1202.12    Varietal and Cultivar Names (Examination of Applications for Seeds and Plants)

Varietal or cultivar names are designations given to cultivated varieties or subspecies of live plants or agricultural seeds. They amount to the generic name of the plant or seed by which such variety is known to the U.S. consumer. See, e.g., In re Pennington Seed Co., 466 F.3d 1053, 80 USPQ2d 1758, 1761-62 (Fed. Cir. 2006). These names can consist of a numeric or alphanumeric code or can be a "fancy" (arbitrary) name. The terms "varietal" and "cultivar" may have slight semantic differences but pose indistinguishable issues and are treated identically for trademark purposes.

Subspecies are types of a particular species of plant or seed that are members of a particular genus. For example, all maple trees are in the genus Acer. The sugar maple species is known as Acer saccharum, while the red maple species is called Acer rubrum. In turn, these species have been subdivided into various cultivated varieties that are developed commercially and given varietal or cultivar names that are known to U.S consumers.

A varietal or cultivar name is used in a plant patent to identify the variety. Thus, even if the name was originally arbitrary, it "describe[s] to the public a [plant] of a particular sort, not a [plant] from a particular [source]." Dixie Rose Nursery v. Coe, 131 F.2d 446, 447, 55 USPQ 315, 316 (D.C. Cir. 1942). It is against public policy for any one supplier to retain exclusivity in a patented variety of plant, or the name of a variety, once its patent expires. Id.; accord Pennington Seed, 80 USPQ2d at 1762.

Market realities and lack of laws concerning the registration of varietal and cultivar names have created a number of problems in this area. Some varietal names are not attractive or easy to remember by the public. As a result, many arbitrary terms are used as varietal names. Problems arise when trademark registration is sought for varietal names, when arbitrary varietal names are thought of as being trademarks by the public, and when terms intended as trademarks by plant breeders become generic through public use. These problems make this a difficult area for the examining attorney in terms of gathering credible evidence and knowing when to make refusals.

Whenever an application is filed to register a mark containing wording for live plants, agricultural seeds, fresh fruits, or fresh vegetables, a search using Internet search engines does not by itself suffice to assess whether the mark iis a varietal or cultivar. Unless a Note to the File in the record indicates that a separate search by the Trademark Law Library was conducted, the examining attorney must submit a request to the Trademark Law Library to undertake an independent investigation of any evidence that would support a refusal to register, using sources of evidence that are appropriate for the particular goods specified in the application (e.g., laboratories and repositories of the United States Department of Agriculture, plant patent information from the USPTO, a variety name search of plants certified under the Plant Variety Protection Act listed at www.ars-grin.gov/npgs/searchgrin.html ). Before any mark for live plants, agricultural seeds, fresh fruits, or fresh vegetables is approved for publication, a Note to the File must be added to the record indicating that the results of the varietal search were reviewed. In addition, the examining attorney also may inquire of the applicant whether the term has ever been used as a varietal name, and whether such name has been used in connection with a plant patent, a utility patent, or a certificate for plant-variety protection. See 37 C.F.R. §2.61(b).

If the examining attorney determines that wording sought to be registered as a mark for live plants, agricultural seeds, fresh fruits, or fresh vegetables comprises a varietal or cultivar name, then the examining attorney must refuse registration, or require a disclaimer, on the ground that the matter is the varietal name of the goods and does not function as a trademark under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127. See Pennington Seed, 80 USPQ2d at 1761-62 (upholding the USPTO’s long-standing precedent and policy of treating varietal names as generic, and affirming refusal to register REBEL for grass seed because it is the varietal name for the grass seed as evidenced by its designation as the varietal name in applicant’s plant variety protection certificate); Dixie Rose Nursery, 55 USPQ at 316 (holding TEXAS CENTENNIAL, although originally arbitrary, has become the varietal name for a type of rose; In re Hilltop Orchards & Nurseries, Inc., 206 USPQ 1034, 1035 (TTAB 1979) (affirming the refusal to register COMMANDER YORK for apple trees because it is the varietal name for the trees as evidenced by use in applicant’s catalogue); In re Farmer Seed & Nursery Co., 137 USPQ 231, 231-32 (TTAB 1963) (upholding the refusal to register CHIEF BEMIDJI as a trademark because it is the varietal name for a strawberry plant and noting that large expenditures of money does not elevate the term to a trademark; In re Cohn Bodger & Sons Co., 122 USPQ 345, 346 (TTAB 1959) (holding BLUE LUSTRE merely a varietal name for petunia seeds as evidenced by applicant’s catalogs).

Likewise, if the mark identifies the prominent portion of a varietal name, it must be refused. In re Delta & Pine Land Co., 26 USPQ2d 1157 (TTAB 1993) (affirming the refusal to register DELTAPINE, which was a portion of the varietal names Deltapine 50, Deltapine 20, Deltapine 105 and Deltapine 506).