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Using & Registering Plant Trade Designations as Trademarks 
Our U.S. Plant Patent - It took A While 
Trademark Rights Help in Domain Name Disputes  






USING AND REGISTERING PLANT TRADE

DESIGNATIONS AS TRADEMARKS


INTRODUCTIONA cultivar name is a taxonomical identification of a plant variety and trademarks are used to indicate the source of origin of plants sold in the marketplace. Cultivar names may be freely used worldwide to identify a particular variety. However, trademarks used on or in connection with plants denote the source and origin of the plant and may not be used in commerce without authorization of the trademark owner. Trademark rights can be valuable commercial assets when used to protect investment in marketing and promotion of a plant variety.
UNDERSTANDING TRADEMARKS
Definition of TrademarkBefore considering application of trademarks to plants, it is important to understand what trademarks are all about. A commonly accepted definition is that a trademark is a term adopted and used by a manufacturer or merchant to identify goods and distinguish them from those manufactured or sold by others. The term selected for use as a trademark may be a word, name, symbol, or device, or any combination of these. We are all familiar with well-known trademarks to which all of us are exposed every day. Some of us may even be aware of, or have read about, conflicts involving trademarks which sometimes even appear in the public press. Forms of marks other than trademarks also may be protected, such as service marks, collective marks and certification marks; but except for service marks, these other forms are generally not used in the plant industry. A service mark is one applied to distinguish a service offered to the public, such as marketing of plants by nurseries and garden shops.
Function of TrademarksThe main function of a trademark is to indicate the origin of goods with which the trademark is associated. Trademarks also serve as an implicit identification of the quality of goods bearing the mark. After satisfactory experience with a trademarked product, purchasers often view the trademark as a guarantee of an acceptable level quality. Actually, the rationale for offering protection to owners of trademarks is to protect the public by enabling purchasers of products bearing trademarks to expect the quality previously experienced to be dependably reproduced over time. In other words, if a consumer is satisfied with a product identified by a particular trademark, that person will expect to receive the same value and quality on subsequent purchases of that product. Because of this reliance by purchasers, the law in most countries gives the owner of the trademark the fight to exclude others from applying that trademark on goods manufactured and/or sold by others since the trademark owner does not have the opportunity to control the quality of goods not manufactured by the trademark owner. In some countries the owner of a trademark will have rights to sole use of the mark even in the absence of formal registration of the mark. In the United States such rights are referred to as "common law" trademark rights. However, without exception it is better to obtain governmental registration of the mark when possible than to rely on common law rights.
Use of Trademark RequiredRights in a trademark are acquired only by use and, generally, the use must continue if the trademark rights are to be preserved. There can be no protectable trademark right if the trademark is not actually used to identify goods in the marketplace. In other words, one cannot acquire protectable trademark rights for unused trademarks. Moreover, trademark rights once acquired may be subsequently lost through nonuse, or misuse.In the United States, federal and state trademark law protects a mark whether or not it is registered. As a general rule in all countries recognizing trademark rights, it is an infringement of these rights for someone else to use the same or a confusingly similar term, on the same or closely related goods, in the same geographical area, or in some cases, within a natural area of expansion. Moreover, trademark infringement is a form of unfair competition and, therefore, may be within the scope of unfair competition laws. A trademark registration protects the owner and the public against a likelihood of confusion, mistake or deception about the source, affiliation, sponsorship or approval of goods or services by commercial activities of another. In the United States, federal registration also protects against the use of any false or misleading statement of fact in commercial advertising or promotion which contains a misrepresentation about the person's, or another's, goods, services or commercial activities. Unauthorized use of another's trademark is such a misrepresentation.Some countries also have antidilution statutes which protect the owner of a very strong trademark against the loss of its distinctiveness or damage to its image even if there is no likelihood of confusion, by use of a mark similar to the famous trademark. A national antidilution law has been recently enacted in the United States.
Protection of TrademarksIt is unfortunate that the word "registration" is used in the context of conferring statutory protection to trademarks and also in the context of registering the plant name with an International Registrar because this often results in confusion. Registration with an International Registrar does not confer any legal rights whereas use of a term as a trademark and governmental registration of a trademark does confer significant legal rights to the trademark owner. For this reason, those manufacturing and selling goods identified by a trademark generally seek governmental registration of the mark, if possible. Moreover, registration on a national Principal Trademark Register is evidence of the exclusive right to use the mark and entitlement to the remedies for infringement under national law. For example, it is possible for a trademark owner to recover the infringer's profits, recover damages sustained by the trademark owner and, possibly, recover costs of the action taken to enforce the trademark rights. Furthermore, the owner of a trademark who prevails in an action for infringement can obtain an injunction to prevent further use of the mark by the infringer and require the infringer to destroy the articles bearing the infringing mark. Another right granted to the owner of a trademark is the right to prevent improper importation of goods bearing infringing marks and the customs service can be asked to assist.
Improper and Proper Usage of TrademarksProper usage of the trademark is fundamental to the ability to obtain and maintain proprietary rights to the trademark and to obtain the remedies for trademark infringement. Improper trademark usage is responsible for most of the confusion about the role of trademarks and about what must be done to avoid encroaching on the legitimate concerns of taxonomists.In order to maintain the proprietary nature of a mark, the trademark should not be used as a generic description of goods. When a trademark becomes "generic" and is used to denote the goods themselves and not the origin, then the exclusive tight to use the mark may be lost. A classic example is the word "aspirin." When first manufactured and sold, this chemical composition (acetylsalicylic acid) was marketed under the trademark ASPIRIN by the Bayer company. Over time, and absent an enforcement program by the trademark owner to maintain the proprietary nature of this mark, the term aspirin came into public usage as a generic description of the chemical composition originally sold under the mark. As a result, the Bayer Company was no longer able to assert exclusive ownership of the term and prevent others from using it. This same principle applies to plant trade designations. If a commercial trade plant trade designation is or becomes the "generic" name for a plant cultivar, it is not protectable and trademark rights may be lost.To avoid loss of trademark rights, trademarks should, in general, either be capitalized completely, used with initial caps with quotes, or at the very least with initial caps. Other alternatives for distinguishing trademarks include italicizing the mark or printing it in boldface or in a different color. Since trademarks are proper adjectives, it is desirable to use them followed by generic terms. Examples include SCOTT tissues and SNICKERS candy. Additional emphasis can be given to trademarks by using one or more acceptable symbols that indicate the trademark status. This can be accomplished b y employing the symbol TM with the mark if it is not registered or the symbol R in a circle for federally registered trademarks. However, the circle R symbol should only be used if the mark is actually registered in the US Patent and Trademark Office, or the equivalent national registration office in other countries, and not merely the subject of a pending application for registration, or not registered at all. There are generally penalties for improper use of the circle R symbol.If a trademark becomes generic, anyone can use it because the word or symbol no longer indicates to the public that the products on which the mark is used were made, sold or supplied by the trademark owner. Once a trademark is lost, consumers no longer have the opportunity to identify preferred brands and products by the trademark and repeat satisfactory purchases. Loss of trademark rights also destroys the owner's investment in this asset.
PLANT TRADE DESIGNATIONS AS TRADEMARKS
Varietal Designation vs. TrademarkTo relate the foregoing to plants, it is first necessary to distinguish between trademarks and the scientific denominations given to plants by breeders or discoverers of new varieties. The Latin language was used by early scholars to identify plants and, as a result, the scientific denomination of plants is now in Latin. The Latin binomial naming is in general use today to identify plants by genus and species. In general, the first word in the binomial nomenclature is capitalized and identifies the plant genus which is followed by a second term not capitalized, used to identify the species. The specific rules for scientific naming of cultivated plants are set forth in the International Code of Nomenclature for cultivated plants (ICNCP, 1995) established by the International Botanical Congress.It is also important to understand that not all commercial trade designations applied to plants are trademarks. A term may be either a varietal designation, ie, cultivar name, or a trademark, but not both. If the originator or introducer of a new plant variety chooses to do so, a commercial trade designation may be chosen and used as the varietal designation which then also serves to identify the plant generically. In this case, the commercial trade designation, as the generic name, may be freely used by others and cannot be appropriated or regarded by the initial user of the name as a proprietary trademark.
Distinguishing Between Cultivar Names and TrademarksOne way to ensure and maintain the distinction between cultivar names and trademarks is to employ the practice of exclusively associating a cultivar name with a particular cultivated variety of plant. A cultivar name can be distinguished from properly used trademarks, whether registered or unregistered, by always using cultivar names with single quotes, and not using single quotes to identify trademarks. This practice will permit and encourage the use of the cultivar name, i.e. varietal designation, as the sole and exclusive common scientific designation for the cultivar without confusing it with trademarks. Of course, a commercial trade designation may be also a cultivar name, in which case it may be used in single quotes and then will not be considered a trademark.It is important that trademarks are not confused with, or equated to, the cultivar name. Commercial trade designations for plants which are used and regarded as the cultivar name cannot, and should not, be entitled to protection or exclusive use. However, where the trademark is used in addition to the cultivar name, the trademark should be properly protectable. This distinction can be maintained if cultivar names in print are enclosed in single quotes and trademarks are not used with single quotes and are be followed by the appropriate trademark symbol, either TM or R in a circle to indicate its designation as a trademark.
Role of International RegistrarsInternational registration authorities make an important contribution by maintaining a Register of plant names and by exercising some influence in preventing use of improper names or the duplication of plant names by the trade. However, since there is no legal obligation to register a plant name with an International Registrar, the effectiveness of the International registration of the plant name with a Registrar is limited, both in function and substance.Unfortunately, an International Registrar may also contribute to the confusion which arises in the use of plant names if the Registrar is not careful. By failing to distinguish between cultivar names and commercial trade designations used as trademarks, a Registrar may improperly register as cultivar name a commercial trade designation used as a trademark. If the Registrar accepts or indicates in its publications registration of a commercial trade designation name which is used as a trademark, the registration could be evidence that the mark is generic and therefore is not to be accorded trademark status, to the detriment of the breeder or introducer of the new plant variety. If this is done, deliberately or unintentionally, the horticultural industry will be discouraged from submitting plant names to International Registrars for registration. Furthermore, if trademarks are accepted for registration as cultivar names when in fact they are not cultivar names, there will be considerable confusion as to what is the correct cultivar name, particularly since different trademarks may be used in commerce in the same or different geographical areas to commercially identify plants of the same cultivar.
PROPER USAGE OF COMMERCIAL TRADE DESIGNATIONS AS TRADEMARKS
Plant LabelsSince only commercial plant trade designations which are not also cultivar names may be protected as trademarks, it is incumbent on those wishing to employ a protectable trademark to use trademarks for plants properly. In addition to the trademark, a label, tag, or other descriptive information concerning the plant must employ the generic plant name, i.e. the cultivar name. It is also desirable for the trademark owner to promote the trademark through advertising and marketing literature as the trademark owner's product. A properly designated label will prominently display the trademark but will also indicate the cultivar name.
Suggestions for Proper Trademark UsageAs an illustration, let us suppose the ABC Nursery has developed a new Nandina domestica plant variety for which it applies the cultivar name 'Abcor.' ABC Nursery intends to market 'Abcor' under the trademark PROTECTABLE. The nursery applies for registration of 'Abcor" with the appropriate International Registrar for that plant. When the plant is marketed however, it applies its own trademark PROTECTABLE (note use of the TM symbol to identify ABC Nursery as the source or origin of the plant). A label or tag for the plant might read as follows: PROTECTABLE (Nandina domestica 'Abcor'), and, preferably indicate ABC Nursery as the source of the plant and owner of the trademark with the legend "PROTECTABLE is a trademark of ABC Nursery." In registering the generic or varietal designation of the plant 'Abcor,' ABC Nursery is acknowledging that others may grow and sell plants identified as 'Abcor' unless the plant itself is subject to plant patent or breeders' rights protection. Absent some protection against unauthorized asexual or other propagation of 'Abcor,' others may use the cultivar name 'Abcor' to identify their products but may not also use the trademark PROTECTABLE which is the property of ABC Nursery, whether govermentally registered or not. In fact, since trademark rights are enhanced by usage, it would be in ABC Nursery's best interest to promote PROTECTABLE as ABC Nursery's plants of Nandina domestica 'Abcor.' In this way, both the separate generic identification of the plant variety , i.e. the cultivar name, and the protected trademark are part of the information disclosed to the public. If and when others have the right to sell Nandina domestica 'Abcor,' purchasers satisfied with ABC Nursery's product PROTECTABLE can continue to do so knowing that the plants will continue to be of the quality established by ABC Nursery for its trademarked product. Other Nandina domestica 'Abcor' which are not identified by the ABC Nursery trademark, may or may not be of the same quality.
PLANT VARIETY PROTECTIONUnlike trademark rights, patents and breeders' rights do protect the owner of such rights against the unauthorized propagation and sale of plants of the protected varieties. In the United States, new varieties of plants may be protected by plant patents, utility patents and, in the case of sexually reproducible new varieties, by Certificates of Protection. Applications for Certificates of Protection are filed with the U.S. Department of Agriculture and the rights obtained by the certificate of protection are similar to breeders' rights obtained in other countries. Patent rights in the United States include the right to exclude others from using or selling plants of the protected variety, and in the case of plant patents, from asexually reproducing the plant. Utility patent rights may be broader than rights obtained from plant patents.Applications for protection in the United States must include the varietal name in the description. Such varietal name will be treated as the cultivar or "generic" name of the variety described. Thus, trademarks should not be identified in applications for patents or Certificates of Protection as the cultivar name or rights in the trademark may be lost.
CONCLUSIONIt is possible to separately obtain plant variety protection and enforceable trademark rights for commercial identification of plants. However, to maintain trademark rights, the mark must be used correctly and maximum trademark protection is obtained by governmental registration.




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