marketing and promotional materials. In re WAY Media, Inc., 118 USPQ2d 1697,
1698 (TTAB 2016); see also In re ICE Futures U.S. Inc., 85 USPQ2d 1664, 1669 (TTAB
2008) (noting that use in the rendition of services is an element of the “sale” of services
under Trademark Act Section 45); In re Metriplex, Inc., 23 USPQ2d 1315, 1316-17
(TTAB 1992) (explaining that an acceptable specimen need not explicitly refer to the
services if it “show[s] use of the mark in the rendering, i.e., sale of the services”).
To show service mark usage, a specimen must display use of the mark in a manner
that would be perceived by potential purchasers as identifying the applicant's
services and indicating their source by “direct association.” In re Universal Oil Prods.
Co., 476 F.2d 653, 177 USPQ 456 (CCPA 1973); WAY Media, 118 USPQ2d at 1698.
Specimens showing the mark used in rendering the identified services need not
explicitly specify the nature of the services, but “there must be something which
creates in the mind of the purchaser an association between the mark and the service
activity.” In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994). A
specimen that shows the mark with no reference to, or association with, the services
does not show service mark usage. In re DSM Pharms. Inc., 87 USPQ2d 1623, 1624
(TTAB 2008) (LIQUIDADVANTAGE referred only to software and did not identify
and distinguish custom manufacturing services); see also, e.g., In re HSB Solomon
Assocs. LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (CEI identified process by which
applicant derived a measurement rather than technical consulting service); In re
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Osmotica Holdings Corp., 95 USPQ2d 1666, 1669 (TTAB 2010) (OSMODEX referred
only to drug delivery technology, not consulting services).
Whether a mark sought to be registered as a service mark has been used “to
identify” the services specified in the application is a question of fact to be determined
on the basis of the specimens submitted by applicant, together with any other
evidence of record. In re Adair, 45 USPQ2d 1211, 1214 (TTAB 1997). When
appropriate, the Board has been fairly flexible in accepting service mark specimens.
See In re Ralph Mantia Inc., 54 USPQ2d 1284 (TTAB 2000).
Following a careful review of all the specimens submitted by Applicant, we find
that none of them demonstrate service mark usage of Applicant’s POWERDRIVE
ORBIT mark for “well drilling services for others.” We address each specimen in turn.
A. The 8-Page brochure
With regard to the eight-page brochure, we find that this specimen is unacceptable
as a specimen for the Class 37 services for the following reasons. First, the
photograph on the brochure does not show the rendering of well drilling services.
Rather, it is a promotional photograph for the cover of a brochure showing men
wearing hardhats and gloves and measuring equipment which, based on the caption
beneath, appears to be the “PowerDrive Orbit Rotary steerable system.” In the
context of the brochure, which is a brochure for the equipment and which does not
mention well drilling services at all, the purpose of the photograph clearly is to show
the advertised goods in a work setting.
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Applicant argues that “there is no question that a user of the Powerdrive Orbit
services will associate the mark on the specimen with the services in the photograph
that Applicant offers because such activities in the photograph are rendered during
the well drilling services.”25 In other words: Customers will know that the photograph
of men measuring drilling equipment shows Applicant rendering well drilling
services because customers know that measuring drilling equipment is a necessary
part of well drilling services. Such an argument cannot be made without an
accompanying explanation or evidence. Without such an explanation or evidence, a
reasonable interpretation of the photograph is that it shows workers posing with the
equipment identified in the caption below the photograph and advertised within the
brochure. The photograph does not show the workers drilling wells. This is true as
well for a similar photograph which appears on the sixth page of the brochure.
The fact that the mark appears beneath the photograph is irrelevant to the issue
of whether the photograph itself shows the mark in connection with the rendering of
the services. Applicant’s claim that “the goods . . . are not conducive to traditional
labeling” is irrelevant, as the issue is not the use of the mark on the goods, but the
use of the mark in connection with the services. Similarly, the claim that “subsurface
drilling [is] not conducive to traditional labeling” is confusing, as services are not
labelled, and Applicant appears to be suggesting that well drilling services cannot be
advertised by traditional means. Applicant did not elaborate on this claim.

25 Applicant’s Appeal Brief, pp. 11-12; 4 TTABVUE 12-13.
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In the alternative, Applicant argues that that the brochure does, in fact, advertise
Applicant’s well drilling services:26
The services are well drilling and the brochure in the cover page shows
the mark and a well site, the second page references ‘drilling efficiency’,
‘directional drilling technology’, the third page the benefit of handling
‘corrosive drilling fluids’, the fourth page discusses the benefits of the
PowerDrive Orbit technology over conventional technology in
‘challenging drilling conditions’, the fifth page touts the PowerDrive
Orbit technology that ‘Enhances drilling efficiency’ and a ‘time saving
system . . . to drill wells’, the sixth page specifically references the use
of PowerDrive Orbit technology with ‘difficult drilling conditions’ and
‘Deeper drilling.”

In each one of these instances, however, the references are to Applicant’s well
drilling equipment. The brochure does not mention, or even imply, that Applicant
also provides well drilling services. Accordingly, we find that the brochure does not
demonstrate service mark usage of Applicant’s well drilling services.
B. Promotional Material Specimen
With its September 22, 2017 Response to Office Action, Applicant submitted a
substitute Class 37 specimen, which Applicant identified as “promotional material
showing the use of Schlumberger’s services under PowerDrive Orbit, including
modeling the reservoir, recommending how to drill the well and conducting tests to
avoid collision with other wells.”
In submitting this specimen, Applicant highlighted two passages from the
specimen. The first reads, “After modeling the dynamic downhole conditions of the
Statfjord field using VIRTUAL HYDRAULICS software, Schlumberger experts

26 Id. at p. 12; 4 TTABVUE 13.
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recommended drilling the well with PowerDrive Orbit RSS and WARP fluids
technology.” While this passage does reference services, the services appear to be
consultation services provided under the Schlumberger trademark, not well drilling
services. The POWERDRIVE ORBIT mark, however, is limited to identifying the
goods.
The second highlighted passage reads, “To avoid nearby wellbores and ensure
sufficient hole cleaning, Schlumberger conducted collar rpm surveys rather than
pump cycling.” This also identifies services, but the services are not well drilling
services and the mark associated with the services is Schlumberger, not Applicant’s
applied-for POWERDRIVE ORBIT mark.
The promotional material specimen, therefore, does not demonstrate use of the
mark in association with Applicant’s identified “well drilling services for others.”
C. The Invitation Specimen
With its request for reconsideration, Applicant submitted an additional substitute
specimen for its Class 37 services in the form of an invitation. The text of the
invitation reads as follows:
Join Schlumberger for specialty margaritas and Mexican fare as we
introduce two of our latest drilling technologies. The celebratory
drinks will be served following premiere presentations on the two
technologies: PowerDrive Orbit rotary steerable system, a push-the-
bit RSS that increases drilling efficiency and enhances trajectory
control, and the DynaForce Flex shale drilling motor, which enables
shoe-to-shoe drilling in high dog leg wells for reduced drilling time.

The invitation uses the mark solely to identify Applicant’s Class 7 goods, referring
to POWERDRIVE ORBIT as a “technology” and a “rotary steerable system.” Although
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the specimen states that the goods “increase[e] drilling efficiency,” the drilling,
presumably, would be performed by the customer who purchases the goods, not by
Applicant. There is nothing in the specimen to suggest that Applicant itself provides
well drilling services, and nothing that suggests that the mark POWERDRIVE
ORBIT is used in association with well drilling services for others.
In view of the above, we find that none of the specimens of record serve to show
use of the mark POWERDRIVE ORBIT as a service mark in connection with
Applicant’s identified “well drilling services for others.”
III. Specimens for the International Class 12 Goods
Under Section 45 of the Trademark Act, a mark is used in commerce on goods
when:
(A) it is placed in any manner on the goods or their containers or the displays
associated therewith or on the tags or labels affixed thereto, or if the nature of
the goods makes such placement impracticable, then on documents associated
with the goods or their sale, and

(B) the goods are sold or transported in commerce, … .

Advertising materials are generally not acceptable as specimens to show use in
commerce for goods. See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017)
(quoting In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010));
Trademark Manual of Examining Procedure (“TMEP”) §§ 904.04(b) and (c) (Oct.
2018). Brochures and other advertising materials may be acceptable specimens as
printed point-of-sale displays only if sufficient evidence, such as a photograph of a
trade show booth, is provided showing how such specimens are used in an actual
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display featuring the goods and the print advertising material together. See In re
Ancha Elecs., Inc., 1 USPQ2d 1318, 1319-20 (TTAB 1986); TMEP § 904.03(g).
We focus our analysis in this case with regard to Applicant’s goods on whether
Applicant’s webpage specimen contains sufficient ordering means and information to
qualify as a display associated with the goods. “Factually, we need to ask whether the
purported point-of-sale display provides the potential purchaser with the information
normally associated with ordering products of that kind. This has long been an
important factor to the Board and its reviewing Courts.” In re Anpath Grp. Inc., 95
USPQ2d 1377, 1381 (TTAB 2010) (citing In re Marriott Corp., 173 USPQ 799, 800
(CCPA 1972); Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314, 1316
(E.D. Va. 1992); In re Shipley Co., 230 USPQ 691, 693-94 (TTAB 1986)).
Displays associated with the goods, including online displays, must be at the point
of sale, where the customer sees the mark on the display contemporaneously with the
ability to purchase the goods. Lands’ End, 24 USPQ2d at 1316 (“A crucial factor in
the analysis is if the use of an alleged mark is at a point of sale location.”); see also In
re Sones, 93 USPQ2d at 1122 (quoting In re Ostberg, 83 USPQ2d 1220, 1222-23
(TTAB 2007) (“‘In [Lands’ End], the determinative factor was that the mark was used
at the point of sale.”’)). “A point of sale location provides a customer with the
opportunity to look to the displayed mark as a means of identifying and
distinguishing the source of goods.” Lands’ End, 24 USPQ2d at 1316. The Board has
held:
[T]o be more than mere advertising, a point-of-sale display associated
with the goods must do more than simply promote the goods and induce
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a person to buy them; that is the purpose of advertising in general. The
specimen must be ‘calculated to consummate a sale.’

In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2009 (TTAB 2014) (quoting In re Bright
of Am., Inc., 205 USPQ 63, 71 (TTAB 1979). To be calculated to consummate a sale,
the specimen must contain sufficient practical information about the goods and a way
to order the goods, so as to put the prospective customer at the point of purchase. A
way to order the goods can include a catalog order form, a telephone number through
which the consumer is invited to call in a purchase, Lands’ End, 24 USPQ2d at 1316,
or in the case of webpage specimens, a way to “plac[e] orders for the goods via the
Internet,” Anpath Grp., 95 USPQ2d at 1381, such as selecting goods and adding them
to a virtual shopping cart for check-out.
On the other hand, a specimen fails to qualify as a point-of-sale display if it
contains more limited information, and would require a prospective customer to
“contact applicant to obtain preliminary information necessary to order the goods”
before the prospective customer could actually place an order. Id.; see also U.S.
Tsubaki, 109 USPQ2d at 2005. The U.S. Court of Appeals for the Federal Circuit
recently affirmed the rejection of a webpage specimen because it was not a point-of-
sale display. The Federal Circuit held that substantial evidence supported the Board
decision:
[The Board] noted the absence of information it considered essential to
a purchasing decision, such as a price or range of prices for the goods,
the minimum quantities one may order, accepted methods of payment,
or how the goods would be shipped. J.A. 8. The Board also considered
the “For sales information:” text and phone number contact. It assumed
that the phone number would connect a prospective customer to sales
personnel, but it found that “if virtually all important aspects of the
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transaction must be determined from information extraneous to the web
page, then the web page is not a point of sale.” J.A. 9; see J.A. 6 (“A
simple invitation to call applicant to get information--even to get quotes
for placing orders--does not provide a means of ordering the product.”
(quoting In re U.S. Tsubaki, Inc., 109 U.S.P.Q.2d 2002, 2005 (T.T.A.B.
2014))). The Board further noted the absence of any evidence (as opposed
to attorney argument) of how sales are actually made--e.g.,
documentation or verified statements from knowledgeable personnel as
to what happens and how. J.A. 9.

In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099, **3 (Fed. Cir. 2019).
However, unlike the applicant in Siny, Applicant in this appeal has provided a
verified statement from knowledgeable personnel in the form of a declaration from
its general counsel who declares, inter alia, the following:
The website screen shot specimen provided by Applicant is used to solicit
customers. The button “Request More Information” is used by
purchasers to connect with the Applicant’s sales force. The goods
are largely technically complex downhole well drilling tools and are not
susceptible to typical labeling. The tools are used in combination with
the services provided by Applicant utilizing the POWERDRIVE ORBIT
mark as shown and describes in the brochure provided as a specimen of
use. … The current sales environment is dependent on the
Internet for sales of sophisticated oil and gas goods and services.

(emphasis added). See In re Pitney Bowes, Inc., 125 USPQ2d 1417, 1420 (TTAB
2018) (“Both precedent and examination guidance make clear that in assessing
the specimens, consideration must be given not only to the information
provided by the specimen itself, but also to any explanations offered by
Applicant clarifying the nature, content, or context of use of the specimen that
are consistent with what the specimen itself shows.”).
When viewing the screenshot of Applicant’s webpage in tandem with the
declaration of Applicant’s general counsel, we find that the webpage does function as
Serial No. 86071560
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a point-of-purchase display for Applicant’s goods. We initially note that the webpage
screenshot clearly displays Applicant’s applied-for mark. The webpage also provides
information regarding Applicant’s goods, including links to technical reports and case
studies concerning the goods, as well as a video a prospective consumer may view
that demonstrates how the goods operate. In light of the highly specialized and
technical nature of Applicant’s goods, we agree with Applicant that the fact that the
webpage screenshot does not include any pricing for the goods or an “Add to the Cart”
ordering option, as would be available for consumer goods such as clothes, towels,
sunglasses, is of no consequence since Applicant’s goods are of the type that are not
susceptible to having pricing information on the webpage itself. We further note that
the webpage screenshot also includes a link to “Request More Information.” As
explained by Applicant’s general counsel, this link connects a prospective consumer
directly to Applicant’s sales force and, therefore, provides a means by which
prospective consumers may obtain additional information regarding Applicant’s
goods, as well as obtain pricing information and the ability to purchase Applicant’s
goods that may fit their specific needs. Moreover, as further explained by Applicant’s
general counsel, Applicant relies on the Internet as a vehicle by which potential
consumers may purchase Applicant’s goods.
In view of the foregoing, we find that Applicant’s webpage does function as a point-
of-purchase display and, therefore, constitutes an acceptable specimen for Applicant’s
identified International Class 12 goods.
Serial No. 86071560
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Decision: The refusal to register under Sections 1 and 45 of the Trademark Act
on the ground that Applicant has not submitted acceptable specimens of use is
affirmed as to the International Class 37 services, but is reversed with regard to the
goods identified in International Class 12. Accordingly, Applicant’s application will
proceed to issuance of a registration solely in regard to the identified International
Class 12 goods.