Fame: The CAFC concluded that the Board, in assessing the fame of the OMAHA STEAKS mark ((i.e, strength of the mark under the Fifth DuPont factor), “took an overly restrictive view of evidence related to Omaha Steaks’ sales figures, advertising expenditures, and related evidence of the relevant public’s exposure to its branded meat products bearing on the relative fame of the mark.” The Board observed that these figures were not placed in the context of market share and so it disregarded them, relying on Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1370 (Fed. Cir. 2002). Not so, said the CAFC: “Though Bose expressly approves of using market share, it does not require it.” Moreover, Omaha Steaks provided considerable contextual evidence of the type of advertisements and promotions it uses to gain sales, including testimony as to how it promoted its products through catalogs, direct mailings, e-mail marketing, customer calls, trade shows, retail stores, national television, radio, magazine and newspaper campaigns, digital marketing, and social media.
The Board therefore re-visited the evidence of fame and found that the OMAHA STEAKS mark “has garnered considerable consumer recognition, which correlates with substantial sales.” The Board followed the CAFC’s directive in according no probative value to third-party uses of the word OMAHA in connection with goods and services (e.g., oriental foods and gifts, popcorn, restaurant and café services) that are not “similar” to the goods in the pleaded registration, i.e., “meat.” A few uses of OMAHA in connection with beef-related business were insufficient to weaken the OMAHA STEAKS mark.
The Board concluded that “Plaintiff’s OMAHA STEAKS mark, as a whole, has achieved a strong degree of fame on the spectrum of “very strong to very weak.”
Turning to the inherent strength of the OMAHA STEAKS mark, Greater Omaha submitted 118 third-party applications and registrations (both live and dead) for marks that include the word “OMAHA,” and in which that term is disclaimed. The Board found that none of the third-party registrations had any probative value: the overwhelming majority of the registrations are cancelled, and the remainder covered unrelated goods and services.
The Board noted, however, that the OMAHA STEAKS registration issued under Section 2(f) with a disclaimer of the generic term “steaks.” Therefore, the mark is not inherently distinctive. The Board also found that OMAHA is “geographically descriptive of the location of a city,” and concluded that “OMAHA is conceptually weak as a source indicator.” Moreover, the evidence showed that Omaha “is widely known as a place beef comes from.” And the relevant third-party uses of OMAHA-formative marks “show geographic use of the word OMAHA in trademarks or trade names used in connection with meat.”
Notwithstanding our finding that OMAHA STEAKS, as a whole, is entitled to a high degree of protection on the fame continuum, we find the component word OMAHA to be geographically descriptive and, thus, we make clear that Plaintiff has not demonstrated exclusive rights to the word OMAHA by itself. Similarly, the word STEAKS, alone, is highly descriptive if not generic, as used in connection with Plaintiff’s identified meat and, accordingly, it is a less significant component of Plaintiff’s mark.
The Marks: The Board found that plaintiff’s mark is dominated by the word OMAHA, whereas Defendant’s mark is dominated by GREATER OMAHA. “The additional matter in the two marks, i.e., the slogan and steer head design in Defendant’s mark and the generic term STEAKS in Plaintiff’s mark, while less dominant, also contribute to the differences in appearance and sound between them.” With regard to meaning, the word OMAHA connotes a geographic location in both marks. The addition of GREATER to Defendant’s mark gives it a meaning of a metropolitan region, while the addition of STEAK to Plaintiff’s mark “imparts to it a meaning of food, particularly steak from Omaha.”
Although there are similarities between the marks, the marks are specifically different in sound, appearance and meaning, and these differences, including the absence of the word STEAKS in Defendant’s mark, outweigh the similarities, resulting in different overall commercial impressions. The only similarity is the geographically descriptive word OMAHA, which for reasons noted above, is not likely to be regarded as the proprietary or exclusive mark of any single provider of meat.
Conclusion: The Board found that “the likely perception of OMAHA as a geographic indicator is a factor entitled to significant weight in our likelihood of confusion analysis.” That fact, coupled with the differences in the marks, “outweighs the legal identity of the goods, the presumed identical trade channels, and the fame that Plaintiff has demonstrated in the mark OMAHA STEAKS.” And so the Board again dismissed the opposition.
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TTABlogger comment: Another hat tip to Friend of the Blog and fellow Bostonian, Steve Samuels, for his persistent efforts on behalf of Greater Omaha.
Text Copyright John L. Welch 2020.