Precedential No. 34: "IFG" Fails To Function As A Trademark For Live Plants Because It's A Varietal Name

• Published date: 29 November 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Wolf, Greenfield & Sacks, P.C.
• Author: Mr John L. Welch

In a decision of importance to trademark practitioners who labor in the varietal plant field, the Board held that "proposed marks that constitute the prominent portion of a varietal denomination are unregistrable under Trademark Act Sections 1, 2, and 45 because they are generic for the varietals they identify" and therefore "incapable of functioning as a trademark." And so, the Board refused to register the proposed mark IFG for "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 re International Fruit Genetics, LLC, 2022 USPQ2d 1119 (TTAB 2022) [precedential] (Opinion by Judge Angela Lykos).

The CAFC in In re Pennington Seed Co., 466 F.3d 1053, 80 USPQ2d 1758, 1761-62 (Fed. Cir. 2006), upheld the USPTO's long-standing precedent and practice of treating varietal names as generic, affirming the Board's ruling that the term "Rebel," as a varietal name for a type of grass seed failed to function as a mark. The CAFC explained that an entity that is the source of a varietal may use a particular term as a trademark for its specific varietal, but it must be clear that there is also a generic name for the varietal. "This notion reflects the Board's earlier decisions that if the term is used as a designation of source (i.e., a trademark) and there is a different varietal designation, the term may be registrable."

The Board agreed with the applicant that IFG, by itself, is not the entire varietal name for applicant's identified goods. However, the USPTO's evidence established that the initialism IFG is the first component of numerous varietal names for grapes, grapevines, grapevine plants, sweet cherry trees and cherries, goods that are encompassed within the scope of Applicant's identified goods.

Thus, the questions before us are (1) is the prominent portion of a varietal name barred from registration under Trademark Act Sections 1, 2, and 45 because varietal names are the equivalent of generic designations; (2) if so, does the record show that IFG is a prominent portion of the varietal names of record for the identified goods; and (3) does this constitute an absolute bar to registration given Applicant's prior valid and subsisting trademark registration of the same mark for "Live plants, namely, table grape vines cherry trees" where such registration issued prior to the application filing dates of any of the plant patents or plant...