Wind Energy Eco-Mark Litigation Heats Up

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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.

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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.

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.