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`
`I
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`HERA, LLC,
`
`v.
`
`Opposer,
`
`EC&C TECHNOLOGIES, INC.,
`
`Q/E/§I\f%/\.?%/§/$7
`
`Opposition No. 91161648
`Opposition No. 91161633
`
`Applicant.
`_T_
`
`TRANSMITTAL LETTER (GENERAL)
`(With Certificate of Mailing by Express Mail)
`
`Transmitted herewith is the following document:
`
`APPL|CANT’S MOTION FOR SUMMARY JUDGMENT AND FOR SUSPENSION
`
`OF THESE PROCEEDINGS, APPL|CANT’S MEMORANDUM IN SUPPORT OF ITS
`MOTION FOR SUMMARY JUDGMENT, DECLARATION OF JOSEPH E. MUETH
`WITH EXHIBITS AND DECLARATION OF HERBERT W. SPENCER III WITH
`
`EXHIBITS (in triplicate)
`
`Applicant believes there is no fee due with this communication, however, if there
`
`is a fee due, said insufficiency should be debited to Deposit Account No. 13-4892.
`
`Dated: Februa[y11,2005
`
`
`J
`E HE. MUETH, ESQ.
`JOSEPH E. MUETH LAW CORPORATION
`225 South Lake Ave., 8”‘ Floor
`Pasadena, CA 91101
`Telephone: (626) 584-0396
`Facsimile: (626) 584-6862
`I
`'
`
`I certify that this document is being deposited on February 11, 2005
`with the U.S. Postal Service “Express Mail Post Office to Addressee”
`service under 37 C.F.R. 1.10, Express Mail Label Number ED 261718440US
`and is addressed to --
`.S,P
`nt and Trademark Office, Trademark
`.
`
`andria,Virginia22313-1451
`1451,AI
`Trial nd ppeal
`
`
`Dated: February 11, 2005
`
`IIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIII
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91161633
`Opposition No. 91161648
`
`) ) ) ) ) ) ) ) )
`
`HERA, LLC,
`
`v.
`
`Opposer,
`
`EC&C TECHNOLOGIES, INC.,
`
`Applicant.
`
`APPL|CANT’S MOTION FOR SUMMARY JUDGMENT
`
`AND FOR SUSPENSION OF THESE PROCEEDINGS
`
`Applicant, EC&C Technologies, Inc., by and through its counsel, hereby moves in
`
`these consolidated cases for Summary Judgment pursuant to Fed. R. Civ. P. 56
`
`maintaining that the Opposition filed by Opposer, Hera LLC, should be dismissed as a
`
`matter of law, there being no genuine issue as to any material fact. Since App|icant’s
`
`pending applications are “intent-to-use” and Applicant relies on the filing dates of these
`
`applications to establish prior rights to the trademarks, it is understood that the
`
`Summary Judgment would be conditional upon Applicant subsequently satisfying the
`
`requirements for registration.
`
`Applicant also requests that, pursuant to Rule 2.127(d), the Board suspend these
`
`proceedings pending determination of its Motion For Summary Judgment as of the date
`
`of submission of this motion.
`
`In the event the Board denies the Applicant's Motion for
`
`Summary Judgment, Applicant hereby requests that the testimony periods be reset no_
`
`1
`
`

`
`
`
`sooner than sixty (60) days after disposition of this motion.
`
`This Motion is made on the grounds that App|icant’s intent-to-use Applications
`
`Serial Nos. 78/2295543 and 78/295514 establish priority of right as against the Opposer
`
`and that Ammonia On Demand has become generic and cannot serve to distinguish
`
`any single source for the goods.
`
`Applicant's Motion is supported by:
`
`(I)
`
`Applicant's Memorandum in Support of its Motion for Summary Judgment;
`
`(ll)
`
`Declaration of Joseph E. Mueth and Exhibits Thereto;
`
`(Ill)
`
`Declaration of Herbert Spencer and Exhibits thereto; and
`
`(IV)
`
`The pleadings herein
`
`Wherefore, Applicant respectfully prays that its Motion for Summary Judgment be
`
`conditionally granted, and that the Oppositions be dismissed.
`
`Dated: February 11, 2005
`
`Respectfully submitted,
`
`
`
` '
`ueth, Esquire
`.
`ph E. Mueth Law Corporation
`225 South Lake Avenue, 8"‘ Floor
`Pasadena, California 91101
`
`

`
`1
`
`x.
`
`;.)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`HERA, LLC,
`
`Opposer,
`
`Opposition No. 91161633
`Opposition No. 91161648
`
`v.
`
`EC&C TECHNOLOGIES, INC.,
`
`Applicant.
`
`APPL|CANT’S MEMORANDUM IN SUPPORT OF
`
`ITS MOTION FOR SUMMARY JUDGMENT
`
`1.
`
`Introduction
`
`Applicant has moved, pursuant to Fed. R. Civ. P. 56 for Summary Judgment,
`
`based on the material facts as to which there are no genuine issues to be tried. As a
`
`matter of law, these consolidated Oppositions against U.S. Trademark Applications
`
`Serial No. 78/295543 and 78/295514 (hereinafter, the applications) for “AOD" and
`
`“Ammonia On Demand” should be dismissed.
`
`THE PRESENT OPPOSITION PROCEEDINGS ARE RIPE FOR SUMMARY
`
`JUDGMENT
`
`

`
`
`
`Summary judgment is appropriate in a trademark opposition proceeding where,
`
`as here, there are no genuine issues of material fact to be tried.
`
`in the seminal case of
`
`Pure Gold, Inc. v. Syntex (U.S.A.), lnc., 222 USPQ 741 (Fed. Cir. 1984), the Federal
`
`Circuit affirmed the TTAB’s grant of summary judgment in an opposition proceeding.
`
`Citing Exxon Corp. v. National Food Line Corp., 198 USPQ 407, 408 (CCPA 1978), the
`
`Federal Circuit explained that the basic purpose of summary judgment is that ofjudicial
`
`economy.
`
`It is against the public interest to conduct useless trials, and where the time
`
`and expense of a full trial can be avoided by the summary judgment procedure, such
`
`action is favored.
`
`In the present proceeding, the presentation of more evidence than is already
`
`available in connection with this motion could not reasonably be expected to change the
`
`conclusion that Applicant is entitled to prevail against the Oppositions.
`
`In Pure Gold, the Court encouraged the disposition of matters before the TTAB
`
`by summary judgment as follows:
`
`“The practice of the U.S. Claims Court and the former U.S. Court of Claims in
`
`routinely disposing of numerous cases on the basis of cross-motions for
`
`summary judgment has much to commend it. The adoption of similar practice is
`
`to be encouraged in inter partes cases before the Trademark Trial and Appeal
`
`Board, which seem particularly suitable to this type of disposition. Too often we
`
`

`
`
`
`see voluminous records which would be appropriate to an infringement or unfair
`
`competition suit but are wholly unnecessary to resolution of the issue of
`
`registrability of a mark.”
`
`Except for the ground of fraud, which must be proved by clear and convincing
`
`evidence, all issues before the Board in inter partes cases require the plaintiff to
`
`demonstrate by a preponderance of the evidence that the defendant is not entitled to a
`
`
`registration, See Cerveceria Centroamericana S.A. v. Cerveceria India lnc., 892 F.2d
`
`1021, 13 U.S.P.Q.2d (BNA) 1307 (Fed.Cir. 1989).
`
`THE UNCONTROVERTED FACTS
`
`Applicant filed its intent-to-use applications on September 3, 2003 for the
`
`following goods:
`
`“Systems for producing ammonia on site consisting of urea feed stock,
`
`hydrolyzers in the nature of chambers that provide a chemical reaction resulting
`
`in the decomposition of urea for use in producing ammonia to assist in various
`
`processes for controlling air pollution form the burning of fossil fuel in electrical
`
`power production facilities"
`
`Opposer filed applications on September 22, 2003 for “AOD” and “Ammonia On
`
`

`
`
`
`Demand” under U.S. Trademark Registration Application Serial No. 78/303832 and
`/
`78/303870 for the following goods:
`/
`/
`
`,/ A
`
`“Systems and/or technology for producing ammonia on site consisting of
`urea feed stock in the nature of pellets, hydrolyzers in the nature of chambers
`that.-provide a chemical reaction resulting in the decomposition of the pellets, and
`electronic precipitators for use in producing ammonia to assist in various
`processes for controlling air pollution from the burning of fossil fuel in electrical
`
`power production facilities”
`
`The alleged marks of the respective parties are identical and the goods are
`
`essentially the same. Thus, the issue reduces to a matter of priority.
`
`UNCONTROVERTED FACTS RELATING TO PRIORITY
`
`In general, the systems underlying this trademark dispute are sold to private or
`
`public utilities having fossil fueled electric power generation plants for removal of the
`
`nitrogen oxides from the combustion gases in the stack effluent.
`
`Applicant, EC&C Technologies, Inc. (EC&C) is the owner of U.S. Patent No.
`
`6,077,491 and associated patents relating to the scrubbing of power plant combustion
`
`gases using ammonia generated on demand from urea at the site to remove oxides of
`
`nitrogen. A critical condition of these systems is that the ammonia generated meet the
`
`4
`
`

`
`
`
`demand presented by the amount of nitrogen oxide present in the combustion gas.
`
`If
`
`this condition is not met, either nitrogen oxides or excess ammonia escape, neither of
`
`which is acceptable. On November 30, 2001, Applicant sued Environmental Elements
`
`Corp. for patent infringement, Civil Action No. CV O1-10331JFW (Ex), filed in the United
`
`States District Court for the Central District of California and entitled l_E£8LQ
`
`Technologies, Inc. v. Environmental Elements Corp. Environmental Elements was in
`
`the business of assembling the equipment for the scrubbing of power plant effluent and
`
`installing it in electric power plants operated by public and private utilities. After
`
`extensive discovery and pre-trial proceedings, this suit was settled by Settlement
`
`Agreement executed on September 3, 2003 with Environmental Elements Corp. being
`
`permanently enjoined from further acts of infringement. The Settlement Agreement
`
`further provided that Environmental Elements Corp. would cease forthwith all use of the
`trademarks “Ammonia On Demand” and “AOD”. A Redacted copy of the Settlement
`
`Agreement which we represent reveals all provisions relating to trademark is attached
`
`to the Spencer Affidavit as Exhibit A. Also on September 2, 2003 Applicant filed intent-
`
`to-use U.S. Trademark Application Nos. 78/295514 and 78/295543 for the mark
`
`“Ammonia On Demand” and “AOD”. This was done pursuant to the plan that one or
`
`more of Applicant's patent licenses would be licensed to use the “Ammonia On
`
`Demand” and “AOD” marks in association with licensed technology for the installation
`
`and sale of the patented systems in electric power generated plants.
`
`Prior to settlement, the Defendant in the above-identified patent infringement
`
`

`
`
`
`litigation, Environmental Elements Corp., was the patent Licensee of Opposer, Hera,
`
`LLC (in concert with Siirtec Nigi S.p.A.).and it was the practice of the licensed
`
`technology by Environmental Elements which infringed Applicant's U.S. Patent No.
`
`6,077,491 and associated patents.
`
`Hera in its Notices of Opposition alleges that it has rights in the “AOD” and
`
`“Ammonia On Demand" trademarks which pre-date September 3, 2003, by virtue of
`
`provisions in the “License Agreement”, also referred to as “Opposer License”, with
`
`Environmental Elements Corporation (EEC), allegedly pursuant to which and upon the
`
`occurrence of certain events, all rights in the trademarks would be returned to Opposer.
`
`See Notice of Opposition filed by Hera (in each Opposition) at paragraph 2 which read
`
`as follows:
`
`“AOD”, Opposition No. 91161633
`
`“To provide notice of its use of the mark AOD, OPPOSER, on 2/19/1999
`
`filed Trademark Application S.N. 7563870‘ (the ‘870 Application) for the mark
`
`AOD, to identify goods which would be defined by the instant amended
`
`description (the Goods). Shortly after the filing of the ‘870 Application,
`
`‘In Opposer’s Opposition Papers in Opposition No. 91161633, Opposer
`erroneously refers to Trademark Application Serial No. 7563870 (which should be
`75/638370) and ‘870 (which should be ‘370). Applicant refers to the correct Trademark
`Application Serial No. 75/638370 and ‘370 throughout its moving papers except in the
`present instance to avoid more confusion.
`
`

`
`
`
`OPPOSER entered into a License Agreement (the OPPOSER License) with
`
`EEC.
`
`In addition to a technology transfer, and designated rights under
`
`inventions, the OPPOSER License provided for the use by EEC of the mark AOD
`
`to designate the Goods of EEC’s manufacture.
`
`in order to facilitate such use of
`
`the mark AOD by EEC, OPPOSER, on 11/28/1999 executed an assignment of
`
`rights in the mark AOD to EEC.
`
`It is to be noted that the License Agreement
`
`provided that, upon the occurrence of certain events, all rights in the mark AOD
`
`would be returned to OPPOSER by EEC. Subsequent to the termination of the
`
`OPPOSER License, OPPOSER filed U.S. Trademark Application S.N. 78/303832
`
`for the mark AOD.”
`
`“Ammonia On Demand", Opposition No. 91161648
`
`“On or around late 1998 OPPOSER used AMMONIA ON DEMAND, to
`
`identify systems provided by OPPOSER. Shortly thereafter OPPOSER entered
`
`into a License Agreement (the OPPOSER License) with Environmental Elements
`
`Corporation (EEC).
`
`In addition to a technology transfer, and designated rights
`
`under inventions, the OPPOSER License provided for the use by EEC of the
`
`mark AMMONIA ON DEMAND to designate the products of EEC’s.
`
`It is to be
`
`noted that the License Agreement provided that, upon the occurrence of certain
`
`events, all rights in the mark AMMONIA ON DEMAND would be returned to
`
`OPPOSER by EEC. Subsequent to the termination of the OPPOSER License,
`
`OPPOSER filed U.S. Trademark Application S.N. 78/303870 for the mark
`
`7
`
`

`
`
`
`AMMONIA ON DEMAND."
`
`Pursuant to Applicant's Requests for Productions Under FRCP Rule 34, Opposer
`
`has produced redacted copies of the “License Agreement” between Hera LLC and
`
`Siirtec Nigi S.p.A. and Environmental Elements Corporation, dated June 8, 1999;
`
`Exhibit 1 to the Mueth Declaration, and an agreement entitled “Termination of
`
`Hera/SINI-EEC June 8, 1999 Agreement”, Exhibit 2 to the Mueth Declaration, which
`
`Agreement became fully executed as of September 12, 2003 when it was accepted by
`
`Siirtec Nigi S.p.A.
`
`Counsel for Hera has represented that the redacted versions of the two
`
`Agreements reveal all provisions relating to trademarks.
`
`The “License Agreement” appears to have provided that Environmental Elements
`
`would become the owner of the AOD mark and would sell systems and products
`
`embodying the licensed technology to the private and public utilities under the “AOD”
`
`mark.
`
`The “License Agreement” is silent as to “Ammonia On Demand”.
`
`It appears that
`
`the parties to the License Agreement considered Ammonia On Demand to be a generic
`
`term for any technology involving the conversion of urea to ammonia in response to the
`
`demand presented by the amount of nitrogen oxides generated by a fossil fueled
`
`

`
`
`
`electric generating power plant.
`
`The only provision of the Hera-Environmental Elements-SINI “License
`
`Agreement” (Mueth Exhibit No. 1) relevant to trademarks appears in Article 11.4 which
`
`reads:
`
`“No right, title or license is granted by, or shall be implied from this
`
`Agreement, under any trademark, tradename or copyright rights now or hereafter
`
`owned or controlled by LICENSOR; provided, however, at the request of EEC,
`
`HERA shall assign to EEC all of its right, title and interest to the trademark
`
`AODT“.
`
`Contrary to Hera’s allegation in its Notices of Opposition, the License Agreement
`
`did not provide for any reversion or subsequent transfer of any trademark rights back to
`
`Hera.
`
`The “Termination Of Hera/SINI - EEC” June 8, 1999 License Agreement” (Mueth
`
`Exhibit No. 2), subsequently entered into on September 12, 2003, appears to have been
`
`intended to terminate the patent license. This agreement is completely silent as to
`
`trademarks. By this silence, it is clear that by the agreement, Environmental Elements
`
`did not transfer any trademark rights back to Opposer, Hera.
`
`Opposer has also produced a document in response to Applicant's Rule 34
`
`9
`
`

`
`
`
`Request entitled “Assignment Of Pending Trademark/Service Mark Application”, Exhibit
`
`3 to the Mueth Declaration, dated November 28, 1999, which covers the assignment to
`
`Environmental Elements of Hera’s then pending U.S. Trademark Registration
`
`Application Serial No. 75/638370 for the mark “AOD” for “Systems for producing
`
`ammonia on site consisting of urea feed stock in the nature of pellets, hydrolyzers in the
`
`nature of chambers that provide a chemical reaction resulting in the decomposition of
`
`the pellets, and electronic precipitators for use in producing ammonia to assist in
`
`various processes for controlling air pollution from the burning of fossil fuel in electrical
`
`power production facilities.”
`
`The Assignment provides, in pertinent part:
`
`“Whereby Hera does sell, assign, transfer and set over unto
`
`Environmental Elements Corporation the entire right, title and interest in, to, and
`
`under said trademark and any Registration to be issued thereon together with the
`
`good will of the business in connection with which said mark is used.”
`
`The assigned trademark registration application (U.S. Trademark Registration
`
`Application Serial # 75/638370) was thereafter prosecuted by attorneys appointed by
`
`Environmental Elements Corporation and subsequently was granted to Environmental
`
`Elements Corporation under U.S. Trademark Registration No. 2,553,144 dated March
`
`26, 2002, Exhibit 4 to the Mueth Declaration which is the U.S. Patent and Trademark
`
`10
`
`

`
`
`
`Office file history of Registration No. 2,553,144.
`
`The Settlement Agreement between EC&C Technologies and Environmental
`
`Elements, September 3, 2003, provides (Exhibit A to Spencer Affidavit):
`
`2.3 “ENVIRONMENTAL shall discontinue all use of the names and marks
`
`“AMMONIA ON DEMAND,” “AOD”, and any name or mark confusingly similar
`
`thereto throughout the world, and ENVIRONMENTAL shall not license or
`
`authorize any other person to use such names or marks anywhere in the world.
`
`Within thirty days ENVIRONMENTAL shall file an application with the United
`
`States Patent and Trademark Office to cancel the AOD registration number
`
`2,553,144.”
`
`Pursuant to the Settlement Agreement between Applicant EC&C Technologies,
`
`Inc. and Environmental Elements Corporation, Environmental Elements filed papers
`
`with the U.S. Patent and Trademark Office requesting cancellation of U.S. Trademark
`
`Registration No. 2,553,144 on the “ground that the Registrant is no longer using the
`
`mark in connection with the goods”, Exhibit 4 to the Mueth Declaration, see “Request To
`
`Cancel Trademark Registration” therein, filed by counsel for Environmental Elements on
`
`October 6, 2003. The Patent and Trademark Office subsequently canceled Registration
`
`No. 2,553,144.
`
`11
`
`

`
`
`
`HERA HAS NO TRADEMARK RIGHTS FROM
`
`PRIOR TO APPL|CANT’S FILING DATE
`
`(1)
`
`The AOD Trademark
`
`The record shows (Mueth Exhibit 3) that Hera assigned all of its rights to the
`
`“AOD” mark, including related good will,
`
`to Environmental Elements and never got
`
`them back. To the contrary, Environmental Elements retained them and at the
`
`Settlement with Applicant, EC&C Technologies, as owner of the mark, agreed to give up
`
`all of its rights in the mark including agreeing to cancel its Federal trademark
`
`registration. Upon Environmental’s abandonment of the AOD trademark, Applicant was
`
`entitled to adopt the mark. Since Hera had previously assigned all of its rights to the
`
`AOD mark to Environmental Elements, it has no rights in the mark which inure to its
`
`benefit from a time prior to App|icant’s filing date of September 3, 2003. There is no
`
`genuine issue of material fact. Opposer’s Opposition in No. 91161633 fails as a matter
`
`of law.
`
`Once abandoned, a mark may be seized immediately and the person so doing so
`
`may build up rights against the whole world. Sutton Cosmetics (P. R.), Inc. v. Lander
`
`Q, 455 F.2d 285, 172 U.S.P.Q. 449 (2d Cir. 1972); P. Daussa Corp. v. Sutton
`
`Cosmetics (P.R.), lnc., 462 F.2d 134, 175 U.S.P.Q. 193 (2d Cir. 1972) (an abandoned
`
`mark is “fair game” for the first person to use it); Galt House, Inc. v. Home Supply Co.,
`
`
`483 S.W.2d 107, 174 U.S.P.Q. 268 (Ky. 1972); La Maur Inc. v. Block, 176 U.S.P.Q.
`
`218, 1972 WL 17843 (T.T.A.B. 1972) (parties seeking first use after formal
`
`12
`
`

`
`
`
`abandonment of IPANA toothpaste mark are governed by general rules of priority of
`
`use); Bellanca Aircraft Corp. v. Bellanca Aircraft Eng’g, 190 U.S.P.Q. 158, (T.T.A.B.
`
`1976)
`
`The Motion For Summary Judgment as to “AOD" in Opposition No. 91161633
`
`should be granted.
`
`(2)
`
`The Alleged Ammonia On Demand Trademark
`
`As to the “Ammonia On Demand” mark, Hera in its Notice of Opposition,
`
`paragraph 2, states that by the “License Agreement" (interchangeably referred to in the
`
`pleading as “Opposer License”), Mueth Exhibit No. 1, with Environmental Elements,
`
`Hera authorized Environmental Elements to use Ammonia On Demand. Applicant
`
`accordingly relies on this pleading. The fact is, however, that the “License Agreement”
`
`did not authorize any use of Ammonia On Demand. The reason for this has become
`
`obvious. At all times prior to and during the life of the Hera-Environmental Elements
`
`“License Agreement”, Hera never treated Ammonia On Demand as the trademark. On
`
`the contrary, Ammonia On Demand was treated as a generic term and “AOD” was
`
`treated as the mark. For example, Exhibit 2 to the Notice of Opposition filed by Hera in
`
`Opposition No. 91161648 which is illustrative:
`
`13
`
`

`
`EXHIBIT 2
`
`14
`
`

`
`
`
`It is strong evidence of genericness if the proponent of trademark status, here Hera,
`
`itself uses the term in a generic way, In re Sports Tigers, 213 U.S.P.Q. 670 (TTAB
`
`
`1982); Turtle Wax Inc. v. Blue Coral
`|nc., 2 U.S.P.Q.2d 1543 (TTAB 1987).
`
`Fatal to Hera's claim to prior trademark rights in “Ammonia On Demand” is the
`
`fact that there is no evidence that Hera ever used “Ammonia On Demand” as a
`
`trademark prior to late October 2003. See Hera’s Website of October 23, 2003 which is
`
`Exhibit “B” to the Spencer Declaration which continues with Hera’s usage of ammonia
`
`on demand in a non-trademark sense. The United States Department of Energy Report
`
`dated January, 2002, entitled “Processes for SCR Ammonia Production From Urea”,
`
`Spencer Declaration, Exhibit “C” further illustrates the generic nature of “Ammonia On
`
`Demand”, pp. ii,
`
`iii, 5, 13, 15, 19, 24. Also, Spencer Declaration Exhibits
`
`“E” and
`
`Unchallenged generic use by competitors is strong proof of genericness, gt,
`
`DuPont de Nemours Co. v. Yoshida International |nc., 185 U.S.P.Q. 597 (E.D.N.Y.
`
`1975); as is generic use by persons familiar with marketplace usage such as the
`
`Department of Energy, Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 207 U.S.P.Q.
`
`465 (15‘ Cir. 1980); Dan Robbins & Associates, Inc. v. Questor Corp., 599 F.2d 1009,
`
`202 U.S.P.Q. 100 (C.C.P.A. 1979); American Thermos Products Cor. v. Aladdin
`
`
`Industries |nc., 207 F. Supp. 9, 20, 134 U.S.P.Q. 98 (D. Conn. 1962), aff'd, 321 F.2d
`
`577, 138 U.S.P.Q. 349 (2d Cir. 1963); Loctite Corp. v. National Starch & Chemical
`
`Corp., 516 F. Supp. 190, 211 U.S.P.Q. 237 (S.D.N.Y. 1981). See also Scientific
`
`Applications, Inc. v. Energy Conservation Corp., 436 F. Supp. 354, 195 U.S.P.Q. 379
`
`(N.D. Ga. 1977); Birtcher Electro Medical Systems, Inc. v. Beacon Laboratories, |nc.,
`
`15
`
`

`
`
`
`738 F. Supp. 417, 16 U.S.P.Q.2d 1411 (D. Colo. 1990).
`
`Prior use of a term other than trademark can, in certain circumstances, serve as
`
`a basis for reliance in an inter partes proceeding. The requisite circumstances are not
`
`present in the instant case.
`
`In a 1994 case, PacTe| Teletrac v. T.A.B. Systems, 32
`
`U.S.P.Q.2d (BNA) 1668, 1994 WL 659186 (Trademark Trial & App. Bd. 1994), vacated,
`
`77 F.3d 1372, 37 U.S.P.Q.2d (BNA) 18997 (Fed. Cir. 1996) the Board entertained
`
`cross-motions for summary judgment regarding the issue of prior analogous use of a
`
`mark when the parties agreed there was likelihood of confusion.
`
`In granting summary
`
`judgment for the plaintiff, the Board found that the plaintiff had demonstrated prior use
`
`of the mark in a manner analogous to service mark use prior to the earliest date of first
`
`use claimed by the defendant. The Board reiterated the long-standing practice that
`
`proprietary rights sufficient to prevail in an inter partes proceeding may arise from
`
`trademark, service mark, or trade name use or from use analogous to trademark or
`
`service mark use. Such analogous use would include advertising use, press releases,
`
`and the like, even if that analogous use is not technical trademark use that would
`
`support a plaintiff’s application for registration.
`
`The Federal Circuit vacated the Board's decision and remanded the case to the
`
`Board.
`
`In its decision, the court reaffirmed the well-settled principle that an opposition
`
`can be based on prior use of a term in a manner analogous to service mark or
`
`trademark use. The court stated that such analogous use will succeed, however, only
`
`when it is of such a nature and extent as to create public identification of the term with
`
`16
`
`

`
`
`
`the product or service. The court agreed with the appellant that it is the opposer’s
`
`burden to demonstrate that the consuming public associates the term in question with a
`
`single source as the provider of the opposer’s services prior to the earliest date of first
`
`use on which the applicant would rely.
`
`The court, therefore, disagreed with the Board's conclusion that the Opposer’s
`
`prior analogous use created an association in the mind of the consuming public
`
`between the mark, the services, and a single source. Spencer Declaration, Exhibits “C-
`
`F” establish that “ammonia on demand" is not associated with a single source. The
`
`court articulated a standard that the analogous use must have “substantial impact” on
`
`the purchasing public and must create such “necessary association” with more than an
`
`insubstantial number of potential customers. Since there is no evidence of a “necessary
`
`association”, as a matter of law, Hera cannot prevail based on prior usage since the
`
`record establishes that Hera itself, several other market entrants, and the interested
`
`public concurrently used the term in a generic sense. There was no si_ng|_e source
`
`usage and Hera has not even alleged in its Opposition the existence of the factors
`
`required by PacTe|.
`
`“Ammonia On Demand" is not a coined or “invented” term.
`
`In the case of coined
`
`term, the burden of proof of genericness is on the party asserting that the term is
`
`generic, The Murphy Door Bed Co. v. Interior Sleep Systems |nc., 874 F2d 95, 10
`
`USPQ2d 1748, 1752 (CA2 1989). However, in the case of unregistered ordinary words
`
`already in use, the burden of proof is on the party claiming trademark significance, in
`
`17
`
`

`
`
`
`this case, the burden is on Hera to prove non-genericness.
`
`See, National Conference of Bar Examiners v. Multistate Legal Studies, lnc., 692
`
`F.2d 478, 216 U.S.P.Q. 279 (7"‘ Cir. 1982); Reese Publishing Co. v. Hampton
`
`
`International Communications lnc., 620 F.2d 7, 205 U.S.P.Q. 585 (2d Cir. 1980); E.R.
`
`Sguibb & Sons, Inc. v. Cooper Laboratories, lnc., 536 F. Supp. 523, 214 U.S.P.Q. 441
`
`(S.D.N.Y. 1982); A.J. Canfield Co. v. Honickman, 808 F.2d 291, 1 U.S.P.Q.2D 1364,
`
`1378 (3d Cir. 1986) (‘‘[Plaintiff] has notsustained its burden of proving that [the
`
`contested term] .
`
`.
`
`. is not generic.”); Blinded Veterans Ass’n v. Blinded American
`
`Veterans Foundation, 872 F.2d 1035, 10 U.S.P.Q.2d 1432 (D.C. Cir. 1989)(for
`
`unregistered terms, the burden is on plaintiff to prove lack of genericness); pg
`
`Shoe Co. v. Shonac Corp. 75 F.3d 1153, 37 U.S.PQ.2d 1633 (7"‘ Cir. 1996) (for
`
`unregistered terms, the burden is on the claimant to establish that it is not an
`
`unprotectable generic name); Filipino Yellow Pages, Inc. v. Asian Journal Publications,
`
`In; 198 F.3d 1143, 53 U.S.P.Q.2d 1001 (9“‘ Cir. 1999) (‘‘If a supposedly valid mark is
`
`not federally registered, however, the plaintiff has the burden of proving non-
`
`genericness once the defendant asserts genericness as a defense.”); Ale House
`
`Management, Inc. v. Raleigh Ale House, lnc., 205 F.3d 137, 54 U.S.P.Q.2d 1040 (4"‘
`
`Cir. 2000) (“[B]ecause [defendant] suggests that the term ‘ale house’ is generic and
`
`[plaintiff] has not registered it, [plaintiff] bears the burden of establishing that it is not
`
`generic.” It could not do so.); America Online, Inc. v. AT&T Corp., 243 F.3d 812, 57
`
`U.S.P.Q.2d 1902 (4"‘ Cir. 2001) (Because AOL did not register the phrase “You Have
`
`Mai|," it had to carry the burden of proving the phrase was a valid mark and was not
`
`18
`
`

`
`
`
`generic.
`
`It could not meet this burden.).
`
`The facts are unequivocal. Hera has not and cannot establish any prior rights in
`
`the unregistered words ammonia on demand which have become generic.
`
`CONCLUSION
`
`The Motion for Summary Judgement should be granted in each of the pending
`
`Opposition proceedings.
`
`Dated: February 11,2005
`
`Respe tfully submitted,
`
`
`
`225 South Lake Avenue, 8"‘ Floor
`Pasadena, California 91101
`
`19
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91161633
`Opposition No. 91161648
`
`) ) ) ) ) I I ) )
`
`HERA, LLC,
`
`v.
`
`Opposer,
`
`EC&C TECHNOLOGIES, INC.,
`
`Applicant.
`
`DECLARATION OF JOSEPH E. MUETH
`
`I, Joseph E. Mueth, declare:
`
`I am a member of the State Bar of California and attorney of record for Applicant,
`
`EC&C Technologies, Inc. in the above proceedings.
`
`Exhibit No. 1 hereto is a redacted version of a “License Agreement” between
`
`Hera LLC and Siirtec Nigi S.p.A. and Environmental Elements Corporation dated June
`
`8, 1999. The “License Agreement” was produced by counsel for Opposer, Hera LLC, in
`
`response to our FRCP Rule 34 Requests for Production. Counsel for Hera has
`
`represented that the redacted version is complete in regard to the issues in these
`
`proceedings.
`
`Exhibit No. 2 is a redacted version of an agreement entitled “Termination of
`
`

`
`
`
`Hera/Sini - EEC June 8, 1999 Agreement". This agreement was also produced by
`
`counsel for Hera LLC in response to our Rule 34 Requests. Counsel has represented
`
`that the redacted version is complete in regard to the issues in these proceedings.
`
`Exhibit No. 3 is a copy of “Assignment Of Pending Trademark/Service Mark
`
`Application”, dated November 28, 1999, relating to U.S. Trademark Application No.
`
`75/638,370 which subsequently issued to Environmental Elements Corporation under
`
`U.S. Trademark Registration No. 2,553,144. This Assignment was also produced by
`
`counsel for Hera in response to our Rule 34 Requests.
`
`Exhibit No. 4 is a copy of the file history of U.S. Trademark Registration No.
`
`2,553,144 as provided by the U.S. Patent and Trademark Office.
`
`I hereby declare that all statements made herein of my own knowledge are true
`
`and that all statements made on information and belief are believed to be true; and
`
`further that these statements were made with the knowledge that willful false statements
`
`and the like so made are punishable by fine or imprisonment, or both, under Section
`
`1001 of Title 18 of the United States Code and that such willful false statements may
`
`jeopardize the validity of the application or any trademark issued thereon.
`
`Dated: Q\//"C95,
`
`7Mw/4
`
`J
`
`E. Mueth
`
`

`
`
`
`LICENSE AGREEMENT
`
`TI-HS AGREEMENT is made the dates and year indicated below, and effective the 8th day of
`June, 1999, by and between, HERA, LLC, a Delaware limited liability company having a
`principal place of business at Lake Forest, California, U.S.A., and SIIRTEC NIGI S.p.A., an
`Italian Company, having a principal place of business in Milano, Italy (HERA, LLC and
`SHRTEC NIGI being individually referred to as “HERA” and “SINI” respectively, and being
`collectively referred to as LICENSOR);
`
`AND
`
`23. Delaware Corporation, having a
`ENVIRONIVEENTAL ELEMENTS CORPORATION,
`principal place ofbusiness at Baltimore, Maryland, U.S.A. (EEC).
`
`WHEREAS
`
`the development of design, operation, system and control
`A. LICENSOR is engaged in:
`parameters for certain products (defined in Art.
`1.3 as LICENSED PRODUCTS);
`the
`development of marketing and sales presentations and the preparation of proposals and
`information to
`users
`and
`suppliers of
`the LICENSED PRODUCTS;
`substantial
`commercialization efforts concerning the LICENSED PRODUCTS; and the submission and
`prosecution of patent applications concerning the LICENSED PRODUCTS; and other related
`activities.
`
`B. EEC wishes to obtain a license and support from LICENSOR in order to commercialize the
`LICENSED PRODUCTS.
`
`C. LICENSOR is ready, willing and able to grant such a License and to provide such support.
`
`THE PARTIES HAVE AGREED AS FOLLOWS:
`
`1.0 DEFINITIONS
`
`-
`
`-
`
`-
`
`1.1
`
`1.2
`
`1.3
`
`lofl9
`iii
`_ _ /@ $29 EXHIBIT --1"
`
`
`
`
`‘\—
`
`L. _
`
`.
`
`._ ,;
`
`

`
`
`
`'9
`
`1.4
`
`LICENSED PRODUCTS shall be the following:
`
`1.4.1
`
`(including urea storage, mixing, handling,
`and processes
`Systems
`ammonia generation, and ammonia delivery subassemblies) for generating
`ammonia from urea on-site and on demand, primarily for supplying
`ammonia for particulate and gaseous emissions control, and also in other
`areas of substantial demand for ammonia.
`
`1.4.2 Subassemblies, components and services for the systems and processes
`specified in Art. 1.4.1.
`
`1.4.3
`
`Such other products as the parties may agree upon in writing.
`
`1.4.4 Repair, spare and rep

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