Strike ‘Certified Electronics Recycler’ Trademark, BAN Urges Court

The term, “certified electronics recycler,” is “generic” and shouldn’t be trademarked, the Basel Action Network (BAN) says in a lawsuit naming the International Association of Electronics Recyclers (IAER) and the Institute of Scrap Recycling Industries (ISRI) as defendants. BAN seeks a judgment ordering the U.S. Patent and Trademark Office to cancel registration number 2,679,182 for the “certified electronics recycler” trademark issued to IAER in January 2003 and transferred to ISRI when it acquired IAER last year, says the complaint, filed Monday in U.S. District Court in Seattle.

BAN’s lawsuit also seeks a declaratory judgment that it may use the term “certified electronics recycler” to promote its e-Stewards recycler certification program without infringing the IAER/ISRI trademark, the complaint says. ISRI today uses the phrase “certified electronics recycler” to refer to an electronics recycler that has achieved “dual certification” known as “RIOS/R2,” it says. Because the phrase “has been used to identify conformity with two different standards created sequentially by two different organizations, the use of the phrase as a trademark is inherently misleading and confusing to the consumer,” it says. The trademark itself, “to the extent any original rights exist, has been abandoned with the abandonment of the original IAER standard,” it says.

"Hundreds, if not thousands of companies” call themselves electronics recyclers, the complaint says. The phrase, “certified electronics recycler,” generically describes “any electronics recycler that has been certified under any certification program,” it says. BAN wants to use the term to promote its e-Stewards program, it says. But “the inability of BAN and its licensees to freely use these terms injures and limits its certification program and may deter electronics recyclers from seeking BAN’s certification,” it says. “The continued use and registration of the generic phrase … as a trademark suggests that only through ISRI can one become a genuine certified electronics recycler.” ISRI officials didn’t immediately respond to a request for comment.