Don't Be Envious - You Too Can Obtain a "Green" Trademark by Andy McNeil

Just like the “dot-com” boom of the late 90’s and the early 21st century, the environmentally conscious or “green” movement seems to be emerging as this generation’s must-have business buzzword.  What started off as a trendy cause has developed into a formidable area of economic and social development in light of the issues surrounding the climate and our natural resources. Protecting your company’s “green” trademarks is advisable both in terms of their economic value and environmental good will to your company.

According to recent studies, 2007 was the busiest year ever for the United States Patent and Trademark Office (“USPTO”), with over 300,000 applications for new trademarks, besting the next highest total of 289,000 received in 2000 at the height of the dot-com frenzy.  Environmentally-oriented, or “green” marks, represent a significant catalyst for this flurry of activity.  Since 2007, the USPTO has seen an explosion in new trademark applications for green marks that feature, in whole or part, various combinations and components of environmentally-conscious terms such as “green” (i.e. GO GREEN, GREEN CLEAN, etc.), “eco-” (ECOMOWER, ECO THREADS, etc.), “clean” (i.e. ECOCLEAN, BIOCLEAN, etc.) and “enviro” (ENVIROSAX, ENVIROGROOM, etc.), to name a few.

Because new trademark applications often represent a company’s forthcoming product or marketing campaign, they can be good predictors of what companies think will be viable (i.e. profitable) in the future.  However, the challenges faced by those seeking  “dot-com” trademarks in the recent past provide valuable insight into some of the issues that the filers of green trademark applications are now facing.  More importantly, the lessons learned during the dot-com era can provide some guidance on how to successfully select and protect a green trademark.

The Problem - During the dot-com boom, the USPTO was inundated with applications featuring terms such as “e,” “i,” “.com” and “.net” combined with generic terms such as “shopping,” “business,” and other broad commercial terms.  By some estimates 5% of all new trademark applications contained “.com” in 1999, with similar increases for marks featuring the “e” and “i” prefixes.  In response to this flood of dot-com trademark applications, the USPTO determined that the “.com,” “e,” “i” and similar modifiers were merely descriptive, and thus not a protectable part of a trademark because they conveyed that the product or service was Internet-related.  Those seeking trademark registrations with “green,” “eco,” “enviro” and other environmentally-oriented terms face the same descriptiveness challenges.  

General Overview of Trademark Law - The most fundamental aspect of a trademark is  that it must be an indicator of source or origin and not, as the “.com,” “e,” and “i” elements represent, a mere description of an attribute or function of the product or service to which the mark is applied.  The strength—or protectibility—of a mark depends on where it falls along the spectrum of distinctiveness.   Ranging from most protectable to unprotectable, the five different categories of trademark classifications along this spectrum are: fanciful, arbitrary, suggestive, descriptive, and generic.  Fanciful marks are made-up terms (think GOOGLE or EXXON), while arbitrary marks contain elements having a common meaning but that have no relation to the goods or services on which they are featured (think APPLE for computers and LOTUS for computer software).  Fanciful and arbitrary marks are considered the strongest types of trademarks and are afforded the highest level of legal protection.

Suggestive marks do just that -- they suggest (rather than immediately convey) a quality or characteristic of the goods or services to which they apply.  Although not as strong as a fanciful or arbitrary mark, suggestive marks are afforded more protection than a descriptive mark (see below), because they require some imagination to connect the mark to the goods/services it represents.  Examples of suggestive marks include NETSCAPE (suggestive of software which allows traversing the "landscape" of the Internet), COPPERTONE (for sun block products) and DOWNY (for fabric softener).

Descriptive marks, as opposed to suggestive marks, do not require the imagination or thought to connect a mark to the goods/services it represents.  Marks that fall within this category do not receive legal protection unless the owner can prove that the primary function of the mark is to identify the source of the product or service on which it is used, as opposed to merely describing a function of the product/service (this is known as “acquired distinctiveness” or “secondary meaning”).  Secondary meaning is usually established through heavy advertising, publicity and by recognition of the mark in the relevant industry. Examples of descriptive marks that have obtained secondary meaning include SHARP (for televisions) and WINDOWS (for windowing software).

Generic terms or words are the fifth and final category and are incapable of becoming trademarks.  For example, one could not reasonably expect to trademark the term “car” for an automobile, or “cleaner” for a cleaning compound.  Because these terms are common for a particular item or characteristic, the law prohibits any entity from having the exclusive right to use terms that generically identify a product or service.  And, formerly protectable terms can become generic because of long term misuse in the marketplace.  “Elevator” and “aspirin” are terms that were marks but became generic because of misuse.

Just as the USPTO deemed the dot-com modifiers to be non-distinctive and an unprotectable part of a mark, the developing trend seems to be that the USPTO is treating certain commonly used  “green” elements of trademark applications in the same way and rejecting applications for green marks en masse.  These green terms are increasingly seen as descriptive when used in association with environmentally oriented products and services.  In light of the desirability for green marks on the one hand, and the USPTO’s seemingly high threshold for obtaining them on the other, what can a company do to avoid the fate suffered by so many dot-com trademark applications?

Suggestions for Obtaining a Green Trademark
             
            1.  Combine the desired “green” term(s) with  fanciful or arbitrary term(s). 

            When a prospective application for a trademark registration contains multiple terms, the USPTO examines the individual terms as well as the combination of terms in its analysis.  For example, the USPTO is more likely to allow registration of ECO BULLDOG MOWER for an environmentally friendly mower in contrast with a mark like ECOMOWER.  The addition of the word “bulldog” helps diminish the descriptive nature of “eco” and “mower” so as not to  render the entire mark descriptive.  However, as with the dot-com marks, the USPTO will likely require a disclaimer of the green term (“ECO” in the example above), meaning that the filer would likely have to disclaim the green term apart from the mark as a whole.       
 
            2.  Do not include an environmentally descriptive recitation of goods/services.  
           
            Because the USPTO’s determination of a mark’s descriptiveness hinges on the applicant’s identification of the goods/services on which the mark will apply, consider omitting any reference to being “green.”  This can be done if the main purpose of the product/service is not environmentally-focused, for example,  where the environmentally-conscious element of a product/service is ancillary to its main application or function.  Thus, one might consider the mark ENVIROGROOM for “dog grooming products” that are not made from harmful chemicals. As long as the listing accurately describes the products and services to which the mark applies, there is no requirement that additional benefits of the product or service be specifically highlighted in the trademark application.  
 
            3.  Use existing certification marks to certify that your goods/services are environmentally friendly.

            Certification marks communicate that goods or services meet certain quality standards, as opposed to the source of a product of service as in the case of trademarks.  Certification marks are owned by commercial or governmental organizations that determine and administer the standards that the certification mark represents.  The owner of a certification mark permits use of its certification mark only if an entity’s product or service satisfies the appropriate standards.  However, the value of a certification mark depends on the reputation of its standards, i.e. how consumers view the accuracy and reliability of the information that the certification mark represents.  Before using a certification mark, it is advisable to research the reputation of the certifying mark and certifying organization.  When used in conjunction with a company’s existing trademark, a certification mark can clearly and powerfully convey that your product or service is “green.”  Examples of certification marks include:

USDA Organic
EPA Energy Star (for appliances)
Fair Trade Certified (for sustainable agriculture, pest management, social responsibility)
Green Seal (for sustainable wood) 
For the right kind of business, you might consider creating your own certification mark.

Here is a final word of warning if you do choose to use a green trademark for your goods or services.  There are an increasing number of watch-groups that independently verify the degree to which a product or service is actually “green.”  Before you choose a green trademark, it may be wise to ensure that your product/service meets or exceeds the green standards for a particular industry.  Thus, adopting a green trademark may entail rigorous and thorough testing to ensure that your product fulfills the green promise it is making in order to avoid negative backlash from green watch-groups.

For further information on selecting a “green” trademark or service mark, or for searching or registering a mark, or for other trademark-related issues, please contact any of the following attorneys or any of the other attorneys in the IP Group at Morris, Manning & Martin, LLP.

Author: Andy McNeil
Editor:  John R. Harris
Editor: Jack D. Todd