Hood River Conser-vation Foundation, Inc.

Trademark Trial and Appeal Board

Jan 3, 2001

No. 75453584 (T.T.A.B. Jan. 3, 2001)

1/3/01
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Hood River Conservation Foundation, Inc.
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Serial No. 75/453,584
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Faye L. Tomlinson of Christensen O’Connor Johnson &
Kindness for Hood River Conservation Foundation, Inc.
Kimberly Krehely, Senior Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
_______
Before Seeherman, Quinn and Rogers, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Hood River Conservation Foundation has applied to
register CLIMATE NEUTRAL as a certification mark, based on
a bona fide intention to exercise legitimate control over
the use of the certification mark in commerce.1 Applicant
has stated that the certification mark, as intended to be
used by authorized manufacturers, certifies that such
manufacturers meet standards and tests of reducing and
1 Application Serial No. 75/453,584, filed March 20, 1998.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. Error! Reference source not found.
2
offsetting greenhouse or global warming gases established
by the certifier, and that the certification mark, as
intended to be used by authorized service providers,
certifies that such service providers meet standards and
tests of reducing and offsetting greenhouse or global
warming gases established by the certifier. Applicant and
the Examining Attorney agreed that, because the goods and
services to be certified encompass such a broad array, they
may be identified as, essentially, the class headings set
forth in Rule 6.1, 37 CFR § 6.1.
Registration has been refused pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1), on the
ground that applicant’s mark is merely descriptive if it is
used in connection with the claimed certification
activities. It is the Senior Examining Attorney’s position
that the mark describes a significant feature of the
certified goods and services, namely, that they do not harm
the global climate.
Applicant has appealed the refusal. The appeal has
been fully briefed, but an oral hearing was not requested.
A term is merely descriptive, and therefore prohibited
from registration by Section 2(e)(1) of the Act, if it
immediately conveys knowledge of the ingredients,
qualities, or characteristics of the goods or services with
Ser. No. Error! Reference source not found.
3
which it is used or, in the case of a certification mark,
those goods or services which it certifies. See In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Moreover, in order for a term to be merely descriptive, it
need only describe one of the qualities or properties of
the goods. Id. It is not necessary for the term to
describe every one of the qualities, characteristics,
functions, etc. In re Venture Lending Associates, 226 USPQ
285 (TTAB 1985). The determination of mere descriptiveness
is not to be made in the abstract, considering the
impression of the mark as it is, or is proposed to be, used
in connection with the identified goods or services, or, in
this case, in connection with the certification of those
goods or services. See In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215 (CCPA 1978).
The Senior Examining Attorney has made of record
dictionary definitions2 for “climate” (“the meteorological
conditions, including temperature, precipitation, and wind,
that characteristically prevail in a particular region”)
and “neutral” (“belonging to neither kind; not one thing or
the other; indifferent”). She has also submitted three
articles taken from the NEXIS data base: two are from The
2 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
Ser. No. Error! Reference source not found.
4
National Journal Group, Inc. and contain similar
information,3 as follows:
Article 1: “Greenwire,” September 25,
1998
Headline: Natural Gas: Hess Launches
“Climate-Neutral” Product
UK-based Amerada Hess, a gas marketing
company, is launching a “Climate Care
Saver” natural gas product, which is
believed to be the world’s first
“climate neutral” gas contract.
Under the program, customers will pay a
premium to “offset” the carbon-dioxide
emissions associated with natural gas.
The money will be used to invest in
conservation of Ugandan rainforests.
Article 2: “National Journal’s Daily
Energy Briefing,” September 25, 1998:
… UK-based Amerada Hess, a gas
marketing company, is launching a
Climate Care Saver tariff, which claims
to be the first “climate neutral” gas
supply contract. Under the program,
customers are told that all carbon-
dioxide emissions associated with the
gas—which would normally contribute to
global warming—will be offset by an
investment in Ugandan rainforests (Carl
Mortished, London Times, 9/23).4
3 Applicant treats both of these articles as though they are a
single article. However, it is clear from the differences in the
manner in which the information is reported that each represents
a different publication source.
4 It appears from the manner in which the news is reported in
this article that the “London Times” is listed as source for this
particular information.
Ser. No. Error! Reference source not found.
5
The third submission is a transcript from a National
Public Radio broadcast of “Talk of the Nation” on June 27,
1997, the subject of which was “the state of the science on
climate change, how global warming may be already changing
our national parks, and how renewable energy sources like
solar or wind power could be the solution to the problem.”
During that broadcast, one of the panelists, in connection
with a discussion about global warming and renewable energy
technologies, made the following statement:
… The biomass technologies are
essentially converting the energy
stored in plants to electricity or
liquid fuels. And those technologies
are climate neutral in a sense, carbon
neutral, because they don’t add any net
carbon to the environment if we replant
the plant material that we’ve used.
We agree with the Senior Examining Attorney that the
dictionary definitions of the words “climate” and “neutral”
show that, when these words are combined in the phrase
CLIMATE NEUTRAL, the ordinary meaning of the term is
neither benefiting nor harming the climate. Further, when
the term is used in connection with certifying that goods
and services meet standards and tests of reducing and
offsetting greenhouse or global warming gases, consumers
would immediately understand that the certified goods or
services do not, in totality, harm the climate.
Ser. No. Error! Reference source not found.
6
Applicant has pointed out that the phrase “climate
neutral” does not appear in the dictionary. However, there
is no requirement that a phrase appear in the dictionary in
order to find it to be merely descriptive. See In re
Pharmaceutical Innovations, Inc., 217 USPQ 365 (TTAB 1983),
and cases cited therein. Moreover, dictionaries do not
necessarily reflect changes in language at the same pace
that technologies advance and scientific discoveries occur.
Applicant also points to meanings of the individual
words in its mark to show that its mark is not merely
descriptive, arguing that people view “climate” as
referring to the weather system of a particular region
rather than the entire globe, and that the definition of
“neutral” as “indifferent,” results in a meaningless
concept of “an indifferent climate.” Brief, p. 4.
However, although different regions may have different
climates, the term may also be used to refer to the global
climate, as is shown in the National Public Radio
transcript, at pp. 2-3: “And the overall statement, which
is now fairly widely known, is that the balance of evidence
suggests a discernible human influence on global climate.”
Applicant’s argument that CLIMATE NEUTRAL would be
perceived as “indifferent climate” is unpersuasive.
Applicant’s focus on “neutral” as meaning “indifferent”
Ser. No. Error! Reference source not found.
7
ignores the meaning of “neutral” as “not causing or
reflecting a change in something: It is believed that the
new tax law will be revenue neutral.”5 Further, consumers
are used to seeing such a phrase as “revenue neutral” in
connection with legislation which, for example, raises
taxes for certain things while lowering them for others, so
that the result is revenue neutral. As a result, they will
ascribe the same significance to the phrase CLIMATE NEUTRAL
when it is used in connection with goods and services which
are certified to meet standards of reducing and offsetting
greenhouse or global warming gases. That is, they will
view these goods or services as not having an overall
negative effect on the climate because any negative impact
will be offset by a positive impact.
Applicant asserts that “even arguably in the
environmental field, the combination of the terms ‘climate’
and ‘neutral’ are [sic] more likely to be readily
understood as a qualification that, for example,
irrespective of varying climate conditions, the cities of
Johannesburg and London will be compared; or, irrespective
of whether one lives in Johannesburg or London, one can
5 The Random House Dictionary of the English Language, 2d ed.,
unabridged, © 1987. The Board may take judicial notice of
dictionary definitions. University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. Error! Reference source not found.
8
expect substantially the same results from such-and-such
product.” Brief, p. 5.
The difficulty with this argument is that it would
have us consider the mark in a vacuum. Applicant is not
seeking registration of CLIMATE NEUTRAL as a certification
mark for comparing geographic places, or determining
whether goods are equally effective in different climates.
Rather, applicant is certifying that the manufacturers and
service providers meet standards for reducing and
offsetting greenhouse or global warming gases. When the
mark is viewed in connection with such certification, it is
clear that consumers will immediately understand the mark
to certify that the goods or services are produced in a
manner in which any negative impact on the climate will be
offset by a positive impact, such that the goods or
services do not harm the climate.
Our decision that the mark is merely descriptive does
not rest solely on the dictionary definitions. The NEXIS
excerpts, although obviously limited in nature,6 show that
6 Applicant states that the Examining Attorney did not disclose
how many total documents containing relevant uses of the term
CLIMATE NEUTRAL were found during the NEXIS search. The search
query is, indeed, part of the file, and shows that 25 stories
were retrieved by the search. As the Board stated in In re
Federated Department Stores, Inc., 3 USPQ2d 1541 (TTAB 1987), the
Examining Attorney has the option of providing whatever material
he or she feels is helpful in proving the point he or she is
attempting to make. It is up to the applicant to rebut that
Ser. No. Error! Reference source not found.
9
at least one reporter and one panelist have used the phrase
CLIMATE NEUTRAL to describe, for example, activities with
negative effects on the climate being offset by those with
positive effects. The limited references to CLIMATE
NEUTRAL can be attributed to the fact that it is a
relatively new concept to offset damage to, or not affect,
the climate as one manufactures products or provides
services, in the same manner that the identification of and
concern about global warming is a relatively new
phenomenon. In addition to the NEXIS excerpts, applicant
itself has found other uses of CLIMATE NEUTRAL. In its
brief applicant has stated that a search of the Internet
for CLIMATE NEUTRAL retrieved 18 hits, and that 9 of these
hits use this term, primarily in the title or header.7 This
evidence reinforces the Senior Examining Attorney’s
position that this term is being used by those in the
evidence. Thus, the Examining Attorney is not obliged to file
every story found in a NEXIS search. In this case, we presume
that the other stories, which were not made of record, were
either “noise” or were irrelevant to the issue at hand. In any
event, it is general practice for the Board to assume that the
Examining Attorney has made the best case possible, and that if
only three stories were made of record, these were the only
stories that supported her position.
7 Applicant did not supply copies of this evidence, merely
referring to it in its brief. Normally such evidence would not
be considered, but in this case the Senior Examining Attorney
expressly referred to it in her brief. Accordingly, we deem her
to have stipulated it into the record, and we have therefore
considered applicant’s statements.
Ser. No. Error! Reference source not found.
10
environmental community, and that public exposure to it is
growing.
Applicant appears to take the position that allowing
it to register CLIMATE NEUTRAL as its certification mark
would work no competitive disadvantage because uses of this
term are so limited, and because the use of quotes around
it in the two National Journal articles indicates that
CLIMATE NEUTRAL is not a common term.8 However, it is well-
established that a mark may be merely descriptive even if
the applicant is the first or only party to use it. See In
re Pharmaceutical Innovations, Inc., supra. In this case,
as we stated above, the limited usage of the term can be
attributed to the relatively recent phenomenon which the
term describes. Moreover, it must be remembered that
applicant seeks to register its mark to certify literally
every kind of product and service on which a mark may be
used. To effectively preclude third parties from being
able to use the short phrase CLIMATE NEUTRAL to indicate
that their products and services do not have a negative
effect on the global climate would indeed have a negative
effect on competitors.
8 Although the articles do, indeed, use quotes for CLIMATE
NEUTRAL, the author seems to have a penchant for quotation marks,
also using them for the word “offset.”
Ser. No. Error! Reference source not found.
11
Decision: The refusal of registration is affirmed.