TTAB cuts down fruit breeder TM bid
Conflict with name of patents for grapes and cherries prompts denial | If permitted, mark would “impede free use in the marketplace of a varietal denomination” following the patent’s expiration.
The US Trademark Trial and Appeal Board (TTAB) has refused to register fruit breeder International Fruit Genetics’ (IFG) initials as a trademark because it has already used ‘IFG’ as the name of its plant patents.
According to the TTAB’s final written decision—issued Tuesday, November 22,—IFG’s trademark application was refused as the proposed mark “identifies the prominent portion of a varietal name” for certain IFG plant patents and, because of this, was generic.
IFG applied to register its IFG trademark in December 2019, covering “fresh fruits and vegetables; live plants; live trees; live grape vines; live plant material, namely, live grapevine material, live plant material and live tree material” in international class 31.
‘IFG’ is an element in many varietal names designated in plant breeder’s rights, and plant patents for grapes, grapevines, grapevine plants, sweet cherry trees and cherries, including ‘IFG FOUR” and “IFG FIVE”.
According to the examining attorney, who had originally refused registration of the mark, ‘IFG’ is the prominent portion of these varietal denominations for the identified goods because it is “the first and dominant term most likely to be remembered by the purchaser compared to the second term which are merely consecutive numeric designations”.
Because of this, the ‘IFG’ mark can’t function as a trademark to indicate the source of the plant breeder’s identified products or distinguish them from others.
Allowing registration of the proposed mark, according to the examining attorney, would “contravene the public policy of prohibiting any one breeder or supplier from retaining exclusivity in the name of a variety once the patent, plant variety protection (PVP) certificate, or breeder’s right expires”.
IFG had appealed against the decision, but the TTAB rejected its bid and affirmed the examining attorney’s decision.
The TTAB concluded that the prominent portion of a varietal name cannot be registered as a trademark (as to find otherwise would breach the US obligations under the International Union for the Protection of New Varieties of Plants Convention) and that IFG is the prominent portion of each varietal name.
It added that even though IFG already owned a valid and subsisting trademark registration consisting solely of the term IFG for in-part identical goods this does not alter the outcome.
"Applicant could have chosen a designation other than IFG to associate as a brand name and file for trademark protection. Instead, cognisant that such varietal denominations would eventually become the generic designations upon the expiration of plant patent and PVP certificate protection, applicant risked the integrity of its IFG trademark by using IFG to name new varietals,” said the TTAB.
The board added: “Applicant cannot now inhibit current and future public use of these varietal denominations because of its decision-making.”
IFG had also argued that when its plant patent and PVP certificate protection expires, it will lose the ability to prevent unrelated third parties from using its plant patent varietal names.
The TTAB noted: “Applicant seeks to preserve in perpetuity the fruit of its inventions and exclusive right to IFG through the trademark registration process. If permitted, this would impede free use in the marketplace of a varietal denomination following the expiration of plant patent and PVP certificate rights.”
The refusal to register the trademark was affirmed.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox.
