When I mention to other trademark practitioners the concern I discussed in my previous post about the potential descriptiveness of eco-marks passing below the radar of the U.S. Patent & Trademark Office (PTO), they often respond with a shrug that this is standard practice. That is, if there is an actual or potential descriptiveness problem with a trademark application, it is common to craft the identification of goods or services to make it sound as unlike the mark as possible while still accurately listing the goods or services.
I don’t think this explanation quite captures it though. If you compare the listings of goods for some eco-marks with those of ordinary marks that were artfully drafted to gain allowance based on being permissibly “suggestive” rather than merely descriptive, it seems like the omission of the “green” component is more than just a matter of zealous advocacy or creative drafting.
For example, here is the listing of goods for the mark LOC-TOP, which got a federal trademark registration (since abandoned) for bottle closure caps:
CONTAINER CLOSURES IN THE NATURE FO (sic) BOTTLE CAPS HAVING A CAP PORTION ADAPTED TO BE SECURED TO A CONTAINER AND A SPOUT MOUNTED ON THE CAP PORTION SO AS TO BE CAPABLE OF BEING ROTATED BETWEEN OPEN AND CLOSED POSITIONS.
A glance at the mark and the identification of goods reveals the fairly simple strategy of the applicant. The mark consists of two words put together: LOC (lock) and TOP. Therefore, the drafter purposely omitted those words from the listing of goods, instead choosing different terminology to communicate the nature of the goods. Thus, the use of the term “closures” and “caps” instead of “tops” and “adapted to be secured” instead of “locked.” So it’s clearly a bit of spin or a disguise, possibly even manipulation. But it nevertheless accurately communicates the nature of the goods without concealing important aspects of the products.
By contrast, here is Clorox’s identification of goods for GREEN WORKS for environmentally-friendly cleaning products (see my previous post here):
Personal care products, namely, hand soap, body skin soap, toothpaste, personal deodorant, mouthwash, essential oils for personal use; non-medicated skin care preparations, skin creams, skin lotions and skin moisturizing creams, bath gel, shower gel, deodorants for personal use and antiperspirant soaps; detergents, namely, dish detergents, dishwashing detergents, dishwasher detergents, laundry detergents, toilet bowl detergents; non chlorine bleach for household use, namely, household and laundry bleach
Here, the drafter hasn’t simply finessed the terminology to de-emphasize that the goods are all natural, environmentally-friendly products. Rather, the green component, surely an important feature of the products, has been left out entirely. Apparently, such an omission is permitted by trademark prosecution rules, but I believe it is fundamentally different from the common practice of artful drafting of goods listings to avoid descriptiveness rejections.
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