CAFC Vacates and Remands TTAB's OMAHA STEAKS v. GREATER OMAHA Decision

The CAFC vacated the TTAB's September 30, 2017 decision in Omaha Steaks International, Inc. v. Greater Omaha Packing Co., Inc., Consolidated Opposition No. 91213527 and Cancellations Nos. 92059629 and 92059455 [TTABlogged here] in which the Board found the mark GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF & Design (shown below) for "meat, including boxed beef primal cuts" not likely to cause confusion with the registered mark OMAHA STEAKS for meat. The appellate court found that the Board's analysis regarding the fame of the OMAHA STEAKS mark was "legally flawed," and that the Board's consideration of third-party uses "improperly relied on marks found on dissimilar goods and services not directed to the relevant public." Omaha Steaks International, Inc. v. Greater Omaha Packing Co., Inc., 128 USPQ2d 1686 (Fed. Cir. 2018) [precedential].

Omaha Steaks challenged the Board's decision in three areas: first, it contended that the Board ignored evidence of the fame of the OMAHA STEAKS marks under the fifth du Pont factor; second, it argued that the Board relied on a much broader range of goods lacking any similarity to meat products when evaluating the sixth du Pont factor, which examines the number and nature of third-party uses of similar marks on “similar goods;” and third, it maintained that the Board’s analysis of the similarity between the marks was flawed because the Board ignored the word “BEEF” in Greater Omaha's slogan "Providing the Highest Quality Beef."

Fame: As to the evidence of fame (i.e., commercial strength) under the fifth du Pont factor, the court agreed with Omaha Steaks that the TTAB's discounting of its evidence of fame was "legally flawed." The Board concluded that Omaha Steaks' "raw" figures regarding sales and advertising expenditures lacked context and it therefore disregarded them. The Board interpreted Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1370 (Fed. Cir. 2002), as requiring evidence of "market share," not just sales and advertising figures. Not so, said the CAFC: "Though Bose expressly approves of using market share, it does not require it."

Omaha Steaks provided considerable contextual evidence of the type of advertisements and promotions it uses to gain sales, including testimony as to how it promoted its products through catalogs, direct mailings, e-mail marketing, customer calls, tradeshows, retail stores, national television, radio, magazine and newspaper campaigns, digital marketing, and social media. The CAFC concluded that the Board finding of lack of context for Omaha Steaks' "raw" sales and advertising figures lacked substantial evidence.

In light of our holding in Bose, 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, we vacate and remand to allow the Board to conduct a proper analysis of this factor.

The CAFC ruled that the Board did not err in finding that Omaha Steaks' survey evidence was flawed and lacked probative value because the universe surveyed was too narrow. Nor did the Board err in refusing to take judicial notice of the contents of the complaints filed in various litigations identified by Omaha Steaks. "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."

Third-party uses: The sixth du Pont factor considers “[t]he number and nature of similar marks in use on similar goods.” In re du Pont, 476 F.2d at 1361. Third-party use is “relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection,” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373 (Fed. Cir. 2005), because consumers have become accustomed to distinguishing between different marks "on the bases of minute distinctions." Id. at 1374.

Although the Board found the involved goods to be legally identical, it "considered a variety of services and products that include the word 'Omaha,' regardless of whether they involve meat." Although finding that this evidence was “not overwhelming," the Board deemed the evidence sufficient to support a finding that the term 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." The Board then determined that "OMAHA" is weak as a source indicator and that marks including the word OMAHA are entitled to only a narrow scope of protection.

The Board’s analysis was flawed. As we underscored in Century 21, the “relevant du Pont inquiry is ‘[t]he number and nature of similar marks in use on similar goods.’” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir. 1992) (quoting Weiss Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 1548 (Fed. Cir. 1990)).

The Board cited to a list of businesses with OMAHA in their names, offering diverse products like popcorn, wine, oriental food, and alcoholic beverages. The CAFC observed that "these goods bear no relationship to meat or meat-based products. Accordingly, such goods are not 'similar' to meat products."

Greater Omaha argued that these third party products are "similar" to meat because they are food products. The court was unmoved. It found no evidence that these other products are related to meat.

GOP’s mark on meat products cannot escape a likelihood of confusion with Omaha Steaks’ prior use on meat products in the relevant market for meat purely because other “Omaha” marks are being used by third parties on popcorn, alcoholic beverages, or other food products. Independent of these third-party uses on other goods, there may still be confusion between Omaha Steaks’ marks and GOP’s new mark for consumers purchasing meat.

Because the Board's analysis under the sixth du Pont factor was "fatally flawed," the court vacated its finding and remanded the case with instructions to the Board to "reweigh the limited, relevant evidence of third-party use." [The remaining evidence consisted of third-party meat products from meat processing or packaging companies, such as B.I.G. Meats Omaha, Omaha Beef Company, and Omaha Meat Processors.]

Where's the BEEF? Omaha Steaks' third argument rested on a single sentence in the Board opinion: "Defendant’s mark is dominated by the words GREATER OMAHA; they are the first words in the mark, are visually larger than the laudatory slogan, 'PROVIDING THE HIGHEST QUALITY,' and are the words that would be used to call for the goods." The CAFC observed that the omission of the word BEEF appeared to be a typographical error, and it noted that on seven other occasions the Board correctly referred to the entire slogan.

The CAFC concluded that the Board had "adequately assessed the slogan," and in fact had found the slogan to be one of the differences in the overall appearances of the involved marks. In short, there was no error in the Board's analysis.

However, because the Board's findings regarding the strength of the term OMAHA were vacated, the Board must reconsider its conclusion under the first du Pont factor.

Conclusion: "For the foregoing reasons, we vacate the Board’s decision that there is no likelihood of confusion between Omaha Steaks’ and GOP’s marks, and we remand for further proceedings consistent with this opinion."

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TTABlog comment: The CAFC's treatment of third-party uses leaves something to be desired. Don't the uses of OMAHA-containing marks for popcorn, wine, etc., show the weakness of OMAHA as a formative because they confirm that the term is used as a geographic descriptor for food that originates in Omaha, where Omaha Steaks is located?

Text Copyright John L. Welch 2018.