Friday, November 05, 2010

Precedential No. 41: Parties File Cross-Motions for Summary Judgment, then Opt for TTAB's ACR Procedure to Resolve Cancellation

The parties to this cancellation proceeding opted for Alternative Case Resolution (ACR) to resolve the one issue in dispute: priority of use. They had filed cross-motions for summary judgment and then entered into a stipulation (here) that permitted the Board to resolve the proceeding based on the parties’ summary judgment submissions, resolving any genuine issue of material fact without trial. Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., 96 USPQ2d 1834 (TTAB 2010) [precedential].

Petitioner Weatherford sought cancellation of a registration for the mark FRAC-SURE for "oil and gas well treatment services; oil and gas well fracturing services," claiming likelihood of confusion with its allegedly earlier-used mark FRACSURE for oil well fracturing and oil and gas treatment services.

Likelihood of confusion was not in dispute, only priority. The earliest date upon which Respondent C&J could rely was the filing date of its underlying application (February 28, 2007). It offered no evidence of use of its mark prior to that date.

Weatherford needed to prove that its owns "a mark or trade name previously used in the United States ... and not abandoned." The prior use need not be "technical trademark use," but here Petitioner relied on "actual or technical use of its mark in commerce." The Board looked at the "total picture that the evidence presents."

C&J strenuously argued that FRACSURE is laudatory and not inherently distinctive, but the Board found no evidence thereof. The Board observed that it "appears to be a coined term, albeit one that is evocative of the term fracture." Moreover, the Board noted, C&J's registration issued without any claim to acquired distinctiveness.

Reviewing Petitioner Weatherford's evidence, the Board concluded that it cumulatively "established Petitioner's claim of priority of use." Although that evidence was, in many respects, limited, it was sufficient to prove use in commerce prior to Respondent C&J's date.

And so the Board sustained the petition for cancellation.

Text Copyright John L. Welch 2010.


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