Green Patent Blog: 2 More Eco-marks Dinged for Descriptiveness

I've written before about the increasingly common challenge in obtaining U.S. registrations for eco-marks, i.e., the proscription against registering "merely descriptive" marks (see, e.g., my post about the HYBRID GREEN mark here).

Often the eco-marks include the term "GREEN," which has become hopelessly descriptive of environmentally friendly aspects of products, services or practices. But other terms are not immune from descriptiveness problems.

Kinetic Energy Corporation, a wholly-owned subsidiary of New Energy Technologies (NET), recently saw two trademark applications derailed by the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board (Board).

The doomed marks were MOTIONPOWER for, among other things, electricity generators and certain services including converting waste energy into electricity (77707733_App), and SOLARWINDOW for photovoltaic cells and modules as well as films and substrates for PV cells (77738793_App).

NET markets technologies for harnessing kinetic energy from moving vehicles and converting that energy into electricity under the MOTIONPOWER brand.

The Board nixed the MOTIONPOWER trademark application based on the meanings of the individual words, their meaning in combination, and the fact that the applicant uses kinetic energy, which is energy from motion (Board-Decision-77707733):

Based on the meanings of the individual words of applicant's applied-for mark, "MOTION" and "POWER," as well as the Internet evidence, we find that the combination MOTIONPOWER is merely descriptive of the applicant's goods and services for use in generating power from motion. The individual merely descriptive terms retain their descriptive character when combined to form the composite MOTIONPOWER. The evidence shows that kinetic energy, the type of energy involved in applicant's goods and services, is energy associated with motion.

The Board also noted that the construction of the mark MOTIONPOWER is similar to terms such as "solar power" and "wind power," which describe generation of power from the sun and the wind, respectively, so consumers are likely to perceive the mark as merely descriptive of generating power from motion.

In a separate decision using similar reasoning, the Board rejected the SOLARWINDOW mark because of the definitions of the individual words and the descriptive use of the combined term in the industry (Board-Decision-77738793):

Not only does each element have descriptive significance as shown by the dictionary definitions, but the record establishes that the combination "SOLAR WINDOW" is used in the solar energy industry to describe solar energy-generating and/or solar energy-converting technology used in connection with windows.

The Board found that consumers would find the mark descriptive and noted that applicant's use of the term on its website is descriptive of NET's SOLARWINDOW glass and film products:

it is clear that SOLARWINDOW would immediately inform these consumers that applicant's goods are used to convert existing windows or create windows that are capable of collecting and generating solar energy. Notably, applicant uses the term "solar window" on its website in a descriptive manner when it states that solar cells and films are used "to produce a transparent solar window."

So NET will not be able to register the MOTIONPOWER or SOLARWINDOW marks on the Principal Register at this time. The company may be able to do so down the road after using the marks for a while and can get some protection via Supplemental Registrations in the interim.

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