Poulsen Roser ApS

Trademark Trial and Appeal Board

May 25, 2005

No. 76399744 (T.T.A.B. May. 25, 2005)

Mailed: May 25, 2005
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Poulsen Roser ApS
________

Serial No. 76399744
_______

Louis K. Ebling of Greenebaum Doll & McDonald PLLC for
Poulsen Roser ApS.

Brendan McCauley, Trademark Examining Attorney, Law Office
114 (Margaret Le, Managing Attorney).
_______

Before Hairston, Walters and Holtzman, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Poulsen Roser ApS has filed an application to register
in typed drawing form SHENANDOAH for “live roses and live
clematis.”1
The trademark examining attorney has refused to
register the applied-for mark on the ground that it is a

1 Application Serial No. 76399744, filed April 24, 2002, alleging
with respect to live roses, a date of first use anywhere and date
of first use in commerce of February 7, 2002; and with respect to
live clematis, alleging a bona fide intent to use the mark in
commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76399744
2
varietal (or cultivare) name for applicant’s roses and
because varietal or cultivare names are generic
designations and cannot be registered as trademarks.
Sections 1, 2 and 45 of the Trademark Act. When the
refusal was made final, applicant appealed to this Board.
Applicant and the examining attorney have filed briefs, but
no oral hearing was requested.
It is well settled “that varietal names are generic
designations and cannot be registered as trademarks.” In
re Delta and Pine Land Co., 26 USPQ2d 1157, 1159 n. 4 (TTAB
1993) and cases cited therein. The sole issue before this
Board is whether SHENANDOAH is a varietal (generic) name
for a type of living rose.
In support of his refusal, the examining attorney has
made of record photocopies of the relevant pages from the
following: Modern Roses volumes 6, 9, and 10; Modern Roses
XI The World Encyclopedia of Roses (2000); and a printout
from a website entitled “Roses Help Me Find.” The four
reference works each have a listing for the term
“Shenandoah.” The most recent entry from Modern Roses XI
reads as follows:
‘SHENANDOAH’, LCl, dr, 1935; bud long, pointed;
flowers crimson, large, semi-dbl., exhibition
form, intense fragrance; foliage large, glossy;
vigorous, climbing (10 ft) growth; [Etoile de
Hollande X Schoener’s Nutkana]; Nicolas; C-P
Ser No. 76399744
3
While in different formats with slight variations, the
above entry contains virtually the same information as do
the entries contained in Modern Roses 6, 9 and 10.2 In
addition, the website “Roses Help Me Find” contains
essentially the same definition.
In view of this evidence, the examining attorney
maintains that SHENANDOAH is a varietal name for live
roses.3
Citing in re Merrill, Lynch, Pierce, Fenner & Smith,
Inc., 5 USPQ2d 1141, 1143 (Fed. Cir. 1987), applicant
argues that genericness must be proven by a substantial

2 With respect to listings in the Modern Roses works, we note
that data is arranged in the following manner:

Listing of main entries will generally be by ‘variety
denomination’ or code name (i.e., the cultivar name
appears in single quotes with the first three letters in
capitals indicating breeder and the remainder in small
caps) with the ARS exhibition name identified in bold
typeface carrying a trademark symbol if requested by
the registrant. (e.g. ‘ANTopp’).

The ARS approved exhibition name will appear in bold face
type. In a small number of cases the lack of a code name
will automatically default to the fancy name becoming both
the registered cultivar name (single quotes, small caps)
and the ARS exhibition name (bold), e.g. ‘ADRIENNE BERMAN’.

3 Also in support of the refusal, the examining attorney
submitted a copy of a Board decision which is not designated as
citable precedent. The Board disregards citation to any non-
precedential decision (unless it is asserted for res judicata,
law of the case, or other issues not involved herein). See TBMP
§101.03 and cases cited therein.
Ser No. 76399744
4
showing based on clear evidence which is not present in
this case. In particular, applicant argues that the
examining attorney’s evidence is inadequate to establish
that SHENANDOAH is a varietal name for roses.
With respect to the Modern Roses reference works, in
particular, applicant argues:
First, the [Modern Roses] text is published by
The American Rose Society, which comprises rose
enthusiasts, not professional rose breeders.
Second, a number of entries appear in the
publication as trade names or even as registered
trademarks, making it unclear as to whether a
particular entry identifies a varietal name or
other name: The preface to the publication
explicitly notes that “the absence of “TM” or “®”
symbols in this publication should not be
regarded as an indication that these words,
designations, or names are not trademarks.”
Logically, the fact that this publication
admittedly includes trademarks disqualifies it as
an authoritative source to “prove” that a given
term is a varietal name and not a trademark.
This publication is not relied upon in
horticultural taxonomy as an authoritative
source, and no evidence has been provided
establishing the authority of the publication as
such. Put simply, this publication is created by
rose enthusiasts for broader, informal reference
purposes. Thus, Applicant asserts that the
information contained in this reference is not by
itself reliable as proof positive of use of a
name as a varietal name. (emphasis in original)
(Response to Office action dated 2/24/03)

According to applicant, “[v]arietal names are
generally denominated through Latin binomial naming: the
first term in the binomial nomenclature is capitalized and
identifies the plant genus, and second non-capitalized term
Ser No. 76399744
5
identifies the species. In this instance, the varietal
name given to the hybrid species sold by Applicant under
its SHENANDOAH mark is POULege, hence, the term “POUL” in
the name refers to the genus of the variety, and “ege”
refers to the particular species.” (footnote omitted). In
addition, applicant maintains that the examining attorney
failed to locate information in the sources referenced in
the Trademark Manual of Examining Procedure with respect to
showing that a term is a varietal name, e.g., laboratories
and repositories of the United States Department of
Agriculture, plant patent information from the USPTO, and a
variety name search of plants certified under the Plant
Variety Act. Finally, applicant argues that its own
evidence refutes the examining attorney’s contention that
SHENANDOAH is a varietal name for roses. In this regard,
applicant submitted product labels for its roses; printouts
from the United States Plant Variety Protection Office
database which show an entry for “Shenandoah” tall fescue
grass; pages downloaded from applicant’s Internet homepage
which show that applicant offers several roses as part of
its “National Parks Rose Collection” including “Shenandoah™
Poulege (N)”; pages downloaded from the website
plantsdatabase.com which give detailed information on the
“Floribunda Rose Everglades (1999; aka Soren Kanne,
Ser No. 76399744
6
POULege)”; pages downloaded from the website of the
Canadian plant breeders’ rights office which reflects a
Canadian registration for the POULege hybrid strain; pages
downloaded from the website helmefindroses.com confirming
registration for the POULege varietal name by the applicant
in Canada; pages downloaded from the websites of two
nurseries which offer for sale applicant’s SHENANDOAH
roses; and copies of applicant’s promotional materials for
its “National Parks Rose Collection.” Finally, applicant
argues that the evidence in this case is not clear and that
any doubt must be resolved in its favor.
After careful consideration of the record and
arguments herein, we find that the evidence submitted by
the examining attorney establishes that SHENANDOAH is a
varietal name for roses.
The examining attorney has submitted pages from four
separate editions of Modern Roses and a website all of
which list SHENANDOAH as a varietal (generic) name for a
type of rose. With respect to applicant’s specific
criticism of the examining attorney’s reliance on the
Modern Roses works, we recognize that no reference work is
infallible. Moreover, it is not uncommon for reference
works (e.g., dictionaries) to contain disclaimers of the
nature of that set forth in the preface in the Modern Roses
Ser No. 76399744
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works. Nonetheless, applicant has offered no evidence
which suggests that the Modern Roses works are in error
when they list Shenandoah as a varietal (generic) name for
roses. If applicant believed that these works were in
error, he could have contacted the editors or publishers to
have letters of correction issued. We note that Modern
Roses XI is described as “The Most Comprehensive Listing of
Roses in the World.” Further, applicant has offered no
affidavits or declarations from buyers of roses— such as
individual rose growers, landscapers or nurserymen— to the
effect that they view SHENANDOAH as a trademark of
applicant, and not as a varietal (generic name).
Applicant’s failure to submit such evidence as to how
purchasers of roses in the United States perceive
SHENANDOAH is significant. See Delta Pine Land Co., 26
USPQ2d [“Such evidence (affidavits or declarations) showing
how the asserted mark is actually perceived … by the
relevant public would have been helpful to applicant’s
case.”]
In addition, we disagree with applicant’s contention
that the listing in Modern Roses is entitled to little
weight because this work is published by the The American
Rose Society, whose members are rose enthusiasts rather
than professional rose breeders. Genericness is determined
Ser No. 76399744
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from the standpoint of the relevant purchasers of the goods
and rose enthusiasts are obviously purchasers of roses.
The examining attorney has acknowledged that he was
unable to locate evidence with respect to SHENANDOAH in the
sources listed in the TMEP. However, we do not view this
as fatal to the examining attorney’s case. The sources
listed in the TMEP are mere examples of publications and
databases on which examining attorneys may rely. Examining
attorneys certainly are not prohibited from relying on
publications and databases not listed therein.
Further, the fact that SHENANDOAH is the varietal
name for a type of grass does not mean that it cannot
also be the varietal name of a type of rose.
Applicant has submitted no evidence which shows that a
varietal name may be used to identify only one type of
plant.
The use of SHENANDOAH by applicant and commercial
nurseries on labels and promotional materials is not
persuasive of a different result herein. Applicant’s
intent that SHENANDOAH function as a trademark is not
controlling. Similarly, any rights that applicant may have
in SHENANADOAH in Canada is not dispositive of whether it
is entitled to registration in the United States.
Ser No. 76399744
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Finally, although it appears that POULege is the
varietal name accorded by applicant to its roses, it
is not unusual for a product to have more than one
generic name. In this case, the evidence submitted by
the examining attorney establishes that the relevant
purchasers would perceive SHENANDOAH as the varietal
name of applicant’s roses.
Decision: The refusal to register is affirmed.