Branding Beyond the Vine: Strategies to Secure Trademarks with Varietal Names

What is a varietal name?

A varietal name, also known as a variety name, refers to the specific cultivar or variety of a plant or grape used in the production of agricultural products or wines. These names are typically derived from the geographic location where the plant or grape variety originated, or they may be fanciful or arbitrary designations assigned by breeders or growers.

When it comes to trademark registration, the presence of a varietal name in a proposed mark can raise concerns regarding descriptiveness and genericness. Trademark offices, such as the United States Patent and Trademark Office (USPTO), are tasked with ensuring that registered marks are not merely descriptive of the goods or services they represent, as this could lead to a monopolization of common terms and hinder fair competition.

One of the primary reasons a trademark application containing a varietal name may be rejected is the perception that the mark is merely descriptive of the goods or services. For instance, if a winery attempts to register a mark consisting solely of a grape variety name, such as "Chardonnay" or "Cabernet Sauvignon," the trademark office may refuse registration on the grounds that the mark is generic or merely descriptive of the wine itself.

The full listing of varietals that the USPTO examiners look at.

However, it's important to note that the presence of a varietal name alone does not automatically preclude registration. Trademark offices evaluate each application on a case-by-case basis, considering factors such as the overall commercial impression of the mark, the presence of additional distinctive elements, and the perception of the relevant consuming public.

What can I do about a varietal trademark rejection?

If a trademark application containing a varietal name is initially rejected, there are several potential remedies that an applicant can pursue to overcome the refusal and ultimately secure registration:

Acquiring Distinctiveness: One potential remedy is to demonstrate that the mark has acquired distinctiveness, also known as secondary meaning, through extensive use and promotion in the marketplace. This involves providing evidence that consumers have come to recognize the mark as a source identifier for the applicant's goods or services, rather than merely a descriptive term. Acquiring distinctiveness can be a challenging and time-consuming process, often requiring substantial evidence of advertising, sales figures, and consumer recognition surveys.
Disclaiming the Varietal Name: Another remedy is to disclaim the varietal name within the mark. A disclaimer is a statement that the applicant does not claim exclusive rights to a particular descriptive or generic term within the mark. By disclaiming the varietal name, the applicant acknowledges that they are not seeking exclusive rights to that term and that others may use it in a descriptive manner. This can be an effective strategy when the mark contains additional distinctive elements beyond the varietal name.
Amending the Mark: In some cases, the applicant may choose to amend the mark by removing or modifying the varietal name or adding distinctive elements to overcome the descriptiveness objection. This approach may involve rebranding efforts and potentially compromising the original mark concept, but it can be a viable solution when other remedies are not feasible.
Arguing Inherent Distinctiveness: If the mark contains additional elements beyond the varietal name, the applicant may argue that the mark as a whole is inherently distinctive and capable of identifying the source of the goods or services. This argument may be strengthened by evidence of the mark's commercial impression, the degree of imagination or creativity involved in its creation, and the potential for consumer confusion if the mark is not registered.

It's worth noting that the specific remedies available and the likelihood of success may vary depending on the jurisdiction and the specific practices of the trademark office involved. Additionally, seeking the guidance of experienced trademark attorneys can be invaluable in navigating the complexities of trademark registration and developing effective strategies to overcome objections related to varietal names.

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August 2024

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