Given the notoriety of recent events indicating a changing climate, e.g., heat waves, wildfires and the like, marketers will be tempted to promote the environmental friendliness of their products.
They may do this in how they brand their products, in their advertising material and on their labeling. When they do this, they need to be aware of the legal implications.
The United States Patent & Trademark Office will refuse the registration of a mark if that mark is deceptive or deceptively misdescriptive. A deceptiveness refusal is an absolute bar to the registration of a trademark and evidence that that mark is distinctive will not overcome that refusal.
The Court of Appeals for the Federal Circuit has articulated the following test for whether a mark consists of or comprises deceptive matter:
- Is the term misdescriptive of the character, quality, function, composition or use of the goods?
- If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?
- If so, is the misdescription likely to affect a significant portion of the relevant consumers’ decision to purchase the goods?
A deceptive mark may be comprised of: (1) a single deceptive term; (2) a deceptive term embedded in a composite mark that includes additional non-deceptive wording and/or design elements; (3) a term or a portion of a term that alludes to a deceptive quality, characteristic, function, composition, or use; (4) the phonetic equivalent of a deceptive term; or (5) the foreign equivalent of any of the above.
Deceptive marks may include marks that falsely describe the material content of a product and marks that are geographically deceptive.
However, marks containing a term identifying a material, ingredient, or feature should not be refused registration under if the mark in its entirety would not be perceived as indicating that the goods contained that material or ingredient.
In addition, formatives and other grammatical variations of a term may not necessarily be deceptive in relation to the relevant goods. For example, “silky” is defined, inter alia, as “resembling silk.” See The American Heritage® Dictionary of the English Language: Fourth Ed. 2000. Thus, a mark containing the term SILKY would not be considered deceptive (but might be unregistrable as a descriptive term. Dictionary definitions of such terms should be carefully reviewed to determine the significance the term would have to prospective purchasers. For example, although the term GOLD would be considered deceptive for jewelry not made of gold, the term GOLDEN would not be deceptive.
If the first two elements of the test set forth by the Federal Circuit above, i.e., whether a mark is misdescriptive of the goods/services and whether prospective purchasers are likely to believe the misdescription, are answered affirmatively, then the mark is deceptively misdescriptive of the goods/services under §2(e)(1) of the Trademark Act. That is, if the misdescription is not a material factor to the purchasing decision, then the basis for refusal would be not that the mark is deceptive but that the mark is deceptively misdescriptive of the goods.
Marks that have been refused registration on the ground of deceptive misdescriptiveness may be registrable upon a showing of acquired distinctiveness, or on the Supplemental Register if appropriate. Similarly, marks that contain registrable matter in addition to deceptively misdescriptive components can be registered with a disclaimer of the deceptively misdescriptive matter, when appropriate.
Examples of deceptive or deceptively misdecriptive brands that promote environmental friendliness may be suggested by looking at the Federal Trade Commission’s “Green Guides” which cover product labeling and advertising. See https://www.ftc.gov/sites/default/files/attachments/press-releases/ftc-issues-revised-green-guides/greenguidessummary.pdf
Here is a brief summary of the FTC’s rules:
Marketers should not make broad, unqualified general environmental benefit claims like ‘green’ or ‘Eco-friendly.’ Broad claims are difficult to substantiate, if not impossible.
Marketers should qualify general claims with specific environmental benefits. Qualifications for any claim should be clear, prominent, and specific.
When a marketer qualifies a general claim with a specific benefit, consumers understand the benefit to be significant. As a result, marketers shouldn’t highlight small or unimportant benefits.
Claiming “Green, made with recycled content” may be deceptive if the environmental costs of using recycled content outweigh the environmental benefits of using it, e.g., if the content needs to be shipped halfway around the world to be recycled.
Marketers should disclose whether a carbon offset purchase pays for emission reductions that won’t occur for at least two years. Marketers should not advertise a carbon offset if the law already requires the activity that is the basis of the offset.
Marketers who claim a product is compostable need competent and reliable scientific evidence that all materials in the product or package will break down into — or become part of — usable compost safely and in about the same time as the materials with which it is composted.
Marketers may make an unqualified degradable claim only if they can prove that the “entire product or package will completely break down and return to nature within a reasonably short period of time after customary disposal.” The “reasonably short period of time” for complete decomposition of solid waste products? One year
Marketers who claim that their product is non-toxic need competent and reliable scientific evidence that the product is safe for both people and the environment.
It is deceptive to misrepresent that a product is ozone-friendly or safe for the ozone layer or atmosphere.
If recycling facilities for a product are not available to at least 60 percent of consumers or communities, a marketer can state, “This product may not be recyclable in your area.” If recycling facilities for a product are available to only a few consumers, a marketer should use stronger qualifying language: “This product is recyclable only in the few communities that have appropriate recycling programs.”
Marketers should qualify claims for products or packages made partly from recycled material — for example, “Made from 30% recycled material.”
Marketers should not make an unqualified “made with renewable energy” claim unless all, or virtually all, the significant manufacturing processes involved in making the product or package are powered with renewable energy or non-renewable energy, matched by Renewable Energy Certificates.
Unqualified claims about renewable material may imply that a product is recyclable, made with recycled content, or biodegradable. One way to minimize that risk is to identify the material used clearly and prominently, and explain why it is renewable, e.g., “Our flooring is made from 100% bamboo, which grows at the same rate, or faster, than we use it.”
When it comes to “green” trademarks one way to avoid a deceptive or deceptively misdescriptive objection is to make sure that your mark is merely suggestive, e.g., EARTHWISE, ECOMAX, RECYCLAY.