By now, many marketers and trademark lawyers are well aware of “greenwashing,” the practice of making disingenuous environmental marketing claims. (See Help Your Clients Avoid Greenwashing, INTA Bulletin Vol. 65 No. 8 April 15, 2010.) In the court of public opinion, greenwashing claims can destroy a brand, devalue a product and hurt sales. To fend off such actions in the United States, marketers and their counsel rely upon the Federal Trade Commission’s (FTC’s) Green Guides as guidance for proper environmental marketing claims.

When most people think of greenwashing, they focus on the marketing message associated with a particular product or service, that is, the advertisement or the packaging associated with that product or service. Brands alone, however, can be guilty of greenwashing. For marketers, it is easier to convey the environmental attributes through a brand than through advertisements. Brands are more recognizable, being prominently placed on packaging and the products and a constant across different media. For example, GREEN X brand quickly conveys to consumers that the product provides some environmental benefit (and is possibly superior to other brands). What marketers and trademark lawyers may not realize is that this approach may run afoul of the limitations on registrability of certain marks and result in refusal by the U.S. Patent and Trademark Office (USPTO) for deceptiveness or for being deceptively misdescriptive.

What Are Deceptiveness and Deceptive Misdescriptiveness Refusals?
Section 2(a) of the U.S. Trademark Act (Lanham Act) prohibits registration of a mark if it consists of or comprises deceptive matter. In addition, Section 2(e)(1), 15 U.S.C. § 1052(e)(1), prohibits registration of a mark that “when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them.” A mark that is deceptively misdescriptive under Section 2(e)(1) often also will be deceptive under Section 2(a), but the reverse is not necessarily true. The key consideration is use of the mark in connection with the goods or services identified in the application. Being merely misdescriptive is insufficient; the mark must be deceptive or deceptively misdescriptive.

The first inquiry is whether the mark is misdescriptive. According to the Trademark Trial and Appeal Board (TTAB or Board), the examining attorney must “determine if the matter sought to be registered misdescribes the goods.” In re Quady Winery Inc., 221 U.S.P.Q. 1213, 1214 (T.T.A.B. 1984). To determine misdescriptiveness, the examining attorney will consider whether the goods and services possess the relevant feature or characteristics referenced by the mark.

If the mark is misdescriptive, then, second, the examining attorney “must ask if it is deceptive, that is, if anyone is likely to believe the misrepresentation.” Id. If the answer is yes, the mark is deceptively misdescriptive, and the USPTO will issue a Section 2(e)(1) refusal. When the misdescriptiveness is material to the purchasing decision, a further refusal is warranted under Section 2(a) of the Trademark Act, 15 U.S.C.§ 1052(a), because the mark is deceptive. In re Budge Mfg. Co, 857 F.2d 773, 775 (Fed. Cir. 1988).

Over a decade ago, the TTAB found the mark ORGANIK deceptive for clothing and textiles made from cotton that was neither from an organically grown plant nor free of chemical processing or treatment. In re Organik Technologies, Inc., 41 U.S.P.Q.2d 1690 (T.T.A.B. 1997). Despite evidence presented by the applicant that showed that its cotton was not treated or processed with chemicals, the Board ultimately concluded that the applicant’s goods were unrestricted and included textiles and clothing manufactured with chemical processes and dyes. As a result, the mark was deceptive, and registration was refused.

In May 2009, the USPTO issued a revised Examination Guide focused on deceptiveness refusals for non-geographic marks. The Examination Guide, now incorporated in the sixth edition of the Trademark Manual of Examining Procedure (TMEP), updates the elements of deceptiveness and deceptive misdescriptiveness refusals, evidentiary issues surrounding these refusals and procedures for issuing refusals. The Guide requires an examining attorney to have evidence of materiality in making deceptiveness refusals. Most often, this comes in the form of objective evidence supporting the superior quality, enhanced performance or function, difference in price, health benefit, or religious practice or social policy. The examining attorney may compile this evidence from the Internet, by reviewing the applicant’s specimen and/or through information requests to the applicant.

GREEN X Brand
Deceptiveness and deceptive misdescriptiveness refusals are not new for most trademark practitioners. Yet, the push for environmentally superior products has driven marketers to incorporate terms such as GREEN into brand names. Imagine that your client or business intends to launch the mark GREEN KICKS for a new line of boots. You, the trademark professional, are given the task of conducting a trademark clearance on this new brand. This process generally focuses on evaluating whether your client’s use and adoption of this mark will incur a risk of challenge by a third party. Your inquiry should not end there, however. Because of the inclusion of GREEN in the brand, you now also must determine whether the boots are environmentally friendly or have certain environmental attributes. If not, then the mark may be refused registration as deceptive and/or deceptively misdescriptive. Consequently, you should consider how to proactively avoid such a refusal.

USPTO examining attorneys are now issuing deceptiveness refusals under Section 2(a) and/or deceptive misdescriptiveness refusals under Section 2(e)(1) for marks that include the word GREEN. The difference between a deceptiveness refusal and a deceptive misdescriptiveness refusal is whether the “deceptive” portion of the mark is likely to influence a number of potential purchasers’ purchasing decisions. The USPTO’s new practice is likely the result of widespread use by marketers of the term GREEN to promote environmental attributes. Because the term GREEN is diluted and descriptive, its inclusion also may result in a request for a disclaimer. For example, the office action may include the following language: “Applicant’s mark includes the wording GREEN, which indicates that the goods contain environmentally friendly materials and/or are made from environmentally friendly manufacturing processes. This feature or ingredient is important to a significant portion of the relevant consumers’ purchasing decisions because consumers are increasingly becoming more conscious about the environmental impact caused by their behavior and because said goods are made in the most cost-efficient and environmentally responsible manner.”

Similarly, brand names that include the word “organic” may receive deceptiveness and/or deceptive misdescriptiveness refusals. In the United States, use of the term “organic” is governed by a set of standards set forth by the U.S. Department of Agriculture that are related to the ingredients and methods of processing. As the TTAB reflected in In re Organik Technologies, consumers, on seeing the X ORGANIC brand, will likely believe the product contains only organic materials. The sheer explosion of environmental marketing claims also has resulted in overuse of additional terms, such as ECO, ENVIRONMENTALLY FRIENDLY and SUSTAINABLE. As they become more diluted, we may see the USPTO treating these terms similarly to the way it does GREEN and ORGANIC and issuing preliminary deceptiveness and/or deceptive misdescriptiveness refusals on brands that include them.

Five Steps to Address These Issues
For applicants, not all hope is lost. The best approach is to prepare your clients, internal and external, for potential refusals in advance. This preparation will not only appropriately set expectations but allow you and your client to take steps to avoid or overcome a refusal.

At the outset of any trademark clearance, you should have a thorough understanding of your client’s business, and what evidence supports the environmental attributes conveyed by the brand (or any other meaning conveyed by the brand). The following concrete steps should then be taken:

1. Draft a narrow identification of goods and services. By qualifying the identification of goods and services in the application to indicate the environmental attributes, you reduce the chance of an initial refusal. Section 1203.02(f)(i) of the TMEP reads, “If the applicant amends the identification to include the potentially deceptive term, the USPTO will rely on the presumption that the goods contain a sufficient amount of the material to obviate deceptiveness; there is no requirement to substantiate the amount or percentage of the material or feature in the goods.” For example, stating that the restaurant features organic foods or the boots are manufactured in an environmentally friendly process may result in a presumption that will obviate deceptiveness. If the clarifying language is not part of the initial application, the examining attorney may require such an amendment during the prosecution of the application. Clients will want to take this into consideration if they tend to file subsequent applications, via the Paris Convention or the Madrid Protocol, relying upon the U.S. application. In addition, the word “green” may have other meanings, so the issue is not always simple. For example, “green” may relate to the actual product color or reference a geographical location. These issues will require a separate analysis and explanation to the examining attorney, and are therefore beyond the scope of this article.
2. Treat the brand as you would any other environmental marketing claim. As part of the trademark clearance process, you should examine the claim and determine whether it can be substantiated by the client. General, unqualified environmental marketing claims run the most risk of a charge of false advertising. The FTC Green Guides recommend that generic use of “green” be qualified to indicate the specific environmental benefit. The specific approach depends upon a variety of factors; however, the general recommendation is to ensure that the claim is substantiated and the benefits are not exaggerated.
3. It is worth noting that deceptive misdescriptiveness refusals can be overcome upon a showing of acquired distinctiveness under Section 2(f), 15 U.S.C. § 1052(f), or by amending to the Supplemental Register. The same is not true for marks that are deceptive.
4. Consider a different brand name if the product or service does not have any environmental attributes. Not only will the brand run into a potential refusal as being deceptive or deceptively misdescriptive, but in addition it may constitute false advertising. The FTC Green Guides encompass all forms of marketing, including brand names. The use of GREEN in the brand name has the tendency to convey to consumers some environmental benefit associated with the product or service. If this benefit cannot be substantiated, there is a risk of a false advertising claim, whether brought by a consumer, a competitor, the FTC or a state or local government agency. This risk increases the level of analysis required for clearance of environmental brands.
5. Collect marketing materials for the product or service. Any marketing materials that describe the environmental attributes should be retained and may be helpful during the prosecution process if requested by the examining attorney. For intent-to-use applications, you should advise your clients to incorporate such claims, if accurate, in future marketing materials.

Trademark clearance of a new brand encompasses a review of (1) whether the proposed brand is likely to be confused with another trademark and (2) registrability of the brand. Registrability is not just whether the mark is capable of trademark protection, in the standard sense of being merely descriptive versus suggestive. Instead, a trademark practitioner must also consider the impression or meaning of the mark. In the present context, do the products or services offered under the GREEN X brand have any environmental attributes? Because the USPTO assumes they do, applicants should take proactive steps to avoid potential deceptiveness and deceptive misdescriptiveness refusals.


Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

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