TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE MATTER OF APPLICATIONS
`
`Mark:
`
`DROP GYRO
`
`Mark:
`
`DROP GYRO
`
`Applicant:
`Serial No.:
`Filing Date:
`Published:
`
`Gyrodata, Inc.
`76/131,014
`September 13, 2000
`September 9, 2003
`
`Applicant:
`Serial No.:
`Filing Date:
`Published:
`
`Gyrodata, Inc.
`76/481,141
`Januay 9, 2003
`January 27, 2004
`
`§
`
`§ §
`
`§ §
`
`§ §
`
`§ §
`
`§
`
`SCIENTIFIC DRILLING
`INTERNATIONAL, INC.,
`
`Opposer,
`
`v.
`
`GYRODATA INC.,
`
`Applicant.
`
`APPLICANT’S RESPONSE TO MOTION FOR SUMMARY JUDGMENT
`
`I.
`
`Introduction
`
`Applicant, Gyrodata, Inc. (“Gyrodata”) files its response to Opposer, Scientific
`
`Drilling International, Inc.’s (“Scientific Drilling”) motion for summary judgment and
`
`asks the Trademark Trial and Appeal Board (“TTAB”) to deny such motion on the
`
`grounds that
`
`(1) the Trademark Examining Attorneys properly passed the above-
`
`referenced applications to publication, or, alternatively, (2) that genuine issues of material
`
`fact exist precluding the grant of summary judgment.
`
`The old adage, “copying is the most sincere form of flattery” comes to mind when
`
`considering the present opposition filed by Scientific Drilling. Regarding the technology
`
`involved with the DROP GYRO mark, Applicant, Gyrodata, and Opposer, Scientific
`
`Drilling, are competitors in what essentially is a two competitor market. Gyrodata was
`
`MMWWMWWWWW
`
`07-26-2004
`U8. Pltbrlt & TMOYGITM Mail Hcpt D1. #72
`
`

`
`
`
`EXPRESS MAIL LABEL NO; EV 459408745US
`
`the market leader in developing and introducing into the marketplace the technology that
`
`serves as the basis for the services provided under the mark, and Gyrodata was by a long
`
`shot the first
`
`to use the mark in the marketplace with this technology. Gyrodata
`
`introduced its patented DROP GYRO technology in 1997, developed a market for the
`
`services that embrace the technology, and enjoyed recognition of the DROP GYRO
`
`services as being an exclusive offering of Gyrodata. These marketing efforts have
`
`continued from the introduction of the DROP GYRO services in 1997 to the present.
`
`Years afier Gyrodata introduced its successful DROP GYRO services, Gyrodata’s
`
`principle rival, Scientific Drilling,
`
`introduced a copycat service using the “DROP
`
`GYRO” designation to trade on the good will earned by Gyrodata. Scientific Drilling has
`
`admitted in federal court pleadings (where it was accused of infringement of the DROP
`
`GYRO mark) that “[Scientific Drilling] has in the past used the phrase ‘Drop Gyro’ to
`9
`
`describe some of its services.’
`
`See Paragraph 8 of “Scientific Drilling International,
`
`Inc.’s and Applied Technologies Associates, 1nc.’s Answer to Gyrodata Corporation’s
`
`Supplemental Counterclaims” filed on January 17, 2002, attached hereto as Ex. A.
`
`Scientific Data’s website also indicates that it calls this competing tool/service the
`
`“DROP KEEPER GYRO” and “ALL ATTITUDE DROP KEEPER” (“AdK”). See true
`
`and correct copies of marketing information printed from the website of Scientific
`
`Drilling, attached hereto as Ex. B.
`
`See also DROP GYRO Application Serial No.
`
`76/131,014 File Wrapper, a true and correct copy of which is attached as Ex. C;
`
`Supplemental Declaration of Jeffrey Leonard Dated July 23, 2004 (“Leonard Supp.
`
`Declaration”), attached as Ex. D; and DROP GYRO Application Serial No. 76/481,141
`
`File Wrapper, a true and correct copy of which is attached as Ex. E.
`
`

`
`
`
`EXPRESS MAIL LABEL NO.: EV 459408745US
`
`As such, the present opposition has nothing to do with the registrability of the
`
`DROP GYRO mark,
`
`inasmuch as two different Examining Attorneys already have
`
`examined and passed these two DROP GYRO applications on to publication; but instead,
`
`this opposition is a malicious, anticompetitive attempt by Scientific Drilling to usurp
`
`Gyrodata’s successfiil trademark rights, divert market share away from Gyrodata and
`
`unfairly compete by attempting to steal the DROP GYRO trademark and its associated
`
`good will under the guise of “trademark opposition”.
`
`It is also an attempt by Scientific
`
`Drilling to unjustly delay the registration of the DROP GYRO trademark applications.
`
`The only “harm” that Scientific Drilling really appears to be complaining about here is
`
`the fact that their competitor Gyrodata beat it to the marketplace with a successfiil
`
`service.
`
`I].
`
`Background of the DROP GYRO Applications
`
`A.
`
`New Counsel of Record
`
`Subsequent
`
`to the filing of Scientific Drilling’s present motion, Gyrodata
`
`appointed the undersigned counsel to act on its behalf and handle the prosecution of the
`
`two applications and this pending opposition. As such, and to the extent necessary or as
`
`may be requested by the TTAB, new counsel for Gyrodata desires the opportunity to
`
`further comment regarding the record made by his predecessor.
`
`B.
`
`The ‘O14 Application
`
`One of the two trademark applications the subject of this consolidated opposition
`
`is Serial No. 76/131,014 (“the ‘014 Application”). Gyrodata filed the ‘O14 DROP GYRO
`
`Application with the United States Patent and Trademark Office (“PTO”) on September
`
`13, 2000, for “controlled directional drilling of oil wells”. Gyrodata recited use of the
`
`

`
`
`
`EXPRESS MAIL LABEL NO.: EV 459408745US
`
`DROP GYRO mark in commerce on or in connection with the recited services at least as
`
`early as September 1997, and provided acceptable specimens of use. The examination of
`
`the ‘O14 Application resulted in its being published for opposition on September 9, 2003,
`
`for “controlled directional drilling of oil wells”. See ‘014 Application File Wrapper, Ex.
`
`C.
`
`Looking now at the prosecution history, on March 1, 2001, the PTO issued its
`
`first ofiice action in the ‘O14 Application, refusing registration on the grounds that the
`
`proposed mark “merely describes the services”. See Ex. C. The Examining Attorney
`
`relied on the definition of the word “drop” as being “to fall from a higher to a lower place
`
`or position”. Additionally,
`
`the PTO examining attorney requested that additional
`
`information be provided about the services to determine whether “all or part of the mark
`
`is merely descriptive as applied to the services”. See Ex. C. (citing Trademark Rule
`
`2.61(b):
`
`“The examiner may require the applicant to filI'I'liSi'l such information and
`
`exhibits as may be reasonably necessary to the proper examination of the application”)
`
`On Oct. 24, 2001, Gyrodata (afier revival of the unintentionally abandoned
`
`application) filed its response to the first office action arguing that the DROP GYRO
`
`mark was not descriptive, but instead, “is actually only suggestive of the process used to
`
`insert a tool incorporating a gyroscope into an oil or gas well and then direct the tool
`
`down the hole to a desired depth or location in the well bore.
`
`The tool is not merely
`
`dropped into the well bore and allowed to fall. Thus, the mark ‘DROP GYRO’ is
`
`suggestive of the method used to determine a profile in a well bore.” See Ex. C.
`
`Additionally, as requested by the Examining Attorney, Gyrodata submitted a
`
`detailed explanation of the method used to log a well using a tool incorporating a
`
`

`
`
`
`EXPRESS MAIL LABEL NO.: EV 459408745US
`
`gyroscope. For example, in the Gyrodata brochure of record entitled: “RGS-DPT“: Rate
`
`Gyroscopic Surveyor-Drop Gryo System” the DROP GYRO system is described as
`
`follows:
`
`Innovation:
`
`The battery powered rate gyroscopic surveyor (RGS-BT) is a major advancement
`in operational versatility, and it offers significant cost—savings by eliminating
`electric wireline.
`
`With the introduction of RGS-BT in 1994, a rate-gyro survey for the first time
`could be run inside drillpipe while tripping out of the hole, just like a magnetic
`tool.
`
`However, due to its sensitivity to shock, the too] could not be dropped like a
`magnetic tool.
`It had to be lowered on slick line and released. This involved
`extra time and expense to rig and run the line, and the pipe could not be rotated
`with the line in the hole.
`
`Drop Gyro System:
`
`Now, utilizing a proprietary new run configuration to control the speed of descent
`and provide a low-shock landing,
`the drop battery system (RGS-DP) can be
`pumped down to bottom in drillpipe without the use of slick or braided line.
`
`See Ex. C (Emphasis Added).
`
`As evidenced from this submission, the emphasis placed on operation of the tool used
`
`during the DROP GYRO services was on a controlled descent and landing of the tool, not
`
`literally a “dropping”. Thus, the mark DROP GYRO does not mean “dropping a gyro”,
`
`but rather is suggestive of the movement of a downhole tool for use in the controlled
`
`directional drilling of oil wells.
`
`On July 8, 2002, the PTO issued a Final refiisal to register under Section 2(e)(l)
`
`of the Trademark Act. The Trademark Examining Attorney again relied on the definition
`
`of “dropping” noted in the first office action, and added “[t]he likely reaction of the
`
`

`
`
`
`EXPRESS MAIL LABEL NO; EV 459408745US
`
`average purchaser when he or she encounters the services in the marketplace, as
`
`demonstrated by the specimens and evidence of record, would be that the services
`
`involved a dropped gyro.” See Ex. C.
`
`On January 8, 2003, Gyrodata filed its response to the Final office action, again
`
`strongly disagreeing with the Examining Attorney’s position that the DROP GYRO mark
`
`was descriptive:
`
`The process for surveying a well using a battery powered tools [sic] is much more
`involved than a simple “DROP” of the tool into a well. The tool is actually
`placed inside the drill pipe and ‘pumped down to the bottom of the drillpipe
`without the use of slick or braided lines.’ See Gyrodata Services Catalog — 2002
`first column (document attached to Office Action). Thus, Applicant strongly
`contends that the DROP GYRO mark is not merely descriptive, but is suggestive
`of the method used to control wellbore formation and is thereby amenable to
`registration.
`
`See Ex. C.
`
`In support of this response, Gyrodata filed the Declaration of Jeffrey Leonard,
`
`its Director of Marketing, in which Mr. Leonard declared in pertinent part:
`
`Gyrodata, Inc. (“the Company”) began using the mark DROP GYRO at
`least as early as September of 1997. Since that time, the company has continued
`to use the mark in association with its rate gyroscopic survey system, where a tool
`is inserted into a drill string and pumped to the bottom of the string. The system
`surveys the well as the string is withdrawn from the well.
`
`Gyrodata, Inc. has now used the mark continuously for over five years,
`customers of the company are familiar with the mark and know it to be associated
`with a Gyrodata,
`Inc. service.
`The attached flier can be printed from the
`Gyrodata, Inc. website and has been in substantially the same form since the first
`use of the DROP GYRO mark.
`
`Additionally,
`
`in this response to the Final office action, Gyrodata interjected,
`
`in the
`
`alternative, a claim of acquired secondary meaning, supported also by the Declaration of
`
`Mr. Leonard, based on Gyrodata’s continuous use of the mark for over five years and the
`
`

`
`
`
`EXPRESS MAIL LABEL NO.: EV 459408745US
`
`recognition by its customers that Gyrodata was the source of the DROP GYRO services.
`
`See Ex. C.
`
`Also on January 8, 2003, Gyrodata filed a Notice of Appeal with the TTAB. The
`
`TTAB replied on June 21, 2003, stating:
`
`“the notice of appeal filed by applicant is
`
`hereby instituted and the file is forwarded to the Trademark Examining Attorney for
`
`consideration of the claim of acquired distinctiveness.
`
`In the event the Examining
`
`Attorney finds the claim of distinctiveness persuasive and the refusal of registration is
`
`withdrawn, this appeal will be moot.” See Ex. C.
`
`The Examining Attorney did not
`
`raise any objections to Gyrodata’s final
`
`response, but rather, in view of Gyrodata’s final response, on August 20, 2003, the ‘O14
`
`Application was deemed entitled to registration and was accordingly published for
`
`opposition. See Ex. C.
`
`C.
`
`The ‘I41 Application
`
`The second of the two trademark applications the subject of this consolidated
`
`opposition is Serial No. 76/481,141 (“the ‘I41 Application”). Gyrodata filed the ‘I41
`
`DROP GYRO Application with the PTO on January 9, 2003, for “oil and gas well
`
`surveying services”. Gyrodata recited use of the DROP GYRO mark in commerce on or
`
`in connection with the recited services at least as early as September 1, 1997, and
`
`provided acceptable specimens of use. Additionally, the ‘141 Application was filed with
`
`a specific claim to “the benefit of five years of continuous use of the above-identified
`
`mark in association with the described services.”
`
`The examination of the ‘M1
`
`Application resulted in its being published for opposition on January 27, 2004, for “oil
`
`and gas well surveying services”. See ‘ 141 Application File Wrapper attached as Ex. E.
`
`

`
`
`
`EXPRESS MAIL LABEL NO.: EV 459408745US
`
`Looking now at the prosecution history, on July 16, 2003, the PTO issued its first
`
`office action in the ‘I41 Application,
`
`refiising registration on the grounds that the
`
`proposed mark “merely describes the services”. See Ex. E. The Examining Attorney
`
`relied on the definition of the word “drop” as being “to fall from a higher to a lower place
`
`or position”. Additionally,
`
`the PTO Examining Attorney acknowledged Gyrodata’s
`
`“statement claiming the benefit of five years of continuous use of the above-identified
`
`mark in association with the described services”, but noted that “the wording of the
`
`statement is not sufficient to make a claim of acquired disctinctiveness for the mark under
`
`Section 2(f)” and requested that Gyrodata provide additional wording, in the form of an
`
`affidavit or declaration, to support its claim of acquired distinctiveness: “the applicant
`
`should submit a claim of distinctiveness that reads as follows, if accurate
`
`The mark has become distinctive of the goods/services through the applicant's
`substantially exclusive and continuous use in commerce for at least the five years
`immediately before the date of this statement.”
`
`The Examining Attorney also requested submission of trademark specimens. See Ex. E.
`
`On October 29, 2003, Gyrodata filed its response to the first office action in the
`
`‘ 141 Application arguing that the DROP GYRO mark was not descriptive, but instead:
`
`The service associated with this mark is simply not described merely by the mark.
`One cannot simply drop a gyro down a hole. The tools [sic] is pumped down the
`interior of a drill string using a mud carrier and then pulled out of the interior of
`the drill string. During the withdrawal process, the tool records data sufficient to
`log the well and show the 3D drill path. Thus, DROP GYRO is suggestive of the
`process and not merely descriptive of the process.
`
`See Ex. E.
`
`In support of this response, Gyrodata filed the Declaration of Jefiiey Leonard, its
`
`Director of Marketing, in which Mr. Leonard declared in pertinent part:
`
`

`
`
`
`EXPRESS MAIL LABEL NO; EV 459408745US
`
`Gyrodata, Inc. (“the Company”) began using the mark DROP GYRO at
`least as early as September of 1997. Since that time, the company has continued
`to use the mark in association with its rate gyroscopic survey system, where a tool
`is inserted into a drill string and pumped to the bottom of the string. The system
`surveys the well as the string is withdrawn from the well.
`
`Gyrodata, Inc. has now used the mark continuously for over five years,
`customers of the company are familiar with the mark and know it to be associated
`with a Gyrodata,
`Inc. service.
`The attached flier can be printed from the
`Gyrodata, Inc. website and has been in substantially the same form since the first
`use of the DROP GYRO mark.
`
`Gyrodata has also aggressively protected its exclusive rights to the name
`and to the best of my knowledge at this time, no other entity is using the mark in
`connection with similar services.
`
`Additionally,
`
`in this response to the Final office action, Gyrodata interjected,
`
`in the
`
`alternative, a claim of acquired secondary meaning, supported also by the Declaration of
`
`Mr. Leonard, based on Gyrodata’s continuous use of the mark for over five years and the
`
`recognition by its customers that Gyrodata was the source of the DROP GYRO services.
`
`See Ex. H.
`
`The Examining Attorney did not raise any objections to Gyrodata’s initial
`
`response, but rather,
`
`in view of Gyrodata’s response, on January 7, 2004,
`
`the ‘I41
`
`Application was deemed entitled to registration and was accordingly published for
`
`opposition. See Ex. E.
`
`[[I.
`
`ARGUMENT
`
`The Board may grant
`
`summary judgment
`
`for opposer “if the pleadings,
`
`depositions, answers to interrogatories, and admissions on file,
`
`together with the
`
`affidavits, if any, show that there is no genuine issue as to any material fact and that the
`
`moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(0); NCTA v.
`
`American Cinema Editors, 937 F.2d 1572, 19 USPQ2d 1424, 1427 (Fed. Cir. 1991), The
`
`

`
`
`
`EXPRESS MAIL LABEL NO.: EV 459408745US
`
`nonmoving party, applicant Gyrodata in this case, “need only present evidence from
`
`which a jury might return a verdict in [its] favor.” Anderson v. Liberty Lobby, Inc, 477
`
`U.S. 242, 257 (1986). All reasonable inferences to be drawn from the facts must be
`
`viewed in the light most favorable to the nonmoving party Gyrodata. United States v.
`
`Diebold, Inc, 369 U.S. 654, 655 (1962). See also Opryland USA, Inc. v. Great American
`
`Music Show, Inc, 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); Olde Tyme Foods
`
`Inc. v. Roundy’s Inc, 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
`
`In the present motion, Scientific Drilling takes the position essentially that the
`
`Examiners below both abused their respective discretion in permitting the ‘D14 and ‘141
`
`Applications to proceed to the publication phase.
`
`Scientific Drilling appears to be
`
`disagreeing with the arguments made by Gyrodata regarding the suggestive nature of the
`
`DROP GYRO mark for the recited services, and quibbling over the wording contained in
`
`Gyrodata’s supporting declarations (Mr. Leonard). Specifically, Scientific Data contends
`
`that Gyrodata has “failed to establish its §2(f) claim and not having overcome the PTO’s
`
`descriptiveness refusal, Gyrodata is not entitled to registration of either mark.” Motion
`
`for Summary Judgment at p. 5.
`
`This is nonsense.
`
`The Examining Attorneys were persuaded by Gyrodata’s
`
`arguments and evidence.
`
`In response to the office actions in both applications, Gyrodata
`
`maintained its argument that the DROP GYRO mark was suggestive, not descriptive, of
`
`the recited services. The arguments, including the statements made in Mr. Leonard’s
`
`declarations, were duly considered and found to be persuasive by both Examining
`
`Attorneys. Said another way, once Mr. Leonard’s evidence (which supported both the
`
`suggestive nature of the DROP GYRO mark and its acquired distinctiveness) was
`
`10
`
`

`
`
`
`EXPRESS MAIL LABEL NO.: EV 459408745US
`
`submitted in these Applications,
`
`the Examining Attorneys withdrew their respective
`
`refusals to register.
`
`Gyrodata asserts that the evidence of record in the ‘014 and ‘141 Applications
`
`illustrates the suggestive, not descriptive nature of the DROP GYRO mark in connection
`
`with the recited services. As set out with specificity above, the Gyrodata brochure of
`
`record entitled: “RGS-DP'”“: Rate Gyroscopic Surveyor—Drop Gryo System” amply
`
`distinguishes the DROP GYRO services from the Examining Attorneys’ initial reliance
`
`on a definition of the verb “drop” (“to fall from a higher to a lower place”) in arriving at
`
`their initial conclusion that Applicant’s services are merely “the dropping of a gyro into a
`
`drill pipe”. Gyrodata’s position is supported by the oilfield industry’s use of the verb
`
`“drop”.
`
`In the context of oilfield services, the term “drop” has come to be associated with
`
`a function that requires the descent of an object down a drill string or wellbore sufficient
`
`to create a result caused by the forcefiil impact of the object, or by the application of
`
`force to the object after it has descended. For example, Schlumberger, a leading provider
`
`of oilfield services, maintains an on-line, web—based glossary entitled: Oilfield Glossary:
`
`Where the Oilfield Meets the Dictionary (http://www.glossgryoilfield.s1b.com).
`
`In
`
`searching this site for the word “drop”, the following relevant entries are returned: “drop
`
`bar”, “drop ball”, “ball dropper” and “drop-off gun”. See Leonard Supp. Declaration Ex.
`
`1 containing true and correct copies of these search results obtained from the
`
`Schlumberger website. These definitions are set out herein for convenience:
`
`ll
`
`

`
`
`
`EXPRESS MAIL LABEL NO.: EV 459408745US
`
`drop but
`1.
`rs. [Well Completions]
`
`113.2907
`
`A heavy steel bar that is dropped through the tubing or nmning string to fire the percussion detonate; on a tubing-
`ccmveyed pafnnting (TC?) gym assembly. The drop her must be cqiable offalling through the string with suflicient
`speed to impart the necesary force for detonation. Therefore. this method of firing is bat suited to vertical or slightly
`deviated wellhores when there will be minimal drag or fl-ietiun effect.
`
`drop ball
`1. II. {Well Completions]
`
`[D1639
`
`A ball that is dropped or pumped through the _u;el1b9r_c tubular: to activate a downhole tool or device. When the ball is
`located on a landing sent. hydraulic pressure generally is applied to operate the tool mechanism.
`
`hull dropper
`
`1. rr. [Well Workover and Intervention]
`
`The devinz used to inject hull sealers imam ueatrnent fluid as it is pumped through the surface treating lines.
`
`dmp-oflgun
`
`1. 1:. [Well Completions]
`
`"1 4513
`
`19- 1903
`
`A perforating g_I,r_n assembly designedlobe deuchedfrorn Lhe tubingor runniegstring aflerfring The detached
`nsanbly can then drop, or be pushed. to the bonmn ofthe well depending on deviation and p;_odLr_et_1o_n requirements.
`Drop-offgnn assemblies ofien He used in underbganggd perforating applications, eliminating the need to lfl the well to
`recover the spent @ assembly. In such cases, the \;e_llho_r_e will be designed to ecuumrnodare the spent @ assembly
`without con-iprunzising productivity. while recovery ofthe
`assembly may be planned during subsequent wrorlgoger
`operations. The drq:-offmechanism may be unornatic and actuated attime offu-ing, or be actuated efier firing.
`
`In the case of the “drop bar” definition, a heavy object is dropped into the tubing
`
`string, and “must be capable of falling with sufficient speed to impart the necessary force
`
`for detonation” of a mechanical perforating gun detonator. The connotation of DROP
`
`GYRO is the opposite of “drop bar”.
`
`In the performance of its DROP GYRO services,
`
`Gyrodata does not merely “drop” a gyro into the drill string because doing so would
`
`result in damage to the gyro from the resulting force imparted on the gyro. According to
`
`Mr. Leonard, during Gyrodata’s research and development of the tool used to perform
`
`DROP GYRO services, early versions of the tool lacking sufficient control of descent
`
`were damaged as a result of impact. As a consequence, and as already noted in the
`
`12
`
`

`
`
`
`EXPRESS MAIL LABEL NO.: EV 459408745US
`
`Gyrodata brochure of record in the above Applications entitled:
`
`“RGS—DPTM: Rate
`
`Gyroscopic Surveyor-Drop Gyro System” the DROP GYRO System is described as
`
`follows:
`
`Innovation:
`
`The battery powered rate gyroscopic surveyor (RGS-BT) is a major
`advancement
`in operational versatility, and it offers significant cost-
`savings by eliminating electric wireline.
`
`With the introduction of RGS—BT in 1994, a rate-gyro survey for the first
`time could be run inside drillpipe while tripping out of the hole, just like a
`magnetic tool.
`
`However, due to its sensitivity to shock, the tool could not be dropped like
`a magnetic tool.
`It had to be lowered on slick line and released. This
`involved extra time and expense to rig and run the line, and the pipe could
`not be rotated with the line in the hole.
`
`Drop Gyro System:
`
`Now, utilizing a proprietary new run configuration to control the speed of
`descent and provide a low-shock landing, the drop battery system (RGS-
`DP) can be pumped down to bottom in drillpipe without the use of slick or
`braided line.
`
`See Ex. C (Emphasis Added). See also Leonard Supp. Declaration.
`
`Similarly, much like the definition for “drop bar”, the definition for “drop ball”
`
`and the ‘‘ball dropper” device for dropping the ball is not focused at all on controlling the
`
`descent of the ball, but instead, is only concerned with getting the ball to the bottom of
`
`the drill string where it is used to activate a downhole tool or device. Also, the term
`
`“drop-off gun” relates to a perforating gun assembly that, alter the guns detonate
`
`downhole, the gun assembly detaches from the string and falls, or is pushed, to the
`
`bottom of the well where the spent gun debris can remain or later be retrieved with a
`
`workover operation. See also Leonard Supp. Declaration.
`
`I3
`
`

`
`
`
`EXPRESS MAIL LABEL NO.: EV 459408745US
`
`Although Gyrodata’s use of the mark “DROP GRYO” might be suggestive of
`
`“dropping” into the drill string the tool (that contains gyroscopes, accelerometers, motors,
`
`batteries, microprocessors, memory devices, pressure chambers and retrieval gear) that
`
`perform these services, as noted above, it is not descriptive of the actual surveying and
`
`directional drilling services in the oilfield sector. See also Leonard Supp. Declaration.
`
`Scientific Data has neither provided nor highlighted to the TTAB any basis for its
`
`challenge that the Examining Attorneys abused their respective discretion in advancing
`
`the ‘014 and ‘141 Applications to publication. The basis of Scientific Data’s motion for
`
`summary judgment goes to their core arguments for opposing these registrations. Given
`
`the failure of their arguments in this motion, Scientific Drilling’s basis for opposition is
`
`equally flawed.
`
`Scientific Drilling’s specific objections regarding Gyrodata’s alternative §2(f)
`
`basis for registrability are equally without merit. Section 2(t) provides in pertinent part:
`
`The Director may accept as prima facie evidence that the mark has become
`distinctive, as used on or in connection with the applicant’s goods in commerce,
`proof of substantially exclusive and continuous use thereof as a mark by the
`applicant in commerce for the five years before the date on which the claim of
`distinctiveness is made.
`
`15 U.S.C. §10S2(i) (Emphasis added). To the extent that the Examining Attorneys relied,
`
`for purposes of registrability of each Application, on the substance of the §2(f) claim
`
`made by Gyrodata in each Application, such §2(t) claim was amply supported with
`
`evidence, as outlined above. At a minimum, Gyrodata’s evidence properly served as
`
`primafacie proof that the DROP GYRO mark had acquired distinctiveness (in addition to
`
`being suggestive, not descriptive, of the services associated with the mark). Due to the
`
`suggestive nature of the DROP GYRO mark for the recited services, contrary to
`
`14
`
`

`
`
`
`EXPRESS MAIL LABEL NO.: EV 459408745US
`
`Scientific Drilling’s contentions, even the mere recitation of five years of continuous use
`
`of the mark may serve as primafacie evidence that the mark has become distinctive.
`
`Neither of the Examining Attorneys ever lodged an objection to Gyrodata’s §2(t)
`
`claim, or the evidence supporting the claim, other than the Examining Attorney in the
`
`first and only office action in the ‘ 141 Application asking that the Applicant modify the
`
`wording of its §2(t) prima facie statement of distinctiveness that appeared in the ‘14l
`
`Application as filed. Gyrodata satisfactorily complied, and was never required, as
`
`Scientific Drilling implies in its brief, to submit a higher level of evidence (See, e. g.,
`
`Scientific Data’s reliance on In re Kalmbach Publishing Ca, 14 U. S.P.Q.2d 1490 (TTAB
`
`1989), a case requiring more than prima facie evidence to establish acquired
`
`distinctiveness in an otherwise “generic” mark. The DROP GYRO mark is not generic,
`
`nor is it descriptive — it
`
`is suggestive. As such, both Examining Attorneys found
`
`sufficient for purposes of the §2(t) claim, Gyrodata’s evidence of five years substantially
`
`continuous and exclusive use.
`
`In the alternative, if the TTAB believes that more
`
`evidence of the suggestiveness and acquired distinctiveness of Gyrodata’s DROP GRYO
`
`mark is required, Gyrodata submits, for consideration by the TTAB and inclusion into the
`
`record of the ‘O14 and ‘141 Applications and in response to this motion, the Leonard
`
`Supp. Declaration filed contemporaneously herewith and incorporated herein. To the
`
`extent
`
`that any issues regarding suggestiveness or acquired distinctiveness remain,
`
`Gyrodata believes that the Leonard Supp. Declaration obviates the bases for Scientific
`
`Dril1ing’s pending motion and consolidated opposition.
`
`15
`
`

`
`
`
`EXPRESS MAIL LABEL NO.: EV 459408745US
`
`In view of the foregoing, movant Scientific Drilling has failed to show its
`
`entitlement to summary judgment and Gyrodata requests that the motion, and opposition,
`
`be denied.
`
`Respectfully submitted,
`
`GORDON G. WAGGETT, P.C.
`
`
`
`Phoenix Tower, Suite 2355
`Houston, Texas 77027-7523
`Tel: 713-961-4641
`
`Fax: 713-223-1476
`
`Attorney for Applicant,
`GYRODATA, INC.
`
`

`
`
`
`EXPRESS MAIL LABEL NO.: EV 459408745US
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of Applicanfs
`Response to Motion for Summary Judgment was served the 23”‘ day of July, 2004 by first
`class mail to the following counsel of record:
`
`James R. Robinson
`
`Baker Botts L.L.P.
`
`910 Louisiana
`
`One Shell Plaza
`
`Houston, Texas 77002-4995
`Counsel for Scientific Drilli - International, Inc.
`
`
`
`I7
`
`

`
`
`
`EXPRESS MAIL LABEL NO.: EV 459408745US
`
`CERTIFICATE OF EXPRESS MAILING
`
`I hereby certify that this paper is being deposited with the United States Postal
`Service on this date, in an envelop as “Express Mail Post Office To Addressee” Mailing
`Label No. EV 459408745US addressed to Commissioner of Trademarks, 2900 Crystal
`Drive, Arlington, Virginia 22202-3514.
`
`Attorney > me:
`
`Gordon G. Wa
`
`ett
`
`Date of Deposit: July 23, 2004
`
` Date of Signature: July 23, 2004
`
`18
`
`

`
`
`

`
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE SOUTHERN DISTRICT OF TEXAS
`
`HOUSTON DIVISION
`
`CIVIL ACTION NO. H-97-3506
`
`§ § § § § § § § § § §
`
`§ § § § § § § § 2
`
`§ §
`
`§
`
`SCIENTIFIC DRILLING
`
`INTERNATIONAL, INC. and
`APPLIED TECHNOLOGIES
`
`ASSOCIATES, INC.,
`
`Plainttflfs,
`
`v.
`
`GYRODATA CORPORATION,
`
`Defendant;
`
`GYRODATA CORPORATION,
`
`Counterclaim Plaintiff
`
`V.
`
`SCIENTIFIC DRILLING, INC. and
`APPLIED TECHNOLOGIES
`
`ASSOCIATES, INC.,
`
`Counterclaim Defendants.
`
`SCIENTIFIC DRILLING INTERNATIONAL, INQPS
`AND APPLIED TECHNOLOGIES ASSOCIATES, _INC.’S
`
`ANSWER TO GYRODATA CORPORATION’S
`
`SUPPLEMENTAL COUNTERCLAIMS
`
`Scientific Drilling International, Inc. and Applied Technologies Associates, Inc.
`
`(collectively, “Scientific") for their Answer to Defendant Gyrodata Corporation’s (Gyrodata)
`
`Supplemental Counterclaims, state as follows:
`
`I.
`
`In answer to paragraph 56, Scientific admits that Gyrodata’s cause of action
`
`purports to arise under the trademark laws of the United States. Scientific also admits that this
`
`Court has subject matter jurisdiction of actions relating to trademarks.
`
`

`
`
`
`2.
`
`In answer to paragraph 57, Scientific admits that venue is proper. Scientific
`
`denies the remainder of the allegations of paragraph 57.
`
`3.
`
`In answer to paragraph 58, Scientific admits that Gyrodata’s cause of action
`
`purports to arise under the Trademark Act of 1946, as amended. Scientific denies the remainder
`
`of the allegations of paragraph 58.
`
`4.
`
`In answer to paragraph 59, Scientific lacks sufficient knowledge or information as
`
`to the truth of the averments of paragraph 59.
`
`5.
`
`In answer to paragraph 60, Scientific admits that it has in the past used the phrase
`
`“Drop Gyro” to describe some of its services. Scientific denies the remainder of the allegations
`
`of paragraph 60.
`
`6.
`
`7.
`
`8.
`
`Scientific denies the allegations of paragraph 61.
`
`Scientific denies the allegations of paragraph 62.
`
`In answer to paragraphs 63 - 67, Scientific denies that Gyrodata is entitled to any
`
`of the relief requested, including injunction, damages, interest on damages, costs, and attorney’s
`
`fees, or relief of any kind.
`
`9.
`
`In answer to paragraph 68, Scientific admits that Gyroclata’s cause of action
`
`purports to be one ofpatent infringement of United States Patent No. 5,321,414, entitled “Survey
`
`Apparatus and Methods for Directional Wellbore Wireline Surveying.” Scientific further admits
`
`that the patent was issued on October 13, 1998 and that the inventors listed on the face of the
`
`patent are Koen Noy, Eric Wright, Gary Uttecht, James Brosnahan, Han Wei, and Greg
`
`Neubauer. Scientific denies the remainder of the allegations of par