98248089•Lidia Glebouna Haiber
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THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: November 24, 2025 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Lidia Glebouna Haiber _____ Serial No. 98248089 _____ David B. Pieper of Keisling & Pieper PLC, for Lidia Glebouna Haiber. Sherif Farrag, Trademark Examining Attorney, Law Office 116, Elizabeth Jackson, Managing Attorney. _____ Before Larkin, Elgin, and Lavache, Administrative Trademark Judges. Opinion by Elgin, Administrative Trademark Judge: Lidia Glebouna Haiber (“Applicant”) seeks registration on the Principal Register of the proposed mark BLUE BANANA in standard characters for “Fresh honeyberries; live plants, namely, honeyberry plants” in International Class 31.1 1 Application Serial No. 98248089 was filed on October 31, 2023 based on Applicant’s claimed bona fide intent to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. § 1051(b). On February 7, 2024, Applicant filed an amendment to allege use claiming dates of first use anywhere and in commerce of January 1, 2024 under Trademark Act Section 1(a), 15 U.S.C. § 1051(a).
Serial No. 98248089 - 2 - The Trademark Examining Attorney issued a Final Refusal of registration of Applicant’s proposed mark on the ground that it comprises a varietal name for the identified goods and, thus, does not function as a trademark to indicate the source of the goods and to identify and distinguish them from others. See Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051, 1052, 1127. Applicant and the Examining Attorney filed briefs.2 For the reasons explained below, we affirm the refusal to register. I. Prosecution History and Record on Appeal We briefly summarize below the prosecution history of the application because it provides necessary background to our disposition of the appeal. As noted above, Applicant sought registration of the proposed mark under Section 1(b) of the Trademark Act, claiming bona fide intent to use the mark in commerce. Before the application was assigned to the examining attorney, Applicant filed an amendment to allege use supported by the specimens shown below:3 2 Applicant’s Brief is at 6 TTABVUE. The Trademark Examining Attorney’s Brief is at 8 TTABVUE. Applicant did not file a Reply brief. Citations in this opinion to the briefs and other materials in the case docket refer to TTABVUE, the Board’s online docketing system. Citations to the prosecution record refer to the .pdf versions of documents in the USPTO’s Trademark Search & Document Retrieval (“TSDR”) system. 3 Feb. 7, 2024 Specimen.
Serial No. 98248089 - 3 - After reviewing the results of a search regarding whether Blue Banana is a varietal name of the goods,4 the Examining Attorney issued an Office Action refusing registration of the applied-for mark on the ground that the proposed mark failed to function as a mark for the goods because Blue Banana is a varietal name for those goods.5 The Examining Attorney made of record pages from third-party websites,6 which the Examining Attorney claimed shows use of Blue Banana as a varietal name for the goods. The Examining Attorney also requested the following information from Applicant: (1) Whether BLUE BANANA has ever been used or will be used as a varietal or cultivar name; and 4 Dec. 31, 2023 Public Note; June 28, 2024 Public Note. 5 July 1, 2024 Office Action, at TSDR 2. 6 Id. at TSDR 5-43.
Serial No. 98248089 - 4 - (2) Whether BLUE BANANA has ever been used or will be used in connection with a plant patent, utility patent, or certificate for plant-variety protection. If so and such information is available, provide the patent application number, patent number, and/or the number for the plant- variety protection application, as appropriate.7 In response, Applicant entered a “Miscellaneous Statement” that: “BLUE BANANA is 1) not a varietal name or a cultivar name; and 2) is not being used in association with any plant patent, utility patent, or certificate for plan-variety [sic] protection.”8 Applicant did not submit any evidence or argument obviating the refusal, but did request a telephone conference with the Examining Attorney if further information was needed.9 The Examining Attorney issued an Office Action making final the failure-to- function refusal, noting that Applicant’s miscellaneous statement was not sufficient to overcome the refusal.10 A public note in the file indicates that the Examining Attorney discussed the refusal with Applicant’s attorney by phone.11 Applicant appealed and simultaneously requested reconsideration. In its Request for Reconsideration, Applicant argued for the first time that Blue Banana functions as a mark because it is different from the plant varietal name “Haskap,” which is one of nine varieties of honeyberry plants and is on its label per USDA regulations.12 7 Id. at TSDR 3. 8 Sept. 30, 2024 Response to Office Action, at TSDR 1, 2. 9 Id. 10 Nov. 5, 2024 Final Office Action. 11 Nov. 14, 2024 Public Note. 12 Feb. 5. 2025 Request for Reconsideration, at TSDR 4-5, 6.
Serial No. 98248089 - 5 - Applicant also argued that the fact that the Office library research results did not reveal relevant results supported registration.13 Applicant did not submit any evidence in support of its arguments. In denying the Request for Reconsideration, the Examining Attorney made of record additional website results to show that consumers perceive Blue Banana as a varietal plant name. The appeal was resumed and is now ready for decision. II. Background and Applicable Law As an initial matter, we provide a brief discussion of the nomenclature at issue to better understand the arguments and evidence. A “subspecies” is “a category in biological classification that ranks immediately below a species and designates a population of a particular geographic region genetically distinguishable from other such populations of the same species and capable of interbreeding successfully with them where its range overlaps theirs.”14 A “variety” is a “taxonomic category that ranks below subspecies (where present) or species, its members differing from others of the same subspecies or species in minor but permanent or heritable characteristics. 13 Id. at 5-6. 14 MERRIAM-WEBSTER DICTIONARY (www.merriam-webster.com, accessed Nov. 24, 2025). The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, No. 85214191, 2014 TTAB LEXIS 94, at *6 n.4; see also B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 728 (Fed. Cir. 1988) (“dictionaries and encyclopedias may be consulted”).
Serial No. 98248089 - 6 - Varieties are more often recognized in botany….”15 A “cultivar” is “a plant variety that has been produced in cultivation by selective breeding.”16 The USPTO has “a long-standing precedent and practice of treating plant varietal names as generic.” In re Int’l Fruit Genetics, LLC, No. 88711192, 2022 TTAB LEXIS 403, at *17 (quoting In re Pennington Seed Co., 466 F.3d 1053, 1055 (Fed. Cir. 2006)).17 “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 U.S. consumer.” Id. (citing TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1202.12 (July 2022)).18 Varietal and cultivar names are unprotectable as trademarks because a consumer “has to have some common descriptive name [the consumer] can use to indicate that [the consumer] wants one particular variety of apple tree, rose, or whatever, as opposed to another, and it is the varietal name of the strain which naturally and commonly serves this purpose.” Pennington Seed, 466 F.3d at 1057 (quoting In re Hilltop Orchards & Nurseries, Inc., 1979 TTAB LEXIS 148, at *5-6).19 Thus, even if the name originally was arbitrary, it “describe[s] to the public a [plant] of a particular 15 NEW OXFORD AM. DICTIONARY (www.oxfordreference.com, accessed Nov. 24, 2025). 16 Id. 17 The Int’l Fruit Genetics decision contains a thorough discussion regarding the international and domestic legal framework for the protection of plant varietal names. Int’l Fruit Genetics, 2022 TTAB LEXIS 403, at *6-16. 18 The language in the current version of the TMEP (Nov. 2025) is the same as the version quoted by the Board in the 2022 Int’l Fruit Genetics decision. 19 The terms “varietal” and “cultivar” may have slight semantic differences but pose indistinguishable issues; the Office treats them identically for trademark purposes. TMEP § 1202.12.
Serial No. 98248089 - 7 - sort, not a [plant] from a particular [source].” Dixie Rose Nursery v. Coe, 131 F.2d 446, 447 (D.C. Cir. 1942), cited in TMEP § 1202.12. A determination that a proposed mark is a generic varietal or cultivar name may be based on “a variety of sources.” Pennington Seed, 466 F.3d at 1058. The Examining Attorney bears the burden of proving that Applicant’s mark is not entitled to registration because it is the varietal name of the goods and is thus generic. In re Uman Diagnostics AB, No. 88960633, 2023 TTAB LEXIS 77, at *36. III. Evidence of Record As noted above, the Examining Attorney made of record evidence from ten webpages using the term Blue Banana as a varietal or cultivar name.20 These include: A. Berries Unlimited BerriesUnlimited.com (Berries Unlimited) advertises the “Blue Banana Honeyberry Haskap” as a “Tissue Cultured plant,” and encourages consumers to “Buy from Berries Unlimited to be sure that you get the real Blue Banana variety you are looking for!”21 This webpage also displays “BLUE BANANA TM” and “TRADEMARK: 20 We note that, to the extent that certain of these websites (i.e., Vegetolab, AgriForest, Prairie Gardens, and Nutcracker Nursery) appear to be from foreign English-language sources, they nonetheless may be relevant in determining if Blue Banana is generic. Cf. In re Well Living Lab Inc., No. 86440401, 2017 TTAB LEXIS 156, at *12 n.10 (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 969 (Fed. Cir. 2007) (“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 impression of a proposed mark.”)). Applicant did not object to the Examining Attorney’s reliance on these websites or to our consideration of them. 21 July 1, 2024 Office Action, at TSDR 6.
Serial No. 98248089 - 8 - UNITED STATES”.22 A picture of the product on the website is shown below, described as “LARGE, PROLONGED” fruit that is “SWEET, DELICIOUS”:23 B. Honeyberry USA HoneyBerryUSA.com (Honeyberry USA) provides a “Honeyberry/Haskap Bloom Chart.”24 On the left side, it states: Note that all plants on this page are of the species Lonicera caerulea L. whether they go by the name haskap, honeyberry, or Yezberry®. In general, “honeyberry” refers to subspecies such as edulis of Russian origin, “haskap” to subspecies with some emphyllocalyx / Japanese origin, and Yezberry® of pure emphyllocalyx / Japanese origin. It matters not so much what they are 22 Id. at TSDR 6. 23 Id. at TSDR 5, 6. 24 Id. at TSDR 9-14.
Serial No. 98248089 - 9 - called, but matching the bloom times is critical, as most varieties need a companion for pollination.25 “Blue BananaTM” is listed under the title “Berries Unlimited” and is described as “Sweet, great for fresh eating as well as processing” with “Large, prolonged oblong” shaped fruit that is “[g]reat for fresh eating, high yield,” but “susceptible to wind dropping berries.”26 The Honeyberry USA site also lists “Blue BananaTM” as an “Early/Mid-season bloomer” bred by “Lidia Delafield, Berries Unlimited.”27 Other entries listed under Berries Unlimited, such as “Strawberry SensationTM” include this statement: “This selection comes to us highly recommended from one of our commercial growers who has many varieties and Strawberry SensationTM ranks near the top in his opinion as well as his customers’ for its ‘superb’ flavor.” Under “plants for sale,” the site explains: “We have a trial orchard with over 50 named varieties and while most of them have good tasting berries, we have selected our favorites to offer to you.”28 Further, the page states that “[s]ome varieties grow faster and taller than others, typically from 1’-2’ a year,” while as to pollination, “Order at least one companion variety for every 3-5 other honeyberry plants for adequate pollination.”29 The page lists Blue Banana as a “pollenizer” for a number of other plants (such as Honey Bee Honeyberry and Tundra Honeyberry).30 25 Id. at TSDR 9-10 (bold text in original). 26 Id. at TSDR 10, 22-23. 27 Id. at 22. 28 Id. at TSDR 18. 29 Id. at TSDR 19. 30 Id. at TSDR 16, 17.
Serial No. 98248089 - 10 - C. One Green World OneGreenWorld.com (One Green World) describes the Blue Banana Honeyberry as “[a] brand new honeyberry introduction, hailing from Berries Unlimited’s illustrious collection, it’s one of the sweetest varieties of honeyberry we’ve ever tasted! Named for its elongated shape and delicious texture, Blue Banana will become a staple for home gardeners who are looking for a honeyberry with large, sweet, delicious fruit right off the bush.”31 The site also lists the Blue Banana plant as a “Pollinizer for: Borealis and most other varieties.”32 D. Stark Bros. StarkBros.com (Stark Bros.) offers the “Blue Banana Honeyberry Plant,” which is “becoming a staple for home gardeners looking for a honeyberry with large, sweet, delicious fruit right off the bush. Blue Banana plant is a Russian variety of honeyberry plants in the Blue Moose family. The big berries are juicy and sweet with great flavor – very refreshing.”33 The website provides that Blue Banana’s zone range is “2-8,” according to the “USDA hardiness zones … guide to varieties that will grow well in certain climates.”34 The website also explains that “[t]his variety requires another one for adequate pollination” because “[c]ross-pollination by a different variety is key to its growing and bearing success,” listing other varieties that work 31 Id. at TSDR 25, 26. 32 Id. at TSDR 26. 33 Id. at TSDR 28. 34 Id. at TSDR 29.
Serial No. 98248089 - 11 - with the Blue Banana plant.35 In addition, recommended tools and supplies are listed “for this variety.”36 E. Cultivar Cultivar.guide (Cultivar) lists a number of honeyberry plants in what appears to be a guide. This includes Blue Banana, with its blooming and ripening seasons, growth potential, and other information such as characteristics of its fruit as “sweet- tart/sweet?”37 Other plants included on this same list are described as “varieties,” such as Aurora (“by far, the sweetest and most liked out of the older honeyberry varieties available in North America”); Indigo Gem (“Indigo Gem and Indigo Treat are better than the older varieties, but they are known for not being as good as some of the newer ones”); Sunrise (“Furthermore, it consistently ranked among the top for flavor, but it was not compared to any of the best honeyberry varieties, such as Aurora, so you should take this with a grain of salt”); and Cinderella (“Cinderella appears to be better in quality than most varieties….”).38 F. Vegetolab Fruit Plant Wholesaler VegetoLab.com (Vegetolab Fruit Plant Wholesaler) provides “Blue Banana – Haskap,” also listed as “Haskap Blue Banana (Lonicera caerulea”), describing it as follows: Its large berries are juicy and sweet with an excellent smoked strawberry flavor. This variety is part of the Blue 35 Id. at TSDR 30. 36 Id. 37 Id. at TSDR 41. 38 Id. at TSDR 35, 37, 38, 41 (emphasis in original omitted).
Serial No. 98248089 - 12 - Moose family. one of the sweetest berry varieties (at this hybridizer) and ideal for fresh, frozen and mixed fruit. It can produce 8 to 10 pounds of fruit per bush after 4 to 5 years of growth (these yields have yet to be validated). It is a mid-season variety that lends itself well to mechanized harvesting. This variety was developed by Lidia Stuart, living in the far eastern part of Russia. It is considered by many to be the origin of the commercial cherry tree. Mrs. Stuart used varieties from Russia and Japan to develop her cultivars.39 The site lists “compatible varieties” such as Aurora – Haskap.40 G. AgriForest Bio Technologies Ltd. AgriForestBioTech.com (AgriForest Bio-Technologies Ltd.) lists a “category” titled “Berries Unlimited Varieties (Breeder Lidia R. Delafield Stuart), with “big berries [that] are Juicy and sweet with great flavour – very refershlng [sic]. One of the best tasting berries of the BU stable. This variety is is [sic] a member of the Blue Moose family.”41 It also specifies “Needed Pollinator” as “Any other unrelated Honeyberry cultivar blooming at a similar time – Happy Giant and Blue Palm” and “Shape: Like a mini blue banana.”42 H. Prairie Gardens PrairieGardens.org (Prairie Gardens) is a plant nursery that sells the “Blue Banana Haskap Berry,” described as: Developed by Lidia Stuart of Berries: Unlimited, Blue Banana is known for its large berries with a ‘smoked- 39 April 23, 2025 Denial of Request for Reconsideration, at TSDR 6. 40 Id. 41 Id. at TSDR 9. 42 Id.
Serial No. 98248089 - 13 - strawberry’ flavour. Blue Banana is also much sweeter than most other haskap varieties, which make the berries excellent for fresh eating, in addition to making jams, sauces, juices, and other preserves. Blue Banana is a mid-blooming variety that is typically ready mid-late June for harvest. Mature size is 8-9’ tall by 6-8’ wide. Cross-pollinate with: Honey Gin, Happy Giant, or Boreal Beast.43 I. Beautiful Field Farm BeautifulFieldFarm.com (Beautiful Field Farm) offers plants for sale, including “Haskap – Blue Banana” described as: “The big berries 3.0cm, are juicy and sweet with great flavour – very refreshing [sic]. One of the best tasting berries recently released by Berries Unlimited.”44 The pollinators for the plant are listed as “[a]ny other unrelated Honeyberry cultivar blooming at a similar time – Happy Giant.”45 J. Nutcracker Nursery and Tree Farm NutcrackerNursery.com (Nutcracker Nursery and Tree Farm) sells “Blue Banana Haskap” plants: Blue Banana cultivar from the Blue Moose family, produces large fruits 3 cm long, juicy and sweet with a smoked strawberry taste. It can produce 8 to 10 pounds of fruit per bush after 4 to 5 years of growth. It is a mid-season variety that lends itself well to mechanized harvesting. Compatible strain: Aurora, Wojtek / Larisa.46 43 Id. at TSDR 17. 44 Id. at TSDR 19. 45 Id. 46 Id. at 22-23.
Serial No. 98248089 - 14 - K. Applicant’s “Evidence” Applicant did not submit any evidence during prosecution. However, in her brief Applicant referenced (without evidence) ten applications she claims to own, describing them as suspended pending this appeal, and one for the mark HONEY BEAST which she claimed has registered.47 Evidence submitted after prosecution is untimely and is not considered, Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“The record in the application should be complete prior to the filing of an appeal.”), and attorney argument is not evidence. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1371 (Fed. Cir. 2018). Thus, we give the listing of applications and registration in Applicant’s brief no consideration.48 IV. Analysis The evidence discussed above demonstrates that third parties use “Blue Banana” to identify a honeyberry or haskap variety or cultivar, and list it as a pollinator along with other varietal or cultivar names. This is strong evidence that Blue Banana is a variety or cultivar of “Fresh honeyberries; live plants, namely, honeyberry plants.” We turn to Applicant’s arguments to the contrary. 47 6 TTABVUE 6-7 (HONEY CHAMPION, GIANT’S HEART, BLUE MOOSE, BLUE DIAMOND, HONEY JOY, HAPPY GIANT, BLUE PALM, HONEY GLEN, STRAWBERRY SENSATION, BLUE TREASURE). 48 “The proper procedure for an applicant or examining attorney to introduce evidence after an appeal has been filed is to submit a written request with the Board to suspend the appeal and remand the application for further examination.” In re Weiss, No. 88621608, 2024 TTAB LEXIS 277, at *1 (citing Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d)).
Serial No. 98248089 - 15 - A. No Conflicting Marks Applicant argued that “no conflicting marks were found to exist at the time of filing” based on the Examiner’s search.49 The search of potentially conflicting marks for a likelihood of confusion refusal under Section 2(d), however, is not relevant to the current basis for refusal under Sections 1, 2, and 45. B. Previously Established Varietal Name Applicant also argued that “a varietal name was previously established for the plant and recognized in the appropriate databases,” and thus an applicant may have a varietal name and a separate trademark used as a source identifier.50 Applicant argued that the proper varietal name is “haskap.”51 The materials made of record by the Examining Attorney contradict Applicant’s argument that the proper varietal name is “haskap,” not “Blue Banana.” The materials of record indicate that the term “haskap” is another name for a honeyberry plant. As stated on the Honeyberry USA website: Note that all plants on this page are of the species Lonicera caerulea L. whether they go by the name haskap, honeyberry, or Yezberry®. In general, “honeyberry” refers to subspecies such as edulis of Russian origin, “haskap” to subspecies with some emphyllocalyx / Japanese origin, and Yezberry® of pure emphyllocalyx / 49 6 TTABVUE 4, 8. 50 See 6 TTABVUE 4, 6. Applicant cited to a federal district court case (i.e., “DAVID AUSTIN ROSES LIMITED v. GCM RANCH LLC, 3:24-CV-0882-B (DC ND Texas 2025)”) in its argument, but Applicant did not supply any decisions or materials relating to that case. Thus, we have not considered it. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 101.03(a)(1) (June 2025) (citations to court cases must be to the appropriate reporter). 51 6 TTABVUE 7.
Serial No. 98248089 - 16 - Japanese origin. It matters not so much what they are called, but matching the bloom times is critical, as most varieties need a companion for pollination.52 The evidence demonstrates that haskap (Japanese) and honeyberry (English) are different names for the same plant subspecies. Applicant’s Blue Banana plant is a taxonomical rank below the haskap/honeyberry subspecies – i.e., a varietal or cultivar. We acknowledge that Applicant’s specimen of use and the Berries Unlimited website (which we attribute to Applicant) reveal that Applicant has attempted to use Blue Banana as a trademark along with the term “haskap,”53 and that one seller of the Blue Banana varietal (Honeyberry USA) also uses a “TM” symbol with Blue Banana and Applicant’s other varietals such as Strawberry Sensation.54 We can infer from use of the “TRADEMARK: UNITED STATES” and the “TM” symbol next to the words Blue Banana on the Berries Unlimited’s website and the specimens of use that Applicant and Berries Unlimited intended to communicate to the public through the use of the symbol that Applicant claims the words as a trademark. That Applicant may have intended Blue Banana to operate as a trademark is not determinative. Not every designation adopted with the intention that it perform a trademark function necessarily accomplishes that purpose. In re 52 July 1, 2024 Non-Final Action at TSDR 9-10; see also id. at 26 (“Latin Name: Lonicera caerulea”), 35 and 39 (“Japanese honeyberries [Lonicera caerulea var emphyllocalyx]”), 40 (“Russian Honeyberry: Lonicera caerulea var kamtschatica”), 41 (“Turzcaninowii Honeyberry: Lonicera caerulea var Turzcaninowii”); Apr. 23, 2025 Request for Reconsideration at TSDR 6 (“Haskap Blue Banana (Lonicera caerulea)”). 53 See supra pictures accompanying note 3 and text accompanying notes 21 and 22. 54 See supra text accompanying notes 26 and 27.
Serial No. 98248089 - 17 - Texas With Love, LLC, No. 87793802, 2020 TTAB LEXIS 466, at *5-6 (“Mere intent that a phrase function as a trademark is not enough in and of itself to make it a trademark.”) (quoting In re Pro-Line Corp., No. 74174721, 1993 TTAB LEXIS 24, at *5)). “The mere [u]se of the letters ‘TM’ on a product does not make unregistrable matter into a trademark, … and Applicant’s use is significant only if it contributed to educating the public to understand that [Blue Banana] is something other than a generic term.” In re Empire Tech. Dev. LLC, No. 85876688, 2017 TTAB LEXIS 232, at *33 n.23 (cleaned up; quoting In re Remington Prods. Inc., No. 493829, 1987 TTAB LEXIS 91, at *6). Both Applicant and many third parties also explicitly identify Blue Banana as a varietal or cultivar of the honeyberry plant.55 The context of these and the other third- party websites of record make clear to the consumer that Blue Banana is a variety or cultivar of the honeyberry plant. In similar circumstances, the court in Dixie Rose Nursery found that Texas Centennial was the name of a variety of rose, even though only the applicant and its licensees grew and marketed it: This variety is known throughout the trade, and listed in appellant’s catalog, by this name. Purchasers call for it, and for no other variety, by this name. Appellant’s catalog attributes to the “Texas Centennial” a number of physical features which distinguish it from other roses. Appellant has patented this rose, and apparently it is grown and marketed only by appellant and its licensees. Though the licensees agree to tell purchasers of appellant’s connection with it, one may in fact but [sic] “Texas Centennial” roses without learning that the original stock came from appellant’s nursery…. To allow registration of the name 55 See supra text accompanying notes 22 (Berries Unlimited), 31 (One Green World), 33, 35, and 36 (Stark Bros.), 39 (Vegetolab), 41 (AgriForest), 43 (Prairie Farm), and 46 (Nutcracker).
Serial No. 98248089 - 18 - “Texas Centennial” would give appellant an unfair advantage, despite the fact that only appellant and its licensees now produce Texas Centennials. It would tend to prolong appellant’s monopoly, beyond the life of appellant’s patent, by making it difficult for a newcomer to break into the field. We cannot read such an intent into the Trade Mark Act. Dixie Rose Nursery, 131 F.2d at 446-47. Here, as in Dixie Rose, Applicant/Berries Unlimited propagates the Blue Banana varietal/cultivar (and advertises that propagation by others is prohibited and that a plant patent has been applied for).56 Some third parties expressly attribute Blue Banana to Applicant, but others do not. All of the third-party sources describe the characteristics of the Blue Banana plant and, in particular, the fruit it produces which distinguish it from other varietals/cultivars of honeyberry fruit (e.g., large elongated blue berries in the shape of a banana, sweet, and a smoky strawberry flavor), the optimal growing conditions, and other honeyberry varieties appropriate for pollination. The fact that Applicant apparently has invested in the promotion of Blue Banana as a trademark for a new variety of honeyberry “cannot, per se, serve to elevate said term to such status.” Hilltop Orchards, 1979 TTAB LEXIS 148, at *7 (finding CHIEF BEMEDJI to be the common descriptive name for a particular variety of applicant’s apple trees). As the court in Pennington Seed aptly observed: While it is always distressing to contemplate a situation in which money has been invested in a promotion in the mistaken belief that trademark rights of value are being created, merchants act at their peril in attempting, by advertising, to convert common descriptive names, which belong to the public, to their own exclusive use. Even 56 See infra note 63 and accompanying text.
Serial No. 98248089 - 19 - though they succeed in the creation of de facto secondary meaning, due to lack of competition or other happenstance, the law respecting registration will not give it any effect. Pennington Seed, 466 F.3d at 1059 (quoting Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 848 (CCPA 1961)); accord, Int’l Fruit Genetics, 2022 TTAB LEXIS 403, at *36 (“[t]o allow trademark protection for generic terms, i.e., names which describe the genus of goods being sold, even when these have become identified with a first user, would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.”) (citing Pennington Seed, 466 F.3d at 1058). We find Applicant’s argument unpersuasive. C. Patent and Plant Protection Next, Applicant summarily argued that “the mark is not being used in association with any plant patent, utility patent, or certificate for plan[t]-variety protect [sic].”57 Although a patent or certificate for plant-variety protection would be probative evidence, the perception of a term by the relevant public may be based on evidence appropriate for the particular goods specified in the application. Dixie Rose Nursery, 131 F.2d at 447 (“The meaning which should be given to the words constituting the mark is the impression and signification which they would convey to the public.”); Hilltop Orchards, 1979 TTAB LEXIS 148, at *5 (“What we are concerned with in the present case is the impact which the designation ‘COMMANDER YORK’ would have 57 6 TTABVUE 4. We construe Applicant’s argument as referring to Plant Variety Protection (“PVP”) Certificates issued by the Plant Variety Protection Office, or PVPO, of the U.S. Department of Agriculture. See Int’l Fruit Genetics, 2022 TTAB LEXIS 403, at *12.
Serial No. 98248089 - 20 - upon the purchaser or the prospective purchaser of apple trees as he encounters such term in the marketing area where such goods are sold, and not its impact upon those scientists especially skilled in the botanical field.”). Here, the record establishes consumer exposure to the use of Blue Banana to identify a particular variety or cultivar of honeyberry plant and fruit, and Applicant’s argument to the contrary is not persuasive. D. “Third-Party” Uses Applicant argued that the evidence of record is inapposite because it was procured from third parties after the application filing date: “The Examiner is supporting the refusal with evidence of secondary parties copying the trademark term after the ITU filing and the acceptance of a statement of use which by law guarantees the associated right of priority specifically to address this type of situation.”58 We agree with the Examining Attorney that Applicant’s filing or priority date, which, like the Section 2(d) search discussed above, is not relevant to our analysis under Sections 1, 2, and 45.59 The fact that evidence was gathered after the filing date of the application also is inapposite. Evidence showing descriptiveness or genericness of a mark can be considered up until the Board renders its decision. In re Foster, 136 F.4th 1090, 1093 (Fed. Cir. 2025) (Board can consider evidence supporting refusal under Section 2 of the Trademark Act up until decision issues) (citing, inter alia, Application of Thunderbird Prods. Corp., 406 F.2d 1389, 1392 (CCPA 1969) (evidence 58 Id. at 11. 59 See 8 TTABVUE 5.
Serial No. 98248089 - 21 - showing descriptiveness under Section 2(e) in a refusal to register can be considered “at least to the time the application is acted on in the Patent Office”)). Applicant also calls these uses “fraudulent,” intimating that they were made without Applicant’s permission.60 This argument also is not persuasive. One of the websites made of record by the Examining Attorney is from Berries Unlimited. Other websites discussed above identify “Lidia Stuart,” “Lida R. Delafield Stuart,” and “Lida Delafield,” all of “Berries Unlimited,” as the propagator of the Blue Banana variety or cultivar.61 Applicant (Lidia Glebouna Haiber) shares the same first name as all of these named individuals, and the Berries Unlimited website of record lists the same address that was provided for Applicant in the subject application.62 The webpage for the Blue Banana plant on the Berries Unlimited website states: “PPAF: EXPIRES 2038 – PROPAGATION PROHIBITED.”63 Thus, we conclude that Applicant is associated with Berries Unlimited, and this is not a third-party use. As to the third-party websites discussed above, six (Honeyberry USA, One Green World, Vegetolab, AgriForest Bio-Technologies, Prairie Gardens, and Beautiful Field Farm) explicitly refer to Applicant and/or Berries Unlimited as having propagated the Blue Banana variety/cultivar, and therefore are not third parties “copying the trademark term” or “fraudulent” uses. These users of the term tell purchasers of 60 Id. at 9. 61 See supra text accompanying notes 27, 39, 41, and 43. 62 July 1, 2024 Office Action, at TSDR 8. 63 Id. at TSDR 6. “PPAF” is a common acronym standing for “plant patent applied for.” A plant patent lasts twenty years from the application date. See 35 U.S.C. §§ 154(a)(2), 161 et seq.
Serial No. 98248089 - 22 - Applicant’s true connection to Blue Banana. The “well-settled principle that being the first and only user of a generic term – even if the public associates it with the first user – does not make an otherwise generic term non-generic.” Empire Tech., 2017 TTAB LEXIS 232, at *60 and n.42 (citing cases). The other websites (Stark Bros., Cultivar, and Nutcracker) do not reference Applicant, indicating that “one may in fact [encounter Blue Banana honeyberry plants] without learning that the original stock came from [applicant’s] nursery.” Dixie Rose Nursery, 131 F.2d at 446. Applicant’s argument is not persuasive, in that the third-party evidence supports the conclusion that Blue Banana is a varietal or cultivar and cannot function as an indicator of source. E. Conclusion We find, based on the record as a whole, that proposed mark is a varietal name for “Fresh honeyberries; live plants, namely, honeyberry plants,” and therefore fails to function as a trademark for these goods under Trademark Act Sections 1, 2, and 45.64 Decision The refusal to register is affirmed. 64 The Examining Attorney made of record materials which indicate that “Blue Banana” may merely describe the color and shape of the fruit produced by Applicant’s plant. See, e.g., text accompanying notes 31 and 42 and picture accompanying note 23, supra. In view of our affirmance of the varietal refusal herein, however, we do not remand the case to the Examining Attorney to consider additional grounds for refusal.
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