Kitaru Innovations Inc.

Trademark Trial and Appeal Board

Mar 26, 2013

No. 85211019 (T.T.A.B. Mar. 26, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: March 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kitaru Innovations Inc.
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Serial No. 85211019
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Joseph A. Sebolt of Sand & Sebolt,
for Kitaru Innovations Inc.
Michael Webster, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
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Before Bucher, Cataldo and Adlin,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Kitaru Innovations Inc. (“applicant”), a Bajan corporation, seeks registration on
the Principal Register of the mark GREEN SEAL (in standard character format) for
“adhesive tape and adhesive packaging tape and tape dispensers for home and office
use,” in International Class 16.1

1 Application Serial No. 85211019 was filed on January 5, 2011, based upon applicant’s
claim of use anywhere and use in commerce since at least as early as November 30, 2004.
Serial No. 85211019
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The examining attorney has refused registration of applicant’s mark under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that,
when used on or in connection with applicant's goods, the term GREEN SEAL is
deceptively misdescriptive of them.
Registration also has been finally refused under Section 2(a) of the Trademark
Act, 15 U.S.C. §1052(a), on the basis that such term comprises deceptive matter in
that it falsely and materially indicates that applicant's goods are environmentally
friendly when, in fact, they are not.
When the refusals were made final, applicant appealed and requested
reconsideration. After the examining attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusals to register.
I. Arguments
The examining attorney contends that the record shows overwhelmingly that
the word “green” is used frequently to refer to environmentally-friendly tape
products. Applicant makes no claim that its products are environmentally friendly.
However, applicant does point out that it uses the
term “Green Seal” to color code a line of adhesive
tape products that also includes “Black Seal,”
“Blue Seal” and “Double Blue Seal.” Moreover,
applicant points out that it uses this term in
connection with the imagery of a sea mammal.
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II. Evidence of Record
The examining attorney supported his refusal with the following evidence from
dictionary entries, the Internet and third-party registrations:
green - adjective
12. environmentally sound or beneficial: green computers. 2

green – adjective
13. (sometimes capital) concerned with or relating to conservation of the
world's natural resources and improvement of the environment: green
policies ; the green consumer 3

green adjective
12. a. Beneficial to the environment: green recycling policies.
b. Favoring or supporting environmentalism: green legislators who
strengthened pollution controls. 4

green adjective
2. ecological, conservationist, environment-friendly, ecologically sound,
eco-friendly, ozone-friendly, non-polluting trying to persuade
governments to adopt greener policies 5

green adjective
10 a : often capitalized : relating to or being an environmentalist political
movement
b : concerned with or supporting environmentalism
c : tending to preserve environmental quality (as by being recyclable,
biodegradable, or nonpolluting) 6

2 http://dictionary.reference.com/browse/green known as Dictionary.com Unabridged; based
on the RANDOM HOUSE DICTIONARY, 2011.
3 http://dictionary.reference.com/browse/green known as Dictionary.com Unabridged; based
on the COLLINS ENGLISH DICTIONARY - Complete & Unabridged 10th Edition, 2009.
4 http://www.thefreedictionary.com/green based on THE AMERICAN HERITAGE DICTIONARY
OF THE ENGLISH LANGUAGE, Fourth Edition, 2000.
5 http://www.thefreedictionary.com/green based on COLLINS THESAURUS OF THE ENGLISH
LANGUAGE, 2nd Ed., 2002.
6 http://www.merriam-webster.com/dictionary/green MERRIAM-WEBSTER,
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seal noun
6. anything that tightly or completely closes or secures a thing, as closures
or fastenings for doors and railroad cars, adhesive stamps and tapes
used to secure the flap of an envelope, etc.

seal noun, plural seals
1. any of numerous marine carnivores of the suborder Pinnipedia, including
the eared or fur seals, as the sea lion, and the earless or hair seals, as
the harbor seal. 7

8

9

10

7 http://dictionary.reference.com/browse/seal known as Dictionary.com Unabridged; based
on the RANDOM HOUSE DICTIONARY, 2011.
8 http://www.nashvillewraps.com/shipping-supplies/mc-014.html
9 http://solutions.3m.com/wps/portal/3M/en_US/3M-GREEN/Green-Products/Product-
Information/Product-Selector/
10 http://www.globeguardproducts.com/Eco_Friendly_Box_Sealing_Tapes_s/42.htm
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11
12

11 http://blog.practicallygreen.com/2011/08/
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13

12 http://carpet-rug.org/residential-customers/selecting-the-right-carpet-or-rug/green-label-
plus-adhesive-list.cfm
13 http://www.greenlifestyle.com/3m-to-offer-eco-friendly-scotch-tape as accessed by the
examining attorney on October 18, 2011.

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14

14 http://bluefrogcreations.blogspot.com/
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15

16

15 http://www.bubblefast.com/store/pc/Eco-Tape-c129.htm
16 http://www.ecopackstore.com/
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17

18

17 http://www.tapebrothers.com/Earth-Friendly-ECO-Duct-Tape-s/332.htm
18 http://www.ecopackstore.com/products/products/eco-friendly-tape.html
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19

20

19 http://www.greenadhesives.com/
20 http://celebrategreen.net/blog/crafts/crazy-for-this-eco-friendly-tape
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21

21 http://www.utrechtart.com/
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22

Finally, the examining attorney included copies of the following third-party
registrations for the record – many of which cover related goods in class 16:
BE GREEN PACKAGING for flexible and rigid packaging products
No claim is made to the exclusive right to use the words “Green Packaging” apart from the mark as shown.23
GREEN WITHOUT
COMPROMISE
for all kinds of plastic bags
No claim is made to the exclusive right to use the word “Green” apart from the mark as shown.24
for plastic materials for packaging
No claim is made to the exclusive right to use the words “Green Pack” apart from the mark as shown.25

22 http://www.lightninglabels.com/
23 Registration No. 3864891 issued on October 19, 2010.
24 Registration No. 3764445 issued on March 23, 2010.
25 Registration No. 4074502 issued on December 20, 2011.
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for all kinds of plastic bags
No claim is made to the exclusive right to use the word “Green” apart from the mark as shown.26
TRULY GREEN for all kinds of paper and tissues27
No claim is made to the exclusive right to use the word “Green” apart from the mark as shown.
GREEN QUEST for non-toxic cleaning preparations
No claim is made to the exclusive right to use the word “Green” apart from the mark as shown.28
ISLAND GREEN MOTORS for electric vehicles and parts therefor
No claim is made to the exclusive right to use the words “Green Motors” apart from the mark as shown.29
GROUND GREEN for plastic bags for packaging
No claim is made to the exclusive right to use the word “Green” apart from the mark as shown.30
CHEEKY GREEN for reusable shopping bags
No claim is made to the exclusive right to use the word “Green” apart from the mark as shown.31

for environmentally friendly metal hinges
No claim is made to the exclusive right to use the wording “Green Hinge of America” and the pictorial
representation of the recycling symbol apart from the mark as shown.32
for artificial growing media for use in
agriculture, horticulture and turf, all
designed for use with environmentally-
sustainable agricultural practices
No claim is made to the exclusive right to use the words “Green Technologies” apart from the mark as shown.33
LIVE GREEN TOGETHER for grain based foods and processed grains
No claim is made to the exclusive right to use the word “Green” apart from the mark as shown.34

26 Registration No. 3857818 issued on October 5, 2010.
27 Registration No. 3892259 issued on December 21, 2010.
28 Registration No. 4136169 issued on May 1, 2012.
29 Registration No. 4127596 issued on April 17, 2012.
30 Registration No. 3965959 issued on May 24, 2011.
31 Registration No. 4086438 issued on January 17, 2012.
32 Registration No. 4079202 issued on January 3, 2012.
33 Registration No. 4129720 issued on April 17, 2012.
34 Registration No. 4114073 issued on March 20, 2012.
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GREEN CUPBOARDS for online retail store services featuring
environmentally-friendly products
No claim is made to the exclusive right to use the word “Green” apart from the mark as shown.35
Green Legacy for environmentally-friendly plastic garbage
bags
No claim is made to the exclusive right to use the word “Green” apart from the mark as shown.36
GREEN OX for non-metal pallets and containers made of
environmentally-friendly materials
No claim is made to the exclusive right to use the word “Green” apart from the mark as shown.37

III. Analysis of Deceptively Misdescriptiveness Refusal
The test for deceptive misdescriptiveness has two parts. First it must be
determined if the matter sought to be registered misdescribes the goods. If so, then
it must be ascertained if anyone is likely to believe the misrepresentation. In re
Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984). See also In re Phillips-Van
Heusen Corp., 63 USPQ2d 1047 (TTAB 2002).
As the starting point for our analysis, we note that for a term to misdescribe
goods, the term must be merely descriptive of a significant aspect of the goods which
the goods could plausibly possess but in fact do not. In re Phillips-Van Heusen Corp., 63
USPQ2d 1047, 1051 (TTAB 2002). The goods at issue in this case are adhesive tape,
adhesive packaging tape and tape dispensers. The record shows overwhelmingly
that the word “green” directly conveys information to potential consumers that the
tape products are environmentally friendly. Yet applicant makes no such claim
about its products. Rather, applicant points out that it uses the term “Green Seal”
to color code a line of adhesive tape products that also includes “Black Seal,” “Blue

35 Registration No. 4073833 issued on December 20, 2011.
36 Registration No. 4114444 issued on March 20, 2012.
37 Registration No. 4135671 issued on May 1, 2012.
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Seal” and “Double Blue Seal.” Finally, as noted earlier, applicant also points out
that it uses this term in connection with the imagery of a sea mammal.
As seen above in the pages of blogs and advertisements from the Internet, an
increasingly common feature of adhesive and packaging tape is that it is
ecologically sound. Sometimes the focus is on how the tape deteriorates over time,
and others times it has to do with the use of recycled materials. The term “Green” is
frequently used to capture this idea. Accordingly, consumers encountering
applicant’s mark with the term “Green” will likely understand the term in context
to refer to the fact that this tape is an environmentally-friendly product.
The two word composite term, “Green Seal,” would be merely descriptive if
applicant’s goods were made of eco-friendly materials. Green would convey
information about the environmental claims that the tape possessed, and a most
important feature of adhesive tape or adhesive packaging tape is that it “seals,” or
“tightly or completely closes or secures a thing.”
Applicant argues that it merely “uses the term ‘Green’ to denote one of several
different products” in a product line that includes other colors. Of course, the
question of whether “Black Seal,” “Blue Seal” and “Double Blue Seal” function as
trademarks is not before us. The only part of applicant’s naming program before
us is how consumers will react to the term “Green Seal.” And under our
precedent, the applied-for mark must stand on its own. See In re Budge Mfg. Co., 857
F.2d 773, 8 USPQ2d 1259, 1260-61 (Fed. Cir. 1988), aff’g 8 USPQ2d 1790 (TTAB
1987) (LOVEE LAMB deceptive for “automotive seat covers”); In re ALP of S. Beach
Serial No. 85211019
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Inc., 79 USPQ2d 1009, 1014-1015 (TTAB 2006) (CAFETERIA deceptive for
“restaurants providing full service to sit-down patrons, excluding cafeteria-style
restaurants”). Moreover, whether or not affected consumers are aware of applicant’s
nomenclature scheme, we find that many of these consumers are likely to believe that
the choice of “Green” for the applied-for mark describes applicant’s line of adhesive
tapes as being environmentally friendly.
Similarly, applicant claims that consumers would understand that “Green
Seal,” as used on its packaging, refers to a sea mammal colored green, as shown
above in the imagery on the product packaging. However, even if applicant
consistently used this imagery on its packages, that is not part of the applied-for
mark. Furthermore, we cannot be sure how many prospective customers will notice
this usage, or whether upon seeing it, will automatically reject any suspicion that it
may still describe an environmentally-friendly product.
Moreover, this imagery cannot negate the misdescriptiveness with regard to
use of the literal word mark in relation to the goods. The green sea mammal
design, like any other features of applicant’s advertising, labeling, or information
found on the specimens that clarifies that the word green in the mark does not
refer to a character, quality, function, composition or use of the goods, simply is not
part of the mark at issue. Thus we find the first prong of the deceptive
misdescriptiveness test to be satisfied.
For the second prong of the deceptiveness analysis, we ask whether consumers
are likely to believe that the misdescription actually describes the goods. In this
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regard, the examining attorney submitted sufficient evidence into the record to
show that “green” is a common characteristic of adhesive and packaging tape.
Hence, based on the mark and the goods at issue, purchasers and prospective
consumers would be likely to believe the misrepresentation readily conveyed by the
term, namely, that applicant’s goods are environmentally-friendly. Thus, the second
prong of the deceptive misdescriptiveness test has also been satisfied.
Accordingly, we affirm the examining attorney’s refusal to register this term as
deceptively misdescriptive under Section 2(e)(1) of the Act.
IV. Analysis of Deceptiveness Refusal
The Court of Appeals for the Federal Circuit, our primary reviewing court, has
articulated the following test for whether a mark consists of or comprises deceptive
matter:
(1) Is the term misdescriptive of the character, quality,
function, composition or use of the goods?
(2) If so, are prospective purchasers likely to believe that
the misdescription actually describes the goods?
(3) If so, is the misdescription likely to affect a significant
portion of the relevant consumers’ decision to purchase?
In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988), aff’g
8 USPQ2d 1790 (TTAB 1987).
The first two factors have already been established in connection with the
refusal under Section 2(e)(1), as discussed above. What remains is to determine
whether the misdescription is likely to affect the decision to purchase, i.e., whether
the misdescription is material to consumers’ decision to purchase the goods. Id.
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The word “Green” is being used ever more frequently in recent years. The
Internet entries are contemporaneous with the prosecution of this application, and
the third-party registrations all issued within a recent two-year period. The urgency
for consumers to recycle as well as to purchase products made of recycled materials,
to use biodegradable products, to avoid toxic substances, etc., has never been
greater. The advertisements and blogs placed into the record show that a segment
of the relevant purchasers would be more inclined to purchase eco-friendly adhesive
tape and adhesive packaging tape products. The level of excitement on the part of
consumers reflected above over the availability of environmentally friendly / green
tape products demonstrates that this characteristic would be material to the
decision of consumers to purchase applicant’s goods. Accordingly, we find on this
record that such a misdescription is likely to affect the decision to purchase the
goods, and the third and final prong of the Section 2(a) deceptiveness test has also
been satisfied.
In sum, after reviewing the evidence of record, we find that all three prongs of
the deceptiveness test have been satisfied: 1) applicant’s mark misdescribes its
goods because consumers would understand the term “Green Seal” in the context of
the goods sought to be registered to refer to environmentally friendly products – a
characteristic applicant’s goods do not possess; 2) due to the growing availability of
environmentally-friendly adhesive tape and packing tape on the market, consumers
are likely to believe the misdescription; and 3) due to the fact that being “green” is a
desirable characteristic of tape, the misrepresentation will materially affect the
Serial No. 85211019
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decisions of consumers whether to purchase the goods. The examining attorney’s
evidence established a prima facie case against registration, and applicant did not
meet its burden to come forward with countering evidence to overcome the refusal.
See Budge, 8 USPQ2d at 1260-61.
Therefore, the trademark refusal under Section 2(a) is also affirmed on the
ground that the mark sought to be registered is deceptive of a feature or ingredient
of the identified goods under Section 2(a) of the Act.
Decision: The refusals to register applicant’s GREEN SEAL mark under
Sections (2)(e)(1) and 2(a) of the Act are hereby affirmed.