Federal Circuit Finds Varietal Names Generic

In In re Pennington Seed Inc. (No. 06-1133; October 19, 2006), the Federal Circuit affirms the Trademark Trial and Appeal Board's refusal of registration of the mark REBEL as generic for a variety of grass seed.

Pennington Seed Inc. (“Pennington”) had previously designated the term “Rebel” as the varietal name for a grass seed that was the subject of a plant variety protection (“PVP”) certificate. The TTAB refused registration pursuant to long-standing precedent and policy of treating varietal names as generic, holding that 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.” Pennington appealed, arguing that a blanket refusal to register varietal names is improper because it does not take into consideration the test for genericness, the Supreme Court's holding in TrafFix Devices, Inc. v. Marketing Displays, Inc. , 532 U.S. 23 (2001), and is against public policy.

The Court affirms the TTAB's holding, stating “[H]aving 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.”