When I mention to other trademark practitioners the concern I discussed in my previous post about the potential descriptiveness of eco-marks passing below the radar of the U.S. Patent & Trademark Office (PTO), they often respond with a shrug that this is standard practice.  That is, if there is an actual or potential descriptiveness problem with a trademark application, it is common to craft the identification of goods or services to make it sound as unlike the mark as possible while still accurately listing the goods or services.

I don’t think this explanation quite captures it though.  If you compare the listings of goods for some eco-marks with those of ordinary marks that were artfully drafted to gain allowance based on being permissibly “suggestive” rather than merely descriptive, it seems like the omission of the “green” component is more than just a matter of zealous advocacy or creative drafting.

For example, here is the listing of goods for the mark LOC-TOP, which got a federal trademark registration (since abandoned) for bottle closure caps:

CONTAINER CLOSURES IN THE NATURE FO (sic) BOTTLE CAPS HAVING A CAP PORTION ADAPTED TO BE SECURED TO A CONTAINER AND A SPOUT MOUNTED ON THE CAP PORTION SO AS TO BE CAPABLE OF BEING ROTATED BETWEEN OPEN AND CLOSED POSITIONS.

A glance at the mark and the identification of goods reveals the fairly simple strategy of the applicant.  The mark consists of two words put together:  LOC (lock) and TOP.  Therefore, the drafter purposely omitted those words from the listing of goods, instead choosing different terminology to communicate the nature of the goods.  Thus, the use of the term “closures” and “caps” instead of “tops” and “adapted to be secured” instead of “locked.”  So it’s clearly a bit of spin or a disguise, possibly even manipulation.  But it nevertheless accurately communicates the nature of the goods without concealing important aspects of the products.

By contrast, here is Clorox’s identification of goods for GREEN WORKS for environmentally-friendly cleaning products (see my previous post here):

Personal care products, namely, hand soap, body skin soap, toothpaste, personal deodorant, mouthwash, essential oils for personal use; non-medicated skin care preparations, skin creams, skin lotions and skin moisturizing creams, bath gel, shower gel, deodorants for personal use and antiperspirant soaps; detergents, namely, dish detergents, dishwashing detergents, dishwasher detergents, laundry detergents, toilet bowl detergents; non chlorine bleach for household use, namely, household and laundry bleach

Here, the drafter hasn’t simply finessed the terminology to de-emphasize that the goods are all natural, environmentally-friendly products.  Rather, the green component, surely an important feature of the products, has been left out entirely.  Apparently, such an omission is permitted by trademark prosecution rules, but I believe it is fundamentally different from the common practice of artful drafting of goods listings to avoid descriptiveness rejections.

 

 

Since I started reading, researching and posting about the prevalence of eco-marks (trademarks that communicate environmentally-friendly products or practices), I’ve been troubled by them.  There is, of course, the obvious concern about false, unsubstantiated, or misleading environmental claims, known as “greenwashing,” which troubles me as a consumer.  This concern has been borne out by a recently published report by Terra Choice, an environmental marketing agency, called “The Six Sins of Greenwashing,” which surveyed over 1,000 purportedly green products and found that the vast majority made false or misleading claims.  I’ve discussed this problem, and a couple of ways to combat it in this space before. (see prior posts here and here)

But there is something else about the union of green marketing and trademarks that troubles me as an IP lawyer.   As I mentioned in previous posts, one can’t get a federal registration for a mark that is a descriptive or generic term for the goods or services because that would prevent competitors from identifying their goods or services.  An application for federal registration of a trademark must specifically identify the goods or services the mark will be used in connection with.  It is this identification, or listing, of goods or services that the U.S. Patent & Trademark Office (PTO) examines to decide whether the mark should be allowed a federal registration.  This decision is guided by many factors including the level of descriptiveness of the mark.  But the trouble with eco-marks is that the identification of goods rarely reflects the environmental component of the mark.  Take, for example, the identifications of services for two marks owned by PNC Bank: 

1.  FINANCIAL SERVICES, NAMELY, BANKING SERVICES FEATURING CHECKING, SAVINGS AND INVESTMENT ACCOUNT SERVICES; FINANCIAL WEALTH MANAGEMENT; CONSUMER LENDING SERVICES; INVESTMENT BROKERAGE SERVICES; PENSION VALUATION SERVICES; ADMINISTRATION OF EMPLOYEE PENSION PLANS; INSURANCE AGENCY SERVICES; LIFE, HEALTH, ACCIDENT AND FIRE INSURANCE UNDERWRITING; INVESTMENT BANKING SERVICES; FUNDS INVESTMENT AND FUND INVESTMENT CONSULTATION.

2.  BANKING; FINANCIAL SERVICES, NAMELY, FINANCIAL MANAGEMENT SERVICES, FINANCIAL PLANNING SERVICES, ESTATE PLANNING SERVICES, TAX PLANNING SERVICES, RETIREMENT PLANNING SERVICES, GIFT PLANNING SERVICES, DISTRIBUTION PLANNING SERVICES, ENDOWMENT MANAGEMENT AND PRIVATE FOUNDATION ADMINISTRATION SERVICES, EMPLOYEE BENEFIT PLAN MANAGEMENT AND SERVICES, FINANCIAL PORTFOLIO MANAGEMENT SERVICES, INVESTMENT ADVISORY, MANAGEMENT AND CONSULTATION SERVICES, INVESTMENT BANKING SERVICES, SECURITIES UNDERWRITING AND BROKERAGE SERVICES, INSURANCE UNDERWRITING SERVICES IN THE FIELDS OF LIFE, HEALTH, ACCIDENT, FIRE, MARINE, AND MEDICAL, AND ANNUITY UNDERWRITING AND BROKERAGE SERVICES, AND BANKING SERVICES. 

You wouldn’t know it, but one listing is for an eco-mark.  The first is the identification of services for the mark GREEN BRANCH, the second is for EASY AS PNC.  By reading the GREEN BRANCH listing, one would never suspect that PNC is using the mark to attract environmentally-conscious consumers by touting the bank’s green ways.  There is no mention of PNC’s energy efficient technology, green buildings, or any other environmentally-friendly business practices. 

It seems to me that GREEN BRANCH arguably is descriptive of the services actually provided – financial services in environmentally-friendly bank facilities – even though it is, of course, not descriptive of the services listed.  While trademark examiners in the PTO sometimes take it upon themselves to look beyond the listing of goods or services to the context of the mark’s use, they don’t always, and the result is stealth prosecution of eco-marks as these arguably descriptive trademarks may slip under the radar of the PTO.

Last month Clorox introduced a line of natural cleaning products sold under the Green Works brand name. The Green Works cleaners are made from coconuts and lemon oil, are biodegradable and are packaged in recyclable bottles. The products’ green trademark protection comes from multiple angles, including both ordinary trademarks and certification marks (see my previous posts on this subject).

First, Clorox has applied for federal trademark registrations for both the word mark GREEN WORKS and the design mark (shown above) in multiple classes of goods ranging from soap, toothpaste and deodorant to dishwasher and laundry detergents to plastic wrap, storage containers and kitty litter. Most of the applications were filed with the U.S. Patent & Trademark Office last year and are still pending, although one application for the word mark in connection with all purpose cleaners was filed in late 2006 and has been allowed.

The products also were certified by the Environmental Protection Agency’s (EPA) Design for the Environment (DfE) program and bear the DfE label. The DfE certification mark means the EPA has screened the product’s ingredients for potential health and environmental effects and concluded that they are low risk for the class of chemicals used in that product.

Finally, Clorox can impress green consumers with a Sierra Club endorsement of the Green Works product line.   The conservation group’s logo - also protected by a federal trademark registration – soon will appear on the products.

There’s a new web site that educates consumers about the multitude of “green” labels out there.  The site, ecolabelling.org, provides consumers with a way to investigate a business’s claims of environmental responsibility by facilitating research of “ecolabels,” those certifications and brand names that are used to communicate green business practices.  (read an interview with one of the co-founders here) 

There are a couple of ways to use the site:  you can search for a particular ecolabel that you see on a product, or you can search by category if, for example, you are looking for ecolabels used in the electronics industry because you want to buy from an environmentally-friendly manufacturer.  The listings tell you whether it’s an industry, government or non-profit organization label, the number of products and companies certified by the label, and whether the labeling standards have been independently verified.

Given the rise of green trademarks and ecolabeling, this web site is a welcome tool for sorting through all of the certifications and labels out there and separating the genuine from the “greenwash.”       

A Matter Network story  reported yesterday that the European Union has adopted the Energy Star program that was the subject of my last post.  (read additional press coverage here)  In addition to registering the mark in the U.S., the U.S. Environmental Protection Agency has a European Community registration for the Energy Star mark for buildings, lighting products, consumer electronics, kitchen appliances, office equipment, etc.  The Matter Network story notes the significance of the EU adopting a U.S. program on environmental issues, an area where U.S. leadership has been lacking.  From an intellectual property perspective, it’s good to see the spread of a green certification mark.

Last week I learned that my office building is a green building that has received the EPA’s Energy Star certification.  Further investigation revealed that the U.S. Environmental Protection Agency owns a certification mark registration for its Energy Star design. energy-star-reg.JPG The Energy Star program seeks to aid investment in energy efficient products by providing information that consumers and investors can use to research and compare green product or project choices.  The EPA works together with the U.S. Department of Energy and manufacturers to award the Energy Star certification to products that meet particular energy savings standards.  This is an example of the type of green certification mark alluded to in my previous post that benefits consumers because of its objective, non-commercial goals. 

 

PNC Financial Services (PNC) has more environmentally friendly buildings than any other company.  Forty-two of its buildings, including 15 of its bank branches, have received the U.S. Green Building Council Leadership in Energy and Environmental Design (LEED) certification.  Recently, PNC got a federal registration for the service mark GREEN BRANCH, turning the bank’s green ways into a brand.  (read the article here)

But PNC had to wage a three and a half year battle with the U.S. Patent & Trademark Office (PTO) to get the registration.  The trademark examiner twice rejected PNC’s application on the ground that GREEN BRANCH is merely “descriptive” of financial services offered in environmentally friendly facilities.  (a trademark can’t be registered with the PTO if it is a generic term or is descriptive of goods or services because that would restrict competitors from conveying information about their goods or services).  PNC appealed the examiner’s decision to the PTO’s Trademark Trial & Appeal Board.  The Board decided that PNC could have the registration for GREEN BRANCH because financial services are not typically associated with environmentally friendly characteristics, so the connection between the mark and PNC’s services is too remote for the mark to be merely descriptive.

PNC truly is a green company, but allowing registration of green trademarks as ordinary marks could lead to abuse and misleading brands.  The Matter Network story warns of the potential for “greenwashing” and reminds us to investigate claims of green business practices.  It seems that green trademarks may be better categorized as certification marks, which instead of indicating commercial source, certify that goods or services meet certain quality or manufacturing standards.  Certification marks are owned by the organizations that set the standards and used by companies that meet the standards and receive the certifications.  Indeed, the U.S. Green Building Council, a trade group that sets standards for green buildings, has applied for a certification mark for the LEED-certified seal it awards to buildings that meet those standards.

There’s an interesting story on matter network today about companies obtaining “green” trademarks to highlight their environmentally friendly business practices.  More on this later…