U.S. Well Services LLC

Trademark Trial and Appeal Board

Nov 9, 2017

No. 86827175 (T.T.A.B. Nov. 9, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: November 9, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re U.S. Well Services LLC
_____

Serial No. 86827175
_____

Taylor P. Evans and Kristin Lamb of Hogan Lovells US LLP,
for U.S. Well Services LLC.
Brandon N. Marsh, Trademark Examining Attorney, Law Office 112,
Angela Bishop Wilson, Managing Attorney.
_____

Before Shaw, Goodman and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
U.S. Well Services LLC (“Applicant”) seeks registration on the Principal Register
of the word and design mark for “Well stimulation services,
namely, hydraulic fracturing of subsurface geologic formations to enhance well
production” in International Class 37.1

1 Application Serial No. 86827175 was filed on November 20, 2015, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as November 11, 2015.
Serial No. 86827175
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, as used in connection with its identified services, so resembles the
previously registered mark WISPER (in standard characters)2 as to be likely to cause
confusion or mistake, or to deceive. The cited registration, owned by BP p.l.c.,
identifies the following goods and services:
Apparatus for recording, transmission or reproduction of sound or images;
calculating machines, data processors and computers; computer hardware
and firmware for use in subsurface measuring, imaging, analyzing and
mapping for the oil and gas industry; computer software for use in
subsurface measuring, imaging, analyzing and mapping for the oil and gas
industry; subsurface imaging equipment, namely, imaging apparatus and
instruments for use in subsurface imaging for the oil and gas industry;
vibrating systems comprised of electrotechnical vibration meters and
vibration sensors in International Class 9;

Business consulting and facilities management services relating to
surveying and sub-surface measuring, imaging and mapping; business
information relating to the oil and gas industry in International Class 35;
and

Scientific and technological services, namely, seismic acquisition services
in the nature of designing models and plans for acquiring seismic data and
geophysical exploration in connection with drilling operations in the field
of oil and gas exploration; industrial analysis of geophysical data acquired
through seismic acquisition and research services in the field of seismic
acquisition, for use in oil and gas exploration; subsurface measuring in the
nature of oil and gas field surveys, seismic imaging and mapping in the
fields of oil and natural gas exploration, testing, and drilling; oil field
exploitation for the extraction of oil; oil prospecting; oil well testing;
surveying in International Class 42.

When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for

2 Registration No.4607999, issued on the Principal Register on September 23, 2014.
Serial No. 86827175
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reconsideration, the appeal was resumed. For the reasons that follow, we affirm the
refusal to register.
I. Evidentiary Issue

Before proceeding to the merits of the refusal, we address an evidentiary matter.
In its brief on appeal, Applicant cites the Merriam-Webster dictionary and a treatise,
The Pronunciation of English in the Atlantic States, in an effort to differentiate the
pronunciation and denotation of “WHISPER,” the literal element in its mark, from
WISPER, Registrant’s mark.3
The Examining Attorney objects that this cited evidence is untimely, as it was not
submitted during his examination of the subject application.4 It is true that the record
for an application should be complete prior to the filing of an appeal. Trademark Rule
2.142(d), 37 CFR § 2.142(d). Evidence that was not made of record during
examination is untimely, and generally will not be considered. Id. In re Fiat Grp.
Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1596 (TTAB 2014) (untimely
evidence given no consideration); In re Compania de Licores Internacionales S.A., 102
USPQ2d 1841, 1843 (TTAB 2012); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (“TBMP”) §§ 1203.02(e), 1207.01 (June 2017); TRADEMARK MANUAL OF
EXAMINING PROCEDURE (“TMEP”) § 710.01 (Oct. 2017).

3 Applicant’s brief pp. 8-9, 10, 7 TTABVUE 11-12, 13, citing Merriam-Webster Online
Dictionary, http://merriam-webster.com (15 June 2017) and H. Kurath, and R. I. McDavid
Jr., The Pronunciation of English in the Atlantic States, U. of Michigan Press (1961).
4 Examining Attorney’s brief, 9 TTABVUE 6-7.
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But the Board may take judicial notice of definitions from dictionaries, including
online dictionaries that exist in printed format or have regular fixed editions. E.g., In
re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014) aff’d 823 F.3d 594,
118 USPQ2d 1632 (Fed. Cir. 2016); TBMP § 1208.04. We will therefore take judicial
notice of Applicant’s proffered dictionary definitions.
On the other hand, the treatise The Pronunciation of English in the Atlantic States
is not a standard reference work, like a dictionary or encyclopedia, containing facts
not subject to reasonable dispute from a source whose accuracy cannot reasonably be
questioned. See In Re Johnson Prods. Co., Inc., 220 USPQ 537, 538 (TTAB 1983)
(citing Fed. R. Evid. 201(b)); In re Future Ads LLC, 103 USPQ2d 1571, 1572 n.2
(TTAB 1983). Its proffered contents, though scholarly, should, in fairness, have been
introduced in the course of examination, to better afford the Examining Attorney the
opportunity to offer controverting―perhaps more current― evidence. See In re Francis
Indus., Inc., 199 USPQ 568, 569 n.3 (TTAB 1978) (“As has been observed in the past,
it is better practice for both the applicant and the Examiner to make any evidentiary
material of record during the ex parte prosecution of the application, prior to appeal,
to afford both the applicant and the Examiner a fair opportunity to meet the
evidence.”); TBMP § 1208.04. The Examining Attorney’s objection to its belated
introduction is thus sustained, and it will be given no further consideration. We
hasten to add that consideration of this treatise would not have altered the outcome
of this decision, for the reasons that follow.

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II. Likelihood of Confusion

We base our determination of likelihood of confusion under Section 2(d) on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Ind., Inc., 575 U.S.
__, 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling
Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
Applying the DuPont factors, we bear in mind the fundamental principles
underlying the Lanham Act in general and Section 2(d) in particular, which are “to
secure to the owner of the mark the goodwill of his business and to protect the ability
of consumers to distinguish among competing producers.” Park ‘N Fly, Inc. v. Dollar
Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985) quoted in Matal v. Tam, __
U.S. __, 137 S.Ct. 1744, 122 USPQ2d 1757, 1762 (2017); see also DuPont, 177 USPQ
at 566.
We have considered each relevant DuPont factor for which there is evidence or
argument, and have treated the other factors as neutral. See M2 Software, Inc. v. M2
Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark
Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we
have considered each factor for which we have evidence, we focus our analysis on
those factors we find to be relevant.”). Varying weights may be assigned to each
DuPont factor depending on the evidence presented. Citigroup Inc. v. Capital City
Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell
Serial No. 86827175
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Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (factors “may play
more or less weighty roles in any particular determination”).
Two key considerations are the similarities between the marks and the
similarities between the services. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123
USPQ2d 1744, 1747 (Fed. Cir. 2017); Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
A. The Services, Channels of Trade, and Classes of Customers

The second and third DuPont factors address “[t]he similarity or dissimilarity and
nature of the … services as described in an application or registration…” and the
“similarity or dissimilarity of established, likely-to-continue trade channels.” DuPont,
177 USPQ at 567. Applicant and the Examining Attorney focus their attention on the
similarity that Applicant’s “well stimulation services, namely, hydraulic fracturing of
subsurface geologic formations to enhance well production,” may bear to Registrant’s
services in Class 42:
Scientific and technological services, namely, seismic acquisition services
in the nature of designing models and plans for acquiring seismic data and
geophysical exploration in connection with drilling operations in the field
of oil and gas exploration; industrial analysis of geophysical data acquired
through seismic acquisition and research services in the field of seismic
acquisition, for use in oil and gas exploration; subsurface measuring in the
nature of oil and gas field surveys, seismic imaging and mapping in the
fields of oil and natural gas exploration, testing, and drilling; oil field
exploitation for the extraction of oil; oil prospecting; oil well testing;
surveying.

We shall do the same, recognizing that these services represent the strongest case
for likelihood of confusion. See In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245
(TTAB 2010).
Serial No. 86827175
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Applicant argues that its services and Registrant’s services take place at distinctly
different stages in the life cycle of oil and gas wells. According to Applicant’s vice
president of technology, “The life cycle of an oil or gas well is long, and involves
multiple distinct phases which are exploration, well development, production, and
site abandonment.”5 This life cycle may be subdivided further into six stages
performed over the course of many months or years: “1) identification; 2) exploration;
3) appraisal; 4) development; 5) production; and 6) return and reinvestment.”6
According to Applicant, “[t]he owner of the Cited Mark appears to use the “WISPER”
mark only for the specific exploration and appraisal/testing services – stages 2 and 3
– identified in the Cited Registration.”7 For example, Registrant’s “seismic acquisition
services” use acoustic seismic waves to explore and locate deep underground
reservoirs of oil and gas.8 “Once oil and gas reserves have been identified through
such seismic activity, an exploration company [such as Registrant, whose identified
services include “oil prospecting; oil well testing”] may drill test wells, and collect
samples of underground materials for analysis to verify theories about the prevalence
and exact location of oil and gas resources,”9 Applicant observes.

5 Declaration of Jared Oehring (“Oehring Decl.”), Vice President of Technology for Applicant,
¶ 4, April 3, 2017 Response to Office Action p. 14. (All references to the TSDR are to the pdf
version.)
6 “Description of the oil and gas life cycle,” published by Cairn Energy at
http://www.cairnenergy.com/index.asp?pageid=554 (last visited April 3, 2017), April 3, 2017
Response to Office Action p. 22.
7 Applicant’s reply brief pp. 9, 10 TTABVUE 10.
8 Oehring Decl. ¶ 4, April 3, 2017 Response to Office Action p. 14.
9 Id.
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According to Applicant, the next phase in the life cycle of an oil well is well
development, during which drilling companies drill the wells that provide access to
the deposits.10 At the very end of the well development phase, when the drilling is
complete or well progressed, Applicant provides hydraulic fracturing services, by
which it perforates the casing of the well and pumps fluid into the surrounding rock
formation at high pressure, which allows oil and gas to escape, maximizing the
extraction of oil and gas from the formation.11
Applicant concludes that its hydraulic fracturing services are quite distinct from
Registrant’s services, not only chronologically―typically up to a year or more after
the exploration phase―but substantively. The technology is different, the equipment
is different, the skill sets of the personnel performing the services are different, and
in most cases, the companies providing the services are different.12 Given these
differences, Applicant urges, the relevant purchasers of the services, well operators,
would be unlikely to infer that they come from a single source, even if the service
providers had the same or similar marks.13 Citing In re Carter-Wallace, Inc., 222
USPQ 729 (TTAB 1984) (shaving gel and sunburn gel serve such different purposes
that confusion unlikely for identical, merely descriptive SUPER GEL marks).

10 Oehring Decl. ¶ 5, April 3, 2017, Response to Office Action p. 14-15.
11 Oehring Decl. ¶¶ 7-10, April 3, 2017 Response to Office Action pp. 16-17.
12 Applicant’s brief p. 16, 7 TTABVUE 19, citing Oehring Decl. ¶ 9; ex. C, Society of Petroleum
Engineers fact sheet showing “Reservoir Evaluation & Engineering” periodicals separate
from “Drilling & Completion” periodicals; and ex D, American Oil & Gas Reporter calendars
showing separate workshops and conferences on seismicity and hydraulic fracturing
technology (April 3, 2017 Response to Office Action pp. 16-17; 28-38).
13 Applicant’s brief pp. 13-14, 7 TTABVUE 16-17.
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The Examining Attorney responds that seismic exploration and hydraulic
fracturing services are closely related because they are all services used to help
exploit oil wells. In support of this argument, he introduced evidence from seven
third-party websites showing that a single company often provides exploration and
well testing services, as well as hydraulic fracturing services. For example:
• Baker Hughes
“Our borehole seismic services offer application design, data processing, and
interpretation for detailed reservoir description that improves production and
field development.”

“Baker Hughes hydraulic fracturing services maximize well productivity
with effective, application-specific solutions instead of a one-size-fits-all
approach.”14

• Halliburton
“Halliburton’s history of fracturing achievement is due to continuous
devotion to technology development, extensive training and a global best
practices process.”

“Halliburton offers state-of-the-art well testing systems that collect
pressure/volume/temperature (PVT) samples that help provide input for
completion design, production facility design, and establishment of refining
properties.”15

• Chevron
“Chevron’s proprietary seismic imaging technology helped the company
achieve an exploration discovery rate of 66 percent in 2014.”

“Chevron combines two proven technologies – horizontal drilling and
hydraulic fracturing – to safely produce natural gas from shale.”16

14 BakerHughes.com 3/4/2016, March 4, 2016 Office Action pp. 8-9. (Emphasis added in all
quotes.)
15 Halliburton.com 3/4/2016, March 4, 2016 Office Action pp.10-11.
16 Chevron.com 10/3/2016, Oct. 3, 2016 Office Action pp. 7-8.
Serial No. 86827175
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• ConocoPhillips
“Seismic Surveying. The collection of seismic data involves sending small
acoustic pulses into the ground and measuring the sound waves that are
reflected from the rock layers deep within the ground.”

“Other wells require further techniques to complete the well, such as
hydraulic fracturing, a proven technique that has helped develop oil and
natural gas resources safely for more than 60 years.”17

This website evidence tends to show that single companies offer services of the
type offered by Applicant and Registrant under the same mark. In re Davey Prods.
Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91
USPQ2d 1266, 1268-69 (TTAB 2009).
Applicant responds that “[w]hile Applicant generally agrees with this statement,
at least with respect to conglomerate companies, Applicant respectfully submits that
this reasoning in the context of the Cited Mark and Applicant’s Mark is logically
flawed and represents a mischaracterization of both marks at issue. In particular,
neither the Cited Mark nor Applicant’s Mark is a mark used to identify an entity.
Rather, the marks are used to represent services provided under the umbrella of the
owner entity of the mark….”18
However, Applicant’s vice president of technology admits that Registrant, BP, is
one of those conglomerates:
There are some companies, however, that are large, and that provide a
conglomeration of oil and gas products and/or services, some of which may

17 ConocoPhillips.com 10/3/2016, Oct. 3, 2016 Office Action pp. 9-10.
18 Applicant’s reply brief pp. 8-9, 10 TTABVUE 9-10.
Serial No. 86827175
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be related to more than one phase. For example, some companies, such as
Exxon and BP, may provide both exploration and production services.19

Moreover, even though Registrant provides its services under its WISPER mark,
rather than under its “BP” mark, we note that the services identified in the WISPER
registration include “oil field exploitation for the extraction of oil” among other
services. In the Random House Dictionary, “exploitation” has been defined as “use or
utilization, esp. for profit: the exploitation of newly discovered oil fields.”20 In the
Dictionary of Oil Industry Terminology, “exploitation” is defined as “the development
of a reservoir to extract its oil.”21 And in the online Merriam-Webster Dictionary,
“extraction” is defined, unsurprisingly, as “the act or process of extracting
something,” with the following example:
• The Commerce Department said in its report Friday that the storms
likely suppressed business activity such as oil and gas extraction in
Texas….22

Thus, by definition, Registrant’s identification of services encompasses all means
of oil field exploitation for the extraction of oil. See Levi Strauss & Co. v. Abercrombie
& Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013)
(applying principle that “registration encompasses all goods or services of the type

19 Oehring Decl. ¶ 14, April 3, 2017 Response to Office Action p. 18 (emphasis added).
20 The Random House Dictionary of the English Language (2d ed. Unabridged 1987). The
Board may notice dictionary definitions sua sponte. See Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imps. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).
21 Dictionary of Oil Industry Terminology (2004).
22 Merriam-Webster.com/dictionary/extraction 10/31/2017, quoting Sarah
Chaney, Wall Street Journal, “U.S. GDP Growth Accelerated to 3% in Third Quarter,
Despite Hurricanes,” 27 Oct. 2017 (emphasis added).
Serial No. 86827175
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described”); In re i.am.symbolic, LLC, 123 USPQ2d at 1749 (comparison of goods or
services must be based on their identification in application and registration). And
one such means is hydraulic fracturing.
Registrant’s and Applicant’s services are thus identical in part, and otherwise
related. It is only necessary that there be a viable relationship between their services
to support a finding of likelihood of confusion. In re Concordia Int’l Forwarding Corp.,
222 USPQ 355, 356 (TTAB 1983). “It is sufficient that the respective services are
related in some manner, or that the conditions and activities surrounding the
marketing of the services are such that they would or could be encountered by the
same persons under circumstances that could give rise to the mistaken belief that
they originate from the same producer.” In re Integrated Embedded, 120 USPQ2d
1504, 1514 (TTAB 2016) (citing Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)).
Here, it is apparent that the exploration of oil and gas wells and their development
by hydraulic fracturing are part and parcel of the same process. Unlike the case on
which Applicant relies, Carter-Wallace, supra, where the Board contrasted the
purposes of shaving gel and sunburn gel, the services here promote the same purpose:
fuel production from oil and gas wells. To this end, the parties’ unrestricted
identifications, corroborated by the evidence of record, indicate that their services
flow through the same channels of trade to the same class of customers: well
operators. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1162 (Fed. Cir. 2014).
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For these reasons, we find that the second and third DuPont factors favor a finding
of likelihood of confusion.
B. The Marks

Under the first DuPont factor, we consider the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; Stone Lion Capital, 110 USPQ2d at 1160; Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). 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.” In
re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016) (quoting 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)).
Applicant argues that its mark, , differs from WISPER not
only by adding an “h”, but also by adding its design element: a flame and electric plug
extending from the top and bottom of the letter “i”.23 In response, the Examining
Attorney notes, correctly, that in a composite mark containing both words and
designs, the wording is more likely to indicate the origin of the services with which
it is used because it is the portion of the mark that consumers would use to refer to
or request the services. See Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016)

23 Applicant’s brief p. 2, 7 TTABVUE 5.
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(citing In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir.
2012)). But if that is true, Applicant counters, then its mark “may be visually
considered to be dominated by the letters ‘WHSPER,’ as the ‘I’ constitutes a design
portion of the mark and is therefore given less weight”… “the two marks in fact differ
in two letters – the Cited Mark is missing the “H” from Applicant’s Mark, and
Applicant’s Mark is missing the “I” from the Cited Mark.”24 Applicant concludes that
this visual distinction would differentiate the marks in the perception of purchasers,
citing Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB
1988)(“[I]t is often the first part of a mark which is most likely to be impressed upon
the mind of a purchaser and remembered….”).25
In Presto Products, however, the Board found the applicant’s stylized KIDWIPES
mark confusingly similar to the registrant’s KID STUFF mark, as the first part of
each mark consisted of the same word, and the differing suffixes were insufficient to
distinguish them. Id. Here, the minor differences in lettering also fail to distinguish
the marks. To begin with, even though Applicant has attached design elements to the
top and bottom of the letter “i”, it still remains a recognizable letter, part of the word
“WHISPER.” Indeed, even if the design elements replaced the letter “i”, the word
“WHISPER” would still be recognizable. Cf. TMEP § 1213.05(g)(i) (mark with
distinctive design replacing a letter in descriptive or generic wording must still be

24 Applicant’s brief p. 7, 7 TTABVUE 10.
25 Applicant’s brief p. 6, 7 TTABVUE 9.
Serial No. 86827175
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disclaimed, if word is still recognizable). Hence, Applicant’s and Registrant’s marks
have the letter “i,” among others, in common.
Furthermore, Applicant’s inclusion of the letter “h” preceding the letter “i” makes
far too minor a difference to distinguish the marks. In analogous cases, marks with
different letters at the first part of each mark have nonetheless been found
confusingly similar. See Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156
USPQ 523, 526 (CCPA 1968) (BEEP and VEEP visually and phonetically similar);
Am. Cyanamid Co. v. United States Rubber Co., 356 F.2d 1008, 148 USPQ 729, 730
(CCPA 1966) (CYGON and PHYGON similar in spelling and sound); Apple Comput.
v. TVnet.net Inc., 90 USPQ2d 1393, 1396 (TTAB 2007) (letter “v” is insufficient to
distinguish the dominant portions of the parties’ ITUNES and VTUNES marks).
Despite the marks’ highly similar spelling, Applicant maintains that they may be
pronounced differently. “The pronunciation of the word ‘WHISPER,’ … may vary
based on region, culture, and accent, even within the United States alone,” it argues.
“The digraph wh’ is now commonly pronounced /w/, in the same way that a plain
initial ‘w’ is pronounced,” it observes, but the Merriam-Webster Dictionary lists two
possible pronunciations of “whisper,”: “hwispǝr,” and “wispǝr.”26 Indeed, Applicant
suggests, “a consumer might be just as likely to pronounce the fanciful word
‘WISPER’ as they would pronounce the beginning of the word ‘wine,’ particularly
given that no “H” is present in the term.”27 Citing Stoncor Grp., Inc. v. Specialty

26 Applicant’s brief p. 8-9, 7 TTABVUE 11-12, citing Merriam-Webster Online Dictionary,
http://merriam-webster.com (15 June 2017).
27 Applicant’s brief p. 9, 7 TTABVUE 12.
Serial No. 86827175
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Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1651 (Fed. Cir. 2014) (“There is no
correct pronunciation of a trademark that is not a recognized word.”)
But since both marks are two-syllable words beginning with “W” and ending in
“ISPER,” and since they differ only in one letter, “h”, the two have a high degree of
aural similarity. See Viterra, 101 USPQ2d at 1912 (XCEED and X-SEED similar). To
the extent that there is any subtle difference in their pronunciation (/w/ versus /hw/),
“any minor differences in the sound of these marks may go undetected by consumers
and, therefore, would not be sufficient to distinguish the marks.” Id. As Krim-Ko,
American Cyanamid, and Apple Computer, cited above, make clear, such a slight
difference in the sound of otherwise similar marks does not avoid a likelihood of
confusion. See also In re Energy Telecomms. & Elec. Ass’n, 222 USPQ 350, 352 (TTAB
1983). We recognize that there is no one correct pronunciation of a mark that is not a
recognized word, Viterra, 101 USPQ2d at 1912. But Applicant’s speculation that
“WISPER” would be pronounced with a long “i” vowel sound (like “wine”) is
unsupported by any record evidence, and is contrary to its argument, later in its brief,
that “WISPER” is a misspelling or an intentional “verbifying” of the English word
“wisp,” meaning “a thin strip or fragment” or “a thready streak of smoke.”28 No matter
which interpretation one accepts―that WISPER refers to a wisp or a whisper―the
result is the same. Even if a few purchasers pronounce the marks slightly differently,
numerous purchasers will pronounce them the same. See Kabushiki Kaisha Hattori
Seiko, 29 USPQ2d at 1318. We thus find that the marks are similar in sight and

28 Applicant’s brief pp. 10-11, 7 TTABVUE 13-14, quoting Merriam-Webster Online
Dictionary, http://merriam-webster.com (15 June 2017).
Serial No. 86827175
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sound.
Applicant argues that the marks are different in connotation and commercial
impression: “The word ‘WHISPER’ is a common, if not ubiquitous, English word, and
is well understood to mean ‘to speak softly’ or ‘to produce a quiet sound,’” connoting
Applicant’s quieted approach to hydraulic well stimulation services. 29 “By contrast,”
Applicant contends, “‘WISPER’ is a coined, fanciful word having no meaning in the
English language, and therefore provides no facial connotation to consumers.”30 See
Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, 826 F.3d 1376, 119 USPQ2d
1286 (Fed. Cir. 2016) (MAYA is a recognized word, whereas MAYARI has no
recognized meaning to U.S. consumers). If anything, Applicant suggests,
“incorporation of the familiar word ‘wisp’ into the Cited Mark ‘WISPER’ may more
naturally connote to a consumer a wisp of a substance, for example oil escaping from
the ocean floor in a wisp as a result of such ‘seismic imaging and mapping,’ and ‘oil
field exploitation for the extraction of oil.’”31 This difference in connotation, Applicant
contends, is underscored by the design element in the applied-for mark: “The use of
an electric plug in the stylized “I” exemplifies that the hydraulic fracturing may be
electrically powered, while the flame in the stylized “I” represents the ability to fuel
the hydraulic fracturing microgrid with natural gas. The combination of these
elements conveys the overall advantages of Applicant’s Services.”32

29 Applicant’s brief p. 10, 7 TTABVUE 13.
30 Id.
31 Applicant’s brief p. 11, 7 TTABVUE 14.
32 Applicant’s brief p. 12, 7 TTABVUE 15.
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The problem with Applicant’s argument is that, regardless of what it intends the
connotation of its mark to be, there is no evidence that purchasers would actually
perceive it as having a different connotation from Registrant’s mark. Unlike Oakville
Hills Cellar, which held that MAYA was different from MAYARI in appearance,
sound, meaning, and overall commercial impression, id. at 1290, the wording of the
marks here differ only by one letter, “h”, which has little if any effect in differentiating
the marks’ appearance or sound. See In re Great Lakes Canning, Inc., 227 USPQ 485,
485 (TTAB 1985) (CAYNA confusingly similar to CANA). In view of the extended life
cycle of oil and gas wells, which can last for years,33 and taking into account the
fallibility of human memory over such prolonged periods of time, we believe that the
marks create substantially similar commercial impressions. Id. Indeed, given the
related and partially overlapping nature of Applicant’s and Registrant’s services,
“[e]ven those purchasers who are fully aware of the specific differences between the
marks may well believe, because of the similarities between them, that the two marks
are simply variants of one another, used by a single producer to identify and
distinguish companion lines of [services].” Id. Applicant’s design elements, far from
distinguishing its services, are nothing more than a nondescript flame and electric
plug―symbols that could be shared by anyone in the oil and gas industry, such as
Registrant. Consequently, Applicant’s intended connotation would go undetected by

33 Oehring Decl. ¶ 4, April 3, 2017 Response to Office Action p. 14.

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purchasers and would ultimately fail to distinguish the marks, either in connotation
or commercial impression.
Overall, then, considering the marks in their entireties, we conclude that the
marks are more similar than dissimilar, and that this DuPont factor therefore weighs
in favor of finding a likelihood of confusion.
C. Sophistication and Care of the Purchasers
The fourth DuPont factor is “the conditions under which and buyers to whom sales
are made….” DuPont 177 USPQ at 567. Applicant asseverates that “[t]he purchasers
of services in the oil and gas industry are not the general public. These services are
expensive, and the purchasers are sophisticated business people. Great care is
therefore afforded to the purchasing of these services. Consumers are conditioned to
make fine-grained distinctions between different and non-competitive types of
services in the oil and gas industry.”34 Applicant’s vice president of technology further
avers that “[w]hen bidding for a contract to complete a well, [Applicant] prepares a
detailed plan, including proposed prices and other critical information for the desired
contract,” which the well operator or other party making the hiring decision carefully
reviews and negotiates individually, in a very deliberate process that can take weeks
or months to complete.35 This care and sophistication minimizes the likelihood of
confusion, Applicant concludes.

34 Applicant’s brief p. 18, 7 TTABVUE 21; see Oehring Decl. ¶¶ 2, 4, 5, 7.
35 Oehring Decl. ¶¶ 12-13; ex. E, April 3, 2017 Response to Office Action pp. 18, 42-48.

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But “being knowledgeable and/or sophisticated in a particular field does not
necessarily endow one with knowledge and sophistication in connection with the use
of trademarks.” In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988). Nor does it
render one immune from source confusion. See Stone Lion Capital, 110 USPQ2d at
1163-64; Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB
2011); In re Cynosure, Inc., 90 USPQ2d 1644, 1647 (TTAB 2009).
In this case, the legal identity or similarity of the services and similarity of the
marks outweigh any sophisticated purchasing decision. In re Integrated Embedded,
120 USPQ2d at 1516. Even if buyers are sophisticated, they could still infer from
Applicant’s and Registrant’s marks that the respective services emanate from the
same source, or from affiliated sources, as demonstrated by the Examining Attorney’s
third-party evidence. “It may be appropriate at this point to note, as has been
observed by one commentator, that the statutory concept of ‘likelihood of confusion’
denotes any type of confusion, including not only source confusion but also ‘confusion
of affiliation; confusion of connection; or confusion of sponsorship.’” In re Nat’l Novice
Hockey League, Inc., 222 USPQ 638, 641 n.7 (TTAB 1984) (quoting 4 MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 24.3.B). The advertising and goodwill one
entity cultivates in its mark could inure unfairly to the other; and any lapses in
service by one could reflect unfairly on the other, damaging its goodwill. In re Shell
Oil, 26 USPQ2d at 1690 (“The registrant/senior user is safeguarded by the trademark
law, as is the consuming public, from likelihood of confusion caused by the entry of a
junior user of a confusingly similar mark. …The trademark law not only protects the
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consumer from likelihood of confusion as to commercial sources and relationships,
but also protects the registrant and senior user from adverse commercial impact due
to use of a similar mark by a newcomer.”).
Accordingly, the fourth DuPont factor is neutral.
III. Conclusion

On consideration of all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant DuPont factors, we find that the
marks at issue are similar, that Applicant’s identified services are in-part identical
and related to Registrant’s services, and that the sophistication and care of the
purchasers would not alleviate the likelihood of confusion. For these reasons, we
conclude that Applicant’s mark so resembles the cited mark as to be likely to cause
confusion or mistake, or to deceive under Section 2(d) of the Trademark Act.
Decision: The refusal to register Applicant’s mark is
affirmed.