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.
"Green" trademarks face hostile climate in USPTO (Part II)
Part II: Greening of the USPTO Trademark Trial and Appeal Board
(Part I of this article described the USPTO’s examination of GREEN trademark applications. Part II focuses on Trademark Trial and Appeal Board cases involving GREEN trademarks.)
Applications for registration on the USPTO’s principal register face two rounds of challenges prior to registration: examination and opposition. Any GREEN trademark application that clears the USPTO examiner’s hurdle must then run the USPTO’s opposition gauntlet. Any entity who believes that it would be damaged by the registration may file an opposition in the USPTO’s Trademark Trial and Appeal Board (“TTAB” or “Board”) within thirty days after the mark is published for opposition (15 U.S.C. § 1063). Even after registration, marks still face a potential hurdle in the form of cancellation actions. (15 U.S.C. § 1064).
Pending Inter Partes GREEN cases
Several GREEN mark inter partes disputes are currently pending in the TTAB. These actions are based on claims that the defendants’ adoption and use of GREEN marks is likely to cause confusion in the marketplace in violation of the Trademark Act (15 U.S.C. § 1052(d)).
Interested observers should watch Supreme Maintenance Organization, Inc. v. The Clorox Company (TTAB Case No. 92/050,061). In this pending case, Supreme Maintenance has petitioned to cancel Clorox’s registration for the mark GREEN WORKS covering “all purpose cleaners.” The opposition is based on Supreme’s alleged prior use of GREEN WORKS to identify its “line of environmentally-friendly cleaning and janitorial services.” The file history for the challenged registration is interesting. Clorox filed its application on November 7, 2006. According to a notation in the USPTO’s publicly-available file history, the examiner spoke with the applicant’s representative on February 3, 2007 regarding the “significance of [the] term green.” However, the examiner did not issue a descriptiveness refusal, nor did the USPTO require a disclaimer of GREEN. Clorox’s challenged GREEN WORKS mark ultimately matured into a principal register registration on April 15, 2008 (USPTO Reg. No. 3,412,200).
Also pending in the TTAB is World Energy Solutions, Inc. v. Evolution Markets, Inc. (TTAB Case No. 91/187,952). In this case, World Energy opposed Evolution Markets’ application to register the mark GREEN EXCHANGE for “financial services in the nature of trading commodities” (Ser. No. 77/174,521). The application, as published, included a disclaimer of the term “exchange,” but not “green.” World Energy based its opposition on both descriptiveness and likelihood of confusion grounds. With respect to descriptiveness, World Energy argues that the PTO has required disclaimers of “green exchange” in its entirety in “every other application for service marks incorporating [the phrase] for financial services relating to the trading of commodities….” (Notice of Opposition at Para. [6].) As a result, opposer argues that Evolution Markets’ potential registration of GREEN EXCHANGE would allow it to “‘corner the market’ on descriptive terminology that is necessary for other actors in the field of green energy exchanges to be permitted to use in order to rightfully advertise their services.” (Notice of Opposition at Para. 8.) For its second ground for opposition, World Energy argues that applicant’s GREEN EXCHANGE mark would create a likelihood of confusion with respect to its prior WORLD GREEN EXCHANGE mark for services including “operating a commodities exchange” (USPTO Reg. No. 3,494,689). Unlike Evolution Markets’ pending opposed application, World Energy’s registration includes a disclaimer of “green exchange.”
Senegal Sportswear, Inc. and an individual named George B. Lipson are each testing the limits of their respective GREEN marks in proceedings consolidated under Senegal Sportswear, Inc. v. George B. Lipson (TTAB Case No. 91/182,366). Senegal has opposed Mr. Lipson’s application to register the mark GREEN LABEL ORGANIC SUSTAINABLE THREADS for use in connection with clothing (Ser. No. 78/727,821). Senegal asserts that Mr. Lipson’s use of the mark is likely to cause confusion with respect to its prior use of the mark GREEN BRAND for clothing (USPTO Reg. No. 2,089,226). Mr. Lipson subsequently petitioned for cancellation of the asserted registration. He argues that the GREEN BRAND mark is no longer entitled to registration because “the term GREEN has become generic in connection with products and/or services that are environmentally-friendly and sound….” (Petition for Cancellation at Para. 3.)
Prior Ex Parte GREEN Decisions
Until the Board rules in the pending inter partes cases regarding litigants’ scope of rights in GREEN marks, several non-precedential ex parte decisions are instructive. In In re John Kurkowski, No. 75/757,611, 2001 TTAB LEXIS 627 (TTAB August 17, 2001) (not precedential), the Board held that the term GREEN in the mark BUILT GREEN was merely descriptive as applied to “environmentally friendly” building associations. See id. at *6-8. The Board based its holding on dictionary definitions and NEXIS excerpts. See id. at *10 (requiring disclaimer of GREEN).
Dictionary definitions and NEXIS article excerpts have also led the Board to find the mark GREEN CELL to be merely descriptive of fuel cells and related components. See In re Manhattan Scientifics, Inc., No. 75/478,091, 2001 TTAB LEXIS 39, at *10-11 (TTAB Jan. 12, 2001) (not precedential). The Board held that “consumers seeing the mark GREEN CELL in connection with fuel cells would immediately understand the nature of the fuel cells, namely that they help, or are not harmful to, the environment.” Id. at *12. See also In re Hobart Bros. of CAN, Ltd., No. 74/544,094, 1996 TTAB LEXIS 114, at *7-8 (TTAB Nov. 26, 1996) (not precedential) (GREEN SPOOL merely descriptive of recyclable spool).
In re Manco, 24 U.S.P.Q.2d 1938 (TTAB 1992), also provides some guidance. In In re Manco, the Board affirmed an examiner’s refusal of the marks THINK GREEN and THINK GREEN & Design in connection with cardboard boxes and weather-stripping materials. The refusal was based on the ground that the applied-for marks did not function as marks, but as “‘merely an informational expression’ which denotes the need for ecological or environmental awareness.” Id. at 1939. In affirming the refusal, the Board relied upon NEXIS article excerpts establishing that the phrase THINK GREEN signified “a slogan of environmental awareness and/or ecological consciousness.” Id. at 1941. As a result, it held that THINK GREEN “does not function as a trademark for applicant’s goods.” Id. The Board viewed the mark as merely an informational slogan, like PROUDLY MADE IN THE USA, that would only impart “informational significance” rather than source identification. See id. However, the Board limited its holding to the applied-for mark, THINK GREEN, and its non-trademark meaning as a slogan for the environmental movement. Thus, the Board was not required to squarely address the distinctiveness of the term GREEN apart from the slogan, nor the scope of protection for other GREEN-formative marks.
Conclusion
The Board is likely to afford a very narrow scope of protection to GREEN marks. As a result, if you’re a commercial enterprise “thinking green,” you’re not alone in the marketplace and you won’t be alone on the trademark registry. From a trademark perspective, the term “green” is unlikely to distinguish your goods or services from those of your competitors.
"Green" trademarks face hostile climate in USPTO
Trademark applications that include the word “GREEN” have hit the United States Patent and Trademark Office (“USPTO”) like a tsunami in recent years. A quick search for pending “GREEN” trademark applications reveals thousands of hits, many of which relate to (hopefully) environmentally-friendly goods or services. In response, USPTO examining attorneys have been laying out sandbags—in the form of descriptiveness refusals—to stem the tide.
The USPTO is likely to dispense with “GREEN” marks in the same restrictive manner it resolved the tech boom filings relating to “i,” “e,” “dot-com,” and other similar marks. It appears likely that it will issue a precedential ruling that will provide direct guidance to GREEN trademark applicants and registrants regarding the scope of protection for their marks. The USPTO may also issue a formal GREEN examination guideline for its examining attorneys. In the end, GREEN marks are likely to be afforded a very narrow scope of protection. As a result, if you’re a commercial enterprise “thinking green,” you’re not alone in the marketplace and you won’t be alone on the trademark registry. From a trademark perspective, the term “green” is unlikely to distinguish your goods or services from those of your competitors.
GREEN trademark and service mark applicants are already experiencing difficulties at the USPTO’s initial examination phase. For example, trademark applicant Addax applied to register the mark GREEN JOURNEY on February 7, 2008 (USPTO Ser. No. 79/048,401) covering several goods and services in three classes: electric cars and hybrid vehicles (Class 12), clothing (Class 25), and organization of sports competitions (Class 41). The USPTO issued an office action on February 22, 2008 on multiple grounds, including a descriptiveness refusal based on the “GREEN” element. The examining attorney stated that the term “has come to describe goods or services that are intended to be beneficial to the environment, as in the case of applicant’s ‘electric cars’ and ‘hybrid vehicles.’” As a result, the examiner requested applicant to accept a disclaimer.
Interestingly, with respect to the non-vehicle goods and services, such as clothing and organization of sports competitions, the examiner stated:
Applicant’s other goods and services may serve to promote these goods, or may be created using GREEN practices…. As such, the applicant appears to be using GREEN in a merely descriptive sense and the term would be viewed as such by consumers. Accordingly, rights in the common term must be disclaimed separate and apart from the mark.
The examiner also required applicant to submit additional information concerning each of the applied-for goods. Specifically, the examiner required applicant to state whether any of the applied-for goods or services “will relate in any manner, including for promotional purposes, to environmentally-conscious or GREEN policies, or whether any of the goods are manufactured via GREEN methods.” To comply with this requirement, the examiner “strongly encouraged” applicant to submit relevant product information.
In response to the refusal, applicant deleted the Class 12 electric cars and hybrid vehicles from the application. Applicant also accepted the disclaimer requirement (“No claim is made to the exclusive right to use GREEN apart from the mark as shown.”). However, despite the examiner’s request, applicant’s August 21, 2008 response did not include any explanation or product information relating to use of the term GREEN in connection with the remaining goods and services. Nonetheless, the application was approved for publication—with the “GREEN” disclaimer—under the remaining Class 25 goods and Class 41 services.
Applicant Aker MTW Werft GmbH of Germany applied to register the mark GREEN – EFFICIENT– SMART on January 9, 2008 (USPTO Ser. No. 79/049,439) covering “vehicles for water” (Class 12) and “scientific and technological services” (Class 42), meeting with similar results.
It should be noted, however, that applications for registration on the USPTO’s principal register face a second round of challenges prior to registration. Even assuming Addax’s GREEN JOURNEY and Aker MTW Werft’s GREEN – EFFICIENT – SMART applications clear the USPTO examiners’ hurdles, they must then run the USPTO’s opposition gauntlet. Any entity who believes that it would be damaged by the registration may file an opposition in the USPTO’s Trademark Trial and Appeal Board (“TTAB” or “Board”) within thirty days after the mark is published for opposition. 15 U.S.C. § 1063. Even after registration, marks still face a potential hurdle in the form of cancellation actions. 15 U.S.C. § 1064.
Several GREEN mark inter partes disputes are currently pending in the TTAB. These actions are based on claims that the defendants’ adoption and use of GREEN marks is likely to cause confusion in the marketplace in violation of the Trademark Act (15 U.S.C. § 1052(d)). Check back with www.globalclimatelaw.com in the coming weeks for a discussion of pending inter partes GREEN trademark cases.
