Archive for the ‘Eco-Marks’ category

FTC Proactive and Preemptive on Green Certifications

October 13th, 2015


The Federal Trade Commission (FTC), America’s consumer watchdog agency, has historically been ahead of the curve on greenwashing.

In 1992, it first published its Guides for the Use of Environmental Marketing Claims, commonly know as the Green Guides, which provide a framework for green marketers to formulate permissible environmental benefit claims for products and services.

Since then, the agency has been actively pursuing greenwashers, with an aggressive campaign in the 1990s against deceptive environmental marketing claims including enforcement actions targeting ads for plastic grocery bags, aerosol cleaning and beauty products, packaging and tableware products, laundry detergents, and disposable diapers.

More recently, the FTC has occasionally taken alleged greenwashers to court; it brought a recent action for misleading environmental benefit claims against an LED manufacturer.

So it comes as no surprise that the agency would be proactive in the area of green certification seals.  Recently, the FTC sent warning letters to five providers of such seals and 32 businesses using those seals.

Certification seals, or marks, are a special species of trademark.  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.

Examples of popular certification marks are the LEED certification, owned by the U.S. Green Building Council and Energy Star, owned by the U.S. Environmental Protection Agency:

Energy Star

This preemptive move consisted of the letters, which alerted the providers and businesses that the certification seals at issue could be considered deceptive and may not comply with the Green Guides.

The FTC announced the warning letters last month, but noted that it was not conducting any enforcement actions at this time.  The FTC did not disclose the names of the companies to which it sent the letters.

The press release provides examples of two hypothetical green seals, potentially deceptive on the right and not deceptive on the left:


The press release also mentions the agency’s new blog, Performing Seals, which helps marketers understand how certification seals can comply with the Green Guides.

Proposed Eco-mark Succumbs to Genericness as SUSTAINABLE WATER Proves Unsustainable

July 27th, 2015

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.

Mere descriptiveness has killed many eco-marks over the last several years, such as ECODIESEL, MOTIONPOWER, SOLARWINDOW, and HYBRID GREEN.

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.

Inside An Eco-mark Application: Saving GREEN PATENT LAW from the Depths of Descriptiveness

July 1st, 2015

In a series of posts published several years ago (see, e.g., here and here), I documented all the gory details of my attempt to register the GREEN PATENT BLOG service mark.

Despite two rejections (see here and here) on the ground that the mark was merely descriptive of the blogging services, it was ultimately registered (thanks to many of my readers) (see here) based on an evidentiary showing of acquired distinctiveness.

Now that I run my own practice under the GREEN PATENT LAW service mark, it’s de ja vu all over again.

In June 2014, I filed an application with the U.S. Patent and Trademark Office (USPTO) to register the GREEN PATENT LAW mark for “legal services.”

As expected, the application was rejected for being merely descriptive (a mark that immediately conveys to consumers the nature of the goods or services is merely descriptive and can’t be registered because that would restrict competitors from conveying information about their goods or services).

To support the rejection, the Examining Attorney cited my web site, which says Green Patent Law is a “law firm” providing “patent” and trademark law services to businesses in various technology areas, including “green technologies.”

When facing a rejection for mere descriptiveness, there are two basic response strategies.  If there is room to argue that consumers would not immediately perceive some characteristic of the goods or services from the mark, but instead would need to think about it to link the mark and the goods/services, then the applicant can argue the mark is suggestive.

If there is no credible suggestiveness argument, the applicant has to show, through one or more avenues, that the mark has acquired distinctiveness, or secondary meaning.  Acquired distinctiveness is a trademark law concept which means that the mark, though it may not be inherently distinctive enough for trademark protection, has become sufficiently distinctive through use so that consumers have come to recognize it as a source identifier for the goods or services.

The first tactic, if the mark has been in use for at least five years, is to rely on a trademark law presumption of acquired distinctiveness.

A second possibility is the applicant can marshal evidence to demonstrate acquired distinctiveness.  This can take the form of direct evidence consisting of statements from consumers saying they identify the applicant as the source of the goods or services and/or indirect evidence such as advertising and media mentions linking the mark with the goods or services.

A third approach, available in limited circumstances, is to argue acquired distinctiveness in whole or in part based on a prior registered trademark already found to have acquired distinctiveness, essentially piggy-backing on the prior registration.  This was how I responded to the Office Action making the initial rejection for GREEN PATENT LAW.

In my response, I argued acquired distinctiveness in part based on the prior registration for GREEN PATENT BLOG.  In other words, my response contended that the GREEN PATENT portion of the GREEN PATENT LAW mark has secondary meaning because GREEN PATENT BLOG has secondary meaning, they share common words, and the services – legal services and legal blogging – are related.

That response was unsuccessful.  In a second Office Action, the Examining Attorney said the legal services and blogging services were not sufficiently similar and required additional evidence of acquired distinctiveness.

So I’m now left with gathering evidence of acquired distinctiveness.  Stay tuned.

Automakers Make Eco-mark Progress

June 9th, 2015

Two major automakers have made progress recently in protecting their present and future brands.

In previous posts (here and here), I reported on GM’s U.S. Trademark Application Nos. 86357513 and 86357523 for BOLT and CHEVROLET BOLT, respectively, for “motor land vehicles, namely, automobiles” (BOLT Applications).

The applications ran into some hitches when the U.S. Patent and Trademark Office (USPTO) initially refused registration based on U.S. Trademark Registration No. 4,429,759, owned by Yamaha, for the mark BOLT for “Motorcycles and structural parts therefor, excluding wheels.”  According to the trademark examining attorney, there was a likelihood of consumer confusion because the marks are the same and goods are similar.

GM overcame this rejection by arguing differences between the goods and channels of trade (e.g., motorcycles and automobiles are typically sold in different dealerships).  GM also entered into and submitted to the USPTO a Consent Agreement whereby both parties consented to registration by the other of the BOLT mark for their respective goods.

However, the trademark examining attorney also suspended GM’s BOLT Applications based on provisional refusals to register the marks based on prior filed U.S. Trademark Application Serial Nos. 86108379 and 86108374 for the BOLT CUSTOM TRUCKS AND MANUFACTURING word and design marks for “truck parts, namely, a premium-outfitted truck cab.

GM was able to overcome these provisional rejections by agreeing to amend the identification of goods in their BOLT Applications to motor land vehicles, namely, automobiles in the nature of cars.”

Now both applications are moving forward toward publication and registration, assuming no third parties oppose registration.


Toyota recently prevailed in an opposition proceeding against HongKong WillRaise Integrated Circuit Company (HWICC), which had filed U.S. Application No. 86/357,165 for PRIUS for chemical flavorings for tobacco and various smoking paraphernalia (‘165 Application).

Toyota filed a Notice of Opposition in December of 2014 before the USPTO Trademark Trial and Appeal Board (Board) opposing registration of the ‘165 Application.  Recently, HWICC withdrew the ‘165 Application (HWICC Withdrawal), and because the withdrawal did not include the consent of all the parties, the Board subsequently entered judgment against HWICC.

Diverting Organic Waste and Recyclables with Integrity

May 27th, 2015

Integrity Waste (IW) is full service waste management company that specializes in collection and disposal of organic waste.  Based in Novato, California, Integrity Waste has implemented programs to handle waste in Foster City, San Rafael, Concord, and Union City.

I recently spoke with Ron Falcon, the company’s CEO, about IW’s services.  He told me that IW sorts residential waste and recycling so that harmful organic waste does not end up in landfills. To the extent recyclable materials are in the waste stream, the company also removes those, so each respective stream is “cleaner” and “less contaminated.”

IW’s business model involves teaming with municipalities to manage and dispose of organic waste, recyclables, and/or compostables in accordance with local requirements.  IW trains employees to separate the waste.

One of the important and underserved markets for these services, according to Falcon, is multi-family apartment communities.  For these and other residential communities, IW provides doorstep valet collection of waste, where the residents place the waste materials out at the allotted time and the company collects them, removes recyclables and organic waste, and takes the materials to the proper locations.

Alternatively, IW places bins on site in the residential community.  Each resident can get a compost pail and take the waste to the proper locations.  In such arrangements, IW manages the waste at the point of disposal.

When asked about intellectual property, Falcon admitted the company hasn’t thought much about branding.  However, IW does have an attractive logo (top), and Falcon told me a new one is nearly ready for release.  He didn’t provide a copy of the new design, but said it includes a man with a pail that looks like a toolbox.

One major issue IW has to be aware of is communicating clearly exactly what services it provides and the environmental benefits conferred.  Accordingly, the company is “very careful” about what it says.  Falcon said they “underpromise and overdeliver” in their communications and services.

Instead of claiming absolute numbers or percentages of organic waste properly disposed of or of recyclables actually recycled, the company communicates ranges of pounds diverted from landfill.  Last year, for example, IW helped clients divert 600,000-725,000 pounds of waste in Northern California alone.

He also noted that the company’s activities are monitored by the municipalities, by the waste haulers, and by the multifamily residences.

Falcon noted that despite the existence of recycling programs, IW’s services are sorely needed.  Even in communities that have recycling programs, multi-family residences don’t have recycling bins, he said. “This is the future.”

Chevy Unveils Bolt; Planned Production Date Would Secure BOLT Trademark

February 17th, 2015

A previous post took a deep dive into two recently filed U.S. eco-mark applications filed by General Motors for the marks BOLT and CHEVROLET BOLT (Application Nos. 86357513 and 86357523 for “motor land vehicles, namely, automobiles”).

That post explained how GM could secure federal trademark registrations for these marks without ever actually using them in the United States.  The analysis provided support for some of the electric vehicle blogs, which speculated that GM might not actually intend to use the marks at all, but instead was merely using the trademark system to ward off competitors from using them.

We’ve been proven wrong.

At the Detroit Auto Show last month, GM unveiled the Chevrolet Bolt, an all-electric concept car coming to market in 2017.  The Bolt supposedly will have a 200-mile driving range (with a battery made by LG Chem), DC fast charging capability, and autonomous driving technology.  A recent GM Bolt article confirms production of the Bolt EV.

The 2017 planned production date probably impacted the timing of GM’s trademark application filings.

As discussed in my previous post, U.S. trademark applications filed on the basis of foreign filed applications, as the BOLT and CHEVROLET BOLT applications are (they are based on Brazilian trademark applications) can register in the U.S. by virtue of the foreign applications maturing to registration without the need to actually use the marks in the U.S.

However, without eventual use, typically within three years of the U.S. registration date, the U.S. registrations become vulnerable to cancellation for non-use of the marks.  So the owner of a U.S. trademark registration registered solely on the basis of a foreign or international registration (i.e., without use in the United States) cannot successfully enforce its trademark in a U.S. court.

The target production date of 2017 would put GM’s use of its BOLT and CHEVROLET BOLT trademarks comfortably within the three-year period after registration of its trademark applications.  So if GM sticks to its plans for the Chevy Bolt, it will have enforceable trademark rights after all.

The Top Green IP Stories of 2014

January 20th, 2015

Before we get into the new news, let’s take a quick look back at the top green IP stories of 2014.


5.  GE Wins Ownership of Key Wind Patent

In what was something of a sideshow, but with major implications for the main event, the Court of Appeals for the Federal Circuit effectively ended a dispute between GE and a former employee, Thomas Wilkins, over ownership of one of the patents involved in larger litigation with Mitsubishi.

After Wilkins brought a lawsuit to correct inventorship of U.S. Patent No. 6,921,985 (’985 Patent), Mitsubishi intervened in the suit.   The Federal Circuit ultimately ruled for GE because the document Wilkins argued demonstrated his conception of the invention did not disclose any elements of the claimed invention.

In fact, the court held, the document in question “does not even depict the key feature Wilkins claims to have invented, i.e., a UPS powering the wind turbine’s three controllers.”


4.  Tesla’s Chinese Trademark Troubles

Tesla’s eco-mark issues in China were resolved, renewed, and resolved again in 2014.  Early in the year, Tesla said it had obtained a court decision granting it the right to use the TESLA mark in China over a cybersquatter and prior registrant of the TESLA mark named Zhan Baosheng.

A few months later, Mr. Zhan sued Tesla for trademark infringement in China, demanding the American electric car maker 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.

Shortly thereafter, Zhan apparently got his pay day when Tesla resolved the dispute – this time via a direct settlement rather than relying on the Chinese court system. Zhan agreed to settle the dispute “completely and amicably” including consenting to cancellation of his Tesla trademark registrations and applications.   He also agreed to transfer his domain names, including and to Tesla.


3.  GreenShift Loses Big in Ethanol Patent Case

2014 saw a major decision in the patent infringement litigation between GreenShift (with its New York subsidiary, GS Cleantech) and a host of ethanol producers across the midwestern United States over patented ethanol production processes.

After multiple actions were consolidated in the Southern District of Indiana and the claims of the key patent family were construed and re-construed, the court issued a sweeping 233-page decision ruling on all of the pending motions for summary judgment brought by the original parties to the suit.

GreenShift lost big, with the court making several rulings on infringement, all for defendants.  Worse yet for GreenShift, the court held three of the four patents in the key patent family invalid because of the company’s commercial offer to sell the technology more than a year before the August 17, 2004 filing date of the initial provisional patent application that led to the other applications in the family.


2.  Record Settlement Under Clean Air Act for Alleged Greenwashing

After their reputations took a beating in 2012 under a barrage of consumer class actions alleging false or misleading fuel efficiency claims, last year the Korean automakers entered into a record settlement with the U.S. government amid additional allegations of greenwashing.

The Environment and Natural Resources Division of the U.S. Department of Justice (DOJ) and the California Air Resources Board (CARB) sued Hyundai and Kia, alleging they sold over a million vehicles that did not meet the requirements of the Clean Air Act because the automakers used improper testing procedures and analysis and submitted faulty fuel economy data to the U.S. Environmental Protection Agency.

Hyundai and Kia quickly settled with the DOJ and CARB.  Under the settlement, the automakers did not have to admit the truth of the allegations but agreed to pay about $100 million, about $93.6 million to the DOJ and about $6.4 million to the CARB.  This is the largest penalty ever imposed under the Clean Air Act.

The car companies also forfeited 4.75 million greenhouse emission credits – earned for building vehicle emissions under the legal limit – which they had previously claimed and are estimated to be worth over $200 million.


1.  The Tesla-Patent Commons

The biggest green IP story of 2014 was Elon Musk’s announcement that Tesla would “donate” its entire patent portfolio.  Specifically, Musk’s post on the company blog said “Tesla will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology.”

In the wake of the announcement, more details emerged about Tesla’s patents and the technologies covered.  Reaction to the move was mixed, with some arguing it was a public relations stunt that would ultimately hurt Tesla.

In my post on the announcement, I wondered whether the temptation of exploiting Tesla’s technology would outweigh exclusivity concerns:

Ultimately, the impact of Musk’s decision may turn on to what extent other such players will be motivated to invest in manufacturing vehicles, batteries, etc. using Tesla’s patented and patent-pending technology with the obvious upside being the proven innovation that technology brings and the down side being no exclusivity, instead of investing in their own R&D and patent protection where the upside may be exclusivity and the down side may be inferior or unproven technologies.

Only time will tell what, if any, impact Tesla-Patent Commons will have on the electric vehicle market.

In Eco-mark Examination USPTO Getting into Anti-Greenwashing

October 24th, 2014

A recent article in the the New York Law Journal caught my attention for an interesting development in examination of eco-mark applications in the U.S. Patent and Trademark Office (USPTO).  We’ve known for some time that marks containing terms such as “green,” “clean,” “eco-” or “enviro-” are very likely to be rejected as merely descriptive of environmentally friendly products or services.

In “Changing Climate for ‘Green’ Trademarks,” Robert Scheinfeld of the Baker Botts firm notes that the USPTO has very recently begun to reject eco-marks on the basis of deceptiveness.

This is almost the opposite of a descriptiveness rejection:  where a descriptive eco-mark immediately communicates to consumers the environmentally friendly nature of the goods or services, a deceptive eco-mark is one that signals environmentally friendly characteristics while the goods or services do not actually confer an environmental benefit.

The piece cites a 2013 decision by the USPTO Trademark Trial and Appeal Board (Board) as a case in point.  In re Kitaru Innovations Inc. involved an application to register the mark GREEN SEAL (shown above) for adhesive tape and tape dispensers.

The USPTO examining attorney refused registration on the ground that the mark was deceptively misdescriptive under Section 2(e)(1) of the Lanham Act and comprises deceptive matter under Section 2(a) in that it falsely and materially indicates that the applicant’s goods are environmentally friendly when, in fact, they are not.  The Board affirmed the refusal.

For deceptive misdescriptiveness under Section 2(e)(1), the Board’s starting point, by now a very familiar one, was that the word “‘green’ directly conveys information to potential consumers that the tape products are environmentally friendly.”

To be misdescriptive, a mark must be merely descriptive of a significant aspect of the goods which they could plausibly possess but in fact do not.  The Board concluded that the GREEN SEAL mark could be merely descriptive if the products were, indeed, green:

The two word composite term, “Green Seal,” would be merely descriptive if applicant’s goods were made of eco-friendly materials. Green would convey information about the environmental claims that the tape possessed, and a most important feature of adhesive tape or adhesive packaging tape is that it “seals,” or “tightly or completely closes or secures a thing.”  

Interestingly, but immaterial to the Board’s decision, the applicant made no claim that its products are eco-friendly.  Rather, the “Green Seal” mark is just one in a line of color-coded adhesive tape products that also includes “Black Seal,” “Blue Seal” and “Double Blue Seal.”

Nevertheless, the Board concluded that many of the affected consumers would be likely to believe that the term “Green” in the GREEN SEAL mark describes the adhesive tapes as being environmentally friendly.  The Board noted evidence of record showing that adhesive tape products in particular are increasingly the subject of environmentally friendly claims, and consumers would expect the applicant’s tape to be eco-friendly:

As seen above in the pages of blogs and advertisements from the Internet, an increasingly common feature of adhesive and packaging tape is that it is ecologically sound. Sometimes the focus is on how the tape deteriorates over time, and others times it has to do with the use of recycled materials. The term “Green” is frequently used to capture this idea. Accordingly, consumers encountering applicant’s mark with the term “Green” will likely understand the term in context to refer to the fact that this tape is an environmentally-friendly product.

To be deceptive matter under Section 2(a), the misdescription must be likely to affect the relevant consumers’ decision to purchase the products.  Here, the Board noted the “urgency” for consumers to recycle and purchase products made of recycled or biodegradable materials.  The evidence of record showed that there is a segment of purchasers that would be more inclined to buy eco-friendly adhesive tape products.

Accordingly, the Board concluded that the perceived green quality of the tape products would be likely to affect the purchasing decisions of relevant consumers:

The level of excitement on the part of consumers reflected above over the availability of environmentally friendly / green tape products demonstrates that this characteristic would be material to the decision of consumers to purchase applicant’s goods. Accordingly, we find on this record that such a misdescription is likely to affect the decision to purchase the goods, and the third and final prong of the Section 2(a) deceptiveness test has also been satisfied.

This is the first decision I’ve seen where an eco-mark was refused registration by the USPTO for being deceptively misdescriptive and/or deceptive matter.  It’s unclear whether or not this is actually a trend.  I plan to conduct some research on this topic and discuss my findings in this space.

What is clear, though, is that the USPTO has made an initial foray into the subject of greenwashing and has at least begun to use deceptive misdescriptiveness and deceptive matter as tools for combating the problem.

It’s No Use: Why Chevy’s BOLT Trademark Isn’t (Necessarily) a New Brand

September 24th, 2014

There is some curious eco-mark news to report:  apparently, last month General Motors filed two notable U.S. trademark applications, one for BOLT and the other for CHEVROLET BOLT.

They are Application Nos. 86357513 and 86357523 (BOLT Applications), respectively, and list the goods as “motor land vehicles, namely, automobiles.”

The clean tech and electric vehicle blogosphere was buzzing with speculation as to what this new brand means.  Is GM planning to offer additional EVs, perhaps a new low-cost Chevy Volt, a short-range performance vehicle, or a cool new concept car?  Maybe different battery sizes?

One clue is that the BOLT applications’ goods listing is much broader than the goods in GM’s prior CHEVROLET VOLT trademark registration, which identified “extended range electric automobiles.”  So, contrasted with the VOLT, the BOLT trademark could cover any type of automobile, electric or otherwise.

For now, though, the clean tech blogs had to conclude there is no indication that GM intends to use this new trademark.  Inside EVs proposed that GM might be trying to protect itself from a Chinese ripoff called Bolt.

Gas 2.0 carried this non-use preemptive motive further, noting that:

Car companies are constantly taking out trademarks for names they have no intention of using; it’s just a matter of making sure nobody else uses it either.

While car companies may try to keep potential brand names away from their competitors, there are strict legal limits on the ability to protect a trademark that is not in use.

To fully understand this and to put the BOLT Applications in context, we need a bit more information about the U.S. trademark system.

A U.S. trademark application must have one or more legal bases, i.e., a situation (basis) defined by the federal trademark law, to support the filing.  The available filing bases are (1) actual use of the mark in interstate commerce, (2) a bona fide intent-to-use the mark in interstate commerce, (3) a foreign trademark application for the same mark and the same goods or services, (4) a foreign registration for the same mark and the same goods or services, and/or (5) extension of an international registration for the same mark and the same goods or services.  By far the most common filing bases are the first two.

In the United States, trademark rights flow from, and are contingent upon, use of the mark.  Although an applicant can keep a U.S. trademark application pending for about two and a half years based only on the stated intent to use the mark, the U.S. Patent and Trademark Office (USPTO) will not register a trademark in a use-based or intent-to-use application absent proof of use in interstate commerce and there is no enforceable trademark right, even at common law, without use of the mark.

More particularly, to obtain a registration of a use-based or an intent-to-use application, the applicant must prove use of the mark for the goods and/or services listed in the application by submitting a specimen showing such use.

If based on a foreign trademark application or registration or an international registration, however, the applicant does not need to use the mark in the United States to obtain a U.S. registration.  The USPTO will register the trademark upon proof that the applicant obtained a foreign registration.

Interestingly, the United States is one of only a handful of countries that require use to register a trademark and have an enforceable right in the mark.  Most countries do not require use of the mark to obtain a registration.

So filing a U.S. trademark application based on a foreign or international registration gets around the use requirement (in the United States and potentially anywhere in the world), at least or the purpose of obtaining a U.S. trademark registration.

But that’s not the end of the story.  The owner of a U.S. trademark registration registered solely on the basis of a foreign or international registration (i.e., without use in the United States) cannot enforce its trademark in a U.S. court.  While some U.S. courts have held that such registrants have standing to sue, even in those courts, the registration would be canceled without use in interstate commerce.

So while a foreign trademark registration can get you a U.S. registration without use in the United States, you probably can’t stop other U.S. users of the mark because your registration would be unenforceable and would not stand up in court.

Now back to GM’s BOLT applications.  This is where it gets interesting.  The applications are not based on use of the marks in the United States or an intent to use in the United States.  Rather, each application is based on a foreign application filing, specifically Brazilian trademark application number 907703178 for CHEVROLET BOLT and 907703070 for BOLT.

Brazil is one of those countries that does not require use to obtain a trademark registration.  So GM could get itself U.S. trademark registrations, albeit unenforceable ones, for BOLT and CHEVROLET BOLT without ever using this exciting new brand anywhere in the world.

Even though GM’s U.S. registrations may be unenforceable “paper” registrations, Gas 2.0’s point still has some merit.  Ownership of U.S. trademark registrations for the BOLT marks could still scare off potential users and keep competitors at bay for a while.

Don’t be surprised, though, to not see a shiny new Chevy Bolt speeding by you on the highway. 

Tesla Resolves Chinese Trademark Dispute (Again, This Time With Cash)

August 14th, 2014

Previous posts (here, here, and here) discussed Tesla’s trademark troubles in China.

As it sought to expand into the Chinese market, the electric car maker encountered a businessman named Zhan Baosheng who owned registrations for the TESLA (or “Te Si La” transliterated) trademark in China 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 until Mr. Zhan, apparently unsatisfied, decided to sue Tesla for trademark infringement.  He seemed to be in it for the money:  the lawsuit demanded 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.

It appears that Zhan finally got his pay day.  Tesla recently said it resolved the dispute – this time via a direct settlement with Zhan rather than relying on the Chinese court system.  The Bloomberg report says a Tesla spokeswoman “declined to discuss financial terms” relating to the deal.

Zhan agreed to settle the dispute “completely and amicably” including consenting to cancellation of his Tesla trademark registrations and applications.   He will also transfer his domain names, including and to Tesla.

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.  Also, Apple and Burberry Group had difficulties with securing their trademark rights in China.

It would be interesting to know why Tesla’s initial Chinese court victory was inadequate and left the door open for Zhan’s subsequent lawsuit.  One clear and timeless lesson we can draw from Tesla’s Chinese trademark troubles is that in China, as in legal and business disputes everywhere, money talks.