Wednesday, October 10, 2012

Split TTAB Panel Finds VERDE Merely Descriptive of Power Supplies

A divided TTAB panel affirmed two refusals to register the mark VERDE, in standard character form, finding it merely descriptive of electrical and electronic devices for power supply technology, and further finding that Applicant had failed to comply with the Examining Attorney's request for information under Rule 2.61(b). Judge Seeherman dissented, concluding that the Section 2(e)(1) evidence was insufficient, and that consequently the refusal based on Rule 2.61(b) was too harsh a penalty under the circumstances. In re Verde Power Supply, Inc., Serial No. 77907011 (September 12, 2012) [not precedential].

When Examining Attorney Kristina Morris requested information regarding Applicant's products, Applicant refused to provide same on the ground that it did not want to reveal trade secrets. The Examining Attorney then asked Applicant to answer two questions: (1) are the goods energy efficient? and (2) are the goods environmentally friendly? Applicant ignored those questions, even when the Examining Attorney raised the issue in her brief.

The panel majority found the Examining Attorneys approach to be proper under Rule 2.61(b), and it therefore affirmed this refusal.

In light of Applicant's failure to answer those questions, the Board presumed that the answers would have been unfavorable to Applicants: i.e., that its goods are energy efficient and environmentally friendly.

Turning to the word VERDE, there was no disagreement that VERDE is a Spanish word for "green." Nor was there a dispute that many purchasers of the goods would be aware of the meaning of VERDE, since Spanish is a common, modern language.

The Examining Attorney submitted a definition of "green" in English to show that the word identifies environmentally friendly services and products. She argued that "verde" has the same idiomatic connotation as does the English word "green." However, her only proof on that point was a single on-line reference to an article concerning a Costa Rican energy project. The Board found that evidence insufficient to show that "verde" has the same idiomatic meaning as "green."

The panel majority observed, however, that "the ecological or environmental meaning of the word 'green' or 'verde' has been evolving over the years and is therefore not necessarily reflected in all available reference sources." The Board took judicial notice of additional dictionary definitions, one from a 2004 Spanish dictionary defining "verde" as "(ecologistica) Green, green," and a 2009 Spanish dictionary defining "ecologistica" with a reference to the "Green party." From these definitions, the panel majority concluded that "green" and "verde" are idiomatic equivalents, and it therefore affirmed the mere descriptiveness refusal.

In dissent, Judge Seeherman maintained that the single definition of "verde" from a 2004 Spanish dictionary is not an adequate basis on which to conclude that "verde" has an ecological or environmental meaning. She particularly noted that two later dictionaries (2006 and 2007) submitted by Applicant, as well as a 2010 online definition, do not include any such meaning for "verde." At the least, this raises a doubt about the mere descriptiveness of VERDE, a doubt the must be resolved in Applicant's favor.

As to the Rule 2.61(b) refusal to register, Judge Seeherman agreed that Applicant should have answered the questions. However, she considered the adverse inference to be a sufficient penalty for Applicant's failure to provide information. Since Judge Seeherman viewed the PTO's evidence inadequate to establish the Section 2(e)(1) bar, she would not refuse registration on the Rule 2.61(b) ground alone.

TTABlog comment: The majority's evidence was pretty weak, don't you think? Oh well, if you are interested in the latest FTC Green Guides (Guides for the Use of Environmental Marketing Claims), take a gander at Lara Pearson's post here.

Text Copyright John L. Welch 2012.


At 7:24 AM, Anonymous Miriam Richter, Esq. said...

This case brings up an interesting point. While the evidence may have been thin that VERDE has the same connotation with Spanish speakers as GREEN does with people who speak English, what about the connotation of VERDE with English speakers?

I do not speak Spanish but even so, I know that VERDE means green. I order salsa verde at a Mexican restaurant and I am always hoping that my lawn will be more verdant! My immediate impression of the mark was that it was for eco-friendly power of some sort!

At 11:19 AM, Anonymous Alex B. said...

My immediate impression was that maybe the power supply is a green color. I know "green" these days seems to connote environmentally friendly more than the actual green color, but what if the power supply was really just a green color, or the mark served to connote both characteristics?

I probably have to agree with J. Seeherman that the evidence is somewhat speculative.

At 11:14 PM, Blogger Alberto Soler said...

Explain the issue of the first question not to reveal trade secret. Does Trade Secret information overrides trademark laws when determining if the mark should register. In other words; can one invoke trade secret on information that goes directly in determining if the mark can registration and still register the mark without providing the information? Thank You

At 11:20 PM, Blogger Alberto Soler said...

On trade secret; Can a applicant refuse revealing information by invoking trade secret exception-when the information not revealed goes directly in determining if the mark can be approved for publication?

At 6:44 AM, Blogger John L. Welch said...

I think if it's a trade secret and you choose not to reveal the information, then the PTO can refuse registration for failure to comply with the request for information, and can also issue a descriptiveness or deceptive misdescriptivess refusal, or both.


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