Registering Green Trademarks

USPTO's reluctant approach toward green trademarks

According to Attorney Michael Tschupp, who keeps track of newly granted applications as well as those that have been published for opposition each week at Sustainable Marks, The USPTO publishes anywhere from zero to around 70 applications for “green” trade/service marks per week, with an average in the 30s or 40s. Similar numbers relate to registration of “green” marks as well.

While that may seem like a lot of action on green marks in the USPTO, both that office and the Trademark Trials and Appeals Board (TTAB) have, in practice, taken a somewhat wary approach to applications seeking to register such marks. For example, the TTAB has issued several influential opinions upholding the USPTO's refusal to register green trademarks, all based on similar reasoning—that the word “green” was either “generic” or “merely descriptive,” i.e., an “adjective with any good or service … [that] will be perceived as an indicator that the good or service is environmentally friendly”—and that it therefore could not be registered as part of a trademark.

Michael Tschupp expects this same reasoning “to be extended to other commonly used environmental terms and images in the future.” As further explained by Attorney Eric Lane of the Green Patent Blog: “Many of the terms to signal environmentally friendly aspects of goods or services—terms such as “green” or “eco-”–are so immediately identified with those characteristics that they have become legally incapable of the distinctiveness required for US trademark registration.”

'Merely descriptive' or 'generic' marks

One of the most common bars to registration arises if the USPTO views a mark as “merely descriptive” or “generic,” meaning that the mark or a term within the mark is simply too common to be trademarked and only makes note of a particular characteristic or item. This was the finding of In re Cenveo, in which the trademark application for “GREEN-KEY” and design (environmentally friendly key cards) was denied because the word “green” was ruled “generic.” Similarly, the denied marks in cases such as In re Bargoose Home Textiles, Inc. regarding hypoallergenic/environmentally friendly bedding called “ALLERGYGREEN” and In re Calera Corp. regarding environmentally friendly cement known as “GREEN CEMENT” are prime examples of the USPTO deeming a mark “merely descriptive” and the TTAB upholding that determination.

The best way to convince the USPTO that a mark is not “merely descriptive” is to provide evidence that the mark has developed what is known as a “secondary meaning:” that it has become distinctive on its own and functions as a “source indicator” (a trademark), despite containing words that might otherwise be considered “merely descriptive.” Indeed, according to Lane, he successfully registered his trademark for the Green Patent Blog by showing “distinctiveness based on use over a long period of time or consumer recognition of the mark.” Other examples of secondary meaning are marks like “California Pizza Kitchen” and “International Business Machines” (IBM). Consumer recognition, long-term use, and advertising or publicity are good ways to show distinctiveness and secondary meaning.

If an applicant with a “merely descriptive” mark cannot show distinctiveness, trademark protection will be denied. Lane suggests another option, though: registering descriptive marks on the USPTO's Supplemental Register, which “has lower hurdles for registration but also provides lesser protection.” Once on the Supplemental Register, an applicant can later petition to have a mark moved to the Principal Register by showing acquired distinctiveness.