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Green Business Law: Trademark Protection for Certification Systems Under the Lanham Act

Demonstrating yet another legal aspect to the green movement that industry stakeholders should remain aware of, last week’s edition of the Sustainable Industries Journal offered an insightful article about the intersection of trademark law and green product certification systems (such as Green Seal or LEED) which has implications for both certification-granting organizations and the companies that apply their trademarks.

The article referenced a December 2006 challenge by the Seattle Audubon Group and the Natural Resources Council of Maine aimed at the failure by Weyerhaeuser Co. and Plum Creek Timber Co. to comply with the certification requirements of the Sustainable Forestry Initiative. Given the premium that many green products command, it is easy to conceive of a scenario where a product that has not earned third-party certification nevertheless applies the certification mark to avoid rigorous verification processes, take advantage of green goodwill, and gain a leg up on its competitors. This was exactly the situation in Weyerhaeuser, where the Seattle and Maine groups argued that the two timber companies were using the Sustainable Forest Initiative label despite engaging in unacceptable logging practices.

The solution to this scenario as posed in the article is for certification-granting organizations, such as USGBC, to rely on the protections offered by the Lanham Act, the federal statute which controls the use trademarks. As the article points out, those organizations usually have limited resources and staff that are focused on granting certification and not pursuing litigation. Claims under the Lanham Act offer a significant number of advantages over state court actions, allowing organizations to sue in federal court against infringers based solely on a claim that it was using the trademark illicitly. Federal judges can also issue a preliminary injunction requiring the alleged infringer to stop using the certification mark pending the outcome of the litigation. Moreover, Lanham Act cases are easy to prove; typically, the organization can maintain its claim by simply demonstrate that it owns and registered the mark and the infringer was using it without the organization’s permission.

For me, one of the major personal and professional benefits of maintaining gbNYC has been observing the application of legal principles from disparate disciplines in the green business context. As sustainable business practices continue to disseminate across traditional industries and, indeed, become mainstream, the need for savvy and sophisticated attorneys familiar with emerging green industries and the legal nuances that green can present to clients- with respect to trademark law or otherwise- will continue to increase exponentially.

3 Responses to Green Business Law: Trademark Protection for Certification Systems Under the Lanham Act

  1. Dahlia June 6, 2007 at 8:59 pm #

    I think what could also be an interesting topic in law in the next few years is if people start suing companies or buildings for not living up to their green promises. For instance, a huge number of ski areas signed on for the Sustainable Slopes initiative, but what happens if they don’t actually make their ski areas more sustainable? Can one sue them to keep up their word, even though it was a voluntary agreement? Likewise for LEED certified buildings that don’t end up performing as they are supposed to. Will LEED decide to de-certify buildings if they aren’t properly maintained?

  2. Stephen June 7, 2007 at 3:27 am #

    Thanks for your comment, Dahlia. You’ve hit on a really important legal issue with respect to green certification systems which I’ve written about before. From my perspective, the bigger issue is an owner seeking redress from a design professional if, for example, its LEED Gold project only ends up earning a Silver rating. This is why it’s so critical for design professionals on LEED projects to make sure the language in their contracts clearly indicates that signing credit submittals is solely for the satisfaction of the particular rating system credit and does not constitute any warranty or guarantee on behalf of the design professional.

    You can check out all of my green liability-related posts here:


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