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Understanding Plant Naming, Trademarks and Patents

Patenting and trademarking plants isn’t new, but it is an area of growing concern and confusion in the horticulture industry here and abroad. Most readers likely think of intellectual property (IP) as thought-related inventions, such as novels or new kinds of software. However, laws related to the protection of intellectual property have been extended, since 1930, to the discovery and development of new plant species, varieties and cultivars.

The purpose of this paper is to briefly explain United States laws governing horticultural patents and trademarks and to demonstrate how Flowers by the Sea complies with those laws. It is common for growers, garden writers and others to misuse patents and trademarks. This misuse can result in confusion for growers as well as customers who want to make sure that they are buying the specific product they want. Misuse can also lead to costly litigation.

So it is our intent, here, to help customers and anyone who grows horticultural plants -- such as flowering perennials -- to become familiar with the following matters: scientific naming of plants; terminology involved in trademarking and patenting; the difference between patents and trademarks; some historical dates related to plant patenting and trademarking; and how FBTS follows the laws.

Scientific Naming of Plants
Each plant has a scientific name consisting of two or more words. This structure is called binomial (“bi” for two and “nomial” for name) nomenclature. The structure of a plant name is called its nomenclature.

The first two words in a scientific plant name are in Latin. The first one is the genus or group to which a plant belongs and the second is the species name within the group. An example is Salvia chamaedryoides, which is commonly known as Germander Sage. Additional words may provide the plant’s varietal name, cultivar name and, sometimes, the name of someone who first identified the plant. Sometimes the species name will be a Latin form of a plant explorer’s name as in Salvia greggii, in which “greggii” indicates that this particular species of sage was discovered by Josiah Gregg. 1

Variety. A plant referred to as a variety is one that is found in the wild and is related to a previously discovered species. To qualify as a variety, the plant’s seeds must “come true,” which means they must reliably reproduce copies of the parent plant. FBTS carries “Salvia chamaedryoides var. isochroma,” which is commonly known as Silver Germander Sage or Marine Blue Sage. The “var.” stands for variety. The variety name -- isochroma – is neither capitalized nor surrounded by single quote marks as in a cultivar name.

Cultivar. This term means “cultivated variety,” so it is a plant developed in a garden or greenhouse. A cultivar may be an improved form of a single species or a hybrid of two species. It may be developed intentionally or discovered by accident in the greenhouse and then increased through various vegetative, asexual methods. An example of a cultivar is Salvia greggii ‘Playa Rosa’, commonly called Pink Beach Autumn Sage, which was developed by the Portland, Oregon, nursery Xera. Any plant sold under a particular scientific cultivar name is supposed to be propagated from the genetic material of its parent plant and be genetically identical.

When horticultural growers discover new varieties or develop new cultivars, they select scientific varietal or cultivar names based on internationally accepted rules of naming and then establish the names by publishing them in their catalogs and in professional journals. 2

Additional Terminology
Scientific name, variety and cultivar are all important terms involved in trademarking and patenting of plants. Here is some more key terminology.

Nomenclature. This refers to the structure of a plant name, such as genus + species + varietal term or genus + species + cultivar name, which is used to classify a plant.

International Code of Nomenclature for Cultivated Plants. The ICNCP is an internationally agreed-upon code published as a book. It is the basis for scientific naming of horticultural plants worldwide.

International Horticultural Congress. Originally called the International Botanical Congress, this organization meets every four years and rules on any changes in the ICNCP code.

Sexual Propagation. This refers to propagation of plants by seed or tuber.
Asexual Propagation. This form of plant reproduction involves rooting cuttings or cloning plant cells to create new plants. Most hybrids, except for F-1 types, are asexually propagated.

Intellectual Property. In horticulture, the term intellectual property refers to the thought process that goes into creating registered trademark names for cultivars that growers introduce. It also applies to the research involved in developing the cultivars. Patenting is a tool to protect investment in research and development by allowing a plant developer to have a monopoly on sales of a plant.

Trademark, Registered Trademark and Patent. These are legal tools that give plant developers certain licensing rights allowing them to charge licensing fees related to plant sales. All three terms are explained in the next section of this paper.

Difference Between Trademarks and Patents
Plant trademarks and patents go hand in hand, but are significantly different legal tools for legally enforcing rights to the naming and use of plants.

Plant Trademark. A plant trademark is a legal right to a monopoly on a name or symbol affiliated with a particular plant cultivar, but not to the plant itself. Owners apply to the U.S. Patent and Trademark Office (USPTO) for ownership of the name. Anyone can sell the plant using its cultivar name, but may not be allowed to sell it using its registered trademark name.
The symbol used to signify a grower’s intent to trademark a plant name with the USPTO is the superscript “™” following the trademarked name. This symbol doesn’t give the owner of the name legal rights to the name. To obtain a monopoly on the name, the grower needs to apply for a registered trademark, which is symbolized by “®” following the name.

Although mistakes occur, trademark registered names are supposed to be different from variety and cultivar names.
Suppose that FBTS discovers a new kind of Salvia greggii among its crops and gives it the cultivar name Salvia greggii ‘Marlene.’ Then suppose that we apply to the U.S. Patent and Trade Office to register a trademarked name for the plant. We aren’t supposed to ask for “Marlene® Autumn Sage (Salvia greggii ‘Marlene’).”

If the USPTO were to accidentally allow us to register “Marlene,” the trademark would automatically become unenforceable and generic because the plant’s cultivar name is the same. Some growers get around this problem by giving a new plant a nonsense name. So upon discovering our fictional new plant, if we gave it a cultivar name of “Salvia greggii ‘R23wixwax’,” then we could register it as “Marlene® Autumn Sage (Salvia greggii ‘R23wixwax'). The genus (Salvia) and species (greggii) names are italicized in the scientific name, but not the cultivar name surrounded by single quote marks.The great likelihood would be that growers would want to sell the plant under the name “Marlene” which is recognizable and sounds pretty.

However, growers can't sell plants under their registered, trademarked name without paying the trademark holder for a license to do so. Also, trademark holders usually won't license growers to use their registered name for a plant unless growers purchase the plant starts from them.

The fictional Marlene® Autumn Sage still could run into trademarking trouble if FBTS were to make errors in how it used the name and enforced its use. Owners of registered trademarked plant names often misstate trademarked names and their licensees do as well. A trademark becomes invalid (generic) if the owner doesn’t correct the errors, such as by (1) accurately publishing the name throughout a catalog, (2) enforcing its correct use by licensees and (3) litigating when unlicensed growers use the name. If a registered plant name goes generic, anyone then may sell the plant under that name. Considering the fictional trademark again, a common error would be to write the name as “Marlene Autumn Sage (Salvia greggii ‘R23wixwax’®). The registration mark needs to follow “Marlene,” which is the trademarked part of the name.

Sometimes other complications occur, such as multiple growers registering different names for the same cultivar. This can be confusing to customers who may buy all of these plants thinking that each is individual. A classic example is the rose cultivar Rosa 'Korlanum', which is trademarked under three names -- Surrey, Sommerwind and Vente D'ete. So some plant developers seek further protection of their brand through patenting.

Ultimately, the most important thing to remember about trademarks is that they only provide ownership of a name, not genetic material -- the domain of plant patents.3

Plant Patent. In general, the recipients of plant patents gain ownership of some form of genetic material of a particular plant. Some plant patents concern a monopoly on sexual propagation (seed and seeded offspring of F-1 hybrids) and asexual tuber propagation of plants whereas others concern asexual reproduction (buds, cells and cuttings) excluding tubers. Also, when application for a plant patent is in progress – identified by the term Plant Patent Applied For (PPAF) – litigation may arise if the plant is asexually propagated by buds, cells or cuttings.

Plant Breeders Rights (PBR) is patenting terminology used outside the United States and is sometimes used to establish international rights to a plant's genetic material. Applying for international PBR takes so many years that it is not a common practice in the U.S. Consequently, this paper does not delve into PBR.

The USPTO grants all American plant patents of which there are three kinds. The two that primarily affect propagation of Salvias are PPA and PVPA patents. 4

PPA patents, which are provided under the Plant Patent Act (35 U.S.C. 151),5 limit asexual (buds, cuttings or cells) propagation of plants, such as non- F1 hybrids that do not produce seed true to the parent plants. These include cultivars that are hybridized asexually rather than F1 seeded hybrids.

PVPA patents are allowed under the Plant Variety Protection Act (7 U.S.C. 2327).6 They limit propagation by sexual means (seed and seeded offspring of F-1 hybrids) as well as asexual reproduction by tubers of plants patented under the PVPA Act. The Federal Register notes that these plants are reproduced from “new, distinct, uniform, and stable” seed and tubers.7 A plant variety is not a cultivar. A variety is a group of plants -- found growing on its own in nature -- within a particular species of a genus and which retain the same characteristics when planted time and again from their seed or tubers.

PUP or plant utility patents 8 (227 U.S.P.Q. 443),9which became available through amendment of the benchmark 1980 Diamond v. Chakrabarty (447 U.S. 303)10 decision, which held that some forms of life are patentable as useful inventions. As yet, PUP patents have had little impact on the horticulture industry. They have been used in crop production of GMO food plants -- such as corn and soy -- which, for example, have been genetically altered to withstand certain herbicides.

Art as Early Trademarks for Orchard Products
Two of the most important thing to remember about plant patents, in general, are (1) they allow a single person or entity that discovers or develops a plant to own rights to the sale and use of that plant and (2) plants that are patented can only be sold by a grower or used by a researcher who is licensed by the holder of the patent.

The roots of American trademarking and patenting of plants began to grow in the fruit industry of the mid-19th century. At that time, agricultural commerce was beginning to spread nationwide due to the growth of shipping on rivers and canals as well as by railroad.

Due to serendipitous cross-pollination of orchards on the East Coast by birds, insects and wind, new species of apples, pears and stone fruits began to emerge. As nurseries discovered these varieties and began to develop them, the owners started becoming concerned about how to protect the products they had developed. Writing for Smithsonian Magazine, Daniel J. Kevles notes that there was worrisome confusion created by multiple names springing up for individual plants.

As fruit varieties burgeoned, so did a confusing array of synonyms for the varieties. To protect their efforts and the reputation of their products, fruit developers turned to artists to render botanically accurate pictures of their fruit. This is a good point at which to begin a rough timeline of U.S. trademarking and patenting of plants.11

Plant Trademarking and Patenting Timeline
1847 – Art as Trademarking. Nurseryman and Massachusetts Horticultural Society member Charles M. Hovey publishes illustrated prints of American fruit trees that were originally from Europe. In 1851, Hovey published a book of prints called Fruits of America, Volume I and followed up with volume 2 in 1856.12

1864 – First International Horticultural Congress. Horticultural scientists from around the world organize in Belgium and consider codifying scientific naming of plants.13

1867 – American Fruit Growers Develop Naming Code. The first national plant growers’ organization, the American Pomological Society, creates code of nomenclature for cultivated plants.14

1906 – Plants Introduced as Intellectual Property. Nursery owners unsuccessfully lobby Congress for passage of a bill to protect to the intellectual property of plant development.15

1930 – U.S. Plant Patent Act. Congress passed the PPA to encourage plant breeding and increase genetic diversity. The Act covered asexual reproduction of plants.16

1952 – First International Horticultural Code. The First International Code of Nomenclature for Cultivated Plants was published to standardize scientific naming of plant cultivars.17

1970 – U.S. Plant Variety Protection Act. Congress passed the PVPA to extend patent rights to plants grown from seeds and tubers. The PVPA requires that patented seeds be placed in official seed depositories. Farmers and plant researchers may save, but not sell, seed from crops.18

1980 – Patenting Life as Useful Invention. The Diamond v. Chakrabarty decision held that a living thing -- genetically modified bacteria -- could be patented as a useful invention.19 This led to the biotechnology explosion and to patenting plants and plant genetic material as inventions.

How FBTS Follows the Laws
At FBTS, we do not believe that any form of life should be trademarked or patented, so we choose not to use those tools to earn a profit even when we develop a new cultivar.20 However, it is our policy to abide by trademark and patent laws.

The law allows growers to apply for a license from the owner of a registered trademark when the grower wants to use the name to sell legally active, properly trademarked plants. However, most companies holding legally active registered trademarks require purchase of plant starts from their companies.

FBTS does not have a history of purchasing or selling correctly trademarked plants, because we do not believe in trademarking and also prefer to raise and control the quality of our starts. Nevertheless, if we were to do so, we would pay the licensing fee, purchase the starts and then publish the names correctly as previously described in this paper.

If a plant developer nullifies a registered trademark through faulty trademarking, incorrect publication of the trademark name or by allowing others to misuse the name, then we are not compelled to purchase a license to use the trademarked name and do not have to use the trademark or registered trademark format for that plant on our website or in any printed materials.

Regarding plant patents, we do not propagate or sell patented plants unless we have paid for and received licensing from the patent holder. We also don't propagate ones for which a patent application is published and which are designated PPAF while pending receipt of a patent. In cases where no patent application is published, growers are not subject to liability for sales of a PFAF plant up through and until the date of the actual issuance of the plant's patent. However, when we are a licensee, we follow the patent laws by paying royalties, recording sales and properly posting the patent number in our catalog and on our plant tags.

NOTES
1. “How to Name a New Cultivar.” International Society for Horticultural Science. Retrieved from http://www.ishs.org/sci/icraname.htm
2. “Variety vs. Cultivar.” University of Saskatchewan. Retrieved from http://agbio.usask.ca/misc-cultivar
3. Avent, T. “Name that Plant.” 2007. Plant Delights Nursery. Retrieved from http://www.plantdelights.com/Trademarks-in-Horticulture/products/534/
4. “Can IP Rights Protect Plants?” BiOS. Retrieved at http://www.patentlens.net/daisy/bios/1234#confidential
5. “35 USC 151 – Issue of a Patent.” Cornell University Law School. Retrieved at http://www.law.cornell.edu/uscode/text/35/151
6. “Plant Variety Protection Act and Regulations and Rules of Practice.” 2006. United States Department of Agriculture. Retrieved at http://www.ams.usda.gov/AMSv1.0/getfile?dDocName=STELDEV3002796
7. “Notice of Request for Revision of a Currently Approved Collection Application for Plant Variety Protection Certification and Objective Description of Variety.” 2012. Federal Register. Retrieved at
https://www.federalregister.gov/articles/2012/05/30/2012-13066/notice-of-request-for-revision-of-a-currently-approved-collection-application-for-plant-variety
8. “2105 Patentable Subject Matter -- Living Subject Matter [R-9].” 2012. U.S. Patent and Trademark Office. Retrieved at
http://www.uspto.gov/web/offices/pac/mpep/s2105.html
9. “Ex parte Hibberd.” Life Sciences Foundation. Retrieved at http://www.lifesciencesfoundation.org/events-item-620.html.
10. “Diamond v. Chakrabarty, 447 U.S. 303 (1980) 447 U.S. 303.” U.S. Supreme Court. Retrieved at http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=447&invol=303
11. Kevles, D. J. “How to Trademark a Fruit.” 2011. Smithsonian Magazine. Retrieved at http://www.smithsonianmag.com/arts-culture/How-to-Trademark-a-Fruit.html?c=y&page=1
12. Ibid.
13. Stearn, W.T. “ICNCP – It All Started in 1952 or Did It? International Code of Nomenclature for Cultivated Plants.” 1952. Bromeliad Society International. Retrieved at http://www.bsi.org/brom_info/cultivar/ICNCP.html
14. Ibid
15. Kevles, D. J. “Patenting Life – A Historical Overview of Law, Interests, and Ethics.” 2001. Legal Theory Workshop, Yale Law School. Retrieved at http://www.sba.oakland.edu/faculty/lauer/mis641b/readings/patenting%20life.pd
16. “Can IP Rights Protect Plants?” BiOS. Retrieved at http://www.patentlens.net/daisy/bios/1234
17. Avent, T. “Name that Plant.” 2007.
18. Strachan, J.M. “Plant Variety Protection -- An Alternative to Patents.” 1992. Probe. Retrieved at http://www.nal.usda.gov/pgdic/Probe/v2n2/plant.html
19. “2105 Patentable Subject Matter -- Living Subject Matter [R-9].” 2012.
20. “Patenting Life – A Brief History.” 2005. Center for Food Safety. Retrieved at http://www.centerforfoodsafety.org/pubs/Patenting%20Life%20-%20A%20Brief%20History.pdf