IP Law Daily TTAB erred in assessing likelihood of confusion between OMAHA STEAKS and applied-for mark
Thursday, November 15, 2018

TTAB erred in assessing likelihood of confusion between OMAHA STEAKS and applied-for mark

By Peter Reap, J.D., LL.M.

The Trademark Trail and Appeal Board erred in finding that there is no likelihood of confusion between Omaha Steaks International’s over two dozen registered marks, each containing the words "Omaha Steaks," and Greater Omaha Packing Company’s applied for GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF mark (the Opposed Mark), the U.S. Court of Appeals for the Federal Circuit has ruled in a precedential opinion. The board erred in analyzing the fame of the registered marks, third-party usage, and similarity of the marks. The TTAB’s ruling was vacated and the case remanded for further proceedings (Omaha Steaks International, Inc. v. Greater Omaha Packing Co., Inc., November 15, 2018, Prost, S.).

Omaha Steaks processes cuts of meat and sells them under an Omaha Steaks mark. It has over two-dozen registrations for Omaha Steaks marks. Greater Omaha Packing Company (GOP) sells boxed beef, which is beef fabricated from whole carcasses. In 2013, GOP filed an application to register the mark "GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF" and design (Serial No. 85/897,951). The application was for the following goods in International Class 29: "meat, including boxed beef primal cuts."

Omaha Steaks filed an opposition, alleging that the Opposed Mark was likely to cause confusion in consumers’ minds as to the source of the goods due to its similarity to the registered Omaha Steaks marks. The TTAB dismissed the opposition, and Omaha Steaks appealed.

Likelihood of confusion. Whether a likelihood of confusion exists between an applicant’s mark and a previously registered mark is determined on a case-by-case basis, aided by application of the thirteen DuPont factors, the court noted. In re E. I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973).

Fame. Omaha Steaks argued that the Board improperly rejected its advertising expenditures and sales figures as evidence of the fame of its marks. The Board acknowledged that Omaha Steaks spent over $45 million in 2011 to advertise its beef products. Furthermore, the Board determined that during the December holiday season Omaha Steaks processes 100,000 orders per day. The Board, however, concluded that these "raw" figures lacked context and therefore disregarded them. The Board concluded that while these sales figures "appear impressive," Omaha Steaks has not provided "any context for them, i.e., how they translate into evidence of market share for Plaintiff’s goods."

The Board misread the Federal Circuit opinion in Bose, according to the court. Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1370 (Fed. Cir. 2002). The Board interpreted Bose to require evidence of resulting "market share." The holding in Bose was not so narrow. Market share is but one way of contextualizing ad expenditures or sales figures. Though Bose expressly approves of using market share, it does not require it. It merely stated that in light of modern advertising, "raw numbers alone in today’s world may be misleading." Id.

Here, Omaha Steaks provided considerable contextual evidence of the type of advertisements and promotions it uses to gain sales. The Board’s fact-findings confirmed that due to Omaha Steaks’ sales and marketing efforts, the consuming public has been regularly exposed to Omaha Steaks’ marks on a nationwide scale. Based on this undisputed record, the Board’s conclusion that Omaha Steaks did not provide any context for its "raw" sales figures and ad expenditures lacked substantial evidence.

GOP also seemed to argue that Omaha Steaks’ evidence of fame should be disregarded because the record did not include copies of the underlying advertisements. But the need to comb through the content of the ads was not necessary here, the court observed. In light of the direct overlap between the company’s name and its marks, it was undisputed that an Omaha Steaks ad involved either its registered tradename, "OMAHA STEAKS," or one of its registered trademarks displaying that name.

The Board took an overly restrictive view of evidence related to Omaha Steaks’ sales figures, advertising expenditures, and related evidence of the relevant public’s exposure to its branded meat products bearing on the relative fame of the mark. Accordingly, the Board’s ruling was vacated and remanded to allow the Board to conduct a proper analysis of this DuPont factor.

Survey evidence. Omaha Steaks next contended that a survey conducted by its expert, Mr. Hal Poret, further evidenced fame and was improperly disregarded. The Board found the expert’s survey questions were self-servingly directed to a narrow universe of respondents, exclusively comprised of Omaha Steaks’ customer base.

The Board concluded that "the relevant public would comprise ordinary consumers who eat meat and beef, not just Plaintiff’s current customer base." Despite this broad relevant public, Mr. Poret deliberately excluded a large segment of these consumers. It was not an abuse of discretion to conclude such unreliable evidence lacks probative value, the court reasoned.

Judicial notice of lawsuits. Omaha Steaks next argued that the Board improperly refused to take judicial notice of its various trademark lawsuits. But, the mere fact that lawsuits were filed was not reasonably probative of the fame inquiry, which is focused on whether the mark has achieved extensive public recognition, not on enforcement efforts. Any error in refusing to take judicial notice of the case filings was thus harmless. To the extent Omaha Steaks was asking the Board to take judicial notice of the contents of the complaints filed in those cases, the Board is not required to scour, not just the dockets, but the multiple pleadings referenced in those dockets to determine the substance of the litigations referenced, the Federal Circuit said.

Third-party usage. Omaha Steaks next challenged the Board’s analysis of the sixth DuPont factor regarding third-party usage. The Board considered a variety of services and products that include the word "Omaha," regardless of whether they involve meat. The Board then concluded that while this evidence is "not overwhelming, it is sufficient" to find that the designation OMAHA "may be perceived as an indication of the geographic location of the producer of the goods or the geographic origin of the goods themselves." Based on this finding, the Board determined that "OMAHA" is weak as an indicator of commercial source. Thus, marks relying in whole or in part on "OMAHA"—such as the Omaha Steaks marks—are only entitled to narrow protection.

The Board’s analysis was flawed, the Federal Circuit decided. The controlling inquiry is the extent of third-party marks in use on similar goods or services. The Board relied on a diverse range of third-party products, such as "popcorn," "wine," "oriental foods," and "alcoholic beverages." These goods bear no relationship to meat or meat-based products. Accordingly, such goods are not "similar" to meat products. Because the Board based its narrow decision on irrelevant evidence of unrelated goods, its analysis under the sixth factor was legally flawed. The Board’s finding was vacated and the Board instructed to reweigh the limited, relevant evidence of third-party use.

Similarity of the marks. Turning to the similarity of the marks, the first DuPont factor, Omaha Steaks’ first argued that because the Board omitted the word "BEEF" from its reproduction of the slogan in the GOP mark, it failed to consider the mark in its entirety. This argument was rejected because the absence of "BEEF" from a single sentence in the Board’s order appeared to be nothing more than a typographical error.

Omaha Steaks’ next argued that the Board’s analysis of this factor relied on its findings regarding third-party use. As these findings have now been vacated, the court vacated the Board’s conclusion under this first factor and remanded for further analysis.

This case is No. 18-1152.

Attorneys: Nora Marie Kane for Omaha Steaks International, Inc. I. Stephen Samuels (Samuels & Hiebert, LLC) for Greater Omaha Packing Co., Inc.

Companies: Omaha Steaks International, Inc.; Greater Omaha Packing Co., Inc.

MainStory: TopStory Trademark FedCirNews

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