## 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 Stat es 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

06-1133 (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 “Rebe l” 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 registra tion, we affirm.

* Honorable T.S. Ellis, III, District J udge, United States District Court for the Eastern District of Virginia, sitting by designation.BACKGROUND On July 25, 2001, KRB Seed Company , LLC (hereinafter referred to as “Applic ant”) filed an applic ation to register the word “Rebel” as a trademark for grass seed. Applicant had previous ly designated the term “Rebel” as the varietal (or cultivar ) name for a grass s eed that was the s ubjec t of a plant variety protection (“PVP”) certificate, issued on May 14, 1981. T he trademark examining attorney refused registration of the applied-for mark under 15 U.S.C. §§ 1051, 1052, and 1 127 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 ex aminer’s decis ion to the Board and, upon request by the examiner, the Board remanded the appeal to the examiner to address Applic ant’s claim of acquired distinctiven ess under 15 U.S.C. § 1052(f). Upon remand, the examiner refused the regist ration under 15 U.S.C. § 1052(f) and made final his refus a l to register the term “Rebel” as a trademark for grass seed. Applicant appealed to the B oard, and the Bo ard affirmed the exam iner’s decis i on. The Board first found that the evidence c o nclusively establis hed 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 po licy of treating varietal names as generic wa s still va lid. After revie win g prior case la w, the Board conclud ed that the PTO’s polic y was still valid. In reaching it s conclusion, the Board rejected Applicant’s argument that the PTO had incorrectly applied Dixie Rose Nursery v. Coe , 131 F.2d 446 (D.C. Cir. 1942), in which the Distric t of Columbia Circu it determined that the term “Texas Cente nnial” could not be registered as a trademark because it was the

06-1133 2varietal name for a particular rose. The Board observed that Dixie Rose did not set forth a special test from whic h to judge genericness, but simply established that varietal names were not subject to trademark protection. The Board also found support for its dec ision in the Tradem ark Manua l of Examining Procedur e (“TMEP”), which instruct s examiners to refuse registration of varietal names because such names do not f unction as source indicators. Additiona l support was provided by the International Conv ention for the Protection of New Varieties of Plants (“UPOV”), which provides, inter alia , that a name for a new plant variety must be designated and that that designat ion will be its gener ic name, and by Section 52 of the Plant Variet y Protection Ac t (“PVPA”), 7 U. S.C. § 2422, whic h require s that an applicatio n for a PVP ce rtificate inclu de the name of the plant variety. The Board further determined th at Applicant’s relianc e on TrafFix Device s, Inc. v. Marketing Displays, Inc. , 532 U.S. 23 (2001), for the holding that a claimed feature of an expired pat ent could nevertheless function as a trademark was misplaced. According to the Board, an applicant must pr ovide a name for a variety of plant when applying for a PVP certificate, and that require m ent is a clear ind i cat i on “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 la w, the UPOV, the PVPA, and t he TMEP, the Board decli ned to disturb its policy of treating varietal names as generic designations

. Applicant timely appealed, and we hav e jurisdiction pursuant to 28 U. S.C. § 1295(a)(4)(B). DISCUSSI ON

06-1133 3We apply a limited standard of review to Board decisions, reviewing legal determinations de nov o and factual findings for substantial ev idenc e. In re Pacer Tech. , 338 F.3d 1348, 1349 (Fed. Cir. 2003). “ S ubs tantial evidence requ ires the reviewing court to ask whether a reasonab le person might find that the evidentiary record supports the agency ’ s conclus i on.” On-Line Careline, Inc. v. Am. Online, Inc. , 229 F.3d 1080, 1085 (Fed. Cir. 2000). Whether a term is a generic, common descriptive name for a good is a question of f a ct. In re Northland Aluminum Prods. , 777 F.2d 1556, 1559 (F ed. Cir. 1985). On appeal, Pennington argues that the Board erred in applying the rule of Dixie Rose that varietal names are generic. Ac cord ing to Pennington, a blanket refusal to register a varietal name fails to consi der this court’s test for g e nericness, viz. , the primary significance of the mark to the pur chasing public. Pennington cont ends that under the appropriate test, t he evidenc e submitted by the examiner, which mainly consisted of government documents and websites , was insufficient to establis h that the applied-for mark was generic. P ennington also asserts that a per se rule prohibiting trademark protection when anot her form of intellect ual proper ty protecti on is als o procured is no longer appropria t e in light of the Supr eme Court’s decis ion 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 UP OV is not applicable here because Applic ant’s PVP cert ificate issued before the U P OV’s effective date. Finally, Pennington argues t hat the generic treatment of varietal names is incons istent with public policy; Congress m ade clear in enacting 15 U.S.C. § 1064 in response t o the Ninth Circuit’s decision in Anti-Monopoly v. General Mills F un Group,

06-1133 4Inc. , 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 it s decision in In re Montrachet , 878 F.2d 375 (Fed. Cir. 1989) , and the Boar d failed to follow that precedent. The Director of the PTO responds that fo r over sixty years the courts and the PTO have clearly held that vari etal names of plants are not registrable. According to the Director, application of th is rule dates back to the Dixie Rose decision. The Direct o r contends that since that decisio n, the PTO’s practice of not registering varietal names because they are generic designations for pl ants has become an established principle, adopted in the UPOV and accom m odated by the PVP A. According to the Director, this recognized principle is consis tent with public policy bec ause when a new plant variety i s developed it must be given a name, and that varietal name may be the only name that purchasers use to designate t hat particular variety of plant. The Director further responds t hat the Suprem e Court’s decision in TrafFix does not require that varieta l names must be registerable as trademarks. Because it is undis puted that the term “Rebel” is the des ignated name for a variety of grass and is not a brand nam e , the term was generic from its first use and thus is not entitled to tradem ark registration. We agree with the Director that the Board correctly dec ided that the varietal name “Rebel” is gener ic and hence is not enti tled to trademark regist ration. Instructive to our holding is the decision in Dixie Ros e . Although that decisi on of the District of Columb ia Circuit is n o t bindin g on our cou r t, we find its reasoning persuasive. In Dixie Rose , an applic ant had patented a new var i ety of rose and had s ought to register the term “Texas Centennial” as a trademark for the rose. 131 F.2d at 446. The

06-1133 5Commissioner of Patents refused registration of the pr oposed ter m 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 hy brid tea ros e 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 Columb ia 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 t hat the words ‘Texas Centennial,’ though originally arbitr ary, have come t o describe to the public a rose of a particular sort, not a rose from a particular nursery.” Id. at 447. The court further reasoned t hat words which are descr iptive cannot be registered, even when an “applicant and his licens ees are, for t he moment, the only persons who produce the thing described.” Id. Subsequent Board decisions hav e consis te ntly follo we d and applied the holding of Dixie Ro se , refusing trademark registration for va rietal names of plants on the ground that such names designate a particular variety of plant, rather than indicate the sourc e of the product. Se e Cohn Bodger & Sons Co. , 122 U.S.P. Q. 345 (T.T.A.B. 1959) (refusing registration of t he name “Blue Lustre” as a trademark for hybrid petuni a seeds); In re Farmer Seed & Nursery Co. , 137 U.S.P.Q. 231 (T.T.A.B. 1963) (refusing registration of the name “Chi ef Bemidji” as a trademark fo r a strawberry plant). In In re

06-1133 6Hilltop Orchards & Nurseries, Inc. , 206 U.S.P.Q. 103 4, 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 t hat the purchaser “has to have some common descriptive name he c an use to indi cate that he wants one variet y of apple tree, rose, or whatever, as oppos ed to another, and it is the v a rietal name of the strain which natur ally and commonly serves this purpose.” Those cas e s are instructive to our decision in this cas e . It is well-established that an applic ant cannot acquire tr ademark protection for the ge neric name of a prod uct. See Goody ear’s Rubber Mfg. Co . v. Goodyear Rubber Co. , 128 U.S. 598, 602 (1888) (“names which are thus descriptive of a class of goods c annot be exc l usiv ely appropriated by any one”); Weis s Noodle Co. v. Golden Cracknel & Spec ialt y Co. , 290 F.2d 845, 847 (C.C.P.A. 1961) (“ no one c a n be granted the exc l usive us e of the nam e of an article”); BellSouth Corp. v. DataNational Corp. , 60 F.3d 1565, 1569 (Fed. Cir. 1995) (the generic name of a product “cannot inform the public t hat the product has a particular source”). Similarly, in this ca se, the exam iner determi ned that the evidence demonstrated that the term “Rebel” was the va rietal name for t he grass seed and was the seed’s generic designation. We see no reason to disturb the examiner ’s finding, as substantial ev idenc e in the record supports his determ ination that “Rebel” is a va rietal name and is thus generic. The ev idence cons is ts of exc e rpts of articles from a variety of sources , including one from the Germplasm Resource s Information Networ k web server, wherein “Rebel” is listed as a cultivar name for ta ll fescue grass seed, an excerpt from the database maintained by UPOV listing “Rebel ” as the denominati on of a tall fescue

06-1133 7variety, and an excer p t from a listing on plant varieties kept by t he Seed Regulatory and Testing Branch of the United Statues Departm ent of Agriculture. The evidence thus demonstrates that the term “Rebel” is the name of a variety of grass seed and as suc h is the variety’s generic designation. There is in fac t no evidence in the record to suggest that the asserted mark functions as a source indicator, rather than as a nam e for a particular grass seed. Thus, substantia l evidence supports the Board’s finding that the term “R ebel” is the name of a variety of grass seed and is its generic designation. The reasoning underlying the PTO’s decis ion to refus e registration of a var i etal name is not, as Pennington ar gues, inconsist ent with the public interest. When an applicant s eeks protection of its grass s eed, the applicant is required to name its developed variety. Applic ant here decided to name it s variety of grass seed “Rebe l ” and that name was dis c losed in t he PVP c e rt ificate, designating to the public the name of the variety of grass seed. Just as in Dix ie Rose , that variety of grass seed became known throughout the trade by t he name “ R ebel” and is listed in applicant’s catalog by that name. When a purchaser asks for that particula r type of grass seed, he has no other name to use but its des ignated nam e. The purchasi ng public only has the term “Rebel” to refer to this particu lar product. As we stated in In re Merrill Lyn c h, Pierce, Fenner, & Smith, Inc. , 828 F.2d 1567, 1569 (Fed. Cir. 1987): Generic terms, by definition incapabl e of indicating source, are the 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 t he genus of goods being sold, even when these have bec ome identified with a first user, would grant the owner of t he mark a monopoly, since a competit or could not describe hi s goods as what they are.

06-1133 8We 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 establis h trademark protection for its variet y of grass seed, it can do so by associating a particular brand name with its grass seed. However, having des i gnated 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 sour ce, Applicant here is prohibited from acquiring trademark protection for the gener ic and only name of that variety of grass seed. This situation may be contra sted with pharmaceutical products where a generic name is designated for a new pha rmaceutical product and its manufacturer associates it with a br and name. For exampl e, ibuprofen is the ge neric term designated for a particular nons teroidal anti-infla mmatory drug and ADVIL is a br and name indic a ting a source of the dr ug. 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 cont emplate a situation in which money has been invested in a promoti on in the mistaken belief that trademark rights of value are being created, merc hants act at their peril in attempting, by advertising, to convert common descr iptiv e names, which b e lo ng to the public, to their own exc l usiv e use. Even though they succeed in the creation of de facto se condary meaning, due to lack of competition or other happenstance, the law res pecting registration will not giv e it any effect. Weiss Noo d le , 290 F. 2d at 845. Thus, the Board corre ctly decided that the term “Rebel” cannot be registered for grass seed because those in the tr ade “need to call it by the name that it is known or otherwise consumers will not know what they are buying.” In re KRB Se ed , 76 U.S.P.Q. 2d at 1160.

06-1133 9That determination is consistent wit h the language in t he UP OV, the PVPA, and the TMEP, which provide that plant variet y names are unregistrable as trademarks. Chapter VI Article 20 of UPOV, as revised in 1991, provides that: (1) (a) The variety shall be designat ed by a denomination which will be its generic designation. (b) Each Contracting Party shall ens ure that, subject to paragraph (4), no rights in the designation regist ered as the denomination of the variety shall hamper the free use of the denomination in connection with the variety, even after the ex piration of the breeder’s right. *** (8) When a variety is offered for sale or marketed, it shall be per mitted to associate a trademark, trade name or other similar indicatio n with a registered variety denominat ion. If such an indication is so assoc i ated, the denomination must neverthel ess be easily recogniz able. The United States is a party to the UPOV. Althoug h Pennington argues that UPOV does not apply here bec ause the use of the designation “Rebel” pr edated the United States’ adherenc e to UPOV, we find this argu ment unpersuasive. The PTO’s policy of refusing registration of varietal names dates back to the Dixie Ros e case, well before the UPOV treaty. While the requirement s 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 requ ires an appl ication for a PVP certificate to include the na me of the plant variet y, is also c ons istent with our decision. See 7 U.S.C. § 2422. In add i tion, section 1202.12 of the TMEP pr ov ides that “varietal or cultivar names are designation s given to cultivated v a rieties or subspecies of live plants or agricultural seeds. They amount to the generic name of the plant or s eed by which such v a riety is known to the public.” While the TMEP is not establis hed law, but only provides inst ructions to examiners, it does represent the PTO’s established policy on varietal names that is

06-1133 10entitled to our respect. We see no reason to differ with it. See W. Fla. Seafood, Inc. v. Jet Rests., Inc. , 21 F.3d, 1122, 1127 n.8 (Fed. Cir. 1994) (“While the TME P does not have the force and effect of law, it sets forth the guidelines and pr ocedures followed by the examining attorne ys at the PTO.”). Pennington contends that an am endment to the Lanham Act, embodied in 15 U.S.C. § 1064 provides support for its pos i t ion 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. Se ction 1064 of Title 15 is entitled “Cancellation of Registration” and provides genera lly for the cancellation of a registered mark if such a mark becomes generic . Section 1064(3) provides specif ically that a “registered mark shall not be deemed to be the generic name of goods or services solely because suc h mark is also used as a name of or to identif y a unique product or service.” That section, however, pertains to c ancellation of registered marks and does not apply here becaus e the term “Rebel” is not a registered mark . Moreover the amendment was enacted in response to the dec is ion in Anti-Monopoly v. General Mills F un 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 indic a tor, but rather indicates, and always has indicated, a variety of grass seed. Similarly, our decis ion in In re Montrachet does not provide support for Pennington. In that case, the issue was “whether MONTRACHET has los t its original trademark signific anc e; that is w hether MONTRACHET is now the common descriptive or generic name for applic ant’s cheese.” In re Montrachet , 878 F.2d at 376. In

06-1133 11determining that the term “Montrachet” fo r goat ch eese was not generic, the court reasoned “[t]hat a particula r source makes a goat cheese with recognizable characteristics does not convert the desi gnation of source to a common or generic name,” and cited 15 U. S.C. § 1064(c). Id. at 376-77. T here the inquiry was whether a trademark as used on a single product became generic . Here, the term “R ebel,” as a varietal name, was generic ab initio . T hus , 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 Cour t’s decis ion in TrafFix supports its appeal. Pennington argues that TrafFix held that acquiring patent protection on a product does not prohibit an applic ant from also acquiring trademark protection on that pr oduct, and likewis e that Applic ant shoul d not be prohibited from acquiring trademark protection on its plant me rely because that plant has plant variety protection. In TrafFix , the “principal question” was “the e ffect of an expired p a tent on a claim of trade dress infr ingement.” 522 U.S. at 29. The Court then st ated that a “utility patent is strong evidence t hat the features therein cl a i med are functional.” Id. T h a t

case was thus concer ned with a very different issue: whether a cl aimed feature of an expired pat ent could acquire trade dress prot ection, and the Court held that there was a rebuttable presumption t hat it could not. Here, it is irrelevant to our decision that Applicant’s plant protection has expired, and we are not conc erned with whether a functional aspect of a plant can acquire trade dress protection. As the Board stated, the design a tion of the term “Rebel” in the PVP ce rt ificate is not an arbitrary aspect of a PVP certificate, but is a “necessary element, sho wing that the name of t he varietal is in the nature of a generic term.” In re KRB Se ed , 76 U.S.P.Q. 2d at 1159. Thus, the TrafFi x

06-1133 12decision does not provide a relevant analogy to this case, which concerns whether a varietal name is generic. CONCLUS ION Because we hold as a matter of law that plant varietal names are generic and substantial evidence supports the Board’s f i nding that “Rebel” is a varietal name, the decision of the Board is affirmed.
AFFIRMED

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