TRADEMARKING AND BRANDING IN THE OIL AND GAS INDUSTRY
American Intellectual Property Law Association 2008 Spring Meeting May 15, 2008 InterContinental Hotel, Houston TX
P. Jay Hines Cantor Colburn LLP jhines@cantorcolburn.com
TRADEMARKING AND BRANDING IN THE OIL AND GAS INDUSTRY
I. Introduction While the title may seem a bit redundant, there is a difference between trademarks and brands. All brands function as trademarks, but not all trademarks function as brands. A brand has a certain cache over and above a mere source identifier. It has an established commercial impression that carries with it a strong secondary meaning that is recognized by consumers. Brand creation firms would never refer to themselves as trademark creation firms. They want to provide their customers with that added brand value from the get-go, or at least the potential for elevating a sourceidentifier to a brand as soon as possible. The oil and gas industry epitomizes the desire for strong brand-recognition and enforcement. This paper will explore how trademarks and brands in the oil and gas industry have contributed to the body of trademark law, how oil and gas brands have changed over time to stay modern and attractive and, finally, how oil and gas brands reflect general trends in the economy. II. Precedential Oil and Gas Trademark Court Cases
Standard Oil Co. v. U.S., 221 US 1 (1911), the historic order that Standard Oil must be dissolved, spawned numerous related trademark disputes that continue to today. For example, Humble Oil, a wholly owned subsidiary of Standard Oil of New Jersey, sought a declaratory judgment allowing it to use its ESSO mark in a five-state area historically inhabited by defendant Standard Oil of Kentucky. The district court found no likelihood of confusion as to source because of perceived differences in sound between ESSO and SO. The appellate court in Standard Oil Co. (Kentucky) v. Humble Oil & Refining Co., 363 F.2d 945 (5th Cir. 1966) reversed, expressing the likelihood of confusion analysis as follows: The test is not whether an ordinary buyer can on normal inspection tell that “ESSO” as shown on signs looks different from “Standard” or “Standard Oil” when shown on signs. Rather the test is whether normally intelligent buyers think that “ESSO” is another name for Standard Oil or think it is in fact a Standard Oil designation, and therefore, believe ESSO stations are Standard Oil stations. It is axiomatic trademark law that the proper analysis is not merely a side-by-side comparison. The court concluded that “the public believes that all of the pseudonyms for Standard Oil, [such as SOHIO] belong to the same or related companies.” Similarly, the basic proposition that similarity in any one of the triumvirate of sound, appearance and meaning between the respective marks at issue can give rise to a
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likelihood of confusion was established in Standard Oil Co. v. Standard Oil Co., 252 F.2d 65, 74 (10th Cir. 1958). On this major element of proof, the court said: It is not necessary for similarity to go only to the eye or the ear for there to be infringement. The use of a designation which causes confusion because it conveys the same idea, or stimulates the same mental reaction, or has the same meaning is enjoined on the same basis as where the similarity goes to the eye or the ear. Confusion of origin of goods may be caused alone by confusing similarity in the meaning of the designations employed. The whole background of the case must be considered. An important case to this day on the issue of trademark abandonment is Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96 (5th Cir. 1983). The district court had decided that Exxon had not abandoned the use of the trademark HUMBLE based on a trademark maintenance program with limited arranged sales. The case provides a neat history of the period up to the adoption of the name EXXON in late 1972. Humble Oil and Refining Company dated from 1917. In 1959, it merged with the other regional affiliated oil companies owned by Standard Oil Company of New Jersey and introduced the HUMBLE primary brand nationwide while retaining regional secondary brands such as ENCO in Texas and ESSO in the east. However, by 1972, it was decided that use of multiple names was confusing to customers. EXXON became the sole primary brand name. The change-over, costing more than $12 million, was complete by mid-1973. However, HUMBLE was still to be used “in ways other than as a primary brand name.” The problem was that HUMBLE was used only on isolated products or selected invoices sent to selected customers. No sales were made that depended upon the HUMBLE mark for identification of source. The 5th Circuit decided that the maintenance program, and the residual goodwill in the mark evidenced “an intent not to relinquish HUMBLE” and “an intent not to abandon HUMBLE,” but it did not address Exxon’s intent to resume use as required by Section 1127 of the Lanham Act. The duty to select a non-confusing mark was highlighted in Chevron Chemical Co. v. Voluntary Purchasing Groups, 659 F.2d 695, 704 (5th Cir. 1981), cert. denied, 457 U.S. 1126 (1982), a packaging trade dress case. Failure of a second comer to a market to do so will cause the court to “look with suspicion” and may give rise to an inference of intentional copying. The case also stands for the proposition that while evidence of actual confusion supports a finding of likelihood of confusion, absence of such evidence does not necessarily support a finding of no likelihood of confusion. “It would be exceedingly difficult to detect instances of actual confusion when … the goods are relatively inexpensive and their actual properties are exactly identical…” The ability of a word mark to infringe a design only mark was found in Mobil Oil Corp. v. Pegasus Petroleum Corp., U.S.P.Q. 890 (S.D.N.Y. 1986). Plaintiff’s wellknown “flying horse” design mark for petroleum products was infringed by defendant’s use of the trade name PEGASUS in the oil industry.
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The right of a licensor to inspect and approve goods sold under its mark was upheld in Shell Oil Co. v. Commercial Petroleum, Inc., 928 F.2d 104, 107 (4th Cir. 1991). Defendant had purchased bulk oil from plaintiff and resold it under plaintiff’s trademarks ROTELLA and SHELL ROTELLA T without adhering to plaintiff’s quality control standards. The court held that products are not genuine if plaintiff’s quality control standards are not followed and, therefore, the use amounted to trademark infringement. The notion that courts look favorably on settlement can be seen in Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070, 1080, n. 13 (5th Cir.), cert denied, 118 S. Ct. 299 (1997), involving a state of Texas dilution claim based on use of similar interlocking ”X’s,” where Exxon granted a “phase-out period” to allow defendant time to dispose of inventory. The court noted that “any resultant consumer confusion might well be abated more rapidly under the phase out agreement” than through “the delays which are part of conventional civil litigation between entrenched corporate opponents.” In Petro Shopping Centers, L.P. v. James River Petroleum, Inc., 130 F.3d 88 (4th Cir. 1997), the extent to which the strength of an incontestable registration may be considered in assessing the likelihood of confusion was addressed. Despite the Park ‘N Fly v. Dollar Park and Fly, Inc., 105 S.Ct. 658 (1985) rule that incontestably registered marks are not subject to defendant’s claim that the mark is merely descriptive, “we are free to address whether plaintiffs’ incontestable trademark is descriptive or suggestive in determining whether likelihood of consumer confusion exists in this case.” Thus, while the validity of an incontestable mark may not be challenged, the strength of the mark may be considered in determining likely confusion on the part of consumers. The oil and gas industry cases, due to the practice of franchising service stations, have influenced this aspect of trademark law over the years. For example, continuing the Standard Oil saga, Standard Oil Co. of California and Standard Stations v. United States, 337 U.S. 293, 306, 69 S. Ct. 1051, 1058 (1949) dealt with a tying issue. In Gizzi v. Texaco, Inc., 437 F.2d 308, 310 (3rd Cir.), cert. denied, 404 U.S. 829 (1971), a franchisor’s “apparent authority” over a franchisee was held to be a question for the jury. Redd v. Shell Oil Co., 425 F.2d 1054 (10th Cir. 1975) cert. denied, 425 U.S. 912 (1976), involving tying arrangements and territorial restrictions, stands for the proposition that even incontestable rights may be lost if the mark has been or is being used to violate the antitrust laws of the United States pursuant to Section 33(b)(7) of the Lanham Act. A franchise tying issue was also at the heart of Power Test Petroleum Distributor v. Calcu Gas, 754 F.2d 91 (2d Cir. 1985). III. Oil and Gas Cases at the Trademark Trial and Appeal Board
Oil and gas cases have also had, and continue to have, an influence on the right to registration before the Trademark Trial and Appeal Board. The right to base a
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trademark opposition on the ground that the mark sought is descriptive, generic or geographically descriptive came into play in Quaker Oil Corp. v. Quaker State Oil Refining Corp., 161 U.S.P.Q. 547 (TTAB 1969), aff’d, 453 F.2d 1296 (CCPA 1972) (SUPER BLEND for motor oil). In In re Shell Oil, 26 U.S.P.Q. 2d 1687 (Fed. Cir. 1993), the notion that marks must be considered in their entirety in considering likelihood of confusion, including any disclaimed matter, came into play in deciding that RIGHT-A-WAY & Design for service station oil and lubrication services is likely to be confused with RIGHT-A-WAY & Design for distributorship services in the field of automotive parts. The STANDARD mark, now nearly a hundred years after the 1911 Supreme Court decision, is still enforced at the TTAB, now on behalf of Chevron Corporation. The mark STANDARD OIL COMPANY, the subject of a use-based application owned by Standard Oil Company, Inc., a Florida corporation, for industrial lubricants and automotive lubricants was successfully opposed by Chevron Corporation. The Notice of Opposition in proceeding number 91170945, sustained September 21, 2007, claimed common law rights in the STANDARD mark for approximately 100 years and trade name rights for approximately 80 years in connection with petroleum and petroleum products. In a similar proceeding against a Madrid Protocol application for the mark STANDARD OIL, owned by an individual from Italy and covering soaps, perfumery, cosmetics, leather bags, suitcases, wallets , jeans belts, etc., the TTAB instituted the opposition (Proceeding No. 91166923) but had to dismiss because the Trademark Office failed to notify the International Bureau of WIPO that an opposition had been filed within or may be filed after the expiration of 18 months from the date the application was transmitted to the USPTO. The application went on to register and while it would be subject to a cancellation action, none has been filed. Chevron Corporation prevailed by default in an opposition to an intent-to-use application filed by Inergy Propane, LLC for the mark STAR GAS A FAMILY OF COMPANIES for liquid propane gas for use with gas appliances. The opposition was based on the Texaco five-point star in a circle, the Star T Design mark and related marks incorporating the design or the word “Star.” Exxon Mobil Corporation was recently successful in opposing an intent-to-use application to register the mark MOBILL-PAY for bill payment services. Exxon Mobil Corporation also prevailed on summary judgment in an opposition to an application to register the mark NUDIESEL for alternative fuels for motor vehicles. The grounds were that Opposer has a present and prospective right to use the term “new diesel” or its alternate spelling “nudiesel” generically and/or descriptively in its business. The oil and gas industry was not immune to the abuse of the opposition procedures by Leo Stoller. Mr. Stoller, on behalf of Stealth Industries, Inc., filed an extension of time to oppose the mark CONTINENTOIL OIL & GAS INDUSTRIES & Design in the name of Continentoil, Inc. for petroleum, gasoline, diesel fuel, crude oil, LPG, LNG, and other petroleum products, namely, asphalt, tar urea and sulfur. The
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extension stated that the potential opposer needed additional time to investigate the claim and went on to provide contact information for Continental Brand Licensing along with a description of the services provided by Continental Brand Licensing. The option of express abandonment was also mentioned. Needless to say, the application went on to register.
IV.
Brand Modernization in the Oil & Gas Industry
Vintage oil and gas brands on signage and products are hot items on ebay – the older the better. However, a review of the Trademark Office records demonstrates that the oil and gas industry, as much as any other, adheres to the proposition that change is necessary to stay competitive. Marks and brands must be continually modernized if a firm intends to maintain its position in the public consciousness. Take for example, the BP brand. The traditional BP Shield Design mark has been replaced with the yellow and green sun logo with modern lettering that carries over to the trade dress of the service stations themselves.
Another example is the modification of the SUNOCO brand over the years:
1909
1944
1954
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1968
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Present With respect to new marks in the field of exploration and production of oil and gas and production of biofuels, the following examples demonstrate the contemporary themes of creation and globalization:
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Flame designs continue to be popular in the natural gas industry:
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V.
The Greening of Oil & Gas Brands
Recent filings at the Trademark Office reflect the current emphasis on renewable fuels and environmentally conscious brands. Marks and trade names such as GREENLIGHT BIOFUELS, RAINTREE ENERGY, THE ENERGY CROP COMPANY, ALTENERGY, THE GREEN MILLENNIUM, COOLFUEL and LEADING THE WAY TO ZERO-CARBON FUELS demonstrate the trend to develop cleaner fuels to reduce greenhouse gas emissions. Many of the major brand and trade association web sites have pages on “Environment & Society” (Shell, BP), “Providing Renewable Energy” (Chevron), “Environment, Health, Safety” (American Petroleum Institute) or “Environmental Issues” (American Gas Association). The emphasis on protecting and improving the environment is unmistakable.
VI.
Conclusion
Due to longevity of big oil brands, the oil and gas industry has contributed significantly to US trademark law over the years, both in the courts and at the Trademark Trial and Appeal Board. However, the fact that trademarks change over time, both to be contemporary in appeal and to reflect current treads in the marketplace, is reflected in the online presentation of major brands and in the current filings at the Trademark Office.
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