Boston Business Journal

Clean Sweep

by Mary K. Pratt
September 26, 2008

Going green is red hot.

Trademark applications using eco-conscious terms — “eco,” “green,” “clean” — reached all-time highs in 2007. The U.S. Patent and Trademark Office reported that the word “green” was part of more than 2,400 trademark applications last year, more than double the 1,100 applications filed in 2006.

But the green label may be too hot to be effective any more.

Slapping such words on an item might seem like the easiest way to get noticed, but it’s not the best way to create a name that will stick in the marketplace or in a courtroom. IP lawyers said the recent proliferation of these terms has made them nearly unusable for trademarks.

“They’re almost by necessity going to be weak trademarks, and if you’re using them with other generic names, then that’s the weakest level of protection. They might not function as trademarks at all,” said Larry Robins, a partner at Finnegan, Henderson, Farabow, Garrett & Dunner LLP.

Legal concern over the use of these environmental words in trademarks stems from the rules and regulations that govern trademarks, which can be classified as fanciful, arbitrary, suggestive or descriptive.

Fanciful trademarks are simply made-up words, such as “Kodak.” Arbitrary trademarks use existing words for products that have nothing to do with the original word — “Apple” for a computer, for example. Suggestive trademarks are ones like “Coppertone” or “London Fog.” And descriptive ones tell you something about the product — “Sports Illustrated” is case in point.

The PTO will not register generic terms as trademarks.

That brings us back to the use of “green,” “eco” and “clean.” These can certainly be considered generic or descriptive, Robins said. Even when they’re combined with other words— even ones considered fanciful — the mere presence of such popular generic terms can create a weak trademark.

In fact, the PTO has indicated that it will not look favorably on applications for trademark registration when the trademarks contain such environmental terminology.

“The USPTO is pushing back on these companies and saying those are merely descriptive,” said Ian Cross, marketing professor and director of the Center for Marketing Technology at Bentley College.

As a result, trademarks with eco-friendly words that would have sailed through 10 or 15 years ago now are flagged as ones that won’t gain trademark protection from the PTO, said Emilia F. Cannella, counsel with Ropes & Gray LLP.

“The PTO has trends just like any other entity or agency, and they change with the times and the marketplace realities. And if a term becomes something that has a descriptive meaning to the consumer, the trademark office will pick up on that,” Cannella said.

Robins points to two examples of formative marks that the PTO rejected: “Green Energy Resources,” which was found descriptive and generic; and “Green Home Audit,” which was deemed descriptive.

But such concerns haven’t necessarily stemmed applications. According to the PTO, there are applications for “Green World” (a clothing company), “Eco Linen” (fabrics and textile products) and “Green House” (a food company).

And companies that have been on the clean scene for a few years now?

Consider Norwell-based Clean Harbors Environmental Services Inc. Bill Geary, executive vice president and general counsel, said he doesn’t see the spike in names using “clean” as threatening or diluting the strength of the company’s name in the marketplace.

“Admittedly we have an advantage because we’ve been around for 29 years,” he said.

But even with that history, Geary said that the corporate name and the services it provides sometimes require explaining — when, for instance, the company is hired to do work well away from any harbors.

Of course, companies don’t have to register their trademarks with the PTO, although federal registration does have significant legal benefits and protections. And even if a company decides to forgo federal registration, the company could still find itself without a valuable brand name if it’s using buzz words, IP lawyers said.

This isn’t just a legal issue. There are significant business and financial considerations in the equation as well. Weak trademarks could take more time and cost more to move through the PTO process, as IP lawyers might need to make stronger cases and appeal initial decisions to get a trademark registered.

And even if a company can legally defend it, there’s no guarantee the trademark using such terms will be distinguishable and unique.

This name game isn’t without precedent. Several pointed to a similar issue that came up during the Internet boom a decade ago, when company after company devised trademarks containing “e-” or “dot-com.” Then, like now, the PTO told applicants that such words wouldn’t fly.

Such lessons aren’t lost on marketers, and today they’re increasingly thinking how they can create trademarks and supporting marketing material that don’t rely on the ubiquitous terms “eco,” “green” and “clean,” said Robert Croston, vice president and principal consultant with the Wellesley Hills Group, a management consulting, marketing and lead generation firm.

“There’s only so many ways you can say ‘green’ and ‘eco,’ and they’re all similar in nature,” he said. “It’s better in my mind to take the time and really establish and communication your brand without them.”