It’s not easy going Green. And, it is even tougher to advertise or protect it.  

While use of environmentally targeted words such as “Green” or “Eco” for environmentally friendly products and services is certainly not new, the increased public awareness of environmental issues has fueled a recent demand for so-called “Green” products and services. This has forced companies to re-consider the ecological benefits of their products and has led savvy consumers to demand that their products have such benefits. And, companies are racing to meet that demand. The benefits for a company going "Green" are plentiful, including a positive company image, environmental considerations, and distinguishing a product from that of a competitor by promoting its environmental attributes. This means that we are seeing an increase in products that are touted as “Green,” “biodegradable,” “all natural,” “energy efficient,” “recyclable,” and “reusable.” 

But are they really? This is the issue that has left many customers in want of more details and has led to an increase in scrutiny from regulating bodies, such as the Federal Trade Commission (“FTC”), the National Advertising Division (“NAD”) and the U.S. Patent and Trademark Office (“PTO”). These agencies are demanding that companies ensure that the benefits that they tout and the trademarks used are truthfully promoted and qualified. Beyond consumer protection, the race to go “Green” presents trademark owners with significant brand development challenges.  

Advertising Issues Involved in Going Green

The FTC took the first step in regulating this issue by developing the “Green Guides” in 1998.1 The Green Guides provide basic ground rules for companies that intend to advertise the environmental benefits of their products by using words such as “recyclable,” “recycled content,” “biodegradable,” “degradable,” “compostable,” or “refillable.” The Guides give specific guidance for advertisers who intend to use any of these terms on their product packaging. For example, if an advertiser is stating that its product is “COMPOSTABLE,” it should consider whether the product is compostable for all of its customers. Composting programs are not available in all parts of the U.S. and, therefore, the environmental benefit may only be available to a percentage of the population that uses the product.  

The Guides also explain that the advertiser must not overstate the environmental attribute of a product.2 Thus, if an advertiser places the words “ALL NATURAL AND RECYCLABLE” on the package, the product should not contain anything that is artificial and it should not be more than minimally processed.3 Further, if this claim is made, all parts of the product and its packaging must be recyclable. For many consumer products, this is an almost impossible feat.

Considering this, a company wishing to promote the “Green” benefits of its product should consider qualifying each statement to ensure the environmental benefits are not overstated. This means that an electronics company that would like to advertise the energy efficiency of a product should make sure that all aspects of the product are energy efficient during all types of use. For instance, if a television is only energy efficient when the display is at a minimal level of brightness, this fact should be noted on the package next to the claim that the product is “ENERGY EFFICIENT.”  

Another way to avoid overstating a product’s environmental attribute would be to qualify the claim with a percentage that demonstrates the benefit. Many companies are utilizing this tactic by explaining that their product is “30% MORE ENERGY EFFICIENT THAN LAST YEAR’S MODEL,” or that it “CONTAINS 20% RECYCLABLE MATERIAL.” These claims may be acceptable, so long as they are accurate.  

A company that intends to “Go Green” should not stop its review at advertising. In fact, this review should be incorporated into a company’s brand development strategy for proposed marks that incorporate environmentally targeted terms. Further, even if the FTC has yet to incorporate a proposed “Green” term into its guidelines, a trademark owner may still be faced with brand protection challenges.

Trademark Issues Involved in Going Green

The PTO does not set out specific guidelines for proposed marks that incorporate the terms mentioned in the Green Guides, such as “Organic,” “All Natural” and the like. But, a company that intends to incorporate such a term into its brand should consider two important concepts, which are enforced by the PTO.

First, the proposed mark should accurately identify the qualities and characteristics of the goods or services that will be used with the mark. This is because the PTO Examining Attorney will likely consider whether the proposed mark is “deceptively misdescriptive.” A “deceptively misdescriptive” mark is one that conveys an immediate, but false, idea of an ingredient, quality, characteristic, function or feature of the goods or services identified in the application. For example, the PTO refused to register the mark “ORGANIK” for “cotton textiles and clothing” on the basis that the mark materially misdescribed the applicant’s goods. The Examining Attorney argued (and the Trademark Trial and Appeal Board affirmed) that the proposed mark was the phonetic equivalent of the term “organic” and therefore the public would assume the goods were organically grown or free from chemical processing.4 Because the application did not assure the Examining Attorney that the goods sold under the mark would be organic, the TTAB concluded that the public may be deceived or harmed. Consequently, before a company incorporates into its mark a term such as “Organic,” “All Natural,” or other terms covered in the Green Guides, it should first be able to substantiate those terms from a trademark perspective.

The PTO may also refuse an application because the trademark at issue is “merely descriptive” of the goods or services, or of some characteristic or ingredient of the goods or services. For instance, the mark RECYCLED PLASTIC may not be permitted for an application covering recycled plastic. Thus, many of the environmentally targeted terms, such as “Organic,” “Green,” “Eco” or “All Natural,” may be considered descriptive when used in connection with environmentally targeted or sustainable goods and services. Thus, the PTO may require these marks to be disclaimed from the application, which limits the trademark owner’s rights in the mark. Therefore, with the dramatic rise in trademark applications for environmentally targeted marks, as companies race to stake a claim to a “Green” brand (in 2007 the PTO received over 2400 applications with the term “Green,” and almost 900 that incorporate “Eco”)5, these marks or terms are arguably losing their ability to be unique brand identifiers.

For marketing purposes, it may not matter that a “Green” term is considered descriptive and weak if the motive for adopting the mark is to demonstrate that a product, service or company is environmentally friendly or environmentally conscious, especially if it is combined with a strong house mark or company name. But, if the desire is to create a unique brand, a company should weigh the marketing benefits of a “Green” mark with the ability to protect it.

Arent Fox is monitoring this issue. For more questions, contact Anthony V. Lupo or Sarah L. Bruno.