LS9, Inc.

Trademark Trial and Appeal Board

Sep 30, 2009

No. 77088833 (T.T.A.B. Sep. 30, 2009)

Mailed: September 30, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re LS9, Inc.
________

Serial No. 77088833
_______

Barbara A. Barakat of Wilmer Cutler Pickering Hale and Dorr
LLP for LS9, Inc.

Edward Nelson, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Hairston, Drost and Ritchie, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

LS9, Inc. filed an application to register the mark
RENEWABLE PETROLEUM (in standard character form) for
“chemicals, namely, industrial chemicals” in International
Class 1; and “fuel” in International Class 4.1
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground

1 Serial No. 77088833, filed on January 23, 2007, based on
applicant’s assertion of a bona fide intention to use the mark in
commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77088833
2
that applicant’s mark is merely descriptive of the
identified goods.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
The examining attorney maintains that the evidence of
record demonstrates that applicant’s goods “are petroleum
related products which have been created from renewable
sources…”. (Brief, unnumbered p. 5). Thus, it is the
examining attorney’s position that the mark RENEWABLE
PETROLEUM describes a significant characteristic or feature
of applicant’s goods.
In support of his position, the examining attorney
submitted the following definitions from The American
Heritage Dictionary of the English Language (Fourth Edition
2000):
renewable: 1. That can be renewed; a renewable
membership; renewable subscriptions. 2. Relating
to or being a commodity or resource, such as
solar energy or firewood, that is inexhaustible
or replaceable by new growth.

petroleum: A thick, flammable yellow-to-black
mixture of gaseous, liquid and solid hydrocarbons
that occurs naturally beneath the earth’s
surface, can be separated into fractions
including natural gas, gasoline, naphtha,
kerosene, fuel and lubricating oils, paraffin wax
and asphalt, and is used as raw material for a
wide variety of derivative products.

Serial No. 77088833
3
The examining attorney also submitted excerpts from
applicant’s website and two third-party websites.
Applicant contends that its mark RENEWABLE PETROLEUM
is at most suggestive; that applicant’s goods are not
petroleum-related products as the examining attorney
maintains, but rather, industrial chemicals and fuel
manufactured from renewable products; that there is no such
thing as renewable petroleum; and that RENEWABLE PETROLEUM
is a unique mark that identifies applicant’s goods.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).

Serial No. 77088833
4
Further, it is well-established that the determination of
mere descriptiveness must be made not in the abstract or on
the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods and services.
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
If, however, when the goods or services are
encountered under a mark, a multistage reasoning process,
or resort to imagination, is required in order to determine
the attributes or characteristics of the product or
services, the mark is suggestive rather than merely
descriptive.
The examining attorney bears the burden of showing
that a mark is merely descriptive of the identified goods
or services. See In re Merrill, Lynch, Pierce, Fenner, and
Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1997).
Applicant’s website includes the following information
about its goods:
What is Renewable Petroleum™ technology?
LS9 has developed Renewable Petroleum™ technology
to efficiently and economically produce
DesignerBiofuels™ products by fermentation of
renewable feedstocks.

What are DesignerBiofuels™ products?
LS9 DesignerBiofuels™ products are a family of
fuels that have properties indistinguishable from
Serial No. 77088833
5
those of gasoline, diesel, and jet fuel and are
derived from natural sources of sugar cane and
cellulosic biomass.

What advantages do your products have over
traditional petroleum products?
LS9 DesignerBiofuels™ products have the same
energetic content as traditional petroleum
products and are completely compatible with
current petroleum infrastructure and
applications, but are made from renewable
feedstocks yielding significant carbon-dioxide
emission reductions relative to traditional crude
oil consumption.

In addition, two third-party websites contain
references to “renewable petroleum”:
The privately held, venture backed industrial
biotechnology company, LS9, maintains that the
answer to our gas crisis is renewable petroleum
technology that they have custom engineered, a
Designer Biofuel.
http://cleantechnica.com
LS9 - Using synthetic biology to produce
renewable petroleum
LS9, INC. The renewable petroleum company™

Most of the technologies on this blog involve the
production of cellulosic ethanol using
biochemical or thermochemical processes.
…
Biotechnologists on both coasts think they have
the answer - Renewable Petroleum™ produced using
synthetic biology. Let the company’s website and
an article from Technology Review tell the story
…
http://bioconversion.blogspot.com

The evidence of record does not establish that the
mark RENEWABLE PETROLEUM is merely descriptive of the
identified goods. Applicant’s goods are essentially
Serial No. 77088833
6
petroleum substitutes manufactured from renewable products.
The uses of “renewable petroleum” at the third-party
websites are clearly references to applicant’s goods and
technology. We cannot say from this evidence that
“renewable petroleum” is commonly used in a descriptive
manner in the industry in connection with petroleum
substitutes manufactured from renewable products. Thus,
this evidence fails to demonstrate that “renewable
petroleum” is a term which would be immediately understood
to convey information about applicant’s industrial
chemicals and fuels.
Furthermore, we are not persuaded from the meanings of
the individual words, “renewable” and “petroleum,” that the
composite mark RENEWABLE PETROLEUM is merely descriptive.
As pointed out by applicant, there does not appear to be
any such thing as renewable petroleum. That is, the
“thick, flammable yellow-to-black mixture of gaseous,
liquid and solid hydrocarbons that occurs naturally beneath
the earth’s surface ...” is not “inexhaustible or
replaceable by new growth.” In other words, petroleum,
itself, does not appear to be renewable. Thus, it requires
some imagination and mental steps to conclude from
RENEWABLE PETROLEUM that applicant’s industrial chemicals
and fuel are petroleum substitutes manufactured from
Serial No. 77088833
7
renewable products. The mark RENEWABLE PETROLEUM is
therefore suggestive rather than merely descriptive.
Obviously, we base our decision on the limited
evidence we have before us in this case. At the very least
we have doubt in this case; however, in accordance with our
practice, we must resolve that doubt in applicant’s favor.
In re Morton-Norwich Products, Inc., 209 USPQ 791, 791
(TTAB 1981) [The Board’s practice is “to resolve doubts in
applicant’s favor and publish the mark for opposition”].
See also In re Atavio, 25 USPQ2d 1361, 1363 (TTAB 1992).
Decision: The refusal under Section 2(e)(1) is
reversed as to both classes of goods.