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Federal Circuit Affirms Rule That Varietal Names Are Generic

October 19, 2006

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Last Month at the Federal Circuit - November 2006

Judges: Michel, Lourie (author), Ellis (District Judge sitting by designation)

[Appealed from: PTO, Board]

In In re Pennington Seed, Inc., No. 06-1133 (Fed. Cir. Oct. 19, 2006), the Federal Circuit reaffirmed the validity of the PTO’s long-standing precedent and policy of treating varietal names as generic designations that cannot be registered as trademarks.

In 1981, KRB Seed Company, LLC (“KRB”) obtained protection for a new variety of grass seed from the USDA’s Plant Variety Protection Office (“PVPO”), which awards certificates of protection under the Plant Variety Protection Act (“PVPA”) for new plant varieties. In its application, KRB designated the term “Rebel” as the varietal (or cultivar) name for its grass seed.

In 2001, KRB applied to the PTO to register “Rebel” as a trademark for grass seed. The examiner refused registration on the ground that “Rebel” was a varietal name for a type of grass seed, and thus should be treated as a generic designation under PTO policy.

KRB appealed to the Board, which affirmed the examiner’s decision. The Board relied on a line of cases holding that varietal names are generic designations, beginning with Dixie Rose Nursery v. Coe, 131 F.2d 446 (D.C. Cir. 1942), cert. denied, 318 U.S. 782 (1943). The Board also relied on other sources indicating that varietal names are generic designations, including TMEP § 1202.12, which states that varietal or cultivar names “amount to the generic name of the plant or seed by which such variety is known to the public,” the International Convention for the Protection of New Varieties of Plants (“UPOV”), which requires each new plant variety to be assigned a varietal name that will be the generic designation for the plant, and the PVPA, which requires applicants seeking protection for new plant varieties to designate names for the varieties. The Board concluded that “Rebel” became a generic designation for a type of grass seed when KRB designated it as the varietal name of its grass seed in its PVPA application.

Pennington Seed, Inc. (“Pennington”) acquired KRB’s application and appealed the Board’s decision to the Federal Circuit, which affirmed the Board’s decision.

First, the Court held that the PTO’s per se rule that varietal names are generic designations was consistent with the Court’s test for genericness, which requires proof that the mark’s primary significance to the public is as a generic term.

According to the Court, the PTO’s policy of treating varietal names as generic terms was “an established principle” based on sixty years of persuasive case law, that the principle was reflected in the UPOV and the PVPA, and that it was consistent with public policy because new plant varieties must be given names and those varietal names may be the only names that purchasers use to designate particular plant varieties.

Turning to the case at hand, the Court found conclusive evidence that “Rebel” was a varietal name for grass seed, including KRB’s application with the PVPO designating “Rebel” as the varietal name for its grass seed, articles listing “Rebel” as a cultivar name for tall fescue grass seed, an excerpt from the UPOV’s database listing “Rebel” as the name of a tall fescue grass seed variety, and KRB’s use of “Rebel” as the name of its grass seed in its catalog.

Based on this evidence, the Court concluded that the “Rebel” varietal name was known to the trade as a generic designation for the grass seed. “When a purchaser asks for that particular type of grass seed,” the Court wrote, “he has no other name to use but its designated name. The purchasing public only has the term ‘Rebel’ to refer to this particular product.” Slip op. at 8. The Court held that, because “Rebel” was a varietal name, “the term was generic from its first use and thus is not entitled to trademark registration.” Id. at 5.

The Court contrasted the use of varietal names for plant varieties with pharmaceutical products, which are given a generic drug name but are marketed with a different brand name.

Second, the Court dismissed Pennington’s argument that the PTO’s varietal name policy was inconsistent with public policy and legislative history indicating that a name can be used to indicate both a product and its source. The Court noted that the authorities Pennington relied upon involved registered marks that had become generic over time. In contrast, the Court held that varietal names like “Rebel” are never registrable as trademarks because they are generic from their first use.

Finally, the Court rejected Pennington’s argument that the PTO’s varietal name policy was inconsistent with the U.S. Supreme Court’s holding that the existence of patent protection for a product does not preclude trademark protection for the same product in TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001). Pennington argued that PVPA protection of its grass seed variety should not preclude trademark protection for the varietal name it designated for its grass seed.

The Court found TrafFix inapposite because it concerned whether a feature of an expired patent could acquire trade dress protection. In contrast, the treatment of varietal names does not concern trade dress protection for a functional aspect of a plant.

The Federal Circuit thus confirmed the validity of the PTO’s per se rule treating varietal names as generic designations incapable of registration as trademarks.