Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE ENERGY PRODUCTS OF IDAHO
Serial No. 698,068
December 13, 1989
October 24, 1989
Lynn G. Foster for applicant
Trademark Examining Attorney
Law Office 6
(Ronald Wolfington, Managing Attorney)
Before Simms, Cissel and Quinn
Energy Products of Idaho has appealed from the final refusal of the Trademark Examining Attorney to register the phrase "THE WASTE-TO-ENERGY COMPANY" for engineering consulting services in developing, designing, manufacturing, installing, starting up and operating low pollution fluid bed equipment. [FN1] The Examining Attorney has refused registration under Section 2(e)(1) of the Act, 15 USC 1052(e)(1), arguing that the term sought to be registered is commonly used to refer to facilities which convert waste materials to energy and that the addition of the words "THE" and "COMPANY" have no source indication or distinguishing capacity.
In support of her refusal, the Examining Attorney relies upon the specimens of record submitted with the application and numerous excerpts from various publications obtained from the LEXIS/NEXIS computer search system. The brochures which comprise the specimens of record, and which present the asserted mark on the cover, indicate that applicant has since 1973 been "in the forefront of fluidized bed technology in waste-to-energy power systems. With over 55 waste-to-energy installations, in both combustion and gasification, EPI has more commercial fluid bed experience than any other single manufacturer in the Free World." The specimens also state:
In 1986, EPI commissioned a 25 MWe power boiler unit operating at 1250 psig, 950<<degrees>> F, utilizing the patented Fluid Flame design. With this system, EPI confirms its position as a leader in the waste-to-energy marketplace.
Some of the numerous excerpts made of record by the Examining Attorney are quoted below.
--to encourage manufacturers to use no more materials than necessary, garbage collectors to limit the waste they pick up or consumers to restrict what they throw away.
Pitted against one another are environmental groups, consultants, manufacturers, government agencies, politicians, homeowners. The waste-to-energy companies fear the move to recycling will shut them out of the market. Scrap dealers worry that the recyclers will walk away with their business. The battery, container and plastics producers suspect that regulation will limit their growth ...
... Half the dumps that remain are operating illegally, failing to meet state or federal environmental regulations, and jeopardizing earth, air and water. "The states keep them open," says Paul Montrone, chairman of Wheelabrator Technologies, the U.S.' number two waste-to-energy company ... (Forbes, November 28, 1988)
Waste Management Inc. (WM) and the Henley Group Inc. agree to form a waste to energy company, Wheelabrator Technologies Inc. (WT), with assets and annual revenues each of more than $1 billion. The new company, to consist of Henley's 80% owned Wheelabrator Technologies unit and all of WM's waste to energy assets ... (Oil & Gas Journal, May 16, 1988)
*2 Henley Group gained $2.50 to $24.875 as it announced a new entity, in combination with Waste Management and its Wheelabrator Technology division, to form a "billion-dollar" waste-to-energy company. (Los Angeles Times, April 26, 1988)
... conventional RFPs, which call for companies to operate a completed facility for a twenty-year period, the North Hempstead request will call for a short-term operations contract of five years. Already one major waste-to-energy company, American Ref-Fuel, has balked at the RFP, informing North Hempstead it will not respond because of the short-term requirement, Cunningham told Waste-To-Energy Report, an affiliate publication of Clean-Coal/SynFuels Letter. (Clean-Coal/SynFuels Letter, November 7, 1986)
"NYSERDA will pay some of the costs and it's possible that the state will put up some money. And we'll try to get some money from New York State industry and waste-to-energy companies. Why not? It'll be to their benefit," Visalli stated. (SynFuels, April 25, 1986)
Utah plans to sell $25 million of tax-exempt industrial revenue bonds for an innovative resource recovery plant that its designers say will revolutionize the waste-to-energy industry. (The Bond Buyer, December 27, 1988)
"This is an important step," says David L. Sokol, president and chief executive officer of Ogden Martin Systems Inc., the Fairfield, N.J., vendor that has burst through to the head of the pack in the waste-to-energy industry. Ogden now offers recycling services in its waste disposal proposals. (Engineering News-Record, August 11, 1988)
JWP Inc. (Purchase, N.Y.) has acquired Energy Products of Idaho (Coeur d'Alene, Idaho) for an unspecified amount. EPI is a leading manufacturer of fluidized-bed combustion systems for the waste-to-energy industry. (Chemical Engineering, July 18, 1988)
While economic sages say that waste-to-energy industries should be a good prospect in the next decade in New Hampshire's costly energy market and solid waste disposal crisis, most say they see little activity on that front. (New Hampshire Business Review, February 26, 1988)
San Bernardino County this week dealt another setback to the reeling waste-to-energy industry in Southern California by rejecting a $164 million resource recovery plant that would have been financed with tax exempt bonds. (The Bond Buyer, December 4, 1987)
Industry observers see the waste-to-energy industry trend toward a more active role in recycling as making good political sense in helping to deflect community opposition to resource recovery projects, especially where plant opponents see recycling as an alternative to incineration. (Clean-Coal/SynFuels Letter, November 13, 1987)
... in energy-recovery plants. That figure is likely to rise to 18 percent or so in the next three years, and could total 40 percent by the end of the century. Surveys by the magazine Alternative Sources of Energy indicate boundless optimism in the waste-to-energy industry. (The Christian Science Monitor, July 10, 1987)
*3 Eight other plants produce a fuel from municipal solid waste that is sold to utilities or industry, and another 27 resource recovery plants are under construction.
Today's waste-to-energy industry in the US is developing second, third and fourth generations of resource recovery facilities, producing from one-megawatt to 80-mw. Although a few already are operating, the first wave of these plants will be coming on-line within the next few ...
The US landfill gas industry was formed just over a decade ago--about the same time the first generation of US waste-to-energy plants were being developed, points out the report. As with the waste-to-energy industry, it grew slowly until the last few years when the number of plants in operation and in the planning stages skyrocketed. The industry initially focused on recovering gas for sale to pipelines; electrical generation did not take place until ... (SnyFuels, May 23, 1986)
On the basis of this evidence, the Examining Attorney argues that the term "waste-to-energy" has a precise, clear and understood meaning in the relevant industry. According to the Examining Attorney, this term refers to the business of converting waste materials to energy, more particularly, it involves the combustion or direct burning of waste (in applicant's case, combustion takes place in the fluidized beds which rest on a cushion of air) to produce energy (such as heat or electricity) or the conversion of such waste through chemical processes to products which are burned as fuels to produce energy. While the Examining Attorney concedes that this term is not found in the dictionary, she argues that a term may nevertheless be found to be merely descriptive if the term enjoys widespread usage as a descriptive term in a particular field. In addition, she argues, the relatively sophisticated buyers involved in the purchasing of applicant's services, such as municipalities and electric utilities, are likely to know of this trade usage.
It is applicant's position, on the other hand, that the phrase sought to be registered is only suggestive of applicant's services, that the excerpts referred to by the Examining Attorney do not establish the reaction of the purchasing public when encountering applicant's mark in the marketplace, that no competitor of applicant uses the phrase sought to be registered, that the phrase is subject to a number of different definitions and is not therefore merely descriptive of applicant's services. Applicant has relied upon the affidavit of its president and chief executive officer, some of which is set forth below:
11. Based upon my customer experience, which is extensive, the phrase "THE WASTE-TO-ENERGY COMPANY" presents to Applicant's average prospective purchaser a choice of several possible meanings, such as methane gas fired furnaces, waste coal furnaces, various types of chemical reaction plants where organic waste is transformed into combustible fuel, equipment used to convert waste land areas into productive energy plants, etc. The immediate response which I have seen from customers and potential customers of Energy Products of Idaho in respect to the phrase "THE WASTE-TO-ENERGY COMPANY" used by Applicant in respect to its fluid bed services is one where the term has only a broad suggestive meaning ...
*4 12. Applicant's use of "waste-to-energy" in its literature was intended to be in reference to Applicant's proprietary fluid bed systems and to distinguish its fluid bed services from the fluid bed services of others. Applicant has seldom, if at all, used "waste-to-energy" in its literature ...
14. In choosing the notation "THE WASTE-TO-ENERGY COMPANY" the commercial impression intended and the one which Applicant believes was achieved is one of Applicant's excellence and leadership in the field of fluid bed engineering services. The response, which I have monitored, is that the mark as a whole in relationship to the services immediately suggests to Applicant's customers and potential customers that the Applicant is the leader in its field and that Applicant's fluid bed services are premier. The fact that the phrase "THE WASTE-TO-ENERGY COMPANY" is capable of some definition or, as a matter of fact several definitions, does not make it nothing more than descriptive of Applicant's services, since all the terms and all combinations of terms are subject to definition, particularly in engineering fields. "Waste-to-energy" is a broad phrase suggesting, as stated above, a number of possibilities. There is no single "waste-to-energy" meaning.
Applicant argues that the Examining Attorney has failed to make out a prima facie case of descriptiveness because no showing has been made that the term is descriptive in the fluid bed field.
While applicant contends that the phrase sought to be registered is not merely descriptive of its engineering consulting services in connection with fluid bed equipment, its very own use of the words "waste-to-energy" in its brochures belies its position. Applicant's position that the use of these words in its literature was intended to be "a trademark use" (brief, 8) in reference to its proprietary fluid bed systems is not understood. Applicant states in its advertising brochure that it is in the "forefront of fluidized bed technology in waste-to-energy power systems," and that it is "a leader in the waste-to-energy marketplace." Applicant, therefore, acknowledges in its brochures that there is a waste-to-energy industry and that it is a leader in this field. Moreover, the demonstrated use of this term in trade literature (as well as in other publications available to the general public) persuades us that, while the term "waste-to-energy" is a relatively broad term which may be used to describe a number of different types of facilities which convert garbage or waste into energy, the term has been used to describe and is merely descriptive of applicant's facilities and services. [FN2] See In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff'd, 10 USPQ2d 1879 (Fed.Cir.1989). Accordingly, it is not subject to exclusive appropriation by any one company. The absence of this term from the dictionary is not, contrary to applicant's argument, "persuasive evidence" that the term is not merely descriptive of applicant's services.
*5 Finally, as the Examining Attorney has pointed out, the fact that the words "THE" and "COMPANY" are included in applicant's mark do not create a trademark, but would be viewed in their ordinary sense: a company that is in the waste-to-energy field. See In re The Paint Products Co., 8 USPQ2d 1863, 1866 (TTAB 1988) and In re The Phone Co., Inc., 218 USPQ 1027 (TTAB 1983) ("THE PHONE COMPANY"). [FN3] Sprague Electric Company, Inc. v. Electrical Utilities Company, 209 USPQ 88 (TTAB 1980) (involving the mark "THE CAPACITOR PEOPLE"), relied on by applicant, is not on point.
Decision: The refusal of registration is affirmed.
Members, Trademark Trial and Appeal Board
FN2. Applicant's argument (brief, 10) that the phrase could also "convey the idea of an organization which helps overweight people convert their 'waste' to 'energy' and thereby become trim" is without merit. Marks must be viewed, not in the abstract, but in relation to the goods or services for which registration is sought. See In re Engineering Systems Corp., 2 USPQ2d 1075, 1076 (TTAB 1986).
FN3. We note that applicant has filed a conditional disclaimer of the words "WASTE-TO-ENERGY" in the event of a final determination on appeal that these words are merely descriptive. This disclaimer is ineffective and unacceptable. In any event, as noted, we find the phrase as a whole to be merely descriptive.