Tuesday, February 04, 2020

TTAB Finds "SMITHFIELD" Primarily Geographically Descriptive of Meat, Lard, and Offals

The Board affirmed a Section 2(e)(2) refusal to register the mark SMITHFIELD for "meat, lard, offals," finding the mark to be primarily geographically descriptive of the goods. Applicant argued that there are other cities (other than Smithfield, Virginia) named "Smithfield," but the Board found that the renown of Smithfield, Virginia for hams ("Smithfield Ham") overwhelmed the evidence regarding other locations. In re SF Investments, Inc., Serial No. 86793304 (January 30, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman, concurring opinion by Judge Elizabeth A. Dunn).

A mark is primarily geographically descriptive under Section 2(e)(2) if:
  • (1) The mark is the name of a place known generally to the public;
  • (2) The goods for which applicant seeks registration originate in the geographic place identified in the mark; and 
  • (3) Purchasers would be likely to believe that the goods originate in the geographic place identified in the mark. 

Considering all the evidence, the Board conluded that "Smithfield" is a generally known place (i.e., the name of a town in Virginia). Excerpts from the Columbia Gazetteer, Oxford Dictionaries, Wikipedia, applicant's website, and the Encyclopaedia Britannica indicated that the town is known as the "ham capital of the world." Moreover, applicant's prior Section 2(f) claims for the word SMITHFIELD were admissions that the term is not inherently distinctive.

Applicant argued that the legal and factual circumstances have changed since it last claimed acquired distinctiveness for "SMITHFIELD," However, applicant made such a claim as recently as 2016, and it should have focused on evidence subsequent to that date. Moreover, in the subject application, applicant did not make a Section 2(f) claim but rather relied on the argument that the primary significance of "SMITHFIELD" is applicant itself, not a geographic location. Therefore the evidence of applicant's renown as the "largest pork processor and hog producer in the world" cannot serve as a basis for allowing registration under Section 2(f).

The Board noted that, although there are larger cities named "Smithfield," in the context of the subject goods the public is likely to make a goods/place association with Smithfield, Virginia.

Smithfield is a generally known geographic location where well known, if not famous, Smithfield hams are processed. Further, Applicant previously has obtained registrations for SMITHFIELD under the provisions of Section 2(f) of the Trademark Act thereby conceding that SMITHFIELD was not inherently distinctive at least at the time those registrations issued. Applicant has not provided a sufficient explanation for what has changed since the last time Applicant registered SMITHFIELD under Section 2(f) so as to obviate its effective admissions that SMITHFIELD is not inherently distinctive.

The Board accordingly found that "SMITHFIELD" is the name of a place generally known to the public.

Applicant did not dispute that its goods originate in Smithfield, Virginia, Therefore, the Board may presume that the public will make a goods/place association between the mark and the goods. In any case, the Board found it undisputed that Smithfield, Virginia is known for specialty hams, and consumers are likely to believe that other products such as meat, lard, and offal are an expansion from applicant's traditional product line. Concluding that there is a "reasonable predicate or basis to find that the public will believe that meat (other than Smithfield ham), lard and offal originate in Smithfield, Virginia," the Board found that there is a goods/place association as required by Section 2(e)(2).

Therefore, the Board affirmed the refusal.

In a concurring opinion Judge Dunn would find the goods/place association not only on the evidence of the renown of Smithfield Ham, but also on the evidence that "ties Smithfield to pork products and byproducts, and so there is a direct goods/place association between Smithfield and meat, lard, and offals."

Read comments and post your comment here.

TTABlog comment: I'm a bit confused. "Smithfield Ham" seems to be a generic term. How, then, does this applicant own a registration for SMITHFIELD for hams?

Text Copyright John L. Welch 2020.


At 10:40 AM, Anonymous Anonymous said...

I wonder if anyone has ever looked at 2(e)(2) and 2(e)(3) refusals with respect to the distribution and distance from Alexandria, VA, of the geographic locations at issue - in other words, do the examiners and the TTAB tend to treat close-by locations differently because they might be more personally familiar with them? Do remote locations have an advantage because they may be relatively unknown? I'd bet that if you went to, say, Topeka, KS, or Lawton, OK, there would be a lot less "renown" for Smithfield, VA, for hams.

At 10:47 AM, Blogger Kevin W. Grierson said...

As to the term being generic, I thought about that too. "Smithfield Ham" is actually defined in a Virginia statute as ham cured in Smithfield, Virginia, and while that statute would not be binding on the feds, it does seem to indicate that the term is generic. Also of note, however, is that Smithfield Foods has been the only producer of Smithfield hams for quite some time now--Smithfield is a pretty small town.

At 12:29 PM, Anonymous Anonymous said...

Doesn't the fact that the Code of Virginia includes a definition of a "Smithfield ham" lead to the inescapable conclusion that SMITHFIELD is generic for ham?

§ 3.2-5419. Smithfield hams defined.
Genuine Smithfield hams are hereby defined to be hams processed, treated, smoked, aged, cured by the long-cure, dry salt method of cure and aged for a minimum period of six months; such six-month period to commence when the green pork cut is first introduced to dry salt, all such salting, processing, treating, smoking, curing, and aging to be done within the corporate limits of the town of Smithfield, Virginia.

§ 3.2-5420. Only genuine Smithfield hams to be labeled or advertised as such.
No person shall knowingly, label, stamp, pack, advertise, sell, or offer for sale any ham, either wrapped or unwrapped, in a container or loose, as a genuine Smithfield ham unless such ham be a genuine Smithfield ham as defined in § 3.2-5419.

§ 3.2-5421. Penalty for violation.
Any person violating any of the provisions of this article is guilty of a Class 4 misdemeanor.


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