KRB Seed Company, LLC

Trademark Trial and Appeal Board

Oct 6, 2005

No. 76317811 (T.T.A.B. Oct. 6, 2005)

Mailed:
October 6, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re KRB Seed Company, LLC1
________

Serial No. 76317811
_______

Howard A. MacCord, Jr. of MacCord Mason PLLC for KRB Seed
Company, LLC.

Samuel E. Sharper, Jr., Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).2
_______

Before Bucher, Drost and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

KRB Seed Company, LLC has filed an application to
register the mark THE REBELS in standard character form for
“grass seed.”3

1 United States Patent and Trademark Office (USPTO) assignment
records reflect that the current owner of the application is
Pennington Seed, Inc., at Reel/Frame No. 3113/0239. According to
the records, the assignment was executed on December 9, 2004.

2 During the course of prosecution, this application was
reassigned to the above-noted examining attorney.

3 Application Serial No. 76317811, filed September 28, 2001,
alleging a date of first use anywhere and date of first use in
commerce of August 1, 1992.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76317811
2
The examining attorney has refused to register the
applied-for mark on the ground that it is a varietal (or
cultivar) name for applicant’s grass seeds and because
varietal or cultivar names are generic designations and
cannot be registered as trademarks. Sections 1, 2 and 45
of the Trademark Act. 15 U.S.C. §§ 1051, 1052, and 1127.4
When the refusal was made final, applicant appealed to this
Board. Applicant and the examining attorney have filed
briefs, and applicant waived the scheduled oral hearing.
Examining Attorney’s Arguments and Evidence
In maintaining his refusal, the examining attorney
argues that “varietal (or cultivar) names are generic
designations and cannot be registered as trademarks” (brief
p. 3) and that the terms “varietal and cultivar are used to
mean the same thing” (brief p. 4). Further, the examining
attorney argues and, the record shows, that “the term
‘REBEL’ is a varietal or cultivar name for grass and grass
seed” (brief p. 4) and applicant’s mark THE REBELS is
merely the plural form of the varietal name (brief p. 8).
Specifically, the examining attorney argues that
applicant’s addition of “a non-registrable term (THE)” and

4 The first office action also included a reference to a prior
pending application which has been abandoned as acknowledged by
the examining attorney in the second office action.
Ser No. 76317811
3
the pluralization “has not changed the commercial
impression nor meaning of the mark, i.e., REBEL, a varietal
name.” Final Office Action pp. 1-2. Finally, the
examining attorney argues that applicant’s evidence of
secondary meaning “does not overcome a varietal refusal.”
Brief p. 7. However, the examining attorney states in the
alternative that if the proposed mark “is determined not to
be generic and does function as a mark, the mark should be
considered inherently distinctive, because it’s not
descriptive as a matter of normal semantics.” Brief p. 8.
The examining attorney also noted and acknowledged the
claim of acquired distinctiveness. Brief p. 8.
In support of his refusal, the examining attorney has
made of record photocopies of the relevant pages from the
following: (1) excerpts of articles from a variety of
sources retrieved from the DIALOG database wherein REBEL
and REBEL II are used in connection with grass seed; (2) an
excerpt from the Germplasm Resources Information Network
web server which is maintained by a unit of the United
States Department of Agriculture’s Agricultural Research
Service wherein REBEL is listed as a cultivar name for tall
fescue; (3) excerpts from the database maintained by the
International Union for the Protection of New Varieties of
Plants (UPOV) listing REBEL, REBEL II, REBEL III, REBEL 3D,
Ser No. 76317811
4
REBEL Jr. and REBEL SENTRY, as the “denominations” of a
tall fescue variety; (4) an excerpt from a listing on plant
varieties kept by the Seed Regulatory and Testing Branch of
the United States Department of Agriculture listing REBEL
as a varietal name; and (5) excerpts of articles from a
variety of sources retrieved from the Google search engine
showing use of the terms REBEL, REBEL II and REBEL SENTRY
in connection with grass seed.
In view of this evidence, the examining attorney
maintains that THE REBELS is a varietal name for grass seed
and, thus, generic and unregistrable.
Applicant’s Arguments and Evidence
Applicant states in its brief that REBEL is “a
varietal name.” Brief p. 1. Applicant argues, however,
that the USPTO’s treatment of varietal names as generic and
unregistrable is “inconsistent with modern intellectual
property law” (brief p. 2) and that “by ruling that all
plant varieties are generic” the USPTO has not correctly
applied the case of Dixie Rose Nursery v. Coe, 131 F.2d
446, 55 USPQ 315 (D.C. Cir. 1942), cert. denied 318 U.S.
782, 57 USPQ 568 (1943). In addition, applicant argues
that THE REBELS “is not a plant variety” and there is no
“rule that marks similar to a plant variety are also per se
generic.” Brief p. 11. Specifically, applicant argues
Ser No. 76317811
5
that In re Delta and Pine Land Co., 26 USPQ2d 1157 (TTAB
1993) “stands for the proposition that evidence of source
indication can overcome a refusal to register a mark
because the mark is similar to a plant varietal name.”
Brief p. 12. Applicant argues that it has submitted
sufficient evidence to establish that THE REBELS “is
perceived by the public as a source indicator.”
In support of its position, applicant submitted: (1)
declarations by Gerald Chrisco and Kenneth R. Budd,
applicant’s members/managers; a listing of third-party
applications and registrations from the Trademark
Electronic Search System (TESS) for the mark REBEL5; and (3)
a sample of a magazine advertisement with the term THE
REBELS.

5 Although this mere listing of registrations and applications is
not sufficient to make the registrations and applications of
record, In re Duofold Inc., 184 USPQ 638 (TTAB 1974), the
examining attorney did not object to applicant's submissions as
being improper at the time they were submitted, and at a point
that applicant could have cured the evidentiary problem.
Accordingly, this evidence has been treated as if properly of
record and considered for whatever probative value it may have.
That said, the probative value of this evidence is very limited.
Applications are not probative of anything except that they were
filed in the Office. In addition, because the lists do not
provide any information about the goods or services for which the
marks are registered, their probative value is very limited. We
further note that applicant has submitted this listing in support
of its argument based on its interpretation of the Dixie Rose
case, which the Board has rejected, see infra.
Ser No. 76317811
6
Analysis and Decision
Applicant admits that REBEL is a varietal name for a
type of grass seed that is the subject of a plant variety
protection certificate. In any event, the evidence
submitted by the examining attorney establishes that REBEL,
REBEL II, REBEL III, REBEL 3D, REBEL Jr., and REBEL SENTRY
are varietal names for grass seed. (See Excerpts from
UPOV-ROM database made of record by the examining
attorney.) Therefore, the two issues before this Board are
(1) whether the USPTO’s application of prior case law and
resulting policy treating varietal names as generic terms
is valid and, if so, (2) whether THE REBELS, the plural
form of a varietal name, is likewise unregistrable.
In In re KRB Seed Company LLC, Ser. No. 76289621,
___USPQ2d___ (TTAB, September 19, 2005), the Board
reiterated the correctness of prior case law and the
USPTO’s application of the case law that “varietal names
are generic designations and cannot be registered as
trademarks.” Delta and Pine, 26 USPQ2d at 1158 n. 4.
Therefore, what remains for determination is whether the
plural form, THE REBELS, of applicant’s varietal name,
REBEL, can be registered.
As noted above, applicant argues that Delta and Pine,
“stands for the proposition that evidence of source
Ser No. 76317811
7
indication can overcome a refusal to register a mark
because the mark is similar to a plant varietal name.”
Brief p. 12. Applicant asserts that it “has submitted the
evidence requested in Delta and Pine” and because “THE
REBELS is perceived by the public as a source indicator, it
should not be rejected as generic under the no-varietal-
names-as-trademarks rule.” Brief p. 13. In response, the
examining attorney argues that THE REBELS “does not
function as a source indication because it is the plural
form of a varietal designation.” Brief p. 3.
In Delta and Pine, the examining attorney brought the
refusal under Section 2(e)(1) of the Trademark Act and
refused registration because the proposed mark was merely
descriptive of, at least, some of applicant’s goods. The
examining attorney argued, and the Board agreed, that
because the proposed mark DELTAPINE consisted of the
prominent part of several varietal names (DELTAPINE 20,
DELTAPINE 50, etc.) purchasers would view the proposed mark
as indicating that applicant’s goods include various
DELTAPINE seed varieties and, thus, the proposed mark is
merely descriptive of the goods. The Board went on to note
that the case was decided on a “rather scant record” and
suggested that evidence of consumer perception “showing how
the asserted mark is actually perceived and that it is
Ser No. 76317811
8
distinguished from the varietal names by the relevant
public would have been helpful to applicant’s case.” Delta
and Pine, at 1159.
By contrast, the examining attorney in the case before
us has refused registration under Sections 1, 2 and 45 of
the Trademark Act on the grounds that THE REBELS fails to
function as a mark and is generic. In addition,
applicant’s mark in this case is not a component of a
varietal name, it 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 G.D. Searle
& Co., 360 F.2d 650, 149 USPQ 619 (CCPA 1966); GMT
Productions, L.P. v. Cablevision of New York, 816 F.Supp.
207, 211 (S.D.N.Y. 1993) (use of the word “the” before an
unprotectable mark does not convert an otherwise generic
term into a descriptive one); In re The Computer Store,
Inc., 211 USPQ 72 (TTAB 1981). Therefore, the discussion
in Delta and Pine that alludes to a possibility of the
acquisition of secondary meaning is not applicable to the
case before us. However, even if it were applicable, the
evidence of record does not support a finding that
purchasers would distinguish THE REBELS from applicant’s
Ser No. 76317811
9
series of varietal names REBEL, REBEL II, REBEL III, REBEL
3D, REBEL Jr. and REBEL SENTRY. To the contrary, THE
REBELS is directly linked to the varietal names as
illustrated by applicant’s specimen of use wherein the
following statement appears underneath THE REBELS: A blend
containing a variety from the Rebel family of (turf-type)
tall fescues. In addition, the magazine advertisement
submitted by applicant compares THE REBELS to another
varietal, KENTUCKY 31, and displays a picture of the
packaging of grass seed with the varietal name REBEL III on
one package and THE REBELS on another package.
Accordingly, inasmuch as we reiterate the correctness
of the case law that varietal names are generic
designations and inasmuch as applicant’s proposed mark is
simply the plural form of a varietal name, we find that it
is generic and unregistrable; and applicant’s arguments and
evidence of acquired distinctiveness cannot overcome such a
finding. See In re Farmer Seed & Nursery Company, 137 USPQ
231.
Decision: The refusal to register is affirmed.