Solar™ – Distinctiveness in a Crowded Field

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,[1] 10 have the term “Solar,”[2] and a whopping 16 of the 20 include a caricature of the sun in their name or logo. Here are just few examples:

The Solar Company              Sunburst Solar Energy              Complete Solar Solutions

Sungevity              Sunetric                 SunEdison

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.[3]  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,[5] 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.

SunEdison          Sungevity

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.

 

[1] 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.]

[2] 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”);

[3] Trademark Registration No. 3368332 (“The Solar Company Power From the Sun”);

[4] http://www.solarreviews.com/solar-companies/solar-companies-california/solar-panel-installers-san-francisco/

[5] http://www.solarreviews.com/solar-companies/solar-companies-california/solar-panel-installers-san-francisco/

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Apple loses trademark infringement claim against Chinese leather goods company

A Beijing court ruled in April 2016 in favor of a Chinese phone case producer in a trademark conflict with Apple, Inc. of the United States. Apple filed a trademark infringement claim against a Chinese company Xintong Tiandi Technology Co. (“XTT”) for using their IPHONE trademark for Class 18 leather goods and wallets such as this:

iphone

Although Apple probably disagrees, the result is an expected one when the plain facts are considered, all of which go directly to the central legal concept in trademark law: likelihood of confusion. The Beijing court’s analysis was much like the analysis that would have been undertaken in the US and the EU trademarks systems, where I practice trademark law. Here are the key facts:

  • October 18, 2002 – Apple applied for its Chinese IPHONE trademark for Class 9 computer hardware and software. In trademark law, the date of application is the first date an owner can claim rights.
  • January 9, 2007 – Apple first announces the iPhone mobile phone officially.
  • June 29, 2007 – Apple released the first iPhone mobile phone in the United States.
  • September 29, 2007 – XTT applied for a Chinese IPHONE trademark in Class 18 for leather goods and wallets.
  • October 2009 – Apple first released the iPhone mobile phone in China.

Generally a trademark owner has the exclusive right to use its trademark for the goods/services it has listed in the trademark registration. In Apple’s case, it was for computer software and hardware, which has no relation to the Chinese IPHONE trademark registration which listed leather goods and wallets. After all, one typically does not go wallet shopping in an electronics store.

However, Apple did not make a classic trademark claim and instead argued that the well-known status of the IPHONE trademark gives them extra protection, allowing them to stop use of the IPHONE trademark on leather goods and wallets too, even though Apple did not have a trademark registration for those goods.

The concept of “well-known”, “famous marks”, and/or “reputable marks” law is that trademark owners who have invested enormous amounts of resources into a brand, which has led to the mark becoming well-known or famous, deserve an extra layer of protection. The theory is that the extra protection is for protecting that extra investment. Practically, it means that owners of famous marks may stop the use of trademarks even for goods/services unrelated to the goods/services in the trademark registration if it can be shown that that usage would take unfair advantage of the famous mark, or if it would somehow tarnish or blur the reputation of that famous mark.

The Chinese courts did not accept Apple’s argument because the key date in the case was the date XTT applied for their IPHONE trademark, and on September 29, 2007, Apple’s IPHONE trademark was not yet famous in China and therefore Apple would not be allowed to benefit from any famous marks doctrine. Trademark owners can only benefit from that doctrine after the mark has become famous, and almost all the evidence Apple provided about the famousness of its trademark was dated after XTT applied for its IPHONE mark.

The lesson learned here, as well as the other Apple trademark losses in China such as the $60 million it paid in an IPAD dispute, is that careful due diligence is necessary in the early stages of brand planning and management.

For more information, please refer to the Chinese state-owned Legal Daily.

The “use” of marks under U.S. trademark law

Use of trademarks is an area where U.S. trademark law differs from many other jurisdictions. The general rule is that a mark must be in use as a trademark in order to acquire and maintain trademark rights, although there are some exceptions to this rule. This article summarizes key areas where use of a trademark is critical to trademark protection.

 

Use required for registration.

Before a trademark is granted registration in a trademark, U.S. trademark applicants must demonstrate “bona fide use of the mark in the ordinary course of trade”. Token use, or use merely for purposes of reserving a right, is insufficient.

According to the federal law defining the required use, use of a mark on goods must be demonstrated by showing some affixation of the mark to the goods or their packaging and that the goods are sold in interstate commerce. Use of a mark for services are demonstrated through advertising materials combined with the ability to order and purchase the services. In practice, a trademark applicant need only submit 1 specimen of use for some goods/services in each Nice Classification in the application, although the USPTO Examining Attorney may request more specimens during the prosecution. The “use in commerce” requirement has had updates of sorts, through case law, relating to the use of marks on the internet (read more).

There are exceptions to this rule. First, the Section 1(b) Intent-To-Use application (“ITU”) allows an applicant at the time of application to file a declaration of a “bona fide intent to use” the mark instead of proof of actual use. Foreign applicants making Section 44(d), 44(e), or 66(a) applications (read more) need not file proof of use or an ITU declaration in order to gain registration. However, they can be required to prove use in commerce within a “reasonable” time after registration, especially in the case of a petition for cancellation.

 

Use of a mark in opposition/infringement proceedings

The date of first use of a mark in commerce is paramount in inter partes trademark proceedings in the U.S. As the “first in time, first in right” rule applies even where the junior user has a U.S. trademark registration, it serves trademark applicants well to conduct comprehensive clearance searches prior to deciding on a mark for a trademark application. While the senior user of an unregistered right will face heavy legal costs in establishing its rights against the junior user (compared to the same situation if it had an earlier registration), the junior user/registrant would never be able to wrestle the right to use the mark from the senior user.

 

Non-use as a grounds for cancellation

The failure to use a mark in commerce can lead to abandonment of the mark, making a trademark registration vulnerable to cancellation. A trademark right can be abandoned in a few ways, but 3 continuous years of non-use or evidence of intent to abandon use are the usual paths to abandonment of a trademark right.

A petition to cancel that alleges and demonstrates the lack of bona fide use of a registered mark for 3 continuous years establishes a prima facie case of abandonment. The burden of proof then shifts to the registration holder to prove that it has in fact used its mark in a sufficient way. Again, evidence of use which only has the purpose of reserving the rights in a mark is insufficient to save a mark from a prima facie case of abandonment.

A cancellation petitioner may also present evidence of intent to abandon use. An example of this is found in rebranding campaigns, and public communications by a registration holder that a brand will cease to exist and that all future goods/services will be marketed under a new mark would be strong evidence for abandonment. For example, changes in a website landing page or a press release explaining the rebranding and the schedule for changing the name of the brand.

If a registration holder grants “naked” licenses it may bare itself to cancellation. A license is “naked” when there are no or few quality controls imposed and enforced upon the licensee and the licensee is free to use the mark with no actual control from the licensor.

What is a “consent agreement” in trademark prosecution?

In the trademark application process, the application may be blocked when there is an earlier mark on the register which may be perceived as confusingly similar, a Section 2(d) rejection. This obstacle may arise ex parte from the USPTO Examining Attorney or in the form of an opposition filed by the owner of an earlier mark. In either case, the trademark applicant may overcome this obstacle by presenting the USPTO an executed consent agreement with the owner of the earlier, blocking mark.

A consent agreement, a term sometimes used interchangeably with coexistence agreement, is one of the most common vehicles of settlement in trademark disputes. A consent agreement essentially states that the owner of an earlier trademark right permits the owner of a later right to use that later mark under certain conditions. This post focuses on the use of consent agreements in the context of trademark applications, as opposed to federal trademark litigation, where a coexistence agreement is more suitable. This brief compare-and-contrast table (click to open PDF) will help contextualize the relationship between the two types of agreements:

table

 

Consent agreements contain a few common clauses which can be contained in 2 pages, while some coexistence agreements are vast in their coverage and cover multiple details, rules, and exceptions those rules. The common, basic clauses are usually:

  • Identification of the applied for mark
  • Identification of the registered mark which bars the applied for mark
  • Identification of the goods/services applied for which the registration holder deems the mark applied for will not cause confusion
  • Other conditions on the registration and use of the applied for mark
  • Acknowledgement that compliance with those conditions of use will prevent confusion
  • Express intention of the parties to cooperate in the possibility of consumer confusion
  • Consent of the registration holder to the use and registration of the applied for mark
  • Date and signatures of authorized representatives of the mark holders

Note that “naked” consent agreements have less weight than “clothed” agreements, meaning a lack of detail can lead the USPTO Examining Attorney to determine that the agreement is insufficient to prevent confusion in the marketplace, resulting in a continued rejection of an applied for mark under Section 2(d). However, courts are generally willing to give due consideration to any agreement on the basis that parties in the market are in the best position to judge market realities.

Different filing bases for US trademark applications

When applying for US trademark protection there are 4 types of filing bases you can choose from. Note that in the US trademark system, actual use of a mark is paramount as it is a “first-to-use” system. This is unlike many trademark systems in the world which are “first-to-file” systems, meaning rights begin with the the application date where that application is subsequently registered.

While proof of use of an unregistered mark (“common law” rights) would supersede registered trademark rights, proving that use can be difficult and costly, and the resulting protection may be geographically limited. That’s why trademark registration is still a key part of a successful enterprise’s IP strategy, providing a great degree of certainty and streamlining future enforcement procedures.

 

Section 1(a) – Requires proof of use of the mark in US commerce. Click for timeline.

A Section 1(a) filing requires the applicant to be using the applied for mark in commerce as of the date of filing, and the applicant will need to submit proof of use in commerce as part of the application.  Additionally, the applicant is required to sign a declaration that the applied for mark is being used for the goods/services in the application. False statements jeopardize the validity of the application as well as the registration if one is issued.

 

Section 1(b) – Requires genuine intent to use mark and additional USPTO fees. Click for timeline.

A Section 1(b) filing is similar to the 1(a) filing above except that the applicant submits a declaration that it has a bona fide intent to use the mark in commerce. A 1(b) filing is used for companies who have decided on a product name and would like to reserve it until they actually begin using it on the market. In a 1(b) filing, the USPTO examines the application until the last stage, and then issues a Notice of Allowance (NOA) instead of a registration certificate. The applicant has 6 months from the date of the NOA to submit its Statement of Use (SOU) with an additional $100 USPTO fee per Class. If the SOU is accepted, a registration certificate will be issued. Up to five 6-month extensions for filing an SOU are available with a $150 USPTO fee per Class per extension.

 

Section 44(d) – Application with non-US trademark application. Click for timeline.

A non-US trademark application may be used as a basis for a US application within 6 months of the foreign filing. Only the goods/services in the foreign application may be applied for in the US and additional goods/services must be filed under 1(a) or (b). Once the foreign registration is issued, the USPTO will verify if the goods/services in the registration match those in the 44(d) application. While an advantage of a 44(d) filing is that the applicant does not need to show use in commerce to acquire a registration, it will need to be shown under Section 8 and 8/9 renewals (between 5-6th and 9-10th anniversaries of the registration). It is important to note that without use, a registration under Section 44(d) is unenforceable without use.

 

Section 44(e) – Application with non-US trademark registrationClick for timeline.

A non-US trademark registration may be used as a basis for a US application, and the registration must be provided to the USPTO at the time of filing. Like the 44(d) basis above, proof of actual use is not required as part of the application, but is required for Section 8 and 8/9 renewals. Only the goods/services listed in the foreign registration are eligible for US registration under 44(e), and additional goods/services must be applied for under 1(a) or 1(b). Note that foreign registrations do not guarantee US registration under 44(e), as there may be conflicting prior marks on the US register as well as US law which may not permit registration of the mark.

 

Section 66(a) – Available to Madrid Protocol countries. Click for timeline.

The Madrid Protocol is an international treaty which simplifies the process for trademark holders in the signatory countries to acquire protection in other Madrid Protocol countries. The holder of a non-US application or registration may apply for an extension of protection in the US under Section 66(a). Like 44(d) and (e) filings, no proof of use is required at the time of application. However, the USPTO Trademark Trial and Appeal Board (TTAB) in recent years has found favor for arguments that a 66(a) registration is subject to cancellation for non-use, even before maintenance filings are due. Note that there is a statutory presumption that 3 years of non-use is tantamount to trademark abandonment.