For over a century, fossil fuels have served as the key source of power in society. However, renewable sources of energy, such as wind, solar, and geo-thermal are fast-growing sources of energy. The solar industry in particular has had incredible growth in the U.S. According to the Solar Energy Industries Association, in 2015, there were 7,260 PV Solar installations in the U.S., up from only 852 in 2010. And last year, solar energy accounted for a little over 29% of all new energy generation in the U.S.
What caught my attention recently, however, was not the growth in the adoption of solar energy as a primary source of power (which is indeed very exciting), but the names of the many new companies that have sprouted up looking to capitalize on this new gold rush.
A review of 20 different companies that offer solar panel installation or other solar energy service in the San Francisco Bay Area reveals that 6 companies have the word “Sun” in their name, 10 have the term “Solar,” and a whopping 16 of the 20 include a caricature of the sun in their name or logo. Here are just few examples:
The reasoning behind the choice to use sun, solar and/or a caricature of the sun is easy to understand — its great for branding and design purposes, and is easy for a consumer to associate with the product the company is selling. However, the similarity in names of many of the solar companies made me wonder — do any of these companies have trademarks?
Indeed, several of the brands above have received protection in their marks. For example, The Solar Company has a design mark which is comprised of their stylized text, along with a solar caricature sun in place of the “o” in “solar.” But not surprisingly, The Solar Company did not receive a standard character mark for their brand because its mark is too descriptive of its product and service.
The test to determine whether a mark is descriptive is “whether it immediately conveys information concerning a significant quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. (In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).) If a word mark is found to be descriptive, trademark law prohibits the registration of that mark, unless it has acquired secondary meaning.
It appears, from the number of companies still including solar or sun in their name, that the benefit of doing so — from consumer recognition, search inquiry responsiveness, etc. — outweighs the benefit of building brand recognition in a less descriptive, more creative name. Some green companies are branching out from that approach. An example of a creative approach to branding for solar window technology is highlighted here.
A mark like SUNGEVITY, even though it includes the term sun, is less descriptive and more unique because it is a combination of two words: SUN and LONGEVITY. For a company like The Solar Company, their only option was to redesign their mark to include a Sun caricature and a power chord. But, as we see, this leaves very little to protect because design marks are easy to distinguish.
What’s more astonishing in this crowded market is the lack of any current litigation involving likelihood of confusion. Under the Sleekcraft analysis, several factors seem to weigh in favor of a finding of likelihood of confusion, including the geographic area in which they operate, the narrow set of services provided, and the similarity in the sound, look design of the names and logos. Whats unclear is whether we will see increasing confusion as the industry matures, or whether companies will begin to re-brand in advance to build better and more recognizable brands.
It is likely that the lack of current litigation stems from the lack of strong marks in the first place. Under the sight, sound and confusion test, which the USPTO uses to evaluate likelihood of confusion when registering a mark, the law will compare the visible and auditory similarity of the two marks, as well as compare how similar the meaning of the two marks are. The two marks below both use the term SUN, but have distinguishing letters and sounds after that initial term. A customer may be inclined to get the two confused if they were to see these two marks next to each other on side-by-side solar panels. They both utilize the color orange in their marks and they both incorporate a somewhat similar sun before their mark.
So what does this mean for the new solar company you want to start? Given the number of companies using the words sun or solar in their name, if your goal is to get protection in the term itself, the suggestion would be to steer clear of either and to come up with something more arbitrary or fanciful — like Bright Orange Power or ZunQuali Energy (completely made up) — by, for example, utilizing a suggestive property of clean energy that is unique, visible, identifiable, and, most importantly, memorable. Once you begin providing high quality services, your brand will sustain itself.
 AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.1979) [looking at (1) the strength or weakness of the mark; (2) Defendant’s use of the mark; (3) the similarity between the used mark and the Plaintiff’s mark; (4) any actual confusion by the use of the marks; (5) defendant’s intent in using the mark; (6) the similarly of the marketing or advertising channels of the goods; (7) the consumer’s degree of sophistication in choosing between products; (8) how likely the plaintiff is to begin selling products in the other party’s market, and finally, (9) any other factors that otherwise might bear on a likelihood of confusion.]
 Trademark Registration No. 3368332 (“The Solar Company Power From the Sun”); Trademark Registration Nos. 3985389, 3790936, 3676476, 3362939, (“Sungevity”); Trademark Registration No. 3407196, 3426602 (“SunEdison”);
 Trademark Registration No. 3368332 (“The Solar Company Power From the Sun”);