February 28th, 2012 by David Gibbs*
(owned and operated by the Solaray Corporation since 1992) has been marketing
and selling solar thermal collectors and related components under the SUNEARTH
brand since 1978.
In 2009, SunEarth filed an application with the U.S. Patent and Trademark
Office (USPTO) seeking federal trademark protection for the SUNEARTH word
The USPTO suspended action on the application in view of an earlier filed
application owned by Ningbo Solar Electric Power (Ningbo) for the SUN-EARTH (and
Through a predecessor company, Ningbo had been using its SUN-EARTH design
mark in China since 1978 and began using the mark in the U.S. in 2004.
A U.S. trademark application filed in 2006 for the SUN-EARTH design mark went
abandoned for failure to file a Statement of Use.
In 2008, Ningbo filed a second application to register the SUN-EARTH design
mark. This was the application cited against SunEarth.
The USPTO granted Ningbo’s second application and issued it as U.S. Trademark
Registration No. 3,886,941 (’941 Registration) on December 7, 2010.
Ningbo changed its name to Sun-Earth Solar Power (SESP) in 2010.
After filing a proceeding in the USPTO Trademark Trial and Appeal Board to
cancel the ’941 Registration and trying to negotiate a settlement with Ningbo,
SunEarth sued for trademark infringement, cancellation of the registration, and
other claims in the Northern District of California in October 2011.
The court recently granted a preliminary injunction against SESP, prohibiting
it from using the SUN-EARTH name or mark in the United States.
According to the Order Granting Plaintiff’s Motion for a Preliminary Injunction, although
SESP has a presumption of ownership of the SUN-EARTH mark due to its federal
registration, SunEarth “[is] likely to be able to prove a protectable ownership
interest in the trade name and mark that is senior to that of [SESP].”
The Court based this on its determination that SunEarth was likely to have
been using the SUNEARTH mark in the United States before SESP entered the U.S.
market in 2007:
The court also noted that SunEarth had produced some evidence of actual
This case is a good illustration of the “first to use” system of trademark
priority in the United States.
A federal trademark registration creates a presumption of trademark
ownership. However, that presumption can be rebutted by showing a similar
trademark was used by someone else in interstate commerce within the United
States before the registered trademark.
This case also highlights the difficulties foreign based clean tech companies
may face in protecting their green brands when they decide to enter the U.S.
market. We’re likely to see more of these types of cases, particularly from
David Gibbs is a contributor to Green Patent Blog. David is currently in
his third and final year at Thomas Jefferson School of Law in San Diego. He
received his undergraduate degree in Geology from the University of California,
Posted: August 21st, 2012