Green Patent Blog®

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.

Last month PineMark, Inc. (PineMark), a San Diego-based company, launched a program that provides certification for green lifestyles.  [Full Disclosure:  I own a very small percentage of PineMark]  

According to its web site, PineMark offers the first and only individual environmental certification available to consumers.

An individual who wishes to be “PineMarked” enters various information about his or her lifestyle relating to electricity consumption, motor vehicle and transportation habits, water consumption, the types of appliances used and recycling habits.  

The individual then gets a score that rates his or her comprehensive impact on the environment.  Those who earn a high enough score receive the PineMark Certification, and hopefully all users become more cognizant of how to reduce the environmental impact of their lifestyles. 

According to PineMark’s CEO Lauren de los Santos, “PineMark wants to help individuals find out if they are green . . . by establishing national standards with this certification.  It’s a similar concept to LEED but for people.   We want to help people live sustainably and the first step is to raise awareness.”

PineMark owns several eco-mark applications relating to both its trademarks and certification marks. 

U.S. Application Serial No. 77/771,314 is for the word PINEMARK for services relating to analysis and evaluation of individual lifestyles in Class 42 (314_application.pdf).  U.S. Application Serial No. 77/815,507 is for the same services for the PineMark tree logo (pictured above) (507_application.pdf).

The central eco-marks for PineMark, of course, are the certification marks.  PineMark owns both the certification word mark PINEMARK CERTIFICATION and a certification mark for its PineMark seal:

U.S. Application Serial No. 77/771,553 (553_application.pdf) is for the word certification mark and U.S. Application Serial No. 77/813,597 (597_application.pdf) is for the seal.  Both list the certification services as:

Analysis and evaluation of the environmental impact of individual lifestyles

Like LEED certification for green buildings and the Energy Star program for appliances, PineMark is attempting to build goodwill around a certification mark while helping consumers help the environment.

In a previous post, I wrote about Nordic Windpower’s (Nordic) patent pending flexible “teeter hub” technology for its two-bladed wind turbines. 

Nordic also has begun to enforce its increasingly valuable trademark, reflecting a recent uptick in litigation involving eco-marks (trademarks that communicate environmentally friendly products or services).

Nordic owns U.S. Trademark Registration No. 3,536,392 for the NORDIC WINDPOWER mark for “wind turbines; wind-powered electricity generators” in Class 7 (’392 Registration) (392_reg.pdf). 

Last month Nordic sued Nordic Turbines, Inc. (NTI), a wind turbine manufacturing venture, alleging that NTI’s use of the term “Nordic” to market and sell wind turbines and raise investment capital for the manufacture of wind turbines infringes the ‘392 Registration.

According to the complaint (nordic_complaint.pdf), filed in federal court in San Francisco, NTI changed its name in June 2009 from Vista Dorada Corp. to Nordic Turbines to benefit from Nordic’s goodwill and market presence.

In addition to trademark infringement, the complaint alleges that NTI misappropriated text and images from a Nordic confidential management presentation that includes details about Nordic’s patent pending technology.

Nordic also asserts trade dress protection for a blue and orange color scheme the company uses in its advertisements and promotional material (trade dress refers to the visual look and feel of a product or its packaging).  The complaint alleges that NTI is using an identical blue and orange color scheme.

Nordic has requested a preliminary and permanent injunction with respect to the alleged trademark and trade dress infringement and requests that the court make NTI do corrective advertising to dispel any consumer confusion.

In another wind energy eco-mark suit, Jacobs Wind Electric Co. (Jacobs), a Minneapolis-based consumer wind system designer, recently moved for partial summary judgment of trademark cancellation and fraud claims brought by Minnesota wind system maker Wind Turbine Industries Corp. (WTIC) in a dispute over rights to certain JACOBS trademarks.

Jacobs owns U.S. Trademark Registration 1,532,714 for the mark JACOBS WIND ENERGY SYSTEMS & Design (shown above) for wind energy conversion apparatus in Class 7 (’714 Registration) (714_reg.pdf).  Jacobs also owns U.S. Trademark Application No. 76/677,473 for the JACOBS mark for the same goods (’473 Application) (473_app.pdf).

In January, WTIC sued Jacobs in U.S. District Court in Minnesota, requesting cancellation of the ‘714 Registration and the ‘473 Application on the basis that Jacobs fraudulently obtained the ‘714 Registration for the design mark and is fraudulently seeking registration of the JACOBS mark. 

WTIC asserts that the JACOBS mark was owned by an earlier Jacobs corporate entity, which subsequently changed its name to Earth Energy Systems, Inc. (EESI).   

According to the complaint (wind_turbine_industries_complaint.pdf), EESI assigned to the current Jacobs only limited use of the mark, and Jacobs agreed not to use the JACOBS mark in connection with the manufacture or sale of wind energy equipment.  The complaint further alleges that EESI assigned the the JACOBS mark in its entirety to WTIC.

WTIC accused Jacobs of fraud in prosecuting the application that matured into the ‘714 Registration and the ‘473 Application by swearing to the U.S. Patent and Trademark Office (PTO) that it exclusively owned the mark.

Jacobs’ summary judgment motion (jacobs_wind_motion.pdf) disputes WTIC’s ownership story.  According to the motion papers, Jacobs was granted a perpetual license to use the JACOBS mark by EESI, and WTIC was subsequently granted a limited license to the mark subject to pre-existing licenses.

Jacobs also contends that the fraud claim should be dismissed as to the ‘714 Registration due to laches because WTIC’s delay in bringing the claim was unreasonable (the ‘714 Registration issued in 1989) and, with respect to the ‘473 Application, that the court lacks the statutory authority to cancel a pending trademark application.