As stated in section 1202.12 Varietal and Cultivar Names (Examination of Applications for Seeds and Plants) of the Trademark Manual of Examination Procedure:

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 public. 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 the public.

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, 131 F.2d at 447, 55 USPQ at 316. 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.

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, the examining attorney must 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). The examining attorney should also 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).

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 In re Pennington Seed, Inc., 466 F.3d 1053, 80 USPQ2d 1758 (Fed. Cir. 2006) (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 v. Coe, 131 F.2d 446, 55 USPQ 315 (D.C. Cir. 1942), cert. denied 318 U.S. 782, 57 USPQ 568 (1943); In re Hilltop Orchards & Nurseries, Inc., 206 USPQ 1034 (TTAB 1979); In re Farmer Seed & Nursery Co., 137 USPQ 231 (TTAB 1963); In re Cohn Bodger & Sons Co., 122 USPQ 345 (TTAB 1959).

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

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  • Varietal names are considered generic and cannot be registered as trademarks.
    • In re KRB Seed Company, LLC, Serial No. 76289621, (TTAB 2005).
      • The USPTO, including the Board, has treated varietal names as generic designations for several decades. See In re Delta and Pine Land Co., 26 USPQ2d 1157, 1159 n. 4 (TTAB 1993) (varietal names are generic designations and cannot be registered as trademarks) and cases cited therein.
    • In re KRB Seed Company, LLC, Serial No. 76289621, (TTAB 2005).
      • As noted in the Trademark Manual of Examining Procedure, "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." TMEP §1202.12.
    • In re KRB Seed Company, LLC, Serial No. 76289621, (TTAB 2005).
      • The basis for this examination policy is rooted in prior Board case law. See Delta and Pine Land Co., 26 USPQ2d 1157; In re Hilltop Orchards & Nurseries, Inc., 206 USPQ 1034 (TTAB 1979); In re Farmer Seed & Nursery Co., 137 USPQ 231 (TTAB 1963); and In re Cohn Bodger & Sons Co., 122 USPQ 345 (TTAB 1959).
    • In re KRB Seed Company, LLC, Serial No. 76289621, (TTAB 2005).
      • With regard to applicant's argument that the USPTO has incorrectly applied Dixie Rose, contrary to applicant's assertion, this case did not set forth a particular test….This passage goes beyond the facts of the Dixie Rose case and is merely an illustration or analogy presented by the court, i.e., dictum.
    • In re KRB Seed Company, LLC, Serial No. 76289621, (TTAB 2005).
      • With regard to applicant's argument that Traffix has modified "the harsh rule of early cases such as In re Farmer Seed and Nursery Co., 137 USPQ 231 (TTAB 1963)," the decision in Traffix does not provide real support for applicant's point and it provides an analogy that indicates that a varietal name is generic. In Traffix the Court stated: A utility patent is strong evidence that the features therein claimed are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device. Traffix at 29.
    • In re KRB Seed Company, LLC, Serial No. 76289621, (TTAB 2005).
      • Thus, the USPTO's position on the unregistrability of varietal names is supported by the PVPA, which was enacted in 1970, after the Dixie Rose decision.
    • In re KRB Seed Company, LLC, Serial No. 76289621, (TTAB 2005).
      • FOOTNOTE 6 "Although applicant cited to a different section of the McCarthy treatise, the section quoted below is more on point: In 1981 the Convention of the International Union for the Protection of New Plant Varieties (UPOV) became applicable to the United States. Article 1 of the UPOV provides that a new plant variety shall be designated by a denomination destined to be its generic designation and member states will ensure that no rights in the name "shall hamper the free use of the denomination in connection with the variety, even after the expiration of the [plant patent] protection. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §12:36 (4th ed. 2005)."
    • In re KRB Seed Company, LLC, Serial No. 76289621, (TTAB 2005).
      • Therefore, inasmuch as we reiterate the correctness of the case law that "varietal names are generic designations and cannot be registered as trademarks," Delta and Pine Land Co., 26 USPQ2d at 1158 n. 4, and inasmuch as applicant's proposed mark is a varietal name, we find that it is generic and unregistrable; and applicant's arguments and evidence of acquired distinctiveness cannot overcome such a finding. See In re Farmer Seed & Nursery Company, 137 USPQ 231.
    • In re KRB Seed Company, LLC, Serial No. 76289621, (TTAB 2005).
      • FOOTNOTE 7 "In this regard, applicant's argument that competitors have alternative names for the grass seed, specifically, the Latin name "festuca arundinacea" merely underscores why the varietal name is the common or generic term of the goods. This argument was addressed by the Board in In re Hilltop Orchards & Nurseries, Inc., 206 USPQ 1034, 1035 (TTAB 1979): "Every type of tree or plant in the vegetable kingdom has a specified generic (Latin) name, generally known only to those scientists well versed in the botanical community, and entirely unknown to the average purchaser in the marketplace where such products are sold. What we are concerned with in the present case is the impact which the [varietal name] would have upon the purchaser or the prospective purchaser of apple trees as he encounters such term in the marketing area where such goods are sold, and not its impact upon those scientists especially skilled in the botanical field. The purchaser or prospective purchaser has to have some common descriptive name he can use to indicate that he wants one particular variety of apple tree, rose, or whatever, as opposed to another, and it is the varietal name of the strain which naturally and commonly serves this purpose."
In re KRB Seed Company, LLC, Serial No. 76289621, (TTAB 2005) Grand Total
TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001) 1
In re Delta and Pine Land Co., 26 USPQ2d 1157 (TTAB 1993) 1
In re Hilltop Orchards & Nurseries Inc., 206 USPQ 1034 (TTAB 1979) 1
In re Farmer Seed & Nursery Co., 137 USPQ 231 (TTAB 1963) 1
In re Cohn Bodger & Sons Co., 122 USPQ 345 (TTAB 1959) 1
Grand Total 5 5

C.F.R. Sec. 2.61. Action by examiner.

  1. (a) Applications for registration, including amendments to allege use under section 1(c) of the Act, and statements of use under section 1(d) of the Act, will be examined and, if the applicant is found not entitled to registration for any reason, applicant will be notified and advised of the reasons therefor and of any formal requirements or objections.
  2. (b) The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.
  3. (c) Whenever it shall be found that two or more parties whose interests are in conflict are represented by the same attorney, each party and also the attorney shall be notified of this fact.

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