One of the common hurdles green brand owners have to overcome to protect their brands is U.S. trademark law’s proscription against registration of marks that are “merely descriptive” of the goods or services.
The rationale for this rule is that registering a generic or descriptive term would restrict competitors from conveying information about their goods or services.
Many of the terms used to signal environmentally friendly aspects of goods or services – terms such as ”green” and ”eco-” – are so immediately identified with those characteristics that they have become legally incapable of the distinctiveness required for U.S. trademark registration.
Powertech Industrial Ltd. (Powertech), a Taiwanese company, recently ran into this problem when it sought registration of the mark HYBRID GREEN UPS for “power supplies; mobile phone battery chargers; mobile phone battery charger stations; battery chargers; universal power supplies; power saving adapters; electric storage batteries; uninterruptible power supplies; AC/DC converters; power source stable adapters” in Class 9 (App-No-77176134).
After United Parcel Service (UPS) opposed registration, the Trademark Trial and Appeal Board (Board) ruled that the mark is unregistrable as merely descriptive of Powertech’s electrical components (Powertech-Opinion).
Powertech had disclaimed the ”UPS” element of the mark because it is a commonly used acronym for “uninterruptible power supply” (or “system”) and is therefore a generic designation for the goods.
As to the remainder of the mark, one key piece of evidence of descriptiveness was a Powertech patent that uses the term “hybrid green uninterruptible power system” as a technical term of art to refer to the battery system:
when AC utility power is interrupted or an irregular voltage occurs, the secondary battery releases power, and the inverter inside the hybrid green uninterruptible power system inverts power from the secondary battery into AC power so that the hybrid green uninterruptible power system can provide the AC power to the external load via the AC power output ports and simultaneously provide one or more sets of additional DC power and the DC power output ports (emphasis added)
The Board also noted that a Powertech web page defined the terms “HYBRID” and “GREEN” with reference to specific features of the power system as providing AC and DC output simultaneously and energy savings, respectively.
Accordingly, the Board held the mark merely descriptive because Powertech is using the well understood terms “HYBRID” and “GREEN” consistently with the common meanings of the terms:
Applicant’s adoption and usage of the words “hybrid” and “green” within “Hybrid Green UPS” is totally consistent with the commonly understood meanings of these respective words. The word “hybrid” is often used to describe a system consisting of two components performing similar functions. The word “green” is often used to describe something that is environmentally-friendly . . . it appears from Applicant’s own literature that its involved devices function in both the AC and back-up DC modes – the “hybrid” characteristic – and that the energy efficiencies of these products will tend to preserve environmental quality – or be “green.”
Another “GREEN” mark bites the dust.
Eric Lane is a patent attorney at Luce, Forward, Hamilton & Scripps in San Diego and the author of Green Patent Blog. Mr. Lane can be reached at firstname.lastname@example.org.