from the United States Patent and Trademark Office, Trademark
Trial and Appeal Board in Nos. 91213527, 92059455, 92059629.
Marie Kane, Omaha Steaks International, Inc., Omaha, NE,
argued for appellant.
Stephen Samuels, Samuels & Hiebert, LLC, Boston, MA,
argued for appellee.
Prost, Chief Judge, O'Malley and Stoll, Circuit Judges.
Steaks International, Inc. ("Omaha Steaks") appeals
a decision of the Trademark Trial and Appeal Board
("Board") dismissing its opposition (No. 91213527)
to Greater Omaha Packing Co., Inc.'s ("GOP")
application to register the mark "GREATER OMAHA
PROVIDING THE HIGHEST QUALITY BEEF" ("Opposed
Mark") for meat, including boxed beef primal cuts. The
Board concluded that there is no likelihood of confusion
between the Opposed Mark and Omaha Steaks' previously
registered trademarks. We conclude that the Board made
certain errors while analyzing the fame of the registered
mark, third-party usage, and similarity of the marks.
Accordingly, we vacate and remand.
began as Table Supply Meat Company in 1917. Around 1959,
Appellant started doing business as Omaha Steaks. Omaha
Steaks acquires "subprimals," or larger cuts of
meat (such as the loin or bovine loin), for further
processing. It cleans them up, takes the tendons off, and
packages the processed meat for sale under an Omaha Steaks
Steaks has over two-dozen registrations for Omaha Steaks
marks. All of those registrations include the words
to Mr. Todd Simon, Omaha Steaks' senior vice president of
sales and marketing, the company spent over $45 million in
2011, and over $50 million in 2012 and 2013, on domestic
advertising of its beef products. Omaha Steaks advertises its
products through national radio, television, and freestanding
Steaks has been featured in national newspapers, magazines,
television shows, and movies. It further promotes its
products via catalog and direct mail, a daily blast e-mail,
customer calls, and on social media platforms, including
Twitter, Instagram, Pinterest, and Facebook. The direct mail
advertising program operates on a rotating basis, soliciting
about 2 million customers throughout the year.
Steaks has seventy-five retail stores as well as two airport
kiosks. It sells its products online via Amazon as well.
1920, GOP's predecessor was formed as an unincorporated
company in Omaha, Nebraska called Greater Omaha Packing
Company. In 1956, the owners formed Greater Omaha Packing
Co., Inc. at the same location. GOP sells boxed beef, which
is beef fabricated from whole carcasses. It is sold to
wholesalers, such as hotels, restaurants, and food service
institutions. GOP has continuously sold beef to Omaha Steaks
from 1966 to the present.
April 8, 2013, GOP filed an application to register the mark
"GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF"
and design (Serial No. 85/897, 951). The application was for
the following goods in International Class 29: "meat,
including boxed beef primal cuts."
mark and design appear as follows:
November 15, 2013, Omaha Steaks filed an opposition against
the GOP mark and design. Omaha Steaks alleged that the
Opposed Mark was likely to cause confusion in consumers'
minds as to the source of the goods due to its similarity to
the registered Omaha Steaks marks.
September 30, 2017, the Board dismissed the opposition. The
Board concluded there was no likelihood of confusion between
GOP's Opposed Mark and Omaha Steaks' marks. To arrive
at that result, the Board found inter alia that (1) Omaha
Steaks did not show that its marks are famous, (2)
third-party use shows that the word "Omaha" may
indicate geographic location rather than a single commercial
source, and (3) the differences between the GOP and Omaha
Steaks marks outweigh their similarities. Omaha Steaks
appeals the Board's decision.
jurisdiction under 28 U.S.C. § 1295(a)(4)(B).
Steaks challenges three aspects of the Board's conclusion
that there is no likelihood of confusion. First, Omaha Steaks
contends that the Board ignored evidence of the fame of its
marks under the fifth DuPont factor. Second, Omaha
Steaks argues that the Board relied on a much broader range
of goods lacking any similarity to meat products when
evaluating the sixth factor, which examines the number and
nature of third-party uses of similar marks on "similar
goods." Third, Omaha Steaks contends that the
Board's analysis of the similarity between the
parties' marks was flawed because it ignored the word
"BEEF" in GOP's slogan, "PROVIDING THE
HIGHEST QUALITY BEEF."
review the Board's legal conclusions de novo and its
factual findings for substantial evidence. In re Pacer
Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003).
to 15 U.S.C. § 1052(d), the U.S. Patent and Trademark
Office ("PTO") has authority to refuse to register
an applicant's mark where it is so similar to a
previously registered mark "as to be likely, when used
on or in connection with the goods of the applicant, to cause
confusion." Whether a likelihood of confusion exists
between an applicant's mark and a previously registered
mark is determined on a case-by-case basis, aided by
application of the thirteen DuPont factors.
Citigroup Inc. v. Capital City Bank Grp., Inc., 637
F.3d 1344, 1349 (Fed. Cir. 2011); see also In re E. I.
DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA
1973) (reciting factors).
of the DuPont factors presents a question of fact,
findings with regard to which we test for substantial
evidence when called into question on appeal." Bose
Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1370
(Fed. Cir. 2002). However, we review the Board's overall
determination of likelihood of confusion without deference.
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
1356, 1366 (Fed. Cir. 2012).
are three parts to Omaha Steaks' challenge to the
Board's conclusion that its Omaha Steaks marks are not
famous. First, Omaha Steaks argues the admitted evidence
confirms the fame of its marks. Second, it contends that the
Board inappropriately excluded the Poret survey, which
evidenced consumer recognition of its marks. Third, it
asserts that the Board abused its discretion by refusing to
take judicial notice of its trademark lawsuits, which
demonstrate fame given that others are imitating its marks.
We address each argument in turn.
Steaks argues that the Board improperly rejected its
advertising expenditures and sales figures as evidence of the
fame of its marks. A mark "with extensive public
recognition and renown deserves and receives more legal
protection than an obscure or weak mark." Kenner
Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350,
353 (Fed. Cir. 1992). "Direct evidence of fame, for
example from widespread consumer polls, rarely appears in
contests over likelihood of confusion." Bose,
293 F.3d at 1371. Instead, "the fame of a mark may be
measured indirectly, among other things, by the volume of
sales and advertising expenditures of the goods traveling
under the mark, and by the length of time those indicia of
commercial awareness have been evident." Id.
Board acknowledged that Omaha Steaks spent over $45 million
in 2011 to advertise its beef products. That number increased
to over $50 million in 2012 and 2013. J.A. 37. Furthermore,
the Board determined that during the December holiday season
Omaha Steaks processes 100, 000 orders per day. J.A. 26-27.
The Board, however, concluded ...