Green Patent Blog®

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.

I’ve written before about the U.S. Environmental Protection Agency’s (EPA) Energy Star program, which promotes investment in energy efficient products by providing information that consumers and investors can use to research and compare green product or project choices.

The EPA works with the U.S. Department of Energy (DOE) and manufacturers to award the ENERGY STAR certification to products that meet particular energy savings standards.  The EPA owns U.S. Certification Mark Registration No. 2,817,628 (energy-star-reg.JPG) for its ENERGY STAR design (pictured above).

Certification marks differ from ordinary trademarks in that they certify that goods or services meet certain quality or manufacturing standards instead of indicating the commercial source of a product.  Certification marks are owned by the organizations that set the standards and used by companies that meet the standards and earn the certifications.

The certifying organizations are responsible for formulating, administering and policing their certification standards.  Failing to do so can undermine the credibility and damage the reputation of the organization and its certification.

The EPA and DOE recently announced that they would expand testing and enforcement to strengthen the Energy Star program.  This comes as the program’s star has dimmed after publication of a study performed by Congressional auditors at the Government Accountability Office to test the program’s certification process (see NY Times article here).

The GAO auditors created fictitious companies and sought Energy Star status for some conventional and unconventional devices, submitting phony data purporting to show the products were energy efficient.  Among the study’s highlights (or lowlights, as it were):

most of the products, including a “gasoline-powered alarm clock” and an ”air purifier” consisting of a feather duster pasted on top of a space heater, were approved without challenge

some approvals were issued by an automated system without human review

once a company got approval for one product and became an Energy Star partner, the company could download the logo and paste it on products that had not been approved

As part of the overhaul, DOE recently began testing the six most commonly used appliances - freezers, refrigerator-freezers, clothes washers, dishwashers, water heaters and room air conditioners - and, with the EPA, is developing a system to test all products that earn the Energy Star label. 

In addition, DOE and EPA will require manufactureres to participate in an ongoing verification testing program to ensure continued compliance and are stepping up enforcement by taking action against manufacturers whose products do not comply with the requisite standards.

Like all certification marks and programs, the Energy Star brand is only as good as its administration and policing so let’s hope it regains its shine.

In a previous post, I wrote about the settlement agreement between the U.S. Department of Energy (DOE) and LG Electronics (LG) about certain LG refrigerator models that had received the ENERGY STAR certification despite not actually meeting the required efficiency standards.

As part of the agreement, LG engaged in certain remedial measures for consumers of the models at issue.  In addition, the agreement detailed how the refrigerator models were to be tested going forward. 

DOE adjusted the testing procedures for LG to take into account the peculiarities of the particular models at issue - so-called “French Door” models - that use more energy because they incorporate an ice maker within the fresh food compartment of the refrigerator. 

The fridges use a fill tube heater and an ice ejection heater to maintain the fresh food compartment above freezing temperatures while maintaining the ice making assembly below freezing temperatures.  LG was permitted to test the fridges with the ice maker disabled and the two heaters off. 

The agreement provided these exceptions were “for the purposes of testing under this Agreement subject to further notice by DOE.”

DOE subsequently determined that this test procedure exception resulted in underreporting of the energy consumption of the French Door refrigerator models.  So DOE revoked the exception provided in the agreement and demanded that LG remove the ENERGY STAR label from the models at issue.

Late last year LG sued DOE in federal court in Washington, DC requesting that the court issue an injunction to allow it to retain the ENERGY STAR label on its French Door refrigerators.  In a motion for preliminary injunction, LG argued that DOE’s actions violated the Administrative Procedure Act (APA), the Energy Policy and Conservation Act and LG’s due process rights.

Last month, the court denied LG’s motion.  In a Memorandum Opinion (lg_opinion.pdf), the court held that DOE did not violate the APA because the agreement did not represent a definitive interpretation of testing procedures but only a revocable exception to its procedures. 

The court further held that DOE’s justifications for revoking the agreement’s testing exception were not arbitrary and capricious.

As to LG’s due process claim, the court found that LG’s due process property interest was satisfied by its “post-deprivation suit for breach of contract.”  The court also held that being required to remove the ENERGY STAR certification from only certain refrigerators does not rise to the level of implicating a due process liberty interest.

Despite the setback, LG is maintaining its commitment to energy efficient refrigerators:  before the court decided its motion LG was already making French Door fridges that comply with the DOE’s certification requirements and will bear the ENERGY STAR label.

Adura Technologies, Inc. (Adura) is a San Francisco company that provides energy efficient wireless mesh networking technology for building automation and lighting solutions for retrofitting commercial buildings.   

Adura owns U.S. Trademark Registration No. 3,655,507  (’507 Registration) (507_reg.pdf) for the ADURA mark for computer software and hardware for use in controlling, automating, scheduling and monitoring lighting systems for commercial buildings in Class 9 and providing online software for wireless commercial building automation in Class 42.

Last month Adura sued Adura Systems, Inc. (Adura Systems) for trademark infringement accusing the Silicon Valley electric vehicle power train developer of infringing the ‘507 Registration by using the ADURA mark as a brand name and trade name.

According to the complaint (adura_complaint.pdf), there is evidence of actual consumer confusion as Adura received multiple queries from third parties about affiliation between Adura and Adura Systems.

Another salient allegation in this case highlights the increasing difficulty clean tech companies face in standing out from the growing crowd of companies, both large and small, that have entered the clean tech space.  

The complaint alleges that Adura was omitted from the Cleantech Group’s Global Cleantech 100 list while Adura Systems was included on the list, at least in part, due to confusion arising from the defendant’s alleged trademark infringement:

Plaintiff Adura Technologies . . . alleges that those individuals tasked with identifying companies to be included on the Global Cleantech 100 were confused as to an affiliation by and between Plaintiff Adura Technologies and Defendant Adura Systems due to Defendant Adura Systems having adopted the ADURA mark . . . . Plaintiff Adura Technologies . . . alleges that those individuals tasked with identifying companies to be included on the Global Cleantech 100 were confused that Plaintiff Adura Technologies and Defendant Adura Systems were the same company due to the fact that Defendant Adura Systems has adopted the ADURA mark…

The Green Building Initiative (GBI) is a Portland, Oregon non-profit that promotes green building practices.  GBI offers an assessment protocol and rating system for environmentally friendly building design under the GREEN GLOBES mark.

GBI is the exclusive licensee of the GREEN GLOBES mark and owns two U.S. Service Mark Registrations for the mark - U.S. Registration No. 3,549,714 for the GREEN GLOBES design (714_reg.pdf) (shown above) and U.S. Registration No. 3,549,715 for the word mark (715_reg.pdf).  Both registrations are for the following services in Class 42:

Providing temporary use of online non-downloadable software for evaluating, rating, comparing, certifying, and/or improving the efficiency, sustainability, and environmental performance of both new and existing buildings 

Earlier this month, GBI sued Green Globe International (GGI) in federal court in Oregon, alleging that GGI is infringing its GREEN GLOBES marks by using the mark GREEN GLOBE in connection with a certification system for environmentally friendly building design and construction.

According to the complaint (gbi-complaint.pdf), GBI has been using its GREEN GLOBES mark since at least as early as February 1, 2005.  However, GGI’s web site states that the company’s Green Globe brand (logo shown below) and program were launched in 1992.  A quick search of the U.S. Patent and Trademark Office database yields no registrations for GGI.

GBI’s complaint requests damages and injunctive relief.

Thanks to Augie Rakow for his post on the Cleantech Litigation Report, where I initially read about this case.