Green Guides and Their Effect on Trademark Registration

The Federal Trade Commission is expected to publish its once-every-decade Green Guides later this year. These guidelines are meant to prevent “greenwashing,” which is the act of misleading consumers into thinking certain products are environmentally friendly and sustainable, i.e., “green,” by ensuring brand owners’ transparency and truthfulness when advertising the environmental impact of goods and services they offer to the public. Experts anticipate that the new Green Guides will require stricter compliance by brand owners and provide stiffer penalties and increased risks of litigation for their failure to do so. Brand owners of registered or applied-for trademarks with the United States Patent and Trademark Office (USPTO) that tout the environmental benefits of their products, but are instead whitewashing, should be on notice. The newly revised Green Guides will offer persuasive evidence that can be used by USPTO examining attorneys to refuse to register pending marks, or by third parties to either oppose the registration of such marks, or to cancel registered ones.

Trademark law prevents the registration of trademarks that are deceptively misdescriptive or that contain deceptive matter. A mark is deceptively misdescriptive if (i) it describes the character, quality, function, composition, or use of the goods or services associated with it, but such description is false, and (ii) prospective purchasers are likely to believe that the misdescription actually describes the goods. A mark found to be deceptively misdescriptive, however, may still qualify for trademark registration and protection upon a showing of “secondary meaning” by the brand owner. Secondary meaning occurs when, despite the mark being misleading, the purchasing public tends to associate the products offered under the mark as emanating from a single source (the brand owner).

Marks that contain deceptive matter, on the other hand, are prohibited from registration even if the owner can show secondary meaning. A mark contains deceptive matter if the first two elements above for deceptively misdescriptive marks exist, as well as a third element, (iii) the misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase the goods under the deceptive mark.

Every trademark application submitted to the USPTO for registration will undergo an examination by an assigned examining attorney. Examining attorneys are gatekeepers who are authorized to reject applications due to a multitude of reasons or doctrines. Two of those doctrines are that a mark contains deceptive matter or is deceptively misdescriptive.

To prove their case, examining attorneys must prove that the mark misdescribes the products sold under it. Proper evidence establishing the meaning of a mark and an accurate description of products include dictionaries, webpages, product information sheets, trade journals, and, of course, regulations and guidelines promulgated by a federal agency. Hence, the Green Guides constitute compelling evidence of whether a mark is greenwashing the environmental benefits of the services associated with it.

Third parties may also use the Green Guides to challenge the application or registration of a competitor’s mark that is merely whitewashing the characteristics or benefits of its goods and services. However, unlike examining attorneys, not just anyone can challenge another brand owner’s mark. To be entitled to file a challenge to an application (an opposition proceeding) or registration (cancellation proceeding), a third party must prove that it has both an economic interest that falls within the “zone of interest,” and that it would be harmed if the mark were to register or if such registration were to continue. An economic interest within the zone of interest means that the third party sells the same or related goods or services as those listed in the greenwashing brand owner’s involved application or registration, and that the goods or services in question are or could be provided in the normal expansion of the third party’s business; the third party “has a real interest in the proceeding because it is one who has a present or prospective right to use the term descriptively in its business.” Poly-Am., L.P. v. Illinois Tool Works Inc., 124 USPQ2d 1508, 1512 (TTAB 2017).

In other words, you can’t, as a third party, oppose or cancel a trademark registration simply because you think a mark is misleading. Instead, (i) you must provide similar services/goods as those under the greenwashing brand owner’s mark, (ii) a term used in the misleading trademark is one you’d like to truthfully use or are truthfully using in your trademark, and (iii) your trademark will be harmed (e.g., you’ll be denied registration) if the greenwashing mark’s registration were to remain valid.

The following hypothetical example illustrates how the concepts above can be applied to a potential fact pattern involving the Green Guides. Suppose Business A sells recycled paper under the registered trademark Green Penny. Its mark has been registered for three years. It advertises that its paper is made from recycled products and that it uses industry-leading technology to minimize its carbon footprint when manufacturing and distributing the product.

Business B (third party), a new business that has recently submitted its trademark application to the USPTO, also sells recycled paper but under the mark Green Clean. When its application arrives in front of an examining attorney, as required, the examining attorney conducts a search of all marks in the USPTO’s database to compare against the Green Clean mark, and refuses registration because of Business A’s Green Penny mark. The examining attorney determines that there would be a likelihood of confusion among purchasers if both marks were registered because consumers would be unsure as to which owner was providing the goods in question since both owners sell recycled paper and use “green” as part of their marks.

The revised Green Guides are published, and after reviewing them, Business B learns that only businesses that manufacture recycled paper and pay their employees a living wage may use the designator “green” to denote sustainability and environmental safety. Business B also learns from newspaper articles that Business A’s employees are picketing it because it refuses to pay them a living wage. Armed with this evidence, Business B is entitled to commence a cancellation proceeding against Business A to cancel Green Penny because all three elements of the deceptive matter test can be argued: (1) Business B uses the Green Guides as evidence to prove that the “Green” in Green Penny is misleading because business A doesn’t pay it’s employees a living wage. (2) Consumers are likely to believe that the “Green” in Green Penny is truthful because Business B presents evidence showing that more and more people are making purchasing decisions based on the environmental impact the goods they buy will have on the environment. (3) Business B proves that it is harmed by the whitewashing mark because the examining attorney won’t register Green Clean because of Green Penny. Business B successfully convinces the examining attorney who cancels Business A’s mark in due course, thereby clearing the way for the registration of Business B’s Green Clean.

Companies spend considerable money, time, and effort securing trademark registrations. A registered trademark brings prestige to a brand and increases its value. The loss of a registered trademark due to a finding that the mark is deceiving the public can damage a company’s reputation and affect its bottom line. Consumers may be less inclined to purchase that company’s products because they have lost trust in the veracity of the company’s statements. The potential loss in customers, legitimacy, and revenues can be avoided by complying with the Green Guides.

The Green Guides mandate that companies be truthful when advertising their products’ impact on the environment. Compliance with the guidelines is not only legally required but also good business. It is necessary to save the investment made in obtaining a registered trademark.