The trademark ECOTWEED for use on footwear made from “a tweed-like material” cannot be registered, a U.S. trademark body recently decided. In an opinion early this month, a panel of administrative judges for the Trademark Trial and Appeal Board (“TTAB” or the “Board”) upheld a U.S. Patent and Trademark Office (“USPTO”) examining attorney’s decision to reject the trademark application for registration on the basis that the ECOTWEED mark is deceptive when used in connection with the applicant’s goods, which consist of footwear material made from recycled plastic bottles. The U.S. trademark body’s decision underscores growing scrutiny over sustainability-related claims in branding.
A Bit of Background: After several rounds of back-and-forth before the USPTO, an examining attorney refused to register Decatur, Texas-based Twisted X, Inc.’s ECOTWEED mark for use on “footwear made of a tweed-like material,” finding that the mark was deceptive under Section 2(a) of the Lanham Act. The problem, according to the USPTO: Consumers are likely to believe the Twisted X’s plastic-based shoes are made from actual tweed – a rough woolen fabric traditionally made from sheep’s wool – when, in reality, they are not.
Following a loss before the USPTO, Twisted X called on the TTAB to reconsider the rejection.
Sustainability-Centric Trademarks
Taking on the matter, the TTAB applied the three-part test developed by the Federal Circuit in In re Budge Mfg. Co. to determine whether registration of the ECOTWEED mark must be refused as deceptive. Against this background, the TTAB’s administrative judges found that: (1) ECOTWEED misdescribes the character or composition of the footwear; (2) consumers are likely to believe that the misdescription is accurate; and (3) the misdescription would be material to consumers’ purchasing decisions, given tweed’s reputation for durability and insulation.
With this in mind, the Board found that the mark could not be registered on either the Principal or Supplemental Register.
Not an across-the-board decision, one of the three administrative trademark judges issued a dissenting opinion, arguing that consumers are not likely to be misled about the nature of the ECOTWEED mark. In his dissent, Administrative Trademark Judge Mark A. Thurmon criticized the majority for ignoring the fact that Twisted X’s product description explicitly states that the material is “tweed-like,” meaning it is not real tweed. The administrative judge also pointed to other trademarks incorporating “eco” to signal sustainable alternatives rather than deception, such as ECOWOOD for synthetic wood products.
Finally, Administrative Judge Thurmon questioned whether the USPTO’s reasoning was internally consistent, arguing that the Board’s approach could unfairly target brands using eco-conscious terminology in ways consumers already understand.
The Bigger Picture
While the TTAB’s opinion is not precedential, it could have broader implications for brands navigating the realms of sustainability marketing and trademark law in the sense that the decision suggests that companies may face scrutiny if/when they make use of “eco” or similar prefixes in their branding. No small matter, as TFL previously reported, companies’ adoption of “green trademarks” is on the rise, with applications for “green” marks (i.e., ones whose goods/services descriptions make mention of sustainability terminology) increasing “both in absolute figures and as a proportion of all European Union trademark filings” in recent years.
As regulators and consumers push for greater transparency when it comes to sustainability-centric marketing claims, companies that are looking to highlight environmentally friendly attributes by way of their branding (and there are plenty of companies aiming to do just) will need to ensure that their trademarks do not imply qualities that the products/services at issue do not actually possess. As companies continue to innovate with innovations, such as recycled materials, they may need to tread carefully when selecting trademarks to avoid similar legal pitfalls.
In terms of Twisted X, in particular, it now has the option to appeal the Board’s decision to the U.S. Court of Appeals for the Federal Circuit or reconsider its branding strategy. In the meantime, the matter serves as a warning to companies across industries (regardless of whether they are seeking trademark registrations) about the legal nuances associated with sustainability-focused branding.
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