Tuesday, April 22, 2008

TTAB Reverses Genericness Refusal of "DIGITAL OILFIELD" for B-to-B E-Commerce Services

Genericness refusals must be supported by clear evidence, and the PTO fell short of that standard in its refusal to register, on the Supplemental Register, the mark DIGITAL OILFIELD for various business-to-business e-commerce computer goods and services. In re Digital Oilfield Inc., Serial No. 76127133 (April 17, 2008) [not precedential].

The PTO relied on a number of NEXIS articles and website printouts using the term "digital oilfield" in arguing that "digital oilfield" refers to "an entire panoply of goods and services" and that the oil industry uses the term "as an umbrella term for all of the electronic or 'digital' goods and services that constitute the business of digital oilfields throughout the world today."

Applicant Digital Oilfield, Inc. contended that none of the PTO materials evidence use of the term in connection with the identified goods and services. It also challenged several of the website references as having little relevance because the websites are from sources outside the USA. And it argued that the "digital oilfield" technologies mentioned in the PTO's materials relate to exploration of gas and oil fields, not business-to-business computer software and services that are used for oil and gas company supplier invoicing and contract management.

The Board applied its standard Marvin Ginn genericness test. It first found (as usual) that the identification of goods and services in the Application is an appropriate specification of the genus of goods and services at issue. Turning to the perception of the term by the relevant public, the Board found the relevant public to be "oil and gas company managers, and procurement and supply chain specialists."

It then dismissed Applicant's objection to the foreign website evidence because, in cases involving technical fields, "developments are likely to be of interest worldwide regardless of their country of origin." See In re Remacle, 66 USPQ2d 1222 (TTAB 2002).

Nonetheless, the Board found that the PTO had not met its "heavy burden." "It agreed with Applicant that the "overwhelming majority of the excerpted materials refer to a 'digital oilfield' as various technologies for use in the oil and gas exploration process, itself (e.g., data collection and analysis computer software)." There was "insufficient evidence that, to the relevant public, the primary significance of DIGITAL OILFIELD ... would be the common name of [Applicant's] goods and services."

The Board therefore reversed the refusal.

TTABlog comment: If oilfields become digital, will we be buying gasoline by the kilobyte rather than the gallon? In one sense, one might say that oil has already become digital, since I feel like the oil companies are giving me the finger every time I fill my gas tank.

Text Copyright John L. Welch 2008.


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