I’ve regularly reported on the struggles faced by clean tech manufacturers and service providers seeking to protect and enforce descriptive eco-marks (including my own marks).
One can’t register or otherwise protect a mark that is merely descriptive (i.e., it immediately conveys to consumers the nature of the goods or services) because that would restrict competitors from conveying information about their goods or services.
However, a descriptive mark can be protected if the applicant demonstrates that the mark has acquired distinctiveness, or secondary meaning, i.e., the mark has become sufficiently distinctive through use so consumers have come to recognize it as a source identifier for the goods or services. Such a mark is not merely descriptive.
Generic terms, on the other hand, can never be protected. There is no such thing as a generic mark; a generic term cannot function as a trademark.
A recent decision of the Trademark Trial and Appeal Board (Board) of the U.S. Patent and Trademark Office (USPTO) highlights the genericness analysis in the context of green technology.
In re Aquei Technologies LLC involves Aquei’s application to register the proposed mark SUSTAINABLE WATER for “sustainable on-site water recycling and wastewater treatment services.” The trademark examining attorney in the USPTO refused registration on the ground that the mark is generic.
Aquei appealed, and the Board affirmed. To determine whether a term is generic requires a two-step inquiry: first, the Board looks at what is the genus of goods or services at issue; second, the Board asks whether the term sought to be registered is understood by the relevant public to refer to that genus of goods and services.
The Board found the genus of services at issue was accurately stated by Aquei’s recitation of services, i.e., “sustainable on-site water recycling and wastewater treatment services.”
Based on Aquei’s web site describing its business as “water reclamation and reuse” to make “water” supplies “sustainable,” articles such as one about “The Science of Sustainable Water,” and other players’ in Aquei’s field use of the term “Sustainable Water” in their trade names including an industry alliance called the Sustainable Water Infrastructure Coalition, the Board found the term names the central focus or key aspect of Aquei’s services:
The evidence reveals that the term “Sustainable Water” directly names the most important or central aspect or purpose of Applicant’s services, which are treating, recycling and reusing water.
The Board went on to find that the components “SUSTAINABLE” and “WATER” are independently generic and remain generic when combined:
“Sustainable Water” is nothing more than the sum of its two generic parts and “the entire formulation does not add any meaning to the otherwise generic mark.” The generic components produce a generic composite and signify nothing more than services focused ultimately on the production of “sustainable water” as that term is ordinarily and commonly used by the public and others in the industry.
Accordingly, the Board held SUSTAINABLE WATER to be generic and unprotectable:
Hence, the term sought to be registered is understood by the relevant public primarily to refer to that genus of services, the term is generic, and should be freely available for use by competitors.