Petroleum Exploration Company, Ltd.

Trademark Trial and Appeal Board

Jan 27, 2012

No. 77856121 (T.T.A.B. Jan. 27, 2012)

Mailed:
January 27, 2012
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Petroleum Exploration Company, Ltd.
________

Serial No. 77856121
_______

Geoffrey A. Mantooth of Decker Jones McMackin McClane Hall &
Bates, P.C. for Petroleum Exploration Company, Ltd.

Benji Paradewelai, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Bucher, Grendel and Holtzman, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Petroleum Exploration Company, Ltd. seeks registration
on the Principal Register of the mark PETEX (in standard
character format) for “oil and gas production services” in
International Class 40.1
The Trademark Examining Attorney issued a final refusal
to register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining
Attorney has taken the position that applicant’s mark, when

1 Application Serial No. 77856121 was filed on October 23,
2009, based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77856121
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used in connection with the recited services, so resembles
the mark PETEX (also in standard character format) registered
for the following goods and services:
computer software for education in the field
of petroleum services; motion picture films,
slide films, videotapes, and audiotapes for
education in the field of petroleum services
in International Class 9;

educational publications, namely, training
manuals, scripts, workbooks, and instructor
guides in the field of petroleum services in
International Class 16; and

developing educational publications, namely,
training manuals, scripts, workbooks, and
instructor guides, for others in the field of
petroleum services; production of motion
picture films, slide films, videotapes, and
audiotapes; multimedia educational software
production services in International Class
41,2

as to be likely to cause confusion, to cause mistake or to
deceive.
After the Trademark Examining Attorney made the refusal
final, applicant appealed to this Board. Applicant and the
Trademark Examining Attorney have fully briefed the issues
in this appeal.
We affirm the refusal to register.

2 Registration No. 3039408 issued to the Board of Regents, The
University of Texas System, on January 10, 2006. Section 8
affidavit accepted and Section 15 affidavit acknowledged.

Serial No. 77856121
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Arguments of applicant and the Trademark Examining Attorney
In urging registrability, applicant contends that: the
marks are dissimilar in connotation; the oil and gas
production services provided by applicant are entirely
different from the educational goods and services of the cited
registration; and the customers to whom applicant’s services
are offered are highly sophisticated, making them more than
capable of distinguishing between the two marks.
By contrast, the Trademark Examining Attorney argues
that the marks are identical; that applicant’s services, as
recited, are closely related to registrant’s goods and
services as they are of types that emanate from a single
source; that even if we should determine that applicant’s
purchasers are sophisticated or knowledgeable in the field
of oil and gas production services, it does not follow they
will be immune from source confusion under the particular
facts of this case; and that the minimal third-party
adoption of this term as proffered by applicant is not
persuasive of a different result herein inasmuch as none of
these are in applicant’s or registrant’s respective fields.
Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood of
Serial No. 77856121
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confusion is based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on this issue. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of
confusion analysis, however, two key, although not
exclusive, considerations are the similarities between the
marks and the relationship between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The Similarity of the Marks
As to the first du Pont factor in any likelihood of
confusion determination, the Trademark Examining Attorney
points out that the two marks are visually and aurally
indistinguishable. As to meaning, the term has no readily
recognized meaning as adopted by applicant or by registrant.
Neither mark has any additional elements to provide a
glimpse into the respective fields of petroleum exploration
or petroleum extension service that could provide prospective
purchasers with a different spin on the origins of these
terms. Hence, we find that the identical term will convey
Serial No. 77856121
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the same commercial impressions in both contexts, and that
this critical du Pont factor favors a finding of likelihood
of confusion.
Relationship of the Services
We turn next to the du Pont factor focused on the
relationship of the services and goods. We begin our
discussion of this factor by noting that where the
respective marks are identical, as is the case herein, the
relationship between the services and/or goods of
registrant and applicant need not be as close to support a
finding of likelihood of confusion as might apply where
differences exist between the marks. In re Opus One Inc.,
60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor
Indus., Inc., 210 USPQ 70, 78 (TTAB 1981).
On their face, registrant’s educational goods and
services all relate to “petroleum services.” Applicant’s
recitation is broadly stated as “oil and gas production
services.”
Although these goods and services are clearly
different, that is not the end of our inquiry. Rather, in
order to show the relatedness of registrant’s educational
goods and services and applicant’s oil and gas production
services, the Trademark Examining Attorney submitted for the
Serial No. 77856121
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record copies of websites demonstrating that applicant’s
services and registrant’s goods and services are of types
that emanate from a single source. For instance, Chevron
provides oil and gas production services as well as
educational videos about petroleum services, such as
“Deepwater Drilling: How It Works.”
3
It is clear that Shell not only provides oil and gas
production services, but has long taught both basic
and advanced skills to front lines workers
worldwide in oil and gas operations whether they are
employed in upstream, downstream or related industries. 4

3 http://www.chevron.com/about/ourbusiness/ and
http://www.chevron.com/stories/#/allstories/deepwaterdrilling/howitworks/ Copies
attached to Trademark Examining Attorney’s final Office Action
of August, 23, 2010.
4 http://www.shelltraining.com, now
http://www.shell.us/home/content/usa/aboutshell/projects_locations/roberts_training/cour
se_catalog/, copies attached to Trademark Examining Attorney’s
first Office Action of February 2, 2010, final Office Action of
August, 23, 2010 and attached to the denial of request for
reconsideration letter of April 12, 2011.
Serial No. 77856121
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Similarly, Chesapeake Energy Corporation touts
itself as “one of the largest producers of natural gas and
most active driller of new wells in the U.S.,” while
offering educational videos
and publication about
natural gas products.5

ExxonMobil provides oil and gas production services as
well as educational videos and
publications about natural gas. 6
Marathon claims that it
“provides liquid hydrocarbons
and natural gas to the growing
world energy markets” and has
links to educational videos.7

5 http://www.chk.com/Pages/default.aspx and
http://www.askchesapeake.com/Barnett-
Shale/Multimedia/Educational-Videos/Pages/Information.aspx,
copies of web pages attached to Trademark Examining Attorney’s
final Office Action of August, 23, 2010.
6 http://www.acpt.exxonmobil.com/Corporate/about_where_upstream_piceance.aspx
and http://www.exxonmobil.com/Corporate/energy_project_piceance.aspx copy of web
pages attached to Trademark Examining Attorney’s first Office
Action of February 2, 2010, and web pages attached to final
Office Action of August, 23, 2010.
7 http://www.marathonpetroleum.com/brand//News_and_Views/Information_Resources/
copies of web pages attached to Trademark Examining Attorney’s
final Office Action of August, 23, 2010 and attached to the
denial of request for reconsideration letter of April 12, 2011.
Serial No. 77856121
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Finally, BP provides oil and gas production services
as well as educational
videos and publications.8

While admittedly, some of the public relations videos
referenced above are not in the same league with Shell’s
extensive petroleum engineering training curriculum, for
example, the entirety of the evidence shows that the large
oil and gas production companies in the United States do
provide educational videos, educational publications and
educational services of the type listed in the cited
registration.
In addition to these websites, the Trademark Examining
Attorney points to third-party registrations entered into
the record. He argues that these registrations have
probative value to the extent that they serve to suggest
that the relevant goods and services listed therein are of a
kind that may emanate from a single source. See In re
Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB
2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc.,
6 USPQ2d 1467, 1470 at n.6 (TTAB 1988):

8 http://www.bp.com/sectiongenericarticle.do?categoryId=9027266&contentId=7049744,
copies of web pages attached to Trademark Examining Attorney’s
first Office Action of February 2, 2010 and attached to the final
Office Action of August, 23, 2010.
Serial No. 77856121
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PROVIDING ENERGY
FOR BETTER LIVING
for, inter alia, “ … printed
publications, namely, newsletters,
manuals and brochures featuring
energy, utility and information for
the energy and utility industries” in
International Class 16;
“ … regulated and non-regulated
utility services, namely, the
production of electricity and natural
gas; consulting services relating to
energy production” in International
Class 40;9 and

for, inter alia, “ … offshore oil and
gas exploration … ” in International
Class 37; and
“providing education and training
programs, namely, providing courses,
workshops, classes, seminars and
conferences in the fields of subsea
services and offshore oil and gas
exploration and production to improve
the skills, safety and quality of
subsea personnel and management” in
International Class 41.10

Moreover, as noted by the Trademark Examining Attorney,
in the event that applicant, as the junior user, were to
gain widespread exposure for its applied-for mark in the
field of oil and gas production services, it is even more
likely that over time consumers will perceive an association
between the production activities of applicant and the
educational programs of the Board of Regents of The
University of Texas System in the field of petroleum

9 Registration No. 3450832 issued to Aquila, Inc. on June 17,
2008.
10 Registration No. 3779998 issued to TETRA Technologies, Inc.
on April 27, 2010.
Serial No. 77856121
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services. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1689-90 (Fed. Cir. 1993).
Accordingly, this critical du Pont factor also favors a
finding of likelihood of confusion.
Sophistication of consumers
Applicant argues that its consumers are sophisticated
enough not to be confused. See applicant’s brief at 16-18.
However, even if prospective consumers of applicant’s
services should be deemed to be sophisticated, we find that
the legal identity between the marks and the relationship of
the goods and services involved herein clearly outweigh any
purchaser sophistication. See In re Decombe, 9 USPQ2d 1812
(TTAB 1988); and In re Pellerin Milnor Corp., 221 USPQ 558
(TTAB 1983).
The number and nature of similar marks in use on similar services
In relation to the strength of the registered mark, the
Trademark Examining Attorney and applicant disagree on what
we should conclude based on the evidence of record. The
Trademark Examining Attorney is correct in contending that
there is no probative evidence of similar marks on the
federal trademark register covering goods or services
related to those of registrant. Certainly, these third-
party registrations do not show that the term “Petex” has
Serial No. 77856121
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any descriptive significance when used in connection with
petroleum services, nor does it prove that the term “Petex”
is diluted. In fact, there is no basis upon which to
conclude that consumers encounter marks comprising the word
“Petex” so often that they could distinguish between the
marks in this case which are identical and are used in
connection with related goods and/or services. Hence, this
factor is, at best for applicant, a neutral factor.
In conclusion, we agree with the Trademark Examining
Attorney that the identical marks create identical
commercial impressions, that applicant’s services are
related to registrant’s goods and services, that with these
identical marks, even sophisticated individuals might well
be confused, and that the minimal third-party usage
proffered by applicant is not persuasive of a different
result herein.
Decision: The refusal to register under Section 2(d)
of the Lanham Act is hereby affirmed.