`
`
`
`
`
`This Opinion is a
`Precedent of the TTAB
`
`Mailed: November 22, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`In re International Fruit Genetics, LLC
`_____
`
`Serial No. 88711192
`_____
`
`Kimberlee A. Boyle of Richard Law Group, Inc.,
`for International Fruit Genetics, LLC.
`
`Beniam Biftu, Trademark Examining Attorney, Law Office 117,
`Cynthia Tripi, Managing Attorney.
`
`_____
`
`
`Before Lykos, Goodman, and Coggins,
`Administrative Trademark Judges.
`
`
`Opinion by Lykos, Administrative Trademark Judge:
`
` On December 1, 2019, International Fruit Genetics, LLC (“Applicant”) filed an
`
`application to register on the Principal Register the standard character mark IFG for
`
`goods ultimately identified as “Fresh fruits and vegetables; live plants; live trees; live
`
`grape vines; live plant material, namely, live grape vine material, live plant material
`
`and live tree material” in International Class 31.1 In its application, Applicant claims
`
`
`1 Application Serial No. 88711192, originally filed under Section 1(a) of the Trademark Act,
`15 U.S.C. § 1051(a), claiming June 3, 2009, as the date of first use anywhere and January 8,
`2010, as the date of first use in commerce for International Class 31. To obviate a specimen
`refusal, Applicant amended the filing basis for its International Class 31 goods to intent-to-
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`

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`Serial No. 88711192
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`ownership of Registration No. 3771967 for the same standard character mark IFG on
`
`the Principal Register for “Live plants, namely, table grape vines, cherry trees” in
`
`International Class 31. The registration was issued on April 6, 2010, based on an
`
`application filed November 7, 2006, and has been renewed.
`
`Registration was refused under Trademark Act Sections 1, 2, and 45, 15 U.S.C.
`
`§§ 1051, 1052, 1127, on the ground that the proposed mark identifies the prominent
`
`portion of a varietal name for the identified goods and, thus, does not function as a
`
`trademark to indicate the source of Applicant’s goods and to identify and distinguish
`
`them from others.
`
`Applicant timely filed a notice of appeal. The appeal is fully briefed. For the
`
`reasons explained below, we affirm the refusal to register.
`
`I. Preliminary Issues
`
`A. Material Attached to Applicant’s Brief
`
`Applicant attached to its main brief a photocopy of the entirety of the
`
`INTERNATIONAL CONVENTION FOR THE PROTECTION OF NEW VARIETIES OF PLANTS OF
`
`DECEMBER 2, 1961, AS REVISED AT GENEVA ON NOVEMBER 10, 1972, ON OCTOBER 23,
`
`
`use under Trademark Act Section 1(b), 15 U.S.C. § 1051(b). See September 9, 2020 Response
`to Office Action, pp. 4-5. The application originally included services which eventually were
`the subject of a divisional request in International Classes 44 and 45 in “child” Application
`Serial No. 88983999. See “Request to Divide” dated December 16, 2021 and “Notice that
`Processing of Request to Divide Application is Completed” dated March 29, 2022. The services
`in Classes 44 and 45 are not part of this appeal.
`
` Citations to the prosecution file refer to the USPTO’s Trademark Status & Document
`Retrieval (“TSDR”) case viewer format. Citations to briefs refer to actual page number, if
`available, as well as TTABVUE, the Board’s online docketing system. The number preceding
`“TTABVUE” corresponds to the docket entry number; the number(s) following “TTABVUE”
`refer to the page number(s) of that particular docket entry. See Turdin v. Trilobite, Ltd., 109
`USPQ2d 1473, 1476 n.6 (TTAB 2014).
`
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`Serial No. 88711192
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`1978, AND ON MARCH 19, 1991 (hereinafter referred to as the “UPOV Convention” or
`
`“Convention”).2 The Examining Attorney objects to the submission as untimely “new
`
`evidence” under Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d).3
`
`We need not rule on the objection because the Board may sua sponte take judicial
`
`notice of international conventions and treaties. See, e.g., In re Int’l Watchman, Inc.,
`
`2021 USPQ2d 1171, at *4 n.5 (TTAB 2021) (Board took judicial notice of the text of
`
`the North Atlantic Treaty). The UPOV Convention is an international convention and
`
`is publicly available at various sources, including the UPOV website at
`
`https://upovlex.upov.int/en/convention.4 We therefore take judicial notice of the text
`
`of the 1991 Act of the Convention and its Explanatory Notes, as well as the publicly
`
`available facts on the UPOV website at https://www.upov.int about the Convention
`
`and its administration. Cf. Fed. R. Evid. 201(b)(2) (“The court may judicially notice a
`
`fact that is not subject to reasonable dispute because it … can be accurately and
`
`readily determined from sources whose accuracy cannot reasonably be questioned.”).
`
`See, e.g., In re tapio GmbH, 2020 USPQ2d 11387, at *13 n.46 (TTAB 2020) (Board
`
`took judicial notice of 2010 U.S. Census records for the top 1,000 surnames); see also,
`
`United States v. Garcia, 855 F.3d 615 (4th Cir. 2017) (taking judicial notice of facts
`
`on U.S. Citizenship and Immigration Services’ (“USCIS”) website because it is a
`
`
`2 Applicant’s Appeal Brief, 4 TTABVUE 15-38.
`
`3 Examining Attorney’s Brief, 6 TTABVUE 4. The Examining Attorney mischaracterized the
`material attached to Applicant’s brief, calling it “Chapter VI of Article 20 of the 1991
`International Convention for the Protection of New Varieties of Plants Act, Publication No:
`221(E).” The attachment is a reprint of the 1991 Act of the Convention in its entirety.
`
`4 The International Union for the Protection of New Varieties of Plants (UPOV) is an
`intergovernmental organization with headquarters in Geneva, Switzerland.
`
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`Serial No. 88711192
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`governmental source whose accuracy cannot be questioned); Daniels Hall v. Nat’l
`
`Educ. Ass’n, 629 F.3d 992, 998-99 (9th Cir. 2010) (taking judicial notice of information
`
`on two school districts’ websites because they were government entities); Hong v. Rec.
`
`Equip., Inc., 2019 USPQ2d 410124, at n.3 (W.D. Wash. 2019) (the court may take
`
`judicial notice of information published on government website). In view thereof, the
`
`Examining Attorney’s objection is moot.
`
`B. Length of Applicant’s Appeal Brief
`
`The Examining Attorney also objects to Applicant’s main appeal brief, claiming
`
`that it is 38 pages in length, thereby exceeding the 25 page limitation as set out in
`
`Trademark Rule 2.142(b)(2), 37 C.F.R. § 2.142(b)(2). The Rule provides in pertinent
`
`part:
`
`Without prior leave of the Trademark Trial and Appeal
`Board, a brief shall not exceed twenty-five pages in length
`in its entirety, including the table of contents, index of
`cases, description of the record, statement of the issues,
`recitation of the facts, argument, and summary.
`
`A review of Applicant’s main brief shows that it totals only 13 pages, including the
`
`table of authorities, summary of the procedural history, and arguments. The
`
`remaining pages consist of a photocopy of the UPOV Convention as discussed above.
`
`This extraneous submission does not count against the page limitation as set forth in
`
`Trademark Rule 2.142(b)(2). Accordingly, the Examining Attorney’s objection is
`
`overruled.
`
`II. Background
`
`Before discussing the varietal name refusal, we provide some background on the
`
`UPOV Convention, U.S. patent law, and other statutory frameworks for the
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`Serial No. 88711192
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`protection of varietal names.
`
`A. The UPOV Convention5
`
`The UPOV Convention was adopted on December 2, 1961, at a diplomatic
`
`conference in France, but did not come into force until 1968, following ratification by
`
`the United Kingdom, the Netherlands and Germany.6 The Convention was
`
`subsequently revised in 1972, 1978, and 1991 to reflect technological advances in
`
`plant breeding.7 The United States is a signatory to the 1991 Act of the Convention.8
`
`UPOV’s stated mission “is to provide and promote an effective system of plant variety
`
`protection, with the aim of encouraging the development of new varieties of plants,
`
`for the benefit of society.”9 As per the terms of the Convention, its permanent
`
`administrative bodies are the Council and Office of the Union, headquartered in
`
`Geneva, Switzerland,10 which
`
`receive guidance
`
`from various
`
`technical,
`
`
`5 The United States is also obligated to protect plant varieties under Article 27.3(b) of the
`AGREEMENT ON TRADE RELATED ASPECTS OF INTELLECTUAL PROPERTY (“TRIPs”), which
`states, in relevant part, that “Members shall provide for the protection of plant varieties
`either by patents or by a sui generis system or by a combination thereof.” The United States
`implemented the TRIPs agreement with the passage of the Uruguay Round Agreements Act
`(“URAA”), Pub.L. No. 103-465, 108 Stat. 4809 (1994).
`
`6 UPOV website, https://upovlex.upov.int/en/convention. See also MANUAL OF PATENT
`EXAMINING PROCEDURE (“MPEP”) § 1612 (“UPOV Convention”) (June 2020 Publication of
`Revision 10.2019).
`
`7 UPOV website, https://upovlex.upov.int/en/convention. See also MPEP § 1612.
`
`8 MPEP § 1612.
`
`9 UPOV website, https://www.upov.int/portal/index.html.en. See also UPOV Convention,
`Preamble, March 19, 1991, https://www.upov.int/edocs/pubdocs/en/upov_pub_221.pdf.
`
`10 UPOV Convention, Ch. VIII (“The Union”), art. 24(3), art. 25, art. 26 and art. 27, March
`19, 1991, https://www.upov.int/edocs/pubdocs/en/upov_pub_221.pdf.
`
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`Serial No. 88711192
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`administrative and legal committees.11
`
`The UPOV Convention sets out the framework and requirements for contracting
`
`parties to provide protection for new varietal names through the grant of an
`
`intellectual property right, called the “breeder’s right,” to either “the person who bred,
`
`or discovered and developed, a variety,” or the employer thereof.12 To be eligible for
`
`protection under a breeder’s right, the variety must be (i) new, (ii) distinct from
`
`existing, commonly known varieties, (iii) uniform, and (iv) stable.13 The governmental
`
`authority of each contracting party is charged with evaluating applications for
`
`breeder’s rights.14 The application must set forth “a [varietal] denomination which
`
`will be its generic designation,”15 and the chosen denomination “must enable the
`
`variety to be identified.”16 The chosen varietal name cannot “consist solely of figures
`
`except where this is an established practice for designating varieties.”17 “Prior rights
`
`of third persons shall not be affected [by the designation of a varietal denomination].
`
`If, by reason of a prior right, the use of the denomination of a variety is forbidden to
`
`
`11 UPOV website, https://www.upov.int/about/en/organigram.html.
`
`12 UPOV Convention, Ch. I (“Definitions”), art. 1(iv) and art. (v), March 19, 1991,
`https://www.upov.int/edocs/pubdocs/en/upov_pub_221.pdf .
`
`13 UPOV Convention, Ch. III (“Conditions for the Grant of the Breeder’s Right”), art. 5, March
`19, 1991, https://www.upov.int/edocs/pubdocs/en/upov_pub_221.pdf.
`
`14 UPOV Convention, Ch. IV (“Application for the Grant of the Breeder’s Right”), March 19,
`1991, https://www.upov.int/edocs/pubdocs/en/upov_pub_221.pdf.
`
`15 UPOV Convention, Ch. VI (“Variety Denomination”), art. 20(1)(a), March 19, 1991,
`https://www.upov.int/edocs/pubdocs/en/upov_pub_221.pdf.
`
`16 UPOV Convention, Ch. VI (“Variety Denomination”), art. 20(2), March 19, 1991,
`https://www.upov.int/edocs/pubdocs/en/upov_pub_221.pdf.
`
`17 UPOV Convention, Ch. VI (“Variety Denomination”), art. 20(2), March 19, 1991,
`https://www.upov.int/edocs/pubdocs/en/upov_pub_221.pdf.
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`Serial No. 88711192
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`a person who, in accordance with the provisions of paragraph (7),18 is obliged to use
`
`it, the authority shall require the breeder to submit another denomination for the
`
`variety.”19 The UPOV Convention provides a minimum term of protection of 20 years
`
`for new and distinct plant varieties, and 25 years for trees and vines.20
`
`As noted above, the Convention mandates that chosen variety denominations be
`
`different from an existing variety of the same plant species or a closely related
`
`species, and “not be liable to mislead or to cause confusion concerning the
`
`characteristics, value or identity of the variety or the identity of the breeder.”21 To
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`facilitate adherence to this requirement, UPOV maintains an online database with
`
`data on plant varieties from UPOV Member States and the Organization for
`
`Economic Co-operation and Development (OECD) known as the PLUTO PLANT
`
`VARIETY DATABASE.22 The PLUTO PLANT VARIETY DATABASE allows users to conduct
`
`a preliminary search to verify whether a denomination may be confusingly similar to
`
`the denominations of existing varieties of the same “Variety Denomination Class.”23
`
`
`18 Article 20(7) of the UPOV Convention provides that “[a]ny person who, within the territory
`of one of the Contracting Parties, offers for sale or markets propagating material of a variety
`protected within the said territory shall be obliged to use the denomination of that variety,
`even after the expiration of the breeder’s right in that variety, except where, in accordance
`with the provisions of paragraph (4), prior rights prevent such use.”
`
`19 UPOV Convention, Ch. VI (“Variety Denomination”), art. 20(4), March 19, 1991,
`https://www.upov.int/edocs/pubdocs/en/upov_pub_221.pdf.
`
`20 UPOV Convention, Ch. V (“Rights of the Breeder”), art. 19, March 19, 1991,
`https://www.upov.int/edocs/pubdocs/en/upov_pub_221.pdf.
`
`21 UPOV Convention, Ch. VI (“Variety Denomination”), art. 20(2), March 19, 1991,
`https://www.upov.int/edocs/pubdocs/en/upov_pub_221.pdf.
`
`22 UPOV website, https://www.upov.int/pluto/en.
`
`23 Id. See also UPOV Convention, Ch. VI (“Variety Denomination”), art. 20, March 19, 1991,
`https://www.upov.int/edocs/pubdocs/en/upov_pub_221.pdf; Explanatory Notes 2.5.3 and 2.6
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`Serial No. 88711192
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`The types of records and intellectual property rights that are included in the PLUTO
`
`PLANT VARIETY DATABASE are:
`
`• Plant Breeders’ Rights (PBR)
`
`• Plant Patents (PLP)
`
`• Patents for Inventions (PAT)
`
`• National Lists (NLI)
`
`• Other (explained by each contributor)24
`
`Consistent with its mission, the UPOV Convention also requires each member
`
`state to ensure that “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.”25 The Convention
`
`also takes into account trademark rights, insofar as it provides that “[w]hen 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,” on the
`
`condition that “the denomination must nevertheless be easily recognizable.”26
`
`
`
`
`
`
`on Variety Denominations under the UPOV Convention, adopted by the Council on
`September 21, 2021, https://www.upov.int/edocs/expndocs/en/upov_exn_den.pdf.
`
`24 UPOV website, https://www.upov.int/pluto/en/termsuse.html.
`
`25 UPOV Convention, Ch. VI (“Variety Denomination”), art. 20(1)(b), March 19, 1991,
`https://www.upov.int/edocs/pubdocs/en/upov_pub_221.pdf (emphasis added).
`
`26 UPOV Convention, Ch. VI (“Variety Denomination”), art. 20(8), March 19, 1991,
`https://www.upov.int/edocs/pubdocs/en/upov_pub_221.pdf.
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`Serial No. 88711192
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`B. U.S. Implementation of the UPOV Convention and U.S. Plant
`Patent Protection
`
`The UPOV Convention is not self-executing;27 under U.S. law, it is implemented
`
`by the Plant Variety Protection Act, as amended.28 Plant Variety Protection (“PVP”)
`
`Certificates are issued by the Plant Variety Protection Office, or PVPO, of the U.S.
`
`Department of Agriculture.29 PVP Certificates were originally only available for seed
`
`propagated plants, i.e., sexually reproduced varieties; however, the Agriculture
`
`Improvement Act of 2018, Pub. L. 115-334 (commonly known as the 2018 Farm Bill),
`
`amended the Agricultural Marketing Act of 1946 to permit PVP certificates to be
`
`granted for asexually reproduced varieties.30 Consistent with the UPOV Convention,
`
`PVP certificates protect plant varieties for 20 years and 25 years for vines and trees.31
`
`The United States also provides two additional types of intellectual property
`
`protection for plant varieties: plant patents and plant-utility patents, both issued by
`
`the U.S. Patent and Trademark Office.32 U.S. plant patent protection predates the
`
`Convention.33 As a result, the United States invoked a reservation to the Convention
`
`
`27 UPOV Convention, Ch. IX (“Implementation of the Convention”), art. 30, March 19, 1991,
`https://www.upov.int/edocs/pubdocs/en/upov_pub_221.pdf.
`
`28 7 U.S.C., Ch. 57, §§ 2321-2583. See H.R. REP. NO. 103–699, at 1 (1994), reprinted in 1994
`U.S.C.C.A.N. 2423, 2423.
`
`29 7 U.S.C., Ch. 57, §§ 2321-2583.
`
`30 Public Law 115-334, at Sect. 10108.
`
`31 Id.
`
`32 See 35 U.S.C. §§ 1 et seq. (Consolidated Patent Laws as of December 2004); see also
`MPEP § 1601.
`
`33 See Plant Patent Act of 1930. The plant patent provisions were separated from the utility
`patent provisions in the Patent Act of 1952 to create 35 U.S.C. § 161 (“Patents for plants”).
`35 U.S.C. § 161 was amended in 1954 to extend protection to “newly found seedlings,”
`provided they were found in a cultivated state, but did not otherwise alter the scope of plant
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`Serial No. 88711192
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`under Article 35(2) to account for the allowance of patent protection for plants.34 Each
`
`type of patent has a term of 20 years from the filing date of the application.35 Plant
`
`patent protection is available only to new and distinct plant varieties that are
`
`reproduced asexually, such as fruit trees and berry plants, and not to seed-reproduced
`
`varieties.36 By contrast, plant-utility patents can be used to protect novel plant
`
`varieties, whether they are produced sexually or asexually, for genes, traits, methods,
`
`plant parts, and the like.37
`
`In terms of the USPTO’s examination process for plant patent applications,
`
`consistent with U.S. obligations under the UPOV Convention, the specification for a
`
`plant patent that has been asexually reproduced must set forth, among other items,
`
`the “Latin name of the genus and species of the plant claimed” and the “variety
`
`denomination.”38 Otherwise, “the disclosure in the application will be objected to.”39
`
`Section 1612 of the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) (June 2020
`
`
`patent protection. In In J.E.M. AG Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U.S. 124,
`60 USPQ2d 1865 (2001), the U.S. Supreme Court affirmed the USPTO’s practice of granting
`utility patent protection for plant inventions. For further information on the history of plant
`patent protection, see MPEP § 1601.
`
`34 MPEP § 1612.
`
`35 35 U.S.C. § 120, 121 and 365(c). See MPEP § 2701.
`
`36 35 U.S.C. § 161 (“Whoever invents or discovers and asexually reproduces any distinct and
`new variety of plant, including cultivated sports, mutants, hybrids, and newly found
`seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may
`obtain a patent therefor, subject to the conditions and requirements of this title.”).
`
`37 See 35 U.S.C. §§ 1 et seq. (Consolidated Patent Laws as of December 2004).
`
`38 See 35 U.S.C. § 162 (“No plant patent shall be declared invalid for noncompliance with
`section 112 if the description is as complete as is reasonably possible.”); see also 37 C.F.R.
`§§ 1.163(c)(4) and (5) and MPEP §§ 1605 and 1613.
`
`39 See 37 C.F.R. §§ 1.121(e) and 1.163(c)(4); see also MPEP § 1613.
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`Serial No. 88711192
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`Publication of Revision 10.2019) further explains this requirement, as well as the
`
`relationship between U.S. plant patent examination and obligations under the UPOV
`
`Convention:
`
`Application of the UPOV Convention in the United
`States does not affect the examination of plant
`patent applications, except in one instance. It is now
`necessary as a condition for receiving a plant patent
`to register a variety denomination for that plant.
`Inclusion of the variety denomination in the patent
`comprises its registration. The registration process in
`general terms consists of inclusion of a proposed variety
`denomination
`in the plant patent application. The
`examiner must evaluate the proposed denomination in
`light of UPOV Convention, Article 13. Basically, this
`Article requires that the proposed variety denomination
`not be identical with or confusingly similar to other names
`utilized in the United States or other UPOV member
`countries for the same or a closely related species. In
`addition, the proposed denomination must not mislead the
`average consumer as to the characteristics, value, or
`identity of
`the patented plant. Ordinarily,
`the
`denomination proposed for registration in the United
`States must be the same as the denomination registered in
`another member state of UPOV.
`
`Emphasis added. For further information regarding plant patent examination, see
`
`MPEP Chapter 1600.
`
`III. Refusal — Varietal or Cultivar Names
`
`We now direct our attention to the substantive refusal before us. In the seminal
`
`case In re Pennington Seed Co., 466 F.3d 1053, 80 USPQ2d 1758, 1761-62 (Fed. Cir.
`
`2006), the U.S. Court of Appeals for the Federal Circuit upheld as valid the USPTO’s
`
`long-standing precedent and practice of treating varietal names as generic. In
`
`affirming the Board’s determination that the term “Rebel,” as a varietal name for a
`
`type of grass seed, failed to function as a mark, the Court remarked:
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`Serial No. 88711192
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`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 entitled to our
`respect. We see no reason to differ with it. See W. Fla.
`Seafood, Inc. v. Jet Rests., Inc., 31 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.”).
`
`Id. See also Dixie Rose Nursery v. Coe, 131 F.2d 446, 55 USPQ 315, 316 (D.C. Cir.
`
`1942) (“The Patent Office and the 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.”), cert. denied,
`
`318 U.S. 782 (1943). According to TRADEMARK MANUAL OF EXAMINING PROCEDURE
`
`(“TMEP”) § 1202.12 (July 2022), “[v]arietal 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.” Accord Pennington Seed, 80 USPQ2d at 1761-62 (affirming Board ruling
`
`that applicant cannot claim as a trademark the varietal name for plant seed even if
`
`it created genus) (internal citation omitted). See, e.g., In re Hilltop Orchards &
`
`Nurseries, Inc., 206 USPQ 1034 (TTAB 1979) (Board affirmed refusal to register the
`
`varietal name “Commander York” as a trademark for apple trees); In re Farmer Seed
`
`& Nursery Co., 137 USPQ 231 (TTAB 1963) (refusing registration of the name “Chief
`
`Bemidji” as a trademark for a strawberry plant); In re Cohn Bodger & Sons Co., 122
`
`USPQ 345 (TTAB 1959) (refusing registration of the varietal name “Blue Lustre” as
`
`a trademark for hybrid petunia seeds). “Likewise, if the mark identifies the
`
`prominent portion of a varietal name, it must be refused.” TMEP § 1202.12 (citing In
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`Serial No. 88711192
`
`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)). “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.” TMEP § 1202.12; accord Pennington Seed, 80
`
`USPQ2d at 1762.
`
`TMEP Section 1202.12 provides the following instructions for examining
`
`attorneys:
`
`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 is 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 ).
`
`The Federal Circuit also explained in Pennington Seed that an entity that is the
`
`source of a varietal wishing to use a particular term as a trademark for its specific
`
`varietal is not prohibited from doing so, however, it must be clear that there is also a
`
`generic name for the varietal:
`
`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
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`

`Serial No. 88711192
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`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.
`
`Pennington Seed, 80 USPQ2d at 1762. This notion reflects the Board’s earlier
`
`decisions that if the term is used as a designation of source (i.e., a trademark) and
`
`there is a different varietal designation, the term may be registrable. See, e.g., In re
`
`Cole Nursery Co., Inc., 178 USPQ 424, 424-25 (TTAB 1973) (Board reversed refusal
`
`to register TALLHEDGE as a varietal name; “[a] page from applicant’s Spring 1972
`
`Trade List shows that ‘TALLHEDGE’ is used as an identification of source and,
`
`‘Rhamnus frangula ‘Columnaris’’ as a varietal designation”). The Board further
`
`explained this principle in In re Stark Bro’s Nurseries & Orchards Co., 132 USPQ
`
`652, 653 (TTAB 1962) in which the refusal to register STARKRIMSON as a varietal
`
`name was reversed because the proposed designation was used as a trademark and
`
`was not part of the patented plant varietal name:
`
`According to the evidence filed by applicant, it is a common
`practice in the nursery field to attach to a tree or a plant
`which is the subject of plant patent a special tag or label
`bearing both the usual statutory patent notice and the
`trademark adopted and used for such product; the varietal
`names for the apple, pear and strawberry trees and plants
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`- 14 -
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`

`

`Serial No. 88711192
`
`on or in connection with which applicant uses the
`designation “STARKRIMSON” are “Bisbee Apple”, “Kalle
`Pear”, and “Christ Strawberry”, respectively; and in
`addition to these varietal names, applicant, in its
`catalogues, always uses the term “STARKRIMSON” to
`identify these particular products. It
`is, moreover,
`incongruous, to say the least, to suppose that a single
`designation, such as “STARKRIMSON”, would or could be
`used and be considered in the trade or by the purchasing
`public as a varietal name for three distinctly different types
`of plants and/or trees. …Only one conclusion can be
`adduced
`from
`the
`record herein and
`that
`is
`“STARKRIMSON” is being used by applicant as a
`trademark to identify its fruit trees and plants and to
`distinguish them from like goods sold by others.
`
`With this in mind, we now look to the evidence of record and arguments presented
`
`to ascertain whether IFG fails to function as a trademark for the identified goods.
`
`A. Examining Attorney’s Arguments and Evidence
`
`The Examining Attorney argues that this appeal falls squarely under the
`
`purview of TMEP Section 1202.12 which states that “if the mark identifies the
`
`prominent portion of a varietal name, it must be refused,” citing In re Delta & Pine
`
`Land Co., supra. In that case, the Board affirmed the refusal to register the proposed
`
`mark DELTAPINE for “agricultural planting seeds” under Section 2(e)(1) of the
`
`Trademark Act as merely descriptive because that term is “the prominent part of
`
`various varietal names for plants or seeds, some of which are sold under the asserted
`
`mark.” Id. at 1158. The evidence showed that Deltapine 50, Deltapine 20, Deltapine
`
`105 and Deltapine 506 were varietal denominations given to new varieties of cotton
`
`and soybean in applications for PVP certificate protection filed with the PVPO under
`
`the Plant Variety Protection Act.
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`Serial No. 88711192
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`The Examining Attorney views In re Delta & Pine Land Co. as “instructive of the
`
`USPTO’s policy to refuse registration of a trademark if the words sought for
`
`registration as a mark for live plants or agricultural seeds comprise[] a varietal or
`
`cultivar name.”40 To support the refusal that Applicant’s proposed mark IFG
`
`identifies the prominent portion of varietal names for “Fresh fruits and vegetables;
`
`live plants; live trees; live grape vines; live plant material, namely, live grape vine
`
`material, live plant material and live tree material,” the Examining Attorney made
`
`of record the following evidence:
`
`● A printout from the PLUTO PLANT VARIETY DATABASE indicating that “IFG” is
`
`an element in numerous varietal names designated in plant breeder’s rights (PBR),
`
`and plant patents (PLP) for grapes, grapevines, grapevine plants, sweet cherry trees
`
`and cherries.41 Examples include “IFG FOUR,” “IFG FIVE,” “IFG SIX,” “IFG
`
`SEVEN,” “IFG EIGHT,” and “IFG NINE.”42 During prosecution, Applicant
`
`acknowledged that the UPOV database results show that the varietal denominations
`
`“are prefaced with the acronym ‘IFG’” and that “[t]hese varieties are all the subject
`
`of registered or applied for plant patents and/or utility patents and/or other forms of
`
`plant variety rights overseas.”43 For purposes of our decision, we have only considered
`
`
`40 Examining Attorney’s Brief, 6 TTABVUE 6, n.4.
`
`41 Denomination search results for “IFG” from the PLUTO PLANT VARIETY DATABASE,
`www3wipo.int/pluto/user/en/index.jsp, (last visited January 7, 2020 8:46 AM) submitted with
`June 17, 2021 Final Office Action, TSDR pp. 4-6.
`
`42 Id.
`
`43 Applicant’s response to the Examining Attorney’s information request pursuant to
`Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b) inquiring “Whether IFG has ever been used or
`will be used in connection with a plant patent, utility patent, or certificate for plant-variety
`protection.” See March 9, 2020 Office Action and Applicant’s September 9, 2020 Response.
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`Serial No. 88711192
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`below the results for plant patents and plant breeder’s rights (i.e. PVP certificates)
`
`issued in the United States. The full search results from the PLUTO PLANT VARIETY
`
`DATABASE are reprinted in Appendix I.
`
`
`
`● Printouts of U.S. Plant Patent Nos. P23315, P23531, P24583, and P25434
`
`showing that IFG is the initial portion of the designated “Varietal Denomination” on
`
`the following plant patents owned by Applicant; reprinted in Appendix II:44 In
`
`relevant part each patent s