Friday, October 13, 2017

GREATER OMAHA Not Confusable With OMAHA STEAKS for Meat, Says TTAB

In a 74-page opinion, the Board dismissed an opposition to the mark GREATER OMAHA & Design, shown below left, finding the mark not likely to cause confusion with the registered mark OMAHA STEAKS, both for meat. However, it sustained petitions to cancel registrations for the marks shown below center and right, finding the marks to be confusable with the registered marks OMAHA STEAKS and OMAHA STEAKS ANGUS, respectively. Omaha Steaks International, Inc. v. Greater Omaha Packing Co., Inc., Consolidated Opposition No. 91213527 and Cancellations Nos. 92059629 and 92059455 (September 30, 2017) [not precedential] (Opinion by Judge Jyll Taylor).

GREATER OMAHA & Design: Plaintiff Omaha Steaks, Inc. claimed that its OMAHA STEAKS mark is famous, but its evidence lacked context and failed to convey the extent to which customers recognize the mark. It sales figures were impressive, but there was no indication as to how they translate into market share. The Board was uncertain as to which of the OMAHA STEAKS marks was being advertised and how they are perceived by customers.

In view of the extreme deference accorded to famous marks, a party claiming fame must "clearly prove it." Plaintiff demonstrated a "reasonable degree of recognition," but the evidence was insufficient to support a finding that the marks are famous, "particularly in light of the fact that Petitioner's OMAHA STEAKS marks are not inherently distinctive."

Defendant asserted that the OMAHA STEAKS marks are extremely weak due to third party use and registration of marks and names in which the first word is OMAHA, for beer or food services. Moreover, the city of Omaha, Nebraska, is widely known as a geographic source of beef. In addition, defendant has used the GREATER OMAHA mark for 96 years, has sold its products to plaintiff since the 1950s, and its sales have increased to nearly $1.7 billion in 2015. Therefore, defendant contended, consumers have been conditioned to associate GREATER OMAHA with defendant, further proving the weakness of the OMAHA STEAKS mark.

Citing Jack Wolfskin and Juice Generation, the Board found that the designation OMAHA, when used in a mark, "may be perceived as an indication of the geographic location of the producer of the goods or the geographic origin of the goods themselves. Because many companies may be located in OMAHA, the power of this term to indicate a single commercial source is reduced." Consequently, a mark comprising the word OMAHA for the involved goods and/or services is entitled to only a narrow scope of protection.

Turning to the marks, defendant's mark is dominated by the phrase GREATER OMAHA, while plaintiff's is dominated by OMAHA, since STEAKS has been disclaimed. Even though defendant disclaimed all of the words in its mark, the words cannot be ignored, and the words GREATER OMAHA can still be dominant.

The Board found the word GREATER to be a "prominent point of difference that causes Defendant's marks to differ in appearance and sound from Plaintiff's mark." The additional wording in each mark also contributes to the differences between the marks.

In short, although there are similarities between the marks, the marks are specifically different in sound, appearance and meaning. When the geographically descriptive term “Omaha” is viewed with the evidence of third-party uses of OMAHA trademarks and trade names, these differences outweigh the similarities, resulting in different overall commercial impressions.

The Other Two: The Board found that defendant's registered marks are dominated by the words OMAHA HEREFORD and OMAHA NATURAL ANGUS, respectively. Although the word OMAHA in plaintiff's marks is weak, the Board did not find any elements to distinguish defendant's marks from plaintiff's marks.

Laches: Plaintiff delayed for 46 months before filing its petition for cancellation of the OMAHA NATURAL ANGUS registration. However, the Board found laches inapplicable for two reasons: first, plaintiff's delay was excusable because defendant had not been in the retail market space until it recently contemplated a move in that direction; and second, confusion between the marks is inevitable.

Read comments and post your comment here.

TTABlog comment: Hat tip to Friend of the Blog and fellow Bostonian, Steve Samuels, for his efforts on behalf of Greater Omaha.

Text Copyright John L. Welch 2017.


At 2:24 PM, Anonymous Anonymous said...

I am not sure what the Board meant by "GREATER OMAHA can still be dominant"?

"Greater" means "designating a city or country and its adjacent area"

How does GREATER become a dominant portion? Like New, Improved, Better?


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