Sometimes we just have to do some trademark stuff — not politics, not free speech, not branding, but the meat and potatoes of our craft.  And that inevitably means we’ll be starting with a post from TTABlog regarding a trademark decision by the Court of Appeals for the Federal Circuit (CAFC):

When it comes to the trademark OMAHA STEAKS, that may or may not be the question

The CAFC vacated the TTAB’s September 30, 2017 decision in Omaha Steaks International, Inc. v. Greater Omaha Packing Co., Inc., Consolidated Opposition No. 91213527 and Cancellations Nos. 92059629 and 92059455 [TTABlogged here] in which the Board found the mark GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF & Design (shown below) for “meat, including boxed beef primal cuts” not likely to cause confusion with the registered mark OMAHA STEAKS for meat. The appellate court found that the Board’s analysis regarding the fame of the OMAHA STEAKS mark was “legally flawed,” and that the Board’s consideration of third-party uses “improperly relied on marks found on dissimilar goods and services not directed to the relevant public.” Omaha Steaks International, Inc. v. Greater Omaha Packing Co., Inc., Appeal No. 2018-1152 (Fed. Cir. November 15, 2018) [precedential].

As usual I defer to John for the expert briefing of the case and analysis. This is a blog post and decision worth reading because they take us back to fundamental issues of trademark law. 

Remember, the senior mark is OMAHA STEAKS. As the opinion puts it:

There 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.

The opinion doesn’t really lay this out as logically as one might like, diving as it does right into the question of “fame.”  Why is fame relevant to the question of whether there is a LIKELIHOOD OF CONFUSION?  As John notes in his commentary, it’s because of what the record showed, and frankly what naked consideration of the mark hints, about the strength of the OMAHA STEAKS mark:

The CAFC’s treatment of third-party uses leaves something to be desired. Don’t the uses of OMAHA-containing marks for popcorn, wine, etc., show the weakness of OMAHA as a formative because they confirm that the term is used as a geographic descriptor for food that originates in Omaha, where Omaha Steaks is located?

In other words, OMAHA STEAKS is presumptively a weak trademark.  It should go without saying that by virtue of having the name of a place (Omaha) as a modifier of a noun (steaks), this trademark has the quality of being geographically descriptive.  John notes that the evidence of record seems to back this intuitive observation up.  Either way, as a threshold matter it was the mark owner’s task here to demonstrate that, under the DuPont standards for likelihood of confusion, this presumptive weakness is overcome by evidence of fame — i.e., strength as a “brand,” or non-geographic indication of origin. 

John questions the CAFC’s analysis on the third-party use question, and his argument seems sound.  I’m just not getting why I even have to rely on empirical proof of the use of “Omaha.” Isn’t’ this black-letter law? Let’s ask McCarthy:

Terms that are descriptive of the geographic location or origin of goods and services are regarded by the law as not being “inherently distinctive” marks. Since geographically descriptive terms are not inherently distinctive, they can be protected as trademarks only upon proof that through usage, they have become distinctive. Such an acquisition of distinctiveness is referred to as “secondary meaning.”

§ 14:1.Geographic terms as trademarks and service marks, 2 McCarthy on Trademarks and Unfair Competition § 14:1 (5th ed.)

Right. So that seems like the kind of thing I’d like a decision like this to confirm or address at the outset.  Omaha. Steaks.  Sounds like steaks from Omaha, right? It does, yes, but here’s why it’s not just that:  We’ve got fame.  That not only gets us going on the road to acquired distinctiveness for purposes of understanding why fame is a thing here, it also places the burden where it belongs:  On the owner of a trademark registration, howsoever hoary, for a mark that is inherently not distinctive. 

So for me, the question isn’t, as John asks, why did the Board ignore the evidence of third-party formatives, but the slightly different question of why do we even need evidence of that? Even then, though, I’m good with John’s question.  I mean, the CAFC actually writes,

GOP’s mark on meat products cannot escape a likelihood of confusion with Omaha Steaks’ prior use on meat products in the relevant market for meat purely because other “Omaha” marks are being used by third parties on popcorn, alcoholic beverages, or other food products. Independent of these third-party uses on other goods, there may still be confusion between Omaha Steaks’ marks and GOP’s new mark for consumers purchasing meat. 

When the marks featuring “Omaha” on unrelated goods are properly understood as having no real probative value for the analysis at hand, the evidentiary universe is much smaller

“No real probative value”?

Let’s just say this the kind of thing that is very hard to explain to clients.

That’s just one of the issues addressed in this decision. I’m not going to get into the survey part here. But I am unable to refrain from commenting on the opinion’s treatment of the “judicial notice” issue. Per John’s summary:

[The CAFC held that] the Board [did not] err in refusing to take judicial notice of the contents of the complaints filed in various litigations identified by Omaha Steaks. “The Board is not required to scour, not just the dockets, but the multiple pleadings referenced in those dockets to determine the substance of the litigations referenced.”

To be clear, what happened here is that the actual pleadings in these other cases were not placed in the TTAB record in the inter partes proceeding, and Omaha Steaks argued that this should not have been necessary under the doctrine of judicial notice  What is a better candidate for judicial notice than stuff filed in front of judges?

It was a stretch. But it would be unfortunate if we were to walk away from this part of the opinion with the impression that merely dumping a bunch of pleadings from other cases — most of which were presumably settled — proved anything about the merits of those lawsuits, as opposed to merely that Omaha Steaks exercised some degree of diligence with respect to asserting its rights. 

It doesn’t, even if those settlements are stamped with gold seals and embossed with acknowledgments of the markholder’s rights.  As one court explained in a case where third-party “enforcement” was documented and made part of the record: 

[T]he evidence of industry recognition in settlement agreements with certain third parties that Plaintiffs submit as exhibits should be accorded little probative weight because the reason why the third parties entered into these agreements is not apparent or even implicit in the record and they may very well have had legitimate reasons for settling with Plaintiffs apart from the merits of their oppositions.

RBC Nice Bearings, Inc. v. Peer Bearing Co., 676 F. Supp. 2d 9, 31–32 (D. Conn. 2009), aff’d, 410 F. App’x 362 (2d Cir. 2010).

The CAFC didn’t go there, and didn’t have to.  It would have been nice if it had. Then again, if Omaha isn’t even — trademarks-wise — a “there” to the Federal Circuit, I’m not sure I trust its navigation skills anyway.

By Ron Coleman

I write this blog.