Archive for the ‘Eco-Marks’ category

Green Branding Enters Its Blue Period

January 20th, 2012

Just as new patent filings can indicate the direction technology is moving, trademark application data can reveal trends in branding.

This is the idea behind the Dechert law firm’s Annual Report on Trends in Trademarks (created and produced by Glenn Gunderson) in which the firm draws from the most recent year’s trademark data to highlight some new branding and marketing trends.

In 2008 the Dechert report (trends_in_trademarks_2008) focused on the explosion in green branding, demonstrated by the spike in applied-for trademarks and service marks containing eco-friendly terms such as “green,” “eco-,” and “enviro.”

Four years on, some of those terms, most notably “green,” have become ubiquitous in branding and marketing environmentally friendly products, services, and business practices.

As a result, the term “green” has become descriptive of environmentally friendly attributes and lost the inherent distinctiveness required to obtain a U.S. trademark registration.

This is because a mark that is “merely descriptive” of the goods or services it is being used to market or sell is not registrable without an additional showing that consumers have come to associate the mark with the source of the goods or services.

I have discussed several instances of this erosion of “green” in trademark applications in previous posts, e.g., here.

Perhaps, then, it is no surprise that another color has emerged from the green marketers’ toolbox to signal environmentally friendly attributes.

In a previous post (Is Blue the New Green?: Bollore Wins Allowance of BLUECAR Eco-Mark), I discussed Bollore Group’s successful bid to register the mark BLUECAR for, inter alia, electric vehicles and electric motors.

The BLUECAR trademark application was rejected by the trademark examiner on the basis that the mark is merely descriptive because the goods could encompass blue colored vehicles.

On appeal to the U.S. Trademark Trial and Appeal Board, Bollore successfully overcame the rejection by arguing that its use of the mark in connection with environmentally friendly vehicles creates a double entendre because the word “BLUE” evokes an image of cleaner, bluer skies.

I ended that post by asking whether green might be losing its monopoly as the color of environmentally friendly products and services and stating that “perhaps blue is the new green.”

Just a couple of weeks ago, I read a piece that appeared in the Economist’s The World in 2012 issue entitled The Greening of Blue. The article noted several examples of “blue becoming the new green.”

Those include Volkswagen’s “BlueMotion” badge for efficient cars, Mercedes-Benz’s “Blueefficiency” emblem, New Holland’s “ecoBlue” low-emissions tractors, Samsung’s “Blue Earth” solar-powered phone, and, of course, Bollore’s Bluecar.

The article quotes Jack Bredenfoerder, a color expert at the brand consultancy Color Strategy, who said “green is so obvious” and blue is more serious, a global color associated with the sea and cooperation (think the UN).

So now seems to be the moment for blue in green (Miles reference intended). Green marketers: you’d better register your blue marks before the new color goes the way of green and becomes merely descriptive and unregistrable.

But stay tuned and stay on your toes because it won’t end here. A veritable rainbow of green branding colors awaits; according to Bredenfoerder a new clean and efficient color will soon start to compete with blue, which raises the question: will white be the new blue?

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Posted in Eco-Marks

Guest Post: Green IP Litigation in the Great White North

December 6th, 2011

A recent decision in the Federal Court of Canada spotlights green IP litigation in Canada.

On October 5, 2007 Hollick Solar Systems Limited (Hollick) and Conserval Engineering Incorporated (Conserval), which specializes in solar air heating technology, commenced a patent and trade-mark infringement proceeding against several parties, including Matrix Energy Incorporated, a distributor of renewable energy equipment.

Hollick and Conserval claimed infringement of claims 1 and 10 of Canadian Letters Patent 1,326,619, entitled “Method and apparatus for preheating ventilation air for a building” (’619 Patent).

As to the trade-mark, Hollick and Conserval alleged infringement and depreciation of the value of the goodwill of their trade-mark SOLARWALL® by the sale of the Matrixair system and the use of “mur solaire” and passing off by Matrix for the systems of Conserval.

The ’619 Patent is directed to a method of preheating ventilation air and an apparatus for preheating ventilation air by solar means.

More particularly, according to the Abstract of the ’619 Patent, ventilation air for a building is preheated by providing on a wall of the building a solar-energy absorbent collector panel with a plurality of air-inlet openings which communicate with air collection channels behind the panel.

Outside air passing upwardly along the panel is heated by the heat of the panel, which itself is heated by a combination of solar radiation and heat being lost from the interior of the building.

The case focused on whether the term describing the location of the inlet “at the top” was an essential element of the claims at issue.

Matrix asserted non-infringement of claims 1 and 10 of the ’619 Patent because the inlet of the accused system was at the bottom, or at least not at the top.

Matrix also contended non-infringement of the trade-mark SOLARWALL® on the ground that the trade-mark was outside the scope of a distribution agreement between Matrix and Hollick.

The Federal Court, in construing the claims at issue, concluded:

the location of the inlet in the Matrix system (at the bottom or at least below the midpoint) had a material effect upon the way the invention worked and did not perform essentially the same as the invention of the ’619 Patent;

that it would have been obvious to an expert in the field that drawing air from the bottom or at least below the midpoint of the panel would have a material effect upon the invention; and

the person skilled in the art would have understood that strict compliance with the term “at the top” was an essential element of the invention.

The court further noted the contradictory testimony of an expert for Hollick and Conserval, whose statements in another case directly conflicted with his testimony in this case.

The court also determined non-infringement of the trade-mark because Hollick and Conserval failed to prove loss of sales from use of the trade-mark by Matrix.

Marcelo König Sarkis, P. Eng., FIPIC, is a Senior Patent Agent and Professional Engineer with Heenan Blaikie LLP. He is a member of Heenan Blaikie’s Intellectual Property as well as Climate, Cleantech and Sustainability Groups.

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Posted in Eco-Marks, Green Patents, IP Litigation, Solar Power

Two More Eco-marks Dinged for Descriptiveness

June 21st, 2011

I’ve written before about the increasingly common challenge in obtaining U.S. registrations for eco-marks, i.e., the proscription against registering “merely descriptive” marks (see, e.g., my post about the HYBRID GREEN mark here).

Often the eco-marks include the term “GREEN,” which has become hopelessly descriptive of environmentally friendly aspects of products, services or practices. But other terms are not immune from descriptiveness problems.

Kinetic Energy Corporation, a wholly-owned subsidiary of New Energy Technologies (NET), recently saw two trademark applications derailed by the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (Board).

The doomed marks were MOTIONPOWER for, among other things, electricity generators and certain services including converting waste energy into electricity (77707733_App), and SOLARWINDOW for photovoltaic cells and modules as well as films and substrates for PV cells (77738793_App).

NET markets technologies for harnessing kinetic energy from moving vehicles and converting that energy into electricity under the MOTIONPOWER brand.

The Board nixed the MOTIONPOWER trademark application based on the meanings of the individual words, their meaning in combination, and the fact that the applicant uses kinetic energy, which is energy from motion (Board-Decision-77707733):

Based on the meanings of the individual words of applicant’s applied-for mark, “MOTION” and “POWER,” as well as the Internet evidence, we find that the combination MOTIONPOWER is merely descriptive of the applicant’s goods and services for use in generating power from motion. The individual merely descriptive terms retain their descriptive character when combined to form the composite MOTIONPOWER. The evidence shows that kinetic energy, the type of energy involved in applicant’s goods and services, is energy associated with motion.

The Board also noted that the construction of the mark MOTIONPOWER is similar to terms such as “solar power” and “wind power,” which describe generation of power from the sun and the wind, respectively, so consumers are likely to perceive the mark as merely descriptive of generating power from motion.

In a separate decision using similar reasoning, the Board rejected the SOLARWINDOW mark because of the definitions of the individual words and the descriptive use of the combined term in the industry (Board-Decision-77738793):

Not only does each element have descriptive significance as shown by the dictionary definitions, but the record establishes that the combination “SOLAR WINDOW” is used in the solar energy industry to describe solar energy-generating and/or solar energy-converting technology used in connection with windows.

The Board found that consumers would find the mark descriptive and noted that applicant’s use of the term on its website is descriptive of NET’s SOLARWINDOW glass and film products:

it is clear that SOLARWINDOW would immediately inform these consumers that applicant’s goods are used to convert existing windows or create windows that are capable of collecting and generating solar energy. Notably, applicant uses the term “solar window” on its website in a descriptive manner when it states that solar cells and films are used “to produce a transparent solar window.”

So NET will not be able to register the MOTIONPOWER or SOLARWINDOW marks on the Principal Register at this time. The company may be able to do so down the road after using the marks for a while and can get some protection via Supplemental Registrations in the interim.

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Posted in Eco-Marks, Solar Power

Green Leaf Greenwash?: Letter to FTC Targets CBS EcoAds Program

May 1st, 2011

EcoMedia, a division of CBS, owns six pending trademark applications for the marks ECOAD and ECOAD (and Design) (shown above), for various services including fundraising for environmental protection and media and advertising services (see, e.g., ECOADS_85089838_App, ECOADS_85184033_App, and ECOADS_85184040_App).

Through its EcoAds program, EcoMedia allows advertisers to direct a portion of their ad dollars to local environmental projects such as energy efficient retrofits and renewable energy installations. When they do so, their advertisements display the ECOAD design mark.

Recently several environmental groups sent a letter to the Federal Trade Commission (FTC) requesting that the agency investigate the EcoAds program, issue a warning to EcoMedia, and suggest revisions to the program (ecoad_letter).

The groups include the Center for Environmental Health, Rainforest Action Network, Friends of the Earth, and Ecopreneurist.

The groups’ main concern is that the ads do not make clear to consumers that the environmental benefit signaled by the ECOAD design mark relates only to the funding of community environmental programs and is not necessarily connected to the advertising company or advertised product:

the EcoAd green leaf symbol appears by itself, without explaining that it simply means that money from the advertisement is funding community environmental programs. From the consumer’s perspective, the message is that either the product being advertised or the company who purchased the advertisement has some positive environmental attribute.

According to the letter, the EcoAds program in its current form violates the FTC Act and the FTC’s Green Guides by making “general environmental benefit claims” without clarifying when environmental attributes refer to a product, its packaging, or a service, as well as failing to include qualifying language about the nature of the environmental benefits associated with the ad.

The environmental groups have requested that the FTC suggest revisions to the EcoAd program such as adding text to each use of the ECOAD design mark to alert viewers that the logo does not specify environmental attributes of products or companies.

The groups also want CBS EcoMedia to develop criteria for evaluating advertisers and products for participation in the EcoAds program.

In my view the latter is not necessary because both the issue and the fix here are straightforward.

The key question is whether it is clear to consumers that the ECOAD design mark signals only that some of the advertiser’s dollars have gone to a local environmental project and says nothing about the advertiser’s products or business practices.

If there is some ambiguity which causes consumers to believe the advertiser itself or the product being advertised has environmentally friendly attributes, then the EcoAd logo may constitute greenwashing.

The solution is equally straightforward and requires no information about or evaluation of the advertising companies or advertised products: simply make EcoMedia prominently include with each advertisement a clear statement about what the ECOAD design mark signifies and what it does not.

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Posted in Eco-Marks, Greenwashing

Trademark Board Nixes Powertech’s HYBRID GREEN Mark

March 27th, 2011

One of the common hurdles green brand owners have to overcome to protect their brands is U.S. trademark law’s proscription against registration of marks that are “merely descriptive” of the goods or services.

The rationale for this rule is that registering a generic or descriptive term would restrict competitors from conveying information about their goods or services.

Many of the terms used to signal environmentally friendly aspects of goods or services - terms such as ”green” and ”eco-” – are so immediately identified with those characteristics that they have become legally incapable of the distinctiveness required for U.S. trademark registration.

Powertech Industrial Ltd. (Powertech), a Taiwanese company, recently ran into this problem when it sought registration of the mark HYBRID GREEN UPS for “power supplies; mobile phone battery chargers; mobile phone battery charger stations; battery chargers; universal power supplies; power saving adapters; electric storage batteries; uninterruptible power supplies; AC/DC converters; power source stable adapters” in Class 9 (App-No-77176134).

After United Parcel Service (UPS) opposed registration, the Trademark Trial and Appeal Board (Board) ruled that the mark is unregistrable as merely descriptive of Powertech’s electrical components (Powertech-Opinion).

Powertech had disclaimed the ”UPS” element of the mark because it is a commonly used acronym for “uninterruptible power supply” (or “system”) and is therefore a generic designation for the goods.

As to the remainder of the mark, one key piece of evidence of descriptiveness was a Powertech patent that uses the term “hybrid green uninterruptible power system” as a technical term of art to refer to the battery system:

when AC utility power is interrupted or an irregular voltage occurs, the secondary battery releases power, and the inverter inside the hybrid green uninterruptible power system inverts power from the secondary battery into AC power so that the hybrid green uninterruptible power system can provide the AC power to the external load via the AC power output ports and simultaneously provide one or more sets of additional DC power and the DC power output ports (emphasis added)

The Board also noted that a Powertech web page defined the terms “HYBRID” and “GREEN” with reference to specific features of the power system as providing AC and DC output simultaneously and energy savings, respectively.

Accordingly, the Board held the mark merely descriptive because Powertech is using the well understood terms “HYBRID” and “GREEN” consistently with the common meanings of the terms:

Applicant’s adoption and usage of the words “hybrid” and “green” within “Hybrid Green UPS” is totally consistent with the commonly understood meanings of these respective words. The word “hybrid” is often used to describe a system consisting of two components performing similar functions. The word “green” is often used to describe something that is environmentally-friendly . . . it appears from Applicant’s own literature that its involved devices function in both the AC and back-up DC modes – the “hybrid” characteristic – and that the energy efficiencies of these products will tend to preserve environmental quality – or be “green.”

Another “GREEN” mark bites the dust.

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Posted in Eco-Marks

Green Patent Book Hits the Shelves

March 23rd, 2011

I am very pleased to announce the release of my book on green IP. Entitled Clean Tech Intellectual Property: Eco-marks, Green Patents, and Green Innovation, the book discusses many of the stories and issues I’ve been covering in this space over the years.

The book is divided into four sections. “Counseling Clean Tech” illustrates how clean tech companies can obtain and leverage green patents to create and expand their businesses. This section includes strategies and case studies relating to drafting and prosecuting green patent applications, building green patent portfolios, and licensing clean technologies.

The second section, “Clean Tech in Court,” provides detailed accounts of the major green patent litigation stories of the past two decades and examines their effects on the clean tech industry.

Section three covers “Green Branding, Greenwashing, and Eco-mark Enforcement,” including green trademark prosecution and litigation as well as green branding issues from both the brand owner perspective and a consumer protection standpoint.

The book closes with a section on “Green Patent Policies, Initiatives, and Debates,” which includes a detailed review of clean tech IP policies and a critical examination of the international debate in the climate change treaty negotiations over the role of IP in efforts to curb global warming.

In an introductory chapter entitled “Clean Tech IP is for Real” I try to highlight the unique aspects of this field and make the case that green IP is a discrete area of law and policy worthy of study, practice, and expertise.

The book is the culmination of over two years of work, including about 18 months of intensive research and writing. I hope it will impart some useful information and insights about clean tech IP and serve as a valuable resource for those interested in this emerging field.

Clean Tech Intellectual Property: Eco-marks, Green Patents, and Green Innovation is now available for purchase through the Oxford University Press web site here and on Amazon.com here.

Stay tuned for a new page on this site with the book information.

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Posted in Eco-Marks, Green Patents, Policy & Initiatives

Greenwashing in Context and other Green IP at AIPLA Orlando

January 19th, 2011

I will be speaking at the American Intellectual Property Law Association’s (AIPLA) Mid-Winter Institute next month in Orlando as part of a panel on green IP.

The other speakers on the panel - called “IP Rights in a Green World: Opportunities, Challenges and Hazards” - are Douglas Pearson of Jones Day in Washington, DC and Maureen Gorman of Davis McGrath in Chicago.

Mr. Pearson will speak on potential threats to patent rights in green technologies, Ms. Gorman will cover green branding issues in a presentation entitled “The Future’s so Green, I Gotta Wear Shades: ‘Greening” Your Brand Without ‘Greenwashing’ It,” and I will provide an overview of greenwashing and anti-greenwashing legal activity (see the Institute program here).

Entitled “Greenwashing in Context: Commercial Consumers, Cleantech Counterfeiters and Eco-Mark Enforcement,” my presentation observes that most discussions of greenwashing are unduly restricted to cases in which an individual consumer, a class of consumers, or a consumer watchdog such as the FTC challenges a company making false or misleading green claims about its products or services.

To put greenwashing in its proper context we have to consider a wider range of cases, some of which are not immediately recognizable as instances of greenwashing.

To do so requires looking beyond individual consumers to commercial consumers and beyond green brand owners to counterfeiters of clean tech products and eco-mark infringers.

From this broader vantage point, and keeping in mind the definition of greenwashing – making false or misleading claims about purportedly environmentally friendly products, services, or practices – we are able to recognize, observe and understand greenwashing in its proper context.

For example, the eco-mark infringers hawking counterfeit Suntech solar modules are not typically viewed as greenwashers, nor is Suntech’s eco-mark enforcement campaign against them seen as anti-greenwashing activity.

Similarly, the commercial litigation between Cogen and Hess over misrepresentations about the energy efficiency of cogeneration equipment is not immediately recognized as a greenwashing case.

But they are instances of greenwashing and anti-greenwashing legal actions and are at least equally, if not more, important than the false or misleading claims directed at individual consumers.

Commercial “consumers” of green products and services such as renewable energy project developers, plant operators, utilities, retailers, distributors, and installers have a huge impact on implementation of clean technologies. As such, it is crucial that they receive genuine products and accurate service information.

Thus, my presentation argues that studies of greenwashing should embrace the proper, broad context that includes green commercial consumers.

Registration information for the AIPLA Mid-Winter Institute is available here.

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Posted in Eco-Marks, Green Patents, Greenwashing, Policy & Initiatives

Court Rules Against Jacobs Wind in Minnesota Eco-mark Dispute

December 13th, 2010

In a previous post, I wrote about the wind energy eco-mark suit between two competing Minnesota wind system companies, Jacobs Wind Electric Co. (Jacobs) and Wind Turbine Industries Corp. (WTIC), over rights to the JACOBS word mark and the JACOBS WIND ENERGY SYSTEMS ”whale tail” design mark (shown above) (collectively “JACOBS marks”).

Last month, a federal court in Minneapolis granted WTIC’s motion for partial summary judgment (jacobs_order.pdf), holding that WTIC has priority over Jacobs and therefore has the right to use the JACOBS marks.

There were two reasons for the court’s decision. First, Jacobs had assigned the rights to the JACOBS marks to another entity in 1980.

That year, the rights to the JACOBS marks were transferred to a separate corporation, Jacobs Delaware, which subsequently changed its name to Earth Energy Systems, Inc. (EESI). Jacobs also became subject to a non-compete agreement at that time and agreed not to use the JACOBS marks in connection with the manufacture or sale of wind energy equipment.

In 1986 Jacobs Delaware/EESI assigned all rights to the JACOBS marks to WTIC. Jacobs Delaware/EESI ceased operations in 1988.

Although Jacobs contended that it never sold its wind energy business to Jacobs Delaware and that the subsequent assignment to WTIC was invalid, the court disagreed on both counts.

Specifically, Jacobs argued that Jacobs Delaware was a joint venture with Jacobs that relied on Jacobs to maintain the quality of the wind energy systems. Because this right and duty was non-assignable and WTIC was not responsible for quality control, Jacobs asserted, Jacobs Delaware/EESI’s assignment to WTIC was null and void.

The court rejected these arguments and held that the assignment to WTIC was valid:

Because the assignment at issue provided that [WTIC] would exercise reasonable supervision of the quality of goods sold by EESI, and because EESI’s use of the JACOBS mark would be a continuance of its previous use, the Court finds that the assignment of the JACOBS mark to [WTIC] in 1986 is valid.

Second, the court held that Jacobs had abandoned its use of the JACOBS marks. The record showed that Jacobs ceased using the marks in 1980 when it sold the business to Jacobs Delaware and had not manufactured any new wind energy systems in the last thirty years.

The long time frame created a presumption of abandonment, and Jacob’s resale of a small number of wind energy systems was deemed insufficient to overcome the presumption.

The court ordered cancellation of Jacobs’ U.S. Trademark Registration 1,532,714 for the JACOBS WIND ENERGY SYSTEMS ”whale tail” design mark (’714 Registration) (714_reg.pdf) and further ordered the U.S. Patent and Trademark Office to refuse registration of Jacobs’ U.S. Trademark Application No. 76/677,473 for the JACOBS word mark (’473 Application) (473_app.pdf).

Jacobs is appealing the decision (appeal_notice.pdf).

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Posted in Eco-Marks, IP Litigation, Wind Power

New Blog Focuses on Eco-Mark Issues

September 24th, 2010

A welcome addition to the Green IP blogosphere, Michael Tschupp’s Sustainable Marks blog is about “trademarks, patents, and advertising – from a green perspective.”

Tschupp’s primary focus seems to be eco-marks and green consumer protection issues, and his Weekly Round-Up of New Green Trademarks is a nice resource, not to mention lots of fun for trademark mavens and green consumers.

The blog’s signature Round-Up, posted every Tuesday, provides a sampling of green trademarks, service marks and certification marks published for opposition and awarded registration by the U.S. Patent and Trademark Office.

Tschupp is an attorney at the Miami, Florida IP law firm of Espinosa Trueba.

I look forward to much exciting eco-mark news from the Sustainable Marks blog.

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Posted in Eco-Marks

Is Blue the New Green?: Bollore Wins Allowance of BLUECAR Eco-Mark

June 25th, 2010

Bluecar is a small electric car designed by the French conglomerate Bollore Group (Bollore) and produced in cooperation with Pininfarina, an Italian car design company.

Bollore applied for a U.S. trademark registration for BLUECAR for a number of different goods in a few classes, including electrically powered vehicles such as scooters, motorcycles, bicycles, trucks, trolleys, forklifts, boats and electric motors and transmission assemblies for electrically powered vehicles, in Class 12.

The examining attorney rejected the Class 12 goods on the ground that the mark BLUECAR is “merely descriptive” because the goods could encompass blue colored electric cars.

Bollore appealed the examining attorney’s final rejection to the Trademark Trial and Appeal Board (Board).

On appeal, Bollore argued that use of the mark in connection with its environmentally friendly vehicles creates a double entendre because the word “blue” in BLUECAR evokes an image of cleaner, bluer skies:

Driving applicant’s vehicles, therefore, is a way for consumers to “live green” by reducing their carbon emissions and helping to make the skies cleaner and bluer. . . . Consumers would easily recognize this second connotation or meaning through the use of the word “blue.”

In support of its argument, Bollore cited instances of environmental organizations and clean energy companies that use the word “blue” such as the Blue Planet Foundation and Blue Sky Energy.

The Board agreed with Bollore and reversed the final rejection, finding the mark not merely descriptive of the cars but either arbitrary or suggestive of environmentally friendly vehicles:

potential purchasers will perceive BLUECAR, not as merely describing the cars, even the cars which may be blue. Rather potential purchasers will perceive BLUECAR either as an arbitrary mark, or perhaps as a mark suggesting a clean, blue sky, that is, that the electric powered vehicles are environmentally friendly, as applicant argues.

Is green losing its monopoly as the color of environmentally friendly products and services? Perhaps blue is the new green.

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Posted in Eco-Marks, Hybrid and Electric Vehicles

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