Brown: Patent priorities, trademark cautions for the eco-focused

Brown

By Christopher A. Brown

Earth Day is upon us, and the World Intellectual Property Organization has announced a theme of “Innovate for a Green Future” for World Intellectual Property Day on April 26. Here are two bits of eco-minded intellectual property law.

Special treatment

Energy-saver patent applications can get special treatment. Technologies aiming to reduce energy consumption, move to greener sources of energy or improve the environment are highly prized. The U.S. Patent and Trademark Office recognizes that fact with opportunities to move such patent applications ahead in the queue.

By rule (37 CFR 1.102) and policy (Manual of Patent Examining Procedure (MPEP) 708.02), the USPTO will advance (or make “special”) applications for inventions which “materially enhance the quality of the environment of mankind by contributing to the restoration or maintenance of the basic life-sustaining natural elements, i.e., air, water, and soil.” MPEP 708.02 (III); see 37 CFR 1.102(c). The applicant must file a petition requesting “special” status, and no fee is required. In cases where the environment-improving quality may not be evident, a statement explaining how the application fits the above standard should be filed. The MPEP notes the standard may not be met where there is “speculat[ion] as to how a hypothetical end-user might specially apply the invention” in an appropriate way, or where “some minor aspect of the claimed invention may enhance the quality of the environment.” MPEP 708.02 (III).

Another category for “special” applications concerns inventions that “materially contribute to (A) the discovery or development of energy resources, or (B) the more efficient utilization and conservation of energy resources.” MPEP 708.02(IV). Applications that develop hydrogen fuel technologies or solar power, or provide a reduction of energy consumption in equipment or household appliances, can be eligible for “special” status. A fee-free petition must be filed, with explanations if the necessary material contribution is not evident. Likewise, speculative effects or minor aspects of the invention may not be sufficient to move the application ahead in the examination line.

In each case, the MPEP provides additional requirements for applications, including limitations on the number of claims and inventions claimed, an acknowledgement that dependent claims will not be argued separately on appeal, and an agreement to conduct an early interview with the examiner. See MPEP 708.02(a). In many cases, these additional requirements will not create a significant additional burden. Nevertheless, in addition to normal precision in preparing claims, the applicant should give proper thought to whether these requirements may significantly impact future prosecution or arguments, and should organize the claimed subject matter carefully.

Practitioners will note there is a generalized request to prioritize examination by which up to 12,000 applications per year can be moved forward. Limitations on claims similar to those noted above apply to prioritized applications. The principal advantage to using the petition process for environmental-quality or energy-related inventions is cost savings. No petition fee is needed for them, while the prioritized examination fee for a large entity is $4,000. While the annual ceiling on prioritized applications has never been reached, the numbers are increasing, so there is a chance prioritized examination would not be available late in a year.

‘Green’ may not mean go ahead

Businesses unsurprisingly want to adopt trademarks that give an advantage in the marketplace, and the sooner that advantage is realized the better. In the context of environmental consciousness, one might want to use “green” or similar terms. However, that proposal will not result in strong rights, if any at all.

One of the fundamental principles of trademark law is that rights in a mark arise and exist through its use to indicate the source of goods or services. Those rights are circumscribed by natural usages of the words or other elements that make up a putative trademark. Generic terms generate no rights because they identify the goods or services themselves, not their source. “Apple” may have tremendous value and protection in the computer and telephone context but has none with regard to apples. Nouns should not be adopted as a trademark partly for that reason.

Similarly, terms that have a descriptive usage as to particular goods or services may have little or no protection. That principle recognizes the public is likelier to think of such terms as pertaining to the goods or services themselves. Further, multiple purveyors should be able to use such terms to describe their goods and services. Everyone should be able to identify apples as “red” or “juicy” or “pie-quality,” and such terms have little or no ability to differentiate particular sources.

One cannot register a descriptive term or phrase as a trademark on the USPTO’s Principal Register without a showing of “acquired distinctiveness.” The applicant has to show the public has an understanding that it has come to indicate a single source of the particular goods or services. Where the descriptiveness is less clear, a declaration that the mark has been used continuously for more than five years may be sufficient. In other cases, a declaration of longer use and/or widespread advertising, or evidence from consumers or publications, may be necessary and may not overcome a descriptiveness rejection. And even if one obtains a registration, others may still use the term as a descriptor, if not as a brand.

The USPTO considers the word “green” to be descriptive of goods and services that are ecologically friendly. As the public has come to see that “green” indicates a product’s environmental impact, it is unlikely to indicate source. That is not to say that any mark for environmentally-related goods or service with “green” in it cannot be registered. The better recommendation is not to include such a term in the trademark. Rather, create a unique, strong mark, and then tie it to “green” considerations with the public through labeling or other advertising.•

Christopher A. Brown is a partner at Woodard Emhardt Henry Reeves & Wagner. Opinions expressed are those of the author.

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