Hera, LLCv.EC&C Tech-nologies, Inc.

Trademark Trial and Appeal Board

Mar 21, 2006

No. 91161633 (T.T.A.B. Mar. 21, 2006)

Mailed: March 21, 2006
lms
Opposition Nos. 91161633
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.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS
NOT
CITABLE AS PRECEDENT
Opposition Nos. 91161633 and 91161648
2
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 licensee…” 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 AMMONIA ON DEMAND with “Ammonia” disclaimed. Both
applications are presently suspended pending a decision in these
consolidated proceedings.
Opposition Nos. 91161633 and 91161648
3
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
4
(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 application5 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, tradename…”.

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
5
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.8
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)(1) 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
6
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:
(1) the declaration of Herbert W. Spencer
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
7

(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: “…it 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.” 9
Additionally, in its brief, opposer argues that “the prior

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
8
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);10 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”11 that are
unsupported, and, in fact, controverted by the evidence of
record.
Federal Rule of Civil Procedure 56(c) provides:
“…The 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.”

10 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.

11 These “matters” are (1) that when opposer terminated its patent
license agreement with Environmental, “it was always an
understanding amongst [sic] opposer and Environmental that
termination for breach… 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
9

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
10
rights through the federal litigation settlement, it had no
rights to assign back to opposer.12
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 establish13 is October 23, 2003, which is

12 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.

Opposition Nos. 91161633 and 91161648
11
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.14

.o0o.

13 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.

14 In light of this order, the party’s dispute over a protective
agreement is considered moot, as is any motion to compel.