SolarWindow Technologies, Inc.Download PDFTrademark Trial and Appeal BoardJun 18, 201986615006 (T.T.A.B. Jun. 18, 2019) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: June 18, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re SolarWindow Technologies, Inc. _____ Serial No. 86615006 _____ John J. Dresch of Dresch IP Law PLLC, for SolarWindow Technologies, Inc. Susan A. Richards, Trademark Examining Attorney, Law Office 103, Stacy Wahlberg, 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 the mark SOLAR WINDOW TECHNOLOGIES, INC. and design, as displayed below Serial No. 86615006 - 2 - 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 9.1 The Examining Attorney has issued a final refusal to register 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 disclaim SOLAR WINDOW TECHNOLOGIES, INC. because it is merely descriptive of Applicant’s identified goods within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), and thus an unregistrable component of the mark.2 In particular, the Examining Attorney asserts that “solar window” is a generic term for windows that generate electricity and consumers understand the term in that manner, “technology” describes the identified goods, and “solar window technologies” is a recognized expression that refers to windows that have been treated or manufactured so that they feature the capacity to generate electricity. She also asserts that the term “Inc.” is an entity designation that has no source identifying capacity and has no effect on 1 Application Serial No. 86615006 was filed on April 30, 2015, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). The description of the mark reads: “The mark consists of an elongated rectangle having three horizontal lines centered across the top half of the rectangle and three vertical lines centered across the bottom half of the rectangle. To the right of the rectangle are the words ‘SOLAR’, ‘WINDOW’ and ‘TECHNOLOGIES, INC.’, each appearing on a separate line.” Color is not claimed as a feature of the mark. 2 In her brief, the Examining Attorney aptly summarized the extensive procedural history of this application. 33 TTABVUE 3-5. We see no need to repeat that background in this decision as Applicant and the Examining Attorney are familiar with it. We simply highlight that the Board allowed Applicant an opportunity to file a supplemental brief to address evidence and arguments made of record by the Examining Attorney on remand (24 and 26 TTABVUE), after Applicant had filed its brief on December 2, 2016 (7 TTABVUE), but Applicant did not do so. Nor did Applicant file a reply brief. Serial No. 86615006 - 3 - the descriptiveness of the term SOLAR WINDOW TECHNOLOGIES, INC. as a whole. Both Applicant and the Examining Attorney have filed briefs. We affirm the refusal 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 Serial No. 86615006 - 4 - 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). The determination of whether a mark is merely descriptive must be made “in relation to the particular goods for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use or intended use.” Bayer Aktiengesellschaft, 82 USPQ2d at 1831 (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978)). In other words, the question is not whether someone presented only with the mark could guess the goods listed in the identification of goods. Rather, the question is whether someone who knows what the goods are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); Abcor, 200 USPQ at 218. In addition, it is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods, only that it describe a single, significant ingredient, quality, characteristic, function, feature, purpose or use of the goods. Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (quoting In re Stereotaxis, 77 USPQ2d at 1089); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Serial No. 86615006 - 5 - II. Analysis The Examining Attorney submitted dictionary definitions of the four individual words and the unitary term “solar window,”3 and printouts from third-party websites, the LexisNexis database, and Applicant’s website, as evidence that “solar window” and “technology” have a recognized meaning when applied to Applicant’s goods, and that “solar window technology” and “solar window technologies” are unitary expressions that describe products that are new or in development, including those identified in the application, that are or will be used to make solar windows. For example, a July 26, 2016 post by Damien Moyer on the CAM Solar website4 includes an overview of solar windows, which he identifies as a “new technology,” and mentions Applicant’s coatings as a type of technology that will not be available until 2019: WHAT ARE SOLAR WINDOWS? Solar windows are windows that function as solar panels to harvest the sun’s energy and convert it to electricity. 3 The SOLAR ENERGY DICTIONARY (1982), attached to the April 12, 2017 Office Action, TSDR pp. 111-113, defines “solar window[s]” as “Openings that are designed or placed primarily to admit solar energy into a space.” Individual definitions from the OXFORD ENGLISH DICTIONARY of “solar,” “window,” “technology” and the abbreviation “tech” and THE AMERICAN HERITAGE DICTIONARY are attached to the August 17, 2018 Office Action, TSDR pp. 11, 17-50. Of particular note, THE AMERICAN HERITAGE DICTIONARY defines “technology” and the plural “technologies” as “a. the application of science, especially to industrial or commercial objectives. b. The scientific method and material used to achieve a commercial or industrial objective.” Id. at 17. Citations to the TSDR database are to the downloadable .pdf format. All emphasis is supplied. 4 https://www.gocamsolar.com/, attached to April 12, 2017 Office Action, TSDR pp. 77-79. Serial No. 86615006 - 6 - TYPES OF SOLAR WINDOWS Solar windows are available as separate units or are created by applying a photovoltaic film onto window glass. Some manufacturers create independent solar windows by sandwiching existing solar panel cells between two layers of glass. … Other independent window units are made from photovoltaic glass. “Invisible wires” collect the energy made from the photovoltaic glass and transfer it to the energy grid. These panels work by using thin-film technology to apply a very lean coating of the photovoltaic onto a conductive glass layer. Photovoltaic films allow building owners to modify their existing windows installing a film on the inside surface of the glass. … POTENTIAL BENEFITS OF SOLAR WINDOWS … Solar windows can replace existing windows and help building owners achieve partial independence from the energy grid. Dense urban areas could benefit from this technology because of the large vertical window space and lack of rooftops for solar panels. Solar windows could also help offset peak energy demands. … TECHNOLOGICAL CHALLENGES OF SOLAR WINDOWS Solar windows are a new technology, so there are several disadvantages that manufacturers are still working to overcome. … Solar windows cost an estimated 40 percent more than traditional windows. … 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. Many revolutionary solar windows currently only exist in a laboratory setting. Serial No. 86615006 - 7 - Regardless, solar windows could transform the photovoltaics industry, but there has not yet been enough real-world testing to know if the technology will be financially viable. For building owners who don’t have the room for traditional solar panels, or who are interested in supporting this emerging industry, solar windows are an attractive option. Printouts from other third-party websites also use the term “solar windows” as a generic reference to windows that function as solar panels or that use solar rays as an energy source. For example, a May 3, 2012 article by Dave Levitan posted on the environment360 website titled “Will Solar Windows Transform Buildings to Energy Producers”5 discusses the idea of using windows to generate solar power, and uses the term “technologies” descriptively to refer to ways to turn the former into the latter: Solar windows, a subset of the growing field known as building-integrated photovoltaics, are based on the concept that the window doesn’t need to be 100 percent transparent, and a solar panel doesn’t need to be 100 percent opaque. Several ways currently exist to turn a window into a power-generating device, from thin-film silicon, to dye-sensitized solar cells, to tiny organic cells. … So far, very few examples of skyscrapers with solar windows exist …. Several technologies have emerged for solar windows, though none have yet taken off in a meaningful way. … 5 e360.yale.edu/, attached to April 12, 2017 Office Action, TSDR. pp. 80-83. Serial No. 86615006 - 8 - Some experts think it’s just a matter of time before solar windows are a sound investment. … Several companies involved in solar window production say they are within a year or two of scaling up or bringing a product to market, and they maintain that cell efficiencies will continue to rise and prices continue to fall, as is the case with solar panels. And a September 4, 2015 article by Lucas Mearian on the Computerworld website titled “Solar Windows Can Power Buildings”6 uses “solar windows” generically in connection with the method by which strips of photovoltaic (PV) cells are “sandwiched” between layers of glass: “Solaria uses existing photovoltaic (PV) cells and slices them into 2.5 mm strips. It then sandwiches those thin PV strips between glass layers in a window.” The article also uses the term “technology” to refer to this method: “Solaria’s solar window technology can achieve a solar efficiency of about 8% to 10%” as well as to Applicant’s identified goods: “Another company, SolarWindow Technologies, is pitching a different form of transparent PV cell technology for new constructions, replacement windows and retrofits to existing windows.” … “SolarWindow’s technology can come with micro DC-to-AC power inverters, allowing the electricity to be used only in one room with a solar window.” Applicant also uses the term “technology” on its website to describe its identified goods:7 6 http://www.computerworld.com, attached to March 20, 2018 Office Action, TSDR. pp. 31-41. 7 www.solarwindow.com, attached to August 17, 2018 Office Action, TSDR pp. 12-16, 51. Serial No. 86615006 - 9 - What is SolarWindow™? 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. SolarWindow™ could potentially be used on any of the more than 85 million commercial and residential buildings in the United States alone. SolarWindow technology is the subject [of] a patent-pending technology. How does SolarWindow™ work? SolarWindow™ coatings utilize an organic photovoltaic (OPV) solar array composed of ultra-small solar cells, fabricated using mostly hydrogen-carbon based substances. OPV cells are a third generation solar technology that convert light energy into electricity by the photovoltaic effect. When interconnected in a grid-like arrangement, an array of these OPV cells increase the voltage potential and electrical current in a given area. The Company is developing a proprietary OPV solar coating to generate electricity on glass and flexible plastics, while remaining see-through. In the section titled “What products are being developed?” Applicant’s website lists several “product development goals for our SolarWindow™ technology” including “A flat glass product for installation in new commercial towers under construction and replacement windows.” Serial No. 86615006 - 10 - The foregoing excerpts illustrate descriptive use by third parties of the constituent elements of the wording “solar window” and “technology” or “technologies.”8 The record also contains examples of third-party uses of the composite terms “solar window technology” and “solar window technologies” to describe products that are applied to existing windows to convert them to solar windows, or to create solar windows in the first instance, including films that are applied to reduce glare from the sun and to improve energy costs, strips of PV cells that are inserted or sandwiched between layers of glass or glazing, and other methods. For example,9 • the article from Computerworld,10 excerpted above, states: “The solar window technologies utilize varying methods of transmitting the energy that the PVs produce to a building’s internal power infrastructure.”; • an August 24, 2015 article from State News Service titled “Capture Sunlight With Your Window”11 states: Sergio Brovelli, the lead researcher on the Italian team, concluded: Quantum dot solar window technology, of which we had demonstrated the feasibility just over one year ago, now becomes a reality that can be transferred to the industry in the short to medium term, allowing us to convert not only rooftops, as we do now, but the whole body 8 The record contains several other examples, the most pertinent of which are outlined in the Examining Attorney’s brief, 33 TTABVUE 8. 9 The record contains several other examples, the most pertinent of which are outlined in the Examining Attorney’s brief, 33 TTABVUE 11-13. 10 http://www.computerworld.com, attached to March 20, 2018 Office Action, TSDR pp. 31- 41. 11 April 12, 2017 Office Action, TSDR pp. 25-27. Serial No. 86615006 - 11 - of urban buildings, including windows, into solar energy generators.; and • a January 24, 2012 article by Lacey Johnson, published in ClimateWire, headlined “RENEWABLE ENERGY: Boom in solar panels injects NIMBY battles into neighborhoods”12 states: The startup company Pythagoras Solar began testing solar window technology in Chicago’s Willis Tower (formerly the Sears Tower) last year. It installed a small double-pane window embedded with solar cells, and, if all goes well, the tower’s owners plan to expand the project to cover the entire south face of the building. A Norwegian company, EnSol, is also developing a solar window that requires a thin film to be applied to glass. Its website says it hopes to bring the product to market by 2016. The evidence amply supports a finding that the terms “solar window” and “technologies” and the composite “solar window technologies” merely describe a significant feature of Applicant’s identified goods, namely, that they are a type of technology used to create solar windows by application of the coatings to existing windows, or for use during the manufacturing process.13 The terms “solar window” and “technologies” do not lose their descriptive significance when combined, nor does the combination create an incongruity as applied to the goods which would render the combination registrable without a disclaimer. See, e.g., In re Colonial Stores Inc., 394 12 April 12, 2017 Office Action, TSDR pp. 25, 34-35. 13 Applicant’s argument concerning the purported deficiencies of the Examining Attorney’s evidence pertains only to evidence submitted before December 2, 2016, the date on which Applicant filed its appeal brief, and does not address the evidence attached to the April 12, 2017, March 20, 2018, and August 17, 2018 Office Actions, on which our findings are based. We reiterate that Applicant had the opportunity to file a supplemental brief to address this evidence, but Applicant did not do so. Serial No. 86615006 - 12 - F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPRICE for “bakery products”). In fact, the record demonstrates that when used in combination, the term “solar window technologies,” whether in the singular or plural form, identifies a process used, or intended to be used, by Applicant and others to convert windows into solar windows or to manufacture windows as solar windows. And, as the Examining Attorney points out, the term “INC.” is an entity designation with no source identifying capacity. In re The Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB 1988) (“‘PAINT PRODUCTS CO.’ is no more registrable for goods emanating from a company that sells paint products than it would be as a service mark for the retail paint store services offered by such a company”). As such, the wording SOLAR WINDOW TECHNOLOGIES, INC. is merely descriptive of the identified goods. We find unpersuasive Applicant’s argument that the wording and design element create a unitary whole such that a disclaimer is not necessary. 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.”). Rather, the design in Applicant’s mark, which appears to the left of the wording, is visually separate from the wording. III. Conclusion Based on the foregoing, we have no doubt that consumers who see Applicant’s mark SOLAR WINDOW TECHNOLOGIES, INC. and design, used on the identified Serial No. 86615006 - 13 - goods, immediately would understand that one significant purpose of the electricity generating coatings is to transform ordinary glass into electricity-generating windows or to create such windows during the manufacturing process. See, e.g., In re Phoseon Tech. Inc., 103 USPQ2d 1822, 1822 (TTAB 2012) (SEMIDCONDUCTOR LIGHT MATRIX merely descriptive for light curing systems and UV curing systems). In addition, the design element is visually distinct from the wording such that the entire mark is not a unitary expression. Accordingly, the term SOLAR WINDOW TECHNOLOGIES, INC. in Applicant’s mark is merely descriptive of the identified goods and the mark is unregistrable absent a disclaimer of the wording. Decision: The refusal to register Applicant’s marks based on the requirement, made under Trademark Act § 6(a), for a disclaimer of SOLAR WINDOW TECHNOLOGIES, INC., is affirmed. However, this decision will be set aside if Applicant submits the required disclaimer in each application to the Board within thirty days from the date of this decision.14 Trademark Rule 2.142(g), 37 CFR § 2.142(g). 14 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 is as follows: “No claim is made to the exclusive right to use SOLAR WINDOW TECHNOLOGIES, INC. apart from the mark as shown.” See Omaha Nat’l, 2 USPQ2d at 1861. Copy with citationCopy as parenthetical citation