Selling trees/changing names

[Mahindra3016]

I will have enough trees to sell to some friends and coworkers, maybe put a few on facebook marketplace if i have some left. My question is about selling Liberty and Goldrush, Can i sell them calling them Goldrush and Liberty, or will i have to call them something else? These are the only two varieties that i am not sure about.

 

[Turkey Creek]

Neither tree is under patent anymore. Goldrush might be trademarked though you will see that is very inconsistently marked as such when looking from sight to sight, though I honestly dont believe it is trademarked.

 

[yoderjac]

Not specific to these two varieties, but in general thee are two things you need to watch out for. One is patent infringement and the second is trademark infringement. They are different. If a variety is under patent, you can not clone it through any method and sell it under any name without the patent holder getting paid through some sort of licensing agreement. Once you profit from something under patent, you violate the patent. For example Auburn patented the AU Buck III and IV Chinese chestnuts and licensed the patent to the Wildlife Group. I don't know if the licensing agreement is exclusive or non-exclusive, but a competitor can not come into the market place graft and sell AU Buck III or IV trees regardless of what they call them.

Trademark infringement is independent of patent law. One good example is Dunstan chestnuts. Years ago Mr. Dunstan held a patent on a specific cross of Chinese and American chestnuts. Until that patent ran out, you could not legally clone those trees and sell them under any name. In addition, Chestnut Hill trademarked the name Dunstan Chestnut. Now that the patent ran out, you can clone and sell those trees, but you can't sell them under the name Dunstan.

In general, with tree, the patent has been on the full combination of DNA. That meant you could use seeds and nuts from patented varieties to produce trees and would not be infringing on a patent since seedlings have a substantially and uniquely different combination of DNA. Recent GMO science has changed that. Here the patent is held on the specific gene or genetic sequence. For example you can not harvest RR soybean seed and sell it as seed without an agreement with Monsanto. The same potential exists for trees. There was a recent announcement of a GMO American chestnut that is blight resistant.

Good luck with your endeavor!

Thanks,

Jack

 

[Prof.Kent]

Not specific to these two varieties, but in general thee are two things you need to watch out for. One is patent infringement and the second is trademark infringement. They are different. If a variety is under patent, you can not clone it through any method and sell it under any name without the patent holder getting paid through some sort of licensing agreement. Once you profit from something under patent, you violate the patent. For example Auburn patented the AU Buck III and IV Chinese chestnuts and licensed the patent to the Wildlife Group. I don't know if the licensing agreement is exclusive or non-exclusive, but a competitor can not come into the market place graft and sell AU Buck III or IV trees regardless of what they call them.

Trademark infringement is independent of patent law. One good example is Dunstan chestnuts. Years ago Mr. Dunstan held a patent on a specific cross of Chinese and American chestnuts. Until that patent ran out, you could not legally clone those trees and sell them under any name. In addition, Chestnut Hill trademarked the name Dunstan Chestnut. Now that the patent ran out, you can clone and sell those trees, but you can't sell them under the name Dunstan.

In general, with tree, the patent has been on the full combination of DNA. That meant you could use seeds and nuts from patented varieties to produce trees and would not be infringing on a patent since seedlings have a substantially and uniquely different combination of DNA. Recent GMO science has changed that. Here the patent is held on the specific gene or genetic sequence. For example you can not harvest RR soybean seed and sell it as seed without an agreement with Monsanto. The same potential exists for trees. There was a recent announcement of a GMO American chestnut that is blight resistant.

Good luck with your endeavor!

Thanks,

Jack

I read about that GMO American chestnut that is blight resistant (Google: The American chestnut tree has a good shot at making a comeback ). Our grandchildren may see American Chestnuts again. I wish I could live to see mature forests of them again.

 

[Mahindra3016]

Thanks, I got an Aztec fuji from acn last year, they sent me non propagation agreement in the mail, funny thing is that it says on their page that it is only sold to commercial growers, and the other funny thing was that i'm 99% sure i ordered a regular fuji, oh well, i have the special kind now.

 

[Appleman]

Thank you Professor Kent for explaining US Patent protection and the workings of licensing agreements granted by the patent holder. I often get calls from folks across the US looking to obtain scion wood of the Franklin tree for grafting purposes. The Franklin tree is under an exclusive licensing agreement with Stark Bro's Nursery and can only be propagated legally by them. The Franklin is available through Stark (see 2018 and 2019 Catalog) and at several other smaller nurseries that were wholesale purchased through Stark.

 

[SmallChunk]

Are you able to share scion with a Patent if you don't plan on selling the apples? Or is that still infringement?

 

[Prof.Kent]

Thank you Professor Kent for explaining US Patent protection and the workings of licensing agreements granted by the patent holder. I often get calls from folks across the US looking to obtain scion wood of the Franklin tree for grafting purposes. The Franklin tree is under an exclusive licensing agreement with Stark Bro's Nursery and can only be propagated legally by them. The Franklin is available through Stark (see 2018 and 2019 Catalog) and at several other smaller nurseries that were wholesale purchased through Stark.

I think all the patent info was posted by yoderjack. But you're welcome.

 

[chickenlittle]

The patent prohibits unauthorized propagation regardless of whether you are selling or trading or giving away for free. Patents are good for 20 years from the filing date.

 

[yoderjac]

Are you able to share scion with a Patent if you don't plan on selling the apples? Or is that still infringement?

First, let me say, I'm not an attorney and am not offering legal advice. Having said that, it is my understand that without the permission of the patent holder, making, using, offering to sell, selling, or importing into the US a patented item it is an infringement on the patent. Lawsuits against individuals for non-commercial patent infringement is pretty rare, but that does not make it legal.

This stuff can get pretty technical quickly. There is both direct and indirect infringement. I would consult an attorney before taking any action.

Thanks,

Jack

 

[aerospacefarmer]

The patent prohibits unauthorized propagation regardless of whether you are selling or trading or giving away for free. Patents are good for 20 years from the filing date.

They have to catch you first lol. They better duck if they are coming to my Orchard lol

 

[Northbound]

Thank you Professor Kent for explaining US Patent protection and the workings of licensing agreements granted by the patent holder. I often get calls from folks across the US looking to obtain scion wood of the Franklin tree for grafting purposes. The Franklin tree is under an exclusive licensing agreement with Stark Bro's Nursery and can only be propagated legally by them. The Franklin is available through Stark (see 2018 and 2019 Catalog) and at several other smaller nurseries that were wholesale purchased through Stark.

If you know any nursery that still has some please inform. Stark Web site has said no longer available since December

 

[yoderjac]

They have to catch you first lol. They better duck if they are coming to my Orchard lol

I would guess the reason you don't see many lawsuits against individuals for non-commercial use is because the damages they could collect are less than the cost of the suit.

 

[aerospacefarmer]

I would guess the reason you don't see many lawsuits against individuals for non-commercial use is because the damages they could collect are less than the cost of the suit.

True

 

[Mortenson]

Geez I thought this was a harmless hobby!

 

[yoderjac]

The place you see a lot of name changing is with american persimmons. Very few of these are under patent. Many of the names are very arbitrary. For example, much of the persimmon work was done by Jim Claypool. I got a hold of the old Claypool records. His trees were basically named by position in his orchard.

Many of these have now been branded under trade names by individual orchards. Precocious trees that produced persimmons that were flawed for commercial uses were often marketed as "Deer XXXX"

Thanks,

Jack