IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Serial No.

86/156,965

Mark:

Applicant:

Ethical Electric, Inc.

Examining Attorney:

William D. Jackson
Law Office 117

APPLICANTS EX PARTE APPEAL BRIEF

TABLE OF CONTENTS
TABLE OF CONTENTS................................................................................................................. i
INDEX OF CITATIONS................................................................................................................ ii
PROSECUTION HISTORY........................................................................................................... 1
SUMMARY OF EVIDENCE......................................................................................................... 2
ARGUMENT.................................................................................................................................. 4
I. CLEAN ENERGY OPTION Is a Double Entendre .................................................. 5
A. CLEAN ENERGY OPTION Has a Readily-Apparent, Double Significance as
Applied to the Services ......................................................................................... 6
B. One Meaning of CLEAN ENERGY OPTION Is Suggestive .......................... 7
CONCLUSION............................................................................................................................... 9

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INDEX OF CITATIONS
Cases:
In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972) ............................................................ 5
In re Grand Metropolitan Foodservice, Inc., 30 USPQ2d 1974 (TTAB 1994) ............................. 9
In re Gyulay, 3 USPQ2d 1009 (Fed. Cir. 1987) ............................................................................. 4
In re Nett Designs, Inc., 57 USPQ2d 1566 (Fed. Cir. 2001) .......................................................... 4
In re Reynolds Metals Co., 178 USPQ 296 (CCPA 1973) ............................................................. 4
In re RiseSmart Inc., 104 USPQ2d 1931 (TTAB 2012) ................................................................. 6
In re Shutts, 217 USPQ 363 (TTAB 1983)..................................................................................... 4
Oreck Holdings, LLC v. Bissel Homecare, Inc.,
Opp. No. 91173831 (TTAB Feb. 16, 2010) [not precedential] .................................... 4

Statutes:
Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1) .................................................... 1, 2, 4, 9
TMEP 1209.03(e) ........................................................................................................................ 7
TMEP 1213.03(c) .................................................................................................................... 5, 7

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ii

Applicant, Ethical Electric, Inc., respectfully appeals the Examining Attorneys refusal to
register Applicants standard character CLEAN ENERGY OPTION mark in Application Serial
No. 86/156,965 (the Application). The Examining Attorneys refusal on the grounds that
Applicants CLEAN ENERGY OPTION mark is merely descriptive of the applied-for services
pursuant to Trademark Act 2(e)(1), 15 U.S.C. 1052(e)(1), is inappropriate because
Applicants CLEAN ENERGY OPTION mark is a double entendre. Therefore, Applicants mark
should not be denied registration on the Principal Register.

PROSECUTION HISTORY
Applicant filed the Application on January 3, 2014, seeking registration on the Principal
Register for the mark CLEAN ENERGY OPTION in standard characters for use in connection
with Retail electricity provider services, namely, providing a service that allows customers to
purchase energy, namely, electricity, wind, solar, and renewable energy; Retail electricity supply
services; procurement, namely, purchasing of energy for others. 1
Grounds for Refusal: Merely Descriptive
On April 9, 2014, the Examining Attorney issued a Non-Final Office Action (OA),
refusing registration under Trademark Act 2(e)(1) on the ground that Applicants mark is
merely descriptive of Applicants services.
On July 1, 2014, Applicant submitted an office action response (OAR), in which
Applicant offered arguments against the refusal to register the mark under Trademark Act
2(e)(1).

Applicant amended the proposed recitation of services on July 1, 2014, to read Retail electricity provider services,
namely, providing a service that allows customers to purchase energy, namely, electricity, wind, solar, and
renewable energy in Class 35.

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On July 23, 2014, the Examining Attorney issued a Final Office Action (FOA)
regarding the refusal under Trademark Act 2(e)(1).
On January 23, 2015, Applicant filed a Notice of Appeal with the Board. See Docket
Doc. 1. The Board acknowledged and instituted the appeal on the same day, allowing Applicant
60 days to file its appeal brief. See Docket Docs. 2-3.

SUMMARY OF EVIDENCE
A. Examining Attorneys Evidence
Office Action of April 9, 2014:
Definition of clean energy from dictionary.com
Screenshot from epa.gov
Definition of option from dictionary.com
Screenshot from ci-p.com
Screenshot from mnn.com
Screenshot from islr.org
Screenshot from blog.energysage.com
Screenshot from goodwinsustainabledevelopment.com
Screenshot from westbrookenergy.org
Screenshot from sustainablestamford.org
Screenshot from secure3.convio.net
Screenshot from alternativefuels.about.com
Final Office Action of July 23, 2014:
Screenshot from ethicalelectric.com
B. Applicants Evidence
OAR of July 1, 2014:
Exhibit A:

Architecture Clean Lines on Pinterest:

http://www.pinterest.com/kim_bougaardt/architecture-clean-lines/
(Accessed June 27, 2014).

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Exhibit B:

Clean Installation Design Ideas: http://www.houzz.com/clean-installation

(Accessed on June 27, 2014).

Exhibit C:

Oxford Dictionaries, Clean:

http://www.oxforddictionaries.com/us/definition/american_english/clean?
q=clean (Accessed June 27, 2014).

Exhibit D:

Listing of NY Times Articles with Clean Transition:

http://query.nytimes.com/search/sitesearch/?action=click&contentCollecti
on&region=TopBar&WT.nav=searchWidget&module=SearchSubmit&pg
type=Homepage#/%22clean+transition%22/ (Accessed June 27, 2014).

Exhibit E:

Ethical Electric How it Works: https://ethicalelectric.com/HowItWorks

(Accessed June 27, 2014).

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ARGUMENT
The Examining Attorney has refused registration of the proposed mark pursuant to
Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), on the grounds that the mark merely
describes Applicants services. Because Applicants CLEAN ENERGY OPTION mark creates a
double entendre with a readily-apparent double significance as applied to the services, Applicant
respectfully disagrees with the Examining Attorneys finding and requests that the Board reverse
the statutory refusal and allow publication of the Application.
A mark is merely descriptive if it immediately describes an ingredient, quality,
characteristic, function, feature, purpose or use of the specified good or service. See In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). By contrast, a suggestive mark is one
that, when applied to the goods or services at issue, requires imagination, thought, or perception
as to the nature of the goods or services. See In re Shutts, 217 USPQ 363 (TTAB 1983).
The Board has recognized the fine line between merely descriptive marks and
suggestive marks. Oreck Holdings, LLC, v. Bissell Homecare, Inc., Opposition No. 91173831,
*21 (TTAB Feb. 16 2010) (HEALTHY HOME VACCUM not merely descriptive of vacuum
cleaners) [not precedential]. One may be informed by suggestion as well as by description. In
re Reynolds Metals Company, 480 F.2d 902, 178 USPQ 296 (CCPA 1973). As the Federal
Circuit has stated:
a term may possess elements of suggestiveness and descriptiveness at the same
time. No clean boundaries separate these legal categories. Rather, a term may
slide along the continuum between suggestiveness and descriptiveness depending
on usage, context, and other factors that affect the relevant publics perception of
the term.
In re Nett Designs, Inc., 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
It is well established that the PTO bears the burden to establish a prima facie case of no
inherent distinctiveness. See In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987). The distinction
Applicants Brief Ex Parte Appeal: SN 86/156,965

between marks which are merely descriptive and marks which are suggestive is so nebulous
that, more often than not, it is determined largely on a subjective basis. In re Gourmet Bakers,
Inc., 173 USPQ 565 (TTAB 1972). Any doubt in the matter must be resolved in the applicants
favor on the theory that any party who believes that it would be damaged by the registration will
have an opportunity under Section 13 to oppose the mark and to present evidence, usually not
present in the ex parte application, to that effect. Id.

I.

CLEAN ENERGY OPTION Is a Double Entendre

Applicant seeks registration of the mark CLEAN ENERGY OPTION in standard

characters for use in connection with Retail electricity provider services, namely, providing a
service that allows customers to purchase energy, namely, electricity, wind, solar, and renewable
energy in Class 35. According to the Examining Attorney, Applicants mark merely describes
Applicants recited goods and services because [w]hen used in connection with the identified
services, clean energy option immediately describes electricity provision services where energy
that does not pollute the atmosphere may be chosen. See FOA. However, Applicants CLEAN
ENERGY OPTION mark creates a double entendre with a readily-apparent double significance
as applied to Applicants services, and one of the meanings of Applicants CLEAN ENERGY
OPTION mark is not merely descriptive.
A double entendre is a word or expression capable of more than one interpretation. For
trademark purposes, a double entendre is an expression that has a double connotation or
significance as applied to the goods or services. The mark that comprises the double entendre
will not be refused registration as merely descriptive if one of its meanings is not merely
descriptive in relation to the goods or services. TMEP 1213.05(c).

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A. CLEAN ENERGY OPTION Has a Readily-Apparent, Double Significance as

Applied to the Services
The multiple interpretations that make an expression a double entendre must be
associations that the public would make fairly readily, and must be readily apparent from the
mark itself. See In re RiseSmart Inc., 104 USPQ2d 1931, 1934 (TTAB 2012).
Here, Applicants mark readily conveys at least two meanings: 1) an option that enables
consumers to obtain clean energy; and 2) a simple, straightforward, seamless, and easy process
that allows consumers to choose what type of energy resource their monthly utility payment
funds, without having to figure out a new utility provider, or construction and zoning
requirements, or any of the other numerous complexities that potentially arise when installing
solar panels or wind turbines. The former meaning results when Applicants CLEAN ENERGY
OPTION mark is read such that the term CLEAN ENERGY modifies the word OPTION.
The latter meaning results when Applicants CLEAN ENERGY OPTION mark is read such that
the word CLEAN modifies the term ENERGY OPTION. Both of these meanings have
significances as applied to Applicants services. See Table 1, below.

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Table 1. The Readily-Apparent Double Significance of Applicants Mark

Consumer Perception of
Applicants Mark

Meaning Conveyed
1) an option that enables
consumers to obtain clean
energy

Class 35: Retail electricity

provider services, namely,
providing a service that
allows customers to purchase
energy, namely, electricity,
wind, solar, and renewable
energy

2) a simple process that

enables consumers to choose
what type of energy resource
their monthly utility payment
funds, without having to
figure out a new utility
provider, or construction and
zoning requirements, or any
of the other numerous
complexities that potentially
arise when installing solar
panels or wind turbines

Class 35: Retail electricity

provider services, namely,
providing a service that
allows customers to
purchase energy, namely,
electricity, wind, solar, and
renewable energy

CLEAN ENERGYOPTION

CLEANENERGY OPTION

Significance as Applied to
Applicants Services
(Relevant Language Bold)

B. One Meaning of CLEAN ENERGY OPTION Is Suggestive

A term is not merely descriptive if does not have a primary significance that is
descriptive in relation to any of the goods/services, or if it creates a double entendre or
incongruity. TMEP 1209.03(e) (emphasis added). The mark comprising the double entendre
must not be refused registration if it has at least one meaning that is not merely descriptive.
TMEP 1213.05(c).
The Examining Attorney accurately notes the meaning of clean energy as a form of
energy that does not pollute the atmosphere when used. See Office Action of April 9, 2014.
Applicant does not dispute that this meaning of Applicants mark (the first in Table 1, above) is

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descriptive. The Examining Attorneys analysis, however, disregards the additional nondescriptive meaning suggested by Applicants CLEAN ENERGY OPTION mark. Namely,
clean is often used metaphorically to refer to something that is characterized by simplicity,
e.g., a clean break, clean lines, clean installation, clean transition, etc. See OAR, Exhibits A, B,
C, and D. Applicants CLEAN ENERGY OPTION mark employs this metaphorical meaning of
the word CLEAN to suggest to consumers that making the switch to using only clean energy
will be painless and seamless.
Through Applicants services, consumers are provided with the ability to use alternative
energy sources in a matter of minutes without switching their existing energy provider by simply
submitting a form online. See OAR, Exhibit E. Applicants straightforward, simple, and easy
approach to providing solar and wind energy is a critical aspect of Applicants services.
Traditional methods of obtaining energy from sustainable sources for individual households on
power grids that are fueled by oil and coal are often cumbersome, expensive, and labor intensive.
For example, one could install expensive solar panels or wind turbines, but this is tantamount to
a construction project on ones roof. Applicants website explains:
Switching to Ethical Electric is fast and easy. Once your service is active, youll
be supporting renewable energy every time you pay [sic] power bill. Ethical
Electric buys clean electricity from local, renewable sources such as wind and
solar. We supply it via your local utility company. They will still read your meter
and send you a bill. Youll still send your payments into your utility company.
Theres no new bill. No equipment to install. No home visit. No interruption to
your service. All that changes is that with Ethical Electric, youll be supporting
100% clean, local, renewable energy every time you pay your power bill.
OAR, Exhibit E. Thus, one meaning of Applicants CLEAN ENERGY OPTION mark
suggests a simple, straightforward, seamless, and easy process that allows consumers to
choose what type of energy resource their monthly utility payment funds, without having
to figure out a new utility provider, or construction and zoning requirements, or any of

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the other numerous complexities that potentially arise when installing solar panels or
wind turbines.
CONCLUSION
In the context of Applicants Retail electricity provider services, namely, providing a
service that allows customers to purchase energy, namely, electricity, wind, solar, and renewable
energy; Retail electricity supply services; procurement, namely, purchasing of energy for others
services, the different meanings of Applicants CLEAN ENERGY OPTION mark will be readily
apparent to consumers. At least one of these meanings is not immediately and merely descriptive
of Applicants identified services. Accordingly, Applicants mark is suggestive and inherently
distinctive, and as such should be permitted to proceed to publication. Even if doubt exists as to
whether a term is merely descriptive as applied to the goods or services for which registration is
sought, it is the practice of the Board to resolve those doubts in favor of the applicant, and allow
the mark to register. In re Grand Metropolitan Foodservice, Inc., 30 USPQ2d 1974 (TTAB
1994).
WHEREFORE, Applicant respectfully requests that the Board REVERSE the statutory
refusal pursuant to Trademark Act 2(e)(1) and allow the Application to proceed to publication.
Dated this 24th day of March, 2015.
Respectfully submitted,

Erik M. Pelton
ERIK M. PELTON & ASSOCIATES, PLLC
PO Box 100637
Arlington, Virginia 22210
TEL: (703) 525-8009
FAX: (703) 525-8089

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