Prosecuting Eco-Marks Part III: PTO Maintains Descriptiveness Rejection


I recently received a second office action (secondofficeaction.pdf) from the U.S. Patent & Trademark Office (PTO) regarding my application to register the GREEN PATENT BLOG eco-mark.  The trademark examiner rejected the application again on the same ground – that the mark is “merely descriptive” of the services offered.  The examiner re-stated his position that “GREEN” describes clean tech subjects, “PATENT” is a type of intellectual property, and “BLOG” is a generic term.

 that the mark is not merely descriptive because “GREEN” has many meanings, but the examiner rejected that argument, stating that the descriptiveness inquiry focuses on the relevant services.  That is, the fact that “GREEN” may have different meanings in other contexts does not control here because the term immediately describes Green Patent Blog’s (GPB) services of providing information on clean technology and renewable energy.

The office action included attached evidence purporting to show “green patents” used in a descriptive manner, including some GPB pages, and the examiner seemed to relish quoting my own words against me (maybe I should sign him up for free e-mail alerts!). 

Incidentally, I knew that referencing “green patents” in my posts could provide ammunition to the examiner, but decided that the importance of generating Google hits for that term outweighed the downside of compromising my trademark prosecution.

The office action was made “final,” which means I can now appeal to the Trademark Trial and Appeal Board.  Alternatively, I could file another response with the examiner.  I’m mulling my options now and will of course report on the next step in due course.

Eric Lane Avatar

Eric Lane

Eric Lane, the founder and principal of Green Patent Law, is an intellectual property lawyer and registered U.S. patent attorney in New York and is a member of the bar in New York and California. Eric has more than two decades of experience working with wind, solar PV, CSP, biofuels, and geothermal, energy storage technologies, carbon capture and sequestration, medical devices, data communications, mechanical, chemical, internet and software.