Archive for the ‘Eco-Marks’ category

Tesla Faces Renewed Trademark Trouble in China

July 25th, 2014

Tesla’s intellectual property is in the news again, but this time it’s a trademark issue.

A previous post reported on Tesla’s trademark problem in China.  Evidently, a businessman named Zhan Baosheng had registered the TESLA (or “Te Si La” transliterated) trademark in China in 2006, in both English and Chinese.

While Zhan’s trademark rights initially blocked Tesla from using the mark there, in early 2014 the company announced that it had resolved the matter though a court decision granting it the right to use the TESLA mark in China.

So Tesla seemed to be in the clear.  But there is renewed uncertainty about the company’s ability to use its brand in China.

Apparently unhappy with the initial result, Mr. Zhan is now suing Tesla for trademark infringement.  According to his lawyer, Zhan is demanding that Tesla stop all sales and marketing activities in China, shut down showrooms and charging facilities, and pay him 23.9 million yuan ($3.85 million) in compensation.

Per my prior post, it seems like Zhan is seeking nothing more than a big pay day, as opposed to protecting legitimate business interests.

The case will be heard on August 5th by the Beijing Third Intermediate Court.

This is not the first time a U.S. clean tech company has faced IP difficulties in China – American Superconductor has been involved in major copyright and trade secret litigation with Chinese wind turbine maker Sinovel.

San Diego Clean Tech Open Biz Briefing to Highlight Eco-marks and Green Patent Perspectives

April 7th, 2014

If you’re in or around San Diego this week be sure to check out the Clean Tech Open Business Briefing this Thursday, April 10th.

The Cleantech Open is a non-profit organization that runs the world’s largest cleantech accelerator.  The Business Accelerator fosters promising startups in cleantech fields through a six-month program that includes cutting-edge entrepreneur training and mentoring (including in IP!), client and partner opportunities, and funding connections.

The business briefings bring together Clean Tech Open members and staff and early-stage clean tech start-ups and entrepreneurs.  Attendees will get an overview of the Cleantech Open and the Business Accelerator.

I will be speaking on some broad themes about the role of patents in the clean tech industry.  Entitled “Green Patents and Green Branding:  Global Perspectives and News You Can Use,” my talk will cover a range of big picture stuff and practical info on green patenting and protecting eco-marks.

The event will be held at the World Resources SimCenter in downtown San Diego from 6:00-8:00 PM.  You can find more information about the event and register here.

Chinese Eco-mark Lawsuit Ends Well for Tesla

March 4th, 2014

A previous post reported on Tesla’s Chinese trademark problem.  Apparently, a businessman named Zhan Baosheng had registered the TESLA (or “Te Si La” transliterated) trademark in China, blocking  the American automaker from using the mark there.

Mr. Zhan was also operating a web site using the Tesla China domain (, and operating a Tesla-branded account on the Chinese microblog site Sina Weibo.

As part of a recent press release announcing its plan for growth in China the company said it resolved the trademark issue.  More particularly, Tesla obtained a court decision granting it the right to use the TESLA mark in China (see the story here on Green Car Reports and covered by Clean Technica here).

Veronica Wu, Tesla’s vice president for China operations, said the company had won this right without the need to pay Mr. Zhan (who had apparently hinted that he would sell the trademark for millions of dollars).  According to Wu, “we went to court and won.”

Though technically Zhan may have been the first user of the TESLA mark in China, the court decision seems right because his apparent high asking price for the mark signals bad faith on his part and that his use may not have been bona fide.

This decision bodes well for American and other non-Chinese companies who may need to protect and enforce their intellectual property rights against local competitors in China.

The highest profile clean tech IP dispute in China is the trade secrets and copyright case between American Superconductor and Chinese turbine manufacturer Sinovel, which made it all the way to, and is (as far as I know) still pending in, the Chinese Supreme Court.

Does Use of a Certification Mark Constitute an Express Warranty?

November 26th, 2013


Unlike ordinary trademarks, which indicate the commercial source of a product, certification marks communicate to the consumer that the products to which they are affixed meet certain manufacturing or quality standards.

One question that flows from this quality communication function is whether a manufacturer that affixes a certification mark to a product, by doing so, expressly warrants that the product meets the standards signaled by the certification mark.

This legal issue has begun to split the courts in the context of the Energy Star certification program for energy efficient appliances.  In the last year or so, an Ohio federal court dismissed a plaintiff’s express warranty claim based on affixation of the ENERGY STAR logo to a washing machine while a California federal court allowed a similar claim involving refrigerators to move forward.

The defendant was Whirlpool in both cases.  In the Ohio case, Savett v Whirlpool Corporation, the defendant moved to dismiss all of plaintiff’s claims, including a breach of express warranty.

The court granted Whirlpool’s motion on that claim because it found the ENERGY STAR logo does not in itself affirm any fact or promise:

[T]he Court finds that plaintiff fails to allege the existence of an express warranty because use of the ENERGY STAR logo is not an “affirmation of fact or promise” as alleged in this case . . . . the logo itself contains no assertion of fact or promise.  Unlike traditional express warranties where unambiguous promises or factual assertions are made, which are clearly understood on their own footing, any meaning conveyed by the logo requires independent knowledge.

The court also noted the lack of any precedent “in which a logo has . . . been held to constitute an express warranty.”

Contrast that with Dei Rossi v. Whirlpool Corporation, decided by the U.S. District Court for the Eastern District of California.  This case, discussed in a recent post, came out the other way.

The California court denied Whirlpool’s motion to dismiss the express warranty claim, holding that it was satisfied by affixation of the ENERGY STAR certification mark to the refrigerators.  This act by Whirlpool conferred a specific and express warranty because it communicated that the products met the Energy Star requirements:

Although Defendant alleges that this logo does not confer a specific and express warranty, Defendant does not provide any reason for affixing this logo to the product other than to signify that the product meets the Energy Star specifications.  Simply put, the Court cannot fathom any other reason for affixing the logo in such a manner. . . if Defendant’s intention was simply to signify that the product was energy efficient, it could have done so without affixing the Energy Star certification logo.  Thus, the Court finds that affixing this logo to the product satisfies the definition of an express warranty . . .

The court further found that the Plaintiffs adequately pleaded the exact terms of the warranty because the complaint noted that the Energy Star certification required the refrigerators to be at least 20% more efficient than minimum standard models.

Which is the better answer to this legal conundrum?  We may find some guidance by attempting to reconcile the conflicting results in these two cases.

It should be noted initially that we can’t reconcile these decisions based on any differences in the express warranty statutes in Ohio and California; the salient provision in each state is identical:

Any affirmation of fact or promise made by the seller to the buyer which relates to the goods and becomes part of the bargain creates an express warranty that the goods shall conform to the affirmation or promise.

One key factual difference is that the Ohio plaintiff apparently did not see the ENERGY STAR logo on the product or understand its meaning.  The Ohio court noted this in footnote 8 of its decision, stating it is notable that “plaintiff does not allege that he saw or understood any purported meaning of the logo.”

The California court did in fact distinguish its decision, at least in part, on this basis:

[U]nlike the plaintiff in Savett, in the instant case Plaintiffs have alleged that they independently understood the meaning of the logo and relied on it in deciding to purchase the products.

Ultimately, however, where a court comes out on this issue seems to depend on whether it attaches more importance to the motive of the manufacturer or the motive of the consumer.  That is, the California court found the manufacturer’s intention in affixing the ENERGY STAR logo to the product was to communicate that it meets the Energy Star specifications.

The Ohio court, by contrast, seemed swayed by the knowledge and purpose of the consumer, noting that “any meaning conveyed by the logo requires independent knowledge,” which the plaintiff in the suit notably lacked.

To be sure, there are a number of other causes of action consumers can bring against manufacturers that don’t satisfy green certification standards as advertised.  Nevertheless, I’m sure we’ll see more case law on this issue as green certification marks continue to proliferate and influence the purchasing decisions of environmentally conscious consumers.

Whirlpool Fridge Decision Provides Guidance for Future Certification Mark Greenwash Cases

November 16th, 2013


I’ve written before about the important role of certification marks in green branding, and a recent California district court decision involving the Energy Star certification highlights their continued significance.

The Energy Star program seeks to aid investment in energy efficient products by providing information that consumers and investors can use to research and compare green product or project choices. 

The U.S. Environmental Protection Agency (EPA) works with the U.S. Department of Energy and manufacturers to award the ENERGY STAR certification to products that meet particular energy savings standards.

Named plaintiffs Kyle Dei Rossi and Mark Linthicum brought a class action lawsuit against Whirlpool for selling refrigerators bearing the Energy Star logo that were later determined not to comply with the Energy Star requirements and were disqualified from the program.

The complaint, filed in the Eastern District of California, alleged that Whirlpool’s misrepresentations that the refrigerators met the Energy Star guidelines was a breach of the products’ express warranty and implied warranty of merchantability, a violation of the federal Magnuson-Moss Warranty Act, the California Consumer Legal Remedies Act (CLRA), California Unfair Competition Law (UCL), and California False Advertising Law.

Whirlpool moved to dismiss the complaint, and a recent court decision granting the motion in part and denying it in part provides helpful guidance on which causes of action effectively support greenwashing claims in connection with certification mark abuse.

Perhaps the most significant portion of the decision is the court’s holding that the express warranty claim was satisfied by affixation of the Energy Star certification mark to the refrigerators.  This act by Whirlpool conferred a specific and express warranty because it communicated that the products met the Energy Star requirements:

Although Defendant alleges that this logo does not confer a specific and express warranty, Defendant does not provide any reason for affixing this logo to the product other than to signify that the product meets the Energy Star specifications.  Simply put, the Court cannot fathom any other reason for affixing the logo in such a manner. . . if Defendant’s intention was simply to signify that the product was energy efficient, it could have done so without affixing the Energy Star certification logo.  Thus, the Court finds that affixing this logo to the product satisfies the definition of an express warranty . . .

The court further found that the Plaintiffs adequately pleaded the exact terms of the warranty because the complaint noted that the Energy Star certification required the refrigerators to be at least 20% more efficient than minimum standard models.

Whirlpool did succeed, however, in convincing the court that the breach of implied warranty of merchantability claim should be dismissed.  There, the test is whether the refrigerator could serve its ordinary purpose, and there was no allegation that the refrigerators at issue failed to properly refrigerate. 

The federal Magnuson-Moss Warranty Act requires the plaintiff to show that the performance of the product was guaranteed over a specific time period.  The court dismissed this claim because the Energy Star logo does not in itself express or denote a time period.

The court allowed Plaintiffs’ California CLRA claim to go forward because the complaint alleged that Whirlpool knowingly mislabeled the refrigerators and therefore may have either intentionally misrepresented the energy efficiency of the products or intentionally labeled them with information it had not verified as accurate.

The UCL claim also survived the motion to dismiss for the same reason, i.e., that the allegation of knowingly mislabeling the products could support a claim under the fraudulent acts or promises prong of the UCL.  In addition, the failure to meet the Energy Star standards meets the law’s unfair practice prong.

Finally, the court denied Whirlpool’s motion as to Plaintiffs’ California state false advertising claim.  The court held that the numerous pages of Energy Star advertisements used by Whirlpool cited in the complaint and the specific instances described in which Dei Rossi and Linthicum saw the Energy Star logo on the inside of refrigerator products at retail stores sufficed to support the claim.

Lawyers selecting and pleading various federal, state, and common law claims in greenwashing cases, particular those involving certification mark abuse, would be wise to read this decision.

Article Distinguishes Green “Tech” IP and Green “Non-Tech” IP

November 12th, 2013

A recent article written by Jonathan M.W.W. Chu and published in the Washington and Lee Journal of Energy, Climate, and the Environment takes another look at the role of intellectual property in green technology innovation.

Entitled “Developing and Diffusing Green Technologies:  The Impact of Intellectual Property Rights and their Justification,” the piece covers much familiar ground including discussions of the meaning of green technology and traditional justifications for IP protections.

The article also touches on many green IP and climate change topics previously explored in more detail elsewhere such as the notion of technology as the solution to global warming, access to green technologies, international transfer of green technologies, and green patent fast track programs.

The main contribution of this piece is to break down green IP into what Chu calls “Technological IP” and “Non-Technological IP,” a division he draws from the TRIPS Agreement and an IP and climate change book by Professor Matthew Rimmer

According to the article, Technological IP are rights in green technology, including patents, copyright in software code, semiconductor chip protection, trade secrets and know-how, while Non-Technological IP are rights in relation to green technology, such as trademarks around such technologies (what I call eco-marks), design rights, and other copyrights.

Chu posits that the two categories of green IP have different impacts on development and diffusion of green technologies. 

On Technological IP and patents, the article stipulates that continued innovation will lead to lower costs but says “the more immediate and direct impact” of patents “still appears to negatively impact diffusion of the technology.” 

More particularly, the article concludes that we are heading toward situations in which green patents will block key technologies:

[W]ith green technologies becoming more refined and focused, the narrowing of available technologies will increase the likelihood of a patent covering and controlling a single technology.

On the one hand, Chu may be right that continuing incremental improvements could result in patents that cover a “single” technology.  On the other hand, would that really be a problem? 

For a very focused, and presumably narrow, patent the ability to control that patented technology means little when there are older, broader related technologies out there.  Also, the narrower and more focused a patented invention is, the easier it is to design around it.

The piece also cites copyrights on ”Green Operation Software” necessary for operation of green technologies as an example of Technological IP that could hinder their development and diffusion. 

Chu may be on firmer ground here, and the AMSC-Sinovel civil litigation in China and criminal case in the United States (see, e.g., here and here) involving software code for wind turbine control systems demonstrate the impact such copyrights can have in the clean tech industry.

On the other hand, copyrights in software protect only the specific code sequences, which can be written in different non-infringing ways to achieve the same functionality.

The article discusses green brands, including trademarks and certification marks, and concludes that they are having a positive impact on diffusion of green technologies.  On this score, the piece notes that trademark rights translate into revenue (but so do patent rights, I would add) that can be used for further R&D, and the associated marketing is necessary for the diffusion of innovation.

I agree that certification marks such as ENERGY STAR are largely positive and effective in promoting green innovation by rewarding manufacturers that meet energy efficiency standards and aiding sales of products that lead to energy savings.

The article’s treatment of design rights is thin and conclusory, positing that they “should not pose any serious hurdle” to green tech innovation.  The piece would have benefitted from a more thorough and balanced discussion on this, including consideration of design patent litigation, such as the expensive battle between Nichia and Seoul involving four LED design patents, which included allegations of antitrust violations.

One need only look at the Apple-Samsung smartphone wars to understand that design patent rights can be very powerful.

While it could have been developed further, I like this article’s treatment of green IP as bifurcated into Technological IP and Non-Technological IP.  It provides an interesting prism through which to view green IP and its role in green innovation.

Chrysler Clear as Court Holds ECODIESEL Mark Merely Descriptive

October 17th, 2013


I’ve written extensively (see, e.g., here and here) on the descriptiveness hurdles faced by owners of eco-marks containing terms such as “CLEAN”, “GREEN” and ”ECO”, including this author and his blog service mark (see, e.g., here and here).

A recent decision by a federal court in Hawaii provides a window into the fate of a hopelessly merely descriptive mark – ECODIESEL for diesel fuel made from used oil.

Unitek Solvent Services (Unitek) is a Hawaii-based corporation that focuses on recycling, reclamation, and re-use of used oil.  When Unitek began looking into ways to convert used oil into reusable fuel, its president decided on the term ECODIESEL to brand its processed diesel fuel.

In late 2005, Unitek filed a federal trademark application for the ECODIESEL mark.  The application was registered on the Supplemental Register as U.S. Trademark Registration No. 3,166,981 for “diesel fuel” and fuel for motor vehicles, namely diesel.”

By contrast with the Principal Register, the Supplemental Register offers lesser protections but also has lower standards for registrability, including permitting registration of merely descriptive marks.

A mark that is merely descriptive of the goods or services it is being used to market or sell is not registrable on the Principal Register without demonstrating secondary meaning, i.e., that consumers have come to associate the mark with the source of the goods or services.

After Chrysler began marketing some of its vehicles with optional diesel engines under a stylized ECODIESEL design (see above), Unitek sued Chrysler in federal court in Hawaii and moved for a preliminary injunction.

In a recent decision, the court denied the motion and held that Unitek’s ECODIESEL mark is merely descriptive and has not acquired secondary meaning. 

The mark is descriptive, the court held, because it requires no mental leap to determine what goods the mark refers to and instead immediately conveys to the consumer those goods:

The Court holds that no mental leap is required in order to conclude that ECODIESEL is a reference to a diesel fuel product that is more ecological than normal diesel fuel.  Unitek concedes that one well-accepted meaning of “eco” is “environmental friendliness,” and does not argue that the term “diesel” in ECODIESEL is anything other than a generic reference to diesel fuel.  Combining the terms, no imagination is required to discern that this term references ecologically-conscious diesel…not even a mental hop is necessary to link ECODIESEL with Unitek’s fuel product…Thus, the ECODIESEL mark is descriptive.

On acquired distinctiveness, or secondary meaning, Unitek provided evidence that it sells all of the ECODIESEL fuel it produces.  The problem was that all the fuel is sold to just one customer, and that cannot constitute enough consumer recognition to demonstrate secondary meaning:

this uncontroverted evidence actually hurts Plaintiff’s case more than it helps because it is undisputed that Unitek sells all of its ECODIESEL fuel to a single customer, Grace Pacific.  This evidence weighs against a determination of secondary meaning because it illustrates the very limited number of customers who have actually ever purchased Unitek’s fuel product and who may have come to associate ECODIESEL with Unitek.  Although Grace Pacific may associate ECODIESEL with Unitek, this is insufficient to establish that a signficant segment of the relevant public would make the same association.

Absent secondary meaning, the ECODIESEL mark was merely descriptive and not entitled to protection.  The court, therefore, denied Unitek’s motion for a preliminary injunction.

Chinese Eco-mark Madness and Related News

September 26th, 2013

There have been a few recent developments in Chinese eco-marks (my term for marks used in connection with green goods or services), both in China and in the United States.

Starting with by far the weirdest news item, a small Chinese electric car technology company called Hong Yuan Lan Xiang (HYLX) has filed a trademark application in China to register the name SNOWDEN for for its “top secret technologies and products” (see the Green Car Reports article here).

These include new removable batteries, technologies for increased charging speeds, and technologies for remodeling conventional cars into electric-capable models.  Apparently, the company thinks the top secret nature of its technologies makes Snowden the perfect brand name for them.

Also in China, U.S. electric carmaker Tesla Motors has encountered what appears to be a cybersquatter and prior registrant of the TESLA mark.  According to this Reuters story, Zhan Baosheng owns a Chinese trademark registration for TESLA, runs a web site using the Tesla China domain (, and operates a Tesla-branded account on the Chinese microblog site Sina Weibo.

Zhan’s web site includes a Tesla brand logo that is almost identical to that of Tesla Motors and shows a car quite unlike any of Tesla Motors’ vehicles.  It seems likely that Tesla Motors will have to buy out Zhan to clear the way for its trademark rights and branding efforts in China.

Finally, an eco-mark infringement suit covered in a previous post has come to a close (at least in the trial court).  This case pitted  SunEarth (owned and operated by the Solaray Corporation since 1992), which manufactures and sells solar thermal collectors and related components, against Ningbo Solar Electric Power (Ningbo) and its U.S. subsidiary, which was selling solar photovoltaics under the SUN-EARTH (and Design) mark:

Ningbo owns U.S. Trademark Registration No. 3,886,941 (’941 Registration), registered in 2010, and the company changed its name to Sun-Earth Solar Power (SESP) the same year.

After filing a proceeding in the USPTO Trademark Trial and Appeal Board to cancel the ’941 Registration and trying to negotiate a settlement with Ningbo, SunEarth sued for trademark infringement, cancellation of the registration, and other claims in the Northern District of California in October 2011.

In a recent decision, the court held that Ningbo was liable for trademark infringement and ordered the USPTO to cancel the ’941 Registration.  Although Ningbo’s trademark registration was entitled to a presumption of validity, SunEarth successfully rebutted the presumption by demonstrating prior use of the mark, a fact conceded by Ningbo:

Plaintiffs have introduced evidence that they have used the term SunEarth as a trademark, trade name and service mark in the United States since 1978.  Defendants have conceded that Plaintiffs have “common law prior user rights in several states of the United States to its SunEarth mark for solar thermal systems.”

Although Ningbo disputed the geographic extent of SunEarth’s common law prior user rights, the court found that SunEarth had established “legally sufficient national market penetration over their trade name and mark” prior to Ningbo’s first use of the mark.

From there, it was simply a matter of conducting a routine likelihood of confusion analysis, which favored SunEarth due to the similarity of the marks, the proximity of the goods (solar photovoltaics and solar collectors), and the similar trade channels such as solar product shows, specialty retailers, and trade magazines.

Green Patent Acquisitions: Ecover Buys Method’s Green Cleaning Tech and Business

September 27th, 2012


Method is a San Francisco company that makes green cleaning products.  Recently, the company’s Belgian competitor, Ecover, acquired Method in a deal that would create the world’s largest pure play green home cleaning company (see Greenbiz article here).

Method has a diverse IP portfolio which includes at least seven utility patents and applications, over 40 trademark applications and registrations, and at least 15 design patent applications.

More particularly, Method owns U.S. Patent Application Publication Nos. 2010/0093595 and 2010/0299846, entitled “Liquid cleaning compositions” (Cleaning Compositions Applications) and directed to cleaning compositions comprising a surfactant system, a certain percentage of water, a solvent system, and an enzyme.  The cleaning compositions are in a form of continuous phase and provide improved cleaning efficacy with lower active doses of cleaning ingredients. 

According to the Cleaning Compositions Applications, the invention can be used in highly concentrated form and thus provides advantages such as the need for less packaging and reduced energy consumption in shipping and lower volume of active ingredients to dispose of:

[E]mbodiments of the cleaning compositions . . . provide several advantages over known compositions, including but not limited to the ability to create an efficacious cleaning composition in a highly concentrated form (e.g., 4x, preferably 5x, more preferably 6x concentrates), thereby minimizing packaging requirements and energy consumption for packaging and shipping; lower quanitities of actives are required per washload, reducing the cost of the products, as well as minimizing the amount of cleaning activities added to sewer and septic systems and the environment; less packaging to recycle or add to landfills; etc.

As to green brands, Method owns U.S. Trademark Registration No. 4,078,271 for the mark POWERGREEN for a variety of cleaning preparations in Class 3.

Method’s design patents include D522,372, D541,661, D614,032 and D619,008 (’008 Patent), which protect various bottle designs such as this one of the ’008 Patent:

According to the Greenbiz article, the partnership will provide each company access to new geographic markets and technical information such as Method’s developments in green solvents and Ecover’s biosynthetic surfactants.

EPEAT Certification Highlights Importance of Eco-labels

August 3rd, 2012

EPEAT, Inc. (EPEAT) is an Oregon company that administers an environmental rating program certifying green computers and other electronic equipment. 

Manufacturers can register their products as EPEAT certified, and purchasers, whether they are large institutions or individuals, can use EPEAT’s searchable registry to select certified products to buy.

Products that satisfy the EPEAT criteria, based on IEEE environmental standards, are EPEAT certified.  More particularly, a product has to meet all of EPEAT’s required criteria to earn certification and, depending on how many of the optional criteria are met, the product is designated Bronze, Silver or Gold.

EPEAT owns two U.S. Certification Mark Registrations for its brand.  U.S. Registration No. 3,534,585 is for the EPEAT word mark, and U.S. Registration No. 3,534,586 is for the EPEAT design mark pictured above.

Both registrations are for “electronic equipment” in Class A and each states that the mark ”certifies that the goods meet environmental standards set out by the certifier.”

Certification marks differ from ordinary trademarks in that, instead of indicating the commercial source of a product or service, they communicate that goods or services meet certain quality or manufacturing standards.  They are owned not by the individual businesses, but by the organizations that set the standards, in this case EPEAT. 

For the certification mark application process, it is the certifying organization, not the ultimate user, that applies to the U.S. Patent and Trademark Office for federal registration of a certification mark.

The EPEAT certification has been in the news recently because of Apple’s equivocation on whether to use it for its computers.  Apple decided to drop its EPEAT certification, but did a 180 after several high-profile customers indicated that they would be unable to buy Apple’s monitors, laptops or desktop computers absent the certification. 

According to this Greenbiz piece, many government agencies and corporations use the EPEAT registry as a guideline for IT procurement.  Clearly, eco-labels, particularly independent third party environmental certifications such as EPEAT, are becoming essential for doing business.