Solarwindow Technologies, Inc.Download PDFTrademark Trial and Appeal BoardJul 13, 2016No. 86337722 (T.T.A.B. Jul. 13, 2016) Copy Citation 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. Copy with citationCopy as parenthetical citation