TTAB decides priority of use on summary judgment

United States of America

The Trademark Trial and Appeal Board (TTAB) has issued a precedential decision in Weatherford/Lamb Inc v C&J Energy Services Inc (Cancellation 92050101, October 28 2010), a cancellation action brought by Weatherford/Lamb Inc against C&J Energy's registration for the mark FRAC-SURE covering "oil and gas well treatment services; oil and gas well fracturing services". Weatherford claimed to have used the mark FRACSURE in connection with oil and gas well services for several years prior to the constructive first use date of C&J Energy’s FRAC-SURE registration.

The parties cross-moved for summary judgment and stipulated, in an application of accelerated case resolution, that the TTAB could resolve the matter based on the parties’ respective summary judgment submissions. C&J Energy made a motion to strike some of Weatherford’s evidence of prior use based on the fact that the evidence had little or no probative value, which the TTAB declined to do.

The decisive issue in this cancellation action was whether Weatherford was able to show prior use sufficient for purposes of establishing use in commerce prior to C&J Energy’s constructive first use date of February 28 2007. The TTAB held that it did. In so deciding, the TTAB considered Weatherford’s declarations and evidence attesting to its use of the mark, which included several declarations attesting to the use with documented examples of the use attached. Among the evidence that Weatherford submitted was a declaration of its global director of technologies attesting to the fact that FRACSURE had been used by Weatherford since October 2003. This declaration also attached a technical handbook for the FRACSURE services, and an invoice for the printing of 3,000 copies of the handbook in late 2005/early 2006.

An additional declaration was submitted by Weatherford’s US regional sales and technical manager, corroborating the first declaration and attesting to the distribution of the handbooks, with lists of the recipients. Finally, Weatherford submitted a third declaration of a retired senior copywriter stating that he had created the name Fracsure and developed marketing and advertising materials for the mark for at least 10 months prior to October 2003. This third declaration also included internal emails and other internal documents relating to the development of advertising strategies for FRACSURE.

The TTAB held that the cumulative effect of all the evidence established Weatherford’s claims of prior use. While the TTAB commented that Weatherford's evidence of use was limited, that did not mean that it was insubstantial, nor that it could not be reasonably inferred that there had been public association of FRACSURE with Weatherford’s services. It was not the individual pieces of evidence, but instead the total picture that the evidence presented that was decisive. In this case, the totality of the evidence, with its clear examples of Weatherford’s prior use of FRACSURE in connection with oil and gas well services, was sufficient to convince the TTAB.

Lara A Holzman, Alston & Bird LLP, New York

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