THIS OPINION IS NOT A
`PRECEDENT OF THE TTAB
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`
`
`Hearing:
`02 February 2006
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`Mailed:
`4 March 2008
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`______
`
`Walters Gardens, Inc.
`v.
`Pride of Place Plants, Inc.
`_____
`
`
`
`
`
`Opposition No. 91153755
`to application Serial No. 76201447
`_____
`
`Barry C. Kane of Kane & Co., PLC for Walters Gardens, Inc.
`
`Brian K. Brookey of Christie, Parker & Hale, LLP for Pride
`of Place Plants, Inc.
`
`______
`
`Before Drost, Kuhlke, and Walsh, Administrative Trademark
`Judges.
`
`Opinion by Drost, Administrative Trademark Judge:
`
`
`On January 29, 2001, Pride of Place Plants, Inc.,
`
`(applicant) applied to register on the Principal Register
`
`the mark PIILU in typed or standard character form for “live
`
`plants” in Class 31. The application (Serial No. 76201447)
`
`is based on applicant’s allegation of a bona fide intent to
`
`use the mark in commerce.
`
`After the mark was published for opposition on June 18,
`
`2002, opposer, Walters Gardens, Inc., filed its opposition
`
`

`
`Opposition No. 91153755
`
`to registration of applicant’s mark on the ground (pp. 1-2.
`
`without paragraph numbers) that:
`
`Long prior to any date of first use upon which
`Applicant can rely, others around the world, including
`those in the industry in the United States, have been
`using the term PIILU to refer to a specific cultivar of
`Clematis live plants.
`
`Long prior to any date of first use upon which
`Applicant can rely, the term “PIILU” has been used
`generically to refer to a cultivar of Clematis marketed
`throughout this country by other nurseries...
`
`Applicant’s registration should be denied on grounds
`the term “PIILU” has become a generic term referencing
`a specific cultivar of Clematis live plant offered for
`sale in this country and the world long prior to
`Applicant’s filing of the application, and the use of
`that term by the industry has not been abandoned.
`
`Applicant denied the salient allegations of opposer’s
`
`notice of opposition. An oral hearing was held on February
`
`2, 2006. After the hearing, the case was suspended pending
`
`the appeal of the board’s decision in In re KRB Seed Co., 76
`
`USPQ2d 1156 (TTAB 2005). When the Federal Circuit affirmed
`
`that decision in In re Pennington Seeds Inc., 466 F.3d 1053,
`
`80 USPQ2d 1758 (Fed. Cir. 2006), proceedings were resumed.1
`
`The Record
`
`The record consists of the pleadings; the file of the
`
`involved application; the testimonial deposition of John
`
`Dale Walters, opposer’s CEO, with exhibits; the testimonial
`
`
`1 Opposer’s motion for a directed verdict is denied. The board
`does not consider motions for directed verdicts. TBMP §§ 502.01
`and 534.04 (2d ed. rev. 2004). We will proceed to final
`judgment.
`
`
`2
`
`

`
`Opposition No. 91153755
`
`deposition of Clarence Henry Falstad III, opposer’s
`
`laboratory director, with exhibits; the testimonial
`
`deposition of Chad Michael Walters, opposer’s inventory
`
`manager; the testimonial deposition of Maurice Horn, an
`
`owner of Joy Creek Nursery, with exhibits; the testimonial
`
`deposition of Christopher Michael Hansen, Director of
`
`Horticulture for Wayside Gardens Division of Geo. W. Park
`
`Seed Company, Inc., with exhibits; the testimony of Brewster
`
`Rogerson, a retired Kansas State University professor and
`
`collector of Clematis plants, with exhibit2; the testimonial
`
`deposition, with exhibits, of Rick Sorenson, applicant’s
`
`president; and petitioner’s notices of reliance on various
`
`publications.
`
`Standing
`
`
`
`As a potential competitor who would use the term PIILU
`
`generically, opposer has established its standing to oppose
`
`applicant’s mark. See, e.g., Lipton Industries, Inc. v.
`
`Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185, 189
`
`(CCPA 1982) (One basis for standing includes “descriptive
`
`use of term in registered mark”); Ferro Corporation v. SCM
`
`Corporation, 219 USPQ 346, 352 (TTAB 1983) (Opposer “has a
`
`real interest sufficient to give it standing. The rationale
`
`is that a competitor should be free from harassment based on
`
`
`2 Mr. Rogerson referred to people like himself (p. 17) as
`“essentially laymen with a lot of knowledge from practical
`affairs.”
`
`3
`
`

`
`Opposition No. 91153755
`
`the presumed exclusive right which registration of a generic
`
`term would erroneously accord”) (citation omitted).
`
`Issue
`
` Is the term PIILU a varietal or cultivar name for a
`
`specific plant in the genus Clematis and therefore a term
`
`that cannot function as a trademark for applicant’s “living
`
`plants”?
`
`Evidentiary Questions
`
`
`
`Prior to proceeding to the merits of this case, we must
`
`address two evidentiary questions. First, applicant has
`
`objected to several depositions (Brief at 7-8) that opposer
`
`has introduced:
`
`Much of that evidence is inadmissible. For instance,
`WGI [opposer] cites to the deposition transcripts of
`Brewster Rogerson, Maurice Horn and Christopher Hansen.
`WGI never conducted discovery depositions or written
`discovery for any of these individuals. WGI also
`failed to identify these individuals during the
`discovery period in response to PoPP’s [applicant]
`discovery requests, which included PoPP’s Interrogatory
`No. 3, requesting identification of “person(s) most
`knowledgeable about alleged third party use of the term
`PIILU for live plants,” and Interrogatory No. 16,
`requesting identification of witnesses from whom WGI
`intended to present testimony.
`
`Instead, WGI waited until its testimony period to
`identify these three witnesses for the first time, by
`serving supplemental interrogatory responses on August
`3, 2004, identifying all three individuals in response
`to PoPP’s Interrogatories Nos. 3 and 16.
`
`Based on the limited information of record in this
`
`
`
`case, we cannot hold that that applicant has demonstrated
`
`4
`
`

`
`Opposition No. 91153755
`
`that opposer improperly withheld the identification of these
`
`three witnesses in response to its discovery request.
`
`Furthermore, “a party in a Board proceeding generally
`
`has no obligation to identify all of its trial evidence
`
`prior to trial.” Carefirst of Maryland Inc. v. FirstHealth
`
`of the Carolinas Inc., 77 USPQ2d 1492, 1500 (TTAB 2005),
`
`aff’d, 479 F.3d 825, 81 USPQ2d 1919 (Fed. Cir. 2007).3 See
`
`also Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650,
`
`1656 (TTAB 2002) (“It is settled that a party in a Board
`
`proceeding generally has no obligation to identify its fact
`
`witnesses or other trial evidence prior to trial”) and
`
`Charrette Corp. v. Bowater Communication Papers Inc., 13
`
`USPQ2d 2040, 2041 (TTAB 1989) (“If registrant wished to
`
`depose during discovery a witness having knowledge of
`
`petitioner's sales and advertising… a request for the person
`
`or persons most knowledgeable on that subject would have
`
`been a proper inquiry and would have elicited the
`
`information it was seeking. Inasmuch as petitioner had no
`
`duty to provide the names of its witnesses, registrant
`
`cannot complain that the negative answer was not later
`
`amended”). Applicant’s citation to Thibeault v. Square D
`
`Co., 960 F.2d 239 (1st Cir. 1992), a case dealing with
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`expert witnesses, is not on point.
`
`
`3 This opposition and the cited cases preceded the USPTO’s new
`rules involving mandatory disclosure of witnesses and other
`information. See, e.g., 37 CFR § 2.121 (November 1, 2007).
`
`5
`
`

`
`Opposition No. 91153755
`
`We add that much of the witnesses’ testimony cannot in
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`any way be considered to relate to “third party use” of the
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`term. To the extent that these depositions are directed to
`
`the parties’ use or to use in reference works, applicant’s
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`interrogatory was not relevant. Therefore, we will consider
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`the Rogerson, Horn, and Hansen depositions.
`
`
`
`We also note that applicant attached several entries
`
`from online Estonian-English dictionaries to its brief. We
`
`will not consider this evidence because evidence submitted
`
`for the first time with an appeal brief is untimely and we
`
`do not take judicial notice of online dictionaries when it
`
`is not clear if these dictionaries are the online
`
`equivalents of a printed work. In re Total Quality Group,
`
`Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). Furthermore, as we
`
`will discuss subsequently, it is too late for applicant to
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`raise an issue concerning the correct translation of its
`
`mark.
`
`Background
`
`
`
`On January 21, 2001, applicant applied to register the
`
`mark PIILU in typed or standard character form for “live
`
`plants” in Class 31. The application is based on
`
`applicant’s allegation of its intention to use the mark in
`
`commerce.
`
`
`
`In his first Office action, the examining attorney
`
`required that: “applicant must indicate whether PIILU has
`
`6
`
`

`
`Opposition No. 91153755
`
`any significance in the relevant trade, any geographical
`
`significance or any meaning in a foreign language.”
`
`
`
`In its response, applicant submitted that: “the term
`
`‘PIILU’ is an Estonian word meaning ‘little duckling.’”
`
`
`
`On June 18, 2002, applicant’s mark was published for
`
`opposition and opposer timely filed an opposition to the
`
`registration of applicant’s mark.
`
`
`
`We take judicial notice of the following definitions
`
`from The Random House Dictionary of the English Language
`
`(unabridged) (2d ed. 1987). See University of Notre Dame du
`
`Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596
`
`(TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
`
`1983).
`
`Clematis – any of numerous plants or woody vines of the
`genus Clematis, including many species cultivated for
`their showy, variously colored flowers.
`
`Genus – Biol. the usual major subdivision of a family
`or subfamily in the classification of organisms,
`usually consisting of more than one species.
`
`Species – Biol. The major subdivision of a genus or
`subgenus, regarded as the basic category of biological
`classification, composed of related individuals that
`resemble one another, are able to breed among
`themselves, but are unable to breed with members of
`another species.
`
`Cultivar – a variety of plant that originated and
`persisted under cultivation.
`
`Varietal – of, pertaining to, designating, or
`characteristic of a variety.
`
`Variety – a category within a species, based on some
`hereditary differences.
`
`
`
`7
`
`

`
`Opposition No. 91153755
`
`
`
`The TMEP 1202.12 (5th ed. rev. September 2007) provides
`
`the following guidance on the examination of varietal and
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`cultivar names:
`
`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.
`
`
`Discussion
`
`
`
`The issue in this case concerns whether the name PIILU
`
`is the varietal or cultivar name of applicant’s living
`
`plants. While applicant has filed its application under the
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`intent-to-use provision of the Trademark Act, applicant does
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`in fact use the term on a specific type of plant.
`
`Q. Do you use the term Piilu on other cultivars of
`Clematis?
`
`A. No.
`
`Q. If you do not use with other cultivars of Clematis,
`how many cultivars of Clematis is the name Piilu
`associated with?
`
`A. One.
`
`
`Sorenson dep. at 135-36.
`
`8
`
`

`
`Opposition No. 91153755
`
`The specific plant discussed in this case is a Clematis
`
`
`
`plant that originated with the Kivistik family in Estonia.
`
`Sorenson dep. at 2. Applicant began “selling and
`
`distributing” that plant in “the early spring of either 1999
`
`or 2000.” Sorenson dep. at 2-3.
`
`
`
`The dispute in this case concerns whether PIILU is a
`
`trademark for plants or the name of a cultivar. Case law
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`has long held that varietal or cultivar names are not
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`registrable because they are the generic name of the plants.
`
`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); In
`
`re Delta and Pine Land Co., 26 USPQ2d 1157, 1158 (TTAB 1993)
`
`(DELTAPINE “is the prominent part of various varietal names
`
`for plants or seeds, some of which are sold under the
`
`asserted mark”); In re Hilltop Orchards & Nurseries, Inc.,
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`206 USPQ 1034 1036 (TTAB 1979) (The “term ‘COMMANDER YORK’
`
`as shown on the specimens and in applicant's catalogue is
`
`being used as the common descriptive name for a particular
`
`variety of applicant's apple trees”); In re Farmer Seed &
`
`Nursery Co., 137 USPQ 231, 232 (TTAB 1963) (CHIEF BEMIDJI
`
`held to be a varietal name of strawberry plants). In In re
`
`9
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`

`
`Opposition No. 91153755
`
`Cohn Bodger & Sons Co., 122 USPQ 345, 346 (TTAB 1959), the
`
`board held:
`
`The catalog shows clearly that “BODGER” is the
`trademark, and “BLUE LUSTRE” is the varietal name
`designating a hybrid petunia of a specific variety and
`color rather than a brand-name identifying seeds sold
`only by applicant and distinguishing them from seeds
`sold by others. The varietal name is available to all
`who grow the variety and sell the seeds therefrom to
`describe the particular hybrid petunia. The term “BLUE
`LUSTRE” is not a trademark.
`
`However, if the term is used as a designation of source
`
`and there is a different varietal designation, the term may
`
`be registrable. In re Cole Nursery Co., Inc., 178 USPQ 424,
`
`424-25 (TTAB 1973) (“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”) and In re Stark
`
`Bro's Nurseries & Orchards Co., 132 USPQ 652, 653 (TTAB
`
`1962):
`
`[T]he varietal names for the apple, pear and strawberry
`trees and plants 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 distinctively different types of plants
`and/or trees.
`
`The Federal Circuit has recently explained in the
`
`
`
`Pennington Seed case, 80 USPQ2d at 1761 and 1763, that:
`
`10
`
`

`
`Opposition No. 91153755
`
`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.
`
`In addition, section 1202.12 of the TMEP provides that
`“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.” 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.
`
`The Federal Circuit also explained that an entity that
`
`
`
`is the source of a varietal that wishes 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 a generic name for the varietal. 80 USPQ2d at
`
`1762.
`
`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.
`
`11
`
`

`
`Opposition No. 91153755
`
`Trademark protection does not inure to the generic name
`there and it does not do so here.
`
`We now look at the evidence in this case to see whether
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`applicant’s term PIILU is also the name of the goods. We
`
`start by noting that applicant’s witness asserts that “[w]e
`
`always intended to use it as a trademark” and the witness
`
`answered in the affirmative when asked if applicant had
`
`actually used the term as a trademark. Sorenson dep. at 3.
`
`Applicant has introduced several examples in which its
`
`literature shows use of the term PIILU with a TM. See
`
`Sorenson Exhibits 1 (“Available for spring delivery 1999 …
`
`Clematis ‘Pillu’™ from Holland 1½ year old #1”); 3 (CLEMATIS
`
`‘Piilu’™ ); and 4, 6 and 7 (Clematis “Piilu”™). Applicant’s
`
`witness testified that Clematis is the genus and “Kivso” is
`
`“the cultivar name.” Sorenson dep. at 21 and 22. Applicant
`
`also maintains that “Little Duckling” is the cultivar name.
`
`Sorenson dep. at 47. Applicant’s witness indicated that it
`
`was using several names for the specific Clematis plant.
`
`Q. … This letter marked as Exhibit 18 as of September
`17th, 1998 indicates that you were at least using
`Clematis Piilu as of that date. Correct?
`
`A. Um-hum.
`
`Q. And I believe we have testimony from you that now
`says that you’re using the cultivar name as Little
`Duckling for that Clematis. Is that correct?
`
`A. That is correct.
`
`Q. Did Little Duckling come after or before the use of
`the term Kivso?
`
`
`12
`
`

`
`Opposition No. 91153755
`
`A. After.
`
`
`Sorenson dep. at 93. See also Id. at 96 (“so at least as of
`
`September of 1998 you had the term Piilu in single quotes
`
`without any reference to any kind of trademark status? A.
`
`Yes, that’s correct”). However, applicant now intends “to
`
`object to growers using the term Clematis Kivso to refer to
`
`the particular cultivar.” Sorenson dep. at 157. It does
`
`not intend to object to “growers using the term Clematis
`
`Little Duckling in selling this particular plant.” Sorenson
`
`dep. at 157-58.
`
`Cultivar names are “included in single quotation marks”
`
`in applicant’s practice. Hansen dep. at 18 (Using single
`
`quotes “denotes a cultivar. Q. And is that industry
`
`standard? A. Yes”); Sorenson dep. at 47-48.4
`
`The plants associated with the term PIILU originated in
`
`Estonia.
`
`Q. Would you agree that the term Piilu is not
`associated with a Clematis of black flowers?
`
`A. I’ll agree to that.
`
`Q. But it’s generally the flowers are in the red to
`purplish range, and if I can refer to a previous
`exhibit, one of your marketing materials, it refers to
`a specific plant that originated in Estonia. Is that
`correct?
`
`A. Yes.
`
`Sorenson dep. at 29.
`
`
`4 Despite being in the nursery business since 1970, the witness
`did not know why the term Piilu was in single quotes in
`applicant’s literature. Sorenson dep. at 39.
`
`13
`
`

`
`Opposition No. 91153755
`
`Applicant’s witness was also asked:
`
`
`
`Q. Okay. Does the term Piilu, is that an English word?
`
`A. No.
`
`Q. What language is it?
`
`A. Estonian.
`
`Q. And what is the translation of the term Piilu from
`Estonian to English?
`
`A. Little Duckling.
`
`Sorenson dep. at 48. See also Response to Office Action
`
`dated October 11, 2001 (“In the Office Action the Trademark
`
`Examining Attorney has inquired as to the general
`
`significance of the term ‘PIILU.’ In response, Applicant
`
`submits that the term ‘PIILU’ is an Estonian word meaning
`
`‘little duckling’”). While Mr. Sorenson does not speak
`
`Estonian, he testified that his understanding of the
`
`translation is based on “basically it was a question that I
`
`asked the Kivistik family and they answered.” Sorenson dep.
`
`at 160.
`
`
`
`Opposer argues that “both ‘Little Duckling’ and ‘PIILU’
`
`are used interchangeably.” Brief at 6. Applicant contends
`
`that “[t]here is no admissible evidence that PIILU is the
`
`Estonian name for a cultivar name.” Brief at 11. Applicant
`
`goes on to argue that “there is no evidence by anyone with
`
`personal knowledge – much less a “preponderance” of evidence
`
`– as to the translation of PIILU into English, or of Little
`
`14
`
`

`
`Opposition No. 91153755
`
`Duckling into Estonian.” Brief at 12 (emphasis deleted).
`
`We have already pointed out that applicant has entered into
`
`the record a translation of the term PIILU as the Estonian
`
`word for “Little Duckling.” Applicant’s witness was asked
`
`“And what is the translation of the term Piilu from Estonian
`
`to English?” His response was simply “Little Duckling.”
`
`Sorenson dep. at 48. The witness based his understanding
`
`“of the translation of Piilu into English” on “a question
`
`that I asked the Kivistik family and they answered.”
`
`Sorenson dep. at 160. However, the witness, who does not
`
`speak Estonian, does not personally know what the term Piilu
`
`means in Estonian. Sorenson dep. at 160-161.
`
`
`
`As indicated earlier, we have rejected applicant’s
`
`attempt to create a new issue in its appeal brief regarding
`
`the translation of the term Piilu. The examining attorney
`
`allowed applicant’s mark to be published on the basis of the
`
`translation applicant submitted and this opposition was
`
`conducted without this translation being seriously
`
`challenged. Therefore, it is too late in a brief after
`
`trial for applicant to raise an issue about the accuracy of
`
`a translation that it provided during the prosecution of the
`
`application, and we will assume that the term Piilu is
`
`translated as “Little Duckling.”5
`
`
`5 We also will not consider opposer’s issue regarding the
`adequacy of the ex parte examination apart from our discussion of
`the genericness issue. Even if there were some deficiency, it
`
`15
`
`

`
`Opposition No. 91153755
`
`However, even if PIILU is the equivalent of the term
`
`“Little Duckling” and if, as applicant now argues, that
`
`Little Duckling, is the generic name of its specific
`
`Clematis, we must determine whether under the doctrine of
`
`foreign equivalents it is the generic name of the goods in
`
`this situation. The foreign translation of an English
`
`generic term can result in the mark being generic. Weiss
`
`Noodle Co. v. Golden Cracknel and Specialty Co., 290 F.2d
`
`845, 129 USPQ 411, 413 (CCPA 1961) (“In the instant case
`
`registration of the Hungarian name for noodles, ‘haluska’
`
`or its phonetic equivalent in English, whether or not
`
`hyphenated, would be contrary to law for no one can be
`
`granted the exclusive use of the name of an article, either
`
`in our native tongue or its equivalent in any foreign
`
`language”). The Federal Circuit has held that: “Although
`
`words from modern languages are generally translated into
`
`English, the doctrine of foreign equivalents is not an
`
`absolute rule and should be viewed merely as a guideline.”
`
`Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
`
`Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed.
`
`Cir. 2005). We have no hesitation in finding that Estonian
`
`is a modern language to which the doctrine of foreign
`
`
`“would be manifestly unfair to penalize defendant for
`noncompliance with a requirement that was never made by the
`Examining Attorney.” Saint-Gobain Abrasives Inc. v. Unova
`Industrial Automation Systems Inc., 66 USPQ2d 1355, 1359 (TTAB
`2003).
`
`16
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`

`
`Opposition No. 91153755
`
`equivalents would apply. See, e.g., Weiss Noodle Co.
`
`(Hungarian); In re Spirits International N.V., ___ USPQ2d
`
`___ (TTAB February 11, 2008) (Serial No. 74382759) slip op.
`
`at 9 (“[B]ecause the mark is in Russian, a common, modern
`
`foreign language, we must consider that an appreciable
`
`segment of the buying public will speak or understand this
`
`language”).
`
`However, the Federal Circuit did caution that the
`
`“doctrine should be applied only when it is likely that the
`
`ordinary American purchaser would stop and translate the
`
`word into its English equivalent.” Id. (internal
`
`punctuation omitted). A complicating factor in this case is
`
`the fact that the name of a cultivar or varietal is not just
`
`an issue for the United States:
`
`The United States is a party to the UPOV [the
`International Convention for the Protection of New
`Varieties of Plant]. 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.
`
`Pennington Seed, 80 USPQ2d at 1763. See also International
`
`Code of Nomenclature for Cultivated Plants (1995) (Principle
`
`6 – “Cultivar and cultivar-group epithets must be
`
`17
`
`

`
`Opposition No. 91153755
`
`universally available in all countries for use by any person
`
`to denote a particular cultivar or cultivar-group”).
`
`
`
`In this case, it is not clear whether purchasers will
`
`stop and translate the name of a cultivar into a foreign
`
`language or if the assigned name will simply be incorporated
`
`as the name of the cultivar in the foreign language. For
`
`example, it is not clear whether the English words “Delta,”
`
`“Pine,” “Commander” or “Chief” would be translated into
`
`their Spanish, French, Estonian, etc. equivalents or whether
`
`the names DELTAPINE, COMMANDER YORK, and CHIEF BEMIDJI will
`
`remain the same in those languages. The record does not
`
`permit us to conclude that prospective purchasers will stop
`
`and translate the term. Therefore, we decline to apply the
`
`doctrine of foreign equivalents in this case and find that,
`
`assuming “Little Duckling” is the name of the cultivar and
`
`the Estonian word PIILU translates into English as “Little
`
`Duckling,” PIILU must be another generic name of the
`
`cultivar.
`
`
`
`The only remaining issue is whether PIILU is the name
`
`of a cultivar of Clematis. If it is, it is generic and it
`
`would not be registrable. Pennington Seed, 80 USPQ2d at
`
`1762 (“‘Rebel’ is the name of a variety of grass seed and is
`
`its generic designation”). It has long been held that a
`
`product may have more than one generic name and that all
`
`these names are equally barred from registration. Roselux
`
`18
`
`

`
`Opposition No. 91153755
`
`Chemical Co., Inc. v. Parsons Ammonia Company, Inc., 299
`
`F.2d 855, 132 USPQ 627, 632 (CCPA 1962); In re Active Ankle
`
`Systems Inc., 83 USPQ2d 1532, 1538 (TTAB 2007) (It “is well
`
`settled that there can be more than one term to name a
`
`product”). Inasmuch as the International Code of
`
`Nomenclature for Cultivated Plants (Principle 11) “has no
`
`force beyond that deriving from free assent of those
`
`concerned with cultivated plants, there apparently is a real
`
`possibility that a cultivar may have more than a single
`
`name. We also note that applicant maintains that its
`
`specific Clematis cultivar is known as Little Duckling.
`
`Sorenson dep. at 47. Indeed, applicant maintains that the
`
`cultivar was also known as “Kivso.” Sorenson dep. at 21 and
`
`22.
`
`
`
`However, we find that this particular cultivar or
`
`varietal of Clematis was originally known by the designation
`
`PIILU. Applicant acknowledges that it uses the term PIILU
`
`on one type of plant, not as a trademark for different
`
`living plants. Sorenson dep. at 135-36. See, e.g., Stark
`
`Bro's Nurseries, 132 USPQ at 653 (“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 distinctively different types
`
`of plants and/or trees”). Applicant originally designated
`
`19
`
`

`
`Opposition No. 91153755
`
`the plant as Clematis ‘Piilu.’ Id. at 96 (“so at least as
`
`of September of 1998 you had the term Piilu in single quotes
`
`without any reference to any kind of trademark status? A.
`
`Yes, that’s correct”). The name Piilu is used to designate
`
`a specific Clematis cultivar in the relevant trade
`
`literature.
`
`‘Piilu’
`Early Large-flowered Group
`‘Hagley Hybrid’ x ‘Makhrovyi’
`R: U. & A. Kivistik (1984), F: U. & A. Kivistik
`(1987), N: U. & A. Kivistik (1988), REG: EPPIVCD
`(2000)
`Fls single and double, (4-) (6-12 cm across, solitary
`in lf-axils. Sepals of single fls 4-6, mauve-pink, bar
`broad, purple-red, surface textured and with irregular
`white markings, 2-5 cm ling, broadly elliptic, blunt
`but apiculate, overlapping, margin frilly. Filaments
`whitish, anthers yellow. Deciduous climber with stems
`1-2 m. Lvs dark green, ternate or rarely pinnate. FL:
`May-June on previous year’s growth (fls often double),
`Sept-Oct on current year’s growth (fls single).
`Published ref. Toovere 1992; The Clematis 1992; 59
`(as ‘Pülu’)
`(Misspelling: ‘Pülu’)
`
`
`Victoria Matthews, International Clematis Register &
`
`Checklist (2002), Royal Horticultural Society, 253-54.6 We
`
`add that some of the abbreviations in the entry are:
`
`F - First flowered by
`R – Raised by
`N – Named by
`Published ref. – the book, journal or catalogue where a
`cultivar name was first published
`REG – Registered by
`
`
`
`
`6 We note that in the book’s acknowledgements (p. 11), the author
`thanks “Aili, Taavi and Aime Kivistik, Estonia.”
`
`20
`
`

`
`Opposition No. 91153755
`
`Immediately following the entrees for ‘Piilu’ is a
`
`similar entry for ‘Pille.’
`
`‘Pille’
`Late Large-flowered Group
`‘Valge Daam’ (s) x ‘Niobe’
`R: U. & A. Kivistik (1987), F: U. & A. Kivistik
`(1989), N: U. & A. Kivistik (1991), REG: EPPIVCD
`(2000)
`Fls 14-18 cm across, solitary in lf-axils. Sepals 6,
`reddish-violet to mauve, 7-9 cm long, broadly elliptic,
`pointed, overlapping, margin wavy. Filaments whitish;
`anthers pale yellow. Deciduous climber with stems 1.5-
`2 m. FL: July-Sept on current year’s growth.
`Published ref. Türi AMS Clematis Cat. 1993; Kivistik,
`Eesti elulõngad 1998
`(Misspelling: ‘Pilii’)
`
`
`Id. at 254.
`
`
`
`An Illustrated Encyclopedia of Clematis7 contains the
`
`following entry:
`
`Clematis Piilu
`Origin: Raised by Uno Kivistik of Harjumaa, Estonia.
`The name means “little duckling.”
`Parentage and year: C’s Hagley Hybrid x. C.
`‘Makhrovyi’ 1984
`
`Applicant asserts that it obtained its rights “to
`
`propagate and sell a variety Clematis Piilu” from the
`
`Kivistik family.” Sorenson dep. at 43.
`
`
`
`Applicant has also used the term PIILU without any
`
`indication that it is a trademark. Indeed, in an invoice to
`
`opposer in South Carolina dated December 17, 1998, applicant
`
`
`7 Authors Mary Toomey and Everett Leeds, published in association
`with the British Clematis Society by Timber Press, Portland,
`Oregon (2001). Mr. Sorenson testified (p. 161) that he contacted