SolarWindow Technologies, Inc.

Trademark Trial and Appeal Board

Jun 18, 2019

87185822 (T.T.A.B. Jun. 18, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: June 18, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re SolarWindow Technologies, Inc.
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Serial Nos. 87185809 and 871858221
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John J. Dresch of Dresch IP Law PLLC,
for SolarWindow Technologies, Inc.
Tarah Hardy Ludlow, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
_____

Before Cataldo, Shaw and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
SolarWindow Technologies, Inc. (“Applicant”) seeks registration on the Principal
Register of two marks:
(1) SOLAR WINDOW … CLEARLY ELECTRIC and design, as displayed below

1 The Board previously granted the Examining Attorney’s motion to consolidate the two
appeals. 10 and 11 TTABVUE. All TTABVUE and TSDR citations herein refer to the file for
Serial No. 87185809, in .pdf format. All emphasis is supplied unless otherwise noted.
Serial Nos. 87185809 and 87185822
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and
(2) SOLARWINDOW and design, as displayed below

both 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 9.2
In response to the Examining Attorney’s requirement of a disclaimer of the
assertedly unitary expression SOLAR WINDOW in each application, Applicant has
disclaimed the individual words SOLAR and WINDOW.3 In each application, the
Trademark Examining Attorney has refused registration of Applicant’s mark under
Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), based on Applicant’s failure
to comply with the requirement to provide a single disclaimer of SOLAR WINDOW.

2 Application Serial Nos. 87185809 and 87185822, respectively, were filed on September 28,
2016, based upon Applicant’s allegation of a bona fide intention to use the marks in commerce
under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). The description of the former
reads: “The mark consists of three successively overlapping glass windows followed by the
word mark “SolarWindow...clearly electric.” The description of the latter reads: “The mark
consists of three successively overlapping glass windows followed by the word mark
SolarWindow.” Color is not claimed as a feature of either mark.
3 Applicant also disclaimed the word ELECTRIC in Application Serial No. 87185809.
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When the refusals were made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the requests for
reconsideration, the appeals were resumed. We affirm both refusals to register absent
the required disclaimer.
I. Applicable Law
The Director of the USPTO “may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable.” Trademark Act Section
6(a), 15 C.F.R. § 1056(a). Merely descriptive terms are unregistrable under
Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), and therefore are subject to
disclaimer if the mark is otherwise registrable. See, e.g., In re Omaha Nat’l Corp., 819
F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re RiseSmart, Inc., 104 USPQ2d 1931,
1934 (TTAB 2012). Failure to comply with a disclaimer requirement is a ground for
refusal of registration. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d
1262 (Fed. Cir. 2015).
A term is merely descriptive of goods or services within the meaning of Section
2(e)(1) “if it immediately conveys knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is used.” In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012)
(quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed.
Cir. 2007)); see also In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370,
1371 (Fed. Cir. 2004) (quoting Estate of P.D. Beckwith, Inc. v. Comm’r, 252 U.S. 538,
543 (1920) (“A mark is merely descriptive if it ‘consist[s] merely of words descriptive
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of the qualities, ingredients or characteristics of’ the goods or services related to the
mark.”)), cited with approval in In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574,
1575 (Fed. Cir. 2015). A term need not immediately convey an idea of each and every
specific feature of the goods or services in order to be considered merely descriptive;
rather, it is sufficient that the term describes one significant attribute, function or
property of the goods or services. Chamber of Commerce, 102 USPQ2d at 1219
(quoting In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir.
2005)); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Where a proposed mark consists of multiple words, the mere combination of
descriptive words does not necessarily create a nondescriptive expression. In re
Phoseon Tech. Inc., 103 USPQ2d 1822, 1826 (TTAB 2012) (SEMIDCONDUCTOR
LIGHT MATRIX merely descriptive for light curing systems and UV curing systems).
If each component retains its merely descriptive significance in relation to the goods
or services, the combination results in a composite that is itself merely descriptive
and unregistrable. Oppedahl & Larson, 71 USPQ2d at 1371. On the other hand, if a
proposed mark comprising a combination of merely descriptive components creates a
unitary word or phrase with a unique, nondescriptive meaning, or if the composite
has an incongruous meaning as applied to the goods or services, the mark is
registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 385 (CCPA
1968) (SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363, 364-65
(TTAB 1983) (SNO-RAKE for “a snow removal hand tool having a handle with a
snow-removing head at one end, the head being of solid uninterrupted construction
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without prongs”); see also In re EBS Data Processing, 212 USPQ 964, 966 (TTAB
1981) (explaining composite versus unitary mark in context of disclaimer
requirement).
Elements comprising a unitary expression should be considered together. When
the unregistrable unitary expression is a portion of a mark, it will not be shielded
from a disclaimer requirement simply because the expression is unitary. If a unitary
phrase consisting of individually descriptive components does not result in a
combination presenting something more than the sum of its parts, then the phrase is
merely descriptive as a whole, and must be disclaimed as a whole. In re Wanstrath, 7
USPQ2d 1412, 1413 (Comm’r Pats. 1987); see, e.g., In re Med. Disposables Co., 25
USPQ2d 1801, 1804 (TTAB 1992) (MEDICAL DISPOSABLES is a unitary expression
that must be disclaimed in its entirety) Am. Speech-Language-Hearing Ass’n v. Nat’l
Hearing Aid Soc., 224 USPQ 798, 804 n.3 (TTAB 1984) (CERTIFIED HEARING AID
AUDIOLOGIST found to be “a unitary expression that should be disclaimed in its
entirety”).
When an examining attorney requires a disclaimer of a merely descriptive phrase
as a whole, individually disclaiming each component is improper because such an
expression is unitary and must be considered as a whole. Of course, an applicant faced
with such a requirement may argue that the terms are not unitary and therefore may
be disclaimed individually. Separate disclaimers of adjacent components of a mark
may be accepted where they do not form a grammatically or otherwise unitary
expression, and each component retains its separate descriptive significance. In re
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Grass GmbH, 79 USPQ2d 1600, 1603 (TTAB 2006) (Board reversed requirement of
disclaimer of “SNAP ON 3000” in its entirety and accepted separate disclaimers of
the descriptive phrase “SNAP ON” and the model number “3000”).
II. Analysis
Applicant seeks to register SOLAR WINDOW … CLEARLY ELECTRIC and
design, , and SOLARWINDOW and design,
. The Examining Attorney has required Applicant to
disclaim the exclusive right to use SOLAR WINDOW, apart from the marks as shown,
because SOLAR WINDOW is asserted to be a unitary expression that is merely
descriptive of Applicant’s identified goods, and therefore unregistrable.
As evidentiary support, the Examining Attorney submitted dictionary entries
defining the term “solar” as “of, derived from, relating to, or caused by the sun,” and
“window” as “an opening especially in the wall of a building for admission of light and
air that is usually closed by casements or sashes containing transparent material
(such as glass) and capable of being opened and shut.” March 20, 2018 Final Office
Action, TSDR 6-23. She also submitted printouts from six commercial websites and
blogs to show that “solar window” is a recognized term in the relevant industry to
refer to a type of window that generates (or will generate) electricity from the sun:
1. A July 26, 2016 post by Daniel Moyer on the www.gocamsolar.com website
titled “What are Solar Windows?” explains: “Solar windows are windows
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that function as solar panels to harvest the sun’s energy and convert
it to electricity. Building owners can purchase solar windows to replace
existing windows or buy solar film to retrofit existing windows.” (emphasis in
original). In a section titled “Technological Challenges of Solar Windows,” the
author recognizes that “Solar windows are a new technology,” and that
“Some of the largest advances in solar window technology are not yet
available for purchase. SolarWindow (Applicant) coatings that are applied to
the inside of existing windows won’t be manufactured until at least 2019. …
Regardless, solar windows could transform the photovoltaics industry. ...” Id.
at TSDR 24-26.
2. A July 13, 2017 post by Jacob Marsh on the https://news.energysage.com
website titled “Solar windows: can you turn your windows into solar panels?”
notes that “Any type of technology that uses windows on buildings to generate
electricity from the sun could be classified as a ‘solar panel window.’ Solar
window technology isn’t ready for commercial production yet, which means
that they aren’t available for you to install in your home. However, there are
several technologies being developed that could hit the mass market in the
near future. Solar windows would hypothetically be able to replace standard
glass window panes, while traditional solar panels are an addition to a
previously installed roof.” Id. at TSDR 27-30.
3. A September 4, 2015 post by Lucas Mearian on the
https://www.computerworld.com website titled “Solar windows can power
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buildings” discusses the possibility of using office building windows in
Manhattan to “generate electricity through transparent photovoltaics,”
highlighting Applicant as one of two companies who are “hoping to sell the
technology to window manufacturers.” Id. at TSDR 31-41.
4. A January 14, 2014 post by Starre Vartan on the www.mnn.com website titled
“Solar windows? How the latest technology makes it possible.” recognizes the
“stumbling blocks” of using solar panels on buildings and homes to generate
energy, and muses “[b]ut what if another part of a building could be used to
make solar power? Say, a big glassy façade, or even just your living room’s bay
window, or your bedroom’s picture window? … Since solar panels are tied to
the availability of silicon, solar windows can also save money since they are
not reliant on silicon, but can be made from various types of inexpensive
plastic.” Id. at TSDR 42-47.
5. A December 4, 2017 post from Barbara Eldredge on the www.curbed.com
website titled “Game-changing solar window becomes opaque in full sun to
generate energy” discusses “a new solar window prototype from the National
Renewable Energy Laboratory (NREL) [that] is making headlines for its ability
to responsively harness the power of the sun. The window’s genius is that it
turns opaque and generates energy only to the degree of sunshine it gets.
Otherwise, it looks like normal clear glass. Existing solar windows use
embedded, static sensors that can only capture a fraction of the sunlight hitting
the glass’ surface. But the prototype’s thermochromic glass means that it can
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use the entire surface to make power—but only when it’s sunny out.” According
to Lance Wheeler, a scientist at NREL, “the technology could be used in
vehicles, buildings, and more. A press release states also [sic] suggests that
electricity generated by the solar window ‘could charge batteries to power
smartphones or on-board electronics such as fans, rain sensors, and motors
that would open or close windows as programmed.’” Id. at TSDR 48-53.
6. A January 22, 2018 post from Robert F. Service on the www.sciencemag.org
website titled “New smart windows darken in the sun—and generate
electricity at the same time” discusses different types of “perovskite solar
window[s]” that switch from opaque to transparent, and notes that “The
newest solar windows still have their downsides. For starters, they don’t
switch from transparent to opaque unless heated to more than 100ºC. Plus,
their efficiency is only about 7%, well below conventional solar cells.” Id. at
TSDR 54-57.
The Examining Attorney also points to four excerpts from Applicant’s website (id.
at TSDR 58-64), which explain that the identified “electricity generating coatings”
are (or are intended to be) applied to glass and plastic surfaces, such as windows, to
generate electrical energy from the sun:
1. SolarWindow™ is a novel technology for generating sustainable electricity
by collecting light energy from the sun and artificial sources. The
Company’s SolarWindow™ technology generates electrical energy when
the electricity-generating coating is applied to glass and plastic surfaces.
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2. SolarWindow™ Technologies, Inc. (OTCQB: WNDW) is developing first-of-
their-kind electricity-generating-see-through windows and products for
America’s 85 million detached homes and commercial buildings.
3. SolarWindow™ modules are created by applying ultra-thin layers of liquid
coatings on to glass and flexible plastics. These liquid coatings produce
ultra-small solar cells and form groups called “arrays.” Because of the
family of materials we use and the way in which we architect our design,
the final product is generically referred to as an “organic photovoltaic solar
array” (OPV).
4. SolarWindow™ Technologies, Inc. (OTCQB: WNDW) announced today that
the company has advanced collaboration with one of the world’s leading
suppliers of organic photovoltaic materials, used by SolarWindow™ to coat
ordinary glass and turn it into electricity-generating windows.
Applicant contends that the evidence from the third-party websites is not
relevant because it refers to the “actual physical structure of windows themselves
(i.e., complete window structures including window casings with glass)” rather than
to the coatings identified in the applications. App. Br., 8 TTABVUE 5-6. However,
terms may be merely descriptive if they describe a significant function or purpose of
a product. Chamber of Commerce of the U.S., 102 USPQ2d at 1219. The evidence from
the third-party websites supports a finding that windows that generate electricity
from the sun commonly are referred to as “solar windows.” And as the excerpts from
Applicant’s website confirm, a significant purpose or function of Applicant’s identified
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“electricity generating coatings applied to various substrate surfaces for use in
renewable energy, namely, chemicals for use in connection with solar cells,” is to “coat
ordinary glass and turn it into electricity-generating windows.”
Based on the foregoing, we have no doubt that consumers who see Applicant’s
marks SOLARWINDOW … CLEARLY ELECTRIC and design, and
SOLARWINDOW and design, used on the identified goods, immediately would
understand that one significant purpose of the electricity generating coatings is to
transform ordinary glass into electricity-generating windows. The definitions of the
words SOLAR and WINDOW show their descriptiveness in this context, and as the
above evidence makes clear, the combination of SOLAR and WINDOW does not evoke
a new and unique commercial impression. Accordingly, the term SOLAR WINDOW
in each of the marks is merely descriptive of the identified goods.
The record also supports a finding that the term SOLAR WINDOW is a merely
descriptive unitary phrase or grammatical expression in which SOLAR modifies
WINDOW. The combination of the terms SOLAR and WINDOW does not convey any
meaning or connotation about the identified goods that is different from the
individual components. That is, when viewed in relation to Applicant’s goods, the
individual components SOLAR and WINDOW retain their merely descriptive
significance when combined. A consumer need not exercise imagination or thought to
discern the nature of Applicant’s identified goods, which are “electricity generating
coatings applied to various substrate surfaces for use in renewable energy, namely,
chemicals for use in connection with solar cells.” See, e.g., Phoseon, 103 USPQ2d at
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1822. The third-party website evidence provides further support for this finding,
because it shows common usage of “solar window” as a unitary term describing a
window that generates electricity from the sun. Also, the placement of the words to
the right of the design of three overlapping glass panels, and in the case of the mark
SOLARWINDOW … CLEARLY ELECTRIC, above the wording CLEARLY
ELECTRIC and in larger font, makes the wording visually prominent and easy to
separate from the other elements of each mark such that neither mark is unitary in
its entirety. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21 USPQ2d 1047,
1052 (Fed. Cir. 1992) (finding EUROPEAN FORMULA and design for cosmetics not
unitary since the “elements are not so merged together that they cannot be regarded
as separate” and the proximity of the words to the design feature “does not endow the
whole with a single, integrated, and distinct commercial impression.”).
III. Conclusion
In sum, we find that when applied to Applicant’s identified goods, SOLAR
WINDOW immediately describes, without any kind of mental reasoning, a coating
that turns ordinary glass into windows that generate electricity from the sun.
Moreover, we find that SOLAR WINDOW is a merely descriptive unitary phrase,
expression, or term that must be disclaimed in its entirety. Applicant’s disclaimer of
the words individually is not acceptable.
Decision: The refusal to register Applicant’s marks based on the requirement,
made under Trademark Act § 6(a), for a disclaimer of SOLAR WINDOW, is affirmed
in each application. However, this decision will be set aside if Applicant submits the
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required disclaimer in each application to the Board within thirty days from the date
of this decision.4 Trademark Rule 2.142(g), 37 CFR § 2.142(g).

4 Although the wording SOLAR WINDOW appears as a single word in the marks, Applicant
must disclaim the words in their correct spelling. The standardized printing format for the
required disclaimer text in Serial No. 87185822 is as follows: “No claim is made to the
exclusive right to use SOLAR WINDOW apart from the mark as shown.” See Omaha Nat’l, 2
USPQ2d at 1861. In light of the existing disclaimer of ELECTRIC in Serial No. 87185809,
the standardized printing format for the required disclaimer text in that application is as
follows: “No claim is made to the exclusive right to use SOLAR WINDOW or ELECTRIC
apart from the mark as shown.” Id.