You never really need to wonder where the beef empanadas are, inside the display case, at least at Whole Foods, given the literal “beef” branding — visible on the edge of each outer dough shell.

This is a good example of a word appearing on a product that does not function as a trademark, as it does not satisfy the 3 elements of: identifying, distinguishing, and indicating a product’s source.

Instead, the word “beef” above connotes what’s inside, the primary ingredient of each empanada — you might say, it is merely informational, incapable of serving a trademark or brand purpose.

While “beef” could be a perfectly suitable and suggestive trademark for something not containing that meat, like clothing (assuming it’s available); as it is above, it’s simply a generic designation.

I’m thinking Whole Foods is missing out on an opportunity to also imprint on its empanadas a symbol that designates where they came from, who put them out, their source, don’t you think?

VirginiaBrandHam

Every once in a while, the word “brand” appearing on product packaging surprises me, because my earlier understanding of the word preceding it spells generic, not brand. Just like the above.

Shopping in Whole Foods this past weekend, the above shown VIRGINIA BRAND designation called out like a neon sign from behind the glass of the meat counter, so I had to capture the image.

When speaking about the risk of trademark genericide, I’ll often refer to nervous trademark types behind the scenes influencing packaging to help educate consumers against a generic meaning.

Some of my favorite examples are Band-Aid® Brand Adhesive Bandages, Kleenex® Brand Tissue, and Jell-O® Brand Gelatin Dessert. We’ve referenced many others in our Genericide Watch.

Yet, there was something different about the VIRGINIA BRAND designation. First, the typical ® federal registration symbol is missing, as most brands worried about becoming generic are federally-registered. What’s more, as much as I love VIRGINIA, the name of a State simply lacks the inherent distinctiveness of the previously mentioned coined words that were made up to serve the specific purpose of serving as trademarks. Coined marks are uniquely susceptible to degeneration through genericide, but inherently generic wording begins and ends there.

To me, Virginia was a type or category of ham, either coming from Virginia or perhaps employing a common type of smoking or curing that originated in Virginia, either way generic, not a brand.

Turns out, VIRGINIA BRAND is a federally-registered trademark for packaged prepared meats, but it appears to be owned by White Packing Co., Inc. of Fredericksburg, Virginia, not Wellshire Farms West of Palm Coast, Florida, the latter trademark owner having used this label specimen to federally-register the WELLSHIRE logo (note the small print indicating MADE IN MARYLAND):

VirginiaBrandLabel

When lots of different and unrelated brands of ham offer Virginia and/or Virginia Brand ham, say Boar’s Head, Sara Lee, Black Bear, Eckrich, can Virginia and/or Virginia Brand really be a brand?

VirginiaBrandHamSpecimen

In other words, if anyone can sell their version of “Virginia Brand” ham, doesn’t that turn the notion of “brand” on its head, or at least on a boar’s head?

Just because someone calls a duck a goose, doesn’t make it a goose, right?

And, in terms of geography, just because someone calls its ham Virginia, doesn’t make it a brand either (especially when it’s made in Maryland or North Carolina).

Let’s just say, I’m more than likely to be confused here. Anyone able to make sense of this brand conundrum? Perhaps an easy job for Dr. Seuss and his famous character Sam-I-Am?

In terms of consequences, might the Virginia Brand federal trademark registration fairly be considered deadwood, suitable for smoking your next Easter Dinner ham?

Above the Law recently published a Techdirt story reporting that the USPTO denied Whole Foods‘ attempt to federally-register the laudatory trademark: “World’s Healthiest Grocery Store“.

The Techdirt story incorrectly seems to suggest that the global nature of the phrase is what caused the application to be refused, since Whole Foods has not yet achieved a truly global reach, according to a Washington Post article.

Truth be told, actually there is no connection between the extent of Whole Foods’ global reach and the USPTO’s decision to initially refuse registration, contrary to the Techdirt story.

In fact, the USPTO didn’t focus on whether the phrase is true, because it is laudatory and “merely describes a feature or characteristic of applicant’s services,” such that the consuming public would view it as mere puffery, not susceptible to actual proof of its truth.

Had the USPTO thought the phrase was capable of proof and it disbelieved the claim, it would have sought to refuse registration under the deceptiveness registration bar of Section 2(a) of the Lanham Act, but it didn’t.

In fact, the USPTO offered up to Whole Foods — once it puts in evidence of its use of the phrase as a trademark — an amendment from the Principal to the Supplemental Register, a more suitable address for non-deceptive marks capable of becoming distinctive in the future.

Of course, one of the principal benefits of a Supplemental Registration is that it prevents others from registering confusingly similar marks while the brand owner works to build and acquire the requisite distinctiveness needed for a Principal Registration.

In the end, it will be interesting to see how Whole Foods responds to the USPTO’s laudatory and descriptiveness registration refusal.

I’m thinking before it jumps at the USPTO’s Supplemental Register offer, it may try to argue against the descriptiveness refusal in the same way it successfully did for its federally-registered “America’s Healthiest Grocery Store” trademark application, when back in 2010 it overcame a similar laudatory and merely descriptive registration refusal of the highly similar mark.

So, while it’s clear that the truth of the phrases comprising the those “healthiest” marks had nothing to do with the initial laudatory/merely descriptive registration refusals, what’s not clear to me is why the USPTO didn’t refuse registration based on a prior Supplemental Registration for “The World’s Healthiest Foods” mark — owned by these folks.