Friday, April 19, 2013

TTAB Affirms 2(a) and 2(e)(1) Refusals of GREEN SEAL for Non-Environmentally-Friendly Adhesive Tape

The Board affirmed two refusals of the mark GREEN SEAL for "adhesive tape and adhesive packaging tape and tape dispensers for home and office use," finding the mark to be deceptive under Section 2(a) and deceptively misdescriptive under Section 2(e)(1). Applicant Kitaru pointed out that it uses the term "Green Seal" to color code a line of adhesive tape products that also includes "Black Seal," "Blue Seal" and "Double Blue Seal," and further that it uses this term in connection with the imagery of a sea mammal (see below). But those arguments didn't stick. In re Kitaru Innovations Inc., Serial No. 85211019 (March 26, 2013) [not precedential].

Section 2(e)(1) Deceptive Misdescriptiveness: A mark is deceptively misdescriptiveness if it misdescribes the goods, and if consumers are likely to believe the misrepresentation. The Examining Attorney submitted dictionary definitions, Internet pages, and third-party registrations to support the contention that the word “green” is used frequently to refer to environmentally-friendly tape products. The Board found that the record evidence showed "overwhelmingly" that the word “green” directly informs consumers that the tape products are environmentally friendly.

Applicant made no such claim for its products, but instead asserted that it uses the term "Green Seal" to color code a line of adhesives, using the imagery of a sea mammal. But whether Applicant also uses "Black Seal," "Blue Seal" and "Double Blue Seal" function as trademarks was not the issue before the Board. The mark GREEN SEAL must stand on its own. Likewise, the image of a seal is not part of the applied-for mark. [There is nothing stopping Applicant from dropping the "color code" and removing the seal as soon as the mark is registered - ed.].

Furthermore, the Board concluded, purchasers and prospective purchasers would likely believe the misrepresentation conveyed by the term: that applicant’s goods are environmentally-friendly.

Therefore the Board affirmed the Section 2(e)(1) refusal.

Section 2(a) Deceptiveness: The CAFC has articulated the following test for determining whether a mark consists of or comprises deceptive matter: (1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?; (2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?; and (3) If so, is the misdescription likely to affect a significant portion of the relevant consumer’s decision to purchase?

The first two elements were satisfied as discussed above. The question, then, was whether the misdescription is material to the purchasing decision. The evidence showed that consumers are eager to recycle as well as to purchase products made of recycled materials, to use biodegradable products, and to avoid toxic substances, and further that a segment of the public would be more inclined to purchase eco-friendly adhesive products. In short, whether an adhesive product is environmentally friendly or green would be material to the purchasing decision.

And so the Board affirmed the Section 2(a) refusal.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.


At 12:24 PM, Anonymous Anonymous said...

so what happens if the Applicant re-files for a GREEN SEAL and Green Seal Design mark (combined word/design) ... is it no longer misdescriptive and deceptive? The Board seems to suggest that it would at least not be misdescriptive. It is less clear whether they would maintain that the mark is still deceptive.

At 4:33 PM, Blogger John L. Welch said...

Well, if it doesn't meet the misdescriptiveness test, how can it be deceptive? I think a mark could have two meanings, and if one is deceptive, then its barred from registration. Like the In re Fox 2(a) scandalous case: the mark C&%KSU&%$R had two meanings, one vulgar.

At 4:52 PM, Anonymous Orrin A. Falby said...

BTW what is a "GREEN SEAL"? Shouldn't the commercial impression of the mark as a whole be the determining factor as oppose to whether it contains a particular element that is descriptive, misdescriptive or deceptive in-of-itself? Would the Green Goblin or the Green Lantern or the Green Hornet for use in conjunction with these goods meet the same fate?

I have a problem with how this section of the statute is being applied or mis-applied.

At 5:24 PM, Anonymous Anonymous said...

If a Green Seal design is so well known and recognizable to consumers who understand that GREEN SEAL is literally a reference to a Green Seal -- then where's the deception? With deceptiveness refusals -- how the consumer interprets the mark is of utmost importance. Where the second meaning is scandalous/vulgar, like In re Fox, the analysis is different ... that would not be the case with Green Seal.

At 5:30 PM, Anonymous Anonymous said...

To address Orrin's question -- the answer is NO -- because "seal" has a meaning relevant to goods (generally) that Goblin, Lantern and Hornet do not have -- that is of a "seal" of approval (or a "green seal" of approval).

At 9:16 PM, Blogger John L. Welch said...

The dictionary definitions of "seal" proffered by the PTO included a definition as "anything that tightly or completely closes or secures a thing, as closures or fastenings for doors and railroad cars, adhesive stamps and tapes used to secure the flap of an envelope."

At 9:28 AM, Anonymous Jennifer Lefere said...

John, can you clarify what you mean by "There is nothing stopping Applicant from dropping the "color code" and removing the seal as soon as the mark is registered - ed." In my experience, dropping a word from a mark or image from a mark is always rejected as material. Or, am I missing your point? Thanks.

At 11:05 AM, Blogger John L. Welch said...

My point is this: the application is for the word mark GREEN SEAL. It tried to justify registration by pointing to its use of the mark along with a seal design, for color-coded adhesive. But neither the seal design nor the color-coding limitation is in the application. So once the registration issues, nothing stops it from dropping the seal design and the color-coding and just using the word mark GREEN SEAL for adhesive.


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