Lurgi GmbH

Trademark Trial and Appeal BoardJun 20, 2012

No. 77534583 (T.T.A.B. Jun. 20, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Mailed: June 20, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Lurgi GmbH ________ Serial No. 77534583 _______ Raymond R. Ferrera of Adams and Reese LLP for Lurgi GmbH. Henry S. Zak, Trademark Examining Attorney, Law Office 117 (Brett Golden, Managing Attorney). _______ Before Quinn, Kuhlke and Cataldo, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, Lurgi GmbH, filed an application to register the mark SULFREEN in standard characters on the Principal Register for the following services: building, installation and maintenance of industrial plants in International Class 37; and research and development in the field of chemistry, in particular in the field of sulfur recovery from sulfur-containing gases; services of an engineer; development, planning, construction design and technical project planning of industrial plants, devices and Ser. No. 77534583 2 methods in the field of analytical chemistry and synthesis, as well as corresponding advice, namely, technical consulting in the technology field of sulphur-containing gases, in particular in the field of sulfur recovery from sulfur- containing gases; performance and evaluation of chemical analysis; performance and evaluation of chemical synthesis; issuance of technical expert opinions in the technology field of sulphur recovery from sulphur-containing gases in International Class 42.1 The trademark examining attorney initially rejected the promotional brochure, entitled Lurgi Sulfur Management, submitted as a specimen with applicant’s statement of use on the ground that it fails to indicate use of the mark as a service mark in connection with the recited services, but rather “showed use of the term SULFREEN as a process identifier.”2 In response, applicant submitted substitute specimens, described as “two brochures, and a Client proposal.”3 The brochures are entitled Lurgi TGT Processes and New Operational Results from SULFREEN® Plants4 and Gas Processes 2006, and the client proposal is entitled Lurgi 1 Application Serial No. 77534583 was filed on July 30, 2008, based on applicant’s allegation of a bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act. Applicant filed a statement of use on March 4, 2010 asserting 1985 as a date of first use of the mark in commerce in connection with both classes of services. 2 Examining attorney’s brief, unnumbered page 2. 3 Applicant’s September 8, 2010 communication, unnumbered page 3. 4 Applicant claims ownership of prior Registration No. 929544 for the mark SULFREEN for “chemical apparatus for de-sulfurizing gases.” Ser. No. 77534583 3 Sulphur Recovery Unit for Exxon Mobil. The examining attorney rejected these substitute specimens, asserting that they consist of “technical conference papers, proposal for a sulfur recovery unit presented to Exxon Mobil and an advertisement labeled ‘gas Processes 2006’”5 again on the ground that they show use of SULFREEN as a process, and further based upon the “failure of the conference papers to function as proper specimens in the sale or advertising of services.”6 When the examining attorney made final the requirement that applicant submit an acceptable specimen of use, applicant appealed. Applicant and the examining attorney filed main briefs and applicant filed a reply brief. Our primary reviewing court has held that a "service" is "the performance of labor for the benefit of another." See In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985). The recited services involved herein clearly are a "service" under this definition, and we will presume that applicant in fact renders such services. However, the issue in this case is not whether applicant’s activities constitute "services," or whether applicant in fact provides those services. Rather, the issue is whether 5 Examining attorney’s brief, unnumbered page 2. 6 Id. Ser. No. 77534583 4 the specimens of record demonstrate use of the mark as a service mark for those services. Trademark Rule 2.88 provides, in part, that a statement of use must include one specimen showing the mark as used on or in connection with the sale or advertising of the goods or services in commerce. See 37 C.F.R. §2.88(b)(2). Trademark Rule 2.56(b)(2) specifies that a "service mark specimen must show the mark as actually used in the sale or advertising of the services." See 37 C.F.R. §2.56(b)(2). Section 45 of the Trademark Act provides, in part, that a service mark is used in commerce "when it is used or displayed in the sale or advertising of services and the services are rendered in commerce...." See 15 U.S.C. §1127. To be an acceptable specimen of use of the mark in the sale or advertising of the identified services, there must be a direct association between the mark sought to be registered and the services specified in the application, and there must be sufficient reference to the services in the specimens to create this association. See In re Monograms America Inc., 51 USPQ 1317 (TTAB 1999). It is not enough that the term alleged to constitute the mark be used in the sale or advertising; there must also be a direct association between the term and the services. See Ser. No. 77534583 5 In re Compagnie Nationale Air France, 265 F.2d 938, 121 USPQ 460 (CCPA 1959); In re Johnson Controls Inc., 33 USPQ2d 1318 (TTAB 1994); and Peopleware Systems, Inc. v. Peopleware, Inc., 226 USPQ 320 (TTAB 1985). See also In re Adair, 45 USPQ2d 1211 (TTAB 1997). The mark must be used in such a manner that it would be readily perceived as identifying the source of such services. In re Advertising & Marketing Development, Inc., 821 F.2d 614, 2 USPQ2d 2010 (Fed. Cir. 1987); and In re Metrotech, 33 USPQ2d 1049 (Com’r Pats. 1993). When appropriate, the Board has been fairly flexible in accepting service mark specimens. See In re Ralph Mantia Inc., 54 USPQ2d 1284 (TTAB 2000); and In re Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992). It is settled that if a term is used only as the name of a process it does not function as a mark. See In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (CCPA 1973). However, a term can be used as the name of a process and also function as a mark for services. That is to say, use of a term in connection with a process does not prevent such term from designating more than a process. See In re Produits Chimiques Ugine Kuhlmann, 190 USPQ 305 (TTAB 1976); and In re Stafford Printers, Inc., 153 USPQ 428 (TTAB 1967). Thus, the issue before us is whether any of the specimens of record create a direct association Ser. No. 77534583 6 between applicant’s SULFREEN mark and the services specified in the application, or whether they simply use SULFREEN in connection with a process or goods. This determination necessarily requires a consideration of the submitted specimens. The original specimen submitted with applicant’s statement of use, excerpted below, is a brochure entitled Lurgi Sulfur Management: MAXISULF® AND SULFREEN® A very efficient and low-budget SULFREEN tail gas treatment process is MAXISULF. It is basically a one-stage (one adsorber, one regenerator) SULFREEN unit with an open regeneration loop. The regeneration gas is fed into the adsorber together with the Claus tail gas, whereas in the SULFREEN process the regeneration gas is recycled. With MAXISULF, yields of up to 98.5% can be achieved. The SULFREEN process is a catalytic tail gas process which has been successfully employed in more than 45 Claus plants. This SULFREEN process permits sulfur yields to be boosted to over 99.0%. For even higher yields, a second adsorber stage can be added. Advantages of the SULFREEN® Processes Continuation of catalytic Claus process No chemicals/solvents needed Increase of sulfur recovery rate step by using existing SULFREEN equipment and just adding more catalytic stages. We agree with the examining attorney that the original specimen displays the term SULFREEN in connection with a gas treatment process, but fails to create an association between SULFREEN and the recited services. The specimen Ser. No. 77534583 7 does refer to “existing SULFREEN equipment.” However the specimen does not contain sufficient information from which we may associate any of applicant’s services with the mere mention of such equipment. As a result, the specimen originally submitted with applicant’s statement of use displays the term SULFREEN only as the name of a process, and not as a service mark. See In re Universal Oil Products Co., supra. We turn then to applicant’s three substitute specimens. The first, entitled Lurgi TGT Processes and New Operational Results from SULFREEN® Plants, is excerpted below: … Among the technologies mostly applied, the SULFREEN process ranks in a predominant position: there are, in total, nearly 50 SULFREEN units for processing CLAUS tail gasses from sulphur plants with capacities ranging from 5 to 2200 tons of sulphur per day in operation or under design. … A special feature especially of the improved SULFREEN processes is, that these processes can easily be realised by extension of already existing SULFREEN units. Doing this, for example in case of more stringent authority regulations, a higher sulphur recovery efficiency can be achieved by a moderate additional investment. … The SULFREEN process and/or its modifications are already used worldwide in 46 plants since 1970. … Plant Concept As shown on the process scheme SULFREEN plants essentially consist of at least two reactors filled with the catalyst and of the regenerating equipment such as regeneration gas blower, regeneration gas heater and sulphur condenser which simultaneously operates as waste heat Ser. No. 77534583 8 boiler. For SULFREEN plants with larger tailgas throughput, it is advantageous to increase the number of reactors to three and to operate two of them in parallel in the adsorption (or sulphur formation) mode of operation. … Operational Results from the latest SULFREEN reference plants The SULFREEN plant of SIARKOPOL One of the largest SULFREEN plants in Europe is in successful operation since 1993. It is designed for cleaning the tail gases from the CS2-production plant of SIARKOPOL in Poland. Due to the size of the plant – the gas throughput is about 50.000Nm3h – the three reactor concept was chosen. Figure 9 shows the SULFREEN reactors with the related pipe works … . For this special case, Lurgi delivered the basic engineering and supervising services as well as proprietary equipment such as special blowers and valves, the inline burner for regeneration gas and the necessary catalyst filling of the reactors. Applicant argues this specimen is a brochure prepared by its affiliate (Lurgi Bamag Gmbh) and disseminated at a sulfur industry conference to advertise its services to attendees, which include “representatives of every commercial and technical discipline in the industries which produce and use both sulphur and sulphuric acid.”7 Applicant further submitted with its request for reconsideration pages from the internet web site of the sponsor of the convention advertising it as “THE WORLD’S 7 Applicant’s brief, p. 7. Ser. No. 77534583 9 LEADING SULPHUR AND SULPHUIC ACID ANNUAL EVENT.”8 The internet advertisement further states “Concurrently with the conference, there will be a complementary exhibition of products, technology, equipment, and literature for the sulphur and sulphuric acid industries.”9 In addition, the advertisement states “You can choose from various sponsorship packages, which include exhibition space, additional events and conference packs.”10 The examining attorney argues that this specimen is merely an academic technical paper that is not used by applicant to advertise its services. Rather, the examining attorney maintains that “this document was created to report on a common industry problem …”11 and “is silent about the specific services rendered by the applicant under the term SULFREEN.”12 Based upon examination of the specimen itself and the third-party internet web pages advertising the event for which the specimen was produced, we find that while it is presented in the manner of a technical paper, the Lurgi TGT 8 Applicant’s April 14, 2011 request for reconsideration, Exhibit A. We note that applicant did not submit this exhibit as an additional substitute specimen, but rather to provide evidentiary support for its position that the Lurgi TGT Processes … specimen is a brochure. 9 Id. 10 Id. 11 Examining attorney’s brief, p. 6-7. 12 Id. at 7. Ser. No. 77534583 10 Processes and New Operational Results from SULFREEN® Plants specimen also serves as advertising in the same manner as a brochure would in another type of industry. We, therefore, find the form of the specimen to be sufficient to serve as a specimen of use for services. However, we again find that the specimen displays the term SULFREEN in connection with gas treatment processes, and not as a service mark. This specimen also displays SULFREEN as a mark in connection with “units” and “plants.” As noted infra, applicant owns a registration for SULFREEN for goods in International Class 9, namely, “chemical apparatus for de-sulfurizing gases,” and this brochure appears to display SULFREEN in connection with such goods, namely, de-sulfurizing units and plants. However, the specimen does not display SULFREEN in such a manner that it would be readily perceived as identifying the source of the identified services. The specimen does indicate that “[f]or this special case, Lurgi delivered the basic engineering and supervising services as well as proprietary equipment …” However, the specimen fails to display SULFREEN in connection with these services. Rather, the services are recited in connection with applicant’s name and apparent house mark, i.e., Lurgi. Thus, while this specimen does display the term SULFREEN as a mark in Ser. No. 77534583 11 connection with goods as well as in connection with a process, the specimen fails to create the requisite association between the term SULFREEN as a mark in connection with the recited services. Applicant further submitted as a substitute specimen a one-page “brochure” that appears to be from an internet website entitled Gas Processes 2006. The specimen is excerpted below: SULFREEN Installations: More than 75 SULFREEN units – for processing tail gases of Claus plants, ranging from 5 tpd to 2,200 tpd of sulfur – are in operation or under design. First, it is not at all clear whether the source of this specimen is applicant or a third party. Even assuming that applicant is the source of this website, the specimen displays SULFREEN in connection with “units” that would appear to be the goods for which it has obtained prior registration. There is no mention of any of the services recited in the involved application let alone an association between these services and the term SULFREEN. The specimen otherwise displays SULFREEN in connection with various sulfur gas processes. Finally, applicant submitted a third substitute specimen entitled Proposal Sulphur Recovery Unit for Exxon Mobil. The specimen is excerpted below: Ser. No. 77534583 12 The SRU will consist of the following units: Claus unit based on Lurgi’s Claus technology, Tail Gas Treating unit based on Lurgi’s proprietary SULFREEN® technology, Incineration unit. … While processing tail gas in one of the SULFREEN® reactors, the other reactor is regenerated. Regeneration is carried out in a closed loop where the hot regeneration gas, flowing from the top to the bottom of the catalyst bed, vaporizes the previously adsorbed sulfur. Again, this specimen displays SULFREEN as a mark in connection with goods, e.g., “reactors” but not with any of the recited services. Page 1 of the proposal discusses “scope of engineering services” but does not mention such services in connection with SULFREEN, but rather with applicant’s apparent house mark, Lurgi.13 Thus, there is no association in the specimen between SULFREEN and such services. In summary, upon review of the original and substitute specimens of use, we find that SULFREEN is used as a mark in connection with goods, but not in connection with the recited services. The specimens otherwise only use SULFREEN to identify the process by which applicant desulfurizes gases. In each instance SULFREEN is identified as a process for processing tail gases from sulfur plants, but never as a mark in connection with the Ser. No. 77534583 13 recited services. There is no direct association between applicant's offer of the applied-for services and the term SULFREEN. See, for example, In re HSB Solomon Associates, LLC, 102 USPQ2d 1269 (TTAB 2012). In view thereof, as used in the specimens of record SULFREEN serves only to identify a process or goods but not the applied-for services and hence is not registrable. The fact that the SULFREEN process may be used by applicant in the performance of its services does not transform the process into a service or associate the term SULFREEN with the recited services such that it serves as a source identifier rather than simply the name of a process. Id. Similarly, applicant’s use of SULFREEN in connection with goods does not render the term a service mark used in connection with the recited services. Decision: The refusal to register under Sections 1 and 45 of the Trademark Act is affirmed. 13 We observe that while the entire proposal is over 40 pages in length, only the first 8 pages are present in the record.