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Archived updates for Monday, October 23, 2006

REBEL Generic for Variety of Grass Seed

In In Re Pennington Seed, Inc. October 19, 2006, the Federal Circuit agreed with the USPTO that the varietal name "Rebel" is generic and hence is not entitled to trademark registration.

Instructive to our holding is the decision in Dixie Rose. Although that decision of the District of Columbia Circuit is not binding on our court, we find its reasoning persuasive. In Dixie Rose, an applicant had patented a new variety of rose and had sought to register the term "Texas Centennial" as a trademark for the rose. 131 F.2d at 446. The Commissioner of Patents refused registration of the proposed term on the ground that it was the name of the variety of the rose. The Commissioner reasoned that the term "Texas Centennial" was "one of a hundred varieties of hybrid tea rose listed in applicant’s catalog of record, each bearing its own distinctive name. . . . Each is the name of a particular type, style, or variety of rose, and would be likely to convey no other meaning to purchasers." Ex parte Dixie Rose Nursery, 45 U.S.P.Q. 673 (Comm’r Pats. 1940). The district court refused to authorize the Commissioner to register the proposed term. On appeal, the District of Columbia Circuit affirmed, reasoning that the rose variety was "known throughout the trade, and listed in appellant’s catalog by this name. Purchasers call for it, and for no
other variety, by this name." Dixie Rose, 131 F.2d at 446. Thus, the court determined that the PTO and district court "might properly conclude that the words ‘Texas Centennial,’ though originally arbitrary, have come to describe to the public a rose of a particular sort, not a rose from a particular nursery." Id. at 447. The
court further reasoned that words which are descriptive cannot be registered, even when an "applicant and his licensees are, for the moment, the only persons who produce the thing described." Id.

. . . It is well-established that an applicant cannot acquire trademark protection for
the generic name of a product. See Goodyear’s Rubber Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602 (1888) ("names which are thus descriptive of a class of goods cannot be exclusively appropriated by any one"); Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 847 (C.C.P.A. 1961) ("no one can be granted the exclusive use of the name of an article"); BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 1569 (Fed. Cir. 1995) (the generic name of a product "cannot inform the public that the product has a particular source"). Similarly, in this case, the examiner determined that the evidence demonstrated that the term "Rebel" was the varietal name for the grass seed and was the seed’s generic designation.

We see no reason to disturb the examiner’s finding, as substantial evidence in the record supports his determination that "Rebel" is a varietal name and is thus generic. The evidence consists of excerpts of articles from a variety of sources, including one from the Germplasm Resources Information Network web server, wherein "Rebel" is listed as a cultivar name for tall fescue grass seed, an excerpt from the database maintained by UPOV listing "Rebel" as the denomination of a tall fescue variety, and an excerpt from a listing on plant varieties kept by the Seed Regulatory and Testing Branch of the United Statues Department of Agriculture.

The evidence thus demonstrates that the term "Rebel" is the name of a variety of grass seed and as such is the variety’s generic designation. There is in fact no evidence in the record to suggest that the asserted mark functions as a source
indicator, rather than as a name for a particular grass seed. Thus, substantial evidence supports the Board’s finding that the term "Rebel" is the name of a variety of grass seed and is its generic designation. The reasoning underlying the PTO’s decision to refuse registration of a varietal name is not, as Pennington argues, inconsistent with the public interest. When an applicant seeks protection of its grass seed, the applicant is required to name its developed variety. Applicant here decided to name its variety of grass seed "Rebel" and that name was disclosed in the PVP certificate, designating to the public the name of the variety of grass seed. Just as in Dixie Rose, that variety of grass seed became known throughout the trade by the name "Rebel" and is listed in applicant’s catalog by that name. When a purchaser asks for that particular type of grass seed, he has no other name to use but its designated name. The purchasing public only has the term "Rebel" to refer to this particular product. . . .

We do not of course hold that an applicant is precluded from acquiring trademark protection for a particular variety of grass seed. If an applicant wishes to establish trademark protection for its variety of grass seed, it can do so by associating a particular brand name with its grass seed. However, having designated the term "Rebel" as the varietal name for grass seed 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. This situation may be contrasted with pharmaceutical products where a generic name is designated for a new pharmaceutical product and its manufacturer associates it with a brand name. For example, ibuprofen is the generic term designated for a particular nonsteroidal anti-inflammatory drug and ADVIL is a brand name indicating a source of the drug. Trademark protection does not inure to the generic name there and it does not do so here.

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