Weatherford Technology Holdings, LLC

Trademark Trial and Appeal Board

Feb 25, 2021

88371629 (T.T.A.B. Feb. 25, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 25, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Weatherford Technology Holdings, LLC
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Serial No. 88371629
_____

David W. Carstens of Carstens & Cahoon, LLP,
for Weatherford Technology Holdings, LLC.
Lyal L. Fox III, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.
_____

Before Wellington, Lynch, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Weatherford Technology Holdings, LLC (“Applicant”) seeks registration on the
Principal Register of the standard character mark VICTUS for goods that it proposes
to identify as
Oilfield system for managing annulus pressure during land
based and sea based drilling operations, namely, managed
pressure drilling manifolds designed to manage bottom
hole pressure; Coriolis flow meters; manifolds; chokes;
electric and hydraulic valves; fluid extraction systems
designed to continuously extract mud samples for gas
composition analysis; junk catchers; control systems
designed to manage wellbore pressure changes and provide
early kick and loss detection; automated managed drilling
Serial No. 88371629
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pressure riser system designed for floating drilling vessels;
below tension-ring rotating control devices; valves; reeler;
hydraulic sheave; volume trap system; robotic arm;
connection hub designed for integration of subsea control
umbilical and flow lines for easy connect; follow-spool
sensors; annular isolation devices; subsea surveillance
system; and integrated rig equipment designed to detect,
control, and circulate out influxes, in International Class
7;
and services that it proposes to identify as
Oilfield drilling services for managing annulus pressure
during land based and sea based drilling operations,
namely, developing managed drilling pressure plans and
drilling strategies; optimizing drilling performance by
providing early detection and precision control of
unexpected influxes, maintaining constant bottomhole
pressure, minimize formation damage and maintain
wellbore integrity, and minimizing nonproductive time;
liner running; cementing operations; assisting with
contingency plans and procedures; supervising rigsite;
training third parties; integrating rig equipment for
machine-to-machine communications, real-time analysis of
downhole conditions, and facilitate rapid automated
responses to annulus pressure changes during drilling
operations; managing riser gases, in International Class
37.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
for two different reasons. First, the Examining Attorney argues under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), that Applicant’s mark so resembles the
registered standard character mark VECTUS for goods identified as
Machinery used for recovering and obtaining oil and gas;
hydraulic motors, pumps and valve actuators; pressure
controls and regulators being parts of machines; subsea
control systems, namely power and communication

1 Application Serial No. 88371629 was filed on April 4, 2019 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce.
Serial No. 88371629
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systems which provide hydraulic, electrical or
electrohydraulic control and monitoring for production
equipment comprised primarily of hydraulic controls for
machines, valves for pumps, valves being parts of machines
and also comprised of subsea control modules comprised of
remote controls for subsea production equipment,
apparatus for recording transmission, processing and
production of data in the nature of subsea control module
communication distribution units and automatic control
valves, in International Class 7; and
Communication and control systems comprised of
computer hardware and software for machines;
communication systems for transferring data for subsea oil
and gas networks comprised of computer hardware,
software, modems and communication cables; monitoring
and control systems comprised of computer hardware and
software for offshore and subsea operations including
hydrocarbon extraction; subsea control systems comprised
of electrical power units, electric control panels; electronic
control systems for underwater machines; computer
software systems and software for offshore and subsea
operations, in International Class 9;
and services identified as
Monitoring of performance and condition of offshore and
subsea installations, components and environment for
quality control purposes and to ensure proper functioning,
in International Class 42;2
as to be likely, when used in connection with the goods and services identified in
Applicant’s application, to cause confusion, to cause mistake, or to deceive.
Second, the Examining Attorney argues that there are several deficiencies in
Applicant’s identification of goods and services, in its current proposed form and in
previous iterations. He argues that it is indefinite and overly broad, in violation of
Trademark Rule 2.32(a)(6), 37 C.F.R. § 2.32(a)(6), that Applicant’s amendments to its

2 The cited Registration No. 5024428 issued on August 23, 2016.
Serial No. 88371629
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original identification exceeded its scope, in violation of Trademark Rule 2.71(a), 37
C.F.R. § 2.71(a), and that Applicant has failed to clarify the number of classes in
which it sought registration and failed to satisfy the requirements for a multi-class
application.
When the Examining Attorney made the refusals final, Applicant appealed and
requested reconsideration, which was denied. Applicant and the Examining Attorney
have filed briefs.3 We affirm both refusals to register.
I. Record on Appeal4
The record on appeal includes the following:
 USPTO electronic records regarding the cited registration, made of record
by the Examining Attorney,5 and Applicant;6
 Pages from the MERRIAM-WEBSTER DICTIONARY showing no entries for the
words “victus” and “vectus,” made of record by the Examining Attorney,7
definitions of “victus” and “vectus” from LATDICT, made of record by
Applicant,8 a page from ACRONYM FINDER regarding the meanings of “vic,”

3 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing
system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the
number preceding TTABVUE corresponds to the docket entry number, and any numbers
following TTABVUE refer to the page number(s) of the docket entry where the cited materials
appear.
4 Citations in this opinion to the application record, including the request for reconsideration
and its denial, are to pages in the Trademark Status & Document Retrieval (“TSDR”)
database of the United States Patent and Trademark Office (“USPTO”).
5 June 17, 2019 Office Action at TSDR 2-4.
6 December 17, 2019 Response to Office Action at TSDR 24-25.
7 June 17, 2019 Office Action at TSDR 5-6.
8 December 17, 2019 Response to Office Action at TSDR 26-27.
Serial No. 88371629
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made of record by Applicant,9 and definitions of the word “victor,” “vector,”
and “monitor” from dictionary.com, and the word “manage” from the
MERRIAM-WEBSTER DICTIONARY, made of record by Applicant;10
 Pages from ALL ABOUT LEARNING PRESS and pronuncian.com discussing the
pronunciation of the short “i” and the short “e” in American English, made
of record by the Examining Attorney,11 and Applicant;12
 Internet webpages regarding the goods and services identified in the
application and cited registration, made of record by the Examining
Attorney;13
 The declaration of James Kurka (“Kurka Decl.”), Applicant’s Senior
Counsel, Intellectual Property, regarding Applicant’s goods and services,
customers, and purchase process, made of record by Applicant;14 and
 Pages from Applicant’s website and the cited registrant’s website, and a
press release issued by Applicant, made of record by Applicant.15

9 July 2, 2020 Request for Reconsideration at TSDR 15.
10 Id. at TSDR 16, 18, 20, 21.
11 January 6, 2020 Final Office Action at TSDR 2.
12 July 2, 2020 Request for Reconsideration at TSDR 17, 19.
13 June 17, 2019 Office Action at TSDR 7-15; January 6, 2020 Final Office Action at TSDR 3-
48.
14 December 17, 2019 Response to Office Action at TSDR 10-11; July 2, 2020 Request for
Reconsideration at TSDR 13-14. It was unnecessary for Applicant to submit the Kurka
Declaration twice. We will cite the Kurka Declaration by paragraph number (i.e., “Kurka
Decl. ¶ 6”).
15 December 17, 2019 Response to Office Action at TSDR 12-23; July 2, 2020 Request for
Reconsideration at TSDR 22-53.
Serial No. 88371629
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II. Prosecution History
We summarize the application’s prosecution history because it provides necessary
background to our analysis of the issues on appeal.
When Applicant filed its application, it identified its Class 7 goods as an “Oilfield
system for managing annulus pressure during drilling operations” and its Class 37
services as “Oilfield drilling services, namely managing annulus pressure during
drilling operations” (the “Original Identification”).16 In the First Office Action, the
Examining Attorney (1) cited the registration of VECTUS as a bar to registration
under Section 2(d), (2) found the Class 7 Original Identification to be indefinite and
overly broad, and required Applicant to clarify its goods by describing the nature,
purpose, or use of the “system” and listing its primary parts or components,17 and (3)
found the Class 37 Original Identification of services to be indefinite and overly broad,
and required Applicant to clarify its services,18 and to clarify the classes in which it
sought registration.19 The Examining Attorney noted that in amending Applicant’s
identification, Applicant could not broaden the identification of its goods or services
beyond those in the Original Identification.20
Applicant responded by arguing against the Section 2(d) refusal and proposing to
amend the Original Identification of goods to “Oilfield system for managing annulus

16 April 4, 2019 Application at TSDR 1.
17 June 17, 2019 Office Action at TSDR 1.
18 Id.
19 Id.
20 Id.
Serial No. 88371629
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pressure during drilling operations comprised of integrated rig equipment designed
to detect, control, and circulate out influxes” and the Original Identification of
services to “Oilfield drilling services, namely, rig equipment integration, real-time
analysis, and facilitate [sic] rapid automated responses to manage annulus pressure
during drilling operations” (the “First Proposed Amended Identification”).21
Applicant argued that the proposed amendments obviated the identification issues
and the need to specify the classes in which Applicant sought registration.22
The Examining Attorney was not persuaded and issued a Final Office Action on
the Section 2(d) refusal and the identification issues. He maintained that the First
Proposed Amended Identification was unacceptable because it too was overly broad
and indefinite, and identified goods and services that were potentially in additional
classes.23 He suggested several possible amendments to the First Proposed Amended
Identification, including possible reclassification of the goods and services, and again
reminded Applicant that it could not broaden the identification of its goods or services
beyond that in the Original Identification.24
Applicant requested reconsideration, and proposed to amend its identification as
set forth at the outset of this opinion (the “Second Proposed Amended
Identification”).25 The Examining Attorney denied the request, finding that the

21 December 17, 2019 Response to Office Action at TSDR 1.
22 Id. at TSDR 8.
23 January 6, 2020 Final Office Action at TSDR 1.
24 Id.
25 July 2, 2020 Request for Reconsideration at TSDR 1.
Serial No. 88371629
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Second Proposed Amended Identification also exceeded the scope of the Original
Identification, and remained indefinite and overly broad.26 The Examining Attorney
also maintained the Section 2(d) refusal.27
III. Analysis of Refusals
A. Acceptability of Identifications of Goods and Services28
“Every applicant must provide ‘[a] list of the particular goods or services on or in
connection with which the applicant uses or intends to use the mark.’” In re tapio
GmbH, 2020 USPQ2d11387, *6 (TTAB 2020) (quoting Trademark Rule 2.32(a)(6), 37
C.F.R. § 2.32(a)(6)). As the Board recently explained in tapio,
An identification that fails to enumerate the goods and
services with specificity is indefinite, either because the
nature of the goods or services is not clear, or because the
wording is so broad that it may include goods or services in
more than one class. Clarity in the identification of goods
and services is crucial to the USPTO's public notice
function, so it “has discretion to determine whether and
how a trademark registration should include a more
particularized statement of the goods for which the mark
is [to] be used . . . .” In re Omega SA, 494 F.3d 1362, 83
USPQ2d 1541, 1544 (Fed. Cir. 2007). For goods or services
that do not have common names, the applicant should use
clear and succinct language that is understandable to the
average person, and such language must specifically

26 July 14, 2020 Denial of Request for Reconsideration at TSDR 1.
27 Id.
28 It is regrettable that the record does not reflect any attempt at verbal communication
between Applicant and the Examining Attorney to discuss the identification issues in an
effort to negotiate an acceptable identification. The examination of the application afforded
ample opportunity for dialog between Applicant and the Examination Attorney, including
regarding the technical terms used in Applicant’s business, which might have resulted in
compromise language to obviate these issues and better informed the likelihood of confusion
analysis.
Serial No. 88371629
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identify the goods and services in order to provide notice to
the public of the scope of rights claimed by an applicant.
Id.
When an applicant amends an identification that does not meet these standards,
“[u]nder Trademark Rule 2.71(a), 37 C.F.R. § 2.71(a), ‘[t]he applicant may amend the
application to clarify or limit, but not to broaden, the identification of goods and/or
services . . . .’” Id. at *7 (quoting In re Jimmy Moore LLC, 119 USPQ2d 1764, 1770
(TTAB 2016) (internal quotation omitted)).
Applicant focuses its entire argument on the identification issues pertaining to
the Second Proposed Amended Identification, which it characterizes as the “present
identification of Applicant’s goods and services,” 6 TTABVUE 5,29 and which we set
forth again below for ease of reference in following our analysis:
Oilfield system for managing annulus pressure during land
based and sea based drilling operations, namely, managed
pressure drilling manifolds designed to manage bottom
hole pressure; Coriolis flow meters; manifolds; chokes;
electric and hydraulic valves; fluid extraction systems
designed to continuously extract mud samples for gas
composition analysis; junk catchers; control systems
designed to manage wellbore pressure changes and provide
early kick and loss detection; automated managed drilling
pressure riser system designed for floating drilling vessels;
below tension-ring rotating control devices; valves; reeler;
hydraulic sheave; volume trap system; robotic arm;
connection hub designed for integration of subsea control
umbilical and flow lines for easy connect; follow-spool
sensors; annular isolation devices; subsea surveillance

29 The Examining Attorney similarly focuses on the Second Proposed Amended Identification,
8 TTABVUE 5-15, although in the course of his argument, he explains why he rejected the
Original Identification and First Proposed Amended Identification as well. Id. at 8-10. We
may consider the acceptability of those identifications, tapio, 2020 USPQ2d 11387 at *6-8,
and we agree with the Examining Attorney that they too are unacceptable as overbroad and
indefinite for the reasons set forth by the Examining Attorney in his brief. 8 TTABVUE 8-10.
Serial No. 88371629
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system; and integrated rig equipment designed to detect,
control, and circulate out influxes,
and
Oilfield drilling services for managing annulus pressure
during land based and sea based drilling operations,
namely, developing managed drilling pressure plans and
drilling strategies; optimizing drilling performance by
providing early detection and precision control of
unexpected influxes, maintaining constant bottomhole
pressure, minimize formation damage and maintain
wellbore integrity, and minimizing nonproductive time;
liner running; cementing operations; assisting with
contingency plans and procedures; supervising rigsite;
training third parties; integrating rig equipment for
machine-to-machine communications, real-time analysis of
downhole conditions, and facilitate rapid automated
responses to annulus pressure changes during drilling
operations; managing riser gases.
Id. at 5-10.
The Second Proposed Amended Identification clearly exceeds the scope of the
Original Identification. We agree with the Examining Attorney that the Second
Proposed Amended Identification “contain[s] numerous new goods and services not
include[d] in the original identification.” 8 TTABVUE 10. In the Second Proposed
Amended Identification, the additional goods, such as “Coriolis flow meters;
manifolds; chokes; electric and hydraulic valves,” and the additional services, such as
“assisting with contingency plans and procedures; supervising rigsite; training third
parties,” are separated from the rest of the identification by semicolons, and “[u]nder
standard examination practice, a semicolon is used to separate distinct categories of
goods or services.” In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1166
(TTAB 2013). See also TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”)
Serial No. 88371629
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Section 1402.01(a) (Oct. 2018) (“Semicolons should generally be used to separate
distinct categories of goods or services within a single class.”).
Applicant originally sought registration of its mark for Class 7 goods identified as
an “oilfield system for managing annulus pressure during drilling operations,” an
identification which under standard examining practice requires a listing of the
“primary parts or components of the system” to be sufficiently specific. TMEP Section
1401.05(d). But in the Second Proposed Amended Identification of goods, the multiple
additional goods are not listed as “primary parts or components of the system,” but
rather are separated by semicolons from the goods identified as an “Oilfield system
for managing annulus pressure during land based and sea based drilling operations,
namely, managed pressure drilling manifolds designed to manage bottom hole
pressure.” The Second Proposed Amended Identification of goods thus exceeds the
scope of both of its predecessors, in violation of Trademark Rule 2.71(a).30
With respect to the Class 37 services in the Second Proposed Amended
Identification, numerous discrete services similarly have been separated by
semicolons from the language “Oilfield drilling services for managing annulus
pressure during land based and sea based drilling operations, namely, developing
managed drilling pressure plans and drilling strategies.” These discrete services
exceed the scope of the Original Identification of services, “Oilfield drilling services,
namely managing annulus pressure during drilling operations,” and the Second

30 Applicant is, of course, free to seek registration of its mark for any discrete goods that it
sells, or for a system in which the “primary parts or components of the system” are properly
identified, but it cannot do both in the same application.
Serial No. 88371629
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Proposed Amended Identification of services thus also exceeds the scope of both of its
predecessors, in violation of Trademark Rule 2.71(a).31
Because in both classes, the Second Proposed Amended Identification exceeds the
scope of the goods and services identified in Applicant’s Original Identification, we
affirm the refusal to register on that ground.
B. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of the likelihood of confusion under Section 2(d) is based
on an analysis of all probative facts in the record that are relevant to the likelihood
of confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (“DuPont”). We consider each DuPont factor for
which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
Two key DuPont factors in every Section 2(d) case are the first two factors
regarding the similarity or dissimilarity of the marks and the goods or services,
because 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.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ

31 As with its goods, Applicant is free to seek registration of its mark for any discrete services
that it renders.
Serial No. 88371629
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24, 29 (CCPA 1976). Applicant addresses these key factors, 6 TTABVUE 13-19, as
well as the sophistication of the purchasers of the involved goods and services, id. at
10-13, which implicates the fourth DuPont factor, the “conditions under which and
buyers to whom sales are made, i.e. ‘impulse vs. careful, sophisticated purchasing,”
DuPont, 177 USPQ at 567, and the third DuPont factor, the “similarity or
dissimilarity of established, likely-to-continue trade channels.” Id. 6 TTABVUE 20.
1. Similarity or Dissimilarity of the Marks
Under the first DuPont factor, we consider “the similarity or dissimilarity of the
[VICTUS and VECTUS] marks in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps. v. Veuve Cliquot Ponsardin
Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005).
“Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB
2018) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d mem., 777 F.
App’x 516 (Fed. Cir. 2019).
The proper test regarding similarity “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.” Cai v. Diamond Hong, Inc., 901 F.3d
1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal
quotation marks and citation omitted)). “The proper perspective on which the
analysis must focus is on the recollection of the average customer, who retains a
Serial No. 88371629
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general rather than specific impression of marks.” In re i.am.symbolic, llc, 127
USPQ2d 1627, 1630 (TTAB 2018) (citations omitted). As discussed below, the average
customer here is not an ordinary consumer, but rather a professional buyer.
Applicant’s core argument is that its “VICTUS mark has a unique commercial
impression that is sufficiently different from the Cited Mark’s commercial impression
so that the factor of the dissimilarity between the two marks . . . weighs against a
finding of a likelihood of confusion between the marks.” 6 TTABVUE 16-17. Applicant
argues that VICTUS and VECTUS have different meanings in Latin,32 and that
Latin and words derived from Latin are prevalent to such
a degree in the English language that even though a
professional purchaser may not be able to speak Latin, a
professional purchaser is going to recognize that both
marks are connected to the Latin language and presume
that each has a distinct meaning. As a result, each mark is
going to convey a unique commercial impression.
Id. at 14.
Applicant’s fallback argument is that even if the marks would not be translated
from Latin, “Applicant’s mark is a fanciful word, implying that Applicant’s mark
serves as a strong source indicator of distinctive source indication.” Id. Applicant
argues that “[a]s a result of the different spelling in Applicant’s [VICTUS] mark, the
first syllable in the mark begins with the unique ‘vic’ term which is an acronym for
‘victory,’” id., which “imbues Applicant’s Mark with a commercial impression
generally related to triumphing over adversity,” id., while the cited VECTUS mark

32 Applicant argues that “victus” “is Latin for ‘nourishment’, ‘provisions’, or ‘that which
sustains life,’” while “vectus” “is Latin for ‘bear, carry, convey’ or pass, ride, sail.’” 6
TTABVUE 14.
Serial No. 88371629
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“has a first syllable that begins with the ‘vec’ term which does not conjure anything
related to triumphing or victory.” Id. at 14-15.
With respect to the sound of the respective marks, Applicant argues that VICTUS
“is extremely similar to the English word, victor, which has the vic portion of the word
pronounced with a short I that is distinct,” id. at 15, while VECTUS “is extremely
similar to the English word, vector, and the vec portion of the Cited Mark would be
pronounced with a short E that is different from a short I sound.” Id. Applicant argues
that it is unlikely that purchasers would mispronounce the first vowels in the
involved marks in a manner that would make them sound similar or identical, id. at
15-16, and rejects the Examining Attorney’s evidence regarding mispronunciation.
Id. at 16.
The Examining Attorney responds that “the marks consist of exactly six letters,
with five of the letters being identical” and that the “only difference in appearance
and sound is that the second letter in the applicant’s mark is the letter ‘I’ whereas
the second letter in the registrant’s mark is the letter ‘E.’” 8 TTABVUE 17. He notes
that neither mark appears in an English language dictionary, and that the marks
“give the same commercial impression of arbitrary wording when used in relation to
the goods and services provided.” Id. He argues that the marks could be pronounced
the same based on evidence of the pronunciation of the short “i” and short “e” sounds,
id., but that even “slight differences in the sound of similar marks will not avoid a
likelihood of confusion.” Id. at 23.
Serial No. 88371629
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The “marks ‘must be considered . . . in light of the fallibility of memory’ and ‘not
on the basis of side-by-side comparison.’” In re St. Helena Hosp., 774 F.3d 747, 113
USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD
Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1, 2 (CCPA 1977)). When the
VICTUS and VECTUS marks are considered in this manner, we agree with the
Examining Attorney that they are similar. Each mark consists of two syllables and
six letters, five of which are identical and appear in the same order. Each mark begins
with the V_C- prefix and ends with the -TUS suffix. The marks differ only to the
extent of having different vowels in their respective first syllables, and taking into
account “the general rather than specific impression of marks,” i.am.symbolic, 127
USPQ2d at 1630, retained by all consumers, including professional buyers, the marks
are quite similar in appearance.
With respect to sound, we need not resolve the dispute between Applicant and the
Examining Attorney regarding possible mispronunciation of the vowels “i” and “e”
because even if the marks are pronounced in the manner argued by Applicant, they
sound quite similar because of their similar V_C- prefixes and identical -TUS suffixes.
Finally, with respect to meaning, the means of comparison on which Applicant
relies most heavily, we find Applicant’s arguments unpersuasive. Applicant’s
argument regarding the different meanings of “victus” and “vectus” in Latin invokes
the doctrine of foreign equivalents, pursuant to which the Board assumes that
consumers would translate marks consisting of words from foreign languages into
English in considering their meaning. See generally Ricardo Media Inc. v. Inventive
Serial No. 88371629
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Software, LLC, 2019 USPQ2d 311355, *6-7 (TTAB 2019). “Under the doctrine of
foreign equivalents, foreign words from common, modern languages are translated
into English to determine similarity of connotation with English words in a likelihood
of confusion analysis.” In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008)
(citing Palm Bay Imps., 73 USPQ2d at 1696), but, as Applicant tacitly acknowledges,
6 TTABVUE 14, “Latin is generally considered a dead language.” TMEP Section
1207.01(b)(vi)(B). The TMEP notes that “if evidence shows that a Latin term is still
in use by the relevant purchasing public (i.e., if the term appears in current
dictionaries or news articles), then this Latin term would not be considered dead,”
id., but there is no evidence of any such current use of either mark. The record is
insufficient to show that the professional buyers of Applicant’s goods and services
would recognize either mark as a Latin word, translate either mark into English, and
distinguish them on the basis of their different meanings in English.33
Applicant’s argument that the marks differ in meaning because the “VIC-” prefix
in its mark connotes or abbreviates “victory,” while the “VEC-” prefix in the cited
mark has no such connotation, is similarly unpersuasive. The VICTUS and VECTUS
marks have no known meanings in English,34 and Applicant’s own evidence shows
that “victory” is only one of more than 50 possible meanings of the “VIC-” prefix in

33 There is similarly no support in the record for Applicant’s argument that “even though a
professional purchaser may not be able to speak Latin, a professional purchaser is going to
recognize that both marks are connected to the Latin language and presume that each has a
distinct meaning.” 6 TTABVUE 14.
34 June 17, 2019 Office Action at TSDR 5-6 (MERRIAM-WEBSTER DICTIONARY).
Serial No. 88371629
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Applicant’s mark.35 But even if the “VIC-” prefix may evoke “victory” for some
consumers, while the “VEC-” prefix does not, “[e]ach syllable of each mark generates
an ‘impact,’ but the only impact to be considered is that of the whole.” San Fernando
Elec., 196 USPQ at 3 (MONOCERAM and MICROCERAM found to be “not
sufficiently different in their total impacts to eliminate likelihood of confusion as to
source” even though their prefixes had different meanings) (citing Massey Junior
Coll. v. Fashion Inst. of Tech., 492 F.2d 1399, 181 USPQ 272 (CCPA 1974)). To the
extent that VICTUS and VECTUS in their entireties would be perceived as having
any particular meanings, any vague differences in those meanings are not sufficient
to make confusion unlikely given the close similarity of the marks in appearance and
sound.
The VICTUS and VECTUS marks are quite similar in appearance and sound, and
those similarities outweigh any dissimilarities in connotation and commercial
impression. The first DuPont factor supports a finding of a likelihood of confusion.
2. Similarity or Dissimilarity of the Goods and Services, and
Channels of Trade
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration,” In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir 2018) (quoting DuPont,

35 Applicant made of record a single page from acronymfinder.com setting forth the results of
a search entitled “What does VIC stand for?” July 2, 2020 Request for Reconsideration at
TSDR 15. The search “returned 57 meanings,” id., but Applicant included only three,
“Victoria (State of Australia),” “Victor,” and “Victory.” On the face of the results of Applicant’s
search, there are 54 other meanings that could give the “VIC-” prefix in Applicant’s mark a
different connotation from the one argued by Applicant.
Serial No. 88371629
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177 USPQ at 567), while the third DuPont factor considers “the similarity or
dissimilarity of established, likely-to-continue trade channels.’” Id. at 1052 (quoting
DuPont, 177 USPQ at 567). See also Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed. Cir. 2014).
The goods and services need not be identical, but “need only be related in some
manner and/or if the circumstances surrounding their marketing are such that they
could give rise to the mistaken belief that they emanate from the same source.” Coach
Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715,
1724 (TTAB 2007)).
“Evidence of relatedness may include news articles or evidence from computer
databases showing that the relevant goods and services are used together or used by
the same purchasers; advertisements showing that the relevant goods and services
are advertised together or sold by the same manufacturer or dealer; or copies of use-
based registrations of the same mark for both the applicant’s [goods and] services and
the goods [and services] listed in the cited registration.” In re Country Oven, Inc.,
2019 USPQ2d 443903, *4-5 (TTAB 2019).
Applicant correctly acknowledges that “the nature and scope of a party’s goods or
services should be analyzed in view of the goods or services recited in the application
or registration.” 6 TTABVUE 17. Applicant and the Examining Attorney disagree,
however, as to which identification of Applicant’s goods and services should be
analyzed under the second and third Du Pont factors. Applicant discusses the Second
Proposed Amended Identification, id. at 17-20, while the Examining Attorney argues
Serial No. 88371629
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that because the Second Proposed Amended Identification was unacceptable, “the
original identification of goods and services in the application remains active for
purposes of determining likelihood of confusion.” 8 TTABVUE 18 (citing Trademark
Rule 2.71(a) and TMEP Section 1402.07(d)). We agree with the Examining Attorney.
Applicant’s Original Identification described its Class 7 goods as an “Oilfield
system for managing annulus pressure during drilling operations” and its Class 37
services as “Oilfield drilling services, namely managing annulus pressure during
drilling operations.” The Board “may take judicial notice of information from
dictionaries, encyclopedias, and other standard referenced works,” In re Information
Builders Inc., 2020 USPQ2d 10444, *3 n.6 (TTAB 2020), and we take judicial notice
that in the context of “extractive engineering, field development, and drilling,” an
“annulus” is “the space between two concentric objects (=objects of the same shape in
which a larger one surrounds a smaller one), for example, between the wellbore and
casing,”36 and that in the context of drilling, a “wellbore” is “a hole drilled in the
ground in order to look for or extract natural resources such as oil and gas” and a
“casing” is a “steel pipe or tubing, esp. as used in oil and gas wells.”37 We depict below
an illustration of a drilling annulus:

36 COLLINS ENGLISH DICTIONARY (collinsdictionary.com, last accessed on February 24, 2021).
37 COLLINS ENGLISH DICTIONARY (collinsdictionary.com, last accessed on February 24, 2021).
Serial No. 88371629
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38
Applicant’s Original Identification describes a system and services that manage the
pressure that builds up in the annulus during drilling operations.
The goods identified in the cited registration are:
Machinery used for recovering and obtaining oil and gas;
hydraulic motors, pumps and valve actuators; pressure
controls and regulators being parts of machines; subsea
control systems, namely power and communication
systems which provide hydraulic, electrical or
electrohydraulic control and monitoring for production
equipment comprised primarily of hydraulic controls for
machines, valves for pumps, valves being parts of machines
and also comprised of subsea control modules comprised of
remote controls for subsea production equipment,
apparatus for recording transmission, processing and
production of data in the nature of subsea control module
communication distribution units and automatic control
valves, in International Class 7; and
Communication and control systems comprised of
computer hardware and software for machines;
communication systems for transferring data for subsea oil

38 wikipedia.org/wiki/Annulus (well) (last accessed on February 24, 2021).
Serial No. 88371629
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and gas networks comprised of computer hardware,
software, modems and communication cables; monitoring
and control systems comprised of computer hardware and
software for offshore and subsea operations including
hydrocarbon extraction; subsea control systems comprised
of electrical power units, electric control panels; electronic
control systems for underwater machines; computer
software systems and software for offshore and subsea
operations, in International Class 9;
and the services identified in the cited registration are:
Monitoring of performance and condition of offshore and
subsea installations, components and environment for
quality control purposes and to ensure proper functioning,
in International Class 42.
The Examining Attorney claims that the goods identified in the Original
Identification are related to the goods identified in the cited registration for two
reasons.39 First, he argues that Applicant “has failed to provide a definite
identification properly listing the primary components of their [sic] ‘oilfield system’
and therefore the applicant’s ‘oilfield system’ could contain the same primary
components as the numerous systems identified by the registrant.” 8 TTABVUE 19.
Second, he argues that the Internet evidence in the record shows that “applicant’s
goods and the registrant’s goods are machinery and systems for use in oil field
drilling.” Id. at 19-21.
With respect to the services described in the Original Identification, the
Examining Attorney argues that “the application uses broad wording to describe
‘oilfield drilling services, namely managing annulus pressure during drilling

39 As noted above, Applicant addresses the similarity of the goods and services in the Second
Proposed Amended Identification to those in the cited registration, and does not address the
Examining Attorney’s arguments regarding the Original Identification.
Serial No. 88371629
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operations,’ which presumably encompasses all services of the type described,
including registrant’s more narrow ‘monitoring of performance and condition of
offshore and subsea installations, components and environments for quality control
purposes and to ensure proper functioning.’” Id. at 21. He points to Internet evidence
showing “that one way of managing annulus pressure is by monitoring (and/or
analyzing) the pressure on a recurring basis,” id., which he claims shows that
“applicant’s managing annulus pressure wording could encompass the registrant’s
monitoring services,” such that those services legally identical. Id. at 21-22.40
The “Oilfield system for managing annulus pressure during drilling operations”
identified in Applicant’s Class 7 Original Identification is broad enough to encompass
some of the Class 7 goods identified in the cited registration, such as “subsea control
systems, namely power and communication systems which provide hydraulic,
electrical or electrohydraulic control and monitoring for production equipment
comprised primarily of hydraulic controls for machines, valves for pumps, valves
being parts of machines and also comprised of subsea control modules comprised of
remote controls for subsea production equipment, apparatus for recording
transmission, processing and production of data in the nature of subsea control
module communication distribution units and automatic control valves.” In that
regard, we note that portions of Applicant’s Second Proposed Amended Identification,

40 Registration may be refused as to each class in Applicant’s application if we find that the
goods and services in the Original Identification are related to any of the goods and services
identified in the cited registration. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981).
Serial No. 88371629
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which attempted unsuccessfully to identify the primary goods in Applicant’s “Oilfield
system for managing annulus pressure during drilling operations,” reflected
Applicant’s belief that its system encompassed “sea based drilling operations” and
“control systems designed to manage wellbore pressure changes and provide early
kick and loss detection,” a “subsea surveillance system,” “electric and hydraulic
valves,” and “valves.” Such a system reasonably encompasses the registrant’s “subsea
control systems, namely power and communication systems which provide hydraulic,
electrical or electrohydraulic control and monitoring for production equipment
comprised primarily of hydraulic controls for machines, valves for pumps, valves
being parts of machines . . . .” These Class 7 goods are thus legally identical. See, e.g.,
Information Builders, 2020 USPQ2d 10444 at *3; New Era Cap Co. v. Pro Era, LLC,
2020 USPQ2d 10596, *13 (TTAB 2020).
The Examining Attorney also provided evidence that Applicant’s Class 7 goods are
related to the registrant’s Class 7 goods. A company called TCO offers both an
annulus pressure relief management system that manages annulus pressure by
“bleed[ing] off the pressure that is necessary to hold and maintain a safe, pre-
determined B-annulus pressure,”41 and a disappearing tubing hanger plug that falls
within the registrant’s goods broadly identified as “Machinery used for recovering
and obtaining oil and gas” and “pressure controls and regulators being parts of
machines.”42 Halliburton offers a “B/Annulus Pressure/Temperature Monitoring

41 June 17, 2019 Office Action at TSDR 9.
42 Id. at TSDR 10-11.
Serial No. 88371629
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System” that helps “manag[e] the pressure integrity of the wellhead” by “pick[ing] up
any pressure/temperature fluctuations, enabling the operator to detect pressure
buildup while producing,”43 as well as an electro hydraulic system for large bore
subsea well intervention applications that also falls within the registrant’s goods
broadly identified as “Machinery used for recovering and obtaining oil and gas.”44
Techni offers a “B-Annulus Monitoring System,”45 as well as a subsea high
pressure pump that falls within the goods identified as “pumps” in the cited
registration.46 Petroleum Technology Company offers an “A-Pro Annulus Pressure
Management System,”47 as well as valves,48 annulus pressure monitoring and
management technologies,49 and software,50 which is encompassed within the
registrant’s Class 9 goods. Emerson offers a wireless system for monitoring annulus
pressure,51 as well as other equipment and systems, including a valve actuator,52 and
valves.53

43 Id. at TSDR 12.
44 Id. at TSDR 13.
45 Id. at TSDR 14.
46 Id. at TSDR 15.
47 January 6, 2020 Final Office Action at TSDR 3.
48 Id. at TSDR 4-5.
49 Id. at TSDR 7.
50 Id. at TSDR 8.
51 Id. at TSDR 9.
52 Id. at TSDR 12.
53 Id. at TSDR 15.
Serial No. 88371629
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This evidence of the sale of goods similar in nature to Applicant’s and registrant’s
under the same mark supports a finding that the goods are related. Detroit Athletic
Co., 128 USPQ2d at 1050 (crediting relatedness evidence that third parties use the
same mark for the goods and services at issue because “[t]his evidence suggests that
consumers are accustomed to seeing a single mark associated with a source that sells
both”); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1004 (Fed. Cir. 2002) (stating that evidence that “a single company sells the goods
and services of both parties, if presented, is relevant to a relatedness analysis”); In re
Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009) (two websites showing
that water pumps and electric motors, and compressors “can be manufactured and
sold by a single source” supported a finding of relatedness). Because certain of the
involved goods are legally identical or are otherwise related, we find that the second
DuPont factor supports a finding of a likelihood of confusion as to Applicant’s Original
Identification of its Class 7 goods.
Because certain of the Class 7 goods are legally identical, and neither Applicant’s
Class 7 Original Identification nor the Class 7 identification in the cited registration
contains any pertinent limitations, “we must presume that the channels of trade and
classes of purchasers are the same.” In re Am. Cruise Lines, Inc., 128 USPQ2d 1157,
1158 (TTAB 2018) (citing In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012)). The third DuPont factor also supports a finding of a likelihood of
confusion as to Applicant’s Original Identification of its Class 7 goods.
Serial No. 88371629
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We also agree with the Examining Attorney that the Class 37 services identified
in the Original Identification are legally identical to the Class 42 services identified
in the cited registration. For the reasons discussed below, the services identified in
the application as “Oilfield drilling services, namely managing annulus pressure
during drilling operations” encompass the services identified in the cited registration
as “Monitoring of performance and condition of offshore and subsea installations,
components and environment for quality control purposes and to ensure proper
functioning.”
The record contains a webpage entitled “Well Integrity: A Holistic Approach to
Annulus Pressure Management for Subsea Wells” on the website of gateinc.com,
which addresses the question “What is Annulus Pressure Management and Why is it
Important?”54 The webpage uses the wellbore schematic drawing displayed below:
55

54 June 17, 2019 Office Action at TSDR 7. The text of the webpage appears to continue on one
or more subsequent pages, but the Examining Attorney only made the first page of record.
The better practice is to include the entire text.
55 Id.
Serial No. 88371629
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The webpage explains that “Annulus Pressure Management refers to an
engineered approach ensuring that casing annulus pressures do not challenge the
well’s integrity during the life of the well” and that the “aim is to maintain the casing
pressure within the well’s mechanical design limits at all times by controlling the ‘A’
annulus pressure.”56 The webpage notes that “[i]n subsea wells, the ‘A’ annulus is the
only annulus that can be monitored and controlled,” that it “is monitored via a
pressure transducer located on the subsea tree which is linked to the control system,”
and that “subsea wells are typically designed with an Annulus Monitoring Line via a
subsea distribution systems and an umbilical system that are tied back to the host
facility (typically referred to as an Annulus Monitoring, AMON, or Auxiliary
System.”57
The registrant’s Class 42 identification of services, “Monitoring of performance
and condition of offshore and subsea installations, components and environment for
quality control purposes and to ensure proper functioning,” is itself broad enough to
include monitoring annulus pressure in subsea wells, which helps “ensure proper
functioning” of these “subsea installations.” We find that monitoring annulus
pressure is part and parcel of, and thus encompassed by, Applicant’s Original

56 Id. The “A” annulus is shown by the letter “A” in the schematic drawing shown above.
57 Id. The Halliburton and Emerson systems discussed above similarly describe themselves
as monitoring annulus pressure in the course of helping to manage it during drilling
operations. The Halliburton system “picks up any pressure/temperature fluctuations,
enabling the operator to detect pressure buildup while producing,” June 17, 2019 Office
Action at TSDR 42, while the Emerson systems “continuously monitor annulus B
temperature and pressure for the subsea well’s lifetime” and improve “production and
offshore safety [by] providing early high-pressures warnings, protecting casing integrity and
preventing pressure build-up.” January 6, 2020 Final Office Action at TSDR 9.
Serial No. 88371629
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Identification of its services as “managing annulus pressure during drilling
operations.” Applicant’s original Class 37 services are thus legally identical to the
registrant’s Class 42 services, and the second DuPont factor supports a finding of a
likelihood of confusion as to Applicant’s Original Identification of its Class 37
services.
As discussed above, because Applicant’s Original Identification of its Class 37
services is legally identical to the registrant’s Class 42 services, and neither
identification contains any pertinent limitations, we must presume that the channels
of trade and classes of purchasers are the same, and the third DuPont factor also
supports a finding of a likelihood of confusion as to Applicant’s Original Identification
of its Class 37 services.
3. Purchase Conditions and Degree of Consumer
Sophistication
The fourth DuPont factor involves “[t]he conditions under which and buyers to
whom sales are made, i.e., ‘impulse vs. careful, sophisticated purchasing.” DuPont,
177 USPQ at 567. Applicant argues that
[p]roducts identified by Applicant’s Mark and the Cited
Mark are going to be exclusively sold to ‘professional’
consumers because of the extraordinary cost associated
with oil production and the extremely high degree of
technical knowledge and effort required to complete a
transaction for a system offered under Applicant’s Mark
and the Cited Mark.
6 TTABVUE 10-11. Applicant relies on the Kurka Declaration, which discusses the
elaborate process of negotiating, customizing, and deploying Applicant’s systems, and
their high prices. Id. at 11-12 (citing Kurka Decl. ¶¶ 3-6). Applicant concludes that
Serial No. 88371629
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because the good [sic] and services for Applicant’s mark can
cost upward of $20 million, can require, on average, fifty
(50) weeks of lead time, and require extensive
customization and highly technical decision making by the
consumer, the offered goods and services are of the nature
that a purchaser would exercise extreme care when making
a purchase and would be able to distinguish even highly
similar goods/services offered by [sic] similar marks.
Id. at 13.
The Examining Attorney responds that “the fact that purchasers are sophisticated
or knowledgeable in a particular field does not necessarily mean that they are
sophisticated or knowledgeable in the field of trademarks or immune from source
confusion.” 8 TTABVUE 22.
Mr. Kurka testified that “[p]otential consumers for Applicant’s system (goods/
services) offered under the applied for mark are going to be a sophisticated buyer”
because negotiations to complete a transaction can take a year or more to complete,
Kurka Decl. ¶ 3; that “the system offered under the applied-for mark has to be
specifically customized for each drilling rig and conform with purchaser preferences,”
Kurka Decl. ¶ 4, which may take between one and six months, Kurka Decl. ¶ 4; that
the total cost for Applicant’s system is “around $15 Million” and “can range from$10
Million to $20 Million” depending on various factors, Kurka Decl. ¶ 5; and that if a
customer wishes Applicant to operate the system following installation, the daily
operating costs are around $35,000. Kurka Decl. ¶ 6. His testimony focuses, however,
specifically on the purchasers, purchasing process, and cost of the goods and services
actually offered by Applicant, rather than on the purchasers, purchasing process, and
cost of “Oilfield system[s] for managing annulus pressure during drilling operations”
Serial No. 88371629
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and “Oilfield drilling services, namely managing annulus pressure during drilling
operations” generally. Our analysis under the fourth DuPont factor “must be based
on the identification of goods [and services] in the [cited] Registration and subject
[a]pplication, as that determines the scope of the benefit of registration.” Sock It to
Me, Inc. v. Fan, 2020 USPQ2d 10611, *7 (TTAB 2020). Accordingly, because Mr.
Kurka’s testimony focuses solely on Applicant’s actual goods and services instead of
the general goods and services described in the Original Identification in the
application, we cannot find that his testimony regarding purchase conditions and
purchaser sophistication establishes the degree of purchaser care for all of the goods
and services encompassed within the Original Identification.
At the same time, however, we find that by their nature, the goods and services
identified in Applicant’s Original Identifications and in the cited registration would
involve some elevated degree of purchaser care on the part of professional buyers. See
Elec. Design & Sales Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388,
1392 (Fed. Cir. 1992) (“Just from the record description of goods and services here
one would expect that nearly all of opposer’s and applicant’s purchasers would be
highly sophisticated.”). Accordingly, we find that the fourth DuPont factors weighs
against a finding of a likelihood of confusion.
4. Balancing the DuPont Factors
The involved identified goods and services and channels of trade are legally
identical in part, which “reduces the degree of similarity between the marks
necessary to find a likelihood of confusion,” New Era, 2020 USPQ2d 10596 at *14
(citations omitted), and the VICTUS and VECTUS marks are sufficiently similar
Serial No. 88371629
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under that standard for confusion to be likely. The professional purchasers of the
identified goods and services will exercise a heightened degree of care, but “purchaser
sophistication does not always result in a finding that confusion is unlikely, especially
where legally identical in part goods and services are involved and . . . the marks are
similar.” Information Builders, 2020 USPQ2d at *4 (citing Weiss Assocs., Inc. v. HRL
Assocs., Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841-42 (Fed. Cir. 1990) (similarities
of goods and marks outweighed sophisticated purchasers, careful purchasing
decisions, and expensive goods); Wincharger Corp. v. Rinco, Inc., 297 F.2d 261, 132
USPQ 289, 292 (CCPA 1962)). On balance, we find that the Examining Attorney
carried his burden of showing that Applicant’s VICTUS mark is likely to cause
confusion, mistake, or deception when used in connection with the goods and services
in the Original Identification in the application.
Decision: The refusals to register are affirmed on both grounds.