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The Plant Naming Conundrum … Protecting Your Plant Varieties in the Short and Long Term

February 15, 2018
Post by Christine Lebron-Dykeman

Development of a new plant cultivar or varietal often requires substantial research and development. These costs can be recovered, however, if a breeder is able to successfully market, sell and/or license the resulting product, while maintaining exclusive ownership rights therein.  There are, of course, a variety of intellectual property protection schemes available to maintain those exclusive rights, including plant patents, utility patents, plant variety protection (PVP), and/or trade secrets which each offer distinct benefits. However, because patents and PVP protection are subject to strict time limitations, and trade secrets can be difficult to maintain in some instances, breeders should also consider protection under the trademark laws of the United States, which can provide perpetual protection so long as the trademark is used in commerce. 

Choosing the right trademark or name is an important consideration that should be undertaken before any patents or PVPs are filed because it is critical that the trademark or brand name under which the plants are intended to be sold is different than the name used to designate the varietal or cultivar in a patent or a PVP.

Plant breeders perhaps unknowingly face a difficult conundrum when choosing the name of newly created varietal designation if they intend to seek more than one type of intellectual property protection.

When filing for PVP, the International Convention for the Protection of New Varieties of Plants (UPOV) requires that the PVP application designate the variety "by a denomination" which will be its generic designation.  1991 UPOV Article 20(1).  That denomination—or name—is the very name that must be used by any third party producing that variety even after the expiration of the plant variety protection. 1991 UPOV Article 20(7) (requiring that any person who "offers for sale or markets propagating material" of a PVP-protected variety in the jurisdiction where the variety is protected must use the variety denomination, even after the PVP expires).  Likewise, when filing for a Plant Patent under 35 U.S.C. § 161, a varietal denomination is required under 37 C.F.R. 1.163(c)(5).

Unfortunately, however, this variety denomination requirement often interferes with the breeder’s claim to rights under another, potentially far more long-lasting form of intellectual property protection, namely trademark protection. The Federal Circuit has held that as a matter of law that plant varietal names—e.g., variety denominations used in PVPs or patents—which are the "generic" designation do not function as source identifiers and thus are not subject to trademark protection. In re Pennington Seed, Inc., 466 F.3d 1053, 1057, 80 USPQ2d 1758, 1761 (Fed. Cir. 2006) In other words, because any person who sells the variety must use the denomination, and a consumer “has to have some common descriptive name he can use to indicate that he wants one [particular] variety of apple tree, rose, or whatever, as opposed to another,” the varietal name used in any Patent or PVP can never be associated with a single source and thus cannot act as a brand for that particular variety. Id.  What is more, because U.S. trademark law prohibits registration of any descriptive mark on the Principal Register (without evidence of secondary meaning/acquired distinctiveness), any varietal/cultivar name will also be refused registration on the Principal Register for use on products that incorporate the varietal/cultivar name as an ingredient (e.g., baking flour made from a wheat varietal).

Should the varietal name appear in a plant patent or PVP application as well as a trademark filing, there is little an applicant can do to convince the USPTO the varietal name is not generic. Provisional rejections for lack of distinctiveness are not easily overcome in this regard. As such, care should be taken to distinguish varietal name from a trademark from the outset. Prior to filing any patent or PVP, breeders should consider what brand they want to eventually sell under and reserve that name for Trademark protection, and instead use letters, numbers, or code names for plants in patents, PVP, or anywhere where they are describing the varietal/cultivar.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Christine Lebron-Dykeman is Chair of the Trademark Practice Group at McKee, Voorhees & Sease, PLC. For additional information, please visit www.ipmvs.com or contact Christine directly via email at christine.lebron-dykeman@ipmvs.com.


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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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