In re Int'l Fruit Genetics
| Decision Date | 22 November 2022 |
| Docket Number | 88711192 |
| Parties | In re International Fruit Genetics, LLC |
| Court | Trademark Trial and Appeal Board |
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.
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 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.
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, 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 U.S.P.Q.2d 1171, at *4 n.5 (TTAB 2021) (). 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 U.S.P.Q.2d 11387, at *13 n.46 (TTAB 2020) (); see also, United States v. Garcia, 855 F.3d 615 (4th Cir. 2017) (); Daniels Hall v. Nat'l Educ. Ass'n, 629 F.3d 992, 998-99 (9th Cir. 2010) (); Hong v. Rec. Equip., Inc., 2019 U.S.P.Q.2d 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.
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.
Before discussing the varietal name refusal, we provide some background on the UPOV Convention, U.S. patent law, and other statutory frameworks for the protection of varietal names.
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, 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] [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 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] The types of records and intellectual property rights that are included in the PLUTO Plant Variety Database are:
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]
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 (), amended the Agricultural Marketing...
To continue reading
Request your trial