In re Pennington Seed, Inc.

• Decision Date: 19 October 2006
• Docket Number: No. 06-1133.,06-1133.
• Citation: 466 F.3d 1053
• Parties: In re PENNINGTON SEED, INC. (mark formerly owned by KRB Seed Company, LLC).
• Court: U.S. Court of Appeals — Federal Circuit

466 F.3d 1053

In re PENNINGTON SEED, INC. (mark formerly owned by KRB Seed Company, LLC).

No. 06-1133.

United States Court of Appeals, Federal Circuit.

October 19, 2006.

Howard A. MacCord, Jr., MacCord Mason PLLC, of Greensboro, NC, argued for appellant.

Stephen Walsh, Associate Solicitor, United States Patent and Trademark Office, of Arlington, VA, 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.

Before MICHEL, Chief Judge, LOURIE, Circuit Judge, and ELLIS,^* District Judge.

LOURIE, Circuit Judge.

DECISION

Pennington Seed, Inc. ("Pennington") appeals from the decision of the United States Patent and Trademark Office ("PTO") Trademark Trial and Appeal Board (the "Board") refusing registration of the term "Rebel" as a trademark for a variety of grass seed. In re KRB Seed Co., 76 U.S.P.Q.2d 1156, 2005 WL 2451656 (T.T.A.B.2005). Because the Board correctly determined that the applied-for mark is the generic designation for that variety of grass seed and hence is not entitled to trademark registration, we affirm.

BACKGROUND

On July 25, 2001, KRB Seed Company, LLC (hereinafter referred to as "Applicant") filed an application to register the word "Rebel" as a trademark for grass seed. Applicant had previously designated the term "Rebel" as the varietal (or cultivar) name for a grass seed that was the subject of a plant variety protection ("PVP") certificate, issued on May 14, 1981. The trademark examining attorney refused registration of the applied-for mark under 15 U.S.C. §§ 1051, 1052, and 1127 on the ground that it was a varietal name for a type of grass seed, and thus that the name was the seed's generic designation. Applicant appealed the examiner's decision to the Board and, upon request by the examiner, the Board remanded the appeal to the examiner to address Applicant's claim of acquired distinctiveness under 15 U.S.C. § 1052(f). Upon remand, the examiner refused the registration under 15 U.S.C. § 1052(f) and made final his refusal to register the term "Rebel" as a trademark for grass seed.

Applicant appealed to the Board, and the Board affirmed the examiner's decision. The Board first found that the evidence conclusively established that the term "Rebel" is a varietal name for a type of grass seed. Thus, the Board observed that the only issue before it was whether the PTO's long-standing precedent and policy of treating varietal names as generic was still valid. After reviewing prior case law, the Board concluded that the PTO's policy was still valid. In reaching its conclusion, the Board rejected 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 District of Columbia Circuit determined that the term "Texas Centennial" could not be registered as a trademark because it was the varietal name for a particular rose. The Board observed that Dixie Rose did not set forth a special test from which to judge genericness, but simply established that varietal names were not subject to trademark protection.

The Board also found support for its decision in the Trademark Manual of Examining Procedure ("TMEP"), which instructs examiners to refuse registration of varietal names because such names do not function as source indicators. Additional support was provided by the International Convention for the Protection of New Varieties of Plants ("UPOV"), which provides, inter alia, that a name for a new plant variety must be designated and that that designation will be its generic name, and by Section 52 of the Plant Variety Protection Act ("PVPA"), 7 U.S.C. § 2422, which requires that an application for a PVP certificate include the name of the plant variety.

The Board further determined that Applicant's reliance on TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001), for the holding that a claimed feature of an expired patent could nevertheless function as a trademark was misplaced. According to the Board, an applicant must provide a name for a variety of plant when applying for a PVP certificate, and that requirement is a clear indication "that the name of the varietal is in the nature of a generic term." In re KRB Seed, 76 U.S.P.Q.2d at 1159, 2005 WL 2451656. In light of the case law, the UPOV, the PVPA, and the TMEP the Board declined to disturb its policy of treating varietal names as generic designations.

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

DISCUSSION

We apply a limited standard of review to Board decisions, reviewing legal determinations de novo and factual findings for substantial evidence. In re Pacer Tech., 338 F.3d 1348, 1349 (Fed.Cir.2003). "Substantial evidence requires the reviewing court to ask whether a reasonable person might find that the evidentiary record supports the agency's conclusion." On-Line Careline, Inc. v. Am. Online, 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 fact. In re Northland Aluminum Prods., 777 F.2d 1556, 1559 (Fed.Cir.1985).

On appeal, Pennington argues that the Board erred in applying the rule of Dixie Rose that varietal names are generic. According to Pennington, a blanket refusal to register a varietal name fails to consider this court's test for genericness, viz., the primary significance of the mark to the purchasing public. Pennington contends that under the appropriate test, the evidence submitted by the examiner, which mainly consisted of government documents and websites, was insufficient to establish that the applied-for mark was generic. Pennington also asserts that a per se rule prohibiting trademark protection when another form of intellectual property protection is also procured is no longer appropriate in light of the Supreme Court's decision in TrafFix. Pennington further argues that even though the language in the UPOV provides that a plant's varietal name will be its generic designation, the UPOV is not applicable here because Applicant's PVP certificate issued before the UPOV's effective date.

Finally, Pennington argues that the generic treatment of varietal names is inconsistent with public policy; Congress made clear in enacting 15 U.S.C. § 1064 in response to the Ninth Circuit's decision in Anti-Monopoly v. General Mills Fun Group, Inc., 684 F.2d 1316 (9th Cir.1982), that a name may be used to indicate both a product and its source. According to Pennington, this court adopted such reasoning in its decision in In re Montrachet, 878 F.2d 375 (Fed.Cir.1989), and the Board failed to follow that precedent.

The Director of the PTO responds that for over sixty years the courts and the PTO have clearly held that varietal names of plants are not registrable. According to the Director, application of this rule dates back to the Dixie Rose decision. The Director contends that since that decision, the PTO's practice of not registering varietal names because they are generic designations for plants has become an established principle, adopted in the UPOV and accommodated by the PVPA. According to the Director, this recognized principle is consistent with public policy because when a new plant variety is developed it must be given a name, and that varietal name may be the only name that purchasers use to designate that particular variety of plant. The Director further responds that the Supreme Court's decision in TrafFix does not require that varietal names must be registerable as trademarks. Because it is undisputed that the term "Rebel" is the designated name for a variety of grass and is not a brand name, the term was generic from its first use and thus is not entitled to trademark registration.

We agree with the Director that the Board correctly decided that the varietal name "Rebel" is generic and hence is not entitled to trademark registration. Instructive to our holding is the decision in Dixie Rose. Although that decision of the District of Columbia Circuit is not binding on our court, we find its reasoning persuasive. In Dixie Rose, an applicant had patented a new variety of rose and had sought to register the term "Texas Centennial" as a trademark for the rose. 131 F.2d at 446. The Commissioner of Patents refused registration of the proposed term on the ground that it was the name of the variety of the rose. The Commissioner reasoned that the term "Texas Centennial" was "one of a hundred varieties of hybrid tea rose listed in applicant's catalog of record, each bearing its own distinctive name. ... Each is the name of a particular type, style, or variety of rose, and would be likely to convey no other meaning to purchasers." Ex parte Dixie Rose Nursery, 45 U.S.P.Q. 673, 1940 WL 9528 (Comm'r Pats.1940). The district court refused to authorize the Commissioner to register the proposed term. On appeal, the District of Columbia Circuit affirmed, reasoning that the rose variety was "known throughout the trade, and listed in appellant's catalog by this name. Purchasers call for it, and for no other variety, by this name." Dixie Rose, 131 F.2d at 446. Thus, the court determined that the PTO and district court "might properly conclude that the words `Texas Centennial,' though originally arbitrary, have come to describe to the public a rose of a particular sort, not a rose from a particular nursery." Id. at 447. The court further reasoned that words which are descriptive cannot be registered, even when an "applicant and his licensees are, for the moment, the only persons who produce the thing described." Id.

Subsequent Board decisions have consistently followed and applied the holding of Dixie Rose, refusing trademark registration for varietal names of plants on the ground that such names designate a particular variety of plant, rather than indicate the source of the...