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 No. 86615006
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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

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.
2In 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.

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Serial No. 86615006

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

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Serial No. 86615006

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).

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Serial No. 86615006

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.

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Serial No. 86615006

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.

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Serial No. 86615006

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.

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Serial No. 86615006

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.

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Serial No. 86615006

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.”

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Serial No. 86615006

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

8The record contains several other examples, the most pertinent of which are outlined in the
Examining Attorney’s brief, 33 TTABVUE 8.
9The record contains several other examples, the most pertinent of which are outlined in the
Examining Attorney’s brief, 33 TTABVUE 11-13.
10http://www.computerworld.com, attached to March 20, 2018 Office Action, TSDR pp. 31-
41.
11 April 12, 2017 Office Action, TSDR pp. 25-27.

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Serial No. 86615006

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.
13Applicant’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.

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Serial No. 86615006

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

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Serial No. 86615006

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).

14Although 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.

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