SunEarth (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 mark.

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 Design) mark.

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:

Plaintiffs are likely to be able to establish legally sufficient market penetration over their trade name and mark prior to 2007.

The court also noted that SunEarth had produced some evidence of actual consumer confusion:

In addition to several instances of confusion by trade show organizers, Plaintiffs have proffered more than ten examples of actual customer confusion . . .

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 Chinese companies.

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, Berkeley.