Pennington Seed, Inc.

Trademark Trial and Appeal Board

Apr 16, 2008

No. 76527641 (T.T.A.B. Apr. 16, 2008)

Mailed: April 16, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pennington Seed, Inc.
________

Serial Nos. 76527641 and 765276421
_______

Sarah Anne Keefe of Womble Carlyle Sandridge & Rice, PLLC
for Pennington Seed, Inc.

Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Bucher, Drost and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the marks shown below each for “grass seed” in
International Class 31.

1 Inasmuch as the issues raised by the two above-noted
applications are similar, the Board is addressing them in a
single opinion. Citations to the briefs refer to the briefs
filed in application Serial No. 76527641, unless otherwise noted;
however, we have, of course, considered all arguments and
evidence filed in each case.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. Nos. 76527641 and 76527642
2
2

3
Applicant seeks registration pursuant to Section 2(f)
alleging that its marks have become distinctive of
applicant’s goods by reason of substantially exclusive and
continuous use in commerce. In each application, the
examining attorney required that applicant disclaim the
word REBELS on the ground that it is a varietal name and,
as such, generic. Trademark Act Sections 1, 2 and 45. 15
U.S.C. §§1051, 1052 and 1127. Pursuant to Trademark Act
Section 6, the Trademark Examining Attorney has issued a
final refusal of registration in each application pending

2 Application Serial No. 76527641, filed under Section 1(a) of
the Trademark Act, claiming a date of first use and first use in
commerce on August 1, 1998, 15 U.S.C. §1051(a). The mark is
lined for the color red, but color is not claimed as a feature of
the mark. In addition, the application lists Reg. No. 2684935 as
a prior registration for the same mark on the Supplemental
Register which includes a disclaimer for the word “REBELS.”

3 Application Serial No. 76527642, filed under Section 1(a) of
the Trademark Act, claiming a date of first use and first use in
commerce on August 1, 1992. The mark is lined for the color red.
In addition, the application lists Reg. No. 2684934 as a prior
registration for the same mark on the Supplemental Register which
includes a disclaimer for the word “REBELS.”
Ser. Nos. 76527641 and 76527642
3
applicant’s submission of a disclaimer for the term
“REBELS.” 15 U.S.C. §1056.
Applicant has appealed and briefs have been filed. We
affirm the refusal in each application.
An examining attorney may require an applicant to
disclaim an unregistrable component of a mark otherwise
registrable. Trademark Act Section 6. Varietal names are
generic terms which are unregistrable, and therefore are
subject to disclaimer if the mark is otherwise registrable.
In re Pennington Seed, Inc., 466 F.3d 1053, 80 USPQ2d 1758
(Fed. Cir. 2006). Failure to comply with a disclaimer
requirement is grounds for refusal of registration. See In
re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185
USPQ 46 (CCPA 1975); In re National Presto Industries,
Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool
Industries, Inc., 157 USPQ 114 (TTAB 1968).
We begin our analysis by noting that, during the
prosecution and appeal of both of these applications,
applicant had other co-pending applications for various
REBEL marks which were also on appeal before the Board.
The appeals herein were suspended pending determination of
the appeal in application Serial No. 76289621 for the mark
REBEL which had been refused registration on the basis that
Ser. Nos. 76527641 and 76527642
4
it is a generic varietal name. The Board’s affirmance in
that case was upheld by the Court of Appeals for the
Federal Circuit (Federal Circuit) on October 19, 2006. In
re Pennington Seed, supra.
In addition, on October 6, 2005, the Board upheld the
refusal in application Serial No. 76317811, another of
applicant’s co-pending applications, for the mark THE
REBELS (in standard character form) on the ground that it
is generic. After noting that the term REBEL is a generic
varietal name, the Board stated that THE REBELS “is simply
the plural form of the varietal or generic name of grass
seed and, as such, remains generic in connection with the
identified goods, grass seed. Moreover, the definite
article ‘the’ in the proposed mark is devoid of any
trademark significance.” In re KRB Seed, LLC, Serial No.
76317811, slip op. at 8 (TTAB October 6, 2005) (this case
is not citable precedent, we merely note it as part of the
general prosecution history of applicant’s various co-
pending applications).
After the Federal Circuit issued its opinion in
Pennington Seed, applicant requested that these
applications be remanded for consideration of its request
for entry of a disclaimer for the word “REBEL.” The Board
remanded the applications and the examining attorney issued
Ser. Nos. 76527641 and 76527642
5
an action denying applicant’s request and including the
following passage:
Applicant seeks to register THE REBELS.
Applicant is attempting to submit a disclaimer of
REBEL [singular form]. This disclaimer is not
acceptable. Pluralizing a term has never altered
its trademark significance or lack thereof.... In
this application, applicant is using the mark on
grass seed consisting of a mixture of various
Rebel varietals. REBELS is simply a reference to
the fact that the seed contains more than one
REBEL varietal. REBEL is generic for grass seed.
REBELS is generic for grass seed mixtures
comprised of several REBEL varietals. The
article ‘THE’ has no source-indicating
significance and does nothing to detract from the
descriptive or generic meaning of the mark as a
whole.

In its reply brief applicant argues:
Applicant does not dispute that the term REBEL is
a varietal name, and therefore, does not dispute
the requirement for a disclaimer of the term
REBEL. Applicant respectfully asserts, however,
that disclaimer of REBELS (the plural form) on
grounds that the component REBEL (the singular
form) is a varietal name is not appropriate.

Reply Br. p. 2.
The plural form of a generic term is also generic and
likewise unregistrable. Therefore, it is appropriate for
the examining attorney to require a disclaimer for the
unregistrable matter in these applications, namely, the
word REBELS. As the examining attorney stated, REBELS
simply refers to the fact that the seeds contain more than
one REBEL varietal.
Ser. Nos. 76527641 and 76527642
6
Accordingly, inasmuch as REBELS is simply the plural
form of a varietal name, we find that it is generic and
unregistrable; applicant’s arguments and evidence of
acquired distinctiveness cannot overcome such a finding.4
See In re Pennington Seed, supra; In re Farmer Seed &
Nursery Company, 137 USPQ 231 (TTAB 1963). We further note
that the stylization of the marks does not make them
registrable without the disclaimer of the unregistrable
matter. See In re Creative Goldsmiths of Washington, Inc.,
229 USPQ 766, 768 (TTAB 1986) (“[I]t is within the
discretion of an Examining Attorney to require the
disclaimer of an unregistrable component (such as a common
descriptive, or generic, name) of a composite mark sought
to be registered on the Principal Register under the
provisions of Section 2(f).”). In addition, the article
“THE” has no source-indicating significance and does not
serve to obviate the generic meaning of the term “REBELS.”
Decision: The refusals to register based on
applicant’s failure to disclaim the word REBELS are
affirmed. However, if applicant submits the required

4 We further note that the evidence of record in this case
supports a finding that REBEL and its plural REBELS are generic
varietal names. See, e.g., excerpts from International
Convention for the Protection of New Varieties of Plants (UPOV)
database listing REBEL, REBEL SENTRY, REBEL III, REBEL 3D, REBEL
JR., and REBEL II as the denomination for a tall fescue variety
of grass.
Ser. Nos. 76527641 and 76527642
7
disclaimer of REBELS to the Board within thirty days for
each application, this decision will be set aside as to the
affirmance of the disclaimer requirements.5 See Trademark
Rule 2.142(g), 37 C.F.R. §2.142.

5 The standardized printing format for the required disclaimer
text is as follows: “No claim is made to the exclusive right to
use REBELS, apart from the mark as shown.” TMEP §1213.08(a) (5th
ed. 2007).