Omaha Steaks International v. Greater Omaha Packing Co.
908 F.3d 1315 (2018)
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Rule of Law:
In a trademark likelihood of confusion analysis, an evaluation of third-party use of a similar mark must be limited to uses on similar goods directed at the relevant public. Furthermore, evidence of a mark's fame, such as substantial advertising expenditures, must be considered in the context of the advertising's nature and reach, and does not strictly require proof of market share.
Facts:
- Omaha Steaks International, Inc. ('Omaha Steaks') began as Table Supply Meat Company in 1917 and started using the name Omaha Steaks around 1959.
- Omaha Steaks acquires large cuts of meat ('subprimals'), processes them, and sells the packaged meat under its various registered 'Omaha Steaks' marks.
- From 2011 to 2013, Omaha Steaks spent over $45-50 million annually on domestic advertising, promoting its beef products through national television, radio, print, direct mail, and social media.
- Greater Omaha Packing Co., Inc. ('GOP') was formed in 1956 and sells boxed beef fabricated from whole carcasses primarily to wholesalers, such as hotels and restaurants.
- GOP has been a continuous supplier of beef to Omaha Steaks since 1966.
- On April 8, 2013, GOP filed an application to register the mark 'GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF' along with a steer head design for goods including 'meat, including boxed beef primal cuts'.
Procedural Posture:
- Greater Omaha Packing Co., Inc. ('GOP') filed a trademark application (Serial No. 85/897,951) with the U.S. Patent and Trademark Office.
- Omaha Steaks International, Inc. filed an opposition to GOP's application before the Trademark Trial and Appeal Board ('Board'), alleging a likelihood of confusion with its registered marks.
- On September 30, 2017, the Board dismissed the opposition, concluding there was no likelihood of confusion.
- Omaha Steaks (Appellant) appealed the Board's decision to the U.S. Court of Appeals for the Federal Circuit, with GOP as the Appellee.
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Issue:
Did the Trademark Trial and Appeal Board legally err in concluding that the mark 'GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF' is not likely to cause confusion with the 'OMAHA STEAKS' family of marks by misapplying the standards for evaluating the fame of the senior mark and the scope of third-party use?
Opinions:
Majority - Chief Judge Prost
Yes. The Board legally erred in its likelihood of confusion analysis. In evaluating a mark's fame, it is legal error to disregard substantial advertising and sales figures for lacking 'context' when the record contains considerable evidence of the type and nationwide reach of the advertising campaigns. The court's precedent in Bose does not require market share data as the sole means of providing context for 'raw' advertising expenditures. The Board also erred in its analysis of third-party use by considering marks on goods dissimilar to meat, such as popcorn and alcoholic beverages. The sixth DuPont factor requires the analysis to be confined to 'similar marks in use on similar goods' because use on unrelated products does not condition the relevant consuming public to distinguish between marks in the market at issue. Because the Board's conclusion on the similarity of the marks was tainted by its flawed third-party use analysis, that finding is also vacated.
Analysis:
This decision clarifies and reinforces the evidentiary standards for the fame and third-party use factors in the likelihood of confusion analysis. It lowers the evidentiary burden for proving fame by confirming that contextual evidence of advertising's nature and scope can suffice without requiring specific market share data, which can be difficult to obtain. The ruling also strengthens trademark protection by narrowly construing the third-party use defense, preventing marks from being weakened by irrelevant uses in disparate markets. This precedent makes it more difficult for a trademark tribunal to discount substantial, un-rebutted evidence of fame and prevents the improper dilution of a mark's strength based on unrelated third-party uses.
