Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA352698
`ESTTA Tracking number:
`06/14/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92050101
`Defendant
`C & J Energy Services, Inc.
`PAUL C. VAN SLYKE
`LOCKE LORD BISSELL & LIDDELL LLP
`600 TRAVIS ST STE 2800
`HOUSTON, TX 77002-3095
`UNITED STATES
`pvanslyke@lockelord.com, jsenn@lockelord.com, ppaquet@lockelord.com
`Motion for Summary Judgment
`Paul C. VanSlyke
`pvanslyke@lockelord.com
`/pvs/
`06/14/2010
`Cross Mot for SJ (2).pdf ( 2 pages )(39023 bytes )
`Motion for SJ non confidential.pdf ( 16 pages )(645884 bytes )
`Appendix A.pdf ( 5 pages )(204685 bytes )
`Appendix B.pdf ( 31 pages )(1825057 bytes )
`Decl of Casagrande.pdf ( 2 pages )(47839 bytes )
`Ex A to Decl of Casagrande.pdf ( 2 pages )(50023 bytes )
`EX B Conf under seal cover page.pdf ( 1 page )(14029 bytes )
`Ex C Conf Under Seal Cover Page.pdf ( 1 page )(14075 bytes )
`EX D to decl of Casagrande.pdf ( 22 pages )(3443322 bytes )
`Decl of Comstock.pdf ( 2 pages )(46569 bytes )
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`WEATHERFORD/LAMB, INC.,
`Petitioner,
`
`V.
`
`C&J ENERGY SERVICES, INC.,
`Registrant.
`
`.
`
`-
`
`Cancellation No. 92050101
`
`Mark: FRAC-SURE
`
`REGISTRANT’S CROSS-MOTION FOR SUMMARY JUDGMENT
`
`Registrant C&J Energy Services, Inc., hereby cross-moves, pursuant to Fed. R. Civ. P.
`
`56, for summary judgment on the issue of priority. As explained in detail in Registrant ’s
`
`Combined Brief (1) In Opposition T0 Petitioner ’s Motion, and (2) In Support Of Registrant ’s
`
`Cross-Motion, For Summary Judgment, there is no genuine issue of material fact favoring
`
`Registrant on the issue of priority.
`
`Accordingly, Registrant requests the Board to grant summary judgment in its favor on the
`
`issue of priority and deny the Petition for Cancellation.
`
`Respectfully submitted,
`
`By:
`
`/s/ Paul C. Van Slyke
`Paul C. Van Slyke
`Thomas L. Casagrande
`LOCKE LORD BISSELL & LIDDELL LLP
`
`600 Travis Street, Suite 3400
`
`Houston, Texas 77002
`Telephone: 713-226-1200
`Facsimile: 713-223-3717
`
`Attorneys for REGISTRANT
`
`

`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the foregoing is being served via email and First Class Mail,
`
`postage prepaid, on June 14, 2010, on:
`
`John C. Cain, Esq.
`Wong, Cabello, Lutsch, Rutherford & Brucculeri, P.C.
`Chasewood Technology Center
`20333 SH 249, Suite 600
`
`Houston, Texas 77070
`Email: jcain@counselip.com
`
`/s/ Paul C. VanS1yke
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`WEATHERFORD/LAMB, INC.,
`Petitioner,
`
`v.
`
`C&J ENERGY SERVICES, INC.,
`Registrant.
`
`i
`
`.
`
`Cancellation No. 92050101
`
`Mark: FRAC-SURE
`
`REGISTRANT’S CROSS-MOTION FOR SUMMARY JUDGMENT
`
`NON CONFIDENTIAL VERSION
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`WEATHERFORD/LAMB, lNC.,
`
`Petitioner,
`
`Cancellation No. 92050101
`
`v.
`
`C&J ENERGY SERVICES, INC.,
`Registrant.
`
`.
`
`-
`
`Mark: FRAC-SURE
`
`REGISTRANT’S COMBINED BRIEF (1) IN OPPOSITION TO PETITIONER’S
`MOTION, AND (2) IN SUPPORT OF REGISTRANT’S CROSS-MOTION, FOR
`SUMMARY JUDGMENT
`
`Registrant C&J Energy Services, Inc. submits this combined brief in opposition to
`
`Petitioner’s Motion for Summary Judgment on priority and likelihood of confusion and in
`
`support of Registrant’s Cross-Motion for Summary Judgment on priority. To prevail on its
`
`motion, Petitioner, as the party with the burden of proof, must demonstrate that there is no
`
`genuine dispute of material fact, and Petitioner is entitled to judgment as a matter of law, on,
`
`among other things,
`
`the essential element of priority.
`
`To prove priority, Petitioner must
`
`demonstrate that it both used the alleged mark as an identifier of source and, if so, that the
`
`alleged mark acquired secondary meaning before Registrant’s priority date. On neither issue has
`
`Petitioner demonstrated entitlement to judgment as a matter of law. Indeed, Petitioner’s showing
`
`is so weak that it is clear that summary judgment against Petitioner is warranted. For the reasons
`
`set forth below, the Board should deny Petitioner’s motion and grant Registrant’s cross-motion.
`
`SUMMARY OF ARGUMENT
`
`Petitioner must specifically prove that, before November 19, 2007 (Registrant’s filing
`
`date), it used FRACSURE as an identifier of the source of its services and that its use created
`
`

`
`“secondary meaning” in the alleged mark (i.e., an association in the minds of the purchasing
`
`public between its FRACSURE mark and its oil and gas well fracturing services) And because
`
`this is a summary judgment context, Petitioner’s proof must rise to such a level
`
`that no
`
`reasonable finder of fact could conclude otherwise. It has failed to satisfy this standard. Despite
`
`claiming to have done— in business from 2003 through 2008, it has submitted only (1)
`
`a few sporadic examples of uses of the mark in four brochures, (2) one use buried in one 2004
`
`newsletter sent to one customer, and (3) use in one highly-technical handbook distributed to 27
`
`people OUTSIDE Petitioner’s company.
`
`In contrast, Petitioner admits that
`
`the alleged
`
`FRACSURE mark was used on no—zer0—proposals and no—zer0——invoices for any of the
`
`_ of alleged business. Petitioner’s evidence also makes clear the reason for this
`
`disparity (such a huge amount of business versus so few alleged uses): Petitioner’s main marks
`
`for
`
`its
`
`fracturing services are WEATHERFORD and WEATHERFORD FRACTURING
`
`TECHNOLOGIES. As Petitioner uses it, FRACSURE is, at best, a rarely-employed laudatory
`
`advertising slogan that does not indicate source. In those rare instances when the FRACSURE
`
`solgan has been used,
`
`it has been used only in close proximity to Petitioner’s primary
`
`WEATHERFORD and WEATHERFORD FRACTURING TECHNOLOGIES marks and their
`
`associated design marks.
`
`Far from demonstrating that the only conclusion a reasonable factfinder could make is
`that Petitioner used FRACSURE as an identifier of source and developed secondary meaning in
`
`it before Registrant began its use of FRAC-SURE, Petitioner’s meager showing fails to rise even
`
`to the level that any reasonable factfinder could find make either finding. Accordingly, summary
`
`judgment against petitioner is warranted.
`
`

`
`STANDARDS ON SUMMARY JUDGMENT
`
`Summary judgment
`
`is appropriate “if the pleadings,
`
`the discovery and disclosure
`
`materials on file, and any affidavits show that there is no genuine issue as to any material fact
`
`and that the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c) (emphasis
`
`added). “When ruling on a motion for summary judgment, all of the nonmovant’s evidence is to
`
`be credited, and all justifiable inferences are to be drawn in the nonmovant’s favor.” Caterpillar
`
`Inc. v. Deere & Co., 224 F.3d 1374, 1379 (Fed. Cir. 2000). There is a genuine dispute when
`
`there is sufficient evidence for the fact finder to decide the question in favor of the non-movant.
`
`Lloyd ’s Food Prods., Inc. v. Eli ’s, Inc., 987 F.2d 766, 767 (Fed. Cir. 1993).
`
`In contrast, where
`
`the party with the burden of proof (Petitioner) fails to make a sufficient showing on even one
`
`essential element of that party’s case, summary judgment against that party is warranted. See,
`
`e.g., Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S. Ct. 2548, 2552 (1986).
`
`ARGUMENT
`
`On the essential element of priority, Petitioner must, but cannot, demonstrate that its
`
`alleged FRACSURE mark acquired secondary meaning before November 2007, see, e.g.,
`
`Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1359 (Fed. Cir. 2001); Towers v.
`
`Advent Software, Inc., 913 F.2d 942, 946 (Fed. Cir. 1990); that is, that Petitioner’s use was “of
`
`such a nature and extent that the term or slogan has become popularized in the public mind.”
`
`T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 1376 (Fed. Cir. 1996) (citation omitted; emphasis
`
`in original). Petitioner’s evidence, however, demonstrates that it identifies its services using only
`
`its main WEATHERFORD and WEATHERFORD FRACTURING TECHNOLOGIES marks
`
`and their associated design marks. The sporadic, inconsequential use Petitioner has made of
`
`

`
`FRACSURE is as a laudatory advertising sloganl and even then, only in conjunction with its
`
`main
`
`house marks, WEATHERFORD,
`
`V
`“WW0” ,
`
`and WEATHERFORD
`
`FRACTURING TECHNOLOGIES. Thus, not only has Petitioner not demonstrated, as a matter
`
`of law, that it has established the secondary meaning in FRACSURE that is required to establish
`
`priority, but its evidentiary showing fails even to rise to the level needed to resist summary
`
`judgment against it.
`
`A.
`
`Petitioner Has Only Sporadically Used Its Alleged “FracSure ” Mark, and Then
`Only As a Secondary Motto or Advertising Slogan, Not a Source Identifier.
`
`Before the Board can reach the question of whether Petitioner’s alleged use of the
`
`FRACSURE mark was successful in developing secondary meaning as a source identifier of
`
`Petitioner’s services, there is a threshold question of whether Petitioner even used the alleged
`
`FRACSURE mark as an identifier at all and, if so, whether it did so continuously or only
`
`sporadically. Generally, one asserting that its allegedly prior trademark rights continuously used
`
`the alleged trademark as an indicator of the source of the goods or services, and Petitioner argues
`
`that it has “continuously” used its alleged mark since October 2003. (Pet. Br. at 5, 6.)
`
`In assessing Petitioner’s proof, two federal appeals court decisions are instructive.
`
`In
`
`Circuit City Stores, Inc. v. CarMax, 1nc., 165 F.3d 1047 (6th Cir. 1999), the alleged senior user’s
`
`claim to prior rights was rejected where its evidence of use showed that it “repeatedly failed to
`
`As Petitioner uses it, the term FRACSURE is an obvious play on the word “fracture” in which “-sure”
`I
`is substituted for “-ture,” and is meant to convey the idea that the well-drilling companies that use
`Petitioner’s services can be confident (i.e., “sure”) of the quality of the fracturing activities.
`Such
`laudatory marks are not inherently distinctive. See, e.g., Hoover Co. v. Royal Appliance Mfg. C0,, 238
`F.3d 1357, 1360 (Fed. Cir. 2001); In re Royal Viking Line A/S, 216 USPQ 795, 797 (TTAB 1982). To
`conclude otherwise on Petitioner’s motion for summary judgment would be to draw an impermissible
`summary judgment inference against Registrant, which is the non-movant in Petitioner’s motion for
`summary judgment.
`In any event, Petitioner does not argue that its alleged “FracSure” mark is inherently
`distinctive, conceding instead that it was required to “create a public awareness of the designation as a
`trademark identifying the party as a source.” (Pet. Br. at 4.)
`
`

`
`use the CarMax mark in basic commercial contexts such as their telephone listing, store signs,
`
`newspaper ads and other customer information.” Id. at 1055.
`
`Instead, the alleged senior user
`
`typically referred to itself in these basic commercial contexts under the names “Budget” or
`
`AutoCredit.” Id. at 1051. Similarly, in MicroStrategy Inc. v. Motorola, Inc., 245 F.3d 335 (4th
`
`Cir. 2001), the court was unpersuaded by alleged senior user’s allegedly earlier use of the alleged
`
`“Intelligence Everywhere” mark because it only occasionally used the alleged mark, and when it
`
`did so it did not use it consistently as a source indicator, but instead used it primarily as an
`
`advertising slogan or motto along with its primary “MicroStrategy Broadcaster” identifier. See
`
`id. at 341-43.
`
`In both of these cases, the courts required at the threshold that the alleged senior
`
`user have made more than “only an occasional or isolated use” (see MicroStrategy, 245 F .3d at
`
`342) or more than “sporadic, casual or transitory” use (see Circuit City, 165 F.3d at 1054-55
`
`(citation omitted)).2
`
`Here, like the alleged senior users in CarMax and MicroStrategy, Petitioner has used its
`
`alleged FRACSURE mark only sporadically—at best. Moreover, as with the alleged senior user
`
`in MicroStrategy, Petitioner has far more frequently used another mark to identify the goods or
`
`services, using FRACSURE instead as a motto or advertising slogan along with the primary
`
`identifier. In particular, Petitioner has stipulated that in the seven years during which it allegedly
`
`made at least— in sales (from 2003-08) of the services at issue (see Pet. Br. at 1-2), it
`
`never once used the alleged mark on any proposals or invoices.
`
`(See Exhibit A to the
`
`Declaration of Thomas L. Casagrande (attaching Petitioner’s Stipulation).
`
`Instead, Petitioner’s
`
`(non-
`Accord Smithson v. Emsa- Werke Wulf GmbH, 1999 WL 769932, at *2 (TTAB 1999)
`precedential) (the party asserting priority “must demonstrate that his use of the mark has been deliberate
`and continuous, not sporadic, casual, or transitory”) (citation omitted) (copy attached as Appendix A).
`
`

`
`proposals
`
`bear
`
`only
`
`the WEATHERFORD FRACTURING TECHNOLOGIES
`
`and
`
`9'
`Weatherford
`
`marks, like this representative sample:
`
`Fracturlng Technologies
`
`V|
`
`’|‘amlIBrlIJrfl'
`
`V '
`
`-Weatherfnnl
`
`PAGE
`1 of 3
`
`4 T19N R12W
`
`Stimulation Recommendation
`
`Similarly, Petitioner’s invoices bear only the WEATHERFORD and
`
`marks, like this representative sample:
`
`INVOICE
`lnruoluzte Ntmme-r: 207568} RI
`lm-c-Ice Dale:
`IHIUJJOS
`Omar Nunbu:
`183960 SO
`Onicz Dale:
`12:1:/n4
`
`Location:
`Cusvlomev F0: ;
`Plume NM -Fax No:
`FDC Nunlnv:
`FIX: €EtI1$
`
`vi
`Weathertnrd’
`REMIT TO:
`
`IP
`
`KQEATHERFORD ARTIFICM-1. LIFT SW5 .
`0 BOX 25683?
`CIHfl.5E BANK {SF T -13% A
`BANKACCOUNT 3
`TRANSIT FICIUTI
`HDUSTGN T241 F7216-0917'
`Ul‘.liTED STATES
`
`SHIP To: —
`WELL am:
`Well
`Le:
`K13
`UN!
`
`‘YES
`
`8 '
`
`BILL TO: _
`
`qu-
`
`3 $TATEfi
`
`UNI
`
`Additional representative samples of Petitioner’s proposals and invoices are attached as Exhibits
`
`B & C, respectively, to the Declaration of Thomas L. Casagrande.
`
`Despite claiming seven years of use and— in sales, all Petitioner can
`
`muster is:
`
`0 One newsletter issued to one customer (BP) in 2004, entitled “WellNess Profile” and
`
`V‘
`
`W°3"'°”""l
`
`captioned only with the
`in which “FracSure” is used once in a paragraph heading on page 4. (Pet. Exh. A3);
`
`, . ,and WEATHERFORD marks,
`
`

`
`V
`iweathemm and DYNAFRAC marks, in
`0 One 2003 brochure issued under the
`which the phrase “Weatherford FracSure Service” is used amidst many other
`trademarks, which was allegedly distributed to an undisclosed number of unspecified
`recipients (Pet. Exh. B1);
`
`V
`iweamemm and DYNAFRAC marks, in
`0 One 2004 brochure issued under the
`which the phrase “FracSure Service from Weatherford” is used amidst many other
`trademarks, which was allegedly distributed to an undisclosed number of unspecified
`“customer and potential customers” (Pet. Exh. B1);
`
`0 One brochure entitled “Stimulating Ideas for Production Improvement” under the
`
`V i
`
`weathmum and WEATHERFORD FRACTURING TECHNOLOGIES marks,
`allegedly distributed to an undisclosed number of unspecified recipients at
`unspecified times
`in 2004-07,
`in which the phrase “FracSure Service from
`Weatherford” is used once on page 5, amidst dozens of other trademarks (Pet. Exh.
`B4);
`
`0 One brochure entitled “DynaFrac HT Fluids Putting Viscosity in a new light” under
`
`V
`weatmrmm marks, allegedly distributed to an
`the WEATHERFORD and
`undisclosed number of unspecified recipients at unspecified times in 2005-07,
`in
`which the phrase “FracSure Service from Weatherford” is used twice, again amidst
`many other trademarks (Pet. Exh. B5); and
`
`0 A dense, highly-technical handbook entitled “FracSure Technical Handbook,” and
`
`V
`, and WEATHERFORD
`"W°3"'°”““'
`the WEATHERFORD,
`issued under
`FRACTURING TECHNOLOGIES marks, in which the alleged “FracSure” mark is
`mentioned three times in approximately 300 pages (Pet. Exh. A1).
`
`In none of these alleged uses was the alleged “FracSure” mark used apart from the primary
`
`identifiers WEATHERFORD,
`
`V
`watlmm ,
`
`V
`
`and WEATHERFORD FRACTURING
`
`

`
`TECHNOLOGIES3 Rather, the term “FracSure” is used as, or as part of, an advertising slogan
`
`designed to
`
`laud Petitioner’s
`
`fracturing
`
`services under
`
`the WEATHERFORD and
`
`WEATHERFORD FRACTURING TECHNOLOGIES marks.4 If any more confirmation than
`
`Petitioner’s own (presumably cherry-picked) documents is needed, an Internet search reveals a
`
`presentation made by Petitioner’s personnel, concerning Petitioner’s fracturing services, in 2008.
`
`Significantly, not one mention is made of the alleged FRACSURE designation, and Petitioner’s
`
`services
`
`are
`
`identified solely by the WEATHERFORD,
`
`"
`Wflafherfurd
`
`,
`
`V
`
`and
`
`WEATHERFORD FRACTURING TECHNOLOGIES marks.
`
`(See Casagrande Dec]. 1[ 5 &
`
`Exh. D thereto.) This is consistent with the observations of Registrant’s President, who has for
`
`years observed Petitioner’s trucks being dispatched to fracturing job sites, and who has never
`
`seen the term “FRACSURE” on any of Registrant’s trucks or anywhere else.
`
`Instead he has
`
`3
`
`It is clear that the marks WEATHERFORD,
`
`V
`
`lweammord
`
`, and
`
`U
`
`are Petitioner’s main
`
`identifiers, as each is the subject of multiple registrations owned by Petitioner. See U.S. Registrations
`Nos. 3,657,190,
`3,657,189,
`3,105,501,
`3,067,054, 2,583,504, 2,537,644, 2,491,934, 2,323,886,
`1,873,606, 1,402,874, 1,363,664, and 764,455.
`
`The court’s summary of the inadequate showing in MicroStrategy bears several similarities to
`4
`Petitioner’s meager showing here:
`
`MicroStrategy has offered 24 documents (not including duplicates of press releases), dating from
`March 1999 through early 2001, in which it has used the term “Intelligence Everywhere.” These
`include two annual reports, several press releases, brochures, sales presentations, a product
`manual, a business card, and newspaper articles. Although most of these documents contain
`several pages of densely printed material and some are quite lengthy, .
`.
`. typically each refers
`only once to “Intelligence Everywhere,” and that reference follows no particular design or
`sequence, i.e., sometimes its on the cover, sometimes not, most often “Intelligence Everywhere”
`appears in the midst of text.
`
`245 F.3d at 341. The court also noted that MicroStrategy used “Intelligence Everywhere” not as an
`identifier but as a non-source—identifying (and therefore unprotectable) slogan, used in conjunction with
`the “MicroStrategy Broadcaster” primary identifier. See id. at 342-43.
`
`

`
`observed that Petitioner uses only the WEATHERFORD,
`
`V
`Wflafllerfonl
`
`,
`
`V
`
`and
`
`WEATHERFORD FRACTURING TECHNOLOGIES marks.
`
`(Decl. of Josh Comstock at1[1[ 2-
`
`3.)
`
`The decision in In re Duvernoy & Sons, Inc., 212 F.2d 202 (CCPA 1954) is instructive.
`
`In that case, the question was whether the slogan “Consistently Superior,” which had been used
`
`nationally for 30 years, served as a source identifier. The court rejected the argument that the
`
`long, consistent use meant that the phrase served a source-identifying function, stating:
`
`On the contrary, we think it is clear from the exhibits that Duvernoy & Sons, Inc.,
`appellant’s trade name (generally shown in large, fanciful letters), is relied upon
`to denote origin and that ‘Consistently Superior’ is merely an adjunct thereto,
`operating in the shadow thereof to indicate to purchasers that appellant ’s goods
`are always superior in quality. In this respect, the solicitor aptly observes:
`
`‘It is submitted that the evidence in the present case clearly fails to show
`that the primary purpose of the words ‘Consistently Superior’ was to indicate
`origin. There is no exhibit offered in which those words appear without the
`name of the appellant and, in most cases, the words are much less prominently
`displayed than the name.’
`
`Id. at 204 (emphasis added). This analysis could easily and accurately be re-written substituting
`
`FRACSURE for “Consistently Superior” and WEATHERFORD for “Duvemoy & Sons.” See
`
`also Worthington Foods, Inc. v. Kellogg Co., 732 F. Supp. 1417, 1441-42 (S.D. Ohio 1990) (“the
`
`house mark of a company tends to deemphasize the contested mark as a source of the goods or
`
`services.”
`
`Viewed in light of logical disparity between (1) Petitioner’s alleged- in sales
`
`and (2) Petitioner’s stipulation that none of its proposals or invoices ever bore the alleged
`
`FracSure mark, the conclusion is inescapable that Petitioner has not used the alleged mark to
`
`identify its services anything more than sporadically, and even then only as a laudatory
`
`advertising slogan rather than a source identifier. Case law makes clear that the meager quantity
`
`

`
`and quality of this evidence is simply not enough use to meet the threshold requirement for a
`
`claim of priority. See MicroStrategy, 245 F.3d at 342; Circuit City, 165 F.3d at 1055; see also In
`
`re Duvernoy & Sons, Inc., 212 F.2d 202 (CCPA 1954) (“Consistently Superior” found to have
`
`been used in a laudatory, not source-identifying sense, despite 30 years of consistent use because
`
`it was always used with the identifier “Duvemoy & Sons”); Peopleware Sys., Inc. v. Peopleware,
`
`Inc., 226 USPQ 320, 323 (TTAB 1985) (use of PEOPLEWARE on business cards insufficient to
`
`create “direct association between the term and the services” where it was used in advertising but
`
`not as an identifier of the services).5 Because Petitioner’s showing fails even to rise to the level
`
`where any reasonable factfinder could conclude that Petitioner ever used FRACSURE as an
`
`identifier, summary judgment against Petitioner is warranted.
`
`B.
`
`Petitioner Has Not Established that Its Alleged FRACSURE Mark Developed
`Secondary Meaning Before Registrant Began Use.
`
`Even if the Board were to assume that Petitioner made more than sporadic use of
`
`FracSure (ignoring as well that the use was only to laud the primary WEATHERFORD and
`
`WEATHERFORD FRACTURING TECHNOLOGIES identifiers), Petitioner’s proof fails to
`
`establish secondary meaning, i. e., that its use successfully created consumer association between
`
`use of the mark and Petitioner as the source. Petitioner correctly concedes that a demonstration
`
`of secondary meaning is required to establish priority in this case (see Pet. Br. at 4). See, e.g.,
`
`Hoover Co., 238 F .3d at 1359; Towers, 913 F.2d at 946. “In determining whether secondary
`
`meaning has been acquired, the Board may examine copying, advertising expenditures, sales
`
`success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking
`
`The voluminous internal emails and documents Petitioner submitted (Pet. Exh. B2) about how
`5
`Petitioner may have, at one time, intended the alleged FRACSURE mark to function are completely
`irrelevant.
`It is only how the term was actually used—and its impact on the relevant consumers—that
`counts. See, e.g., T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 1376 (Fed. Cir. 1996) (“The user’s intent,
`no matter how clearly established, cannot suffice in lieu of proof of the necessary ‘prior public
`identification.’”).
`
`10
`
`

`
`the name to a source).” In re Steelbuildingcom, 415 F.3d 1293, 1300 (Fed. Cir. 2005) (citation
`
`omitted). The expenditure of an “arguably large sum of money on advertising is of limited
`
`probative value,” absent some indication of the effectiveness of the advertising in creating
`
`consumer association. Braun Inc. v. Dynamics Corp. ofAm., 975 F.2d 815, 826-27 (Fed. Cir.
`
`1992). Advertising itself is also of minimal probative value if it contains not only the subject
`
`mark but other prominent identifiers. See, e.g., Amazing Spaces, Inc. v. Metro Mini Storage,
`
`F.3d ____, 2010 WL 2181454, at *l6 (5th Cir. June 2, 2010) (copy attached as Appendix B);
`
`CareFirst of Maryland,
`
`Inc.
`
`v. First bare, P. C., 434 F.3d 263, 270-71 (4th Cir. 2006);
`
`Aromatique, Inc. v. Gold Seal, Inc., 28 F .3d 863, 871 (8th Cir. 1994). Similarly, while large
`
`consumer demand for the services at issue may indicate the desirability of the services, it does
`
`not “permit a finding the public necessarily associated the [mark] with [Weatherford].” See
`
`Aromatique, 28 F.3d at 827. Where the only evidence is advertising expenditures and sales
`
`revenues—-with no evidence linking these figures to any consumer association—and there is no
`
`unsolicited media coverage, no survey, no quantitative evidence of association, and no
`
`testimony, a finding of secondary meaning is speculative and unsupported. See Braun Inc. v.
`
`Dynamics Corp. ofAm., 975 F.2d 815, 826-27 (Fed. Cir. 1992).
`
`Under these precedents, Petitioner’s evidentiary showing on this point would be
`
`inadequate to support a finding in its favor under a deferential appeal standard, let alone require
`
`judgment as a matter of law in its favor on summary judgment. Petitioner’s evidentiary showing
`
`is bafflingly sparse considering the magnitude of the alleged business. As detailed earlier,
`
`Petitioner offers only two brochures mentioning “FracSure” in the title (Pet. Exhs. B1 & B3) and
`
`two brochures in which the titles do not mention “FracSure” but the word is instead buried in the
`
`body of the document (Pet. Exhs. B4 & B5). Petitioner gives no indication, however, how many
`
`11
`
`

`
`of these brochures were distributed or to whom. Petition also submits one newsletter distributed
`
`once to one customer, in which the term is again buried in the body of the document (Pet. Exh.
`
`A3), and a highly technical 300-page handbook—clearly not a marketing or advertising
`
`document—in which the term appears three times.
`
`Moreover, in all of these examples, the alleged mark FRACSURE appears with several
`
`other trademarks, most notably, Petitioner’s primary WEATHERFORD mark.
`
`In none does it
`
`stand alone and serve as an identifier. Advertising containing several marks simply does not
`
`have any probative value as to whether one of the marks serves as source-identifier or has
`
`acquired secondary meaning.
`
`In the recent Fifth Circuit decision in Amazing Spaces, _ F .3d
`
`, 2010 WL 2181454, the court held evidence of $750,000 in advertising expenditures, ten
`
`(10) years of use, and $11.5 million in sales revenue was insufficient to defeat summary
`
`judgment of no secondary meaning when the registered “Star Symbol” mark was “virtually
`
`absent as a stand-alone mark from Amazing Spaces’ advertising in the record” and the
`
`“advertising attempted to attract customers using marks other than the Star Symbol.” Id. at *l5-
`
`*l6. Petitioner’s showing suffers from the same flaws found to warrantsummaryjudgment ofno
`
`secondary meaning in Amazing Spaces.6 I
`
`In addition, Petitioner offers no survey, no unsolicited media coverage mentioning the
`
`mark, no quantitative evidence of consumer association, and no consumer testimony. Petitioner
`
`offers no evidence of the size of the relevant market.
`
`In T.A.B. Sys., 77 F.3d at 1375-77, the
`
`See also CareFirst, 434 F.3d at 270-71 (“CareFirst’s evidence of strength thus consists almost
`6
`entirely of materials that pair the CareFirst mark with the Blue Cross Blue Shield language, usually in a
`sophisticated corporate logo. This evidence does not show that CareFirst’s registered mark, standing
`alone, has conceptual or commercial strength”); Aromatique, 28 F.3d at 871 (“The advertisements
`submitted with the application cannot establish secondary meaning because they do not separate the
`claimed dress of the products from the other marks that serve to identify the products as those of
`Aromatique.”)
`
`12
`
`

`
`Federal Circuit reversed a finding that
`
`the opposer had demonstrated the required public
`
`association where, as here:
`
`0 The opposer offered no “survey evidence or other direct evidence of the consuming
`pub1ic’s identification of the target word with the opposer as the source,” id. at 1375
`(emphasis added), and
`
`0 The opposer’s indirect evidence (advertising and publicity) fell “short of supporting
`the critical inference of identification in the mind of the consuming public,” id.,
`because opposer had not adequately quantified “the actual number of potential
`customers reached, id. at 1377, and “utterly failed to prove the size of the market.”
`Id.
`
`See also Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1360 (Fed. Cir. 2001)
`
`(rejecting a claim of priority where opposer “presented no evidence showing how consumers
`
`actually perceive the slogan and only minimal evidence of use of the slogan.”)
`
`In summary, here, as in T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 1375-77 (Fed. Cir.
`
`1996) and Braun Inc. v. Dynamics Corp. ofAm., 975 F.2d 815, 826-27 (Fed. Cir. 1992), there is
`
`only minimal indirect evidence in the form of advertising, advertising expenditures and sales
`
`revenues, but no evidence of unsolicited media coverage, and no survey or other quantitative
`
`evidence of association. Moreover, Petitioner’s own evidence demonstrates that Petitioner
`
`always uses FRACSURE with its primary WEATHERFORD and WEATHERFORD
`
`FRACTURING TECHNOLOGIES marks, and never used it as anything other than a secondary,
`
`laudatory advertising slogan. As in Amazing Spaces, _ F.3d
`
`, 2010 WL 2181454 (5th Cir.
`
`June 2, 2010), the required link between Petitioner’s proffered indirect sales and advertising
`
`evidence and Petitioner’s argument that customers associate FRACSURE with Petitioner as a
`
`The T.A.B. Systems court’s use of the phrase “supporting the critical inference of identification”
`7
`(emphasis added) is important. Petitioner’s use of indirect evidence of consumer perception requires that
`the Board draw an inference of consumer perception from Petitioner’s indirect evidence. However, on
`summary judgment, “alljustifiable inferences are to be drawn in the nonmovant’s favor.” Caterpillar Inc.
`v. Deere & C0., 224 F.3d 1374, 1379 (Fed. Cir. 2000). This principle alone requires rejection of
`Petitioner’s attempts to show secondary meaning indirectly, and therefore of Petitioner’s motion for
`summary judgment as well.
`
`13
`
`

`
`source is precluded because of Petitioner’s consistent and clearly more prominent use of its main
`
`identifiers with the alleged FRACSURE mark. Thus, Petitioner’s showing on the essential
`
`element of secondary meaning is speculative and unsupported. Summary judgment against
`
`Petitioner is warranted.
`
`CONCLUSION
`
`To prevail on its motion, Petitioner, as the party with the burden of proof, must
`
`demonstrate that there are no genuine issues of material fact, and that it is also entitled to
`
`judgment as a matter of law, on the essential elements of its § 2(d) cancellation claim, including
`
`(1) that it actually used FRACSURE as an identifier of source and, if it did so at all, it did so
`
`more than just sporadically; and (2) that it successfully created an association in a substantial
`
`portion of the consuming public’s mind between the alleged FRACSURE mark and itself as the
`
`source of the services under the mark (secondary meaning). Petitioner’s evidentiary showing,
`
`however, falls so woefully short on these essential elements of Petitioner’s claim that not only
`
`should Petitioner’s motion for summary judgment be denied, but the Board should also grant
`
`Registrant’s cross-motion for summary judgment.
`
`Respectfully submitted,
`
`By: /s/ Paul C. VanSlyke
`Paul C. Van Slyke
`Attorney in Charge
`Texas State Bar No. 20457000
`
`Thomas L. Casagrande
`Texas State Bar No. 24011203
`
`LOCKE LORD BISSELL & LIDDELL LLP
`
`600 Travis Street, Suite 3400
`
`Houston, Texas 77002
`Telephone: 713-226-1200
`Facsimile: 713-223-3 717
`
`Attorneys for REGISTRANT
`
`l4
`
`

`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the foregoing is being served via email and First Class Mail,
`
`postage prepaid, on June 14, 2010, on:
`
`John C. Cain, Esq.
`Wong, Cabello, Lutsch, Rutherford & Brucculeri, P.C.
`Chasewood Technology Center
`20333 SH 249, Suite 600
`
`Houston, Texas 77070
`Email: jcain@counse1ip.com
`
`/s/ Paul C. VanS1yke
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`WEATHERFORD/LAMB, INC.,
`Petitioner,
`
`V.
`
`C&J ENERGY SERVICES, INC.,
`Registrant.
`
`.
`
`.
`
`Cancellation No. 92050101
`
`Mark: FRAC-SURE
`
`REGISTRANT’S CROSS-MOTION FOR SUMMARY JUDGMENT
`
`APPENDIX A
`
`

`
`Westlavv.
`
`1999 WL 769932 (Trademark Tr. & App. Bd.)
`
`Page 1
`
`1999 WL 769932 (Trademark Tr. & App. Bd.)
`
`THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE T.T.A.B.
`
`Trademark Trial and Appeal Board
`Patent and Trademark Office (P.T.O.)
`
`LEE DRANNAN SMITHSON, DBA DRANNAN'S AND DRANNAN CO.
`v.
`
`EMSA-WERKE WULF GMBH & CO.
`
`Cancellation No. 24,163
`
`August 31, 1999
`
`Lee Drannan Smithson, dba Drannan's and Drannan Co., pro se.
`
`Laurence R. Brown of Laurence Brown & Assoc., P.C. for Emsa-Werke Wulf GmbH & Co.
`
`Before Cissel, Hairston and Chapman
`Administrative Trademark Judges.
`Opinion by Chapman
`Administrative Trademark Judge:
`
`Lee Drannan Smithson, dba Drannan's and Drannan Co., has Ffilleld a petition to cancel Registration No.
`1,816,920 for the mark TONGULA for “food tongs and spatulas.”[
`]
`
`As grounds for cancellation petitioner essentially alleges that since October 1, 19