Green Patent Blog is on vacation.

 

 

Previous posts (here, here, and here) discussed Tesla’s trademark troubles in China.

As it sought to expand into the Chinese market, the electric car maker encountered a businessman named Zhan Baosheng who owned registrations for the TESLA (or “Te Si La” transliterated) trademark in China in both English and Chinese.

While Zhan’s trademark rights initially blocked Tesla from using the mark there, in early 2014 the company announced that it had resolved the matter though a court decision granting it the right to use the TESLA mark in China.

So Tesla seemed to be in the clear until Mr. Zhan, apparently unsatisfied, decided to sue Tesla for trademark infringement.  He seemed to be in it for the money:  the lawsuit demanded that Tesla stop all sales and marketing activities in China, shut down showrooms and charging facilities, and pay him 23.9 million yuan ($3.85 million) in compensation.

It appears that Zhan finally got his pay day.  Tesla recently said it resolved the dispute – this time via a direct settlement with Zhan rather than relying on the Chinese court system.  The Bloomberg report says a Tesla spokeswoman “declined to discuss financial terms” relating to the deal.

Zhan agreed to settle the dispute “completely and amicably” including consenting to cancellation of his Tesla trademark registrations and applications.   He will also transfer his domain names, including tesla.cn and teslamotors.cn to Tesla.

This is not the first time a U.S. clean tech company has faced IP difficulties in China – American Superconductor has been involved in major copyright and trade secret litigation with Chinese wind turbine maker Sinovel.  Also, Apple and Burberry Group had difficulties with securing their trademark rights in China.

It would be interesting to know why Tesla’s initial Chinese court victory was inadequate and left the door open for Zhan’s subsequent lawsuit.  One clear and timeless lesson we can draw from Tesla’s Chinese trademark troubles is that in China, as in legal and business disputes everywhere, money talks.

In March of 2009 Joel Joseph filed a U.S. trademark application for the mark BioMcDiesel for use in connection with marketing and selling biodiesel fuel.

Needless to say, the owner of the ubiquitous global McBrand was not pleased.  McDonald’s Corporation filed an opposition proceeding before the the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (Board) requesting that the application be denied registration.

In a recent decision, the Board ruled for McDonald’s and held that the application would be refused registration.

As usual, the Board’s focus was on the likelihood of confusion inquiry, specifically here whether Joseph’s use of the BioMcDiesel mark would cause consumer confusion with the McDonald’s family of “MC” formative marks.

Although McDonald’s has been criticized over the years for trademark bullying and overextending the reach of its brand (e.g., the McSleep case), its argument here was a credible one.

The first likelihood of confusion factor was easy:  fame of the McDonald’s marks (a no-brainer).  However, the key factor that drove the Board’s decision was the similarity of the goods/services.

It turns out that McDonald’s is one of the largest suppliers of “yellow grease,” the industry term for fryer grease, for biodiesel production.  The evidence of record included multiple news articles about its biodiesel program, including one entitled “McDonald’s McDiesel”  Go Green Hawaii.”  McDonald’s also promotes its sustainability programs, including its recycling efforts, which have received considerable media attention.

The Board also noted that McDonald’s has been sharing locations with gas service stations since 1993, biodiesel fuel is sold at some of these restaurant and gas station locations, and McDonald’s uses biodiesel to run its delivery trucks (see picture above).

Thus, the Board concluded that consumers would likely be confused by Joseph’s use of the BioMcDiesel mark for biodiesel fuel:

[The evidence of record] is sufficient to show that there is a relationship between gas stations and food service/restaurants, and particularly between Opposer’s restaurants, the food items served in those restaurants, and its yellow grease, and fuel, such that relevant consumers, when confronted with the use of Applicant’s BioMcDiesel mark for biodiesel fuel, would be likely to believe there is an association as to source between that biodiesel fuel and Opposer’s restaurant services and related food products.

As to the similarity of the mark to the McDonald’s family of marks, the Board was not persuaded by Joseph’s arguments that the location of the “Mc” component in the middle of the mark and the fact that biodiesel is not a food product were sufficient to distinguish it.

The Board noted that the McDonald’s family is not limited to marks in which the “Mc” formative is at the beginning of the mark, citing CHICKEN MCNUGGETS, EGG MCMUFFIN, and SAUSAGE MCMUFFIN.  Also, because the McDonald’s marks are so famous, “when third parties use the “Mc” formative, it engenders a similar commercial impression.”

You should think twice before pouring your resources into those McSolar and McWind brands!

I’ve written before (e.g., here and here) about tech firms’ penchant for patent PR.  Here are several recent contributions to the genre.

Phytonix Corporation, based in North Carolina, touts its new U.S. patent for biobutanol production technology in this press release.  The patent is U.S. Patent No. 8,735,651, entitled “Designer organisms for photobiological butanol production from carbon dioxide and water” (‘651 Patent).

The ‘651 Patent is directed to a biosafety-guarded photobiological butanol production technology based on designer transgenic plants, designer algae, designer blue-green algae (cyanobacteria and oxychlorobacteria), or designer plant cells.

But the company’s IP portfolio doesn’t end here; Phytonix wants you to know that it also has IP relating to its biosafety guarded technology that “uses redundant mechanisms to prevent the proliferation of our organisms outside of a chemicals & biofuels productions environment.”

Query whether Phytonix directly competes with  biobutanol industry leaders Butamax and Gevo, who have been embroiled in contentious patent litigation.

Meanwhile, Ion Power Group (IPG) has been busy patenting not only in the U.S. but also in Canada, China, Japan and Russia.  The energy R&D company’s IP law firm announced that IPG’s “ground-breaking” ion power plant technology is the subject of “international patents.”

The press release does not contain the patent numbers, but specific patent info can be found on the company’s patents page.

New Jersey-based Proterro recently announced the grant of U.S. Patent No. 8,728,783, succinctly titled “Photobioreactor” (‘783 Patent).

The ‘783 Patent is directed to a photobioreactor for cultivating photosynthetic microorganisms comprising a non-gelatinous, solid cultivation support suitable for providing nutrients and moisture to photosynthetic microorganisms and a physical barrier covering at least a portion of the surface of the cultivation support.

The news was picked up by Biofuels Digest.  The press release also mentions a new Mexican patent and a prior U.S. patent covering the company’s sucrose-producing cyanobacteria.

Of course, not all green patent PR pertains to patent grants.  Some relates to tech transfer.  In this vein, Innovative Environmental Technologies (IET) recently announces an exclusive licensing agreement with Provectus Environmental Products.

IET said the deal involves seven patents, including U.S. Patent No. 7,828,974, with the positively prolix title “The induction of reducing conditions and stimulating anaerobic process through the addition of dried micro-blue green algae and seaweed to accomplish accelerated dechlorinization of soil and groundwater contaminated with chlorinated solvents and heavy metals” and U.S. Patent No. 8,147,694, entitled “Method for the treatment of ground water and soils using mixtures of seaweed and kelp.”

The press release can be found here.

By the way, this breakdown of green patent PR subject matter – the majority being directed to patent prosecution events – is consistent with my findings on patent PR in the clean tech industry discussed here.