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I’ve written extensively (see, e.g., here and ) on the descriptiveness hurdles faced by owners of eco-marks containing terms such as “CLEAN”, “GREEN” and “ECO”, including this author and his blog service mark (see, e.g., here and ).
A recent decision by a federal court in Hawaii provides a window into the fate of a hopelessly merely descriptive mark – ECODIESEL for diesel fuel made from used oil.
Unitek Solvent Services (Unitek) is a Hawaii-based corporation that focuses on recycling, reclamation, and re-use of used oil. When Unitek began looking into ways to convert used oil into reusable fuel, its president decided on the term ECODIESEL to brand its processed diesel fuel.
In late 2005, Unitek filed a federal trademark application for the ECODIESEL mark. The application was registered on the Supplemental Register as U.S. Trademark Registration No. 3,166,981 for “diesel fuel” and fuel for motor vehicles, namely diesel.”
By contrast with the Principal Register, the Supplemental Register offers lesser protections but also has lower standards for registrability, including permitting registration of merely descriptive marks.
A mark that is merely descriptive of the goods or services it is being used to market or sell is not registrable on the Principal Register without demonstrating secondary meaning, i.e., that consumers have come to associate the mark with the source of the goods or services.
After Chrysler began marketing some of its vehicles with optional diesel engines under a stylized ECODIESEL design (see above), Unitek sued Chrysler in federal court in Hawaii and moved for a preliminary injunction.
In a recent decision, the court denied the motion and held that Unitek’s ECODIESEL mark is merely descriptive and has not acquired secondary meaning.ÂÂ
The mark is descriptive, the court held, because it requires no mental leap to determine what goods the mark refers to and instead immediately conveys to the consumer those goods:
The Court holds that no mental leap is required in order to conclude that ECODIESEL is a reference to a diesel fuel product that is more ecological than normal diesel fuel. Unitek concedes that one well-accepted meaning of “eco” is “environmental friendliness,” and does not argue that the term “diesel” in ECODIESEL is anything other than a generic reference to diesel fuel. Combining the terms, no imagination is required to discern that this term references ecologically-conscious diesel…not even a mental hop is necessary to link ECODIESEL with Unitek’s fuel product…Thus, the ECODIESEL mark is descriptive.
On acquired distinctiveness, or secondary meaning, Unitek provided evidence that it sells all of the ECODIESEL fuel it produces. The problem was that all the fuel is sold to just one customer, and that cannot constitute enough consumer recognition to demonstrate secondary meaning:
this uncontroverted evidence actually hurts Plaintiff’s case more than it helps because it is undisputed that Unitek sells all of its ECODIESEL fuel to a single customer, Grace Pacific. This evidence weighs against a determination of secondary meaning because it illustrates the very limited number of customers who have actually ever purchased Unitek’s fuel product and who may have come to associate ECODIESEL with Unitek. Although Grace Pacific may associate ECODIESEL with Unitek, this is insufficient to establish that a signficant segment of the relevant public would make the same association.
Absent secondary meaning, the ECODIESEL mark was merely descriptive and not entitled to protection. The court, therefore, denied Unitek’s motion for a preliminary injunction.
