USPTO's TTAB approves "Green Indigo" trademark
The USPTO’s Trademark Trial and Appeal Board (“TTAB” or “Board”) recently reversed an examining attorney’s refusal of the mark GREEN INDIGO for clothing. In In re Jones Investment, Inc. (Ser. No. 77/249,189) (TTAB Jan. 21, 2009), the Board reversed the examiner’s holding that the mark was merely descriptive of clothing items identified in the application. The Board held that GREEN INDIGO is, instead, “suggestive” of the goods and therefore eligible for registration on the principal register. This ex parte holding suggests that the Board may be amenable to preserving some “green space” on the principal register, despite the flood of “GREEN” applications pending in the USPTO.
However, applicant Jones Investment is not completely out of the woods. The Board’s ruling merely clears the application for publication in the USPTO’s Official Gazette. Any entity who believes that it would be damaged by the registration may file an opposition in the Board within thirty days after the mark is published for opposition. 15 U.S.C. § 1063. In fact, the Board specifically noted that its decision was based on the record developed during the prosecution phase, and that a third party is entitled to file an opposition that would “develop a more comprehensive record.” In re Jones at 8.
The prosecution history shows that the USPTO issued its descriptiveness refusal based upon the mark’s color connotation. The examiner did not raise descriptiveness concerns with respect to the potentially environmentally-friendly characteristics of the goods. “The terms GREEN and INDIGO are primary colors…. [T]he mark is merely descriptive because it describes a feature of the goods, i.e., the color(s) of the clothing items.” Final Office Action, dated April 1, 2008.
On appeal to the Board, applicant Jones advocated an environmental connotation by arguing that its mark was not merely descriptive, but instead, “is suggestive of a ‘fresh, youthful and environmentally-friendly’” clothing line. In re Jones at 3. The Board agreed. “The term ‘green’ obviously is a color name. The term also has other meanings, in particular ‘environmentally sound or beneficial….’” Id. at 5. In reversing the examiner, the Board held that the combined terms “GREEN INDIGO” resulted in an “incongruous” combination that renders the mark suggestive of environmentally-friendly clothing, as opposed to merely descriptive. Id. at 6-7.
GREEN INDIGO will be published for opposition on March 10, 2009. It will be published without a disclaimer of the term “green.” This differs from numerous prior applications where applicants were required to accept a “green” disclaimer. (See Global Climate Law Blog post “‘Green’ Trademarks Face Hostile Climate in USPTO” for a discussion of other “GREEN” trademark applications.) “GREEN” mark owners have become increasingly active in the TTAB, including within the clothing field. (See Global Climate Law Blog posting “Greening of the USPTO Trademark Trial and Appeal Board” for a discussion of other Board cases involving “GREEN” trademarks.) Interested observers should watch this application as it moves into the opposition phase. The Board may have a different reaction to GREEN INDIGO after reviewing a fully-developed evidentiary record resulting from an inter partes adversarial proceeding.
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