Solarwindow Technologies, Inc.

Trademark Trial and Appeal Board

Jul 13, 2016

No. 86337722 (T.T.A.B. Jul. 13, 2016)

This Opinion is Not a
Precedent of the TTAB
Mailed: July 13, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Solarwindow Technologies, Inc.
_____

Serial No. 86337722
_____

John J. Dresch of Dresch IP Law, PLLC for Solarwindow Technologies, Inc.

Loksye Lee Riso, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____

Before Taylor, Wellington, and Greenbaum, Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Solarwindow Technologies, Inc. (“Applicant”) seeks registration for the mark
POWERCOATINGS (in standard characters) on the Principal Register for “electricity
generating coatings applied to various substrate surfaces for use in renewable energy,
namely, chemicals for use in connection with solar cells” in International Class 1.1

1 Application Serial No. 86337722, filed July 15, 2014, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on an allegation of a bona fide intention to use the mark in
commerce.
Serial No. 86337722
2

The Examining Attorney refused registration on the ground that the mark is
merely descriptive under Section 2(e)(1) of the Trademark Act (“the Act”), 15 U.S.C.
§ 1052(e)(1).
After the refusal became final, Applicant appealed. Applicant and the Examining
Attorney have briefed the appeal.
The Record
The Examining Attorney submitted the following materials in support of the
contention that the proposed mark is merely descriptive of the identified goods:
• Definitions for the terms “power” and “coating,” with the former word
having meanings that include “to supply with power or with a source of
power … [or] operated by electricity … [or] carrying electricity.”2

• Printouts from Applicant’s website (www.solarwindow.com) describing its
products as “electricity-generating coatings for glass" which produce an
"amount of power”3 – including the following excerpts:4

According to latest power and financial modeling,
SolarWindow systems boast the industry’s fastest known
financial return, and could achieve payback within one
year. To produce the equivalent amount of power with
conventional solar systems would require …

These liquid coatings are organic and generate electricity
while remaining see-through.

• Printouts from various websites, including some online articles, describing
Applicant’s company and its products – the following is an excerpted
sampling:

2 Attached to Office Action issued on October 30, 2014. The provided definitions were
obtained from Collins American English Dictionary (www.collinsdictionary.com).
3 Attached to Office Action issued on May 27, 2015.
4 Id. at p. 14.
Serial No. 86337722
3

BusinessWire … The prospect of exponentially out-
performing today's solar photovoltaic (PV) systems is made
possible when engineers apply New Energy's electricity-
generating SolarWindow coatings to glass. These see-
through liquid coatings create electricity-generating glass
windows … generating up to 50-times the power of
conventional rooftop solar systems …
In addition to setting new records for size and power
production …
To view power production estimates, click here …
[from website www.businesswire.com];5 and

PV Magazine … U.S. building integrated photovoltaics
(BIPV) developer New Energy Technologies Ltd. has
announced significant advances in its patented
SolarWindow, spray-on solar power coating system.
[from website www.pv-magazine.com];6 and

Solar Windows from UK Company Could Hit Market in
2013 … So, you might be wondering: 'Is this legit? Can we
really create power from the sunlight that hits windows.
Oxford PV combines dye-based thin-film solar cells with
glass substrates for its technology. This combo results in
tinted glass that is at the same time a solar power
generation system.

Power-Generating Windows Offer New Horizons for Office
Energy Efficiency … Such power-generating windows
might offer remarkable potential as an inexpensive source
of solar energy … [quoting an individual] “Windows and
glazed facades of office blocks and houses can be used to
generate electricity if they are used as luminescent solar
concentrators. This entails applying a thin layer (for
example a foil or coating) of luminescent material to the
windows…. The luminescent layer absorbs sunlight and
guides it to the solar cells at the perimeter, where it is
converted into electricity.” … A transparent film can
produce a maximum of 20 watts per square meter—not
quite enough to power a building, but certainly enough to
power office equipment.

5 Id. at p. 12.
6 Id. at p. 25.
Serial No. 86337722
4

[the above two excerpts from the website
www.cleantechnica.com].7

• Printouts from a website article describing a solar power (photovoltaic)
product from a German company that is very similar, if not the same as,
Applicant’s goods including descriptive use of the term “power coat[ing],” –
the following are some excerpts:

AZUR 2P by AZUR SOLAR: A highly innovative coating
avoids wear and soiling – only 2% performance loss over 20
years – opens up new opportunities for desert deployment
of photovoltaic systems … Light Weight Power Coating
The power coating AZUR 2F opens up new photovoltaic
application area on rooftops and building surfaces. In
particular, areas which were only partially usable for
energy production from sun light, e.g., the Sahara Desert,
can now be made widely accessible. And our power coating
AZUR 2F also revolutionizes the area of photovoltaics for
roof areas that were previously inaccessible.
[from website www.pressebox.com].8

Applicable Law
A mark is deemed to be merely descriptive, within the meaning of Section 2(e)(1),
if it immediately conveys knowledge of a quality, feature, function, characteristic or
purpose of the goods for which it is used. In re Bayer Aktiengesellschaft, 488 F.3d 960,
82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987)); In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-
18 (CCPA 1978). A mark need not immediately convey an idea of each and every
specific feature of the goods in order to be considered merely descriptive; rather, it is
sufficient that the mark describes one significant attribute, function or property of
the goods. In re Chamber of Commerce of the United States of America, 675 F.3d 1297,

7 Id. at p. 28-29.
8 Id. at p. 23-24.
Serial No. 86337722
5

102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re H.U.D.D.L.E., 216 USPQ 358, 359
(TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a mark is
merely descriptive is determined not in the abstract, but in relation to the goods for
which registration is sought, the context in which it is being used on or in connection
with the goods, and the possible significance that the mark would have to the average
purchaser of the goods because of the manner of its use. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979).9 Moreover, it is equally well-settled that “[t]he question
is not whether someone presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who knows what the goods or
services are will understand the mark to convey information about them.” In re Tower
Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re Patent & Trademark
Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American Greetings Corporation,
226 USPQ 365 (TTAB 1985).
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on
whether the combination of terms evokes a new and unique commercial impression.
If each component retains its merely descriptive significance in relation to the goods,
the combination results in a composite that is itself merely descriptive. See e.g., In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004)

9 Applicant’s reliance on the descriptiveness “tests” set forth in No Nonsense Fashions, Inc.
v. Consolidated Food Corp., 226 USPQ 502 (TTAB 1985) is misplaced. See In re Carlson, 91
USPQ2d 1198, 1203 (TTAB 2009).
Serial No. 86337722
6

(PATENTS.COM merely descriptive of computer software for managing a database
of records that could include patents, and for tracking the status of the records by
means of the Internet); In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB 2009)
(BATTLECAM merely descriptive for computer game software); In re Carlson, 91
USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of real estate
brokerage, real estate consultation and real estate listing services); In re Tower Tech,
64 USPQ2d 1314 (SMARTTOWER merely descriptive of commercial and industrial
cooling towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001)
(AGENTBEANS merely descriptive of computer programs for use in developing and
deploying application programs); In re Putman Publishing Co., 39 USPQ2d 2021
(TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and
information services in the food processing industry).
Analysis
There is ample evidence establishing that the wording POWER COATINGS is
merely descriptive of “electricity generating coatings applied to various substrate
surfaces for use in renewable energy.” Because the goods themselves are “coatings,”
there is no real question that COATINGS is merely descriptive, if not generic, for the
goods. With respect to the term POWER, Applicant argues that it “has a variety of
meanings even with regard to types of ability to act or produce an effect, possession,
control, physical might, source or means of supplying energy, or magnification, and
thus, does not immediately describe Applicant’s goods.”10 However, the fact that a

10 4 TTABVUE 6.
Serial No. 86337722
7

term may have other meanings in different contexts is not controlling and, as
mentioned, our decision whether a mark is merely descriptive should not be made in
the abstract, but in relation to the identified goods, i.e., electricity generating coatings
applied to various substrate surfaces for use in renewable energy, with the relevant
consumer of these goods in mind. In re Bright-Crest, 204 USPQ at 593. In this case,
the evidence demonstrates that consumers will readily understand the significance
of the proposed mark in the context of the goods and their field of use. As exemplified
in Applicant’s website (www.solarwindow.com) and other websites, including those
excerpted supra, the involved goods are generically referred to as “coatings” and
“power” is used frequently to descriptive the function or purpose of the coatings,
namely, to generate electricity or, as many articles phrase it, to “produce power.”
Indeed, in Applicant’s field of renewable energy, which includes photovoltaic
technology, the term “power” is used frequently in a manner that is consistent with
the term’s defined meaning of “a source or means of supplying energy; electricity
supplied to a home, building, or community.” We therefore disagree with Applicant’s
assertion that consumers would need to undergo a “multistage reasoning process …
to determine the attributes or characteristics of the products.”11 Rather, we find the
record shows that consumers viewing the proposed mark in the context of the
identified goods in the field of renewable energy will immediately understand that
POWER, as used in the overall mark, describes the goods’ ability to generate power.
We finally note that the combination of the two words, POWER and COATINGS, does

11 Id. at 7.
Serial No. 86337722
8

not diminish the descriptive nature of each word or result in a nondescriptive
composite, nor does the lack of space between words obviate their individual (or
overall) merely descriptive nature. See In re Petroglyph, 91 USPQ2d 1332; In re
Carlson, 91 USPQ2d 1198.
In sum, on the record before us, we find that POWERCOATINGS is merely
descriptive of “electricity generating coatings applied to various substrate surfaces
for use in renewable energy, namely, chemicals for use in connection with solar cells”
because it immediately conveys the information that the goods are “coatings” and
their function or purpose is to produce “power.”
Decision: The refusal to register the proposed mark is affirmed.