A Rose By Any Other Name … But Likely Not a Trademark

Trademarks have helped create value for all sorts of products. However, may a living thing such as a plant variety that you have bred and created be trademarked?

Generally, the answer is no. Varietal or cultivar names are designations given to cultivated varieties or subspecies of live plants or agricultural seeds and they amount to the generic name of the plant or seed by which such variety is known to the consumer. In re Pennington Seed Co. (2006) 466 F.3d 1053.

In the world of intellectual property, a trademark is a symbol, slogan, word, design, or combination of elements used by a manufacturer or merchant “to identify his or her goods and distinguish them from those manufactured by others.” 15 U.S.C. § 1127. And for a mark to successfully serve as a source identifier, the mark must be distinctive to the consumer. As a generally generic mark, plant varieties cannot acquire distinctiveness and become and enforceable trademark since it is merely denoting the product rather than the source of brand of the product.

For example, in Dixie Rose Nursery v. Coe (1942) 131 F.2d 446, the court further held that “TEXAS CENTENNIAL”, although originally arbitrary, had become the varietal name for a type of rose and therefore was not granted trademark protection. In In re Hilltop Orchards & Nurseries, Inc. (1979) 206 U.S.P.Q. 1034, Hilltop Orchards & Nurseries, Inc. sought to register the notation “COMMANDER YORK” as a trademark for apples trees. The board ruled that this mark was not registrable because it was being used as the common descriptive name for a particular variety of the applicant’s apple trees, and “would convey such impression and be understood as such by purchasers and prospective purchasers of applicant’s goods rather than as a trademark to distinguish applicant’s goods in commerce.” In In re Delta and Pine Land Co. (1993) 26 U.S.P.Q.2d 1157, the company attempted to register the term “DELTAPINE” for agricultural planting seeds. The applicant conceded that DELTAPINE 20, DELTAPINE 50, DELTAPINE 102, and DELTAPINE 506 were generic varietal names for several varieties of cotton and soybean plants while the board explained “[t]here is no question that varietal names are generic designations and cannot be registered as trademarks.”

The United States adheres to a treaty known as the Convention of the International Union for the Protection of New Plant Varieties (“UPOV”). The UPOV is an intergovernmental organization with the mission to provide and promote an effective system of plant variety protection, aiming to encourage the development of new varieties of plants, for the benefit of society. In 1991, the U.S. Plant Variety Protection Office in the Department of Agriculture included a revision requiring that if plant protection is sought, the new variety must be designated by a name which will be its generic designation and which is free for all to use to name that variety. In other words, if a plant breeder has acquired plant variety protection with the UPOV and has selected a name for that variety, the breeder cannot subsequently claim that the name is the breeder’s trademark. This rule still stands even after the plant variety protection has expired. In re KRB Seed Co. (2005) 76 U.S.P.Q.2d 1156.

More specifically with respect to the United States Patent and Trademark Office (“USPTO”), an examining attorney must refuse registration if he or she determines that wording is being sought to be registered as a mark for live plants, agricultural seeds, fresh fruits, or fresh vegetables comprises a varietal or cultivar name. See TMEP 1202.12. The same rules apply even if the breeder seeking trademark protection has not obtained plant variety protection governed by the UPOV. In Van Well Nursery, Inc. v. Mony Life Ins. Co. (2006) 421 F.Supp.2d 1321, the court held that “Scarlet Spur” and “Smoothee” were unprotectable generic names for two new varieties of apples trees developed by two nurseries and reasoned that after the plant patents for which the nurseries obtained for their new varieties expired, others began selling to orchards using the same terms to name the specific varieties of apple trees.

Although one would most likely fail in registering a trademark for his or her plant variety, there are other ways one may seek and obtain protection. In the U.S., there are three types of intellectual property protection that breeders may obtain for new plant varieties: Plant Variety Protection issued by the Plant Variety Protection Office, plant patents issued by the Patent and Trademark Office, or utility patents issued by the Patent and Trademark Office.

When it comes to other types of breeds such as animal breeds, one could potentially and safely assume that the same reasoning would be applied. Several foreign countries such as Bulgaria have explicitly refused trademark protection for animal breeds for the same reasons provided for plant varieties and it would be logical that the United States would similarly follow. Should you have any questions regarding trademark protection with respect to plant varieties or related products, please do not hesitate to reach out. We are your Orange County trademark and business attorneys here to help.