The Trademark Trial and Appeal Board (TTAB) recently issued another in its recent series of non-precedential opinions hostile to trademarks for clean technology that contain the term “green”. The case is United Parcel Service of America, Inc. (UPS) v. Powertech Industrial Co. Ltd., Opposition No. 91184197 (TTAB 2011). For the complete opinion, click here.
Powertech filed its application back in 2007 for the mark HYBRID GREEN UPS for a variety of electronics supplies in Class 9, including, notably, universal power supplies and uninterruptible power supplies (UPSs). Powertech touted the “green” and “energy saving” benefits of the products. The Examiner required a disclaimer of the term UPS, apparently as generic or descriptive of one or both of these items, but raised no issue with the terms HYBRID or GREEN. Of course, this was before the TTAB started to take a hard line on green-formative trademarks in non-precedential cases like In re Cenveo (2009) (affirming refusal of GREEN-KEY and Design), In re Bargoose Home Textiles, Inc. (2009) (ALLERGYGREEN), and In re Calera Corp (2010) (GREEN CEMENT).
The mark then published for opposition, at which point UPS came down on it like a big brown truck. UPS’s main issue, of course, was the presence of the initials UPS in the subject mark, which had been disclaimed as descriptive matter. Although the Board agreed with UPS that its mark is very famous, the Board found no likelihood of confusion given that UPS trades in shipping services and Powertech trades in power supplies.
But then an odd thing happened: UPS won anyway. Why? UPS had made a secondary argument that the mark was merely descriptive, and the Board agreed with it on that point. The initials UPS, as mentioned earlier had already been disclaimed. HYBRID was deemed descriptive in view of the products’ dual AC and DC power outputs. GREEN was deemed descriptive in view of the touted “energy saving” and “material resources economically” features of the products. With no distinctive material remaining in the mark, the application was dead. As is often the case, this applicant was damned by the admissions of descriptiveness in its own marketing materials. As a result, UPS was able to defeat a trademark application despite the Board’s finding of no likelihood of confusion with UPS’ own mark (luckily for UPS, the presence of the UPS initials in Powertech’s mark gave it standing to bring the opposition where it otherwise might not have had it).
This case represents another strong signal from the TTAB that the term GREEN will be very difficult to protect in a mark, although it has yet to issue a precedential opinion on the point. It also suggests the possibility that HYBRID, and other eco-friendly terms, will be subjected to the same treatment.