TTAB Mi-STEAK-enly Evaluated Evidence in Determining No Likelihood of Confusion

McDermott Will & Emery

McDermott Will & Emery

Addressing the Trademark Trial and Appeal Board’s (TTAB’s) treatment of certain evidence in its likelihood of confusion analysis, the US Court of Appeals for the Federal Circuit vacated and remanded the TTAB’s dismissal of the opposition of a steak company using the geographic word “Omaha” against the application of a meat packer also using “Omaha” as part of its mark. Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., Inc., Case No. 18-1152 (Fed. Cir., Nov. 15, 2018) (Prost, CJ).

Omaha Steaks sells processed meat in connection with various OMAHA STEAKS trademarks and has done so since 1959. Greater Omaha Packing (GOP) has been in business since at least as early as 1956 and sells boxed beef to wholesalers such as hotels, restaurants and even Omaha Steaks. In 2013, GOP filed a trademark application for GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF and design, covering “meat, including boxed beef primal cuts” in International Class 29.

Omaha Steaks opposed, alleging a likelihood of confusion with its previously registered Omaha Steaks marks covering nearly identical goods.

The TTAB dismissed the opposition, finding no likelihood of confusion because:

  • Omaha Steaks failed to show that its marks were famous.
  • Third-party use of “Omaha” indicated that it functioned as a geographic indication and was therefore entitled to a narrow scope of protection.
  • The differences between the marks outweighed the similarities.

On appeal, Omaha Steaks presented three arguments:

  • The TTAB improperly disregarded Omaha Steaks’ fame evidence.
  • The TTAB incorrectly relied on evidence of third-party marks in connection with dissimilar goods.
  • The TTAB ignored the word “BEEF” when analyzing the similarity of the marks.

With respect to the fame of Omaha Steaks’ marks, the Federal Circuit agreed that the TTAB had improperly disregarded the advertising expenditure and sales figures, stating that “[the TTAB’s] fact-findings [] confirm that due to Omaha Steaks’ sales and marketing efforts, the consuming public has been regularly exposed to Omaha Steaks’ marks on a nationwide scale.” Furthermore, despite GOP’s argument to the contrary, no specific examples of the underlying advertisements were necessary where “[i]t is undisputed that the tradename ‘Omaha Steaks’ and related uses in its marks are what is being promoted, not a separate brand merely associated with its house mark.” The Court did agree, however, with the TTAB’s decision to disregard Omaha Steaks’ survey evidence, stating that the survey universe was “fatally” narrow, as it was composed only of Omaha Steaks’ customer base and not meat purchasers generally. Further, the TTAB’s refusal to take judicial notice of Omaha Steaks’ trademark lawsuits was harmless error because “the mere fact that lawsuits were filed is not reasonably probative of the fame inquiry,” and the TTAB “is not required to scour . . . the multiple pleadings referenced in those dockets to determine the substance of the litigations referenced.” Nevertheless, the Court vacated and remanded for the TTAB to conduct a proper analysis of the fame of the marks.

The Court also agreed with Omaha Steaks’ second argument on appeal, namely that the TTAB erroneously considered third-party OMAHA marks regardless of whether they covered similar goods (i.e., meat) in its analysis of the number and nature of similar marks used on similar goods, which could show that a mark is relatively weak. Accordingly, the Court vacated the TTAB’s finding with respect to evidence of third-party use and instructed the TTAB to reevaluate the more limited universe of evidence.

Finally, Omaha Steaks argued that the TTAB’s comparison of the similarity of the marks was flawed because it improperly relied on the irrelevant third-party OMAHA marks and failed to consider the opposed mark’s use of BEEF. On this issue, the Federal Circuit disagreed with Omaha Steaks, explaining that “[t]he absence of ‘BEEF’ from a single sentence in the [TTAB’s] order appears to be nothing more than a typographical error.”

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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