Environmentally themed businesses, products, and technology are sprouting up everywhere, and, not surprisingly, their owners and inventors would like to protect them legally.
When turning to the United States Patent and Trademark Office (USPTO), however, some green trademark seekers have found that the process may not be as easy as giving your product a catchy, “environmentally conscious” name. On the other hand, green patent applicants are finding a more fertile road at the USPTO.
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 dsecriptive.” 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.
Opposition to Trademark Registration
As the TTAB cases above demonstrate, marks can be refused registration in the initial stages by a USPTO examiner and then finally by the TTAB. However, if a mark survives the examination step, it then passes to the “opposition” period during which third parties may object to the mark's registration. It was during the opposition period that Powertech lost its battle to trademark HYBRID GREEN UPS (universal power supplies and uninterruptible power supplies (UPSs)), because UPS (United Parcel Service), the shipping company, raised claims against it.
Although the TTAB found there was no “likelihood of confusion” between the two marks (because UPS is in the shipping business and Powertech makes power supplies) the TTAB nonetheless agreed with UPS that the words “hybrid” and “green” are “merely descriptive” and denied the mark registration on that basis.
Of course, if Powertech could have shown secondary meaning, or could in the future, it might still be able to register its mark.
USPTO's Push for Green Patents
In sharp contrast to the USPTO's sometime-reluctance to grant green trademarks, the office has gone to great lengths to encourage the submission of green patent applications. In September 2009, the office announced the Green Technology Pilot Program, to “accelerate the development and deployment of green technology, create green jobs, and promote U.S. competitiveness in this vital sector.”
This “fast-track” process allows patent applications claiming green subject matter to have their cases reviewed “out of turn” (more quickly than normal). The program was originally available only to patents filed before December 8, 2009, and was to end on December 8, 2010; the deadline, however, has since been extended to December 31, 2011. Moreover, in May 2010, the USPTO further expanded the program to include more categories of technologies. As of June 1, 2011, 1918 applications have been granted expedited review under this program, which currently has a limit of 3000 total expedited applications (although this limit may be lifted in the future). If you think you have a patent application that includes green technology, you can find the petition materials here to try to expedite your application.
As noted by Michael Tschupp, “Trademark applications are already examined so much more quickly than patents (usually between 3-4 months from submission) that such a program is unnecessary.” We might conclude, then, that the USPTO doesn't necessarily favor green patents over trademarks—just that it recognizes the importance of helping green technology move along faster.
Final Thoughts on Green Intellectual Property
While the USPTO is actively encouraging the development of green technology, it isn't so keen on granting green trademarks, particularly because of what it views as their often “mere descriptiveness.” Green trademark and patent seekers should be well-informed going into the process in order to increase the probability of success—and help make sure their marks and/or inventions get legal protection as quickly as possible.
Onward and greenward!