SF Investments, Inc.

Trademark Trial and Appeal Board

Jan 24, 2008

No. 78645618 (T.T.A.B. Jan. 24, 2008)

Mailed:
January 24, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re SF Investments, Inc.
________

Serial No. 78645616
Serial No. 786456181
_______

Carl H. Pierce of Reed Smith LLP for SF Investments, Inc.

Pamela Y. Willis, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Seeherman, Quinn, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

SF Investments, Inc. filed use-based applications for
the mark THE SMITHFIELD COLLECTION, in standard character
form (Serial No. 78645616), and THE SMITHFIELD COLLECTION
and design (Serial No. 78645618), shown below, both for the
following services:
Mail order catalog services featuring
meat, seafood, and poultry; sauces and
marinades; peanuts; soups; cheese; pet
treats; cookbooks; candy and desserts;

1 Because the same applicant filed both applications, the same
Examining Attorney reviewed both applications, and both
applications involve common issues of fact and law, we have
consolidated the appeals.

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
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gift baskets; nuts; and grilling
accessories; and computerized on-line
retail store services in the fields of
meat, seafood, and poultry; sauces and
marinades; peanuts; soups; cheese; pet
treats; cookbooks; candy and desserts;
gift baskets; nuts; and grilling
accessories, in Class 35.

Applicant claimed ownership of Registration No. 2624764 for
the mark SMITHFIELD for the products listed below:
Meat, excluding hams, processed,
treated, smoked, aged, and cured by the
long-cure, dry salt method of cure and
aged for a minimum of six months when
such six-month period commences when
the green pork cut is first introduced
to dry salt and all such salting,
processing, treating and aging is done
within the corporate limits of the town
of Smithfield, Virginia, in Class 29.

The SMITHFIELD mark was registered under the provisions of
Section 2(f) of the Trademark Act of 1946, 15 U.S.C.
§1052(f).
During the prosecution of both applications, applicant
disclaimed the exclusive right to use “Collection.”
In application Serial No. 78645616, the examining
attorney refused registration under Section 2(e)(2) of the
Trademark Act of 1946, 15 U.S.C. §1052(e)(2), on the ground
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that the mark THE SMITHFIELD COLLECTION, when applied to
applicant’s mail order and retail online store services, is
primarily geographically descriptive. With respect to
application Serial No. 78645618, the Examining Attorney
made a final requirement that applicant disclaim the
exclusive right to use “Smithfield” on the ground that
“Smithfield” is primarily geographically descriptive.
The examining attorney contends that “Smithfield” is
primarily geographically descriptive because “Smithfield”
is a geographic place and applicant’s services originate
from Smithfield thereby creating a services-place
association.
In response to the refusals, applicant argues that the
examining attorney failed to make a prima facie case that
“Smithfield” is primarily geographically descriptive for
the following reasons:
1. The primary significance of “Smithfield” is
Smithfield Foods, applicant, not a geographic
location; and,
2. There is no services-place association because
“Smithfield, Virginia is a small, remote town,”
and that consumers will not perceive it as a
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geographic location associated with applicant’s
services.2
The following evidence has been made of record:3
1. A dictionary definition of “Smithfield”
indicating that “Smithfield” is the name of 9 cities in the
United States, including Smithfield, Virginia;4
2. An excerpt from applicant’s website identifying
applicant as the “world’s largest pork processor and hog
producer” and stating that it is located in Smithfield,
Virginia;5
3. An excerpt from applicant’s website referencing
information from its latest annual report with the
following information:
A. Applicant has $5.7 billion in assets;
B. Applicant has $11.4 billion in sales;
C. Applicant has net income of $296 million;

2 Applicant’s Brief, pp. 6-7.
3 Applicant filed exhibits with its brief and reply brief. “The
record in an application should be complete prior to the filing
of an appeal. The Trademark Trial and Appeal Board will
ordinarily not consider additional evidence filed with the Board
by the appellant or the examiner after the appeal is filed.”
Trademark Rule 2.142(d). To the extent that the evidence
attached to applicant’s brief was not submitted prior to the
filing of the appeal (or request for reconsideration), it has not
been given any consideration.
4 Ultralingua web: The Language Site (www.ultralingua.net).
5 www.smithfieldfoods.com.
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D. Applicant is the fifth largest beef producer
in the United States;
E. Applicant is the world’s largest pork
processor and hog producer; and,
F. Applicant has a 6% market share;
4. Copies of the following “Smithfield”
registrations owned by applicant in which the exclusive
right to use “Smithfield” is disclaimed:
Mark Reg. No. Goods

SMITHFIELD BY
LUTER
1104410 Fresh meats, hams, bacon,
sausage, franks, and lard

OLDE SMITHFIELD 1140468 Fresh sausage, bacon, and ham

OLDE SMITHFIELD 1441351 Frankfurters

SMITHFIELD PREMIUM 2292349 Meat

5. Copies of the following “Smithfield”
registrations owned by applicant in which the mark is
registered under the provisions of Section 2(f) of the
Trademark Act of 1946:
Mark Reg. No. Goods

SMITHFIELD 2624764 Meat

SMITHFIELD 2989997 A house mark for a full line
of meat
SMITHFIELD
PREFERRED STOCK
3059618 Meat

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6. A printout from a YAHOO! People Search displaying
10 out of 27 listings for people with the surname
Smithfield;
7. An excerpt from applicant’s website with a
copyright notice indicating that applicant is located in
Portsmouth, Virginia;6
8. The homepage from the website of Smithfield,
Virginia which identifies itself as “The Ham Capital of the
World”;7
9. The Wikipedia entry for Smithfield, Virginia.8
The entry provides the following information:
The town originally founded in the 17th
century as a seaport, is most famous
for the curing and production of ham.
The Virginia General Assembly passed a
statute defining Smithfield ham by law
in 1926. 9

6 www.smithfieldcollection.com. Applicant’s specimen filed with
the original application also displays a copyright notice with a
Portsmouth, Virginia address. Portsmouth is approximately 20
miles southeast of Smithfield. (The Road Atlas, pp. 106-107
(Rand McNally 2000)). Portsmouth and Smithfield are both in the
South Hampton Roads region of Virginia. The Board may take
judicial notice of the location of Portsmouth, Virginia vis-à-vis
Smithfield, Virginia. Pinocchio’s Pizza v. Sandra Inc., 11
USPQ2d 1227, 1229 n.6 (TTAB 1989).
7 www.smithfieldva.gov.
8 Applicant submitted the Wikipedia entry.
9 Section 3.1-867 of the Virginia Code reads as follows:

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
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Today, Smithfield Foods, a Fortune 500
Company which owns Smithfield Packing
Company and others, is the world’s
largest pork processor and hog
producer. The company, based in
Smithfield, processes 20 million hogs
and raises 12 million annually.

10. The hit list from a search on the Google search
engine for “Smithfield.”10 The first two hits are
applicant’s website at www.smithfieldfoods.com. The third
hit reads as follows:
Smithfield
Famous for hams from Smithfield,
Virginia, our site offers recipes using
a wide range of pork products and
recipe videos with Paula Dean.
www.smithfield.com/ - 12k – Cached –
Similar pages

In addition to the evidence and the arguments of
applicant and the Examining Attorney, the Board takes
judicial notice of the following gazetteer information:11
Smithfield . . . 6. town . . . Isle of
Wright co., SE Va., 11 mi/18km W of

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.

The Board may take judicial notice of the laws of any
jurisdiction. Quaker Oats Co. v. Acme Feed Mills, Inc., 192 USPQ
653, 655 (TTAB 1976).
10 Applicant submitted the Google search results.
11 See The University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co. Inc., 213 USPQ 594 (TTAB 1982), aff’d 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983); In re Consolidated Specialty
Restaurants Inc., 71 USPQ2d 1921, 1927 (TTAB 2004).
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Newport News, . . . Mfg. (meat
processing).12

Section 2(e)(2) of the Trademark Act of 1946 provides
that registration shall not be refused unless a mark is
primarily geographically descriptive of applicant’s goods
or, as made applicable by Section 3, its services. In
order for registration to be properly refused on this basis
it is necessary to show that (i) the mark sought to be
registered is the name of a place known generally to the
public, and that (ii) the public would make a
services/place association (i.e., believe that the services
listed in the application originate from the place). In re
California Pizza Kitchen, Inc., 10 USPQ2d 1704, 1705 (TTAB
1989), citing In re Societe Generale des Eaux Minerals de
Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1452 (Fed. Cir.
1987). See also, In re John Harvey & Sons Ltd., 32 USPQ2d
1451, 1453 (TTAB 1994). When the primary significance of
the name is geographic, and the services of the applicant
are rendered from the named place, a public association of
the service with the place will be presumed. In re
California Pizza Kitchen, Inc., supra; In re Handler Fenton
Westerns, Inc., 214 USPQ 848, 850 (TTAB 1982).

12 The Columbia Gazetteer of North America, p. 963 (2000).
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First, we note that applicant already owns three
registrations for SMITHFIELD that were obtained under the
provisions of Section 2(f). By seeking registration under
Section 2(f), applicant conceded, with these registrations,
that “Smithfield” is primarily geographically descriptive.
See Yamaha International v. Hoshino Gakki, 840 F.2d 1572, 6
USPQ2d 1001, 1005 (Fed. Cir. 1988) (when a mark is
registered under the provisions of Section 2(f), “the
statute accepts a lack of inherent distinctiveness as an
established fact”); Omnicom Inc. v. Open Systems Inc., 19
USPQ2d 1876, 1878 (TTAB 1989) (registrant’s claim of
secondary meaning pursuant to Section 2(f) is evidence that
the mark in question is not inherently distinctive).
In any event, the record shows that “Smithfield” is a
generally known name of a town in Virginia where applicant
is located, it is referred to as the ham capital of the
world, and it is famous for the production and curing of
hams. See Ultralingua web: The Language Site
(www.ultralingua.net); applicant’s website
(wwww.smithfieldfoods.com); the Smithfield, Virginia
website (www.smithfieldva.gov); the Wikipedia entry for
Smithfield; and The Columbia Gazetteer of North America.
Accordingly, Smithfield, Virginia is a place generally
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known to the public. This satisfies the first part of the
test.
We have considered applicant’s argument that
“Smithfield is also a surname and identifies more than one
geographic location. However, given the evidence regarding
the recognition of Smithfield, Virginia, as detailed above,
these other meanings do not affect the perception of
consumers and potential consumers that “Smithfield” is
primarily the name of a geographic location.13 On this
record, we find the primary geographical significance of
SMITHFIELD is not displaced or overcome by the fact that
there are some people who have this as a surname or that
there are other geographical locations with this name. In
re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 868
(Fed. Cir. 1985); In re Opryland USA Inc., 1 USPQ2d 1409,
1413 (TTAB 1986); In re Cambridge Digital Systems, 1 USPQ2d
1659, 1662 (TTAB 1986).
The second part of the test is whether the consuming
public would make a services/place association (i.e.,
whether the relevant public would believe that applicant’s
services originate in the place named by the mark). The

13 Applicant was only able to show 27 surname listings from the
Yahoo! People Search. The low number of listings indicates that
“Smithfield” is such a rare surname that it is unlikely to affect
the perception of Smithfield as primarily a geographic location.
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record establishes that Smithfield, Virginia is well known
for producing ham. The Wikipedia entry for Smithfield
provides that Smithfield “is most famous for the curing and
production of ham.” The third listing in the Google search
engine hit list for “Smithfield” reads as follows:
Smithfield
Famous for hams from Smithfield, Virginia . . .
On its homepage, Smithfield, Virginia proclaims itself as
“The Ham Capital of the World.” Internet based evidence
may be probative of how the public perceives a term. In re
Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828,
1833 (Fed. Cir. 2007); In re IP Carrier Consulting Group,
84 USPQ2d 1028, 1032 (TTAB 2007) (Wikipedia evidence is
admissible); In re Total Quality Group, Inc., 51 USPQ2d
1474, 1475-1476 (TTAB 1999) (information retrieved from the
Internet is probative to the extent that it is information
available to the public, and of the way in which a term is
used by the public); TMEP §710.01(b) (5th ed. 2007)
(“Articles downloaded from the Internet are admissible as
evidence of information available to the general public,
and of the way in which the term is being used by the
public”). In addition, on its website, applicant
identifies itself as the “world’s largest pork processor
and hog producer,” and that it is based in Smithfield,
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Virginia. Finally, Smithfield is noted for meat processing
in The Columbia Gazetteer of North America.
Because Smithfield is noted for the curing and
production of ham, consumers would naturally believe that
mail order and online retail store services featuring other
related food products such as meat, seafood, and poultry
also emanate from Smithfield. In re Save Venice New York
Inc., 259 F.3d 1346, 59 USPQ2d 1778, 1784 (Fed. Cir. 2001)
(“the registrability of a geographic mark may be measured
against the public’s association of that region with both
its traditional goods and any related goods or services
that the public is likely to believe originate there”); In
re California Pizza Kitchen, supra at 1706 (“It is the
perception of the public as to the geographical
significance of the mark which controls whether
registration be refused pursuant to Section 2(e)(2), not
whether an application also renders the services or
manufactures some of the goods outside of the geographical
area named in the mark”).
Finally, although applicant admits that Smithfield is
a town in Virginia, it nevertheless contends that the
primary significance of “Smithfield” is applicant, not the
town in Virginia. In essence, applicant argues that
the evidence demonstrates that the name “Smithfield” has
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acquired secondary meaning as a mark, and thus shows that
the primary significance of that name is applicant, not a
geographic location.14
Applicant’s arguments regarding the “primary
significance,” or acquired distinctiveness, of its mark
might be relevant if applicant were seeking registration
pursuant to Section 2(f) of the Trademark Act of 1946.
However, applicant has not claimed the benefits of Section
2(f), and, without a formal claim of distinctiveness under
Section 2(f), the evidence of applicant’s advertising and
promotion, sales success, and substantially exclusive and
continuous use of the SMITHFIELD mark for many years cannot
serve as the basis for allowing registration of applicant’s
marks. Cf In re Industrie Pirelli, 9 USPQ2d 1564, 1565
(TTAB 1988) (evidence of fame and prior registration cannot
serve as the basis for allowing the registration of a name
that is primarily merely a surname without a claim of
secondary meaning pursuant to Section 2(f); In re
McDonald’s Corporation, 230 USPQ 304, 307 (TTAB 1986)
(evidence of secondary meaning in the absence of a claim of
secondary meaning pursuant Section 2(f) does not make a
mark that is primarily merely a surname registrable).

14 Applicant’s Brief, pp. 3-5; Applicant’s Reply Brief, pp. 3-5.
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In view of the foregoing, we find that consumers would
believe that applicant’s mail order and retail online
services featuring meat, seafood, and poultry rendered
under the mark SMITHFIELD have their origin in Smithfield,
Virginia.
Decision: The refusal to register the mark THE
SMITHFIELD COLLECTION (Serial No. 78645616) is affirmed.15
The refusal to register the mark THE SMITHFIELD
COLLECTION and design (Serial No. 78645618) based on
applicant’s refusal to disclaim the exclusive right to use
“Smithfield” is affirmed. However, if applicant submits
the required disclaimer of “Smithfield” to the Board within
thirty days of the mailing date of this decision, this
decision will be set aside as to the affirmance of the
disclaimer requirement.16 See Trademark Rule 2.142(g).

15 Once an application has been considered and decided by the
Board on appeal, an application may not be reopened to amend the
application or to submit additional evidence, except to enter a
disclaimer or upon order of the Director. Trademark Rule
2.142(g). Applicant should note, however, that in the case sub
judice, because an amendment to Section 2(f) will require
additional examination, a petition to the Director to reopen
examination will be denied. In re Petite Suites Inc., 21 USPQ2d
1708 (Comm’r 1991).
16 The standard printing format for the required disclaimer text
in this application is as follows: “No claim is made to the
exclusive right to use “The Smithfield Collection,” apart from
the mark as shown. TMEP §1213.08(a)(i) (5th ed. 2007).