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`CAFC TRADEMARK APPEAL CLOSE-OUT SHEET
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`DOCUMENTS FOR SCANNING
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`TO: A—_Dgdg .P0[2g
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`DATE:
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`]g‘[g[0Q
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`CASENAME KRB 3u&S@o. ?em...t»m Sui
`A
`DATE DISPOSED- C7 0
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`DATE APPEAL FILED-__ l0; '
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`DISPOSITION' Y"""¢JL’ ' -
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`DOCUMENTS ATTACHED:
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`I9/DECISION
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`u;/1\4ANDATE
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`mfi>PELLANT*s BRIEF (BLUE)
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`Lu/X1>PELLEE’s BRIEF amp)
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`[D/fiPLY BRIEF (GRAY)
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`D OTHER:
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`NEEDS ABANDONMENT ENTERED
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`El YES
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`E/NO
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`.._A.L....,;.
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`United States Court of Appeals for the Federal Circuit
`
`06-1133
`
`(Serial No. 76/289,621)
`
`IN RE PENNINGTON SEED, INC.
`(mark formerly owned by KRB Seed Company, LLC)
`
`
`Howard A. MacCord Jr., MacCord Mason PLLC, of Greensboro, North Carolina,
`argued for appellant.
`
`Stephen Walsh, Associate Solicitor, United States Patent and Trademark Office,
`of Arlington, Virginia, argued for appellee. With him on the brief were John M. Whealan,
`Solicitor, and Nancy C. Slutter, Associate Solicitor. Of counsel was Heather F. Auyang,
`Associate Solicitor.
`
`Appealed from:
`
`United States Patent and Trademark Office
`Trademark Trial and Appeal Board
`
`

`
`United States Court of Appeals for the Federal Circuit
`
`06-1 133
`
`(Serial No. 76/289,621)
`
`IN RE PENNINGTON SEED, INC.
`(mark formerly owned by KRB Seed Company, LLC)
`
`DECIDED: October 19, 2006
`
`Before MICHEL, Chief Judge, LOURIE, Circuit Judge, and ELLIS,’ District Judge.
`
`LOURIE, Circuit Judge.
`
`DECISION
`
`Pennington Seed, Inc. (“Pennington”) appeals from the decision of the United
`
`States Patent and Trademark Office (“PTO”) Trademark Trial and Appeal Board (the
`
`“Board”) refusing registration of the term “Rebel” as a trademark for a variety of grass
`
`seed.
`
`in re KRB Seed Co., 76 U.S.P.Q. 2d 1156 (T.T.A.B. 2005). Because the Board
`
`correctly determined that the applied-for mark is the generic designation for that variety
`
`of grass seed and hence is not entitled to trademark registration, we affirm.
`
`t
`
`III, District Judge, United States District Court for the
`Honorable T.S. Ellis,
`Eastern District of Virginia, sitting by designation.
`
`

`
`BACKGROUND
`
`On July 25, 2001, KRB Seed Company, LLC (hereinafter
`
`referred to as
`
`“Applicant”) filed an application to register the word “Rebel” as a trademark for grass
`
`seed. Applicant had previously designated the term “Rebel” as the varietal (or cultivar)
`
`name for a grass seed that was the subject of a plant variety protection (“PVP”)
`
`certificate,
`
`issued on May 14, 1981.
`
`The trademark examining attorney refused
`
`registration of the applied-for mark under 15 U.S.C. §§ 1051, 1052, and 1127 on the
`
`ground that it was a varietal name for a type of grass seed, and thus that the name was
`
`the seed’s generic designation. Applicant appealed the examiner's decision to the
`
`Board and, upon request by the examiner, the Board remanded the appeal to the
`
`examiner to address Applicant’s claim of acquired distinctiveness under 15 U.S.C.
`
`§1052(f). Upon remand, the examiner refused the registration under 15 U.S.C. §
`
`1052(f) and made final his refusal to register the term “Rebel” as a trademark for grass
`
`seed.
`
`Applicant appealed to the Board, and the Board affirmed the examiner's decision.
`
`The Board first found that the evidence conclusively established that the term “Rebel” is
`
`a varietal name for a type of grass seed. Thus, the Board observed that the only issue
`
`before it was whether the PTO’s long-standing precedent and policy of treating varietal
`
`names as generic was still valid. After reviewing prior case law, the Board concluded
`
`that the PTO’s policy was still valid.
`
`In reaching its conclusion, the Board rejected
`
`App|icant’s argument that the PTO had incorrectly applied Dixie Rose Nursery v. Coe,
`
`131 F.2d 446 (D.C. Cir. 1942), in which the District of Columbia Circuit determined that
`
`the term “Texas Centennial” could not be registered as a trademark because it was the
`
`06-1133
`
`1
`
`2
`
`

`
`varietal name for a particular rose. The Board observed that Dixie Rose did not set
`
`x.
`
`forth a special test from which to judge genericness, but simply established that varietal
`
`names were not subject to trademark protection.
`
`The Board also found support for its decision in the Trademark Manual of
`
`Examining Procedure (“TMEP”), which instructs examiners to refuse registration of
`
`varietal names because such names do not function as source indicators. Additional
`
`support was provided by the International Convention for the Protection of New
`
`Varieties of Plants (“UPOV”), which provides, inti E, that a name for a new plant
`
`variety must be designated and that that designation will be its generic name, and by
`
`Section 52 of the Plant Variety Protection Act (“PVPA”), 7 U.S.C. § 2422, which requires
`
`that an application for a PVP certificate include the name of the plant variety.
`
`
`The Board further determined that Applicant's reliance on TrafFix Devices Inc. v.
`
`Marketing Displays, Inc., 532 U.S. 23 (2001), for the holding that a claimed feature of an
`
`expired patent could nevertheless function as a trademark was misplaced. According to
`
`the Board, an applicant must provide a name for a variety of plant when applying for a
`
`PVP certificate, and that requirement is a clear indication “that the name of the varietal
`
`is in the nature of a generic term.” In re KRB Seed, 76 U.S.P.Q. 2d at 1159.
`
`In light of
`
`the case law, the UPOV, the PVPA, and the TMEP, the Board declined to disturb its
`
`policy of treating varietal names as generic designations.
`
`Applicant
`
`timely appealed, and we have jurisdiction pursuant
`
`to 28 U.S.C.
`
`§ 1295(a)(4)(B).
`
`DISCUSSION
`
`06-1 133
`
`3
`
`

`
`We apply a limited standard of review to Board decisions,
`
`reviewing legal
`
`determinations gl_<_-2_ r_1_9;/_c_> and factual findings for substantial evidence. ,
`
`338 F.3d 1348, 1349 (Fed. Cir. 2003).
`
`"Substantial evidence requires the reviewing
`
`court to ask whether a reasonable person might find that the evidentiary record supports
`
`
`the agency’s conclusion.” On-Line Careline Inc. v. Am. Online lnc., 229 F.3d 1080,
`
`1085 (Fed. Cir. 2000). Whether a term is a generic, common descriptive name for a
`
`good is a question of fact.
`
`In re Northland Aluminum Prods., 777 F.2d 1556, 1559 (Fed.
`
`Cir. 1985).
`
`On appeal, Pennington argues that the Board erred in applying the rule of _Qi_)_<i_e_
`
`E that varietal names are generic. According to Pennington, a blanket refusal to
`
`register a varietal name fails to consider this court’s test for genericness,
`
`the
`
`primary significance of the mark to the purchasing public. Pennington contends that
`
`under the appropriate test,
`
`the evidence submitted by the examiner, which mainly
`
`consisted of government documents and websites, was insufficient to. establish that the
`
`applied-for mark was generic. Pennington also asserts that a per se rule prohibiting
`
`trademark protection when another form of intellectual property protection is also
`
`procured is no longer appropriate in light of the Supreme Court’s decision in TrafFix.
`
`Pennington further argues that even though the language in the UPOV provides that a
`
`plant's varietal name will be its generic designation, the UPOV is not applicable here
`
`because Applicant’s PVP certificate issued before the UPOV’s effective date.
`
`Finally, Pennington argues that
`the generic treatment of varietal names is
`inconsistent with public policy; Congress made clear in enacting 15 U.S.C. § 1064 in
`
`response to the Ninth Circuit’s decision in Anti-Monopoly v. General Mills Fun Group,
`
`06-1133
`
`4
`
`

`
`Ii, 684 F.2d 1310 (9th Cir. 1982), that a name may be used to indicate both a product
`
`and its source. According to Pennington,
`
`this court adopted such reasoning in its
`
`decision in In re Montrachet, 878 F.2d 375 (Fed. Cir. 1989), and the Board failed to
`
`follow that precedent.
`
`The Director of the PTO responds that for over sixty years the courts and the
`
`PTO have clearly held that varietal names of plants are not registrable. According to
`
`the Director, application of this rule dates back to the Dixie Rose decision. The Director
`
`contends that since that decision, the PTO’s practice of not registering varietal names
`
`because they are generic designations for plants has become an established principle,
`
`adopted in the UPOV and accommodated by the PVPA. According to the Director, this
`
`recognized principle is consistent with public policy because when a new plant variety is
`
`developed it must be given a name, and that varietal name may be the only name that
`
`purchasers use to designate that particular variety of plant. The Director further
`
`responds that the Supreme Court’s decision in _1_'_r_al‘@ does not require that varietal
`
`names must be registerable as trademarks. Because it is undisputed that the term
`
`“Rebel” is the designated name for a variety of grass and is not a brand name, the term
`was generic from its first use and thus is not entitled to trademark registration.
`
`We agree with the Director that the Board correctly decided 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.
`
`ln Qxjg
`
`3%, 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
`
`06-1133
`
`5
`
`

`
`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.” |d_.
`
`Subsequent Board decisions 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. E Cohn Bodger & Sons Co., 122 U.S.P.Q. 345 (T.T.A.B. 1959)
`
`(refusing registration of the name “Blue Lustre” as a trademark for hybrid petunia
`
`seeds); In re Farmer Seed & Nursegy Co., 137 U.S.P.Q. 231 (T.T.A.B. 1963) (refusing
`
`registration of the name “Chief Bemidji” as a trademark for a strawberry plant).
`
`In In re
`
`06-1 133
`
`6
`
`

`
`Hilltop Orchards & Nurseries, |nc., 206 U.S.P.Q. 1034, 1036 (T.T.A.B. 1979),
`
`in which
`
`the Board affirmed the examiner’s refusal to register the name “Commander York” as a
`
`trademark for apple trees, the Board reasoned that the purchaser “has to have some
`
`common descriptive name he can use to indicate that he wants one 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.”
`
`Those cases are instructive to our decision in this case.
`
`It is well-established that
`
`an applicant cannot acquire trademark protection for the generic name of a product.
`
`§_e§ 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 & Specialg 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”); Be|lSouth Corp. v. DataNationa| COl'Q., 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
`
`06-1133
`
`7
`
`

`
`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 app|icant’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. As we stated in In re Merrill Lynch, Pierce,
`
`
`Fenner & Smith |nc., 828 F.2d 1567, 1569 (Fed. Cir. 1987):
`
`indicating source, are the
`Generic terms, by definition incapable of
`antithesis of trademarks, and can never attain trademark status. The
`reason is plain: To allow trademark protection for generic terms,
`i._e_.,
`names which describe the genus of goods being sold, even when these
`have become identified with a first user, would grant the owner of the mark
`a monopoly, since a competitor could not describe his goods as what they
`are.
`
`06-1133
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`—
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`8
`
`

`
`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.
`
`As our predecessor court has aptly stated:
`
`While it is always distressing to contemplate a situation in which money
`has been invested in a promotion in the mistaken belief that trademark
`rights of value are being created, merchants act at their’ peril in attempting,
`by advertising, to convert common descriptive names, which belong to the
`public,
`to their own exclusive use. Even though they succeed in the
`creation of de facto secondary meaning, due to lack of competition or
`other happenstance, the law respecting registration will not give it any
`effect.
`
`Weiss Noodle, 290 F.2d at 845. Thus, the Board correctly decided that the term “Rebel”
`
`cannot be registered for grass seed because those in the trade “need to call it by the
`
`name that it is known or othenrvise consumers will not know what they are buying.” In re
`
`KRB Seed, 76 U.S.P.Q. 2d at 1160.
`
`06-1 133
`
`9
`
`

`
`That determination is consistent with the language in the UPOV, the PVPA, and
`
`the TMEP, which provide that plant variety names are unregistrable as trademarks.
`
`Chapter VI Article 20 of UPOV, as revised in 1991, provides that:
`
`(1) (a) The variety shall be designated by a denomination which will be its
`generic designation.
`(b) Each Contracting Party shall ensure that, subject to paragraph (4),
`no rights in the designation registered as the denomination of the
`variety shall hamper the free use of the denomination in connection
`with the variety, even after the expiration of the breeder’s right.
`
`***
`
`(8) When a variety is offered for sale or marketed, it shall be permitted to
`associate a trademark, trade name or other similar indication with a
`registered variety denomination. If such an indication is so associated,
`the denomination must nevertheless be easily recognizable.
`
`The United States is a party to the UPOV. Although Pennington argues that
`
`UPOV does not apply here because the use of the designation “Rebel” predated the
`
`United States’ adherence to UPOV, we find this argument unpersuasive. The PTO’s
`
`policy of refusing registration of varietal names dates back to the Dixie Rose case, well
`
`before the UPOV treaty. While the requirements of the UPOV do not control this case,
`
`they underlie and are consistent with the conclusion that a varietal name is generic and
`
`hence support the PTO’s refusal to register the term “Rebel” as a trademark. Further,
`
`the PVPA, which requires an application for a PVP certificate to include the name of the
`
`plant variety,
`
`is also consistent with our decision. §e_e 7 U.S.C. § 2422.
`
`In addition,
`
`section 1202.12 of the TMEP provides that “varieta| 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.” While the TMEP is not established law, but only provides instructions to
`
`examiners,
`
`it does represent the PTO’s established policy on varietal names that is
`
`06-1133
`
`10
`
`

`
`
`entitled to our respect. We see no reason to differ with it. See W. Fla. Seafood Inc. v.
`
`Jet Rests., |nc., 21 F.3d, 1122, 1127 n.8 (Fed. Cir. 1994) (“While the TMEP does not
`
`have the force and effect of law, it sets forth the guidelines and procedures followed by
`
`the examining attorneys at the PTO.”).
`
`Pennington contends that an amendment to the Lanham Act, embodied in 15
`
`U.S.C. § 1064 provides support for its position that a mark cannot be deemed generic
`
`solely because the mark has also been used as a name for a product. That amendment
`
`does not aid Pennington.
`
`Section 1064 of Title 15 is entitled “Cancellation of
`
`Registration” and provides generally for the cancellation of a registered mark if such a
`
`mark becomes generic. Section 1064(3) provides specifically that a “registered mark
`
`shall not be deemed to be the generic name of goods or services solely because such
`
`mark is also used as a name of or to identify a unique product or service.” That section,
`
`however, pertains to cancellation of registered marks and does not apply here because
`
`the term “Rebel” is not a registered mark. Moreover the amendment was enacted in
`
`response to the decision in Anti-Monopoly v. General Mills Fun Group, Inc., 684 F.2d
`
`1310 (9th Cir. 1982), wherein the term “Monopoly” was used to identify both the source
`
`of a product and to describe the product itself, and hence was held to be generic. The
`
`statute reversed that holding. Here, the term “Rebel” does not function as a source
`
`indicator, but rather indicates, and always has indicated, a variety of grass seed.
`
`Similarly, our decision in
`
`In
`
`re Montrachet does not provide support
`
`for
`
`Pennington.
`
`In that case, the issue was “whether MONTRACHET has lost its original
`
`trademark significance; that is whether MONTRACHET is now the common descriptive
`
`or generic name for applicant's cheese.”
`
`In re Montrachet, 878 F.2d at 376.
`
`In
`
`06-1133
`
`11
`
`

`
`determining that the term “Montrachet” for goat cheese was not generic,
`
`the court
`
`reasoned “[t]hat a particular source makes a goat cheese with
`
`recognizable
`
`characteristics does not convert the designation of source to a common or generic
`
`name," and cited 15 U.S.C. § 1064(c). Q; at 376-77. There the inquiry was whether a
`
`trademark as used on a single product became generic. Here, the term “Rebel,” as a
`
`varietal name, was generic a_b mg. Thus, 15 U.S.C. § 1064 and In re Montrachet are
`
`not relevant to the disposition of this case.
`
`Finally, we reject Pennington’s argument that the Supreme Court’s decision in
`
`'_l'_r§_fl_=i_x supports its appeal. Pennington argues that ix held that acquiring patent
`
`protection on a product does not prohibit an applicant from also acquiring trademark
`
`' protection on that product, and likewise that Applicant should not be prohibited from
`
`acquiring trademark protection on its plant merely because that plant has plant variety
`
`protection.
`
`In J, the “principal question” was “the effect of an expired patent on a
`
`claim of trade dress infringement.” 522 U.S. at 29. The Court then stated that a “utility
`
`patent is strong evidence that the features therein claimed are functional.” Q That
`
`case was thus concerned with a very different issue: whether a claimed feature of an
`
`expired patent could acquire trade dress protection, and the Court held that there was a
`
`rebuttable presumption that it could not. Here,
`
`it
`
`is irrelevant to our decision that
`
`App|icant’s plant protection has expired, and we are not concerned with whether a
`
`functional aspect of a plant can acquire trade dress protection. As the Board stated, the
`
`designation of the term “Rebel” in the PVP certificate is not an arbitrary aspect of a PVP
`
`certificate, but is a “necessary element, showing that the name of the varietal is in the
`
`nature of a generic term.” In re KRB Seed, 76 U.S.P.Q’. 2d at 1159. Thus, the TrafFix
`
`06-1133
`
`12
`
`

`
`decision does not provide a relevant analogy to this case, which concerns whether a
`
`varietal name is generic.
`
`CONCLUSION
`
`Because we hold as a matter of law that plant varietal names are generic and
`
`substantial evidence supports the Board’s finding that “Rebel” is a varietal name, the
`
`decision of the Board is affirmed.
`
`A
`
`AFFIRMED
`
`06-1133
`
`13