SolarWindow Technologies, Inc.

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.
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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

1The 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

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.

2Application 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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Serial Nos. 87185809 and 87185822

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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Serial Nos. 87185809 and 87185822

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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Serial Nos. 87185809 and 87185822

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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Serial Nos. 87185809 and 87185822

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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Serial Nos. 87185809 and 87185822

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.

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