Lummus Technology Inc.

Trademark Trial and Appeal Board

May 2, 2018

No. 85252133 (T.T.A.B. May. 2, 2018)

Mailed: May 2, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Lummus Technology Inc.
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Serial No. 85252133
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Catherine H. Stockell and Mannu Harnal of Fish & Richardson P.C.,
for Lummus Technology Inc.

Diane Collopy, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____

Before Wolfson, Hightower, and Coggins,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:

Applicant Lummus Technology Inc. seeks registration on the Principal Register
of the mark LCMAX, in standard characters, for the following goods and services
(as amended):
• Industrial refining reactor components, namely, refining reactor vessels
and refining reactor vessel subsystems sold in connection with refining
reactor vessels, for use in connection with processing of oils, gases,
hydrocarbons, and petrochemicals, in International Class 7;
This Opinion Is Not a
Precedent of the TTAB
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• Technical consulting in the field of processing of oils, gases, hydrocarbons,
and petrochemicals, and the preparation of reports relating to the same, in
International Class 40; and
• Engineering services, namely, design of technology for the processing of
oils, gases, hydrocarbons, and petrochemicals; scientific and industrial
research and development in the field of processing of oils, gases,
hydrocarbons, and petrochemicals; quality evaluation services for others in
the field of processing of oils, gases, hydrocarbons, and petrochemicals;
research and analysis in the field of processing of oils, gases, hydrocarbons,
and petrochemicals, and preparing related reports, in International Class
42.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
on the grounds that (1) Applicant’s specimens of use do not show use of its mark in
commerce for its services in Classes 40 and 42 under Trademark Act Sections 1 and
45, 15 U.S.C. §§ 1051 and 1127; (2) Applicant’s specimens are not an acceptable
display for its Class 7 goods; and (3) in the alternative, Applicant’s Class 7 goods do
not constitute goods in trade under Trademark Act Sections 1, 2, and 45, 15 U.S.C.
§§ 1051-52 and 1127.
The application has a lengthy prosecution and appellate history and Applicant
submitted numerous specimens, as discussed further infra, creating a prosecution file
comprising more than 3,500 pages. We need not rehash the history or record here
except to say that the appeal is now fully briefed.
We reverse the refusal to register.

1 Application Serial No. 85252133 was filed on February 25, 2011 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on an allegation of a bona fide intention to use
the mark in commerce. A Notice of Allowance issued on March 20, 2012 and, after receiving
several extensions of time, Applicant filed a Statement of Use on September 16, 2014.
Serial No. 85252133
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I. Whether Applicant’s Goods in Class 7 Constitute Goods in Trade
We begin with the alternative refusal and first determine whether Applicant’s
Class 7 goods are independent goods in trade – that is, items sold or transported in
commerce for use by others – or merely ancillary or incidental to its services. This is
a factual determination that we must make on a case-by-case basis. Lens.com Inc. v.
1-800 Contacts Inc., 686 F.3d 1376, 103 USPQ2d 1672, 1676 (Fed. Cir. 2012). Factors
we consider include whether the goods are:
1. Simply the conduit or necessary tool useful only to
obtain applicant’s services;
2. So inextricably tied to and associated with the services
as to have no viable existence apart from them; and
3. Neither sold separately nor of any independent value
apart from the services.
Id.; In re Thomas White Int’l Ltd., 106 USPQ2d 1158, 1162 (TTAB 2013).
As noted supra, Applicant’s identified goods are “industrial refining reactor
components, namely, refining reactor vessels and refining reactor vessel subsystems
sold in connection with refining reactor vessels, for use in connection with processing
of oils, gases, hydrocarbons, and petrochemicals.” To the extent this description is
somewhat technical or unclear, we consider extrinsic evidence clarifying that the
description has a specific meaning to members of the refining trade. See, e.g., In re
C.H. Hanson Co., 116 USPQ2d 1351, 1354 (TTAB 2015); In re Trackmobile Inc., 15
USPQ2d 1152, 1154 (TTAB 1990). The Examining Attorney argues that:
In this case, applicant’s reactor parts are not independent
goods in trade but rather are merely incidental to Chevron
Lummus’s services because they are not sold or
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transported in commerce for use by others. As indicated by
the evidence of record from www.chevrontechnology
marketing.com, it appears that while applicant Lummus
constructs refineries for others and licenses their use, the
applied-for component parts of the plants are not sold
separately and apart from the construction of a
hydrocracking2 plant as a whole.
21 TTABVUE 12.
In the second of his two declarations, Applicant’s Chief Intellectual Property
Officer Norby L. Foss explains that Applicant’s identified “industrial refining reactor
components, namely, refining reactor vessels and refining reactor vessel subsystems,”
taken together, “form a residue hydrocracking plant which is but one part of a larger
hydrocracking plant as a whole.” Second Foss Decl. ¶ 6.3 Mr. Foss further explains:
Applicant’s LCMAX refining reactor vessels and
subsystems are described in the Application as
“components” because they are used as a specialized
component within a larger oil refining plant, or indeed a
specialized component plant within a larger hydrocracking
plant within an even larger oil refining plant. In effect,
Applicant’s LCMAX refining reactor vessels and
subsystems constitute a plant within a plant.
Id. at ¶ 8.4 Mr. Foss illustrates his point with the following image in the same
paragraph, showing that the LCMAX goods “make up a distinct component of a larger
oil refining plant”:5

2 Hydrocracking is a process that “produces more environmentally friendly fuels.” First Foss
Decl. ¶ 5, December 28, 2015 Request for Reconsideration, 7 TTABVUE 257.
3 June 23, 2017 Response to Office Action at TSDR 30.
4 Id.
5 Id. at TSDR 31. Applicant at times uses, and initially applied to register, its mark in
hyphenated form. Amendment to the mark in its present form was accepted in the June 26,
2015 Final Office Action.
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Mr. Foss states that Applicant’s identified goods may be sold either for use in
existing or new oil refining plants, and have been sold separately from the oil refining
plants in which they are used. Id. at ¶ 10.6 “The LCMAX refining reactor vessels and
subsystems that have been sold to date have been added to existing oil refining plants
to allow them to produce more environmentally friendly fuels,” he states. Id. The
custom-designed plants are sold in commerce when Applicant is awarded a contract,
then constructed on site by third-party fabricators. Id. at ¶ 14.7 When construction is

6 June 23, 2017 Response to Office Action at TSDR 31.
7 Id. at TSDR 33; see also First Foss Decl. ¶ 6, December 28, 2015 Request for
Reconsideration, 7 TTABVUE 258 (“The LCMAX Residue Hydrocracking Plant is a custom
designed, one-of-a-kind plant that is fabricated and constructed pursuant to the customer’s
feedstock needs . . . . The LCMAX Residue Hydrocracking Plant comprises refining reactor
components, namely, refining reactor vessels and refining reactor vessel subsystems sold in
connection with refining reactor vessels.”), ¶¶ 10-11, 7 TTABVUE 260-61.
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completed, Applicant approves the final product for use by the customer. Id. at ¶ 15.8
Finally, with respect to Applicant’s services, Mr. Foss states that: “While Applicant
may pitch the sale of the LCMAX refining reactor vessels and subsystems in
conjunction with rendering the LCMAX services, they can be sold separately from
those services, and vice versa.” Id. at ¶ 12.9
Evidence submitted by the Examining Attorney includes screen captures from
www.chevrontechnologymarketing.com and other websites, as well as dictionary
definitions of the terms “plant” and “component.”10 The Examining Attorney’s
evidence pertaining to goods and services offered under the LCMAX mark does not
appear to be inconsistent with Mr. Foss’s explanation of Applicant’s goods. In
particular, an article titled “Residue hydrocracking for value addition” by a company
related to Applicant, Chevron Lummus Global (CLG), describes an “LC-Max unit”
built for a refinery complex in China.11 The article states: “Since licensing this unit
in late 2013, CLG has seen a spate of inquiries from other refiners for both grassroots
and revamp options utilising LC-Max.”12

8 June 23, 2017 Response to Office Action at TSDR 33.
9 Id. at TSDR 32.
10 See September 14, 2017 Final Office Action, 17 TTABVUE; December 23, 2016 Office
Action; June 20, 2016 Superseding Reconsideration Letter, 13 TTABVUE.
11 June 20, 2016 Superseding Reconsideration Letter at TSDR 4, 13 TTABVUE 10 (from
http://www.digitalrefining.com/). Applicant states that CLG is its related company and
licensee of the LCMAX mark. See Appeal Brief at 4, 22-23, 19 TTABVUE 5, 23-24; see also,
e.g., Second Foss Declaration at ¶ 25 and substitute specimen, a presentation attributed to
Chevron Lummus Global, “A Chevron and Lummus Technology Joint Venture.” June 23,
2017 Response to Office Action at TSDR 36, 38.
12 June 20, 2016 Superseding Reconsideration Letter at TSDR 4, 13 TTABVUE 10.
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The record as a whole thus supports a finding that Applicant’s goods are not
simply a conduit to obtain its services, but rather exist and may be sold to others
independently from those services. Cf., e.g., In re Ameritox Ltd., 101 USPQ2d 1081,
1085 (TTAB 2011) (finding applicant’s printed reports to be “part and parcel” of
applicant’s drug testing and reporting services). We reverse the refusal to register
Applicant’s goods in Class 7 under Trademark Act Sections 1, 2 and 45.
II. Whether Applicant’s Specimens Are an Acceptable Display for Its Goods
We turn next to the refusal to register Applicant’s Class 7 goods on the ground
that Applicant’s specimen and substitute specimens are not an acceptable display.
See Trademark Act Section 1; Trademark Rule 2.56, 37 C.F.R. § 2.56. Applicant
submitted eleven specimens for its Class 7 goods, comprising customer presentations,
industry presentations, press releases, technical proposals, Engineering Design
Packages (EDPs), and technical articles. Reply Brief at 4, 22 TTABVUE 5. Mr. Foss
describes in his two declarations how these documents are used in advertising,
promoting, and marketing Applicant’s custom-designed plants, and the extensive
bidding and engineering that the sales process entails.13 He also explains why it
would be impracticable and ineffective to affix labels to the identified goods.14 See
TMEP § 904.03(k) (Oct. 2017) (explaining that other documents may be accepted as

13 See First Foss Decl. ¶¶ 8-12, December 28, 2015 Request for Reconsideration, 7 TTABVUE
259-62; Second Foss Decl. ¶¶ 16-29, June 23, 2017 Response to Office Action at TSDR 33-37.
14 First Foss Decl. ¶ 11, December 28, 2015 Request for Reconsideration, 7 TTABVUE 261.
Serial No. 85252133
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specimens when the nature of the goods makes use of the mark on the goods,
packaging, or displays associated with the goods impracticable).
The Examining Attorney contends: “It is not disputed that the majority of these
specimens bear the applied-for mark, LCMAX. However, as the mark is used on the
specimens, the impression conveyed to [the] consumer is that the wording identifies
the finished plant which performs the LCMAX process.” 21 TTABVUE 6. Relying on
evidence from three third-party websites,15 the Examining Attorney argues that
“when reactor[ ] components are sold or advertised to consumers as component parts
for further use, they are labeled or indicated as such, e.g., as separate ‘inlet diffusers,’
‘scale catchers,’ and ‘redistribution trays.’” Id.
First, none of the goods shown on the third-party websites are identified as either
“refining reactor vessels” or “refining reactor vessel subsystems.” More to the point,
Mr. Foss states that “the LCMAX mark identifies refining reactor vessels and
subsystems that form a residue hydrocracking plant.” Second Foss Decl. ¶ 17.16 Based
on the record, we conclude that Applicant uses the mark LCMAX to identify reactor
vessels and subsystems that are components of a residue hydrocracking plant. For
example, see the “LCMAX Reactors” in the following excerpt from a process flow
diagram in one of Applicant’s specimens:17

15 September 14, 2017 Final Office Action at TSDR 21-24, 17 TTABVUE 25-28. One of the
sites is for a Danish company. Id. at TSDR 24, 17 TTABVUE 28.
16 June 23, 2017 Response to Office Action at TSDR 33.
17 Engineering Design Package specimen submitted with the December 28, 2015 Request for
Reconsideration at TSDR 40, 4 TTABVUE 132; see also, e.g., id. at TSDR 13, 25, 32,
4 TTABVUE 105, 117, 124 (referring to LCMAX reactors).
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We find that Applicant’s specimens are an acceptable display of its mark in
association with its Class 7 goods. The refusal to register on this ground is reversed.
III. Whether Applicant’s Specimens Show the Required Connection to Its Services
Finally, we consider the refusal to register Applicant’s services in Classes 40 and
42 on the ground that its specimens do not show LCMAX in use in commerce.
Section 45 of the Trademark Act specifies that “a mark shall be deemed to be in use
in commerce . . . on services when it is used or displayed in the sale or advertising of
services and the services are rendered in commerce . . . .”
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The following criteria are used to determine what constitutes a service:
1. A service must be a real activity;
2. A service must be performed to the order of, or for the
benefit of, someone other than the applicant; and
3. The activity performed must be qualitatively different
from anything necessarily done in connection with the
sale of the applicant’s goods or the performance of
another service.
In re Husqvarna Aktiebolag, 91 USPQ2d 1436, 1437 & n.3 (TTAB 2009).
Use as a service mark may be established by: (1) showing the mark used or
displayed as a service mark in the sale of the services, which includes use in the
course of rendering or performing the services, or (2) showing the mark used or
displayed as a service mark in advertising the services, which encompasses
marketing and promotional materials. In re WAY Media, Inc., 118 USPQ2d 1697,
1698 (TTAB 2016); see also In re ICE Futures U.S. Inc., 85 USPQ2d 1664, 1669 (TTAB
2008) (noting that use in the rendition of services is an element of the “sale” of services
under Trademark Act Section 45); In re Metriplex, Inc., 23 USPQ2d 1315, 1316-17
(TTAB 1992) (explaining that an acceptable specimen need not explicitly refer to the
services if it “show[s] use of the mark in the rendering, i.e., sale, of the services”).
To show service mark usage, a specimen must display use of the mark in a manner
that would be perceived by potential purchasers as identifying the applicant’s
services and indicating their source by “direct association.” In re Universal Oil Prods.
Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973); WAY Media, 118 USPQ2d at
1698. Specimens showing the mark used in rendering the identified services need not
Serial No. 85252133
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explicitly specify the nature of the services, but “there must be something which
creates in the mind of the purchaser an association between the mark and the service
activity.” In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994). A
specimen that shows the mark with no reference to, or association with, the services
does not show service mark usage. In re DSM Pharms. Inc., 87 USPQ2d 1623, 1624
(TTAB 2008) (LIQUIDADVANTAGE referred only to software and did not identify
and distinguish custom manufacturing services); see also, e.g., In re HSB Solomon
Assocs. LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (CEI identified process by which
applicant derived a measurement rather than technical consulting service); In re
Osmotica Holdings Corp., 95 USPQ2d 1666, 1669 (TTAB 2010) (OSMODEX referred
only to drug delivery technology, not consulting services).
Whether a mark sought to be registered as a service mark has been used “to
identify” the services specified in the application is a question of fact to be determined
on the basis of the specimens submitted by applicant, together with any other
evidence of record. In re Adair, 45 USPQ2d 1211, 1214 (TTAB 1997). When
appropriate, the Board has been fairly flexible in accepting service mark specimens.
See In re Ralph Mantia Inc., 54 USPQ2d 1284 (TTAB 2000).
The Examining Attorney argues that Applicant’s specimens “demonstrate that
consumers viewing these materials will understand that the term LCMAX identifies
a completed hydrocracking plant and a process for hydrocracking, rather than any of
the identified services.” 21 TTABVUE 11. In further detail, she maintains:
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The impression created by all of [Applicant’s] specimens is
that the LCMAX mark identifies a type of hydrocracking
plant built or licensed by Chevron Lummus Global (CLG).18
This impression is created by the repeated use of the
wording “LCMAX” in close proximity to the wording
“Residue Hydrocracking Plant.” While the hydrocracking
plant may be the result of the technical consulting and
engineering work, the specimens do not demonstrate that
consumers identify “LCMAX” as the source of these
services. Both the design packages and the press releases
submitted by the applicant as well as those submitted by
the examining attorney in connection with the 6/20/17
Office action convey the impression that the term LCMAX
identifies a hydrocracking plant which operates by means
of employing the LCMAX hydrocracking process. There is
no reference to how the engineering or consulting services
are provided in a way that would create a source-
identifying connection between the mark and the services
in the mind of the consumer.
21 TTABVUE 9.
Once again, Applicant’s services identified in International Class 40 are “technical
consulting in the field of processing of oils, gases, hydrocarbons, and petrochemicals,
and the preparation of reports relating to the same.” Applicant’s services identified
in International Class 42 include “engineering services, namely, design of technology
for the processing of oils, gases, hydrocarbons, and petrochemicals.”
Applicant highlights in its brief six of its specimens used in advertising and
promoting the sale of its services, and points to an LCMAX Engineering Design
Package as containing “the culmination of the rendered LCMAX engineering and
other technical services.” Appeal Brief at 24, 19 TTABVUE 25. In other words, the

18 As explained, Applicant submitted evidence that Chevron Lummus Global (CLG) is a
related company to which it licenses the LCMAX mark. See n.11 supra. CLG’s use of the
LCMAX mark thus inures to Applicant’s benefit. Trademark Act Section 5, 15 U.S.C. § 1055.
Serial No. 85252133
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Engineering Design Package is used in rendering Applicant’s services. Applicant
contends that the Engineering Design Package demonstrates use of the mark to
identify the LCMAX services:
[O]nce an LCMAX project has been awarded, Applicant
creates for the customer the LCMAX Engineering Design
Package (EDP), which is several volumes and hundred[s]
of pages long and which refers to and embodies the
culmination of the rendered LCMAX engineering and other
technical services provided to a client. In the case of the
LCMAX EDP, the title of the specimen itself, “Engineering
Design Package,” contains a direct link between the
LCMAX mark and the engineering and other technical
services rendered in the EDP.
Reply Brief at 7, 22 TTABVUE 8 (footnote omitted).
Applicant’s officer Mr. Foss explained the role the Engineering Design Package
plays in Applicant’s business:
27. Once a project is awarded, the selected company will
prepare and submit to the customer an Engineering Design
Package (EDP), such as the LCMAX EDP that Applicant
submitted as a specimen in support of the Application. As
the Examiner has seen, the LCMAX EDP consists of
several volumes and appendices, comprising hundreds of
pages. Among other things, the LCMAX EDP submitted in
support of the Application sets forth the results of LCMAX
technical consulting, engineering, research, development
and analysis services provided by Applicant to its
customers. It includes feasibility studies, site selection,
feed testing, catalyst selection, detailed engineering
studies, designs of plant schematics and specifications, and
the basic engineering and FEED packages required for
construction of refining reactor vessels and subsystems
(whether for an LCMAX plant or a third party plant).
Following construction, Applicant provides further
LCMAX services consisting of start-up technical service
advice and post-start-up continuing engineering and
system advice to optimize the refining vessels and
subsystems and resolve any unexpected problems.
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28. As with the Technical Proposal, Applicant meets on
numerous occasions with the principals and engineers of
its customers to discuss the LCMAX EDP, the results of
Applicant’s LCMAX services, and the specifications for
construction of the proposed LCMAX or third party
refining reactor vessels and subsystems.
Second Foss Decl. ¶¶ 27-28 (emphasis added).19 The content on the first page of the
Engineering Design Package of record appears as follows:20

19 June 23, 2017 Response to Office Action at TSDR 36-37.
20 December 28, 2015 Request for Reconsideration at TSDR 2, 4 TTABVUE 94.
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As discussed supra, Mr. Foss explained that Applicant’s goods and services can be
sold separately. In more detail, he stated:
In some cases, the customer contracts for use of the
LCMAX process in its existing refining reactor units. In
other cases, the customer contracts for Applicant’s LCMAX
technical consulting, engineering, research, development,
quality evaluation services and analysis services in
connection with refining reactor units built by third
parties. In other cases, the customer contracts for delivery
of the LCMAX refining reactor vessels and subsystems,
either together with or separately from Applicant’s
LCMAX technical consulting, engineering, research,
development, quality evaluation services or analysis
services.
Second Foss Decl. at ¶ 12.21 This is borne out in the introduction to the Engineering
Design Package, which states that: “The work performed is limited to the preparation
of an EDP for the CLG licensed LCMAX Residue Hydrocracking Plant.”22 This
specimen thus shows that the technical consulting and engineering services embodied
in the package may be performed separately and are not “necessarily done in
connection with the sale of [Applicant’s] goods,” that is, the sale of an LCMAX plant
itself, as the Examining Attorney contends. Husqvarna Aktiebolag, 91 USPQ2d at
1437 n.3.
The specimen is an Engineering Design Package pertaining to an LCMAX plant
prepared by Applicant’s related company, Chevron Lummus Global, for a customer.
The package plainly represents the rendition of engineering and technical services,

21 June 23, 2017 Response to Office Action at TSDR 32.
22 December 28, 2015 Request for Reconsideration at TSDR 10, 4 TTABVUE 102.
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not merely the LCMAX process or an LCMAX plant alone. See Liqwacon Corp. v.
Browning-Ferris Indus., Inc., 203 USPQ 305, 318 (TTAB 1979) (finding mark
LIQWACON identified both waste treatment and disposal service and chemical
solidification process). We agree with Applicant that the report embodies the
rendering of Applicant’s identified services in association with the LCMAX mark,
that is, (1) engineering services, namely, design of technology for the processing of
oils, gases, hydrocarbons, and petrochemicals, and (2) technical consulting in the field
of processing of oils, gases, hydrocarbons, and petrochemicals. This establishes the
requisite direct association between the LCMAX mark and the services. The
association is underscored in the context of Applicant’s evidence that it “meets on
numerous occasions with the principals and engineers of its customers to discuss the
LCMAX EDP, the results of Applicant’s LCMAX services, and the specifications for
construction of the proposed LCMAX or third party refining reactor vessels and
subsystems.” Second Foss Decl. ¶ 28.23
For these reasons, we find that Applicant’s Engineering Design Package
demonstrates a direct association between the rendition of Applicant’s identified
services and the LCMAX mark. Applicant’s specimen therefore shows use of its mark
in commerce for its services in Classes 40 and 42 under Trademark Act Sections 1
and 45.
Decision: The refusal to register is reversed on all grounds.

23 June 23, 2017 Response to Office Action at TSDR 37.