Since I started reading, researching and posting about the prevalence of eco-marks (trademarks that communicate environmentally-friendly products or practices), I’ve been troubled by them. There is, of course, the obvious concern about false, unsubstantiated, or misleading environmental claims, known as “greenwashing,” which troubles me as a consumer. This concern has been borne out by a recently published report by Terra Choice, an environmental marketing agency, called “The Six Sins of Greenwashing,” which surveyed over 1,000 purportedly green products and found that the vast majority made false or misleading claims. I’ve discussed this problem, and a couple of ways to combat it in this space before. (see prior posts here and here)
But there is something else about the union of green marketing and trademarks that troubles me as an IP lawyer. As I mentioned in previous posts, one can’t get a federal registration for a mark that is a descriptive or generic term for the goods or services because that would prevent competitors from identifying their goods or services. An application for federal registration of a trademark must specifically identify the goods or services the mark will be used in connection with. It is this identification, or listing, of goods or services that the U.S. Patent & Trademark Office (PTO) examines to decide whether the mark should be allowed a federal registration. This decision is guided by many factors including the level of descriptiveness of the mark. But the trouble with eco-marks is that the identification of goods rarely reflects the environmental component of the mark. Take, for example, the identifications of services for two marks owned by PNC Bank:
1. FINANCIAL SERVICES, NAMELY, BANKING SERVICES FEATURING CHECKING, SAVINGS AND INVESTMENT ACCOUNT SERVICES; FINANCIAL WEALTH MANAGEMENT; CONSUMER LENDING SERVICES; INVESTMENT BROKERAGE SERVICES; PENSION VALUATION SERVICES; ADMINISTRATION OF EMPLOYEE PENSION PLANS; INSURANCE AGENCY SERVICES; LIFE, HEALTH, ACCIDENT AND FIRE INSURANCE UNDERWRITING; INVESTMENT BANKING SERVICES; FUNDS INVESTMENT AND FUND INVESTMENT CONSULTATION.
2. BANKING; FINANCIAL SERVICES, NAMELY, FINANCIAL MANAGEMENT SERVICES, FINANCIAL PLANNING SERVICES, ESTATE PLANNING SERVICES, TAX PLANNING SERVICES, RETIREMENT PLANNING SERVICES, GIFT PLANNING SERVICES, DISTRIBUTION PLANNING SERVICES, ENDOWMENT MANAGEMENT AND PRIVATE FOUNDATION ADMINISTRATION SERVICES, EMPLOYEE BENEFIT PLAN MANAGEMENT AND SERVICES, FINANCIAL PORTFOLIO MANAGEMENT SERVICES, INVESTMENT ADVISORY, MANAGEMENT AND CONSULTATION SERVICES, INVESTMENT BANKING SERVICES, SECURITIES UNDERWRITING AND BROKERAGE SERVICES, INSURANCE UNDERWRITING SERVICES IN THE FIELDS OF LIFE, HEALTH, ACCIDENT, FIRE, MARINE, AND MEDICAL, AND ANNUITY UNDERWRITING AND BROKERAGE SERVICES, AND BANKING SERVICES.
You wouldn’t know it, but one listing is for an eco-mark. The first is the identification of services for the mark GREEN BRANCH, the second is for EASY AS PNC. By reading the GREEN BRANCH listing, one would never suspect that PNC is using the mark to attract environmentally-conscious consumers by touting the bank’s green ways. There is no mention of PNC’s energy efficient technology, green buildings, or any other environmentally-friendly business practices.
It seems to me that GREEN BRANCH arguably is descriptive of the services actually provided – financial services in environmentally-friendly bank facilities – even though it is, of course, not descriptive of the services listed. While trademark examiners in the PTO sometimes take it upon themselves to look beyond the listing of goods or services to the context of the mark’s use, they don’t always, and the result is stealth prosecution of eco-marks as these arguably descriptive trademarks may slip under the radar of the PTO.