PTO Gets Tough On Green Trademark Claims

kumquat_tree_-thumb-200x133-50313 San Diego – The U.S. Patent and Trademark Office has quietly adopted a more stringent approach to registering “green” trademarks, in practice if not in policy, requiring that applicants demonstrate their genuine environmentally friendly qualities.

Trademark examiners have reportedly started to deny increasing numbers of applications for green trademarks that do not include a statement of environmental friendliness. The trend was first noted by in early October, and Forbes subsequently picked up the story, but neither article directly cited hard evidence in support of the reports.

The PTO is said to be refusing the trademark applications on the grounds that the Lanham Act allows it to deny applications that contain deceptive content. Such a justification could suggest that the PTO is taking the initiative to aid in combating the practice of “greenwashing” products that do not actually live up to their green claims.
The PTO, for its part, said no policy change was afoot.

“Contrary to recent reports, the PTO has not adopted a new policy for trademark applications that include the word ‘green,'” a PTO representative said Friday. “In fact, there has been no recent policy statement or change in this area.”
“All applications are reviewed for statutory compliance with the provisions of the Trademark Act, including Section 2(a) which prohibits the registration of deceptive matter (among other things),” the representative said.

The PTO declined to comment on whether any recent denials of applications could have given rise to policy rumors.

The office doesn’t have to adopt or announce any formal new policy to subject green trademarks to greater scrutiny, though, trademark attorney Michael Tschupp said. The PTO already has guidelines and procedures in place for examiners confronted with potentially deceptive matter in a trademark, and that guidance includes provisions for environmental claims, he said.

Tschupp, the proprietor of green trademark news blog, said his own clients have not yet reported any newly aggressive approaches to their green trademarks on the part of PTO examiners. Applicants can expect to see more denials based on deceptiveness going forward, though, he said.

When a trademark conveys some information about a product that is not accurate, the PTO has two basic options, Tschupp said: refuse to register it on grounds of misdescriptiveness, or go a step further and refuse it as deceptive.

A misdescriptiveness refusal can be overcome, and still leaves open the possibility of registering the trademark on the supplemental register, rather than the principal register, Tschupp said. A refusal based on deception, though, is more serious, making the trademark unregisterable under any circumstances, and that is what applicants are now starting to see at the PTO, he said.

An increase in those refusals for green trademarks could lead to challenges to environmental friendliness claims showing up in trademark infringement disputes and litigation, Tschupp said.

“As people are now having to explicitly make these claims in their applications, defendants are going to be able to challenge the underlying environmental benefit of these products,” he said. “It basically creates a whole new defense.”
The reports of green trademark refusals come on the heels of the Federal Trade Commission’s recent updates to its Green Guides on environmental marketing claims.
The Green Guides outline general principles that apply to all environmental marketing claims and provide guidance regarding many specific environmental benefit claims. The guides explain how reasonable consumers likely interpret each such claim, describe the basic elements necessary to substantiate it, and present options for qualifying it to avoid deception.

Both the PTO and FTC developments can be seen as part of a greater attempt to crack down on greenwashing on the part of the Obama administration, according to Tschupp. Trademark examiners in particular now have much better guidelines for defining what is and is not green to use as a basis for deceptiveness decisions, Tschupp said.
“They have a measuring stick they didn’t really have before,” he said.




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