Enbridge, Inc. v. Excelerate Energy Limited Partnership

                                   UNITED STATES PATENT AND TRADEMARK OFFICE
                                   Trademark Trial and Appeal Board
        THIS OPINION IS A          P.O. Box 1451
                                   Alexandria, VA 22313-1451
     PRECEDENT OF THE TTAB


jk                              Mailed:   October 6, 2009

                                Opposition No. 91170364

                                ENBRIDGE, INC.

                                    v.

                                EXCELERATE ENERGY LIMITED
                                PARTNERSHIP

Before Hairston, Grendel and Cataldo,
Administrative Trademark Judges.

By the Board:

     This proceeding is before the Board for consideration

of opposer’s motion and applicant’s cross-motion for summary

judgment.   Subsequent to briefing of the motions, both

parties sought leave to supplement their filings to reflect

the recent issuance of In re Bose Corp., __ F.3d __, 

91 USPQ2d 1938

 (Fed. Cir. 2009).   As will be apparent from the

instant order, supplemental briefing is not necessary and we

have considered the cross-motions in light of the Bose

decision.

     The Involved Application and Pleadings
     On June 25, 2005, applicant filed an application to

register the mark ENERGY BRIDGE (standard characters, ENERGY

disclaimed) for “transmission of oil and gas through

pipelines and ships” in International Class 39, and for
Opposition No. 91170364


“production of energy” in International Class 40.”1      The

mark was published for opposition, listing these services.

     Opposer filed a notice of opposition to the

registration of the mark, alleging priority and likelihood

of confusion under Trademark Act Section 2(d), dilution

under Trademark Act Section 43, and mere descriptiveness

under Trademark Act Section 2(e)(1).     Opposer pleaded

ownership of 

Registration No. 2987646

 for the mark ENBRIDGE,

alleging that said registration is valid and subsisting, and
                                                2
that it includes, inter alia, the following:
     International Class 9 - Computer software and systems
     comprising central processing units, communication
     links, sensors, supervisory control, pressure and flow
     measurement gauges and instruments for the management
     and maintenance of pipelines and training manuals and
     instruction materials on the subject of pipeline
     operations, management, maintenance, efficiency, design
     and safety recorded on videotape, computer disk or
     downloadable from the Internet;

     International Class 16 - Printed training manuals and
     instruction materials on the subject of pipeline
     operations, management, maintenance, efficiency,
     design, technology and safety;

     International Class 37 - Construction and installation
     of pipelines; installation, maintenance, and repair of
     equipment for conveying natural gas; installation,
     maintenance, and repair of pipes, valves, meters and
     other equipment for supplying natural and liquefied
     petroleum gas to commercial and industrial users and
     pipeline maintenance services;

     International Class 39 – Operating pipes, valves,
     meters and other equipment for supplying liquid
     hydrocarbons, natural and liquefied petroleum gas to
     residential, commercial and industrial users;
1
  Application Serial No. 78658321, alleging use of the mark in
commerce pursuant to Trademark Act Section 1(a), and alleging,
for both International Classes 39 and 40, a date of first use and
date of first use in commerce of July 1, 2003.
2
  

Registration No. 2987646,

 registered August 23, 2005, in
sixteen international classes of goods and services.


                                2
Opposition No. 91170364


     transporting natural and liquefied petroleum gas and
     liquid hydrocarbons to commercial and industrial users;
     transportation and storage of energy and water
     resources; operation of pipelines, namely, transporting
     crude oil and natural gas to consumers; operation of
     truck and marine terminals, and gas and liquid
     hydrocarbon terminals; public utility services;

     International Class 42 – Providing energy management,
     measurement and consulting services; consulting
     services in the field of pipeline operations,
     maintenance, efficiency and safety and consulting
     services in the field of computer systems and software
     for the operation, maintenance, design and technology
     of pipelines.

     In its answer, applicant denied the salient allegations

in the notice of opposition.

     On January 26, 2007, the Board approved and entered a

January 23, 2007 consented amendment (“Consented Motion to

Clarify Applicant’s Identification of Services”) to the

identification of services in the involved application.       By

such amendment, the Class 39 services were amended to:

     “transmission of natural gas by means of liquefaction
     in the country of severance, shipment across oceans or
     seas to the countries of use, ship to ship transmission
     of natural gas shipboard liquefaction, shipboard
     vaporization, and delivery of natural gas to the
     countries of use through either specifically designed
     offshore deepwater ports or specialized jetties at
     which the vessels would dock, followed by transmission
     through onshore pipelines,”

and the Class 40 services were amended to:

     “treatment of natural gas for the production of energy
     via liquefaction in the country of severance, shipment
     across oceans or seas, and offshore,3 shipboard
     vaporization in the country of use.”

3
 On January 16, 2008, applicant filed an unconsented “motion to
clarify” seeking to again amend the identification of services,
and to amend the dates of first use and first use in commerce to
June 25, 2005, the filing date of its application. On January
29, 2008, the Board deferred consideration of said motion until
final decision or upon summary judgment. Consideration of
applicant’s unconsented motion to amend is again deferred until


                                3
Opposition No. 91170364



     On December 22, 2008, the Board granted opposer’s

motion for leave to file an amended notice of opposition.

The operative amended notice of opposition alleges the

grounds identified above, and in paragraphs 9 and 10

thereof, adds claims of fraud.      In its fraud claims, opposer

alleges: 1) that applicant had not used its mark for

“transmission of oil” in Class 39, as identified in the

original application, as of the June 25, 2005 filing date

thereof; 2) that applicant has not ever used its mark for

“production of energy” in Class 40, as identified in the

original application; 3) that applicant has not used its

mark for the transmission of natural gas by means of

“liquefaction in the country of severance,” “shipboard

liquefaction,” and “through onshore pipelines” in Class 39,

as amended on January 23, 2007; 4) that applicant has not

used its mark for the “production of energy” or “treatment

of natural gas for the production of energy via liquefaction

in the country of severance,” in Class 40, as amended on

January 23, 2007.   In addition, opposer alleges that

applicant knew or should have known that it was not using

its mark on such services as of the filing date of the

application and, therefore, applicant has committed fraud.

     In its answer to the amended notice of opposition,

applicant denied most of the salient allegations, and, with

respect to paragraph 9, denied the stated allegations, but


this case is decided on final hearing.   See TBMP § 514.03 (2d ed.
rev. 2004).


                                4
Opposition No. 91170364


admitted that “it has not used ENERGY BRIDGE as a service

mark for the ‘transmission of oil.’”

     By its motion for summary judgment, opposer seeks entry

of judgment on its fraud claim.   By its cross-motion,

applicant seeks entry of judgment on the issue of opposer’s

standing.
     Analysis

     A party is entitled to summary judgment when it has

demonstrated that there are no genuine issues as to any
material facts, and that it is entitled to judgment as a

matter of law.   Fed. R. Civ. P. 56(c).   The evidence must be

viewed in a light favorable to the nonmoving party, and all

justifiable inferences are to be drawn in the nonmovant’s

favor.   Opryland USA Inc. v. The Great American Music Show,

Inc., 

970 F.2d 847

, 

23 USPQ2d 1471

 (Fed. Cir. 1992).

     A party seeking summary judgment bears the initial burden

of demonstrating the absence of any genuine issue of material

fact, and its entitlement to judgment as a matter of law.      See

Celotex Corp. v. Catrett, 

477 U.S. 317

 (1986).    When the

moving party’s motion is supported by evidence sufficient, if

unopposed, to indicate that there is no genuine issue of

material fact, and that the moving party is entitled to
judgment, the burden shifts to the nonmoving party to

demonstrate the existence of issues of material fact which

must be resolved at trial.   The nonmoving party may not rest

on mere denials or conclusory assertions, but rather must

proffer countering evidence, by affidavit or as otherwise


                              5
Opposition No. 91170364


provided in Fed. R. Civ. P. 56, showing that there is a

genuine factual dispute for trial.       See Fed. R. Civ. P. 56(e);

Wright, Miller & Kane, 10B Fed. Prac. & Pro. Civ. 3d § 2739

(2007).

     The U.S. Court of Appeals for the Federal Circuit

recently set forth a standard to be applied in analyzing a

claim of fraud in procuring a trademark registration.

Specifically, the Federal Circuit has held that fraud occurs

when an applicant knowingly makes a false, material

representation with the intent to deceive the USPTO.       The

standard for finding intent to deceive is stricter than the

standard for negligence or gross negligence, and evidence of

deceptive intent must be clear and convincing.       Bose, 

91 USPQ2d at 1941

.   The rigorous clear and convincing evidence

standard is strictly applied.       See Grand Canyon West Ranch,

LLC v. Hualapai Tribe, 

88 USPQ2d 1501

, 1508 (TTAB 2008).

     The Federal Circuit further held that there is no fraud

if a false misrepresentation is occasioned by an honest

misunderstanding or inadvertence without a willful intent to

deceive.    Bose, 

91 USPQ2d at 1942

, citing Smith Int’l, Inc.

v. Olin Corp., 

209 USPQ 1033

, 1043 (TTAB 1981).      Unless a

party alleging fraud can point to clear and convincing

evidence that supports drawing an inference of deceptive

intent, it will not be entitled to judgment on a fraud
                                     4
claim.    Bose, 

91 USPQ2d at 1942

.

4
 Clear and convincing evidence of fraud may be direct and
unequivocal evidence of intent to deceive. However, as noted in
Bose, intent to deceive can also be inferred from the


                                6
Opposition No. 91170364


     Finally, any doubt must be resolved against the party

making a claim of fraud.     

Id. at 1939

; Sinclair Oil Corp. v.

Kendrick, 

85 USPQ2d 1032

, 1035 (TTAB 2007); Smith Int’l, 209

USPQ at 1044.
     Opposer’s Motion for Summary Judgment

     International Class 39 services:     Opposer seeks summary

judgment on its fraud claim, set forth in its amended notice

of opposition.    Opposer alleges that as of the filing date

of the involved use-based application, applicant was not

using its mark in connection with the “transmission of oil”

in Class 39, or in connection with the services as amended

January 23, 2007, in particular, for the transmission of

natural gas by means of “liquefaction in the country of

severance,” “shipboard liquefaction,” and “through onshore

pipelines.”     Opposer asserts that the statements made in the

application were false, and that applicant thereby committed

fraud on the USPTO.

     In support of its motion, opposer submitted the

declaration of attorney Saundra L.M. Riley, which introduces,

inter alia, the transcript of the discovery deposition of

Kathleen Eisbrenner, applicant’s former President, Chief

Executive Officer and sole corporate designee under Fed. R.

Civ. P. 30(b)(6), and an individual with experience in the

natural gas industry since 1982.     Specifically, opposer relies

on the deposition insofar as it indicates the following:



circumstances, so long as the evidence meets the clear and
convincing standard. Bose, 

91 USPQ2d at 1941

.


                                7
Opposition No. 91170364


     Q.   And I apologize if I’ve asked this, but has
          Excelerate ever considered getting into the
          marine transportation of oil?
     A.   No.

     Opposer also relies on applicant’s answer to paragraph 9

of the amended notice of opposition.     In that paragraph,

opposer alleges that applicant had not used its mark in

connection with some of the Class 39 services, as amended on

January 23, 2007, as of the filing date of the application.5

Applicant’s answer to paragraph 9 states: “[D]enied, except

that Excelerate Energy admits that it has not used ENERGY

BRIDGE as a service mark for the ‘transmission of oil.’”

     In response, applicant characterizes the statement in its

application that it provided “transmission of oil” as “an

inadvertent, honest mistake,” stating, inter alia, that it “has

admitted that it did not transmit oil as of the critical date,”

that by amending its identification of services it “corrected

its error in good faith,” and that its statement in its

application that it was engaged in the transmission of oil and

gas by ship was accurate “except for its reference to oil.”

     Based on the record before us, and applying the standard

set forth in In re Bose, we conclude that opposer has failed to

meet its burden of establishing that there is no genuine issue

that applicant had the intent to deceive the USPTO when it

stated in its application that it was using its ENERGY BRIDGE

mark for “transmission of oil” as of the filing date of the

5
 Specifically, in reference to applicant’s identification, as
amended, opposer alleges that applicant had not used its mark in
connection with the transmission of natural gas by means of



                                8
Opposition No. 91170364


application.   At a minimum, whether applicant knowingly made

this representation of use with the intent to deceive the USPTO

remains a genuine issue of fact to be determined at trial.6

     Accordingly, opposer has not established the absence of a

genuine issue of material fact as to its fraud claim with

respect to Class 39.    In view thereof, opposer is not entitled

to judgment as a matter of law, and its motion for summary

judgment with respect to Class 39 is denied.

     International Class 40 services:     In its amended notice of

opposition, opposer alleges that, as of the filing date of the

application, applicant was not using its mark in connection

with the “production of energy” in Class 40, that the statement

in the application that the mark was in use for such services

was false, and that applicant thereby committed fraud on the

USPTO.   Opposer also asserts a fraud allegation with respect to

applicant’s Class 40 identification of services as it was

amended on January 23, 2007 to read: “treatment of natural gas

for the production of energy via liquefaction in the country of

severance, shipment across oceans or seas, and offshore,

shipboard vaporization in the country of use.”      With respect to

the latter claim in particular, opposer alleges that applicant

“does not provide any services for the ‘production of energy,’

let alone ‘treatment of natural gas for the production of

energy via liquefaction in the country of severance.’”


“liquefaction in the country of severance,” “shipboard
liquefaction,”
6
                and “through onshore pipelines.”
  Similarly, this genuine issue of fact remains for trial with
respect to opposer’s fraud claim on applicant’s Class 39
identification of services, as amended on January 23, 2007.


                                9
Opposition No. 91170364


     Opposer seeks summary judgment on the claim that applicant

had not used its mark for the “production of energy” or

“treatment of natural gas for the production of energy via

liquefaction in the country of severance” as of the time of

filing its application.    In this regard, opposer points to,

inter alia, materials submitted under the declaration of

Saundra L.M. Riley.   Such materials include the transcript of

the discovery deposition of Kathleen Eisbrenner, which reads:

     Q.   Do you believe that Excelerate is engaged in the
          production of energy?
     A.   No.

Such materials also include the transcript of Ms. Eisbrenner’s
                                     7
testimony deposition, which reads:
     Q.   Excelerate doesn’t participate in producing energy,
          right?
     A.   Correct.
     Q.   Do they plan to?
     A.   No.

     Opposer also relies on materials submitted under the

declaration of attorney R.J. Heher, which introduces, inter

alia, trial testimony of Ms. Eisbrenner indicating that

applicant obtains natural gas from third parties in liquefied

form, and that regasification of liquefied natural gas is not a

treatment of natural gas for the production of energy.

     In response, applicant maintains that it “is involved in

the production of energy.”    Specifically, applicant explains

that it is “an importer of liquefied natural gas (LNG), a

provider of offshore regasification services, and a developer

7
 By stipulation, the parties took Ms. Eisbrenner’s trial
testimony prior to commencement of the first trial period, due to
her anticipated unavailability during the trial period.


                               10
Opposition No. 91170364


of offshore LNG solutions,” that it “has nine proprietary LNG

cargo vessels that are specifically designed for the

transportation and regasification of LNG,” that under a “broad

interpretation of” “production of energy,” its services “fall

within that gamut,” and that production of energy “is a

technical description that is subject to more than one

interpretation.”      Applicant asserts that the opinion Ms.

Eisbrenner gave in her testimony “does not amount to a binding

legal conclusion as to the meaning of the ‘production of

energy.’”

         Applicant submitted the declaration of attorney Penina

Michlin Chiu, which introduces, inter alia, 1) six pages from

applicant’s website, previously produced in response to

discovery, which explain that applicant “is an importer of

liquefied natural gas (LNG), a provider of offshore

regasification services, and a developer of offshore LNG

solutions;” 2) pages from the Federal Energy Regulatory

Commission’s website; 3) excerpts from opposer’s responses to

requests for admissions and opposer’s website, produced in

discovery; and 4) definitions of “production,” “produce” and

“energy” from Merriam-Webster Collegiate Dictionary on CD-ROM
    th
(11      ed., 2004), from which applicant concludes that

“production of energy” means “the act or process of creating a

source of usable power or the resources for producing such

power.”8

8
 The Chiu declaration also includes pages from applicant’s own
response to opposer’s motion for leave to amend the notice of
opposition, wherein applicant stated the reasons why it believed


                                 11
Opposition No. 91170364


     We conclude that opposer has failed to meet its burden of

establishing the absence of a genuine issue that applicant had

the intent to deceive the USPTO when it stated in its

application that it was using its ENERGY BRIDGE mark for

“production of energy” as of the filing date of the

application.   In addition, the record does not support the

conclusion that there is no genuine issue that applicant had

the requisite intent to deceive when it asserted use of its

mark in connection with the services, as amended on January 23,

2007.    At a minimum, whether applicant knowingly made either of

these representations of use with the intent to deceive the

USPTO remains a genuine issue of fact to be determined at

trial.

     Furthermore, the present record includes no single,

industry-specific definition of “production of energy.”        Given

that this record is unclear with respect to the meaning of

“production of energy,” a genuine issue exists as to a pivotal

element of the fraud claim, namely, whether applicant’s

statement that it was using its mark in connection with

“production of energy” was, in fact, false.      Inasmuch as

“production of energy” constitutes the entirety of applicant’s

Class 40 identification of services, as filed, the lack of

clear and convincing evidence on the issue of whether applicant

made a false statement regarding use of its mark in connection

the statement in its application that it used the mark for
“production of energy” was accurate. A party may not rely on
unsupported statements in its brief to demonstrate that there is
a genuine issue, but rather must support its arguments by



                               12
Opposition No. 91170364


with the identified services mandates denial of opposer’s

motion.9

     Accordingly, opposer has not established the absence of a

genuine issue of material fact as to its fraud claim with

respect to Class 40, and it is not entitled to judgment as a

matter of law.   In view thereof, opposer’s motion for summary

judgment with respect to Class 40 is denied.
     Applicant’s Cross-Motion for Summary Judgment

     Applicant seeks summary judgment on the issue of opposer’s

standing to bring this opposition, asserting that, as a matter

of law, opposer lacks standing inasmuch as it has failed to

plead or prove facts sufficient to show either a real interest

in the proceeding or a reasonable basis for its belief of

damage.    In particular, applicant maintains that opposer lacks

standing to bring its descriptiveness and likelihood of

confusion claims, arguing that opposer is not a competitor of

applicant, and that the transportation of natural gas via land-

based pipelines on one hand (opposer’s services), and the

transportation of liquefied natural gas (LNG) via ships on the

affidavit or other evidence. See TBMP § 528.05(2d ed. rev.
2004), and cases cited therein.
9
  The Board may, in its discretion, take judicial notice of
dictionary definitions from certain sources. See In re
CyberFinancial.Net Inc., 

65 USPQ2d 1789

, 1791 n.3 (TTAB 2002) (Board
may take judicial notice of online dictionary definition where
resource is also available in printed format); University of Notre
Dame du Lac v. J. C. Gourmet Food Imports Co., 

213 USPQ 594

 (TTAB
1982), aff'd, 

703 F.2d 1372

, 

217 USPQ 505

 (Fed. Cir. 1983)(Board may
take judicial notice of use of a term in dictionaries). However, we
decline to do so in considering opposer’s motion for summary
judgment inasmuch as the wording at issue is a phrase that may have
an industry-specific meaning, the global trading of natural gas
appears to involve a unique process or processes, and the parties
have not set forth and addressed a single, definable meaning of
“production of energy.”


                               13
Opposition No. 91170364


other hand (applicant’s services) are different, mutually

exclusive services.   Applicant further posits that opposer’s

expansion into the applicant’s business is unlikely given the

large economic barriers to entry into the liquefied natural gas

market.

     In response to the motion, opposer argues that it has a

real interest in the proceeding, and thus has standing,

asserting that its 

Registration No. 2987646

 covers “energy and

water resource treatment” in Class 40, as well as the following

services in Class 39:

     [O]perating pipes, valves, meters and other equipment
     for supplying … natural and liquefied petroleum gas
     to residential, commercial and industrial users;
     transporting natural and liquefied petroleum gas… to
     commercial and industrial users; transportation and
     storage of energy and water resources; operation of
     pipelines, namely, transporting crude oil and natural
     gas to consumers…


Opposer further argues, inter alia, that its mark ENBRIDGE is a

derivation of the terms “energy” and “bridge,” and submits,

under the declaration of attorney R.J. Heher, testimony of

applicant’s Fed. R. Civ. P. 30(b)(6) witness which states, in

pertinent part, that liquefied natural gas (LNG) is a segment

of the natural gas industry, that LNG and natural gas that has

never been liquefied or regasified are the same, and that LNG

is an alternative to delivery of natural gas via other

conventional methods, such as through pipelines.

     Standing is a threshold inquiry made by the Board in

every inter partes case.   The U.S. Court of Appeals for the




                              14
Opposition No. 91170364


Federal Circuit has stated that a party may establish its

standing to oppose by showing that it has a “real interest”

in the case, that is, a personal interest in the outcome of

the proceeding, and a reasonable basis for its belief that

it will be damaged by the issuance of the registration.        See

Lipton Industries, Inc. v. Ralston Purina Co., 

670 F.2d 1024

, 

213 USPQ 185, 188

 (CCPA 1982).     To demonstrate a "real

interest" in the case, opposer must allege a “direct and

personal stake” in the outcome of the proceeding, and the

allegations in support of its belief of damage must have a

reasonable basis in fact.    See Ritchie v. Simpson, 

170 F.3d 1092

, 

50 USPQ2d 1023, 1026-1027

 (Fed. Cir. 1999).        See also

TBMP § 309.03(b)(2d ed. rev. 2004).

     Here, applicant has failed to demonstrate the absence of a

genuine issue with respect to its assertion of opposer’s lack

of standing, and thus has failed to meet its burden of

establishing its entitlement to judgment as a matter of law.

At a minimum, an issue of fact remains regarding whether the

parties’ respective services are so unrelated that the parties
                                                    10
are not competitors in the relevant marketplace.


10
  Applicant argues that opposer “has failed to prove that its
likelihood of confusion claim has any credibility,” and that no
reasonable fact finder could find in opposer’s favor with respect to
likelihood of confusion, setting forth an analysis of several of the
factors in In re E.I. du Pont de Nemours & Co., 

476 F.2d 1357

, 

177 USPQ 563

 (CCPA 1973). Applicant’s assertions that opposer cannot
prevail on the merits of its likelihood of confusion and
descriptiveness claims are not relevant to the standing inquiry
insofar as there is no requirement that opposer prove its claims or
prove actual damage in order to establish its standing. See TBMP
§§ 303.03 and 309.03(b)(2d ed. rev. 2004), and cases cited therein.
Furthermore, if an opposer can show standing as to one ground, it
has the right to assert any other ground as well. See, e.g.,


                               15
Opposition No. 91170364


     In view thereof, applicant’s cross-motion for summary

judgment is denied.

     In summary, 1) opposer’s motion for summary judgment on

its fraud claims is denied, and 2) applicant’s cross-motion for

summary judgment on the issue of opposer’s standing is denied.11

This opposition shall proceed to trial.
     Schedule

     Proceedings are resumed.    Discovery and trial dates are

hereby reset as follows:

DISCOVERY PERIOD TO CLOSE:                              01/08/10

Testimony period for party in position of
plaintiff to close:                                     04/08/10

Testimony period for party in position of
defendant to close:                                     06/07/10

Rebuttal testimony period to close:                     07/22/10


     In each instance, a copy of the transcript of testimony

together with copies of documentary exhibits, must be served

on the adverse party within thirty days after completion of

the taking of testimony.    Trademark Rule 2.l25.

Liberty Trouser Co., Inc. v. Liberty & Co., Ltd., 

222 USPQ 357

, 358
(TTAB 1983).
11
   The fact that we have identified genuine issues of material
fact in denying the motion and cross-motion for summary judgment
should not be construed as a finding that such issues
necessarily are the only ones that remain for trial. Also, the
parties should note that the evidence submitted in connection
with the motion and cross-motion is of record only for
consideration of those motions. To be considered at final
hearing, any such evidence must be properly introduced in
evidence during the appropriate trial period. See Trademark Rule
2.122. See also Hard Rock Cafe Licensing Corp. v. Elsea, 

48 USPQ2d 1400

 (TTAB 1998); Levi Strauss & Co. v. R. Josephs
Sportswear Inc., 

28 USPQ2d 1464

 (TTAB 1993).


                                16
Opposition No. 91170364


     Briefs shall be filed in accordance with Trademark

Rules 2.128(a) and (b).   An oral hearing will be set only

upon request filed as provided by Trademark Rule 2.l29.




                              17