Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE DELTA AND PINE LAND COMPANY
Serial No. 73/829,538
January 27, 1993
Hearing: December 1, 1992
William H. Elliott, Jr., of the firm of Synnestvedt & Lechner for applicant.
Trademark Examining Attorney
Law Office 15
(Paul Fahrenkopf, Managing Attorney)
Before Simms, Cissel and Hohein
Delta and Pine Land Company (applicant) has appealed from the final refusal of the Examining Attorney to register the term DELTAPINE for agricultural planting seeds. [FN1] The Examining Attorney has refused registration under Section 2(e)(1) of the Act, 15 USC 1052(e)(1), arguing that the term sought to be registered is merely descriptive because it is the dominant portion of a number of varietal names for certain cotton and soybean seeds. Applicant, on the other hand, while conceding that Deltapine 50, Deltapine 20, Deltapine 105 and Deltapine 506 are varietal (generic) names for several varieties of cotton and soybean plants, argues that the term here sought to be registered-- DELTAPINE--is merely a component or element of a varietal name given to certain, but not all, varieties of cotton and soybean seed and functions as a mark indicating origin in applicant.
Elaborating, it is the position of the Examining Attorney that applicant's admissions and the record show that the term "Deltapine" is used with various numbers as plant varietal names for cotton and soybean. [FN2] The Examining Attorney argues that applicant seeks to register not just a portion of a varietal name but the dominant portion most likely to be remembered by the purchaser.
The issue in this case centers on the specific portion of the varietal name applicant is seeking to register not just whether a portion of the name is registrable.
(Examining Attorney's appeal brief, 4) The Examining Attorney contends that, since some of applicant's seeds identified by the asserted mark also bear varietal names including the term "Deltapine," the term sought to be registered is merely descriptive because it describes some of the goods encompassed by the identification of goods. The Examining Attorney also maintains:
Giving the applicant a registration for DELTAPINE would allow it to have an unfair advantage over those who wish to produce the same seeds but would be precluded from calling the seeds deltapine seeds.
(Examining Attorney's appeal brief, 5) [FN3] For these reasons, the Examining Attorney contends that purchasers of cotton and soybean seeds would not perceive the term sought to be registered as a trademark.
Applicant begins by acknowledging that the word sought to be registered is an element or component of the names given to several varieties of cotton and soybean plants. However, applicant points out that in each instance this word is used in combination with a number--for example, Deltapine 50. This and similar composite names were the names given to the varieties when applicant filed its applications under the Plant Variety Protection Act (7 USC 2321 et seq.), in the Plant Variety Protection Office of the Department of Agriculture. Applicant argues that the fact that a word has been used as a component or element of a varietal name or denomination for a plant variety should not preclude registration of the word alone as a trademark, even for products having some derivative relationship to the plants. [FN4]
*2 According to applicant's attorney, the different seed species and varieties that are sold under the asserted mark change from year to year. In 1991, applicant sold seeds under the DELTAPINE mark including nine different varieties of cotton seed (three of which do not use the term "Deltapine" in their varietal names); twelve different varieties of soybean seed (four of which do not use the term "Deltapine" in their varietal names); fifteen different varieties of hybrid corn (none of which includes the term "Deltapine" in the varietal name) and nineteen different varieties of hybrid grain sorghum seed (none of which includes the term "Deltapine" in the varietal name). In addition, the line of DELTAPINE seeds includes varieties of rye grass, clover and other seed, none of which uses the term "Deltapine" in its varietal name. Applicant argues that the term DELTAPINE is an arbitrary term coined from applicant's trade name (Delta and Pine Land Company), and that while this term has been used as a component of varietal names it is also a trademark for applicant's seeds. Finally, applicant argues that the Examining Attorney has submitted no evidence demonstrating that the term DELTAPINE per se describes an ingredient, quality, characteristic, function, feature or use of applicant's agricultural planting seeds.
After careful consideration of the record and the arguments of applicant and the Examining Attorney, it is our judgment that the term sought to be registered should be refused registration under Section 2(e)(1) of the Act because that term is the prominent part of various varietal names for plants or seeds, some of which are sold under the asserted mark. While we acknowledge that this is an unusual case and that little or no precedent exists, we are persuaded by the arguments of the Examining Attorney that purchasers (farmers) would and do view the asserted mark as indicating that applicant's seed includes various "Deltapine" varieties; that is, that the term sought to be registered will be seen as describing the goods (or some of them) by employing the prominent part of their generic or varietal names. A term is merely descriptive if it describes some of the goods (or services) for which registration is sought. In re Canron, Inc., 219 USPQ 820, 821 (TTAB1983).
Moreover, we point out that we have decided this case on the rather scant record before us. We note, for example, that there is simply no support for applicant's statement that the asserted mark is understood in the trade and by the purchasers as a source indicator for different kinds of agricultural seeds, as distinguished from its use with various numerals as plant varietal names. Such evidence (affidavits or declarations) showing how the asserted mark is actually perceived and that it is distinguished from the varietal names by the relevant public would have been helpful to applicant's case.
DECISION: The refusal of registration is affirmed.
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 73/829,538, filed October 5, 1989, claiming use since 1938. In the amended application, applicant has claimed ownership of Registration No. 361,618.
FN2. The excerpts from the LEXIS/NEXIS computer database show that Deltapine 90 and Deltapine 15 also appear to be varietal names. It is not clear if applicant still produces seeds bearing these names.
FN3. In an earlier Office Action, the Examining Attorney argued:
In this case, it is extremely likely that purchasers encountering the mark "DELTAPINE" on planting seeds would presume that the seeds with which the applicant uses the mark are one of the limited number of varieties of seeds which incorporate the term "DELTAPINE" in the varietal name.
(Office Action issued October 30, 1990)
FN4. There is no question that varietal names are generic designations and cannot be registered as trademarks. See In re Hilltop Orchards & Nurseries, Inc., 206 USPQ 1034, 1036 (TTAB1979); In re Farmer Seed & Nursery Co., 137 USPQ 231, 232 (TTAB1963); In re Cohn Bodger & Sons, Co., 122 USPQ 345, 346 (TTAB1959); and Dixie Rose Nursery v. Coe, 55 USPQ 315, 317 (D.C.Cir.1942).