It’s a beautiful spring so far, and we’re all enjoying the pretty blossoms and the pollen-driven sneezes that go along with getting outdoors. To honor the return of all the grasses, trees, and other plants in our lives, we’re taking a closer look at how trademarks interact with these products.
Trademarks for Plants
Can you get a trademark for a brand that you will use with plants? Of course! Recent registrations for apple trees include marks like SERUI, CRIMSON SNOW, APIFRUIT, COSMIC CRISP, SUBLIME ORGANICS, BUD 10, KIKU, RED ROMANCE, and many more.
Varietal and Cultivar Names
There is a big exception — the “varietal” or “cultivar” names of a cultivated variety of subspecies of a plant or seed. The Office considers these to be the equivalent of the “generic” name for the plant or seed, regardless of whether the name is a fanciful name or a code. TMEP § 1202.12. The varietal or cultivar name is used in a plant patent as the identifier for the variety of plant or seed, and remains so regardless of whether the patent expires. In re Pennington Seed Co., 466 F.3d 1053, 80 USPQ2d 1758, 1762 (Fed. Cir. 2006).
Examination of Varietal and Cultivar Names
The Office starts by checking the registry of names under the Plant Variety Protection Act. The TMEP lists http://www.ars-grin.gov/npgs/searchgrin.html as the URL, but the Germplasm Resources Information Network (“GRIN”) database has apparently been updated to https://www.ars-grin.gov/PVP/Search. Dictionary evidence and more can also be relevant, as is WIPO’s fantastic PLUTO Plant Variety Database https://www3.wipo.int/pluto/user/en/index.jsp.
Some of these plant varietals are simply alphanumeric codes; it’s unusual for a company to ever attempt to protect these as a trademark. For example:
PVP Application Summary: 200000290
|Application Status||Certificate Issued|
|Applicant||Monsanto Technology, LLC|
|Cultivar (Variety) Name||22DHQ3|
|Scientific Name||Zea mays L.|
|GRIN-Global Availability||Not Available|
More arbitrary names are another matter altogether. Companies often pick a name for the new product without taking trademark concerns into account, and attempt to protect the cultivar name as a trademark. This never goes well.
The Office views these as incapable of functioning as a trademark – the equivalent of an insurmountable genericness refusal. No amount of advertising expenditure can salvage it as a mark. See, e.g., In re Farmer Seed & Nursery Co., 137 USPQ 231, 231-32 (TTAB 1963). It doesn’t even matter if the varietal name was never actually used — it’s sufficient that it was registered as a varietal name. In re American Onion Int’l, Inc., Ser. No. 76660662, p. 5 (TTAB Aug. 8, 2008), available at https://ttabvue.uspto.gov/ttabvue/v?pno=76660662&pty=EXA&eno=13. However, if a term is a variety name for one type of plant (like a dianthus) it won’t bar registration of that term for a different plant (like an apple tree), at least if the applicant makes that clear in their description of goods. See, e.g., the registration for RED ROMANCE, Reg. No. 5493245.
The University of Minnesota, which developed the varietal, attempted to register HONEYCRISP for “apple trees, namely variety Minnesota 1711 R.” Ser. No. 74156209. The Office’s online records are spotty in the early 1990s, and the full file history is not online, but it went abandoned due to a failure to respond to an Office Action — we can confidently assume that it foundered on the plant varietal refusal. In other applications, the Office also found the term descriptive or generic as applied to related goods, like cider.
Plant varietal refusals don’t often make it to the TTAB. But, a prominent recent example saw Rainier Fruit Company’s attempt to register a lightly stylized version of HONEYCRISP for apples. Rainier didn’t even try to argue the cultivar issue — it disclaimed HONEYCRISP — but the stylization was not sufficiently distinctive.
In re Rainier Fruit Co., Ser. No. 86108344 (TTAB Sep. 29, 2015), available at https://ttabvue.uspto.gov/ttabvue/v?pno=86108344&pty=EXA&eno=10.
What’s getting through? Marks that pair HONEYCRISP with an additional, (more) distinctive elements. The two currently active registrations are a Supplemental Registration for PREMIER HONEYCRISP, with HONEYCRISP disclaimed, for “live honeycrisp apple trees,” and a Principal Register registration for ROYAL RED HONEYCRISP for “live apple trees.”
Takeaways for Trademark Lawyers
Please make sure your clients plan for trademark protection before filing for a plant varietal production certificate and plant patents. If trademark and patent counsel are not on the same page, using the cultivar name in the PVP certificate will be fatal to attempts to claim trademark rights in that term.