Patenting Food -- And Controlling Access To Food

Today's new patent opinion from the Federal Circuit reminds us that:

1. Food can be patented;

2. New food plants developed with public monies by the USDA does not necessarily benefit all US citizens equally; and

3. Wrongful disclosure by an inventor's employee of confidential information concerning a newly discovery invention does not necessarily start the one year on-sale bar ticking.

In Delano Farms v. California Table Grape Commission, plaintiffs sought to invalidate a USDA patent on new varieties of table grapes: the Scarlet Royal and the Autumn King.

Scarlett Royal           Autumn King

Plaintiffs asserted that the new grape varieties were in public use more than one year prior to the filing of the patent application. These new grape varieties were developed by the USDA, a government agency spending public monies. The USDA obtained a patent on the new grapes and then granted an exclusive license to the California Table Grape Commission. The grape commission in turn sublicensed the new grape varieties to California growers for a license fee that was split between the grape commission and USDA.

An employee working for the USDA in the office that developed the grape varieties secretly gave plant material to friends, California grape growers. This occurred more than one year prior to the filing of the USDA's patent application. The employee knew that he was not authorized to provide the plant material outside of the USDA and so did his friends, the California growers.

Plaintiffs in this case were California grape growers who did not want to pay the patent fee to the grape commission. They sought to invalidate the patent in the hope of obtaining the patent benefits for free. The Federal Circuit easily disposed of plaintiffs' contention that public use occurred more than one year prior to the filing of the patent application. Since the transfer of the plant material occurred without the consent of the USDA and in violation of its employee's confidentiality obligations, and since the recipients of the plant material knew that the material was secret and should not have been disclosed, then the public use never commenced at the time of the wrongful disclosure.

While the holding of this case is pretty straight forward, it nonetheless reminds us that:

1. It is critical for an inventor to maintain secrecy over the invention, and to liberally use confidentiality and nondisclosure agreements with those people who assist in the development of the invention.

2. Government agencies use public money to develop new food crops, but do not necessarily grant free use to the public of the very food that public money was used to develop.

3. Food can be patented, and use of food can thereby be restricted (here the USDA granted an exclusive license to the California grape commission but not to non-California growers!).

The Slants and Disparaging Trademarks

The Slants are upset with the federal trademark office.

The Slants describe themselves as “the world's first and only all-Asian American dance rock band.” The group’s manager and bass player, Simon Tam, applied twice for a federal trademark registration for the term The Slants for services consisting of “entertainment in the nature of live performances by a musical band.” Each application was rejected by the trademark office because the PTO maintains that the term highly disparages people of Asian descent. A copy of the recent decision by the Trademark Trial and Appeal Board (TTAB), containing the Board's decision and procedural information about the trademark applications, is available here.

The group is not shy about references to Asian elements. The Slants’ 2007 debut album played on Asian physical features with the title “Slanted Eyes, Slanted Hearts.” The group’s newly released album is entitled “The Yellow Album.” According to the TTAB decision, the group’s website previously featured Asian influences:

And, advertising for the band’s upcoming Seattle concert features Asian influences:

Section 2(a) of the Lanham Act prohibits registration of a trademark that "consists of or includes matter which may disparage or bring into contempt or dispute persons, institutions, beliefs or national symbols." The trademark office employs a two-part test to determine whether a mark violates Section 2(a),

1. what is the likely meaning of the term, and

2. if the meaning of the term refers to identifiable persons, institutions, beliefs or national symbols, whether the meaning may be disparaging to a "substantial composite of the reference group." 

The TTAB agreed with the trademark examiner's conclusion that the term The Slants, as used by the applicant, likely incorporates a highly disparaging reference to peoples of Asian descent, and that a "substantial composite" of Asians finds the term to be disparaging. The trademark examiner submitted evidence from dictionary definitions and common published references supporting the contention that the term is disparaging. 

The band pointed out that the word SLANT can have a non-disparaging meaning, and that the term had, in fact, been registered as a trademark for other uses, including as a mark for skateboards, water skis, surf skies, skies and snow boards, separately registered for motion picture film productions, production of radio or television programs, and two marks for serving ware for serving food.

But the TTAB noted that context is important. Here, the band uses the term in conjunction with Asian references. This is not the case with the other SLANT trademark registrations. The TTAB emphasized that the term incorporates a disparaging meaning as used by the band, and that the meaning is deemed disparaging by a substantial composite of Asians. Among the evidence in the record (cited in the TTAB decision) is the following statement from the Japanese American Citizens League:

"'Jap' is a derogatory term! ... And, so are terms link 'chink' ... and 'slant.'" Japanese American Citizens League Anti-Hate Program www.lacl.org. [sic] "The Japanese American Citizens League is a national organization whose mission is to secure and maintain the civil rights of Japanese Americans and all others who are victimized by injustice and bigotry." www.jacl.org.

More information about the Japanese American Citizens League can be found here.

The band has appealed the refusal to register The Slants to the Federal Circuit. Oral argument is scheduled for this Friday morning, January, 9, 2015, in Courtroom 201 in Washington, DC. Recordings of the oral argument can be obtained following argument at the court's website, here.

What You Can Do To Protect Your Business From Negative Internet Posts

What can a business do when it becomes the subject of a negative Internet post? My article addresses this important issue: here.