Walters Gardens, Inc.v.Pride of Place Plants

Trademark Trial and Appeal Board

Mar 4, 2008

No. 91153755 (T.T.A.B. Mar. 4, 2008)

Hearing: Mailed:
02 February 2006 4 March 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Walters Gardens, Inc.
v.
Pride of Place Plants, Inc.
_____

Opposition No. 91153755
to application Serial No. 76201447
_____

Barry C. Kane of Kane & Co., PLC for Walters Gardens, Inc.

Brian K. Brookey of Christie, Parker & Hale, LLP for Pride
of Place Plants, Inc.
______

Before Drost, Kuhlke, and Walsh, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On January 29, 2001, Pride of Place Plants, Inc.,
(applicant) applied to register on the Principal Register
the mark PIILU in typed or standard character form for “live
plants” in Class 31. The application (Serial No. 76201447)
is based on applicant’s allegation of a bona fide intent to
use the mark in commerce.
After the mark was published for opposition on June 18,
2002, opposer, Walters Gardens, Inc., filed its opposition
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91153755
2
to registration of applicant’s mark on the ground (pp. 1-2.
without paragraph numbers) that:
Long prior to any date of first use upon which
Applicant can rely, others around the world, including
those in the industry in the United States, have been
using the term PIILU to refer to a specific cultivar of
Clematis live plants.

Long prior to any date of first use upon which
Applicant can rely, the term “PIILU” has been used
generically to refer to a cultivar of Clematis marketed
throughout this country by other nurseries...

Applicant’s registration should be denied on grounds
the term “PIILU” has become a generic term referencing
a specific cultivar of Clematis live plant offered for
sale in this country and the world long prior to
Applicant’s filing of the application, and the use of
that term by the industry has not been abandoned.

Applicant denied the salient allegations of opposer’s
notice of opposition. An oral hearing was held on February
2, 2006. After the hearing, the case was suspended pending
the appeal of the board’s decision in In re KRB Seed Co., 76
USPQ2d 1156 (TTAB 2005). When the Federal Circuit affirmed
that decision in In re Pennington Seeds Inc., 466 F.3d 1053,
80 USPQ2d 1758 (Fed. Cir. 2006), proceedings were resumed.1
The Record
The record consists of the pleadings; the file of the
involved application; the testimonial deposition of John
Dale Walters, opposer’s CEO, with exhibits; the testimonial

1 Opposer’s motion for a directed verdict is denied. The board
does not consider motions for directed verdicts. TBMP §§ 502.01
and 534.04 (2d ed. rev. 2004). We will proceed to final
judgment.

Opposition No. 91153755
3
deposition of Clarence Henry Falstad III, opposer’s
laboratory director, with exhibits; the testimonial
deposition of Chad Michael Walters, opposer’s inventory
manager; the testimonial deposition of Maurice Horn, an
owner of Joy Creek Nursery, with exhibits; the testimonial
deposition of Christopher Michael Hansen, Director of
Horticulture for Wayside Gardens Division of Geo. W. Park
Seed Company, Inc., with exhibits; the testimony of Brewster
Rogerson, a retired Kansas State University professor and
collector of Clematis plants, with exhibit2; the testimonial
deposition, with exhibits, of Rick Sorenson, applicant’s
president; and petitioner’s notices of reliance on various
publications.
Standing
As a potential competitor who would use the term PIILU
generically, opposer has established its standing to oppose
applicant’s mark. See, e.g., Lipton Industries, Inc. v.
Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982) (One basis for standing includes “descriptive
use of term in registered mark”); Ferro Corporation v. SCM
Corporation, 219 USPQ 346, 352 (TTAB 1983) (Opposer “has a
real interest sufficient to give it standing. The rationale
is that a competitor should be free from harassment based on

2 Mr. Rogerson referred to people like himself (p. 17) as
“essentially laymen with a lot of knowledge from practical
affairs.”
Opposition No. 91153755
4
the presumed exclusive right which registration of a generic
term would erroneously accord”) (citation omitted).
Issue
Is the term PIILU a varietal or cultivar name for a
specific plant in the genus Clematis and therefore a term
that cannot function as a trademark for applicant’s “living
plants”?
Evidentiary Questions
Prior to proceeding to the merits of this case, we must
address two evidentiary questions. First, applicant has
objected to several depositions (Brief at 7-8) that opposer
has introduced:
Much of that evidence is inadmissible. For instance,
WGI [opposer] cites to the deposition transcripts of
Brewster Rogerson, Maurice Horn and Christopher Hansen.
WGI never conducted discovery depositions or written
discovery for any of these individuals. WGI also
failed to identify these individuals during the
discovery period in response to PoPP’s [applicant]
discovery requests, which included PoPP’s Interrogatory
No. 3, requesting identification of “person(s) most
knowledgeable about alleged third party use of the term
PIILU for live plants,” and Interrogatory No. 16,
requesting identification of witnesses from whom WGI
intended to present testimony.

Instead, WGI waited until its testimony period to
identify these three witnesses for the first time, by
serving supplemental interrogatory responses on August
3, 2004, identifying all three individuals in response
to PoPP’s Interrogatories Nos. 3 and 16.

Based on the limited information of record in this
case, we cannot hold that that applicant has demonstrated
Opposition No. 91153755
5
that opposer improperly withheld the identification of these
three witnesses in response to its discovery request.
Furthermore, “a party in a Board proceeding generally
has no obligation to identify all of its trial evidence
prior to trial.” Carefirst of Maryland Inc. v. FirstHealth
of the Carolinas Inc., 77 USPQ2d 1492, 1500 (TTAB 2005),
aff’d, 479 F.3d 825, 81 USPQ2d 1919 (Fed. Cir. 2007).3 See
also Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650,
1656 (TTAB 2002) (“It is settled that a party in a Board
proceeding generally has no obligation to identify its fact
witnesses or other trial evidence prior to trial”) and
Charrette Corp. v. Bowater Communication Papers Inc., 13
USPQ2d 2040, 2041 (TTAB 1989) (“If registrant wished to
depose during discovery a witness having knowledge of
petitioner's sales and advertising… a request for the person
or persons most knowledgeable on that subject would have
been a proper inquiry and would have elicited the
information it was seeking. Inasmuch as petitioner had no
duty to provide the names of its witnesses, registrant
cannot complain that the negative answer was not later
amended”). Applicant’s citation to Thibeault v. Square D
Co., 960 F.2d 239 (1st Cir. 1992), a case dealing with
expert witnesses, is not on point.

3 This opposition and the cited cases preceded the USPTO’s new
rules involving mandatory disclosure of witnesses and other
information. See, e.g., 37 CFR § 2.121 (November 1, 2007).
Opposition No. 91153755
6
We add that much of the witnesses’ testimony cannot in
any way be considered to relate to “third party use” of the
term. To the extent that these depositions are directed to
the parties’ use or to use in reference works, applicant’s
interrogatory was not relevant. Therefore, we will consider
the Rogerson, Horn, and Hansen depositions.
We also note that applicant attached several entries
from online Estonian-English dictionaries to its brief. We
will not consider this evidence because evidence submitted
for the first time with an appeal brief is untimely and we
do not take judicial notice of online dictionaries when it
is not clear if these dictionaries are the online
equivalents of a printed work. In re Total Quality Group,
Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). Furthermore, as we
will discuss subsequently, it is too late for applicant to
raise an issue concerning the correct translation of its
mark.
Background
On January 21, 2001, applicant applied to register the
mark PIILU in typed or standard character form for “live
plants” in Class 31. The application is based on
applicant’s allegation of its intention to use the mark in
commerce.
In his first Office action, the examining attorney
required that: “applicant must indicate whether PIILU has
Opposition No. 91153755
7
any significance in the relevant trade, any geographical
significance or any meaning in a foreign language.”
In its response, applicant submitted that: “the term
‘PIILU’ is an Estonian word meaning ‘little duckling.’”
On June 18, 2002, applicant’s mark was published for
opposition and opposer timely filed an opposition to the
registration of applicant’s mark.
We take judicial notice of the following definitions
from The Random House Dictionary of the English Language
(unabridged) (2d ed. 1987). See University of Notre Dame du
Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596
(TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Clematis – any of numerous plants or woody vines of the
genus Clematis, including many species cultivated for
their showy, variously colored flowers.

Genus – Biol. the usual major subdivision of a family
or subfamily in the classification of organisms,
usually consisting of more than one species.

Species – Biol. The major subdivision of a genus or
subgenus, regarded as the basic category of biological
classification, composed of related individuals that
resemble one another, are able to breed among
themselves, but are unable to breed with members of
another species.

Cultivar – a variety of plant that originated and
persisted under cultivation.

Varietal – of, pertaining to, designating, or
characteristic of a variety.

Variety – a category within a species, based on some
hereditary differences.

Opposition No. 91153755
8
The TMEP 1202.12 (5th ed. rev. September 2007) provides
the following guidance on the examination of varietal and
cultivar names:
Varietal or cultivar names are designations given to
cultivated varieties or subspecies of live plants or
agricultural seeds. They amount to the generic name of
the plant or seed by which such variety is known to the
public. These names can consist of a numeric or
alphanumeric code or can be a “fancy” (arbitrary) name.
The terms “varietal” and “cultivar” may have slight
semantic differences but pose indistinguishable issues
and are treated identically for trademark purposes.

Subspecies are types of a particular species of plant
or seed that are members of a particular genus. For
example, all maple trees are in the genus Acer. The
sugar maple species is known as Acer saccharum, while
the red maple species is called Acer rubrum. In turn,
these species have been subdivided into various
cultivated varieties that are developed commercially
and given varietal or cultivar names that are known to
the public.

Discussion
The issue in this case concerns whether the name PIILU
is the varietal or cultivar name of applicant’s living
plants. While applicant has filed its application under the
intent-to-use provision of the Trademark Act, applicant does
in fact use the term on a specific type of plant.
Q. Do you use the term Piilu on other cultivars of
Clematis?

A. No.

Q. If you do not use with other cultivars of Clematis,
how many cultivars of Clematis is the name Piilu
associated with?

A. One.

Sorenson dep. at 135-36.
Opposition No. 91153755
9

The specific plant discussed in this case is a Clematis
plant that originated with the Kivistik family in Estonia.
Sorenson dep. at 2. Applicant began “selling and
distributing” that plant in “the early spring of either 1999
or 2000.” Sorenson dep. at 2-3.
The dispute in this case concerns whether PIILU is a
trademark for plants or the name of a cultivar. Case law
has long held that varietal or cultivar names are not
registrable because they are the generic name of the plants.
Dixie Rose Nursery v. Coe, 131 F.2d 446, 55 USPQ 315, 316
(D.C. Cir. 1942) (“The Patent Office and the District Court
might properly conclude that the words ‘Texas Centennial,’
though originally arbitrary, have come to describe to the
public a rose of a particular sort, not a rose from a
particular nursery”), cert. denied, 318 U.S. 782 (1943); In
re Delta and Pine Land Co., 26 USPQ2d 1157, 1158 (TTAB 1993)
(DELTAPINE “is the prominent part of various varietal names
for plants or seeds, some of which are sold under the
asserted mark”); In re Hilltop Orchards & Nurseries, Inc.,
206 USPQ 1034 1036 (TTAB 1979) (The “term ‘COMMANDER YORK’
as shown on the specimens and in applicant's catalogue is
being used as the common descriptive name for a particular
variety of applicant's apple trees”); In re Farmer Seed &
Nursery Co., 137 USPQ 231, 232 (TTAB 1963) (CHIEF BEMIDJI
held to be a varietal name of strawberry plants). In In re
Opposition No. 91153755
10
Cohn Bodger & Sons Co., 122 USPQ 345, 346 (TTAB 1959), the
board held:
The catalog shows clearly that “BODGER” is the
trademark, and “BLUE LUSTRE” is the varietal name
designating a hybrid petunia of a specific variety and
color rather than a brand-name identifying seeds sold
only by applicant and distinguishing them from seeds
sold by others. The varietal name is available to all
who grow the variety and sell the seeds therefrom to
describe the particular hybrid petunia. The term “BLUE
LUSTRE” is not a trademark.

However, if the term is used as a designation of source
and there is a different varietal designation, the term may
be registrable. In re Cole Nursery Co., Inc., 178 USPQ 424,
424-25 (TTAB 1973) (“A page from applicant's Spring 1972
Trade List shows that ‘TALLHEDGE’ is used as an
identification of source and, ‘Rhamnus frangula
‘Columnaris'’ as a varietal designation”) and In re Stark
Bro's Nurseries & Orchards Co., 132 USPQ 652, 653 (TTAB
1962):
[T]he varietal names for the apple, pear and strawberry
trees and plants on or in connection with which
applicant uses the designation “STARKRIMSON” are
“Bisbee Apple”, “Kalle Pear”, and “Christ Strawberry”,
respectively; and in addition to these varietal names,
applicant, in its catalogues, always uses the term
“STARKRIMSON” to identify these particular products.
It is, moreover, incongruous, to say the least, to
suppose that a single designation, such as
“STARKRIMSON”, would or could be used and be considered
in the trade or by the purchasing public as a varietal
name for three distinctively different types of plants
and/or trees.

The Federal Circuit has recently explained in the
Pennington Seed case, 80 USPQ2d at 1761 and 1763, that:
Opposition No. 91153755
11
We agree with the Director that the Board correctly
decided that the varietal name “Rebel” is generic and
hence is not entitled to trademark registration.
Instructive to our holding is the decision in Dixie
Rose. Although that decision of the District of
Columbia Circuit is not binding on our court, we find
its reasoning persuasive.

In addition, section 1202.12 of the TMEP provides that
“varietal or cultivar names are designations given to
cultivated varieties or subspecies of live plants or
agricultural seeds. They amount to the generic name of
the plant or seed by which such variety is known to
the public.” While the TMEP is not established law,
but only provides instructions to examiners, it does
represent the PTO's established policy on varietal
names that is entitled to our respect. We see no
reason to differ with it.

The Federal Circuit also explained that an entity that
is the source of a varietal that wishes to use a particular
term as a trademark for its specific varietal is not
prohibited from doing so, however, it must be clear that
there is a generic name for the varietal. 80 USPQ2d at
1762.
We do not of course hold that an applicant is precluded
from acquiring trademark protection for a particular
variety of grass seed. If an applicant wishes to
establish trademark protection for its variety of grass
seed, it can do so by associating a particular brand
name with its grass seed. However, having designated
the term “Rebel” as the varietal name for grass seed
and having failed to associate any additional word with
the Rebel grass seed that would indicate the seed's
source, Applicant here is prohibited from acquiring
trademark protection for the generic and only name of
that variety of grass seed. This situation may be
contrasted with pharmaceutical products where a generic
name is designated for a new pharmaceutical product and
its manufacturer associates it with a brand name. For
example, ibuprofen is the generic term designated for a
particular nonsteroidal anti-inflammatory drug and
ADVIL is a brand name indicating a source of the drug.
Opposition No. 91153755
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Trademark protection does not inure to the generic name
there and it does not do so here.

We now look at the evidence in this case to see whether
applicant’s term PIILU is also the name of the goods. We
start by noting that applicant’s witness asserts that “[w]e
always intended to use it as a trademark” and the witness
answered in the affirmative when asked if applicant had
actually used the term as a trademark. Sorenson dep. at 3.
Applicant has introduced several examples in which its
literature shows use of the term PIILU with a TM. See
Sorenson Exhibits 1 (“Available for spring delivery 1999 …
Clematis ‘Pillu’™ from Holland 1½ year old #1”); 3 (CLEMATIS
‘Piilu’™ ); and 4, 6 and 7 (Clematis “Piilu”™). Applicant’s
witness testified that Clematis is the genus and “Kivso” is
“the cultivar name.” Sorenson dep. at 21 and 22. Applicant
also maintains that “Little Duckling” is the cultivar name.
Sorenson dep. at 47. Applicant’s witness indicated that it
was using several names for the specific Clematis plant.
Q. … This letter marked as Exhibit 18 as of September
17th, 1998 indicates that you were at least using
Clematis Piilu as of that date. Correct?

A. Um-hum.

Q. And I believe we have testimony from you that now
says that you’re using the cultivar name as Little
Duckling for that Clematis. Is that correct?

A. That is correct.

Q. Did Little Duckling come after or before the use of
the term Kivso?

Opposition No. 91153755
13
A. After.

Sorenson dep. at 93. See also Id. at 96 (“so at least as of
September of 1998 you had the term Piilu in single quotes
without any reference to any kind of trademark status? A.
Yes, that’s correct”). However, applicant now intends “to
object to growers using the term Clematis Kivso to refer to
the particular cultivar.” Sorenson dep. at 157. It does
not intend to object to “growers using the term Clematis
Little Duckling in selling this particular plant.” Sorenson
dep. at 157-58.
Cultivar names are “included in single quotation marks”
in applicant’s practice. Hansen dep. at 18 (Using single
quotes “denotes a cultivar. Q. And is that industry
standard? A. Yes”); Sorenson dep. at 47-48.4
The plants associated with the term PIILU originated in
Estonia.
Q. Would you agree that the term Piilu is not
associated with a Clematis of black flowers?

A. I’ll agree to that.

Q. But it’s generally the flowers are in the red to
purplish range, and if I can refer to a previous
exhibit, one of your marketing materials, it refers to
a specific plant that originated in Estonia. Is that
correct?

A. Yes.

Sorenson dep. at 29.

4 Despite being in the nursery business since 1970, the witness
did not know why the term Piilu was in single quotes in
applicant’s literature. Sorenson dep. at 39.
Opposition No. 91153755
14

Applicant’s witness was also asked:
Q. Okay. Does the term Piilu, is that an English word?

A. No.

Q. What language is it?

A. Estonian.

Q. And what is the translation of the term Piilu from
Estonian to English?

A. Little Duckling.

Sorenson dep. at 48. See also Response to Office Action
dated October 11, 2001 (“In the Office Action the Trademark
Examining Attorney has inquired as to the general
significance of the term ‘PIILU.’ In response, Applicant
submits that the term ‘PIILU’ is an Estonian word meaning
‘little duckling’”). While Mr. Sorenson does not speak
Estonian, he testified that his understanding of the
translation is based on “basically it was a question that I
asked the Kivistik family and they answered.” Sorenson dep.
at 160.
Opposer argues that “both ‘Little Duckling’ and ‘PIILU’
are used interchangeably.” Brief at 6. Applicant contends
that “[t]here is no admissible evidence that PIILU is the
Estonian name for a cultivar name.” Brief at 11. Applicant
goes on to argue that “there is no evidence by anyone with
personal knowledge – much less a “preponderance” of evidence
– as to the translation of PIILU into English, or of Little
Opposition No. 91153755
15
Duckling into Estonian.” Brief at 12 (emphasis deleted).
We have already pointed out that applicant has entered into
the record a translation of the term PIILU as the Estonian
word for “Little Duckling.” Applicant’s witness was asked
“And what is the translation of the term Piilu from Estonian
to English?” His response was simply “Little Duckling.”
Sorenson dep. at 48. The witness based his understanding
“of the translation of Piilu into English” on “a question
that I asked the Kivistik family and they answered.”
Sorenson dep. at 160. However, the witness, who does not
speak Estonian, does not personally know what the term Piilu
means in Estonian. Sorenson dep. at 160-161.
As indicated earlier, we have rejected applicant’s
attempt to create a new issue in its appeal brief regarding
the translation of the term Piilu. The examining attorney
allowed applicant’s mark to be published on the basis of the
translation applicant submitted and this opposition was
conducted without this translation being seriously
challenged. Therefore, it is too late in a brief after
trial for applicant to raise an issue about the accuracy of
a translation that it provided during the prosecution of the
application, and we will assume that the term Piilu is
translated as “Little Duckling.”5

5 We also will not consider opposer’s issue regarding the
adequacy of the ex parte examination apart from our discussion of
the genericness issue. Even if there were some deficiency, it
Opposition No. 91153755
16
However, even if PIILU is the equivalent of the term
“Little Duckling” and if, as applicant now argues, that
Little Duckling, is the generic name of its specific
Clematis, we must determine whether under the doctrine of
foreign equivalents it is the generic name of the goods in
this situation. The foreign translation of an English
generic term can result in the mark being generic. Weiss
Noodle Co. v. Golden Cracknel and Specialty Co., 290 F.2d
845, 129 USPQ 411, 413 (CCPA 1961) (“In the instant case
registration of the Hungarian name for noodles, ‘haluska’
or its phonetic equivalent in English, whether or not
hyphenated, would be contrary to law for no one can be
granted the exclusive use of the name of an article, either
in our native tongue or its equivalent in any foreign
language”). The Federal Circuit has held that: “Although
words from modern languages are generally translated into
English, the doctrine of foreign equivalents is not an
absolute rule and should be viewed merely as a guideline.”
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed.
Cir. 2005). We have no hesitation in finding that Estonian
is a modern language to which the doctrine of foreign

“would be manifestly unfair to penalize defendant for
noncompliance with a requirement that was never made by the
Examining Attorney.” Saint-Gobain Abrasives Inc. v. Unova
Industrial Automation Systems Inc., 66 USPQ2d 1355, 1359 (TTAB
2003).
Opposition No. 91153755
17
equivalents would apply. See, e.g., Weiss Noodle Co.
(Hungarian); In re Spirits International N.V., ___ USPQ2d
___ (TTAB February 11, 2008) (Serial No. 74382759) slip op.
at 9 (“[B]ecause the mark is in Russian, a common, modern
foreign language, we must consider that an appreciable
segment of the buying public will speak or understand this
language”).
However, the Federal Circuit did caution that the
“doctrine should be applied only when it is likely that the
ordinary American purchaser would stop and translate the
word into its English equivalent.” Id. (internal
punctuation omitted). A complicating factor in this case is
the fact that the name of a cultivar or varietal is not just
an issue for the United States:
The United States is a party to the UPOV [the
International Convention for the Protection of New
Varieties of Plant]. Although Pennington argues that
UPOV does not apply here because the use of the
designation “Rebel” predated the United States’
adherence to UPOV, we find this argument unpersuasive.
The PTO's policy of refusing registration of varietal
names dates back to the Dixie Rose case, well before
the UPOV treaty. While the requirements of the UPOV do
not control this case, they underlie and are consistent
with the conclusion that a varietal name is generic and
hence support the PTO's refusal to register the term
“Rebel” as a trademark.

Pennington Seed, 80 USPQ2d at 1763. See also International
Code of Nomenclature for Cultivated Plants (1995) (Principle
6 – “Cultivar and cultivar-group epithets must be
Opposition No. 91153755
18
universally available in all countries for use by any person
to denote a particular cultivar or cultivar-group”).
In this case, it is not clear whether purchasers will
stop and translate the name of a cultivar into a foreign
language or if the assigned name will simply be incorporated
as the name of the cultivar in the foreign language. For
example, it is not clear whether the English words “Delta,”
“Pine,” “Commander” or “Chief” would be translated into
their Spanish, French, Estonian, etc. equivalents or whether
the names DELTAPINE, COMMANDER YORK, and CHIEF BEMIDJI will
remain the same in those languages. The record does not
permit us to conclude that prospective purchasers will stop
and translate the term. Therefore, we decline to apply the
doctrine of foreign equivalents in this case and find that,
assuming “Little Duckling” is the name of the cultivar and
the Estonian word PIILU translates into English as “Little
Duckling,” PIILU must be another generic name of the
cultivar.
The only remaining issue is whether PIILU is the name
of a cultivar of Clematis. If it is, it is generic and it
would not be registrable. Pennington Seed, 80 USPQ2d at
1762 (“‘Rebel’ is the name of a variety of grass seed and is
its generic designation”). It has long been held that a
product may have more than one generic name and that all
these names are equally barred from registration. Roselux
Opposition No. 91153755
19
Chemical Co., Inc. v. Parsons Ammonia Company, Inc., 299
F.2d 855, 132 USPQ 627, 632 (CCPA 1962); In re Active Ankle
Systems Inc., 83 USPQ2d 1532, 1538 (TTAB 2007) (It “is well
settled that there can be more than one term to name a
product”). Inasmuch as the International Code of
Nomenclature for Cultivated Plants (Principle 11) “has no
force beyond that deriving from free assent of those
concerned with cultivated plants, there apparently is a real
possibility that a cultivar may have more than a single
name. We also note that applicant maintains that its
specific Clematis cultivar is known as Little Duckling.
Sorenson dep. at 47. Indeed, applicant maintains that the
cultivar was also known as “Kivso.” Sorenson dep. at 21 and
22.
However, we find that this particular cultivar or
varietal of Clematis was originally known by the designation
PIILU. Applicant acknowledges that it uses the term PIILU
on one type of plant, not as a trademark for different
living plants. Sorenson dep. at 135-36. See, e.g., Stark
Bro's Nurseries, 132 USPQ at 653 (“It is, moreover,
incongruous, to say the least, to suppose that a single
designation, such as ‘STARKRIMSON’, would or could be used
and be considered in the trade or by the purchasing public
as a varietal name for three distinctively different types
of plants and/or trees”). Applicant originally designated
Opposition No. 91153755
20
the plant as Clematis ‘Piilu.’ Id. at 96 (“so at least as
of September of 1998 you had the term Piilu in single quotes
without any reference to any kind of trademark status? A.
Yes, that’s correct”). The name Piilu is used to designate
a specific Clematis cultivar in the relevant trade
literature.
‘Piilu’
Early Large-flowered Group
‘Hagley Hybrid’ x ‘Makhrovyi’
R: U. & A. Kivistik (1984), F: U. & A. Kivistik
(1987), N: U. & A. Kivistik (1988), REG: EPPIVCD
(2000)
Fls single and double, (4-) (6-12 cm across, solitary
in lf-axils. Sepals of single fls 4-6, mauve-pink, bar
broad, purple-red, surface textured and with irregular
white markings, 2-5 cm ling, broadly elliptic, blunt
but apiculate, overlapping, margin frilly. Filaments
whitish, anthers yellow. Deciduous climber with stems
1-2 m. Lvs dark green, ternate or rarely pinnate. FL:
May-June on previous year’s growth (fls often double),
Sept-Oct on current year’s growth (fls single).
Published ref. Toovere 1992; The Clematis 1992; 59
(as ‘Pülu’)
(Misspelling: ‘Pülu’)

Victoria Matthews, International Clematis Register &
Checklist (2002), Royal Horticultural Society, 253-54.6 We
add that some of the abbreviations in the entry are:
F - First flowered by
R – Raised by
N – Named by
Published ref. – the book, journal or catalogue where a
cultivar name was first published
REG – Registered by

6 We note that in the book’s acknowledgements (p. 11), the author
thanks “Aili, Taavi and Aime Kivistik, Estonia.”
Opposition No. 91153755
21
Immediately following the entrees for ‘Piilu’ is a
similar entry for ‘Pille.’
‘Pille’
Late Large-flowered Group
‘Valge Daam’ (s) x ‘Niobe’
R: U. & A. Kivistik (1987), F: U. & A. Kivistik
(1989), N: U. & A. Kivistik (1991), REG: EPPIVCD
(2000)
Fls 14-18 cm across, solitary in lf-axils. Sepals 6,
reddish-violet to mauve, 7-9 cm long, broadly elliptic,
pointed, overlapping, margin wavy. Filaments whitish;
anthers pale yellow. Deciduous climber with stems 1.5-
2 m. FL: July-Sept on current year’s growth.
Published ref. Türi AMS Clematis Cat. 1993; Kivistik,
Eesti elulõngad 1998
(Misspelling: ‘Pilii’)

Id. at 254.
An Illustrated Encyclopedia of Clematis7 contains the
following entry:
Clematis Piilu
Origin: Raised by Uno Kivistik of Harjumaa, Estonia.
The name means “little duckling.”
Parentage and year: C’s Hagley Hybrid x. C.
‘Makhrovyi’ 1984

Applicant asserts that it obtained its rights “to
propagate and sell a variety Clematis Piilu” from the
Kivistik family.” Sorenson dep. at 43.
Applicant has also used the term PIILU without any
indication that it is a trademark. Indeed, in an invoice to
opposer in South Carolina dated December 17, 1998, applicant

7 Authors Mary Toomey and Everett Leeds, published in association
with the British Clematis Society by Timber Press, Portland,
Oregon (2001). Mr. Sorenson testified (p. 161) that he contacted
Mr. Leeds regarding Piilu and asked him to “get it right in the
next rewrite.” The witness received no promises from Mr. Leeds
that the next edition would be changed. Sorenson dep. at 162.
Opposition No. 91153755
22
refers to two of its Clematis plants as “‘My Angel’ T.M.”
and “‘Blue Light’ T.M.” but it also refers to the third as
simply “Clematis ‘Piilu.’” Hansen Ex. 7 and 8.
In an article written by applicant’s president, Rick
Sorenson, the plant is referred to as “A recent Estonian
introduction is C. ‘Piilu’ (Pillu™ virgin’s bower…), which
was bred by plantsman Uno Kivitstik.” Hansen Ex. 10. He
also refers to plant without a TM symbol. Id. (“Clematis
‘Piilu’ features large, light purplish-pink flowers”).
Opposer has used the term PIILU to identify a specific
type of Clematis plant.
Clematis Piilu
For a truly distinctive look, Piilu offers large 4- to
4½-inch flowers, first in late spring to early summer
on old wood, then again in late summer on young shoots…

Developed by Estonian hybridizer Uno Kivistik in 1984
as a cross between the classic C. Hagley Hybrid and C.
Mahrouyi “Queen of climbers” is what one British
Clematis expert calls them.

Hansen Ex. 18. See also Hansen Ex. 13, opposer’s 2000
catalog (“‘Piilu’ – new! For a truly distinctive look, this
award-winning new hybrid is unsurpassed”).
Opposer has also submitted excerpts from several
publications to show that the term PIILU is used to identify
a cultivar or varietal name. See Hanson Ex. 5 (John Howell,
Choosing your Clematis (© 2000), Under “Pink Clematis,”
“Group VII Late Large.” The following entries appear
Opposition No. 91153755
23
“‘Hagley Hybrid,’ ‘Comtesse de Bouchard,’ ‘Piilu,’ ‘John
Warren’”).
Applicant itself entered into several licensing
agreements with various growers such as Spring Valley
Greenhouse Inc. that licensed a variety referred to as
CLEMATIS ‘Piilu’™. See Sorenson Ex. POP001-POP003. See
also POP234. The license makes no reference to a cultivar
or varietal ‘Kivso’ or “Little Duckling.’
We note that several of the articles involve foreign
entities and publications. Nonetheless, we hold that these
publications are relevant. Several cases have explained
that foreign publications can be relevant in helping us
understand how a term can be perceived in the United States.
In re Remacle, 66 USPQ2d 1222, 1224 n.5 (TTAB 2002):
[I]t is reasonable to assume that professionals in
medicine, engineering, computers, telecommunications
and many other fields are likely to utilize all
available resources, regardless of country of origin or
medium. Further, the Internet is a resource that is
widely available to these same professionals and to the
general public in the United States. Particularly in
the case before us, involving sophisticated medical
technology, it is reasonable to consider a relevant
article from an Internet web site, in English, about
medical research in another country, Great Britain in
this case, because that research is likely to be of
interest worldwide regardless of its country of origin.

More recently, the Federal Circuit has explained that:
“Information originating on foreign websites or in foreign
news publications that are accessible to the United States
public may be relevant to discern United States consumer
Opposition No. 91153755
24
impression of a proposed mark.” In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed.
Cir. 2007). Here, the record supports a conclusion that the
field of plant breeding is an international industry where
growers, breeders, and indeed many consumers would rely on
publications and information from sources outside the United
States. We note for example, that applicant’s witness
testified that he had a copy of the International Clematis
Register & Checklist at his business and that he has used it
as a reference. Sorenson dep. at 76. Therefore, we find
these publications are relevant.
When we consider the record before us, it is clear that
a cultivar or varietal of Clematis was introduced as
Clematis ‘Piilu.’ While subsequently applicant attempted to
change that varietal or cultivar name to ‘Kivso’ and later
“Little Duckling,’ the relevant public would nonetheless
recognize the name ‘Piilu’ as a varietal or cultivar name of
this plant. Applicant’s description of its own website
seems to acknowledge its belated efforts to establish
another cultivar name. Brief at 5 (“As of 2003, [its] web
site contained an express reference to Kivso (later changed
to Little Duckling) as a cultivar name and PIILU as a
trademark”). Under our case law, PIILU is a generic name
for these plants. As such, we agree that applicant is not
entitled to registration on the Principal Register.
Opposition No. 91153755
25
Decision: The opposition is sustained and registration
to applicant of its mark is refused.