District Court Finds SMOOTHEE and SCARLET SPUR Generic for Apples
The recent case of Van Well Nursery, Inc. v. Mony Life Ins. Co, VC-04-0425 LRS (ED Wash,. March 16, 2006) makes clear that that IP holders may well only get one bite of the . . .
In the case, Plaintiff apple grower owned two trademark registrations (and associated patents) for the marks SMOOTHEE and SCARLET SPUR, both for apples. The Plaintiff asserted, inter alia, that Defendant used the marks SCARLET SPUR and SMOOTHEE in marketing its own apples, which were of the same variety, but which were not Plaintiff’s apples. Defendant did not deny using the marks, but argued that the terms “Scarlet Spur” and “Smoothee” were varietal designations and accordingly, could not be given trademark protection. Essentially, defendant argued that the marks — despite the federal registrations — were generic for the types of apples they identified.
In applying the “what are you” test, the district court found that while the scientific name for the two types of apples was known, the terms SCARLET SPUR and SMOOTHEE were widely used in the apple industry to identify the fruits. The Court did not find pursuasive the Plaintiff’s evidence that it always used the mark with the appropriate ® marking, and that its intent was never to have these names used in conjunction with all uses of the patented apple varietal, but rather its own brand of the patented varietal. Instead, the court correctly found that the prevailing industry use of the mark was controlling and deemed the mark generic.
Practice Pointer: Clients should be advised when seeking patent protection to identify the patent under a differnt name than the brand name under which it proposes to separately market the product. Such a division makes it easier to separate the two property rights appropriately, and insures that the trademark rights survive the patent rights. The “What Are You” test is commonly used to determine whether a mark has become generic. This test is fully outlined in Filipino Yellow Pages, Inc. v. Asian Publications, Inc., 198 F.3d 1385 (9th Cir. 1999).