Lurgi GmbH

Trademark Trial and Appeal Board

Jun 20, 2012

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

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: June 20, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Lurgi GmbH
________

Serial No. 77534583
_______

Raymond R. Ferrera of Adams and Reese LLP for Lurgi GmbH.

Henry S. Zak, Trademark Examining Attorney, Law Office 117
(Brett Golden, Managing Attorney).
_______

Before Quinn, Kuhlke and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Lurgi GmbH, filed an application to
register the mark SULFREEN in standard characters on the
Principal Register for the following services:
building, installation and maintenance of
industrial plants

in International Class 37; and

research and development in the field of
chemistry, in particular in the field of sulfur
recovery from sulfur-containing gases; services
of an engineer; development, planning,
construction design and technical project
planning of industrial plants, devices and
Ser. No. 77534583
2
methods in the field of analytical chemistry and
synthesis, as well as corresponding advice,
namely, technical consulting in the technology
field of sulphur-containing gases, in particular
in the field of sulfur recovery from sulfur-
containing gases; performance and evaluation of
chemical analysis; performance and evaluation of
chemical synthesis; issuance of technical expert
opinions in the technology field of sulphur
recovery from sulphur-containing gases

in International Class 42.1

The trademark examining attorney initially rejected
the promotional brochure, entitled Lurgi Sulfur Management,
submitted as a specimen with applicant’s statement of use
on the ground that it fails to indicate use of the mark as
a service mark in connection with the recited services, but
rather “showed use of the term SULFREEN as a process
identifier.”2 In response, applicant submitted substitute
specimens, described as “two brochures, and a Client
proposal.”3 The brochures are entitled Lurgi TGT Processes
and New Operational Results from SULFREEN® Plants4 and Gas
Processes 2006, and the client proposal is entitled Lurgi

1 Application Serial No. 77534583 was filed on July 30, 2008,
based on applicant’s allegation of a bona fide intent to use the
mark in commerce under Section 1(b) of the Trademark Act.
Applicant filed a statement of use on March 4, 2010 asserting
1985 as a date of first use of the mark in commerce in connection
with both classes of services.
2 Examining attorney’s brief, unnumbered page 2.
3 Applicant’s September 8, 2010 communication, unnumbered page 3.
4 Applicant claims ownership of prior Registration No. 929544 for
the mark SULFREEN for “chemical apparatus for de-sulfurizing
gases.”

Ser. No. 77534583
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Sulphur Recovery Unit for Exxon Mobil. The examining
attorney rejected these substitute specimens, asserting
that they consist of “technical conference papers, proposal
for a sulfur recovery unit presented to Exxon Mobil and an
advertisement labeled ‘gas Processes 2006’”5 again on the
ground that they show use of SULFREEN as a process, and
further based upon the “failure of the conference papers to
function as proper specimens in the sale or advertising of
services.”6
When the examining attorney made final the requirement
that applicant submit an acceptable specimen of use,
applicant appealed. Applicant and the examining attorney
filed main briefs and applicant filed a reply brief.
Our primary reviewing court has held that a "service"
is "the performance of labor for the benefit of another."
See In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971
(Fed. Cir. 1985). The recited services involved herein
clearly are a "service" under this definition, and we will
presume that applicant in fact renders such services.
However, the issue in this case is not whether applicant’s
activities constitute "services," or whether applicant in
fact provides those services. Rather, the issue is whether

5 Examining attorney’s brief, unnumbered page 2.
6 Id.
Ser. No. 77534583
4
the specimens of record demonstrate use of the mark as a
service mark for those services.
Trademark Rule 2.88 provides, in part, that a
statement of use must include one specimen showing the mark
as used on or in connection with the sale or advertising of
the goods or services in commerce. See 37 C.F.R.
§2.88(b)(2). Trademark Rule 2.56(b)(2) specifies that a
"service mark specimen must show the mark as actually used
in the sale or advertising of the services." See 37 C.F.R.
§2.56(b)(2). Section 45 of the Trademark Act provides, in
part, that a service mark is used in commerce "when it is
used or displayed in the sale or advertising of services
and the services are rendered in commerce...." See 15
U.S.C. §1127.
To be an acceptable specimen of use of the mark in the
sale or advertising of the identified services, there must
be a direct association between the mark sought to be
registered and the services specified in the application,
and there must be sufficient reference to the services in
the specimens to create this association. See In re
Monograms America Inc., 51 USPQ 1317 (TTAB 1999). It is
not enough that the term alleged to constitute the mark be
used in the sale or advertising; there must also be a
direct association between the term and the services. See
Ser. No. 77534583
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In re Compagnie Nationale Air France, 265 F.2d 938, 121
USPQ 460 (CCPA 1959); In re Johnson Controls Inc., 33
USPQ2d 1318 (TTAB 1994); and Peopleware Systems, Inc. v.
Peopleware, Inc., 226 USPQ 320 (TTAB 1985). See also In re
Adair, 45 USPQ2d 1211 (TTAB 1997). The mark must be used
in such a manner that it would be readily perceived as
identifying the source of such services. In re Advertising
& Marketing Development, Inc., 821 F.2d 614, 2 USPQ2d 2010
(Fed. Cir. 1987); and In re Metrotech, 33 USPQ2d 1049
(Com’r Pats. 1993). When appropriate, the Board has been
fairly flexible in accepting service mark specimens. See
In re Ralph Mantia Inc., 54 USPQ2d 1284 (TTAB 2000); and In
re Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992).
It is settled that if a term is used only as the name
of a process it does not function as a mark. See In re
Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456
(CCPA 1973). However, a term can be used as the name of a
process and also function as a mark for services. That is
to say, use of a term in connection with a process does not
prevent such term from designating more than a process.
See In re Produits Chimiques Ugine Kuhlmann, 190 USPQ 305
(TTAB 1976); and In re Stafford Printers, Inc., 153 USPQ
428 (TTAB 1967). Thus, the issue before us is whether any
of the specimens of record create a direct association
Ser. No. 77534583
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between applicant’s SULFREEN mark and the services
specified in the application, or whether they simply use
SULFREEN in connection with a process or goods. This
determination necessarily requires a consideration of the
submitted specimens.
The original specimen submitted with applicant’s
statement of use, excerpted below, is a brochure entitled
Lurgi Sulfur Management:
MAXISULF® AND SULFREEN®
A very efficient and low-budget SULFREEN tail gas
treatment process is MAXISULF. It is basically a
one-stage (one adsorber, one regenerator)
SULFREEN unit with an open regeneration loop.
The regeneration gas is fed into the adsorber
together with the Claus tail gas, whereas in the
SULFREEN process the regeneration gas is
recycled. With MAXISULF, yields of up to 98.5%
can be achieved. The SULFREEN process is a
catalytic tail gas process which has been
successfully employed in more than 45 Claus
plants. This SULFREEN process permits sulfur
yields to be boosted to over 99.0%. For even
higher yields, a second adsorber stage can be
added.
Advantages of the SULFREEN® Processes
Continuation of catalytic Claus process
No chemicals/solvents needed
Increase of sulfur recovery rate step by using
existing SULFREEN equipment and just adding more
catalytic stages.

We agree with the examining attorney that the original
specimen displays the term SULFREEN in connection with a
gas treatment process, but fails to create an association
between SULFREEN and the recited services. The specimen
Ser. No. 77534583
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does refer to “existing SULFREEN equipment.” However the
specimen does not contain sufficient information from which
we may associate any of applicant’s services with the mere
mention of such equipment. As a result, the specimen
originally submitted with applicant’s statement of use
displays the term SULFREEN only as the name of a process,
and not as a service mark. See In re Universal Oil
Products Co., supra.
We turn then to applicant’s three substitute
specimens. The first, entitled Lurgi TGT Processes and New
Operational Results from SULFREEN® Plants, is excerpted
below:
… Among the technologies mostly applied, the
SULFREEN process ranks in a predominant position:
there are, in total, nearly 50 SULFREEN units for
processing CLAUS tail gasses from sulphur plants
with capacities ranging from 5 to 2200 tons of
sulphur per day in operation or under design. …
A special feature especially of the improved
SULFREEN processes is, that these processes can
easily be realised by extension of already
existing SULFREEN units. Doing this, for example
in case of more stringent authority regulations,
a higher sulphur recovery efficiency can be
achieved by a moderate additional investment. …
The SULFREEN process and/or its modifications are
already used worldwide in 46 plants since 1970. …

Plant Concept
As shown on the process scheme SULFREEN plants
essentially consist of at least two reactors
filled with the catalyst and of the regenerating
equipment such as regeneration gas blower,
regeneration gas heater and sulphur condenser
which simultaneously operates as waste heat
Ser. No. 77534583
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boiler.
For SULFREEN plants with larger tailgas
throughput, it is advantageous to increase the
number of reactors to three and to operate two of
them in parallel in the adsorption (or sulphur
formation) mode of operation. …

Operational Results from the latest SULFREEN
reference plants
The SULFREEN plant of SIARKOPOL
One of the largest SULFREEN plants in Europe is
in successful operation since 1993. It is
designed for cleaning the tail gases from the
CS2-production plant of SIARKOPOL in Poland. Due
to the size of the plant – the gas throughput is
about 50.000Nm3h – the three reactor concept was
chosen. Figure 9 shows the SULFREEN reactors
with the related pipe works … .
For this special case, Lurgi delivered the basic
engineering and supervising services as well as
proprietary equipment such as special blowers and
valves, the inline burner for regeneration gas
and the necessary catalyst filling of the
reactors.

Applicant argues this specimen is a brochure prepared
by its affiliate (Lurgi Bamag Gmbh) and disseminated at a
sulfur industry conference to advertise its services to
attendees, which include “representatives of every
commercial and technical discipline in the industries which
produce and use both sulphur and sulphuric acid.”7
Applicant further submitted with its request for
reconsideration pages from the internet web site of the
sponsor of the convention advertising it as “THE WORLD’S

7 Applicant’s brief, p. 7.
Ser. No. 77534583
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LEADING SULPHUR AND SULPHUIC ACID ANNUAL EVENT.”8 The
internet advertisement further states “Concurrently with
the conference, there will be a complementary exhibition of
products, technology, equipment, and literature for the
sulphur and sulphuric acid industries.”9 In addition, the
advertisement states “You can choose from various
sponsorship packages, which include exhibition space,
additional events and conference packs.”10
The examining attorney argues that this specimen is
merely an academic technical paper that is not used by
applicant to advertise its services. Rather, the examining
attorney maintains that “this document was created to
report on a common industry problem …”11 and “is silent
about the specific services rendered by the applicant under
the term SULFREEN.”12
Based upon examination of the specimen itself and the
third-party internet web pages advertising the event for
which the specimen was produced, we find that while it is
presented in the manner of a technical paper, the Lurgi TGT

8 Applicant’s April 14, 2011 request for reconsideration, Exhibit
A. We note that applicant did not submit this exhibit as an
additional substitute specimen, but rather to provide evidentiary
support for its position that the Lurgi TGT Processes … specimen
is a brochure.
9 Id.
10 Id.
11 Examining attorney’s brief, p. 6-7.
12 Id. at 7.
Ser. No. 77534583
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Processes and New Operational Results from SULFREEN® Plants
specimen also serves as advertising in the same manner as a
brochure would in another type of industry. We, therefore,
find the form of the specimen to be sufficient to serve as
a specimen of use for services.
However, we again find that the specimen displays the
term SULFREEN in connection with gas treatment processes,
and not as a service mark. This specimen also displays
SULFREEN as a mark in connection with “units” and “plants.”
As noted infra, applicant owns a registration for SULFREEN
for goods in International Class 9, namely, “chemical
apparatus for de-sulfurizing gases,” and this brochure
appears to display SULFREEN in connection with such goods,
namely, de-sulfurizing units and plants. However, the
specimen does not display SULFREEN in such a manner that it
would be readily perceived as identifying the source of the
identified services. The specimen does indicate that
“[f]or this special case, Lurgi delivered the basic
engineering and supervising services as well as proprietary
equipment …” However, the specimen fails to display
SULFREEN in connection with these services. Rather, the
services are recited in connection with applicant’s name
and apparent house mark, i.e., Lurgi. Thus, while this
specimen does display the term SULFREEN as a mark in
Ser. No. 77534583
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connection with goods as well as in connection with a
process, the specimen fails to create the requisite
association between the term SULFREEN as a mark in
connection with the recited services.
Applicant further submitted as a substitute specimen a
one-page “brochure” that appears to be from an internet
website entitled Gas Processes 2006. The specimen is
excerpted below:
SULFREEN
Installations: More than 75 SULFREEN units – for
processing tail gases of Claus plants, ranging
from 5 tpd to 2,200 tpd of sulfur – are in
operation or under design.

First, it is not at all clear whether the source of this
specimen is applicant or a third party. Even assuming that
applicant is the source of this website, the specimen
displays SULFREEN in connection with “units” that would
appear to be the goods for which it has obtained prior
registration. There is no mention of any of the services
recited in the involved application let alone an
association between these services and the term SULFREEN.
The specimen otherwise displays SULFREEN in connection with
various sulfur gas processes.
Finally, applicant submitted a third substitute
specimen entitled Proposal Sulphur Recovery Unit for Exxon
Mobil. The specimen is excerpted below:
Ser. No. 77534583
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The SRU will consist of the following units:
Claus unit based on Lurgi’s Claus technology,
Tail Gas Treating unit based on Lurgi’s
proprietary SULFREEN® technology,
Incineration unit. …

While processing tail gas in one of the SULFREEN®
reactors, the other reactor is regenerated.
Regeneration is carried out in a closed loop
where the hot regeneration gas, flowing from the
top to the bottom of the catalyst bed, vaporizes
the previously adsorbed sulfur.

Again, this specimen displays SULFREEN as a mark in
connection with goods, e.g., “reactors” but not with any of
the recited services. Page 1 of the proposal discusses
“scope of engineering services” but does not mention such
services in connection with SULFREEN, but rather with
applicant’s apparent house mark, Lurgi.13 Thus, there is no
association in the specimen between SULFREEN and such
services.
In summary, upon review of the original and substitute
specimens of use, we find that SULFREEN is used as a mark
in connection with goods, but not in connection with the
recited services. The specimens otherwise only use
SULFREEN to identify the process by which applicant
desulfurizes gases. In each instance SULFREEN is
identified as a process for processing tail gases from
sulfur plants, but never as a mark in connection with the
Ser. No. 77534583
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recited services. There is no direct association between
applicant's offer of the applied-for services and the term
SULFREEN. See, for example, In re HSB Solomon Associates,
LLC, 102 USPQ2d 1269 (TTAB 2012). In view thereof, as used
in the specimens of record SULFREEN serves only to identify
a process or goods but not the applied-for services and
hence is not registrable. The fact that the SULFREEN
process may be used by applicant in the performance of its
services does not transform the process into a service or
associate the term SULFREEN with the recited services such
that it serves as a source identifier rather than simply
the name of a process. Id. Similarly, applicant’s use of
SULFREEN in connection with goods does not render the term
a service mark used in connection with the recited
services.
Decision: The refusal to register under Sections 1 and
45 of the Trademark Act is affirmed.

13 We observe that while the entire proposal is over 40 pages in
length, only the first 8 pages are present in the record.