Sharing Roses - When Shouldn't We

by Wayne Myers

This article is a 2017 AOM winner

ABOVE: 'Polar Express', Courtesy Biltmore

“Roses are prettiest when shared” is the motto of the Jacksonville Rose Society. As hobby gardeners and rosarians, we all love roses! We share our knowledge, and often we share our roses. When is sharing roses wrong?

According to the US Patent and Trademark Office (USPTO), it is illegal to propagate patented plant material without express permission from the patent owner! This prohibition includes making rooted cuttings for your own personal use, and to give away! The processes and terminology for patenting, trademarking, and registering newly-invented plants are complex, confusing, and expensive—breeders usually hire patent attorneys or agents. Patent rules may be bewildering for hobby rosarians, but the prohibition against stealing from patent holders is clear!

The hosts of the Fall 2017 Deep South District Convention gave each convention registrant a rooted cutting of Polar Express®. This disease-resistant shrub rose from Kordes of Germany prolifically covers itself with clusters of two-inch, cupped, mildly-fragrant, white blooms. However, Polar Express® was granted United States patent number No: PP#(Plant Patent Number) 24,849 on 9 Sep 2014 based on Application No: 13/573,185 on 28 Aug 2012. This patent is held and administered in the US by Star® Roses and Plants (Star® Roses) which since March 31, 2017, owns the rights to distribute Kordes’s patented roses in the US.

Until 28 August 2032, unless you have specific permission from Star® Roses, it is against the law to propagate Polar Express® for sale, gift, or even to add an asexually produced clone to one’s personal garden. The common practice of propagating from stems of rose-show winners is illegal IF THAT VARIETY IS PATENTED! Further, it is legal but unethical to propagate rose varieties less than twenty years after their introduction in those situations where the breeder is so small that he or she has not invested the significant time and money to protect his or her “invention.”

US PP# 1 was issued for the rose New Dawn on August 18th, 1931. Since then, the US patent system has offered the same property protection rights to the “inventors” of genetically unique plants as they do to inventors of mechanical and scientific advances. These laws were implemented to protect the breeder’s right to recoup the significant investment required to make advancements in plant quality through research and development. Bringing a new rose variety to the commercial market usually takes at least eight years, but more commonly 10 or more.

As explained by Karen Varga and Cassie Neiden in their article, “Plotting a Patent,” in the February 2017 issue of “Nursery management” magazine (available here) a plant patent is granted by the government to an inventor (or the inventor’s heirs or assigns) who has invented or discovered and asexually reproduced a distinct and new variety of plant…. The grant, which lasts for 20 years from the date of filing the application, protects the inventor’s right to exclude others from asexually reproducing, selling, or using the plant so reproduced. Each plant patent is limited to one plant, or genome. Source: U.S. Patent and Trademark Office (USPTO).

According to the February 2017 issue of “Nursery Management” magazine, “There have been 28,191 plant patent applications filed through the USPTO since 1963. From those applications, 24,021 plant patents were granted. While, comparatively speaking, plant patents make up a very small portion of the overall number of patents granted in the U.S. (there were 25,986 design patents granted in 2015 alone), their importance within the horticulture industry has grown, especially with the proliferation of brands and the growth of international trade in plants.

So how can a hobby rosarian find out whether a rose is patented or not? The only authoritative source is the USPTO database of patents which I found very difficult to use. However, for practical use, rosarians who wish to propagate roses should first be sure of the plant’s name and status by looking up the name, registration, and patent information in either of the two, major, on-line, rose databases.

Basic information for known/registered rose varieties in commerce is available to American Rose Society (ARS) members in the ARS’s “Modern Roses” database which is available at modernroses.org. The international horticultural community, through its “International Cultivar Registration Authority Rose,” has assigned to the ARS the worldwide responsibility for registering new rose plants and maintaining the internationally accepted list of rose varietal names. The ARS carries out this responsibility by maintaining this on-line database, “Modern Roses.”

“Modern Roses” is the official, internationally-recognized list of varieties, is available on line on the ARS website. The transition to on-line has not been easy. The database has been missing patent, parentage, and other information for many varieties. It was also completely intolerant of misspellings and contained only one or no photos for many varieties. It often did not include any picture for recently introduced or commercially insignificant varieties. It still has weaknesses, but it is great to see that Modern Roses is again available and searchable on line.

Fortunately, the free, on-line, rose database www.HelpMeFind.com/rose/plants offers MUCH more information including alternate names, consistently complete-and-accurate patent information, a physical description and picture gallery for each rose flower and its plant, the rose’s parentage if known, climate and care recommendations, commercial availability and sources, international awards, and most useful of all--its search function is very tolerant of misspellings.

“Registration” of roses is confusing because the word “registration” has different meanings for hobby rosarians and the commercial rose world. In our rose hobby, the hybridizer “registers” a new rose with the ARS, which grants an Approved Exhibition Name (AEN) which is required for entry in ARS rose shows. However, this ARS registration is meaningless in the commercial world. The process is totally separate from and a MUCH simpler process than patenting a new rose variety or registering a trade name of a rose within the USPTO’s processes.

ONLY patenting a new variety with the USPTO provides legal protection for the plant material and the hybridizer. Commercial names that are used for new varieties can also be protected by registering a Trademark™ with the USPTO, which provides the trademark holder the right to designate the trade name of the variety with the ® symbol. In our increasingly competitive, globalized world, it is critically important for rose companies to use these trademark/registration and patent processes because the USPTO process also provides entry into the international system for protecting “inventions.”

According to Jacques Ferare, the Rose Program and License Department Director for Star® Roses, common use of the symbol ™ has no legal standing--it simply notifies others that you seek recognition of the name as your “brand name” for the plant or product. However, a company can register a trademark with the USPTO which can grant exclusive legal rights to that specific name for that product. Registered trademarks are indicated by the use of the ® symbol. When used correctly--the Registered® symbol means that the rose is patented as well as protected under the official US registration and trademark process.

The breeder has one year after the first public awareness of the invented plant to initiate protection under patent law, usually using a breeder’s name. Pursuit of a catchy, commercially-trademarked name can be pursued anytime, as shown in the examples below. A rose may be sold under many names, some of which may be officially protected within the patent process because the breeder has registered the trademark with the USPTO. Unlike a plant patent that expires in 20 years, a registered® commercial product name, for example “Coke®,” can be extended indefinitely.

For example, consider the rose ‘RADrazz,’ which is known commercially as Knock Out®. Its patent was applied for 13 January 1999. Star® Roses completed the entire patent/trademark/registration process through the US Patent Office, making it illegal under the patent to asexually propagate that rose plant until January 2019 without obtaining permission from Star® Roses. Furthermore, the registered trademark protects against unlicensed selling of a ‘RADrazz’ plant as a Knock Out® rose as long as the plant ‘RADrazz’ is in commerce! The Knock Out® trademark remains in force.

A big rose company or breeder will seek a patent for each unique rose plant which has profit potential. The additional process for trademarking and registration of commercial names allows the producers to ™ and ® whatever names they desire, explaining the many different names you may see for roses, especially roses grown or sold in multiple countries.

To check the patent status of a rose, the best name to search is the name given the plant on its patent application, the breeder’s legal, patented identification. For example, the patented name for Knock Out® is ‘RADrazz’. Razzle Dazzle was a name discarded by the marketing department which then misspelled the agreed name of Knockout.

When they seek a patent, companies will usually use the first three letters of the hybridizer’s name (RAD for a rose hybridized by Will Radler of Wisconsin), combined with three or more letters that may or may not make sense to anyone else. Once they have protected the plant as a unique botanical specimen, the company chooses a commercial name.

The company has one year from the first date of commercial disclosure to seek registered trademark and patent protection for a rose variety. On the other hand, trademark registration for a commercial name can be sought at any time.

Another good example of the commercial process is the variety ‘RADral,’ another rose “invented” by Radler. It was originally introduced in the US as Carefree Celebration in 2007, but has recently been re-introduced, and in 2018 has been trademarked under the registered/trademarked name ‘Coral Knockout®.’ Perhaps the variety’s success in Star® Roses’ own field trials and as a nation-wide winner in the American Garden Rose Selections™ (AGRS™) and American Rose Trials for Sustainability rose-trial programs, convinced them that the rose would sell better in the family with the US’s most commercially successful roses.

A second good example is JACopper--the current patented/trademarked name for Veterans’ Honor®. (ABOVE) This popular, show-winning hybrid tea began its commercial career as Lady in Red, Jackson & Perkins’ “Rose of the Year” for 2000 in the US, and City of Newcastle in the United Kingdom.

Or consider ‘MEIclusif,’ a hybrid tea from the Meilland company of France that was a 2016 Fragrance winner in the AGRS™ trials. According to HelpMeFind.com, the plant is patented in the US, European Union, and Australia. The plant has won prizes in rose trials all around the world. The rose marketers have assigned names that they believe will sell well within particular countries. Copied from HelpMeFind.com, here is the list of its commercial names: Alive, Dee-Lish®, Elbflorenz, Forget-Me-Not, Inclus, Line Renauld®, Sweet Parfum de Provence, Tchekhov®, and The Anniversary Rose. Dee-Lish® (LEFT) won the “Most Fragrant Rose” award for the author at the 2016 Gainesville, FL, rose show.

A final good example of how marketing drives naming practices is the current sustainable favorite, ‘KORpauvio’, from the Kordes company of Germany which we know and love in the Deep South as Beverly®. In South Africa and Australia, it’s sold as Perfume Passion, in France as Sophie Davant, in the United Kingdom as Pink Perfection, and in Germany, like the US, it’s Beverly. As marketing has become more important, the USPTO’s trademark and registration process is now used to protect collections of roses—Beverly® (RIGHT) is marketed in Kordes’s “Eleganza®” hybrid tea collection. As you can see, Eleganza® is a registered trademark.

If you’re still paying attention and perhaps wondering, the use of single quotes around rose names varies among authorities—the rose industry’s rules, according to Star® Roses, are different from the ARS’s, and also different from the USPTO’s. HelpMeFind.com is no help because it shows each name with, then later without, single quotes. The rose names in the preceding paragraphs are punctuated as Star® specified, but I have not tried to sort out rules from the other countries.

As Jacques Ferare explains, the US Patent Office registration of the trademark name Knock Out® with the U.S. Patent and Trademark Office makes it illegal for anyone else to sell a rose under that name until there is no longer any commercial value, so long as that trademark registration remains in force, which could be long after the patent has expired. This trademark and registration process takes at least eight months and sometimes as long as two years.

The process may cost many hundreds, or even thousands of dollars, and is a commercial gamble on the part of the company. For one of the best-selling roses of all time, ‘RADrazz’=Knock Out®, the patent and /trademark/registration processes have paid for themselves many times over, revived the commercial rose industry, and made millions for hybridizer Will Radler and Star® Roses.

Whether the ® or ™ symbols are present or not, rosarians MUST be sure of the variety’s patent, trademark, and registration status before they propagate a rose. You might counter that the plant was not labeled in your friend’s garden. True, police aren’t coming after you, but as a civilized society we accept the principle that ignorance is not a valid excuse for illegal behavior. Propagating your favorite new variety may be easy and fun, but it is illegal—you’re stealing from the hybridizer and company that invested in creating, patenting, and marketing the rose.

The patent office offers help for individuals applying for patents and lower fees for “Small” and “Micro” entities, but the process has become so technical and commercially important that “Nursery Management” magazine recommends engaging a patent agent or attorney. An agent costs less, but cannot litigate any issues that arise. Large companies may also subscribe to monitoring services to search out patent violations as the first step in enforcement against significant commercial theft.

Patents, Trademarks, and registrations may be confusing, but within the commercial rose world, they are important aspects of breeders’ rights that all rosarians should understand.

The rose companies who serve gardeners outside the landscape industry love hobby-gardeners and rose societies. They don’t want to punish potential customers because they know they will not be in business long without our desires for great, new plants. However, they will go out of business if we don’t honor their legal right to recoup their investment in bringing us garden stars like Polar Express™. Go forth and propagate, but obtain permission first.

From The Author

Thank you to “Nursery management” magazine, its editor Kelli Rodda, and authors Karen Varga and Cassie Neiden for allowing the author to borrow from their article “Plotting a Patent” which appeared in the February 2017 edition of their magazine. Their article provides an excellent overview of the plant patent process. Thank you to Star® Roses’ former CEO Steve Hutton; Rose Program and License Department Director Jacque Ferare; New Plants Manager Kristen Smith; and their attorney Travis Bliss for gently setting me straight about patented roses.

A retired pilot and grandfather, Wayne Myers is also an ARS Master Rosarian, and the Chair for Gardens and Judges of the AGRS™ rose-trial program that identifies excellent, new, sustainable rose varieties. Wayne is a Master of Mistakes in Darwinian rose gardening in Northeast Florida.

All photos by Wayne Myers unless specified otherwise.