Tips - When a rose is a RoseTM (Naming and Protection of New Plant Varieties)

by Dr. Paul Cappiello, UKCA Adjunct Professor of Horticulture
Bernheim Arboretum and Research Forest, 130 highway 245, Clermont, KY 40110-0130
(reprinted from Landscape Plant News, Volume 10, No. 3, 1999, with the author's permission)

Be it from a commercial nursery, through a plant introduction cooperative, or from the garden of an avid collector, naming and protection of new plant varieties has rapidly become the current quagmire of American horticulture. Patents, trademarks, and other branding and protection protocols have taken on a life of their own and are in need of some major clarification. While this column is not likely to be the last word on nomenclature etc., I hope it will provide a common base line from which we can progress into the future.

Plant cultivar names and protections operate on a number of levels and all require different approaches. The following list provides a base description of the requirements and protections for each type.

Cultivar Registration: New releases should be registered with the appropriate international registration authority (IRA). The IRA is charged with maintenance of a list of all registered varieties of the species or genera in question. As an example, the National Arboretum is the IRA for the genus Viburnum. The IRA will review the description of the new variety and will make recommendations as to uniqueness of cultivar name. Registration of a new release with the appropriate IRA confers no specific legal rights, nor is there any requirement to register with the IRA, however, at the present time it is the only method which can potentially provide for maintenance of a complete master list of introduced forms of a particular plant group.

Plant Patent: A plant patent is awarded for unique plant forms developed or discovered in cultivated areas. In order to patent a plant variety, it should be unique from other similar plants available or previously described. A patentable plant should also be the result of an active selection and or breeding program or it should have been discovered in a cultivated situation. Of course, this immediately removes the possibility of patent protection for a variant found in the wild. Several patent attorneys, however, have interpreted the law to allow a naturally occurring variant to be propagated and grown in cultivation, where it would then be selected for patent protection; a minor loophole exploited by some.

Plant patents provide the patent holder the legal authority to license growers to propagate and sell their protected varieties. The protection lasts for 20 years and is nonrenewable. It is therefore in the best interest of the patent holder to provide for a heavy-duty marketing and promotion campaign concurrent with the plant's release. Once the 20-year limit is reached, there is no more potential for collection of patent royalties.

One major stumbling block with plant patents is restriction of the material prior to patent application and award. Once a plant has been distributed, either intentionally or unintentionally, there is typically little, if any, chance to successfully patent protect that plant variety. The exception to this rule is if propagules are distributed under a specific evaluation agreement. Such agreements typically require that the evaluating institution not propagate, distribute or allow collection of vegetative portions of the plant in question. If a plant selection is being considered for protection, it is best not to distribute except under a specific agreement. While few woody ornamental plants will sell in sufficient numbers to warrant patent protection, if one is determined to patent a plant it is advisable to err on the side of being a bit overprotective rather than lose the rights to a potentially lucrative introduction.

At the present time, the majority interpretation of patent laws is that a typical plant patent does not protect seedlings or mutations (sports) of a patent protected variety. A much more involved process - a utility patent - can be secured which can provide for protection of a variety and its progeny. Don't bother with this one unless you have lots of spare money to burn.

As for nomenclature, a plant can and should be patented with the same name used to register it with the IRA. The U.S. Patent and Trademark Office maintains a web site that can be used to scan for previously used patent names. It is well worth a scan through this site prior to any naming exercise regardless of intention to patent or trademark.

Trademark Protection: To start with, there is no such thing as a plant trademark. In fact, a trademark name is not even part of the product. The purpose of a trademark is to identify source of the material. The product itself does not even have to be unique. What is trademarked is not the plant but the word. Trademarks last as long as the holder is willing to pay the renewal fee every few years. What makes for a great deal of confusion is that a cultivar may not be trademarked and patented under the same name. If a new introduction is registered with the appropriate IRA and patented under the same cultivar name, that name cannot be trademarked. This is why we end up with plants with two fancy names which many refer to as cultivar names.

To make matters worse, there is a difference between a trademark, TM, and a registered trademark,®. If someone or some company wants to sell a plant variety under a particular unique trademark name, they can simply use the name with the TM symbol with no registration or application process. This trademark affords the holder certain legal rights but is not the same as a registered trademark. The unregistered trademark indication can be used while the registered trademark is being sought. The ® indicates that the name has been registered with the U.S. Patent and Trademark Office. It indicates that the name is unique and does not infringe on the trademark rights of other trademark holders.

So how's that for a mess. Now while some may fault some for perpetuating the confusion by patenting and trademarking under different names, it is essentially the system we've been dealt. The legislation has been written and extensively interpreted. The moral of the story from my perspective, unless you are darned sure that you have a 100,000 a year seller, just trade and share. If you do have the big seller, be sure to do your homework up front.