1 Final Order, ¶¶ I.P, IV.A.

2 Petition for Reconsideration to Clarify Respondents’ Obligations as to the PittDes Moines and CB&I Corporate Names, filed January 31, 2005 (“Complaint Counsel’s

Petition”).

1

UNITED STATES OF AMERICA

BEFORE FEDERAL TRADE COMMISSION

COMMISSIONERS: Deborah Platt Majoras, Chairman

Thomas B. Leary

Pamela Jones Harbour

Jon Leibowitz

___________________________________________

 )

In the Matter of )

 )

CHICAGO BRIDGE & IRON COMPANY N.V., )

a foreign corporation, )

 )

CHICAGO BRIDGE & IRON COMPANY, ) Docket No. 9300

a corporation, )

 )

PITT-DES MOINES, INC., )

a corporation. )

___________________________________________)

ORDER CLARIFYING RESPONDENTS’ OBLIGATIONS AS TO 

THE PITT-DES MOINES AND CB&I CORPORATE NAMES

I. Introduction

The Commission’s Final Order in this matter required, among other things, Respondents

Chicago Bridge & Iron N.V. and Chicago Bridge and Iron Company (collectively, “CB&I”) to

divest intellectual property for the Relevant Products and other complementary products.

1

 On

January 31, 2005, Complaint Counsel filed a petition for reconsideration that requested the

Commission to modify its Final Order to make clear that only the divested entity will have rights

to the PDM corporate names and CB&I will retain its rights in the CB&I corporate names.2

Respondents CB&I did not oppose Complaint Counsel’s Petition to the extent the petition sought
3 Response to Complaint Counsel’s Petition for Reconsideration to Clarify

Respondents’ Obligations as to the Pitt-Des Moines and CB&I Corporate Names, filed Feb. 10,

2005 (“CB&I’s Response”).

4

Id. at 2.

5 Pitt-Des Moines, Inc. Briefing on Complaint Counsel’s Motion for Clarification,

filed Apr. 6, 2005 (“Pitt-Des Moines Brief”).

6 For example, in connection with PDM’s sale of its Oregon Calvert Co. to Contech

Construction, PDM entered into a covenant not to compete with “any business, venture or

activity engaged anywhere in the world in the Oregon Culvert Business under the names . . .

‘Pitt-Des Moines, Inc.’” through January 31, 2006. Id. at 4. The brief also states that the sale of

PDM’s steel bridge division to Steel Bridges may impact PDM’s rights to the PDM mark and

concludes that consent of Steel Bridges (and the bridge lender that holds a security interest in the

same property) is advisable. Id. at 9-12. 

7

Id. at 13. 

8

Id.

2

to ensure that CB&I would retain all rights in its corporate name. 3 However, CB&I pointed out

that when it acquired PDM’s Engineered Construction (“EC”) and Water Divisions, it received

only a “one-year, non-renewable, non-exclusive transitional license to the use of the PDM

mark.”4 As a result, CB&I has no rights in PDM’s corporate name to transfer. Because we had

concerns that the acquirer of the divested assets might need to use the CB&I and PDM tradename

and marks to compete effectively, we ordered both PDM and CB&I to submit briefs addressing

the feasibility and consequences of granting a license to their respective corporate names.

 

II. PDM’s Tradename and Marks

PDM’s brief5 states that when PDM sold its various divisions, it entered into covenants

not to compete that impact the use of the PDM tradename and marks and suggests that obtaining

waivers from some of those buyers might be advisable.6 These covenants notwithstanding,

however, the brief concludes that PDM likely owns the right to use the tradename “Pitt-Des

Moines” and the marks “PITT-DES MOINES” and “PDM” in connection with the EC and Water

Division businesses.

7

 It thus states that PDM would be “in a position to sell or license, for

reasonable consideration, such rights, either for a limited or unlimited period of time.”8 

Because reputation can play a role in a tank supplier’s ability to compete in the Relevant

Markets, we direct the Monitor Trustee to include in his final report to the Commission a

recommendation as to whether a license to the PDM tradename and marks is necessary to allow
9 PDM agreed not to allow “any successor or person which in competition with

CB&I or its affiliates, sells, markets, distributes or deals in all or any portion of the Engineered

Construction/Water Division Business to use, the names ‘Pitt-Des Moines’ or ‘PDM,’ or any

variation materially derived therefrom, in connection with any business which is competitive to

all or any portion of the Engineered Construction/Water Division Business.” Id. at 6.

3

the acquirer to compete effectively in the Relevant Markets. In making his recommendation

about the acquirer’s needs for access to the PDM tradename or marks, the Monitor Trustee

should ascertain whether the acquirer's ability to bill itself as a successor to PDM necessarily

depends on the use of the PDM name or marks.

For purposes of finality, we wish to make clear what the terms of such a license would be.

If the Commission determines, based on the Monitor Trustee’s recommendation, that a license to

the PDM name and marks is necessary for the acquirer to compete effectively in the Relevant

markets, this Order requires PDM to grant to the acquirer of the divested assets a perpetual,

worldwide, exclusive, royalty-free license to all the rights it has in its tradename or marks for use

with the Relevant Products as defined in our Final Order. If the acquirer determines that it needs

such a license, it would be (1) permanent rather than transitional, because PDM’s brief makes

clear that it no longer uses or plans to use its tradename or marks in connection with the types of

assets CB&I is required to divest under the Final Order, and (2) royalty-free, because PDM is not

currently obtaining any revenue from the use of its tradename or marks, and it is questionable

whether it could do so in the future given certain restrictions it agreed to when it sold its EC and

Water Divisions to CB&I.9 

We also order CB&I to grant to the acquirer at no cost a waiver of Section 2.1.6. of the

CB&I Asset Purchase Agreement as well as any other provision of that agreement that would

hinder the acquirer from using the PDM tradename or marks for the Relevant Products. 

The PDM brief also notes that after its April 2002 merger with Ironbridge Acquisition

and subsequent name change to Ironbridge Corp., the company has used its tradename only in

connection with winding-up its business. Because PDM derives no ongoing revenue from the

use of the PDM mark, the brief suggests that the mark may be subject to claims of abandonment. 

This Order therefore prohibits CB&I from pressing any such claim or in any way interfering with

the Commission-approved acquirer’s use of the PDM tradename or marks for those assets

defined as the Relevant Products. 

III. CB&I’s Tradename and Marks

CB&I argues that it is not feasible to license the CB&I corporate name to the purchaser of

the divested assets. Among other things, CB&I asserts that a transitional license would subject

CB&I’s reputation to risk and result in market confusion because CB&I will remain in the

market. We agree with CB&I that having multiple competitors in the relevant markets – each of

which could hold itself out as CB&I – would undoubtedly lead to market confusion. In addition,
4

because we have required PDM to license its tradename and marks, if necessary, we have

determined that a permanent license to the CB&I tradename is unnecessary to allow the acquirer

to compete effectively in the relevant markets. Nonetheless, we do find that a limited,

transitional license to the CB&I tradename and marks is necessary to ensure that the acquirer

may immediately begin to use the divested assets. We emphasize here that the intent of this

transitional license is not to allow the acquirer to hold itself out as CB&I in any way. Rather, its

purpose is to allow the acquirer to immediately use the divested assets that bear CB&I tradename

and marks or conduct other functions necessary to conducting the Relevant Business. 

Accordingly, 

IT IS ORDERED THAT the Monitor Trustee include in his final report to the Commission

concerning the sale of the divested assets a recommendation with respect to whether a license of

the PDM tradename or marks should be included in the divested assets in order to accomplish the

purpose of the Final Order; and 

IT IS FURTHER ORDERED THAT to the extent the Commission determines, based on the

Monitor Trustee’s recommendation, that a license to the PDM name and marks is necessary for

the Commission-approved acquirer to compete effectively in the Relevant Markets, PDM shall

grant to the Commission-approved acquirer a perpetual, worldwide, exclusive, royalty-free

license to all rights it has in its tradename and marks for the purpose of engaging the Relevant

Products; and

IT IS FURTHER ORDERED THAT CB&I is prohibited from pressing any claim of

abandonment or in any way interfering with the Commission-approved acquirer using the PDM

tradename or marks for those assets defined as the Relevant Products; and

IT IS FURTHER ORDERED THAT CB&I grant to the acquirer at no cost a waiver of Section

2.1.6. of the CB&I Asset Purchase Agreement as well as any other provision of that agreement

that would hinder the acquirer from using the PDM tradename or marks for the Relevant

Products; and

IT IS FURTHER ORDERED THAT CB&I grant to the Commission-approved acquirer a

license, not to exceed one-hundred and eighty (180) days, to use the corporate names “Chicago

Bridge & Iron” and “CB&I,” and any related corporate, firm, or company names to the extent

necessary to achieve the purpose of, and to assure compliance with, this Order.

By the Commission.

Donald S. Clark

Secretary

SEAL

ISSUED: August 30, 2005