Followers of this blog may have recognized through the years an implicit belief in a connection between the sometimes intricate rules of intellectual property and larger, high-level issues, principally climate change, but also business, competition, and innovation.

Indeed, I do believe that IP has an impact on those important issues and in those areas of human endeavor, otherwise why would I be blogging in this space?

One thing I never imagined, though, is that IP could potentially have implications for the fate of a head of state, particularly an American president.

Recent news reports (e.g., here, here and here) raise the fascinating prospect that Trump’s trademark filings in other countries (e.g., China, Russia) could be a basis for impeachment.

There are two theories of the case.  Each is rooted in the , which prohibits federal officials, including the president, from accepting anything of value from foreign governments unless explicitly approved by Congress.

First, the quid pro quo theory:

For a specific Trump trademark application or group of applications approved by another nation’s intellectual property office, one might ask whether that nation’s government was promised something in return, is obtaining something in return, or hopes to obtain something in return or otherwise influence the American president.

In February, the Chinese Trademark Office registered an important Trump trademark.  Diane Feinstein, a U.S. Senator from California, questioned the timing of the registration, noting that it came days after Trump reaffirmed the U.S. “One China” policy on a phone call with his Chinese counterpart.  This was a reversal by Trump after questioning the United States’ commitment to the policy during his election campaign.

At issue is Chinese Trademark Registration No. 14831415, registered February 14, 2017 for the TRUMP mark for various construction services.  According to its records history, the application was filed back in 2014, was initially accepted in March 2015, and then refused registration less than a month later.

The application was ultimately approved and published for opposition November 13, 2016, days after Trump won the U.S. presidential election, and then proceeded to registration.

Second, the valuable brand theory:

The second theory rests on the simple fact that Trump profits from his brands.  Arguably, then, when an intellectual property office – an agency of another nation’s government – grants Trump protection for his trademarks, that action constitutes something of value from that government.

Taking this broader view, as reported by recent articles in The New York Times and The Washington Post, it is relevant that the Chinese Trademark Office also approved and published for opposition 38 other trademark applications containing the term “TRUMP” on February 27 and March 6, 2017.

As pointed out by a trademark lawyer from the Sheppard Mullin law firm quoted in the Post piece, the timing of the approvals is not particularly suspicious.  These approved applications were filed in April 2016.  Under a recent revision to Chinese trademark law, the Chinese Trademark Office is supposed to complete examination of an application within nine months of its filing date.

It also should be noted that seven TRUMP applications filed around the same time were not initially approved.

Under the valuable brand theory, though, timing is less significant.  So long as decisions approving trademarks and actions registering them are taken by another nation while Trump is in office, there is potential value flowing from that nation to the American president.  And according to a recent AP story, Trump currently has 49 trademark applications pending in China.

This author admittedly lacks the constitutional law background to render any opinion on the the viability of either theory, so I will leave it to others with the requisite expertise to weigh in on whether Trump’s trademarks might constitute impeachable intellectual property.

In a previous post, I wrote about the trademark troubles of Suntech Power Holdings (“Suntech”), a Chinese solar photovolatic (PV) module provider, who has been fighting an infringing thorn in its side on three continents. 

Suntech owns U.S. Trademark Registration No. 3,111,705 (suntechreg.pdf) (“‘705 registration”) for its SUNTECH design mark (pictured above) for:

Solar batteries; electric accumulators for vehicles; accumulator boxes; battery boxes; plates for batteries; batteries for lighting; batteries; battery chargers; galvanic batteries; electric batteries

Suntech also has common law rights to the word mark SUNTECH in connection with solar PV modules and building integrated PV and has an application pending in the U.S. Patent & Trademark Office for the mark (suntechapp.pdf).  

Hong Kong based Shenzhen Xintian Solar Technology Co. and its subsidiary Sun Tech Solar (collectively “Sun Tech Solar”), have been using the trademarks SUN TECH and SUN TECH SOLAR in connection witht the sale of solar modules similar to Suntech’s products and operating a web site at the address www.solarsuntech.com.   

Last month Suntech announced that it had been granted a preliminary injunction (PI) in Germany.   The PI prohibits Sun Tech Solar and its distributors from selling “Suntech” brand solar products (see the earth2tech story here). 

The news release says there have been only “isolated cases” of imitation products sold and suggests that knockoffs can be identified by closely comparing the logos and product names on the products sold with the genuine logos and names on the Suntech website.

Germany isn’t the only market where Suntech has enforced its trademark rights against fakes made by Sun Tech Solar.  As discussed previously in this space, Suntech sued its rival last year in San Diego for alleged infringement of the ‘705 registration and its unregistered SUNTECH word mark.

In that case, the court granted a preliminary injunction (suntech_pi_order.pdf) ordering Sun Tech Solar to cease all use of the SUN TECH and SUN TECH SOLAR marks as well as any other confusingly similar marks in connection with solar modules in the U.S.  The injunction order came about a week before Sun Tech Solar was to show its wares at the Solar Power International 2008 Trade Show in San Diego.

But the company thumbed its nose at the court and its rival by displaying the SUN TECH SOLAR mark on its signs and promotional material at the Trade Show anyway and refusing to cease the infringing activity even after being served with a copy of the preliminary injunction.  The court found Sun Tech Solar in civil contempt and ordered the seizure of the infringing materials (suntech_seizure_order.pdf).

That suit ultimately resulted in a default judgment and a permanent injunction against Sun Tech Solar (suntech_default_order.pdf) because of the company’s continuing infringement and refusal to even show up in court.  The default order stated:

The Defendant has made it clear that it does not intend to cease infringing Plaintiff’s trademarks and refuses to acknowledge this litigation.

Even if Sun Tech Solar had hired attorneys, they wouldn’t have had much to work with on the law or the equities considering the infringer’s outlaw behavior.

Voltaix, LLC (Voltaix) is a New Jersey company that manufactures chemicals for the semiconductor and solar energy industries. 

Voltaix owns two U.S. Trademark Registrations, Nos. 2,954,404 (voltaixinc_reg.pdf) (‘404 registration) for the word mark VOLTAIX, INC., and 2,992,964 (voltaix_reg.pdf) (‘964 registration), for the word mark VOLTAIX.  Both registrations are for “chemicals used in the manufacture of semiconductors and photovoltaic devices” in Class 1.

Last month Voltaix sued NanoVoltaix, Inc. (NanoVoltaix) in federal court in New Jersey, accusing the Tempe, Arizona photovoltaics (PV) equipment and technology company of willfully infringing its registered marks. 

The complaint (voltaix_complaint.pdf) includes claims for federal trademark infringement, false designation of origin under the Lanham Act, unfair competition, state trademark infringement, misappropriation and dilution and a count for cancellation of NanoVoltaix’s U.S. Service Mark Registration No. 3,208,703 (nanovoltaix_reg.pdf) (‘703 registration).

The ‘703 registration is for the word mark NANOVOLTAIX for “management and business consulting services in the field of nanotechnology” in Class 35. 

NanoVoltaix also owns U.S. Trademark Application No. 77/542,413 (nanovoltaix_app.pdf) (‘413 application), filed in August 2008 for the word mark NANOVOLTAIX for PV solar cells and PV and silicon manufacturing equipment in Class 9, installation, repair and maintenance of PV and silicon manufacturing equipment in Class 37, and solar cell and PV system design in Class 42.

Voltaix has asked the court to enjoin the defendant from using the NANOVOLTAIX mark and from further prosecuting the ‘413 application.  The complaint also requests payment of NanoVoltaix’s profits through use of the allegedly infringing mark along with treble damages, punitive damages and attorneys’ fees.

On willful infringement, the complaint alleges that NanoVoltaix ignored plaintiff’s cease and desist demand.  The complaint further alleges that one of the principals of NanoVoltaix became aware of plaintiff’s VOLTAIX mark through doing business with Voltaix while working for a previous employer.  According to the complaint, this principal was involved in selecting the name and mark NANOVOLTAIX.

It seems to me the U.S. Patent & Trademark Office (PTO) didn’t get it quite right with respect to the marks at issue in this case.  For one thing, the mark VOLTAIX as used by Voltaix is arguably merely descriptive of the goods sold under the mark. 

Consider that the definition of “voltaic” (per dictionary.com) is “noting or pertaining to electricity or electric currents, esp. when produced by chemical action…” and the goods listing for Voltaix’s registered marks is “chemicals used in the manufacture of semiconductors and photovoltaic devices”.  But the PTO never raised descriptiveness in the prosecution of the marks.

In the prosecution of NanoVoltaix’s ‘413 application the PTO has issued an office action but failed to raise the objection that there is a likelihood of confusion with the prior VOLTAIX registrations.  This may be because the NANOVOLTAIX application is in different classes than the VOLTAIX registrations.

However, it still seems compelling that the prior VOLTAIX registrations relate to chemicals used in the manufacture of PV devices, and the ‘413 application relates to PV cells, manufacturing equipment for the production of PV, and installation and servicing of such equipment. 

In the complaint, Voltaix makes the point (valid I think), that the term “nano” is generic and can’t serve to distinguish the NANOVOLTAIX mark from the VOLTAIX marks, rendering the marks identical for likelihood of confusion purposes.

In any event, this is a true eco-mark era green branding dispute and will be a very interesting case to watch.

Over the last eight months or so I’ve been blogging about the process of prosecuting an eco-mark application in the U.S. Patent & Trademark Office (PTO), using my own experience trying to get a federal registration for the GREEN PATENT BLOG mark.

I discussed the PTO’s first office action initially rejecting my application on descriptiveness grounds (see post ), my response to that rejection (see post ), the PTO’s final office action rejecting my application for the same reason (see post ), my request for reconsideration arguing acquired distinctiveness (see post here) and the notice of publication indicating that the PTO would accept my mark on acquired distinctiveness grounds (see post here).

The prosecution process took some time and legal argument because the PTO rejected GREEN PATENT BLOG as “merely descriptive” of blogs that provide information on green technology (a trademark can’t be registered with the PTO if it is a generic term or descriptive of goods or services because that would restrict competitors from conveying information about their goods or services). 

When my argument against descriptiveness didn’t fly, I made the alternative argument of acquired distinctiveness.  Acquired distinctiveness is a trademark law concept which means that the mark, though it may not be inherently distinctive enough for trademark protection, has become sufficiently distinctive through use so that consumers have come to recognize it as a source identifier for the goods or services.

The PTO found my evidence of acquired distinctiveness persuasive (I submitted evidence such as other blog and media mentions and e-mails from readers stating that GREEN PATENT BLOG had come to identify my blogging services).  Thanks again to all the readers who provided those e-mails.

Last month, the PTO issued a certificate of registration for the service mark GREEN PATENT BLOG (gpb_reg.pdf) for “on-line journals, namely, blogs featuring news, information and legal analysis relating to intellectual property law issues in the clean technology and renewable energy industries” in Class 41.

Now the exciting part:  I can (and have) put the little “R” in a circle next to GREEN PATENT BLOG to indicate that it’s a federally registered mark.

In a previous post, I discussed the new argument and accompanying evidence of acquired distinctiveness that I raised in prosecuting the GREEN PATENT BLOG eco-mark application.

Acquired distinctiveness is a trademark law concept which means that the mark, though it may not be inherently distinctive enough for trademark protection, has become sufficiently distinctive through use so that consumers have come to recognize it as a source identifier for the goods or services.

The argument was presented in a Request for Reconsideration after the U.S. Patent & Trademark Office (PTO) issued a final Office Action rejecting my application on descriptiveness grounds.

Last month the PTO issued a Notice of Publication (gpb_notice.pdf), which means the Examining Attorney was persuaded by the acquired distinctiveness argument and believes the GREEN PATENT BLOG trademark application is allowable.

The next step is that my trademark information is published for opposition, and if nobody opposes registration within 30 days, it will become a registered trademark.

Many thanks to those of you who provided evidence for me in the form of e-mails stating that GREEN PATENT BLOG has come to identify my blogging services.  I couldn’t have done it without you, my readers.

I can’t help but recall a comment on one of my earlier posts in this series from an anonymous reader who outlined his or her rather bleak view of my options at the time:

Let’s see. Your options are (1) give up; or (2) request reconsideration by the Examining Attorney, and lose; and/or (3) file an appeal and lose; and/or (4) change the name of your blog to something that might be registrable.

If there’s one lesson to learn from this experience, it’s don’t get discouraged by ‘nonymous nabobs of negativism.

Meeting Strategies Worldwide (MSW), a Portland, Oregon event management company, has launched a web site that helps meeting planners and conference organizers find green venues for their events (see the Matter Network story here).

The MeetGreen site provides two resources:  the MeetGreen Scorecard, which ranks cities based on green tourism and convention center programs, and the MeetGreen Calculator, which allows event planners to estimate the emissions footprints for potential destinations.

MSW’s backs up its tools with the MeetGreen Certification program, which evaluates the environmental meeting management practices of conference hosts to assure that they minimize the environmental impact of events in their venues.

MSW owns U.S. Service Mark Registration No. 3,387,871 for the MEETGREEN word mark and U.S. Certification Mark Registration No. 3,408,122 (‘122 registration) for the CERTIFIED MEETGREEN design mark pictured above.

According to the ‘122 registration (meetgreen_reg.pdf), MSW’s CERTIFIED MEETGREEN mark certifies that:

a conference, meeting, or exhibition complies with established environmental policies and practices in conference, meetings and exhibitions such as those regarding creation and communication of policies and measures designed to minimize waste and resource use, recycling, offset and donation programs, and the purchase and use of environmentally friendly materials and products

I, for one, will certainly check to see if the next conference I attend is MeetGreen Certified.

In a previous post I wrote about CO2 Stats, a company that provides a carbon offset program for web sites.  The program calculates the carbon emissions of its subscribers’ sites and purchases renewable energy certificates to offset the emissions.

Enernetics, Inc., which owns CO2 Stats, filed a trademark application (485_app.pdf) in the U.S. Patent & Trademark Office (PTO) last month for the word mark GREEN CERTIFIED SITE. 

U.S. Application Serial No. 77568485 (‘485 application) lists the goods/services as “[c]omputer certificates for verifying environmental services for Internet services and Internet devices, namely websites, email servers, e-commerce, multi-media, routers, and PCs.”

It seems likely that the PTO will at least initially reject CO2 Stats’ application as merely descriptive of the services provided, and the company will have to fight to get a registration.  This is because one can’t get a federal registration for a trademark if the mark merely describes the goods or services provided.

I subscribed to CO2 Stats and I’ve inserted the required piece of HTML code (although it seems I can only do so in a post so the above logo will not consistently appear on my web site).

Clicking on the Green Certified Site logo above verifies the offsets and provides an interesting window into the energy used and carbon emitted by the blog. 

For instance, the carbon footprint of you guys, my readers, this month is 0.0038 kg of CO2; the total server footprint is 0.0041 kg CO2.  There is also a cool pie chart showing the breakdown of the fuels powering this web site.

Thanks to CO2 Stats, Green Patent Blog will no longer contribute to global warming.

Build It Green, a Berkeley, California non-profit organization, will provide green building certification for new San Francisco residences.  San Francisco Mayor Gavin Newsom recently approved a green building ordinance that requires new small residential buildings (those having four dwellings or fewer) to achieve certain ratings from Build It Green’s GreenPoints rating system.

Starting next year, the homes must achive 25 GreenPoints.  In 2010 and 2011, the residences must demonstrate a minimum of 50 GreenPoints, and that number rises to 75 in 2012. 

Under the San Francisco ordinance, commercial buildings and larger residential buildings can either get certified by the U.S. Green Building Council’s LEED certification program or achieve GreenPoints ratings.

The GreenPoints rating system appears to be a lesser known, California equivalent of the LEED certfication.  Like its more famous cousin, the GreenPoints rating takes into account energy efficiency, resource conservation, indoor air quality and water conservation.

Build It Green has a dozen trademark, service mark and certification mark applications for various aspects of its green building ratings and services, including U.S. Application Serial No. 77/359,607 (77359607app.pdf) for the GreenPoint Rated logo (shown above).

But Build It Green has had some difficulty in registering its eco-marks.  Not surprisingly, the marks BUILD IT GREEN (for dissemination of educational materials and programs in the field of green building) and CERTIFIED GREEN BUILDING PROFESSIONAL (for certification of professionals in the field of green building) were initially refused by the U.S. Patent & Trademark Office (PTO) as “merely descriptive” of the services provided.

This is because one can’t get a federal registration for a trademark if it merely describes or is a generic term for the goods or services provided.  The rationale is that registering such terms would restrict the ability of competitors to provide those goods or services.  (see previous posts about my descriptiveness battle , ,  and here)

However, the word mark GREENPOINT RATED is moving towards registration.  Build It Green successfully overcame a rejection in which the PTO stated that there may be a likelihood of confusion between its mark and GREENPOINT LANDING.

In its response, Build It Green pointed out the differences in the terms of the marks and argued that the latter mark refers only to the Brooklyn neighborhood where the applicant’s property transaction occurred.  The PTO was persuaded, and the GREENPOINT RATED mark has moved out of substantive examination.

 

Suntech Power Holdings (“Suntech”) is a Chinese solar module provider specializing in building-integrated photovoltaics.  Suntech owns U.S. Trademark Registration No. 3,111,705 (“‘705 registration”) for its SUNTECH design mark (pictured above).

Last month Suntech sued competitor Shenzhen Xintian Solar Technology Co. and its subsidiary Sun Tech Solar (collectively “Sun Tech Solar”) in federal court in San Diego for alleged infringement of the ‘705 registration and its unregistered SUNTECH word mark.

The ‘705 registration (suntechreg.pdf) lists the goods sold under the SUNTECH design mark as:

Solar batteries; electric accumulators for vehicles; accumulator boxes; battery boxes; plates for batteries; batteries for lighting; batteries; battery chargers; galvanic batteries; electric batteries

According to the complaint (suntechcomplaint.pdf), Sun Tech Solar’s infringing activity includes use of the trademarks SUN TECH and SUN TECH SOLAR in connection with the sale of solar modules that are similar to Suntech’s products. 

In addition, Sun Tech Solar operates a web site at the address www.solarsuntech.com, which Suntech alleges is confusingly similar to its web site (www.suntech-power.com) and uses its SUNTECH mark in the domain name. 

The complaint also notes that Sun Tech Solar will be exhibiting and advertising using the allegedly infringing trademarks at the Solar Power Conference & Expo – probably the largest international solar power conference – in San Diego October 13-16. 

The complaint requests an injunction prohibiting Sun Tech Solar from using the allegedly infringing marks and asks for treble damages and punitive damages.

One interesting note on timing is that Suntech didn’t file an application for registration of its SUNTECH word mark (suntechapp.pdf) until August 29, 2008, one day after it filed the complaint. 

Surely Suntech would have preferred to have the word mark registration to assert against Sun Tech Solar, but the design mark still provides a strong case because the word portion of it would likely be deemed the dominant feature of the mark for consumer recognition purposes.

It’s possible that the timing of the suit itself was influenced by the Solar Power Conference, and indeed, Suntech has moved for a preliminary injunction (suntech_pi_motion.pdf) asking the court to shut down its rival’s booth at the expo.

 

In response to a , I recently filed a Request for Reconsideration in an attempt to keep the dream alive for GPB.  After a final Office Action, a trademark applicant can appeal the decision or file a Request for Reconsideration raising a new issue.

My Request for Reconsideration raised the new issue of acquired distinctiveness.  Acquired distinctiveness is a trademark law concept which means that the mark, though it may not be inherently distinctive enough for trademark protection, has become sufficiently distinctive through use so that consumers have come to recognize it as a source identifier for the goods or services.

Fortunately the trademark rules allow applicants to argue acquired distinctiveness in the alternative, so I did not have to concede that the GREEN PATENT BLOG mark is merely descriptive of the services provided.  Instead, I maintained my position that the mark is not merely descriptive and added the acquired distinctiveness argument.

Specifically, I argued that readers of Green Patent Blog have come to recognize the mark as an identifier of my blogging services.  I used both indirect evidence, such as other blog and media mentions listing me as the author of Green Patent Blog, and direct evidence consisting of e-mails from readers saying that they identify me as the source of the clean tech IP blogging services (a big thank you to all the readers who helped me in this regard!).

If the examining attorney buys my argument and supporting evidence on acquired distinctiveness, the GREEN PATENT BLOG mark will be published for opposition, and then registered if nobody opposes.  Otherwise, I’ll get another office action and have to take it from there.