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`/._____.————————-*‘\
`
`TTAB
`
`THIS OPINION IS
`
`CITABLE AS PRECEDENT
`
`NOT
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`lms
`
`Mailed: March 21, 2006
`
`Opposition Nos. 91161633
`
`~cz
`
`7’ S/2% 0
`
`91161648
`
`HERA, LLC
`
`V}
`
`EC&C Technologies,
`
`Inc.
`
`Before Hohein, Walters and Walsh,
`Administrative Trademark Judges.
`
`By the Board:
`
`Applicant, EC&C Technologies, Inc., filed two
`
`applications on September 3, 2003: One to register the mark
`
`AOD1 and one to register the mark AMMONIA ON DEMAND,2 both
`
`for “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 the urea 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" in International Class 11.
`
`The applications
`
`were opposed by Hera, LLC on August 5 and 6, 2005,
`
`
`1 Serial No. 78295543, alleging a bona fide intention to use the
`mark in commerce.
`
`Illllll|||||llllllllll|||||ll|1l||ll\|||||Illlllll
`
`03-30-2006
`U.S. Patent & TMOVC/TM Mai| Rcpt D1. #72
`
`

`
`<3
`
`Opposition Nos. 91161633 and 91161648
`
`respectively, on the ground that there is a likelihood of
`
`confusion between applicant's marks and opposer’s prior use
`
`of the same marks for the same goods.3
`
`This case now comes up on applicant's motion for
`
`summary judgment on the basis of priority of use, filed
`
`February 15, 2005. As grounds for its motion, applicant
`
`alleges that opposer assigned its rights in the AOD mark,
`
`including the then—pending application,
`
`to a third party in
`
`1999;
`
`that the registration that issued for the mark was
`
`subsequently surrendered in 2003; and that there is no
`
`evidence of use by opposer before applicant's constructive
`
`use date of September 3, 2003. As for the AMMONIA ON DEMAND
`
`mark, applicant contends that opposer has never treated
`
`those terms as a mark, and that because opposer has not
`
`established that such terms function as a trademark, it
`
`cannot establish priority of use.
`
`Opposer responds, and contends,
`
`inter alia,
`
`that
`
`opposer has prior use of AOD since 1998 “individually or via
`
`use by its licenseem” and that it believes the AMMONIA ON
`
` —:-
`
`2 Serial No.78295514, alleging a bona fide intention to use the
`mark in commerce, and disclaiming the word “Ammonia”.
`3 Opposer filed two applications to register the marks claimed in
`its notice of opposition for the same goods listed in the opposed
`applications on September 22, 2005, claiming dates of first use
`anywhere and first use in commerce of November 1, 1998. Serial
`No. 78303832 is for the mark AOD, and Serial No. 78303870 is for
`the mark AMONIA ON DEMAND with “Ammonia” disclaimed. Both
`applications are presently suspended pending a decision in these
`consolidated proceedings.
`
`

`
`or
`
`opposition Nos. 91161633 and 91161648
`
`DEMAND words are associated with opposer or its former
`
`licensee.
`
`The burden is on the party moving for summary judgment
`
`to demonstrate the absence of any genuine issue of material
`
`fact, and that it is entitled to summary judgment as a
`
`matter of law.
`
`Fed. R. Civ. P. 56(c).
`
`See also Celotex
`
`Corp. V. Catrett, 477 U.S. 317 (1986).
`
`The evidence of
`
`record and any inferences, which may be drawn from the
`
`underlying undisputed facts, must be viewed in the light
`
`most favorable to the non—moving party.
`
`See Olde Tyme Foods
`
`Inc. V. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed.
`
`Cir. 1992).
`
`In considering the propriety of summary
`
`judgment,
`
`the Board may not resolve issues of material fact
`
`against the non—moving party; it may only ascertain whether
`
`such issues are present.
`
`See Opryland USA, Inc. V. Great
`
`American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471
`
`(Fed. Cir. 1993); and Lloyd's Food Products Inc. V. Eli's
`
`Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993).
`
`The AOD Mark
`
`In support of its position that there is no genuine
`
`issue of material fact regarding opposer’s lack of priority
`
`in the use of the AOD mark, applicant has provided as
`
`evidence:
`
`(1) a copy of the file wrapper of a prior intent-
`
`to—use application filed by opposer on February 17, 1999;
`
`

`
`Opposition Nos. 91161633 and 91161648
`
`(2) opposer’s patent licensing agreement4 with a third
`
`party, Environmental Elements, Corp.
`
`(hereinafter
`
`“Environmental”), dated June 8, 1999;
`
`(3) a copy of the
`
`assignment of opposer’s prior applications to register AOD
`
`to Environmental Elements,6 dated November 29, 1999;
`
`(4)
`
`the
`
`declaration of Herbert W. Spencer III, an officer of
`
`applicant, providing a redacted copy of a litigation
`
`settlement agreement of a patent infringement suit between
`
`applicant et al. and Environmental Elements, dated October
`
`3, 2003; and (5) a copy of Environmental Elements surrender
`
`of the registration that issued from opposer’s prior
`
`application.7
`
`4 This is a redacted copy of the license agreement between Hera,
`LLC et al. and Environmental Elements, executed June 8, 1999. It
`was provided to applicant in response to discovery and counsel
`for Hera represented that the redacted version is complete in
`regard to the issues in these proceedings.
`It is a patent
`license agreement to the extent it licenses “products.” Section
`11.4 deals with trademarks, stating that no “right, title or
`license is granted by, or shall be implied from this Agreement
`under any trademark,
`tradenamem”.
`
`5 Application Serial No. 75638370, filed by Hera, LLC on February
`17, 1999, for the mark AOD for the same goods in the current
`applications, claiming a bona fide intention to use the mark in
`commerce under § 1(b). This application was assigned to
`Environmental on November 29, 1999. Environmental filed a
`statement of use on September 19, 2001, claiming dates of first
`use anywhere and first use in commerce of May 31, 2000.
`Registration No. 2553144 issued to Environmental Elements on
`March 26, 2002.
`
`6 Recorded at Reel 2001/Frame 0005 on December 7, 1999, executed
`November 28, 1999,
`from Hera, LLC to Environmental Elements Corp.
`
`7 Reg. No. 2553144 was surrendered on October 3, 2003 and
`cancelled under Section 7(e) on November 18, 2003.
`
`

`
`Opposition Nos. 91161633 and 91161648
`
`In response to this prima facie showing as to priority
`
`of use of the mark, opposer, as the non-moving party, has
`
`provided two declarations:
`
`one from Howard E. Sandler,
`
`counsel and an officer of opposer, and one from Felix E.
`
`Spokoyny, an officer of opposer. These declarations state
`
`the declarants’ beliefs as to the use of the marks and are
`
`not supported by exhibits.3
`
`Having carefully considered the evidence and arguments
`
`submitted by the parties in connection with the motion as to
`
`the AOD mark, we find that there is no genuine issue of
`
`material fact that when opposer transferred its rights in
`
`the AOD mark and its prior application to Environmental, it
`
`thereby assigned away any rights it may have had in the mark
`
`along with the application.
`
`To establish its prior use, opposer argues that
`
`Environmental’s use of the mark inured to its benefit
`
`because Environmental was its licensee. However,
`
`this
`
`argument fails because Environmental was not a trademark
`
`
`
`8 While opposer attached exhibits to its notices of opposition,
`Trademark Rule 2.122(c)(2) specifically provides with respect to
`exhibits attached to pleadings that:
`"Except as provided in
`paragraph (d)(l) of this section, an exhibit attached to a
`pleading is not evidence on behalf of the party to whose pleading
`the exhibit is attached unless identified and introduced in
`evidence as an exhibit during the period for the taking of
`testimony." Thus, because the exhibits to the notices of
`opposition were not specifically introduced in support of
`opposer’s response to the motion for summary judgment,
`they are
`not of record and do not constitute evidence.
`TBMP Sections 317
`and 704.05(a).
`Even if the Board were to consider such exhibits,
`however, it would not change the decision herein.
`
`

`
`Opposition Nos. 91161633 and 91161648
`
`licensee of opposer. Environmental owned the mark, and any
`
`use of the mark was its own and did not
`
`inure to opposer’s
`
`benefit.
`
`Thus, opposer lost any rights it had in the mark
`
`when it assigned it to Environmental. Moreover, even if the
`
`exhibit pertaining to the October 3, 2003 “Proposal A-1308”
`
`(ex.
`
`6 to Notice of Opposition)was considered to be evidence
`
`which is of record, such date is after applicant's
`
`constructive use date of September 3, 2003.
`
`opposer
`
`therefore has not established priority of use, and
`
`accordingly, applicant's motion for summary judgment is
`
`hereby granted as to the AOD mark.
`
`The AMMONIA ON DEMAND Mark
`
`Applicant has provided the following evidence,
`
`in
`
`support of its position that opposer does not have priority
`
`in the use of the “ammonia on demand" mark, and that there
`
`is no genuine issue of material fact as to opposer’s lack of
`
`priority:
`
`the declaration of Herbert W. Spencer
`(1)
`III, an officer of applicant, who, with
`supporting exhibits, states that he:
`
`“conducted a search of the advertising,
`literature and websites of companies in
`the field of providing or using systems
`involving the conversion of urea to
`ammonia to meet the demand for ammonia
`needed to scrub nitrogen oxides from
`the combustion gas effluent of fossil
`fueled electric generation power
`plants. There is no indication that
`the term “ammonia on demand” was ever
`used to signify a single source prior
`to late 2003."
`
`

`
`Opposition Nos. 91161633 and 91161648
`
`(dec. p. 1-2);
`
`(2) a Department of Energy Report showing the
`use of the words “ammonia on demand” to be used
`
`descriptively and applicable to more than one
`source of this technology (ex. C of dec.);
`
`(3) Internet search results showing
`descriptive usages of the term (exhibits D — F of
`dec.); and
`
`(4) a redacted copy of the patent litigation
`settlement between applicant and Environmental
`whereby Environmental agreed to:
`
`“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.”
`
`(Ex. A to Spencer Dec. para. 2.3).
`
`In response, and in support of opposer’s claim of
`
`ownership and prior use of “Ammonia on Demand” as a mark,
`
`opposer has provided two declarations, one from Howard E.
`
`Sandler, an officer of opposer, and one from Felix E.
`
`Spokoyny, also an officer of opposer. Both declarations,
`
`unsupported by exhibits, state:
`
`“wit is clear in my mind
`
`that the consuming public identifies these marks with
`
`opposer or its former licensee” and contends that
`
`applicant's “exhibits C—F demonstrate such trademark use.
`
`H9
`
`in its brief, opposer argues that “the prior
`Additionally,
`
`
`9 Those exhibits were submitted through the declaration of
`Herbert Spencer,
`in support of applicant's motion for summary
`judgment.
`
`

`
`Opposition Nos. 91161633 and 91161648
`
`pleadings in this case are replete with examples of
`
`opposer’s prior use of the mark since 1998, either
`
`individually, or via use by its licensee Environmental” (Br.
`
`p. 7);” and that “customers consistently refer to the
`
`Ammonia on Demand and/or AOD system as the system
`
`represented by the design and manufacture of the opposer, or
`
`of opposer’s prior Licensee, Envionmental".
`
`(Br. p. 7).
`
`Further, opposer discusses “several matters
`
`that are
`
`"11
`
`unsupported, and,
`
`in fact, controverted by the evidence of
`
`record.
`
`Federal Rule of Civil Procedure 56(c) provides:
`
`“mThe judgment sought shall be rendered
`forthwith if the pleadings, depositions,
`answers to interrogatories, and
`admissions on file,
`together with the
`affidavits,
`if any,
`show that there is
`no genuine issue as to any material fact
`and that the moving party is entitled to
`ajudgment as a matter of law.”
`
`
`
`” Opposer does not specify what evidence is in the record which
`it considers to constitute “replete with examples”.
`The only
`evidence of prior use of the mark since 1998 was provided by
`applicant inasmuch as opposer’s exhibits to its Notices of
`Opposition cannot be considered evidence under Trademark Rule
`2.122(c)(2) since the exhibits are not part of the record.
`
`that when opposer terminated its patent
`” These “matters” are (1)
`license agreement with Environmental, “it was always an
`understanding amongst
`[sic] opposer and Environmental that
`termination for breachm or otherwise withdrawal by Environmental
`from the AOD/Ammonia on Demand system business would result in a
`return of the proprietary elements to opposer,
`including the
`trademarks and good will,
`[as] opposer requested Environmental to
`make the assignment of the trademarks in question as a part of
`the written settlement.”; and (2)
`that "the return of the
`trademarks was discussed, and understood by opposer to be orally
`agreed to .".
`(Br. at pages 5-6).
`
`

`
`Opposition Nos. 91161633 and 91161648
`
`Federal Rule of Civil Procedure 56(e) requires a non—moving
`
`party to go beyond the pleadings and to designate “specific
`
`facts showing that there is a genuine issue for trial.”
`
`Celotex Corp. V. Catrett, supra at 324.
`
`In its response to the motion, opposer has not provided
`
`any exhibits in support of its affidavits nor identified
`
`those portions of the record before the Board that show that
`
`it has used “Ammonia on Demand” as a trademark prior to
`
`October 23, 2003.
`
`To raise a genuine issue of material
`
`fact, opposer must rely on specific facts that establish the
`
`existence of an association of “Ammonia on Demand” with
`
`opposer as a “single source" prior to applicant's
`
`constructive use date of September 3, 2003.
`
`See PacTel
`
`Teletrac V. T.A.B. Systems, 32 USPQ2d 1668, 1671 (TTAB
`
`1994). Opposer’s declarations merely state opinions and do
`
`not provide specific facts in support of its position. And,
`
`again, opposer cannot rely on Environmental’s use of the
`
`term, as Environmental was a patent licensee, not a
`
`trademark licensee, so any use of the trademark by
`
`Environmental does not
`
`inure to the benefit of opposer.
`
`Additionally,
`
`the evidence shows that opposer assigned its
`
`trademark rights to Environmental without qualification, and
`
`that, as a result of Environmental relinquishing those
`
`

`
`Opposition Nos. 91161633 and 91161648
`
`rights through the federal litigation settlement, it had no
`
`rights to assign back to opposer.”
`
`Additionally,
`
`the evidence of use that opposer relies
`
`upon in applicant's exhibits C-F of the Spencer declaration
`
`does not demonstrate trademark use, but rather, at best,
`
`is
`
`use analogous to trademark use, and further, it is not use
`
`by opposer. Finally, because the arguments of counsel are
`
`not supported by any evidence of record,
`
`they are
`
`insufficient to raise a genuine issue of material fact.
`
`See, e.g., Hornblower & Weeks Inc. V. Hornblower & Weeks,
`
`InC., 60 USPQ2d 1733, 1736 (TTAB 2001).
`
`Therefore, as to the AMMONIA ON DEMAND mark, after
`
`having carefully considering the evidence and arguments
`
`submitted by the parties in connection with the motion, and
`
`viewing that evidence in the light most favorable to
`
`opposer, we find that there is no genuine issue of material
`
`fact that opposer used the wording on its website on October
`
`23, 2003 (Exh. B to applicant's Spencer Dec.
`
`in support of
`
`the motion for summary judgment); and that applicant has a
`
`constructive use date of September 3, 2003 for the term.
`
`Thus, because the earliest date of use that opposer
`
`might be able to establish” is October 23, 2003, which is
`
`
`
`” Furthermore, as of September 2, 2003, and pursuant to a
`settlement agreement in Federal court, Environmental was enjoined
`from using or allowing anyone else to use the marks anywhere in
`the world.
`
`10
`
`

`
`Opposition Nos. 91161633 and 91161648
`
`after applicant's constructive use date of September 3,
`
`2003, opposer has not established that there is any genuine
`
`issue of material fact as to priority of use, and
`
`accordingly, applicant's motion for summary judgment is
`
`hereby granted as to the AMMONIA ON DEMAND mark.
`
`In summary, applicant's motion for summary judgment is
`
`hereby granted as to both applications.
`
`The oppositions are
`
`hereby dismissed with prejudice.“
`
`.o0o.
`
`
`
`” It is not clear, however, how a single use on a website can
`constitute sufficient public exposure to be use analogous to
`trademark use for priority purposes.
`
`the party's dispute over a protective
`In light of this order,
`“
`agreement is considered moot, as is any motion to compel.
`
`ll
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