Ferrellgas, L.P.

Trademark Trial and Appeal Board

Nov 6, 2003

No. 75738326 (T.T.A.B. Nov. 6, 2003)

Mailed:
November 6, 2003
Paper No. 15
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ferrellgas, L.P.
________
Serial No. 75738326
_______
Michael Elbein of Hovey Williams LLP for Ferrellgas, L.P.
Fred Mandir, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Walters, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Ferrellgas, L.P. seeks registration on the Principal
Register of the mark FUELGAS for goods and services identified
as “propane gas” in International Class 4 and “transportation
of propane gas by truck and pipeline,” in International Class
39.1 The application, as amended, seeks registration under
Section 2(f) of the Trademark Act (15 U.S.C. §1052(f)) as a
result of the mark acquiring distinctiveness due to
substantially exclusive and continuous use of the mark in
commerce since 1958.
1 Application Serial No. 75738326 was filed on June 28, 1999
based upon applicant’s claim of use in commerce since at least as
early as September 12, 1958.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75738326
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The Trademark Examining Attorney has refused registration
under Section 2(e)(1) of the Trademark Act on the ground that
the term FUELGAS, when used on propane gas and the
transportation thereof, is generic and, thus, incapable of
functioning as a source-identifying mark.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney submitted briefs.
Applicant did not request an oral hearing.
The Trademark Examining Attorney maintains that the term
sought to be registered is generic. More specifically, he
asserts that the term is the name of “the specific goods and
the category of goods transported.” (Trademark Examining
Attorney’s appeal brief, p. 5)
It has been repeatedly stated that “determining whether a
mark is generic … involves a two-step inquiry: First, what is
the genus of goods or services at issue? Second, is the term
sought to be registered or retained on the register understood
by the relevant public primarily to refer to that genus of
goods or services?” H. Marvin Ginn v. International
Association of Fire Chiefs, 782 F.2d 987, 228 USPQ 528, 530
(Fed. Cir. 1986). Of course, in a proceeding such as this,
the genus of services at issue are the services set forth in
the recitation of services in the application itself. Magic
Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552
Serial No. 75738326
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(Fed. Cir. 1991) [“Thus, a proper genericness inquiry focuses
on the description of services set forth in [the application
or] certificate of registration.”].
Moreover, the burden rests with the Trademark Examining
Attorney to establish that the mark sought to be registered is
generic for the goods and services as described in the
application. In re Merrill Lynch, 828 F.2d 1567, 4 USPQ2d
1141, 1143 (Fed. Cir. 1997). It is incumbent upon the
Trademark Examining Attorney to make a “substantial showing …
that the matter is in fact generic.” Indeed, this substantial
showing “must be based on clear evidence of generic use.”
Merrill Lynch, 4 USPQ2d at 1143. Thus, it is beyond dispute
that “a strong showing is required when the Office seeks to
establish that a term is generic.” In re K-T Zoe Furniture
Inc., 16 F.3d 390, 29 USPQ2d 1787, 1788 (Fed. Cir. 1994).
Furthermore, doubt on the issue of genericness must be
resolved in favor of the applicant. In re Waverly Inc., 27
USPQ2d 1620, 1624 (TTAB 1993).
Addressing the first part of the Ginn genericness inquiry
above, we find that the genus of goods at issue in this case
is propane gas and that the genus of services at issue in this
case is the transportation of propane gas.
We turn next to the second part of the Ginn genericness
inquiry: whether the matter applicant seeks to register,
Serial No. 75738326
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FUELGAS, is understood by the relevant public primarily to
refer to the genus of goods and services at issue, i.e.,
propane gas and the transporting of propane gas.
The Examining Attorney initially assigned to this case
provided separate dictionary definitions of the words “fuel”2
and “gas”3, arguing that these two words are “generic synonyms
for each other.” (Office action of July 3, 2001).
In support of the refusal, each of the three successive
Examining Attorneys assigned this case submitted excerpts of
articles retrieved from the LEXIS/NEXIS database and/or
webpages from the Internet showing uses of “fuelgas” (and
variations thereof) used in connection with gaseous materials.
In response, applicant argues that the term FUELGAS is
not generic, but rather should be deemed to be merely
descriptive, and that the term has acquired distinctiveness
when used in connection with its propane gas and the
transportation thereof. Applicant asserts that consumers
associate the term with applicant, and that competitors do not
need to use the term to describe their propane gas and the
transportation thereof. Applicant argues that:
2 fuel: 1. Something consumed to produce energy, especially:
a. A material such as wood, coal, gas, or oil burned to produce
heat or power… The American Heritage Dictionary of the English
Language, (3rd Ed 1992).
3 gas: … 2. A gaseous fuel, such as natural gas… The American
Heritage Dictionary of the English Language, (3rd Ed 1992).
Serial No. 75738326
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Applicant’s mark is not generic for Applicant’s
goods or services… The evidence supplied by the
various Examining Attorneys to whom this application
has been assigned show that while “fuel” and “gas”
often appear in conjunction to refer to some type of
fuel, the terms are not the genus for propane ….
The evidence presented in which the compound word
FUELGAS do[es] appear are for the most part …
apparently used to describe some substance other
than propane …. (Applicant’s appeal brief, p. 4).
To our knowledge, this two-word designation does not appear in
any general or specialized dictionaries. We agree with
applicant that most of the NEXIS excerpts placed into the file
discuss a gaseous product known as “fuelgas” (or “fuel gas”),
but it is not propane gas. Rather, the references reveal a
wide range of industrial by-products known in general as “fuel
gas streams.” They are produced in oil refineries, chemical
plants, coal gasification or biomass gasification settings,
and may be used elsewhere in the industrial plant or may be
piped offsite for power generation:
UNION PACIFIC STARTS UP SOUR-GAS WAHSATCH SYSTEM
In October 1993, the sour gas and fuelgas pipelines
were hydrostatically tested to ensure their
integrity before start-up. The minimum test
pressure for the sour-gas line was 180% of the MAOP
of 1,760 psig.4
TUNE-UP OF AMINE SYSTEM AVOIDS COSTLY NEW SYSTEM
* Persistent foaming problems resulted in amine
carryover into the fuelgas system. It was obvious
that charcoal and iron sulfide fines were being
carried downstream from the charcoal filters… .5
4 Oil & Gas Journal, June 27, 1994.
5 Oil & Gas Journal, March 15, 1999.
Serial No. 75738326
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CLEAN COAL PROJECT READY FOR NEXT PHASE
When all of the energy of the coal is put through
the gasifier, then the steam within the fuelgas
stream can’t be superheated, Welford said… .6
GERMANY, INC.
… The company claims it can convert all types of
coal, including lignite and anthracite, to fuelgas.
The company claims that pilot plants using Prenflo
emit 25% less CO2 than equivalent coal-electric
units.7
INCINERATION – TODAY’S HOT OPTION FOR WASTE
DISPOSAL
If a liquid waste has very low ash or inorganic
content, and if no halogens, sulfur or phosphorus
are present, then the quality of the fuelgas from
the incinerator will be much the same as that from
combustion of a fossil fuel… .8
RECOVERING HEAT IN FIRED HEATERS
For fired heaters, American Petroleum Institute
(API) Standard 560 recommends, for natural-draft
operation, 20% excess air for fuelgas and 25% for
fuel oil… .9
CRYOGENICS PRINCIPLES AND APPLICATIONS
… A PSA unit could provide the hydrogen, of course,
but it could not yield a sotichiometric N2:3H2
synthesis stream, a pure-argon fraction, and a
highly concentrated fuelgas.10
TREATING HYDROGEN SULFIDE: AN ALTERNATIVE TO
CLAUS
… Among anaerobic applications: treating refinery
fuelgas, digester gas from sewage plants, and acid
gases from amine treaters; disposing of stripper gas
from sour waters; and processing syngas from coal
gasifiers.11
HANLAN-ROBB COMES ON STREAM
… Power to the RTUs is provided by individual
fuelgas-powered thermoelectric generators, which can
output 50W at 24 V.12
6 Coal & Synfuels Technology, January 22, 1996.
7 Chemical Engineering, December 1990.
8 Chemical Engineering, October 12, 1987.
9 Chemical Engineering, August 18, 1986.
10 Chemical Engineering, May 13, 1985.
11 Chemical Engineering, January 21, 1985.
12 Oil & Gas Journal, October 22, 1984.
Serial No. 75738326
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FUEL GAS SYSTEM ADVISOR
Application: The Fuel gas system Expert System
Process Advisor (ESPA) provides the process operator
with specific guidance and information to optimize
and improve a refinery or chemical plant fuel gas
system. Within complex refineries and chemical
plants, the fuel gas system is integral to the plant
operation because it supplies and/or exports fuel
gas to virtually every process unit in the plant.
Further complexity is introduced because fuel gas
may be purchased from multiple producers at
differing rates, and/or may be sold to other
companies at different rates.
The fuel gas rate of import and/or export flow on
each process unit varies from minute to minute as a
result of varying heating requirements, different
feed rates, changing fuel gas Btu heat contents,
weather, and other load and process disturbances.
Also, the operators make changes to the fuel gas
import and/or export to optimize their process units
and those changes affect the total fuel gas balance.
The overall coordination/optimization/monitoring of
the fuel gas system is difficult because an operator
on a unit on one side of the plant frequently does
not know what an operator on a unit on the other
side of the plant is doing. The purposes of a fuel
gas ESPA are to provide the tools and advice for
overall fuel gas system optimization. Gensym’s G2
is used to store the knowledge and provide the
operator interface.13
DETAILS OF TWO IMPLEMENTED OPPORTUNITIES
Key Strategies:
•= Minimize LPG in fuel gas by improving
operations of crude-distillation unit (CDU) light
ends … .
•Τ Improve fuel-gas system pressure control to
minimize fuel-gas let down to flare and to encourage
operators to burn more fuel gas in heaters.14
DLN COMBUSTORS DEMAND BETTER FUEL-GAS CONDITIONING
Premature overhauls and flashback incidents in gas
turbines equipped with dry low-NOx (DLN) combustors
can be avoided simply by improving fuel-gas
conditioning.
Originally, gas turbines were engineered for 30,000
to 40,000 hours between overhauls. Unfortunately, in
13 Hydrocarbon Processing, September 1, 2001.
14 Oil & Gas Journal, May 1, 2000.
Serial No. 75738326
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some cases, gas turbines equipped with DLN
combustors only last 2000-3000 hours between
overhauls because of entrained aerosols in the fuel
gas.
In other cases, the fuel gas is falling below its
dew point, allowing condensation to fall out of the
gas and cause damaging flashback incidents. To avoid
condensation, turbine manufacturers are requiring
50F of superheat in the fuel gas, which means the
gas must be maintained at least 50F above its dew
point. Because on-line dew point analysis typically
is not conducted, the gas often is heated by 50F
continuously… .15
The current Trademark Examining Attorney also submitted a
variety of summary hits from Internet searches. As seen above
in the NEXIS stories, multiple Internet summary hits show that
the term “fuel gas” is used in the refinery and petrochemical
industries (incendium.com, processassociates.com, coking.com)
where refinery tail gases are used elsewhere in the refining
process or moved through pipelines (kodoor.com), filtered
(nfs-inc.com, axsia-serckbaker.com) and compressed
(gascompressor.com) on their way to power high temperature gas
turbines. Additionally, “oxygen-fuel gas” is a term of art
for welding and cutting torches (torchcutter.com,
energyadditives.com, deansafe.com). Yet none of these
examples demonstrates generic usage for propane gas or for the
transportation of propane gas.16
15 Power, March-April 2001.
16 Seven NEXIS stories and a number of Internet hits were
references to a company known as “National Fuel Gas Distribution
Corporation” (with its trade name shortened to “National Fuel”), a
Serial No. 75738326
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This leaves very few examples in the record – one where
the term “fuel gas” is used to describe commercial gas
products like propane (e.g., in the context of discussion of
advances in a residential hot water boiler) and a second where
the pipeline transportation of some type of gas (although the
abbreviated sections shown from the Pipeline and Gas Journal
do not mention propane):
WET-RECUPERATED BOILER TECHNOLOGY: AN ADVANCE
IN HYDRONIC HEATING EFFICIENCY
In the QL boiler, combustion air is heated and
fully saturated with water (condensate), mixed
with the fuel gas (natural or propane), and
ignited.17
DEVELOPMENTS IN PLASTIC PIPE TECHNOLOGY AND
TRENCHLESS INSTALLATION
Over the last 50 years there have been major
changes in the materials used to construct pipe
networks for the transportation of fuel gas at
or below 10 bar gauge.18
Despite repeated searches on databases spanning almost
twenty years (e.g., 1984 to 2002), the Office was able to
locate very few examples of generic usage, and these are from
publications directed to specialized industries.
company that sells and transports natural gas to customers in
western New York (Buffalo) and northwestern Pennsylvania (Erie).
We consider the Internet hits showing usage of this combined
term in Canada, Europe and Asia to be of minimal evidentiary value
as they do not necessarily show usage of the term as U.S. consumers
would view it. See In re Urbano, 51 USPQ2d 1776, 1778 (TTAB 1999).
A final broad category of non-commercial usage appears in
international standards, national regulatory codes (e.g., Federal
Energy Regulatory Commission), and state and local building codes.
17 Air Conditioning, Heating and Refrigeration News, December 7,
1998.
18 Pipeline and Gas Journal, December 1, 2001.
Serial No. 75738326
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In fact, we agree with applicant that the instant case is
analogous to the facts of In re Minnetonka, Inc., 3 USPQ2d
1711 (TTAB 1987) [despite the fact that “soft soap” has a
technical meaning as an industrial type potash soap, the
designation SOFTSOAP is not a generic designation for liquid
soap sold to consumers in a pump-type dispenser]. Similarly,
in the instant case, it is obvious that “fuelgas” (or “fuel
gas”) is a technical term in various hydrocarbon-processing
industries. However, the record shows that despite decades of
usage by applicant (and its predecessors) of this term, there
is substantially no usage of this term by applicant’s
competitors, who do not have a need to use the term FUELGAS as
a generic designation for propane or the transportation of
propane.
In the absence of any usage by competitors, we still
apply logic and common sense to the plain meaning of these two
ordinary, English-language words within the real-world context
of applicant’s propane gas. The initially-assigned Trademark
Examining Attorney characterized these two nouns as “generic
synonyms for each other.” The cited dictionary defines the
word fuel as “gas” and the word gas as a “gaseous fuel.” When
placed together, the combination involves significant re-
duplication – a somewhat awkward iteration of terms.
Substantially all types of gas discussed in this record are
Serial No. 75738326
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used as some form of fuel. By way of contrast, consider, for
example, the dictionary definitions of the designation “fuel
oil,” of which we take judicial notice.19 Most oil is used as
a lubricant – not as a fuel. Accordingly, in the context of
“fuel oil,” the word “fuel” is a critical modifier for the
word “oil.”20 Again by way of contrast, the combined term
“fuel oil” is so clearly a generic designation (and a
dictionary term) used by everyone in the field of selling or
transporting oil to be used as a fuel.
On the other hand, the fact that applicant may have
chosen to eliminate the space between these two words (“fuel”
and “gas”), thereby compressing two words into a single word,
is immaterial to the result herein. Relevant purchasers will
readily understand “fuelgas” to be “fuel gas” in the context
of applicant’s goods or services. Our principal reviewing
court specifically stated that the presence or absence of a
space between the words was not determinative of its status as
a “compound word.” See In re Gould Paper Corp., 834 F.2d
1017, 5 USPQ2d 1110 (Fed. Cir. 1987) [SCREENWIPE generic for
premoistened antistatic cloths for cleaning computer and
19 fuel oil: an oil that is used for fuel and that usu. has a
higher flash point than kerosene. Webster’s New Collegiate
Dictionary (1973).
20 oil: 1 a: any of numerous unctuous combustible substances
that are liquid or at least easily liquefiable on warming, are
soluble in ether but not in water, and leave a greasy stain on paper
or cloth. Webster’s New Collegiate Dictionary (1973).
Serial No. 75738326
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television screens]. See also In re Sun Oil Co., 426 F.2d
401, 165 USPQ 718 (CCPA 1970) [CUSTOMBLENDED generic for
custom blended gasoline]; Cummins Engine Co. v. Continental
Motors Corp., 359 F.2d 892, 149 USPQ 559 (CCPA 1966)
[TURBODIESEL generic for internal combustion engines]; In re
Abcor Development Corporation, 588 F.2d 811, 200 USPQ 215
(CCPA 1978) [GASBADGE for gas monitoring badges]; Turtle Wax,
Inc. v. Blue Coral, Inc., 2 USPQ2d 1534 (TTAB 1987) [WASHWAX
generic for product which simultaneously washes and waxes a
vehicle]; and Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628
(TTAB 1998) [MASSFLO for flowmeters for measuring flow of mass
of fluid].
Accordingly, in answering the second prong of the Marvin
Ginn genericness inquiry as to how FUELGAS is understood by
the relevant public, this record shows very few examples of
where this term is used in a generic manner. This empirical
observation is consistent with our earlier analysis of the
composition and origins of this combined term, supra.
Accordingly, we have doubt on the issue of genericness. Under
our case law on genericness, we must resolve such doubt in
favor of applicant. Hence, we are compelled to reverse the
refusal to register made by the Trademark Examining Attorney.
Of course, any entity that can demonstrate a legitimate
interest in the use of FUELGAS for propane or the
Serial No. 75738326
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transportation of propane may file an opposition to this
application. Cf. In re Merrill Lynch, Pierce, Fenner, and
Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1144 (Fed. Cir.
1987).
Applicant has argued, should we find this matter not to
be generic, that pursuant to Section 2(f) of the Trademark
Act, we should find that the designation FUELGAS has acquired
distinctiveness as a source indicator in light of prominent
use of this term by applicant (and applicant’s predecessors)
for more than fifty-six years.21
The Trademark Examining Attorney failed to address
applicant’s showing of acquired distinctiveness on its merits.
That is, having taken the position that any evidence of
acquired distinctiveness is irrelevant for a generic term, the
Trademark Examining Attorney has done nothing, in the
alternative, to refute this particular showing. Given the
decades of usage of this term throughout a large region of the
country by applicant and its predecessors, accompanied by a
showing of advertising expenditures of a million dollars a
year over a period of many years, we conclude that applicant
has proven acquired distinctiveness by a preponderance of the
21 While the application papers claim first use anywhere as of
September 12, 1958, counsel alleges that the mark was actually used
by applicant’s predecessor in interest as of 1947.
Serial No. 75738326
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evidence. See Tone Brothers, Inc. v. Sysco Corp., 28 F.3d
1192, 31 USPQ2d 1321 (Fed. Cir. 1994) [the party attempting to
establish legal protection for its mark has the burden of
proving acquired distinctiveness by a preponderance of the
evidence].22
Decision: The refusal to register this matter as generic
under Section 2(e)(1) of the Act is hereby reversed, and the
application will be forwarded for publication for opposition
in the Trademark Official Gazette under the provisions of
Section 2(f) of the Act.
22 While it may generally not be prudent for trademark counsel to
be the one signing a declaration on behalf of a corporate client
(see Allstate Insurance Co. v. Healthy America Inc., 9 USPQ2d 1663,
1666 (TTAB 1988)), we find Mr. Elbein’s declaration of December 28,
2001 to be drafted in such a way as to support applicant’s prima
facie case of acquired distinctiveness.