United States: The Federal Circuit Weighs In On Evidentiary Considerations For Famous Marks And Analyzes Third-Party Usage

Last Updated: December 27 2018
Article by Jason S. Oliver

The Court of Appeals for the Federal Circuit recently held that the Trademark Trial and Appeal Board (TTAB) erred in concluding that there is no likelihood of confusion between Omaha Steaks International's registered trademarks and Greater Omaha Packing Company's (Greater Omaha) GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF trademark. Most significantly, the Federal Circuit held that the TTAB erred in analyzing the fame of the registered trademarks and third-party usage, in connection with the likelihood of confusion factors enumerated in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (the DuPont Factors). The TTAB's prior ruling was vacated in Omaha Steaks International, Inc. v. Greater Omaha Packing Co., Inc., 908 F.3d 1315 (Fed Cir. 2018), and the case was remanded for further proceedings.

Omaha Steaks owns more than two dozen registered trademarks, all of which include the words "Omaha Steaks." Greater Omaha, which sells boxed beef, filed an application to register its trademark, GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF. The application was for the following goods in International Class 29: "meat, including boxed beef primal cuts." Omaha Steaks opposed Greater Omaha's trademark, alleging likelihood of confusion. In dismissing the opposition, the TTAB concluded, inter alia, that the Omaha Steaks trademarks were not famous. Omaha Steaks appealed the TTAB's findings, and argued that the TTAB improperly rejected and misapplied its evidence in connection with the likelihood of confusion analysis enumerated in the DuPont Factors.

  1. Fame of the trademark and related evidence.

The fifth DuPont Factor concerns the fame of the mark. Omaha Steaks supplied the TTAB with its advertising expenditures and sales figures as evidence of the fame of its marks. Omaha Steaks spent more than $45 million in 2011 to advertise its beef products and processed approximately 100,000 orders per day during peak holiday ordering season. With respect to evidence of fame, the Federal Circuit held that the TTAB improperly interpreted Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367 (Fed. Cir. 2002), to require evidence of market share, and disregarded as evidence Omaha Steaks' raw advertising and sales figures data. The TTAB further concluded that Omaha Steaks' evidence lacked context in how the company established evidence of actual market share. On appeal, Chief Judge Prost noted that market share evidence is not required under Bose Corp. and that Omaha Steaks did provide significant contextual evidence concerning the forms of advertisements it employed nationwide to achieve sales. Thus, the appellate court noted that evidence of the substantiality of the sales or advertising figures for comparable types of products is another form of "context" for advertising expenditures or sales figures. The court vacated and remanded the TTAB's prior ruling to allow the TTAB to conduct a proper fame analysis under this DuPont factor.

Despite the Federal Circuit's remand, it bears mention that the court concluded that the TTAB did not abuse its discretion in failing to take judicial notice of Omaha Steaks' prior trademark lawsuits as evidence of fame. The Federal Circuit noted that the fame inquiry centers on whether the mark achieved extensive public recognition, rather than the owner's prior enforcement efforts, which are not reasonably probative of the fame inquiry.

  1. Third-party trademark usage.

The sixth DuPont Factor concerns the number and nature of similar marks in use on similar goods. On appeal, Omaha Steaks argued that the TTAB improperly considered unrelated products and services that include the word "Omaha," regardless of whether they involve meat. The TTAB concluded that "OMAHA" was a weak indicator of commercial source and that trademarks relying on it were entitled only to narrow protection, and also that such a term "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 Federal Circuit disagreed with the TTAB's analysis and clarified that the controlling inquiry is the degree of third-party marks in use on similar goods or services. Likewise, the court disagreed with Greater Omaha's argument that these third-party products were similar to meat because they are food products. The court went on to note that the TTAB relied on a wide range of third-party products, including wine, Asian food, popcorn and other alcoholic beverages. Accordingly, since these goods had no relationship to meat or meat products, the Federal Circuit held that the TTAB based its decision on irrelevant evidence and that its analysis under the sixth DuPont Factor constituted legal error. Accordingly, the TTAB's findings were vacated, and the issue was remanded to the TTAB with instructions to reweigh the limited relevant evidence of third-party usage under the sixth DuPont Factor. The Federal Circuit also vacated the TTAB's findings on the similarity of the marks analysis (first DuPont Factor) to the extent it relied on a flawed third-party usage analysis and remanded for further review.

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