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IP protection for green branding: Obtaining trademarks for eco-labels

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As global warming becomes an increasingly popular topic, environmental considerations are playing a greater role in consumer purchasing decisions. Not surprisingly, it is becoming more common for businesses to highlight their eco-friendly practices to attract environmentally conscious consumers. As with any type of branding, intellectual property has an important role to play in protecting "green" brands.

Protecting eco-labels

There are two principal ways to protect intellectual property rights in an "eco-label" (a brand name that communicates green characteristics or practices). The first is the typical way to protect intellectual property rights in a brand name: by getting a U.S. trademark for the brand. A trademark registration can protect just about anything -- a word, phrase, design, logo, color, melody, even a smell -- that indicates to consumers the commercial source of a product or service. A business that uses such an indicator is eligible for a federal trademark registration.

Eric Lane

The second way to protect an eco-label is by using a type of trademark called a certification mark. Instead of indicating the commercial source of a product or service, certification marks communicate that goods or services meet certain quality or manufacturing standards. They are owned not by the individual businesses that provide the goods or services, but by the organizations that set the standards. Businesses apply to those organizations to get certified and gain permission to use certification marks in connection with their goods or services.

Obtaining green trademarks

The biggest hurdle for any business seeking trademark protection for a green brand name is overcoming the argument that the mark is "merely descriptive" of the services the business offers. This is because U.S. trademark law prohibits federal registration for a trademark that is a generic term or descriptive of goods or services. The rationale is that it would restrict competitors from conveying information about their goods or services. On the other hand, a trademark that is "suggestive" of the type of goods or services can be registered as trademark. Arguing the fine line between descriptive and suggestive trademarks can make the process of securing a federal registration for a green trademark costly and difficult.

For example, PNC Financial Services (NYSE: PNC) recently got a federal registration for the service mark "Green Branch" for its environmentally friendly banking facilities, turning the bank's green ways into a brand. However, PNC had to wage a three and a half year battle with the U.S. Patent & Trademark Office (USPTO) to get the registration for Green Branch. The USPTO twice rejected PNC's trademark application on the grounds that the term is merely descriptive of financial services offered in environmentally friendly facilities.

PNC had to appeal the decision to the USPTO'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. Specifically, the board reasoned that green facilities do not affect the basic principles of the banking business and serve no particular purpose in the performance of financial services, so the connection between the trademark and PNC's services was too remote for the mark to be merely descriptive.

This ruling suggests that it may be difficult for companies whose core business is affected by environmentally friendly practices to obtain green trademarks. A business operating in a sector in which green characteristics are tangential to the goods or services provided has a stronger argument that its green trademark is not merely descriptive of its goods or services than a business whose green practices contribute to the production of its goods or the performance of its services.

Exploring certification marks

The second way that trademark law provides protection for environmentally friendly businesses is through the use of certification marks. Because certification marks are owned by the organizations that set specific standards that companies must meet, it is the certifying organization, not the ultimate user, that applies to the USPTO for federal registration of a certification mark.

A business, in turn, contacts the certifying organization to request evaluation of its goods, services or practices if the business wants to use the certification mark. The organization is free to set the standards for its certification mark as it sees fit; there is no government control over the standards the certifier uses. It is up to the certifying organization to convince consumers that the certification mark provides reliable and useful information. A business interested in using a certification mark to market its goods or services must research the reputation of the certification mark and the certifying organization to determine whether the mark would be beneficial to its business.

Two examples of well known and reputable green certification marks are the U.S. Environmental Protection Agency's (EPA) Energy Star certification and the U.S. Green Building Council Leadership in Energy and Environmental Design (LEED) certification.

The EPA owns a federal certification mark registration for its Energy Star design. 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. Products ranging from battery chargers, projection televisions and dishwashers, to new homes and office buildings bear the Energy Star certification.

Similarly, the U.S. Green Building Council applied for a federal certification mark registration for its LEED certification symbol. This certification has become the national standard for environmentally friendly and energy-efficient buildings and functions in two principal ways. The LEED certification can be a professional accreditation for contractors and other building professionals who have demonstrated the expertise to build green buildings that meet the organization's certification criteria.

Alternatively, LEED can be a project certification. In this mode, the organization evaluates a construction project and provides independent third-party verification that it meets green building standards for environmental responsibility.

With respect to both the Energy Star and LEED certifications, businesses apply to the organization for review of their products or services, and the certification is awarded if the business meets the organization's standards.

Trademark or certification mark?

The decision whether to seek a traditional trademark registration or a certification mark to further a business's green branding efforts is an individual one that depends on, among other things, the types of goods or services involved and the type of industry. If a company's core business involves environmentally friendly products, processes or services, a certification mark may be appropriate. On the other hand, if the green practices do not affect the basic principles of the business, the company might try to obtain its own green trademark. Of course, a business can do both: In addition to its traditional Green Branch trademark, 42 of PNC's buildings -- including 15 of its bank branches -- have received the LEED certification.

Lane is a patent attorney in the Carmel Valley office of Luce, Forward, Hamilton & Scripps, where he is in the Intellectual Property practice group. Lane is the author of Green Patent Blog, a Web site that covers intellectual property issues in clean technology.

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