How to Stop the Misuse of Plant Variety Names: Legal Options Explained
By Theresa H. Wang and Valerie A. Walker | Related Practices: Agriculture and Intellectual Property
This article was authored by Stokes Lawrence attorneys Theresa Wang and Valerie Walker, and by Michelle Bos of Michelle Bos Legal LLC.
Background
There is a troubling trend in the fresh produce industry: third parties using variety names (denominations) interchangeably—and thus incorrectly—in their marketing, which has a potentially damaging impact on owners of related intellectual property. This article explains that trend and outlines some legal tools worth considering as breeders, growers, marketers, and other stakeholders brainstorm how best to protect their inventions and trademarks in the United States.
As more plant varieties feature specific benefits that may or may not have visible expression, it will become increasingly important that variety distinctions are clear to consumers. For example, gene editing technologies may enable breeders to develop varieties with characteristics such as improved digestibility, desirable vitamin/antioxidant content, inhibited oxidative browning, hypo-allergenic qualities, improved storageability, etc.— though none of these are characteristics consumers can discern by sight. As more plant products distinguish themselves by non-visual, but material, characteristics, variety owners may want to evaluate the extent to which variety denominations are being misused, to their potential detriment and the detriment of consumers.
In the United States, plant patents are a key tool in agribusiness for inventors seeking to protect their rights to new plant varieties. To obtain a plant patent, the inventor must make a claim that the applied-for variety is distinct and new.1 For example, ‘Ruby Pink’ (US PP16,725) and ‘Cripps Pink’ (US PP7880) are apple varieties that share some similarities but are patentably distinct.
A variety denomination describes a single, specific plant variety. It is a “generic” term, and as such, it cannot be registered as a trademark.2 Denominations of certain well-known varieties may nevertheless become associated in the mind of the consumer with valuable trademarks that are used to market the fruit of those varieties and related similar varieties. In some cases, third parties—with neither patent rights to the well-known variety nor rights to use the trademark(s) associated with fruit of the variety—intentionally use the well-known variety denomination with a different variety in an attempt to trade on the popularity of the well-known variety and the related brand.
For those seeking to address variety denomination misuse in the United States, there are a number of options to consider in the legal toolbox, from relying upon enforcement by government agencies to suing third parties via the court system.
1. Legal Tools: Government Agencies
At least two government agencies may consider the misuse described above within the scope of their jurisdiction. First, the Food and Drug Administration (FDA) enforces the Federal Food, Drug, and Cosmetic Act (FDCA). Among other things, the FDCA prohibits the misbranding of food in interstate commerce. In general, a food is “misbranded” if its labeling is “false or misleading in any particular.”3 For example, where a seller has inaccurately labelled a product as a ‘Cripps Pink’ apple, when it is in fact a different variety, that label would be false. Violations of the FDCA can be reported to the FDA via its Safety Reporting Portal.
Second, the Federal Trade Commission (FTC) enforces the Federal Trade Commission Act (FTCA), 15 U.S.C. § 45(a)(1). This statute prohibits “unfair or deceptive acts or practices in or affecting commerce” and serves as a model for many similar state laws. FTC policy defines a deceptive trade practice as a representation, omission, or practice that is likely to mislead consumers acting reasonably under the circumstances and is material. Violations of the FTCA can be reported to the FTC via the following website: https://reportfraud.ftc.gov.
Regarding enforcement affecting food, the FTC takes primary responsibility for advertising practices, whereas the FDA takes primary responsibility over food labelling.4 Where sellers falsely advertise a good by misidentifying the variety, that could mislead reasonable consumers. This would only be a material misrepresentation if it is likely to affect consumers’ decisions with regard to purchase.
One disadvantage of relying upon government agencies, such as the FDA and the FTC, is that there is no guarantee that they will follow through with investigation and enforcement. Moreover, in light of recent disruptions to the federal workforce, including extensive terminations of federal employees, government enforcement is likely to be affected.
2. Legal Tools: Claims Against Third Parties
Where reliance upon enforcement by government agencies is not desirable, there are federal and state laws that permit private parties to sue bad actors in this space. With respect to federal law, there are different types of Lanham Act claims that may be utilized to address misuse. For example, a brand owner could file a trademark infringement claim under 15 U.S.C. § 1114(1) or 15 U.S.C. § 1125(1)(A), depending on whether the trademark is registered. Because proprietary varieties sometimes come from only one or a few authorized sources, that owner could argue that misuse of a given variety denomination is likely to cause consumer confusion as to the source of the product. Another Lanham Act claim to consider is a false advertising claim under 15 U.S.C. § 1125(1)(B), which does not depend upon consumer confusion. Like an FTCA claim, a false advertising claim under the Lanham Act requires that the deception be material (i.e., likely to affect consumers’ purchasing decisions).
Additionally, as referenced above, many states have laws similar to the FTCA. In Washington, for example, the Consumer Protection Act (“WA CPA”) prohibits “unfair methods of competition and unfair or deceptive acts or practices in the conduct of any trade or commerce.” One of Washington’s most well-known agricultural commodities is apples, and state regulation governing apple marketing provides that apple containers must be marked with “[t]he correct name of the variety.” The purpose of this regulation is to provide fair and orderly marketing of apples in Washington, and it lends support for an argument that the misuse of a variety name is an unfair or deceptive act/practice.
If you have questions about protecting your plant varieties or addressing potential misuse, contact your intellectual property or agribusiness counsel to explore the best options for your situation.
This document is intended to provide you with general information and does not provide an exhaustive list of legal tools. The contents of this document are not intended to provide specific legal advice.
1 See General Information About 35 U.S.C. 161 Plant Patents.
2 T.M.E.P. § 1202.12
3 Brazil v. Dole Food Co., 935 F. Supp. 2d 947, 953–54 (N.D. Cal. 2013)
4 See Dee Pridgen & Jolina C. Cuaresma, Consumer Protection and the Law § 8.1 (Nov. 2024 Update)
