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Omaha Steaks International, Inc. v. Greater Omaha Packing Co.

Famous Marks Analysis Does Not Require Strict Market Share Evidence

Omaha Steaks International, Inc. v. Greater Omaha Packing Co., __ F.3d __, 2018 WL 5985963 (Fed. Cir. Nov. 15, 2018) (PROST, O’Malley, Stoll) (TTAB) (3 of 5 stars)

Fed Cir vacates dismissal of Omaha Steaks’ opposition to GOP’s application to register GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF for meat. The TTAB erred when it found no likelihood of confusion with Omaha Steaks’ various marks (which all include “Omaha Steaks”). First, in its assessment of whether the Omaha Steaks marks were famous, the Board should have considered Omaha Steaks’ submission of evidence relating to its sales and marketing activity, and related evidence of the public’s exposure to its branded products. Bose Corp., 293 F.3d 1367 (Fed. Cir. 2002), which the TTAB had relied on, does not bar consideration of evidence that falls short of establishing the “market share” of branded products. Nor does Bose support the TTAB’s refusal to consider advertising expenses. Though Omaha Steaks did not submit copies of all the ads it ran, it was undisputed that all such ads used the words “Omaha Steaks” in connection with the branded products. On remand, the Board should reconsider whether Omaha Steaks has established the fame of its marks.

Also related to the fame inquiry, it was not abuse of discretion for the TTAB to disregard a survey conducted by Omaha Steaks’ expert, where significant methodological questions had been raised bearing on the survey’s reliability. And there was no harm from the TTAB declining to take judicial notice of various lawsuits Omaha Steaks had filed, allegedly to enforce its mark. “[T]he mere fact that lawsuits were filed is not reasonably probative of the fame inquiry[.]” Op. at *7. To the extent Omaha Steaks was asking the TTAB to pull case files and take judicial notice of their substance, there was no abuse of discretion in the TTAB declining to do so.

The TTAB also erred in its assessment of third-party usage of the contested mark. Per Century 21, 970 F.2d 874 (Fed. Cir. 1992), the TTAB should not have considered third-party use of “Omaha” for dissimilar [i.e., non-meat] services and products. The opinion rejects GOP’s contention that goods like popcorn, alcoholic beverages, or grocery delivery services were “similar” enough to consider. On remand, the TTAB should reconsider whether third parties are actually using “Omaha” for meat-related goods.

In its analysis of the similarity between the parties’ marks, the TTAB did not fail to consider the mark in its entirety. The opinion notes that the TTAB’s decision correctly recited the entire mark seven times. Its omission of “BEEF” from a single sentence appears to have been a typographical error. However, as part of the TTAB’s analysis of this factor relied on its third-party use findings, the conclusions are vacated; on remand the TTAB should reconsider similarity.

KEYWORDS: TRADEMARK; OPPOSITION; LIKELIHOOD OF CONFUSION; FAMOUS MARKS; THIRD-PARTY USE