The Biodegradable Products Institute (BPI) is a New York-based organization that promotes the use and recycling of biodegradable polymeric materials. BPI has a labeling program to certify plastic products that will safely and completely biodegrade and compost in accordance with the group’s standards. Companies apply to BPI to have their products reviewed and, if they pass muster, they can affix BPI’s label to them.
In 2003, BPI got a federal registration (reg-no-2783960.pdf) for its COMPOSTABLE certification mark (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.Â
Earlier this month BPI sued several individuals operating EcoVision Alternatives (EcoVision), a Burlingame, California company that makes biodegradable bags and food containers, in federal court in Los Angeles for federal and state trademark infringement, counterfeiting and unfair competition. The complaint alleges that EcoVision infringed BPI’s certification mark by selling bags and containers that display the COMPOSTABLE mark and by stating on its web site that its products are “BPI certified” when EcoVision never applied to BPI’s labeling program and the products were not certified.
According to the complaint (biodegradablecomplaint.pdf), this is not the first instance of infringement by the EcoVision crowd. The complaint states that EcoVision wrongfully used BPI’s certification mark earlier this year when the company was operating under the name Biosphere Alternatives (Biosphere). At the time, BPI contacted Biosphere to ask them to stop using the mark and subsequently sent a cease and desist letter. BPI alleges that EcoVision is acting now with full knowledge of its wrongdoing and malicious intent and therefore accuses the company of willful infringement.
The counterfeiting claim is a bit unusual for a certification mark infringement suit; counterfeiting is more typical where the infringing goods are high end consumer products like Rolex watches or Gucci handbags. But the motivation for the claim is clear – in the case of willful use of a counterfeit mark, the federal trademark statute provides for a minimum damages award of $1 million.
