Friday, October 20, 2006

CAFC Affirms TTAB Ruling that Plant Varietal Names are Generic and Unregistrable

In a precedential ruling that I suppose may be described as "seminal," the CAFC affirmed the TTAB's decision that found the term REBEL to be generic for a variety of grass seed. In re Pennington Seed, Inc., 80 USPQ2d 1758 (Fed. Cir. 2006). [Board decision TTABlogged here].

Applicant had designated the term REBEL as a varietal name for a grass seed that was the subject of a plant variety protection ("PVP") certificate issued in 1981. When Applicant applied to register REBEL as a trademark for grass seed in 2001, the PTO refused registration on the ground that REBEL was the varietal name for a type of grass seed, and thus that the name was the seed's generic designation. The Board affirmed, finding valid the PTO's long-standing precedent and policy of treating varietal names as generic.

The Board relied on Dixie Rose Nursery v. Coe, 131 F.2d 446 (D.C. Cir. 1942), as establishing that varietal names are not subject to trademark protection. There, the term TEXAS CENTENNIAL was found to be unregistrable as a trademark "because it was the varietal name for a particular rose." The CAFC found Dixie Rose to be "instructive," and likewise subsequent Board decisions that "have consistently followed and applied the holding of Dixie Rose, refusing trademark registration for varietal names of plants on the ground that such names designate a particular variety of plant, rather than indicate the source of the product." Substantial evidence supported the Examining Attorney's finding that REBEL is a varietal name and is thus generic.

The court noted that Applicant was not precluded from acquiring trademark protection for a particular variety of grass seed.

"However, having designated the term "Rebel" as the varietal name, and having failed to associate any additional word with the Rebel grass seed that would indicate the seed's source, Applicant here is prohibited from acquiring trademark protection for the generic and only name of that variety of grass seed."

And so the CAFC affirmed the Board's decision.

TTABlog comment: Ho-hum. I'd rather cut the grass than read any more of these seed decisions.

Text Copyright John L. Welch 2006.


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