USPTO awkwardly forgets to follow the rules on trademarks for grass varieties... but naming conflict still resolves amicably

A story came to this Kat's attention at the end of last year, which highlights that developing a good trademark strategy sometimes requires good awareness of plant variety names. The story also shows that examiners mustn't forget about the requirement to consult the plant variety register for conflicting denominations when a trademark specification includes plants.

Naming and claiming in the world of turfgrass

A Kat that hasn't forgotten
the rules for naming grasses.
Photo by Lynn Elder via Pexels

In January 2024, the University of Georgia (UGA) announced that they were releasing a new variety of seashore paspalum - a plant that is most often used as a grass for golf courses. After 16 years of research and testing the variety, UGA decided to brand the new turfgrass as SeaBreeze™. 

UGA then sought to register trademarks for the name SEABREEZE in relation to "Turfgrass, namely, natural turf; turfgrass, namely, seashore paspalum; sod, sprigs, and grass plugs." This included both a word mark and a figurative mark.

Initially, the name appeared to be par for the course: UGA has a tradition of naming its salt tolerant paspalum varieties with the "Sea" prefix, and the SeaBreeze™ brand was meant to evoke images of waterfront golf courses and lawns. But the branding decision turned out to be a swing and a miss. 

The examiner found no conflicting trademarks, so the word mark application was allowed. However, the USPTO had failed to properly check the register of plant varieties. A company called Pure Seed had obtained US Plant Variety Protection (PVP) certificates for a fescue grass variety called 'Seabreeze' in 2000, followed by its glyphosate-tolerant successor variety called 'Seabreeze GT' in 2007. These earlier variety denominations mean that the SEABREEZE trademarks shouldn't be registered.

UGA learned of the conflict and immediately sought to rectify the issue. Luckily, UGA has a longstanding relationship with Pure Seed, so the matter was resolved amicably by December 2024. UGA have since abandoned their trademark application for the figurative mark (and presumably the word mark won't be far behind), and filed a new word mark application in October with a slightly different name for the variety: SeaScape™. It was unfortunate (and probably a bit costly) to rebrand after a year of marketing the new variety, but a necessary step to ensure that UGA could obtain a valid trademark registration.

What went wrong?

This Kat has previously discussed that, by law, the variety denomination is the generic name for a plant variety. As explained in the US case of Dixie Rose Nursery v. Coe (1942), the denomination "describe[s] to the public a [plant] of a particular sort, not a [plant] from a particular [source]." 

A more recent case, In re Pennington Seed Co. (2006), found that the word REBEL couldn't be registered as a trademark for grass seed because it was the denomination for a variety of tall fescue grass named 'Rebel', for which PVP was obtained in 1981. The US and many other countries are party to a treaty that requires that denominations remain freely available for use after a patent or plant variety protection has expired. This rule is meant to ensure that a consistent name is used in connection with each plant variety and that others can accurately identify the plants that they buy or sell. This means that the denomination cannot function as a trademark.

The new trademark for the
swiftly rebranded SeaScape™ turfgrass

Given the precedent in In re Pennington Seed, the USPTO's Trademark Manual of Examining Procedure instructs examiners in § 1202.12 that if an application relates to live plants, agricultural seeds, fresh fruits, or fresh vegetables, they must request a varietal search, and must confirm whether a name has been used in connection with a plant patent, a utility patent, or a certificate for plant variety protection. If the mark is already in use as a denomination, the examiner must refuse registration or require a disclaimer.

Unfortunately for UGA, both they and the USPTO neglected to undertake a proper search of the plant variety protection register before moving ahead with the trademark application. It can be easy to overlook plant IP rights, especially since the trademark register and the PVP register don't cross-pollinate. But these distinct areas of IP have important legal implications for each other, so a quick search before teeing off an expensive branding campaign can prevent a lot of grief in the future.

Concluding Thoughts

Trademarks are increasingly playing a role in the world of plant varieties, and some breeders are being quite experimental with their trademark strategy. For example, Washington State University obtained a plant patent for their new apple variety with the denomination 'WA 64', which is a cross between 'Honeycrisp' and 'Cripps Pink' (the latter is better known as Pink Lady™). Rather than devise a trademark themselves, WSU held a public naming contest. They received more than 15,000 entries with suggested names for the apple, and after consultation with public focus groups, the university staff and faculty selected the brand name Sunflare™. The winning entrant received a box of Sunflare™ apples following the trade name announcement in December 2024, but readers will have to wait until 2029 for the variety to reach grocery stores. 

With these evolving and dynamic approaches to the naming of plants that make greater use of trademarks, it's even more important for trademark examiners and lawyers to pay attention to earlier variety denominations. The generic function of variety denominations is essential for the accurate identification of plants and the regulation of our food and agricultural systems. Trademarks mustn't interfere with that essential function.