In re SF Investments, Inc., 86793304

In re SF Investments, Inc.

No. 86793304

United States Patent and Trademark Office, Trademark Trial and Appeal Board

January 30, 2020

This Opinion Is Not a Precedent of the TTAB

Hearing: October 8, 2019

Matthew P. Frederick and John A Cullis of Reed Smith LLP for SF Investments, Inc.

Angela M. Micheli, Trademark Examining Attorney, Law Office 101 Ronald R. Sussman, Managing Attorney.

Before Bergsman, Goodman and Dunn, Administrative Trademark Judges.

OPINION

Bergsman, Administrative Trademark Judge:

SF Investments, Inc. (Applicant) seeks registration on the Principal Register of the mark SMITHFIELD, in standard characters, for "meat, lard, offals," in Class 29.^[1]

Applicant claimed that its mark SMITHFIELD has acquired distinctiveness in connection with "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."^[2]

Applicant also claimed ownership of the registered marks listed below:^[3]

1. Registration No. 2624764 for the mark SMITHFIELD, in typed drawing form, for "meat, excluding 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."^[4] The mark was registered under the provisions of Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), claiming that SMITHFIELD has acquired distinctiveness in connection with meat excluding specially processed ham.

2. Registration No. 2989997 for the mark SMITHFIELD, in stylized form reproduced below, for a "house mark for a full line of meat, excluding 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."^[5]

SMITHFIELD

The mark was registered under the provisions of Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), claiming that SMITHFIELD has acquired distinctiveness in connection with a full line of meat excluding specially processed ham.

3. Registration No. 4467457 for the mark SMITHFIELD and design, reproduced below, for "pork."^[6]

SMITHFIELD

The description of the mark provides that

Color is not claimed as a feature of the mark. The mark consists of a pig with wings flying over "SMITHFIELD" in a stylized font with a crescent on the left of the pig and "SMITHFIELD".

Applicant claimed acquired distinctiveness as to "Smithfield."

The Examining Attorney refused to register SMITHFIELD for "meats, lard, offals" under Section 2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2), on the ground that SMITHFIELD is primarily geographically descriptive of Applicant's goods.

Applicant contends that SMITHFIELD is not primarily geographically descriptive. Specifically, Applicant argues that "the Examining Attorney failed to: (1) properly define the class of relevant consumers; (2) show that 'Smithfield' is 'generally known' to the relevant American public as a town in Virginia; and (3) show that purchasers would be likely to believe that the goods originate in the geographic place identified in the mark."^[7]

At the outset, we find it helpful to define the products referred to in the descriptions of goods in Applicant's application and prior registrations. "Meat" is defined as, inter alia, "the flesh of animals used for food."^[8]

"Lard" is defined as "a soft white solid or semisolid fat obtained by rendering fatty pork."^[9]

"Offals" is defined, inter alia, as "meat, including internal organs (such as liver, heart, or kidney) and extremities (such as tail or hooves), that has been taken from a part other than skeletal muscles. Also called variety meat."^[10]

"Ham" is defined, inter alia, as "a cut of meat from the heavy-muscled part of a hog's rear quarter, between hip and hock, usually cured."^[11]

"Pork" is defined as "the flesh of hogs used as food."^[12]

A twist in this case is that although the description of goods for the application at issue is "meat, lard, offals," Applicant claimed that SMITHFIELD has acquired distinctiveness as applied to "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" (hereafter "specially processed hams from Smithfield, Virginia") but is inherently distinctive as to all other goods encompassed by the identification. At the oral hearing, both Applicant's counsel and the Examining Attorney agreed that for purposes of analyzing the Section 2(e)(2) primarily geographically descriptive refusal, the goods at issue should be interpreted as meat (including ham except specially processed ham from Smithfield, Virginia), lard, and offal. We agree because it is a logical way to incorporate the partial claim of acquired distinctiveness into the analysis of whether SMITHFIELD is primarily geographically descriptive inasmuch as it focuses the analysis on Smithfield, Virginia and meats other than specially processed ham from Smithfield, Virginia.

The following evidence has been made of record:

1. The Columbia Gazetteer of the World (columbiagazetteer.org) lists Smithfield as a town in Virginia that processes meat ("Manufacturing (meat processing)").^[13]

2. Food Encyclopedia (foodterms.com)

SMITHFIELD HAM

Considered by many to be the premier country-cured ham … To be accorded the appellation of "Smithfield," the hams must be cured and processed in the area of Smithfield, Virginia.^[14]

3. Oxford Dictionaries (oxforddictionaries.com)

Smithfield ham

A dry-cured ham produced near Smithfield, Virginia, from hogs that have fed on hickory nuts, acorns, and peanuts.^[15]

4. Wikipedia entry for Smithfield Ham

Smithfield ham is a specific form of country ham finish-cured in the town of Smithfield in the Isle of Wight County in the Hampton Roads region of Virginia.^[16]

5. Wikipedia entry for Smithfield, Virginia

Smithfield is a town in Isle of Wight County, in the South Hamptons Roads subregion of the Hampton Roads region of Virginia in the United States. …

The town is most famous for the curing and production of Smithfield ham. … [Applicant], based in Smithfield raises 12 million hogs and processes 20 million pounds of them annually.

* * *

Known as the ham capital of the world, Smithfield currently attracts many tourists. Smithfield's Historic District is a major attraction, with more than 70 contributing properties from the Colonial, Federal, and Victorian periods.^[17]

6. Smithfield Foods Inc. 10-K Report (January 3, 2016) stating that Applicant spent $211 million in advertising, generating sales of $14.4 billion.^[18]Applicant also states that it has "become the largest pork processor and hog producer in the world" producing and marketing "a wide variety of fresh meat and packaged meat products both domestically and internationally."^[19]In addition, Applicant states that its Smithfield, Virginia processing plant is part of its "Fresh Pork and Packaged Meats" segment encompassing "slaughtering and cutting hogs; fresh and packaged pork products."^[20]

7. Applicant's website (smithfieldfoods.com) stating that Applicant is the largest pork processor and hog producer in the world.^[21] "Based in Smithfield, Virginia … [Applicant is] the leader in numerous packaged meats categories."^[22] Further, Applicant states that "[t]he town of Smithfield's reputation for producing specialty hams and meats dated back to the late 1700s."^[23]

8. Washington Post article (July 20, 2018)

A sad day in Hamtown: Smithfield Foods close the one smokehouse making genuine Smithfield ham

SMITHFIELD, Va. - The local charity run is the Hog Jog. …

You could say that Smithfield is a little obsessed with pork products, but that would understate how deeply hogs are woven into the history and life of this town of about 8, 300 on a hill over the Pagan River. So it has come as a shock that Smithfield Foods is shuttering the last smokehouse that produces the area's signature product, the genuine Smithfield ham.

* * *

The salty, long-cured ham has been an area staple since the English colonists and their hogs arrived at nearby Jamestown in the early 1600s. There is a whole section of the Virginia State Code - Title 3.2, Chapter 54, Article 4 - entitled "Smithfield Hams."^[24] Just as the French define Champagne and the European Union protects Greek Feta cheese, the Virginia law dictates that genuine Smithfield ham is cured in Smithfield.

"Anybody can make a ham," said Jennifer England, Director of the local museum, where pig fanciers can keep tabs on a ham cured in 1902 via the online "Ham Cam." "But a Smithfield ham can only come from within the town itself."

* * *

The huge meatpacking plants on the edge of town slaughter more than 10, 000 hogs per day.

* * *

"The tourists come in looking for it specifically," said Leigh Abbott, general manager of the Smithfield Inn, which dates to 1752.^[25]

9. Yelp! (yelp.com) review for the Taste of...