Written by Mark Terry   

Last week, the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office issued the In re Calera Corp decision, which deemed the term GREEN to be merely descriptive of an environmentally friendly product or service. As a Miami Trademark Attorney, I found this decision interesting in light of the increasing number of GREEN trademarks and service marks that I see in use in every day life.

At issue was an applicant’s trademark GREEN CEMENT associated with an environmentally friendly brand of cement. The Trademark Office’s examining attorney refused to register this mark under the premise that it was merely descriptive of the product sold by the applicant. Among other things, the applicant argued: “there are abundant meanings associated with the adjective ‘green’ (at least twenty), consumers must necessarily exercise mature thought or follow a multi-stage reasoning process in order to determine what product characteristics the term GREEN CEMENT refers to. For example, it is not clear whether the cement of Applicant’s goods is: 1) freshly set and not completely hardened; 2) green in color; 3) newly manufactured or poured; 4) covered in foliage; or 5) environmentally beneficial.”

The TTAB disagreed and found: “The term GREEN indicates that the product is environmentally beneficial. There simply can be no dispute today that the term green, ubiquitously used as an adjective with any good or service, will be perceived as an indicator that the good or service is environmentally friendly.” Therefore, since the term GREEN was descriptive of the term CEMENT, the TTAB found the mark descriptive and affirmed the refusal by the examining attorney.

When two descriptive terms are combined, the determination of whether the composite mark also has a descriptive significance turns upon the question of whether the combination of terms evokes a new and unique commercial impression. If each component retains its descriptive significance in relation to the goods or services, the combination results in a composite that is itself descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d1370 (Fed. Cir. 2004). This is exactly what happened in In re Calera Corp.

From a business owner’s standpoint, the lesson is that you should stay away from overly descriptive trademarks. As illustrated above, merely descriptive trademarks are not registrable with the U.S. Patent and Trademark Office therefore offer reduced, if any, trademark protection.