Wednesday, June 29, 2011

SOLARWINDOW Merely Descriptive of Solar Energy Devices, Says TTAB

Dictionary definitions, Internet evidence, and Applicant's own website convinced the Board that the mark SOLARWINDOW is merely descriptive of solar-powered electricity generators, photovoltaic cladding panels and solar hybrid modules, photovoltaic cells, and insulation substrates for solar devices. Applicant unsuccessfully argued that its goods are not "solar windows," that the words "solar" and "window" have multiple meanings, and that it uses the term as a trademark accompanied by the "TM" symbol. In re Kinetic Energy Corporation, Serial No. 77738793 (June 2, 2011) [not precedential].

Examining Attorney Kaelie E. Kung contended that "solar window(s)” is a "commonly descriptive term for windows that use special technology, devices and equipment to convert solar energy into thermal or electrical energy." The Board found the dictionary and website evidence "highly persuasive."

Not only does each element have descriptive significance as shown by the dictionary definitions, but the record establishes that the combination “SOLAR WINDOW” is used in the solar energy industry to describe solar energy-generating and/or solar energy-converting technology used in connection with windows.

Moreover, Applicant uses the term "solar window" at its website "in a descriptive manner when it states that solar cells and films are used 'to produce a transparent solar window.'"

The Board found nothing incongruous in the combination of two words; rather, the descriptive significance of the term would be readily apparent to consumers. The fact that the individual words have various meanings is irrelevant, since the mark must be considered in the context of the goods, not in the abstract. And even if Applicant were the first and only user of the term, that would not avoid a Section 2(e)(1) mere descriptiveness ruling.

And so the Board affirmed the refusal.

TTABlog comment: In light of Applicant's own website evidence, would you put this case in the WYHA? category?

Text Copyright John L. Welch 2011.


At 8:48 AM, OpenID samcurt said...

We have an applicant that feastured on TTABlog for two consecutive days, and lost in both. They should consider finding another attorney to inspect their IP strategy.

At 8:52 AM, Anonymous Anonymous said...

Solar window is generic in the industry, so yes, I'd say its a WYHA for a 2e1 refusal!

At 2:21 PM, Anonymous Anonymous said...

Change in strategy would be a good idea. Would you have let the client waste the money on the application or the appeal? That is a good question here!

This was pretty much a zero chance from the start.

Seems so basic to make sure the client is also not shooting themselves in the foot with their own website evidence. Although that would not have helped anyway.


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