16 November 2018Trademarks

Federal Circuit resurrects trademark beef

The US Court of Appeals for the Federal Circuit yesterday revived a trademark dispute between two beef wholesalers.

In 2013, Greater Omaha Packing sought to register ‘Greater Omaha Providing The Highest Quality Beef’ as a trademark in class 29 for meat, including boxed beef “primal” cuts.

The figurative mark included the silhouette of a cow and ‘Greater Omaha’ appears in a larger font size than the other words.

Competitor Omaha Steaks opposed the trademark’s registration on the basis of its own earlier-registered marks.

Delivering the judgment yesterday, November 15, Chief Circuit Judge Sharon Prost said that Omaha Steaks has more than two-dozen trademarks registrations which all include the words ‘Omaha Steaks’.

Omaha Steaks claimed to have spent more than $50 million on advertising its steaks annually, and all its processed meat is sold under one of the ‘Omaha Steaks’ trademarks.

The applied-for mark would therefore cause confusion in consumers’ minds as to the source of the goods, due to its similarity to the prior-registered ‘Omaha Steaks’ marks, Omaha Steaks argued.

In 2017, the Trademark Trial and Appeal Board (TTAB) dismissed the opposition.

The board said that Omaha Steaks had not shown that its marks are famous, and third-party use of ‘Omaha’ on products (such as meat, wine, and popcorn) sold by other companies suggests that the word ‘Omaha’ indicates a geographic location rather than a single commercial source.

According to the TTAB, the differences between the prior-registered marks and the applied-for mark outweigh their similarities.

Omaha Steaks appealed against the decision, claiming that the TTAB ignored evidence depicting the fame of its marks.

On appeal, Omaha Steaks also claimed that the board relied on too broad a range of goods in considering third-party uses of ‘Omaha’ on similar goods, and that the TTAB should not have ignored the word ‘beef’ in the applied-for mark when considering similarity.

The board had concluded that ‘Greater’ and 'Omaha’ are the largest words dominating the mark, and the other words comprise a “laudatory slogan”.

Yesterday, the Federal Circuit agreed that the TTAB “made certain errors while analysing the fame of the registered mark, third-party usage, and similarity of the marks”.

Prost said that although the board acknowledged the investment that Omaha Steaks put into advertising, it made the “legally flawed” decision that the “‘raw’ figures lacked context”.

Omaha Steaks had rather provided “considerable contextual evidence”, she said.

In relation to third-party use, Prost noted that the relevant goods are meat and beef, but the board “considered a variety of services and products that include the word ‘Omaha’, regardless of whether they involve meat”.

On this basis, the TTAB had determined that ‘Omaha’ is weak as an indicator of commercial source.

The Federal Circuit said it must be “emphasised” that this assessment should be limited to similar goods and services, whereas the board based its analysis on irrelevant evidence of unrelated goods.

Next, Prost said that the board did not err in its analysis of the applied-for mark’s dominant elements. However, as it had erred in its analysis of the other aspects (like the role of ‘Omaha’), the TTAB’s decision in relation to the marks’ similarity must also be vacated, the Federal Circuit concluded.

“The board’s findings regarding third-party use improperly relied on marks found on dissimilar goods and services not directed to the relevant public,” Prost explained.

The court remanded the matter for further proceedings.

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