Omaha Steaks International, Inc.v.Greater Omaha Packing Co., Inc.

Trademark Trial and Appeal Board

Sep 30, 2020

91213527 (T.T.A.B. Sep. 30, 2020)

This Opinion is Not a
Precedent of the TTAB

Oral Hearing: March 23, 2017 Mailed: September 30, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Omaha Steaks International, Inc.
v.
Greater Omaha Packing Co., Inc.
_____

Opposition No. 91213527
Cancellation No. 92059629
Cancellation No. 92059455
(as consolidated)1
_____

ON REMAND FROM THE UNITED STATES COURT OF APPEALS FOR THE
FEDERAL CIRCUIT

_____

Nora M. Kane
for Omaha Steaks International, Inc.
I. Stephen Samuels of Samuel & Hiebert LLC
for Greater Omaha Packing Co., Inc.
_____

1 The record in these consolidated proceedings is maintained in Opposition No. 91213527 and
all citations are to that proceeding unless otherwise noted. TTABVUE refers to the Board’s
electronic docket. Citations in this opinion are to the TTABVUE entry number and, where
applicable, the electronic page number where the document appears. For material or
testimony that has been designated confidential, the TTABVUE docket entry number where
such material or testimony is located is referenced.
Opposition No. 91213527, etc.
- 2 -
Before Thurmon,2 Deputy Chief Administrative Trademark Judge,
Taylor and Kuczma, Administrative Trademark Judges.
Opinion by Taylor, Administrative Trademark Judge:
I. Background
The original proceeding was consolidated and involved an opposition and two
cancellation actions brought by Omaha Steaks International, Inc. (hereafter “Omaha
Steaks” or “Plaintiff”) against three marks owned by Greater Omaha Packing Co.,
Inc. (hereafter “Omaha Packing” or “Defendant”). Plaintiff filed a notice of opposition
against Defendant’s application to register the mark GREATER OMAHA
PROVIDING THE HIGHEST QUALITY BEEF and design (shown below)

(hereafter GREATER OMAHA), for “meat, including boxed beef primal cuts” in
International Class 29,3 and petitions to cancel Defendant’s Registration No. 3998763
(Cancellation No. 92059629) for the mark U.S. Beef 1881 OMAHA HEREFORD
CORN FED and design (shown below)

2 Judge Masiello sat on the panel for the Board’s September 30, 2017 decision. Judge Masiello
has since retired, and Deputy Chief Administrative Judge Thurmon has been substituted for
him on the panel deciding this case. The change in composition of the panel does not
necessitate a retrial of this case. In re Bose Corp., 772 F.2d 866, 227 USPQ 1, 4 (Fed. Cir.
1985); Hunt Control Sys. Inc. v. Koninklijke Philips Elect. N.V., 98 USPQ2d 1558, 1560 n.1
(TTAB 2011).
3 Application Serial No. 85897951 filed April 8, 2013, and asserting a bona fide intention to
use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). The
words “Greater Omaha Providing the Highest Quality Beef” have been disclaimed. The
application also includes the following description: The mark consists of the words
“GREATER OMAHA” [which] are placed to the right of the profile of a steer’s head. The words
“PROVIDING THE HIGHEST QUALITY BEEF” are below “GREATER OMAHA.”
Opposition No. 91213527, etc.
- 3 -

for “Hereford beef” in Class 29;4 and Registration No. 4006768 (Cancellation No.
92059455) for the mark OMAHA NATURAL ANGUS CORN FED MINIMALLY
PROCESSED AND NO ARTIFICIAL INGREDIENTS and design (shown below)

for “Angus beef” in Class 29.5
Plaintiff pleaded in each of the three proceedings priority and likelihood of
confusion under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), and dilution

4 Issued July 19, 2009; Section 8 affidavit accepted. The mark consists of the words “Omaha
Hereford” in white with a maroon border below a maroon and white graphic of a steer,
appearing below the year “1881”, all encircled by a black oval border outlined in maroon and
containing the words “U.S. BEEF” at the top and “CORN FED” at the bottom. The color(s)
black, white, maroon is/are claimed as a feature of the mark. The white outline, gray
background, and the shape of the gray background are not claimed as a feature of the mark.
“U.S. BEEF”, “1881”, “OMAHA HEREFORD”, and “CORN FED” are disclaimed.
5 Issued August 2, 2011; Section 8 affidavit accepted. The mark consists of a gold shield
enclosing gray lines extending out from the center behind the word “OMAHA” in yellow with
red outline above the word “Natural” in yellow with red outline above the word “ANGUS” in
yellow appearing on a red banner above the words “CORN FED” in red surrounding a yellow
circle containing a black silhouette image of a steer above the words “Minimally Processed
and No Artificial Ingredients” in yellow. The rectangular shape of the black background is
not claimed as a feature of the mark. “OMAHA NATURAL ANGUS”, “CORN FED”, and
“MINIMALLY PROCESSED AND NO ARTIFICIAL INGREDIENTS” are disclaimed.
Opposition No. 91213527, etc.
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of the “famous designation OMAHA STEAKS” under Trademark Act Section 43(c),
15 U.S.C. § 1125(c).6
Plaintiff also alleged common law rights in OMAHA STEAKS as a trademark,
alleging that it has continuously used the mark OMAHA STEAKS on food, including
meat, dating back to at least as early as 1952.
The pleaded registrations Plaintiff focused on in its brief are set out below:7
Registration No. 1458802 for the mark OMAHA
STEAKS (in typed form and with “Steaks”
disclaimed) is registered on the Principal Register
pursuant to Section 2(f) of the Trademark Act, 15
U.S.C. § 1052(f), for “retail mail-order and retail food
store services in the field of gourmet food products,
kitchen apparel and kitchen utensils” in
International Class 42;8
Registration No. 1674686 for the mark OMAHA
STEAKS (in typed form and with “Steaks”
disclaimed) is registered on the Principal Register

6 Plaintiff’s dilution claim was deemed waived in all three proceedings because it did not
pursue the claim at trial. See Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba
Watermark Cruises, 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d mem., 565 F. App’x 900
(Fed. Cir. 2014).
7 Plaintiff attached to its Notice of Opposition a “Schedule of Marks” listing all of the pleaded
registrations and applications, along with printouts for each listed registration from the
Trademark Electronic Search System (TESS) database showing current status and title.
Plaintiff pleaded virtually the same marks in all three proceedings, as the pleading and the
Schedule of Marks attached to each pleading so reflected. In its Notice of Opposition, Plaintiff
additionally alleged ownership of Registration Nos. 1005036, 1005057 and 1007997, but
these registrations did not appear on the Schedule of Marks and their corresponding TESS
printouts were not made of record. The Petitions for Cancellation additionally included
claims of ownership of Registration Nos. 4250892, 4250830 and 4325113. Corresponding
TESS printouts of those registrations were made of record with the Notice of Opposition.
While these TESS printouts only accompanied the Plaintiff’s pleading in the opposition, we
consider them of record for all three consolidated cases pending in this proceeding, as they
have been so treated by the parties.
8 Issued September 22, 1987; second renewal. The registration claims 1968 as the date of
first use of the mark anywhere and June 1976 as the date of first use of the mark in
commerce. The filing date of the underlying application is August 25, 1986.
Opposition No. 91213527, etc.
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pursuant to Section 2(f) of the Trademark Act, 15
U.S.C. § 1052(f), for “retail food store services” in
International Class 42;9
Registration No. 2002499 for the mark OMAHA
STEAKS ANGUS (in typed form and with “Steaks”
and “Angus” disclaimed) is registered on the
Principal Register pursuant to Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f), for “fresh and
frozen boxed steaks, and fresh and frozen cuts of
meat” in International Class 29;10
Registration No. 3774260 for the mark OMAHA
STEAKS (in standard characters and with “Steaks”
disclaimed) is registered on the Principal Register
pursuant to Section 2(f) of the Trademark Act, 15
U.S.C. § 1052(f), as to the word OMAHA for, inter
alia “frozen entrees consisting primarily of meat,
fish, poultry, seafood or vegetables; frozen meals
consisting primarily of meat, fish, poultry, seafood or
vegetables; meat; poultry; pork; frankfurters;
bratwurst; hamburgers; sausages; soups; seafood;
crabs; shrimp; lobsters; salmon; veal; processed
lamb; frozen appetizers consisting primarily of
chicken or seafood; beef jerky; prepared nuts;
[omelets;] meatballs; dips; frozen vegetables” in
International Class 29;11 and
Registration No. 4172329 for the mark OMAHA
FRESH ANGUS BY OMAHA STEAKS (in standard
characters and with “Fresh Angus” and “Steaks”
disclaimed) is registered on the Principal Register
pursuant to Section 2(f) of the Trademark Act, 15
U.S.C. § 1052(f), as to the word OMAHA for “fresh

9 Issued February 4, 1991; second renewal. The registration claims 1968 as the date of first
use of the mark anywhere and June 1976 as the date of first use of the mark in commerce.
The filing date of the underlying application is April 19, 1991.
10 Issued September 24, 1996; second renewal. The registration claims September 6, 1995 as
the date of first use of the mark and in commerce. The filing date of the underlying application
is April 19, 1991.
11 Issued April 13, 2010; renewed. The registration claims December 31, 1968 as the date of
first use of the mark anywhere and June 30, 1976 as the date of first use of the mark in
commerce. The filing date of the underlying application is October 15, 2010. The registration
also includes additional goods in Class 30 and services in Class 35.
Opposition No. 91213527, etc.
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and frozen boxed steaks, and fresh and frozen cuts
of meat” in International Class 29.12
Defendant denied the salient allegations in each of the three proceedings.13
In a decision issued September 30, 2017, the Board after trial and on the merits,
dismissed Opposition No. 91213527 and sustained Cancellation Nos. 92059629 and
92059455.
Plaintiff appealed the Board’s dismissal of Opposition No. 91213527 to the U.S.
Court of Appeals for the Federal Circuit. In a decision issued November 15, 2018, the
Court of Appeals, having before it the full record that had been before the Board,
vacated the Board’s decision that there is no likelihood of confusion between the
parties’ marks, and remanded the case for further proceedings consistent with its
opinion. Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128
USPQ2d 1686 (Fed. Cir. 2018). The Court directed, among other things, that the
Board: 1) “conduct a proper analysis” under Bose Corp. v. QSC Audio Prods., Inc.,
293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002) of the DuPont fame factor,14 id. at
1692; 2) “reweigh the limited, relevant evidence of third-party use,” id. at 1695; and
3) conduct “further analysis” of the first DuPont factor, because the Board’s findings
regarding third-party use have been vacated by the decision. Id. at 1696.

12 Issued July 10, 2012, Section 8 Affidavit accepted; Section 15 Affidavit acknowledged. The
registration claims April 2, 2012 as the date of first use of the mark anywhere and in
commerce. The filing date of the underlying application is October 15, 2010.
13 In Cancellation No. 92059455, Greater Omaha asserted, and pursued, the affirmative
defense of laches.
14 The court is referring to the likelihood of confusion factors set forth in In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”).
Opposition No. 91213527, etc.
- 7 -
II. Preliminary Matters
A. Motion to Supplement Record
Following remand, Plaintiff moved for leave to supplement the proceeding record.
By its motion, Plaintiff seeks leave to admit into evidence the declaration of its Senior
Vice-President and Chief Marketing Officer, Todd Simon and, pursuant to Fed. R.
Evid. 201, requests the Board to take judicial notice of Exhibits 1-4 accompanying the
Simon declaration. Plaintiff adds that the evidence it seeks to make of record “came
into existence after entry of this Board’s September 30, 2017 Opinion and is being
offered in support of DuPont factor five, strength/fame of the mark.” 67 TTABVUE 2.
Greater Omaha has opposed the motion and request for judicial notice, arguing
that the record in this case closed on May 16, 2016 and any evidence Plaintiff now
seeks to file is not in compliance with Trademark Rule 2.123(k), 37 C.F.R. § 123(k),
and that Plaintiff has not identified any fact subject to judicial notice.
Plaintiff’s request to introduce the Simon declaration and exhibits thereto is
manifestly untimely. The record in this case closed several years ago and the case has
already been through a complete trial and appeal. “Cases construing ‘newly
discovered evidence ’ uniformly hold that the new evidence must be of facts in
existence at the time of the trial, but only discovered later, to entitle a party to relief.”
Pramil S.R.L. v. Farah, 93 USPQ2d 1093, 1095 (TTAB 2009) (citing generally 11 C.
Wright & A. Miller, Federal Practice and Procedure §2859 (2d ed. 1995); 12 J. Moore,
Moore’s Federal Practice § 60.42[3] (3d ed. 2009) (internal citations omitted)). See
also See Packard Press Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351,
Opposition No. 91213527, etc.
- 8 -
1356 (Fed. Cir. 2000) (Court declined to consider whether to take judicial notice of
fame where request for judicial notice was made for first time at oral argument on
appeal). In this case, all of the evidence Plaintiff now seeks to add came into existence
after a full trial at the Board. Accordingly, the request to supplement the record is
denied.
We also deny Plaintiff’s request that the Board take judicial notice of Exhibits 1-
4 to the Simon declaration, which consists of examples where “Omaha Steaks has
appeared or been featured in several mainstream media.” As Defendant points out,
such media references are not “facts” that are subject to judicial notice. “The only
kind of fact that may be judicially noticed by the Board is a fact that is ‘not subject to
reasonable dispute in that it is either (1) generally known within the territorial
jurisdiction of the trial court or (2) capable of accurate and ready determination by
resort to sources whose accuracy cannot reasonably be questioned. ’” TRADEMARK
TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) Section 704.12
(2020), and the authorities cited therein, including Fed. R. Evid. 201(b).
In this case, the excerpts purportedly evidencing unsolicited media exposure are
from TV game shows, newspaper crossword puzzles, movies, and magazine articles.
Such excerpts are not facts that are generally known in the Board’s jurisdiction or
capable of determination by sources whose accuracy cannot be reasonably questioned
and, thus, are not subject to judicial notice. See, e.g., In re Brown-Forman Corp., 81
USPQ2d 1284, 1286 (TTAB 2006) (Board denied request for judicial notice that
Moulin Rouge is a famous Parisian nightclub and that its name served as title of a
Opposition No. 91213527, etc.
- 9 -
film starring Nicole Kidman that was nominated for an Academy Award); In re
Viventia Biotech Inc., 80 USPQ2d 1376, 1377 (TTAB 2006) (Board did not take
judicial notice of Internet search); In re Red Bull GmbH, USPQ2d 1375, 1379 n.7
(TTAB 2006) (Board would not take judicial notice of “scholarly reviews” of an essay).
Plaintiff is trying to supplement its trial record on disputed issues (i.e., the
commercial strength or fame of its mark). Such an attempt is entirely inappropriate
at this stage of the proceeding.
We accordingly give no further consideration to the October 11, 2019 declaration
of Todd Simon and its accompanying exhibits.
B. Evidentiary Objections
During the Board trial, Plaintiff and Defendant made multiple objections against
testimony and evidence submitted by the other. We address only those objections
affected by the decision of the Court of Appeals, i.e., objections Nos. 1 and 2, and
otherwise reiterate our earlier rulings for the convenience of the parties.
1. Defendant’s Fifth Notice of Reliance
Plaintiff objected to the portions of Defendant’s fifth notice of reliance that pertain
to what it characterizes as “evidence of third-party uses of dissimilar marks on
dissimilar goods,” arguing that they are irrelevant. This objection goes solely to
relevance; the Board is quite capable of making such determinations and we consider
the third-party use evidence for whatever probative value it may have. See e.g., Palm
Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
1373 (Fed. Cir. 2005) (“Evidence of third-party use of similar marks on similar goods
Opposition No. 91213527, etc.
- 10 -
is relevant to show that a mark is relatively weak and entitled to only a narrow scope
of protection.”). See also Juice Generation, Inc. v. GS Enters. LLC, 115 USPQ2d 1671
(Fed. Cir. 2015); Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New
Millennium Sports, S.L.U., 116 USPQ2d 1129 (Fed. Cir. 2015) (same). Plaintiff’s
objection is therefore overruled.
2. Poret Testimony and Exhibits
Citing Trademark Rule 2.121(b)(1), which requires Plaintiff to present its case-in-
chief during its testimony period, and Trademark Rule 2.121(c), which states that the
rebuttal testimony period is only for rebuttal testimony, Defendant objects to the
Poret testimony and exhibits in their entirety on the ground that it is improper
rebuttal. The exhibits include both a survey and rebuttal survey commissioned by
Plaintiff to establish acquired distinctiveness of the terms “Omaha Steaks” and
“Omaha.” Plaintiff posits that it “rightfully elicited” the testimony of Hal Poret, to
rebut the previous undisclosed testimony of Ms. Peetz, by whose testimony,
Defendant attempted to controvert Plaintiff’s evidence that its OMAHA STEAK
marks have acquired secondary meaning.
Rebuttal is improper, and should be excluded, if it constitutes evidence that should
have been submitted during Plaintiff’s main testimony period to support Plaintiff’s
case-in-chief. Wet Seal Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1632 (TTAB
2007); Ritz Hotel Limited v. Ritz Closet Seat Corp., 17 USPQ2d 1466, 1468-9 (TTAB
1990).
Opposition No. 91213527, etc.
- 11 -
After considering the testimony of Defendant’s witnesses and Plaintiff’s rebuttal
witness, we are of the opinion that the Poret testimony and survey are not improper
rebuttal. Plaintiff has alleged, in pertinent part, that:15
By virtue of the high degree of acquired distinctiveness of
the Omaha Steaks Marks, the long duration of extensive
use of the Omaha Steaks Marks in connection with the
goods and services with which the Omaha Steaks Marks
have been used, … the Omaha Steaks Marks have become
well-known and famous by the general consuming public
and the trade of the United States, as well as
internationally, who have come to associate the goods
offered and sold under the Omaha Steaks Marks with a
single source and as distinctive indicators of the origin of
Opposer’s goods and services …”
During its testimony period, Defendant introduced evidence of third-party use of
trademarks and trade names that include the word “OMAHA,” in an effort to
demonstrate that the terms “OMAHA STEAKS” and “OMAHA” would not be
attributable to a single source because of such third-party use. Mr. Poret testified
that the purpose of his survey was to test whether the term “Omaha Steaks” and the
term “Omaha” on their own have acquired secondary meaning associated with a
single source. Such testimony and evidence would counter Defendant’s evidence of
any alleged weakness of those terms.
We therefore find the Poret testimony and exhibits are proper rebuttal.
Accordingly, Defendant’s objection is overruled.
We add, however, that the survey is entitled to little probative value because it is
fundamentally flawed. Mr. Poret, Senior Vice President at ORC International, a

15 Notice of Opposition ¶ 22; 1 TTABVUE 8.
Opposition No. 91213527, etc.
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marketing research firm, testified that he was tasked with designing and conducting
a survey to test whether the term “Omaha Steaks” and the term “Omaha” on their
own have acquired secondary meaning. Mr. Poret designed an online survey that was
performed sometime prior to May 2015, when the initial report issued16 in which
Respondents who purchased meat in the past 12 months, or were likely to purchase
meat products in the next 12 months, were asked a series of standard questions to
assess whether they associate the term “Omaha Steaks” in the one case or just
“Omaha” in the other, with a single source.17
In order to qualify for the survey, Respondents had to answer that they purchased
or were likely to purchase meat products through a gift or specialty food store or
kiosk, through a gift or specialty foods website, by mail order, or through a television
shopping network such as HSN or QVC.18 This was done, Mr. Poret explained, so that
each survey Respondent “was a purchaser through one of those channels which was
designed to represent the channels through which Omaha Steaks specifically
markets its products.”19
While maintaining its objections to the Poret testimony and exhibits, Defendant,
in the event the Board allowed this evidence into the record, argued that:20

16 A supplemental report issued in August 2015, in response to a rebuttal report of Robert
Klein (not of record).
17 44 TTABVUE 8-9.
18 Participants who responded that they purchased their meat through an online grocery
store, a big chain or local grocery store or a supermarket or smaller market were excluded.
Id. at 123-125.
19 44 TTABVUE 10.
20 49 TTABVUE 66-67.
Opposition No. 91213527, etc.
- 13 -
Plaintiff’s survey was fundamentally flawed and is entitled
to no probative value because it asked its survey questions
to a narrowly defined universe of respondents that was
much too narrow and under-inclusive because it
intentionally eliminated from the universe of respondents
the vast majority of meat purchasers, such as those
purchasing from grocery stores or any retailer other than
Plaintiff. Because Plaintiff’s survey universe was so
narrow, the survey results were slanted to support the goal
of the survey, and Hal Poret’s opinions were therefore
invalid.
We agree. Secondary meaning does not have to be proven among the general
public, if a product is targeted at a specific segment of the population.21 Here,
Plaintiff’s goods generally are identified as meat and beef, as are Defendant’s. As
discussed, infra, because there are no restrictions in the identifications of goods as to
classes of customers, the relevant public would comprise ordinary consumers who eat
meat and beef, not just Plaintiff’s current customer base as Plaintiff would have us
believe. To exclude a large segment of meat eaters because they purchase their meats
from grocery stores and markets, and not specialty kiosks and websites, fatally
narrows the survey universe and skews the results in favor of Plaintiff. Accordingly,
the Poret survey has no probative value.22

21 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 15:46
(5th ed. 2020) (“While the ‘focus’ of secondary meaning is ‘the consuming public,’ it need not
be proven among the general public if a product is targeted at only a specific segment of the
general public.”) (Emphasis supplied).
22 This finding was confirmed on appeal. See Omaha Steaks v. Greater Omaha, 128 USPQ2d
at 1692. In making this finding, we point out, as did the Federal Circuit, that Plaintiff’s
reliance on Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 523 n.6 (10th Cir. 1987) is
distinguishable. There, the inclusive survey covered “persons over 14 years who have fished
in fresh water in the last twelve months.” Id. The Tenth Circuit concluded the trial court did
not abuse its discretion by admitting the survey, especially since there was “no evidence to
show that such a universe would not be a fair sample of those who are likely to purchase
spincast reels.” Id. Unlike in Brunswick, in this case “the undisputed facts confirm the Poret
Opposition No. 91213527, etc.
- 14 -
3. Todd Simon Testimony and Exhibits 1-9
Defendant has objected to portions of the testimony of Todd Simon and Exhibits
1-9.23 Exhibits 1-7 and 9 to Mr. Simon’s testimony were not placed in the record.
Accordingly, Defendant’s objections to these exhibits are moot.24 Defendant further
objects as speculation, lack of personal knowledge and competence and hearsay the
part of Mr. Simon’s testimony concerning the non-proffered exhibits, which relate to
the following topics:
Sales and advertising figures on the basis of lack of
personal knowledge, hearsay and speculation;
Trade show attendance on the basis of lack of personal
knowledge, hearsay, speculation and opinion;
Digital marketing on the basis of hearsay, speculation and
opinion;
Various reports from Finn Partners, Plaintiff’s New York
public relations agency, about public relations efforts for
the holiday season, Father’s day and the 2014 PR Annual
Report as inadmissible hearsay and because it lacks
foundation and personal knowledge;
Plaintiff’s advertising strategies as inadmissible hearsay,
and lack of foundation and personal knowledge; and

survey did not come close to providing a reliable sample of consumers likely to purchase
meat.” Omaha Steaks v. Greater Omaha, 128 USPQ at 1696 n.1.
23 The Exhibits were described in the Exhibit Index as follows: Exhibit 1 – Schedule of Marks;
Exhibit 2 – Opposer’s [Plaintiff’s] Answers to Applicant’s First Set of Interrogatories; Exhibit
3 – Trade Show Information; Exhibit 4 – Holiday Season: 2014/2015 Summary Report by
Finn Partners; Exhibit 5 – Father’s Day: 2014/2015 Summary Report by Finn Partners;
Exhibit 6 – Finn Partners 2014 PR Report for Omaha Steaks; Exhibit 7 – Omaha Steak
Company Information; Exhibit 8 News Item Report; and Exhibit 9 – Photograph.
24 We note that the schedule of marks (Exhibit 1), is already of record as it is a duplicate of
Exhibit A to Plaintiff’s petitions in these consolidated proceedings.
Opposition No. 91213527, etc.
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Circumstances surrounding a photograph of a plaque
presented to Plaintiff.
None of the testimony Defendant seeks to exclude is outcome determinative. The
Board is capable of weighing the relevance and strength or weakness of the objected-
to testimony, including any inherent limitations, and this precludes the need to strike
it. Given these facts, coupled with the number of objections, we see no compelling
reason to discuss the specific objections. As necessary and appropriate, we will point
out any limitations applied to the testimony or otherwise note that it cannot be relied
upon in the manner sought. Accordingly, the objections are overruled.
4. Todd Simon Testimony and Exhibit 8
Defendant has also objected to Exhibit 8, an excerpted report regarding a
comprehensive media listing of all news items that contain references to “Omaha
Steaks,” and the associated testimony (much of which Defendant alleges consisted of
Mr. Simon’s reading from the exhibit). Defendant argues that the exhibit is not a
business record, lacks foundation and was not properly authenticated and that the
witness had no personal knowledge of who compiled it or the methodology, as is
required under Fed. R. Evid. 602. Plaintiff counters Defendant’s argument, asserting
that Mr. Simon’s testimony was competent and based upon personal knowledge.
Although Mr. Simon did not know offhand who created the document, the “front page”
revealed that it was compiled by Omaha Creative Group, Plaintiff’s in-house
advertising agency responsible for the marketing for all of Omaha Steaks’ affiliated
companies, tasked with creating the document. Mr. Simon testified that he was
familiar with the Omaha Creative Group and had personal information about the
Opposition No. 91213527, etc.
- 16 -
steps they took to compile the report, i.e., by subscribing to a clipping service, and
that the reports were compiled on an as needed basis. T. Simon test., pp. 80-85.25 We
find that Mr. Simon, in his position as Plaintiff’s senior vice president of sales and
marketing, had sufficient knowledge and competence to introduce into the record the
report compiled by Plaintiff’s in-house advertising agency in the regular course of
business. Because Defendant has not specified what elements are lacking, we cannot
ascertain whether Plaintiff’s summary meets all the requirements of Fed. R. Evid.
1006. Accordingly, Defendant’s objections are overruled. Nevertheless, in keeping
with the discussion above, we will accord the testimony and evidence the appropriate
probative weight.
5. Bruce Simon Testimony and Exhibits 2, 9 and 10 and Plaintiff’s
History
At the outset, we note that Exhibits 2 and 9 to B. Simon’s testimony are the same
exhibits Plaintiff sought to introduce in connection with the T. Simon testimony. As
indicated, Plaintiff did not submit these exhibits into the record. As regards to the
testimony concerning these exhibits, Defendant again seeks to exclude it on the basis
of lack of foundation, lack of personal knowledge, lack of competence, opinion and
speculation. Citing Fed. R. Evid. 602, 701 and 802, Defendant objects to the
introduction of various cease and desists letters, as well as the testimony pertaining
to them, again on the grounds that no foundation has been laid, lack of personal
knowledge and lack of competence, opinion and speculation. Defendant similarly

25 33 TTABVUE 209-214.
Opposition No. 91213527, etc.
- 17 -
objects to B. Simon’s testimony regarding company history on those grounds, as well
as on the ground that it is hearsay. Again, because none of the testimony is outcome
determinative, and because the objections go to probative value as opposed to
admissibility, we accord the testimony the appropriate weight.
6. Peetz Testimony
Defendant, during its testimony period, took the testimony deposition of Terri
Peetz, identified as a paralegal with the law firm of Suiter Swantz PC. Ms. Peetz’
testimony addresses the results from her investigation to find companies in food or
food-related industries which are located in or near Omaha, Nebraska, the names of
which begin with or prominently feature the word “Omaha.” Plaintiff objects to Ms.
Peetz’ testimony as constituting improper ex parte discovery from a non-party
witnesses, hearsay, and violation of the witness-advocate rule.26 With regard to
Plaintiff’s objection on the ground of improper ex parte discovery, Ms. Peetz provided
testimony, not discovery, and her testimony was subject to cross-examination. We
also find that Ms. Peetz testimony does not constitute hearsay because it does not
include out-of-court statements made by other persons. Last, Ms. Peetz is not in
violation of the witness-advocate rule because she is neither a lawyer nor an advocate
for Defendant in these consolidated proceedings. Accordingly, Plaintiff’s objection to
the Peetz testimony is overruled.

26 To the extent that Plaintiff objected to the Peetz testimony, taken March 18, 2016, based
on Defendant’s failure to identify her in initial disclosures, the objection is moot. By
stipulation filed March 24, 2016, “[b]oth parties stipulated that neither party will make any
objection of any kind to the other party’s witnesses who have testified thus far in the
proceeding based on any lack of identifying them in initial disclosures, and that all such
objections made thus far are hereby irrevocably withdrawn.” 36 TTABVUE 2.
Opposition No. 91213527, etc.
- 18 -
We have considered all of Plaintiff’s and Defendant’s evidence. In doing so, we
have kept in mind the various objections raised by the parties, and we have accorded
whatever probative value the subject testimony and exhibits merit.27
C. Plaintiff’s Request for Judicial Notice
In view of the findings of the Court of Appeals, we address Plaintiff’s requests that
we take judicial notice of previously-filed lawsuits. Citing Fed. R. Evid. 201(c) and
Trademark Rule 2.122, Plaintiff, in its brief, indicates that “Omaha Steaks has filed
numerous lawsuits against perceived infringers, of which this Court must take
judicial notice… .”28 Of the sixteen lawsuits referenced by Plaintiff, in all but one
instance, Plaintiff merely listed the case, by caption and docket number. For the
litigation styled Omaha Steaks International, Inc. v. Interbay Food Company, LLC,
8:14 – cv-15 (D. Neb), Plaintiff included the parenthetical: “(suing for trademark
infringement for, inter alia, Defendant’s advertising of its product on its own website
and at Amazon Fresh as ‘Omaha Natural Angus’ and ‘Greater Omaha’).” No other
material is included with the request.

27 As to the hearsay objections, we note that the Board does not generally strike properly
taken and filed testimony or exhibits based on substantive objections such as hearsay.
Rather, such objections are taken into consideration in determining the probative value of
the evidence. See Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1326 (TTAB
1992).
28 The lawsuits include, by way of example: Omaha Steaks International, Inc. v. Pathak, 03-
cv-01401 (C.D. Cal); Omaha Steaks International, Inc. v. Midwest Best Choice Distributors,
LLC, 13-4095 (N.D. Iowa); Omaha Steaks International, Inc. v. Fairbury Steaks, Inc., 07-cv-
02578 (C.D. Cal.); Omaha Steaks International, Inc. v. Turner New Zeland, Inc., 05-cv-00605
(S.D. Cal.); and Omaha Steaks International, Inc. v. Simpson, 99-cv-00712 (S.D. W. VA).

Opposition No. 91213527, etc.
- 19 -
As noted, under Fed. R. Evid. 201(b)(2), a tribunal “may judicially notice a fact
that is not subject to reasonable dispute because it . . . can be accurately and readily
determined from sources whose accuracy cannot reasonably be questioned.” A
tribunal “must take judicial notice if a party requests it” and “the court is supplied
with the necessary information.” Fed. R. Evid. 201(c)(2). Here, while Plaintiff
identified the lawsuits by case name and docket number, it failed to supply the Board
with any material, e.g., the pleadings, to substantiate its claim. That said, to the
extent Plaintiff is asking us to take judicial notice of the fact that Plaintiff filed
sixteen lawsuits, as styled in its brief, against various entities, we do so. See Omaha
Steaks v. Greater Omaha, 128 USPQ2d at 1693 (quoting United States v. Jones, 29
F.3d 1549, 1553 (11th Cir. 1994) (“The Court may take judicial notice of a document
filed in another court not for the truth of the matters asserted in the other litigation,
but rather to establish the fact of such litigation and related filings.” (internal
citations omitted)).
However, the mere fact that these lawsuits were filed has no probative value in
our decision concerning the DuPont fame factor or any other issue. That is, the party
requesting judicial notice cannot simply contend that certain statements or, as in this
case, filings were made containing material that has not been provided and expect
the Board to consider the assertion established. Moreover, “[t]he 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.” Id. at 1694.
Opposition No. 91213527, etc.
- 20 -
Under these circumstances, we vacate our original ruling, and Plaintiff’s request
for judicial notice is granted but only to the extent indicated above.
III. The Record
The record is the same as the one before the Board in the original trial, and is
repeated below:
By operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the record includes
the pleadings and the files of the involved application and registrations. In addition,
the parties introduced the following properly adduced evidence.
A. Plaintiff’s testimony and evidence:
1. Testimony deposition, with exhibits, of Bruce Simon, Plaintiff’s
president and CEO (“B. Simon test.”). 33 TTABVUE.
2. Testimony deposition, with exhibits, of Todd Simon, Plaintiff’s senior
vice president of sales and marketing (“T. Simon test.”). 33 and 34 TTABVUE.
3. Testimony deposition, with exhibits, of Plaintiff’s expert witness, Hal
Poret, Senior Vice President of ORC International, a marketing firm (“Poret test.”).
44 TTABVUE.
B. Defendant’s testimony and evidence
1. Defendant’s First Notice of Reliance on a listing of, and corresponding
copies taken from the United States Patent and Trademark Office’s (USPTO)
Trademark Electronic Search System (TESS) database of 118 applications and
registrations (both live and dead) for marks that include the word “OMAHA,” and in
which that term is disclaimed (29 TTABVUE).
Opposition No. 91213527, etc.
- 21 -
2. Defendant’s Second Notice of Reliance on the following (27 TTABVUE):
a. Certificates issued by the state of Nebraska certifying that
Defendant filed Articles of Incorporation on July 2, 1956, and
is in existence as of February 10, 2016, and that the Articles
and all amendments thereto are attached as of February 10,
2017; and
b. Certified copies of Defendant’s trademark registrations, Nos.
4690144 and 4721723.
3. Defendant’s Third Notice of Reliance on Plaintiff’s November 12, 2014,
July 17, 2015, and June 25, 2015 responses to Defendant’s requests for admissions
(deemed admitted by Board order issued September 28, 2016) (20 TTABVUE).
4. Defendant’s Fourth Notice of Reliance on the following printed
publications and Internet web pages to show that (1) Defendant was located at 5102
South 26th Street in Omaha, Nebraska from 1927 until 1972; (2) was using the
company name Greater Omaha Packing Co. during that period; and that Herman
Cohen and Pennie Davis were listed as managers or principals of Defendant during
that period (30 TTABVUE):
 Polk City Directories Website printout dated April 4, 2015;

 Polk Omaha City Directories dated 1928, 1929, 1931 - 1934, 1936,
1938, 1940, 1942, 1945, 1946, 1949, 1951, 1954 and 1955;

 Omaha World Herald Wikipedia Entry (printout dated February 19,
2016); and

 Omaha World Herald Historical Archive excerpts dated January 11,
1927, September 24, 1944, October 14, 1945, July 28, 1947, July 20,
1951, September 29, 1952, February 12, 1953, May 31, 1953, July 19,
1953, December 25, 1955, January 30, 1958, May 17, 1960, June 18,
1960 and October 24, 1972.

Opposition No. 91213527, etc.
- 22 -
5. Defendant’s Fifth Notice of Reliance on the following printed
publications and Internet materials (31 TTABVUE):
 the obituaries of Herman Cohen and Pennie Z. Davis
published in the Omaha World Herald newspaper;
 newspaper and Internet articles discussing Omaha as a place
beef comes from and that various companies selling beef and
beef related goods use Omaha in their company names;
 a website printout from a seller of Defendant’s beef under the
Greater Omaha mark; and
 articles discussing the history of Defendant and its use of the
Greater Omaha trademark.
6. Testimony deposition, with exhibits, of Carol Mesenbrink, Defendant’s
credit manager since 2003 and, from 1999 to 2003, an invoicing, accounts receivable,
and inventory control specialist for Defendant (“Mesenbrink test.) (38 TTABVUE).
7. Testimony deposition, with exhibits, of Angelo Fili, Defendant’s
executive vice-president responsible for development of a beef fabrication division,
and formerly employed by various meat packing facilities as, e.g., a journeyman
butcher, a utility man, a meat cutter, plant manager, and field representative (“Fili
test.) (39 TTABVUE).
8. Testimony deposition, with exhibits, of Terri Peetz, a paralegal
employed by the law firm of Suiter Swantz (“Peetz test.”) (40 and 41 TTABVUE).
9. Testimony deposition, with exhibits, of Henry Davis, grandson of
Defendant’s founder and current president and, previously employed by Defendant
on a part-time basis between 1965 through 1972 to, among other things, shroud beef,
Opposition No. 91213527, etc.
- 23 -
take out the shroud pins, and stamp the beef with the name “Greater Omaha” (Davis
test.) (42 TTABVUE).
IV. The Parties
A. Plaintiff
According to the testimony of Bruce Allen Simon, a descendant of Plaintiff’s
founders, Plaintiff began as Table Supply Meat Company in 1917. (B. Simon test. p.
9, T. Simon test. p. 4).29 About 1959, Plaintiff started doing business as Omaha
Steaks. (B. Simon test. p. 10).30 Plaintiff employs about 1,800 hundred people year
round, and during the peak December holidays, Plaintiff employs around 4,300
employees and processes 100,000 orders a day. (B. Simon test. p. 7).31 Plaintiff
acquires subprimals from which it makes its products from a variety of suppliers
including Tyson, Cargill, Swift, JBS, National Beef, Greater Omaha Beef and
Defendant Greater Omaha Packing. (Id. at 38).32 Plaintiff acquires “much less” than
ten percent (10%) of its product from Defendant. (Id. at 40).33
Plaintiff “rigorously” polices its trademarks by routinely searching the Internet
for infringing uses, digitally marking photographic images, issuing cease and desist
letters and by pursuing legal action. (Id. at 13 and 29-32; Exhs. 10 - 25).34

29 33 TTABVUE 11, 133.
30 Id. at 12.
31 Id. at 9.
32 Id. at 40.
33 Id. at 42.
34 Id. at 15 and 31-34, Exhs. 10-25.
Opposition No. 91213527, etc.
- 24 -
B. Defendant
In 1920, Defendant’s predecessor was formed as an unincorporated company
in Omaha, Nebraska by Herman Cohen using the business name “Greater Omaha
Packing Company.” (Davis test. 17-18).35 In 1956, Herman Cohen and Pennie Davis,
the owners of Greater Omaha Packing Company, formed a Nebraska Corporation
called “Greater Omaha Packing Co., Inc., at the same location. (Defendant’s Second
NOR, NR 1).36 Defendant and its predecessor have continuously used “Greater
Omaha Packing Company” in the beef business in Omaha, Nebraska from 1920 to
present. Defendant has continuously used the GREATER OMAHA (with steer head
design) trademark ( ) on boxed beef from 1992 to the present, and
the GREATER OMAHA (with steer head design) mark ( ) from at
least as early as February, 2014 to the present. (Fili test. at p. 33, exh. 10; Id. at 67,
exh. 24.).37 Prior to 1992, Defendant sold hanging beef, i.e., beef carcasses; beef
carcasses are no longer available. (Fili test. pp 16, 83). The boxed beef, which is beef
fabricated from whole carcasses, is sold to hotels, restaurants, food service
institutions and other wholesalers. (Fili test. p. 20). Defendant has a 10,000 pound
minimum purchase requirement for its beef products. (Fili test. pp. 72-73). Defendant
has continuously sold beef to Plaintiff from 1966 to the present, (Defendant’s Third

35 42 TTABVUE 18-19.
36 27 TTABVUE 1-34. NR is an internal designation used by Defendant.
37 39 TTABVUE 34, 68-70, 115-120, 159.
Opposition No. 91213527, etc.
- 25 -
NOR, NR-5, Request No. 8 - Admitted).38 From 1992 to 2015, Defendant sold and
shipped beef in containers bearing the GREATER OMAHA (with steer head design)
mark, resulting in annual revenues increasing from in excess of $100,000,000 (in
1992) to in excess of $1,700,000,000 (in 2015). (Davis test. pp. 64-65).39 From 1992-
2015, Defendant required its customers to make minimum purchases of 10,000
pounds, which means that minimum purchases were not less than $10,000.40
Defendant’s witnesses, Henry Davis and Angelo Fili both testified that they had
never observed or heard of any instances of actual confusion as to the source of their
product. (Davis test. p. 69-70; Fili test. p. 79).41
V. Entitlement to Bring a Statutory Cause of Action42 and
Priority
To establish entitlement to bring a statutory cause of action under Section 13 of
the Trademark Act, a plaintiff must demonstrate a real interest in the proceeding
and a reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v.
Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020); see also
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058

38 28 TTABVUE 4.
39 42 TTABVUE 65-66.
40 39 TTABVUE 73-74.
41 42 TTABVUE 70; 39 TTABVUE 80.
42 Our decisions have previously analyzed the requirements of Section 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Mindful of the Supreme
Court’s direction in Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125-
26 (2014), we now refer to this inquiry as entitlement to bring a statutory cause of action.
Despite the change in nomenclature, our prior decisions and those of the Federal Circuit
interpreting Sections 13 and 14 remain equally applicable.
Opposition No. 91213527, etc.
- 26 -
(Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1727 (Fed. Cir. 2012); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023, 1025 (Fed. Cir. 1999). Here, Plaintiff’s entitlement to oppose registration is
demonstrated through printouts from the Trademark Electronic Search System
(“TESS”) database of the United States Patent and Trademark Office (“USPTO”),
made of record with the pleadings in the notice of opposition, showing that it is the
owner of its pleaded registrations and that those registrations are valid and
subsisting. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1844 (Fed. Cir. 2000); N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d
1497, 1501 (TTAB 2015). Because Plaintiff’s pleaded registrations are properly of
record, priority is not in issue in the opposition with respect to those marks for the
goods and services listed therein. See King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
As did the parties, we focus our analysis of the issue of likelihood of confusion
between Defendant’s mark and Plaintiff’s mark in Registration No. 3774260,
OMAHA STEAKS (in standard characters and with “Steaks” disclaimed) for, in
pertinent part, “meat” in International Class 29, as this mark is the closest to
Defendant’s involved mark and is most likely to support a finding of likelihood of
confusion. Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1073 n.14
(TTAB 2011) (limiting analysis to those registrations most likely to support a finding
of likelihood of confusion); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010) (same).
Opposition No. 91213527, etc.
- 27 -
VI. Discussion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also See Cai
v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018); In
re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We
must consider each DuPont factor for which there is evidence and argument. See, e.g.,
In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019)
(Board considers each DuPont factor for which there is evidence and argument).
When analyzing these factors, the overriding concern is not only to prevent buyer
confusion as to the source of the goods and services, but also to protect the registrant
from adverse commercial impact due to use of a similar mark by a newcomer. See In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).
A. The Goods/Channels of Trade/Classes of Purchasers
We first consider the relatedness of the goods. In making our determination
regarding the relatedness of the goods, we must look to the goods as identified in the
application and the pleaded registrations. See Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting
Octocom Sys., Inc. v. Hous. Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990)); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
Where the goods in an application or pleaded registration are broadly identified,
such that there are no restrictions as to trade channels and purchasers, it is presumed
Opposition No. 91213527, etc.
- 28 -
that the recitation of goods encompasses not only all goods of the nature and type
described therein, but that the identified goods are provided in all channels of trade
which would be normal therefor, and that they would be purchased by all potential
customers thereof. See, e.g., See In re Solid State Design Inc., 125 USPQ2d 1409,
1412-15 (TTAB 2018) (where the goods in an application or registration are broadly
described, they are deemed to encompass all the goods of the nature and type
described therein); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025
(TTAB 2015) (same); In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137
(TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily
encompasses Registrant’s narrowly identified ‘residential and commercial
furniture.’”).
As identified, Plaintiff’s broadly worded “meat” encompasses Defendant’s more
narrowly identified “meat, including boxed beef primal cuts.” Thus, for purposes of
our likelihood of confusion analysis, we find the respective goods legally identical.
Moreover, given the legal identity of goods, we must presume that they would be
offered in the same trade channels for such goods, and to the same classes of
purchasers, including ordinary consumers seeking meat products. In re Yawata Iron
& Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968); Am. Lebanese Syrian
Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028
(TTAB 2011). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012) (the Board was entitled to rely on this legal presumption in determining
likelihood of confusion).
Opposition No. 91213527, etc.
- 29 -
In view of the above, the DuPont factors of the similarity of the goods, the channels
of trade and classes of purchasers favor Plaintiff.
B. The Conditions Under Which and Buyers to Whom Sales are Made
We next consider the conditions under which, and buyers to whom, the parties’
respective goods are sold. Defendant contends that both parties’ goods are relatively
expensive and would be purchased with care by sophisticated customers. Because the
respective identifications include “meat,” without any limitations to a particular price
point, we must treat the goods as including both inexpensive and expensive meat
products, and accordingly presume that purchasers for “meat” include ordinary
consumers who may purchase meat on impulse. See Stone Lion v. Lion Capital, 110
USPQ2d at 1163 (affirming that the Board properly considered all potential
purchasers for recited services, including both sophisticated and unsophisticated
investors, since precedent requires consumer care for likelihood of confusion decisions
be based “on the least sophisticated potential purchasers”).
We thus find this DuPont factor neutral.
C. Strength of the Pleaded Mark
We next examine the strength of Plaintiff’s pleaded mark to determine the scope
of protection to be accorded. The strength of a mark rests on the extent to which “a
significant portion of the relevant consuming public . . . recognizes the mark as a
source indicator.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857
F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (citing Palm Bay Imps. v. Veuve
Clicquot 73 USPQ2d at 1694). In determining the strength of a mark, we consider
Opposition No. 91213527, etc.
- 30 -
both inherent strength, based on the nature of the mark itself, and commercial
strength or recognition. Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110
USPQ2d 1458, 1476 (TTAB 2014); see also In re Chippendales USA Inc., 622 F.3d
1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both
by its conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”). The fifth DuPont factor, the “fame” of the prior mark, and the sixth
DuPont factor, the number and nature of similar marks in use for similar goods,
DuPont, 177 USPQ at 567, may be considered in tandem to determine the strength
of Plaintiff’s mark and the scope of protection to which it is entitled. Bell’s Brewery,
Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017).
1. Commercial Strength of Plaintiff’s OMAHA STEAK Mark
This DuPont factor requires us to consider the commercial strength of Plaintiff’s
mark. Fame, an extreme form of commercial strength, if it exists, plays a dominant
role in the likelihood of confusion analysis because famous marks enjoy a broad scope
of protection or exclusivity of use. The fame of a mark is not a binary factor in the
context of a likelihood of confusion analysis. Joseph Phelps v. Fairmont Holdings, 122
USPQ2d at 1734. Rather, likelihood of confusion fame “varies along a spectrum from
very strong to very weak.” See Palm Bay v. Veuve Clicquot 73 USPQ2d at 1694
(quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003)).
Fame for likelihood of confusion purposes arises as long as a “significant portion of
the relevant consuming public ... recognizes the mark as a source indicator.” Id.
However, fame is insufficient, standing alone, to establish likelihood of confusion.
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372 ,
Opposition No. 91213527, etc.
- 31 -
217 USPQ 505, 507 (Fed. Cir. 1983) (“Likely ... to cause confusion means more than
the likelihood that the public will recall a famous mark on seeing the same mark used
by another.”).
Fame may be measured indirectly by the volume of sales and advertising
expenditures of the goods and services identified by the marks at issue, “the length
of time those indicia of commercial awareness have been evident,” widespread critical
assessments, and through notice by independent sources of the products identified by
the marks, as well as the general reputation of the products and services. Bose Corp.
v. QSC Audio Prods., 63 USPQ2d at 1305-1306 and 1309 (recognizing indirect
evidence as appropriate proof of commercial strength).
Plaintiff’s claim that its pleaded OMAHA STEAKS marks are famous is based
primarily on testimony of Todd Simon, Plaintiff’s Senior Vice President of Sales and
Marketing. According to Mr. Simon, Plaintiff spent over $45 million in 2011, and over
$50 million in 2012 and in 2013, on domestic adverting of its beef products. (T. Simon
test. pp. 16-19).43 While these numbers may be substantial, Plaintiff did not supply
specific sales figures or testify as to market share. “Raw numbers of product sales and
advertising expenses may have sufficed in the past to prove fame of a mark, but raw
numbers alone in today’s world may be misleading. ... Consequently, some context in
which to place raw statistics is reasonable.” Bose Corp. v. QSC Audio Products, 63
USPQ2d at 1309. In our earlier decision, and in reliance on Bose, we found it
significant that there was no “contextual” evidence about Plaintiff’s sales figures and

43 33 TTABVUE; TSDR 145-148.
Opposition No. 91213527, etc.
- 32 -
advertising expenditures, and insufficient information regarding the public exposure
to the OMAHA STEAKS marks. The Court of Appeals, in vacating and remanding
the Board’s decision, found that our earlier decision “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.” Omaha Steaks v. Greater Omaha Packing,
128 USPQ2d at 1692. As the Court of Appeals further observed, “[t]hough Bose
expressly approves of using market share, it does not require it.” Id. at 1690. Other
contextual evidence may suffice, id. at 1690, such as detailing Plaintiff’s advertising,
promotion, marketing, and market recognition of goods bearing its mark.
We accordingly revisit the evidence of record regarding fame. In addition to the
findings of fact set forth in the background section of this decision, and the
advertising expenditures noted above, we point out that it is undisputed that every
one of Plaintiff’s pleaded OMAHA STEAKS marks include the phrase “OMAHA
STEAKS.”44 In addition, Mr. Simon testified that Plaintiff advertises via catalog and
direct mail, a daily blast e-mail, customer calls, and on social media platforms,
including Twitter, Instagram, Pinterest and Facebook, where Plaintiff has over
300,000 followers. Plaintiff’s direct mail advertising program operates on a rotating
basis with about 2 million customers that are solicited throughout the year. (Id. at
18-26, 79-80).45 Plaintiff also advertises by national radio and television campaigns,

44 1 TTABVUE.
45 33 TTABVUE; TSDR 147-155, 208-209.
Opposition No. 91213527, etc.
- 33 -
free standing print campaigns, and has been mentioned in national magazines,
including Time, Newsweek, Playboy and PC Magazine,46 and newspapers, including
USA Today, the Wall Street Journal, the New York Times and the LA Times. Todd
Simon has personally promoted Plaintiff’s goods and services under the Omaha
Steaks mark on the following television shows: “Fox & Friends,” “Hell’s Kitchen,”
“Celebrity Apprentice” and “The View.” (Id. at 28).47 Plaintiff’s products have been
featured on “The Oprah Winfrey Show,” “The Ellen DeGeneres Show,” “Food
Factory,” “Unwrapped,” and “Military Makeover.” (Id. at 29-30, 33).48
Omaha Steaks also has been mentioned in the films Dodgeball and Flipper, and
in television shows, including “The West Wing,” “Seinfeld,” “The George Lopez Show”
and “Dennis Miller Live.” (Id. at 53-56).49

46 Id. at 79-80. The sampling of media listings, (B. Simon test. exh. 8) 34 TTABVUE, has less
probative value because there is no information whatsoever regarding the specific nature of
the media reference. The listing only provides the name of the publication, radio broadcast
or television station, including streaming services, and a title for the referenced “hit.”
47 Id. at 157.
48 Id. at 158-159, 162.
49 Id. at 182-185. Plaintiff also attempts to introduce additional Wikipedia evidence
purportedly demonstrating that “Omaha Steaks” has been featured on other television
programs, and included a hyperlink to the Wikipedia website. First, we have made clear that
providing hyperlinks to Internet materials is insufficient to make such materials of
record. See In re HSB Solomon Assocs., LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (stating
that “a reference to a website’s internet address is not sufficient to make the content of that
website or any pages from that website of record”); Safer Inc. v. OMS Investments Inc., 94
USPQ2d 1031, 1039 (TTAB 2010) (noting that because of the transitory nature of Internet
postings, websites referenced only by links may later be modified or deleted). Second, the
Board is hesitant to take judicial notice of evidence from Wikipedia, as its source material is
continuously subject to change by collaborative user-input. See In re Jimmy Moore LLC, 119
USPQ1d 1764, 1768 (TTAB 2016).
Opposition No. 91213527, etc.
- 34 -
Plaintiff has attended multiple trade shows, including PPSI in Las Vegas, the
Realtors Conference in San Diego (Id. at 39-41),50 and has had a presence at a number
of festivals, food fairs and tastings, such as the New York Wine & Food Festival and
the South Beach Festival. (Id. at 42).51 Omaha Steaks’ goods and services are
promoted under the Omaha Steaks mark through concessions, and some signage, at
venues in Omaha, e.g., the CenturyLink Center arena, TD Ameritrade Park, Ralston
arena, Storm Chasers Stadium and the Omaha Henry Doorly Zoo. (Id. at 43-46).52
Plaintiff has 75 stores in 25 states, including Omaha, New York, Illinois, Florida,
Georgia, Ohio, Kentucky, Missouri, Nebraska, California, Colorado, Nevada, Arizona,
Texas, Pennsylvania and New Jersey, as well as two kiosks at the Omaha airport.
(Id. at 18 and 47-48).53 The kiosks have appeared in nationally-released films “Up in
the Air” and “About Schmidt.” (Id. at 53).54 Plaintiff also sells its products online on
Amazon. (Id. at 32).55
Having evaluated the evidence of fame in its totality, we find that Plaintiff’s
OMAHA STEAKS mark, as a whole, has achieved, overall, a significant level of fame.
While there are no particulars regarding the advertising expenditures or any specific
sales figures, we can glean from the advertising figures provided, which are not

50 Id. at 168-170.
51 Id. at 171.
52 Id. at 172 - 175.
53 Id. at 147, 176-177.
54 Id. at 182.
55 Id. at 161.
Opposition No. 91213527, etc.
- 35 -
insignificant, and the specifics regarding Plaintiff’s marketing and promotional
activities coupled with the considerable amount of unsolicited media attention, that
Plaintiff’s OMAHA STEAKS mark has garnered considerable consumer recognition,
which correlates with substantial sales. Moreover, further context demonstrating
consumer recognition is found in Plaintiff’s long period of use of the OMAHA STEAKS
mark, its 75 geographically diverse stores, and its varied and extensive modes of
advertising.
Defendant argues that “the OMAHA STEAKS mark is an extremely weak mark
because it is comprised of the well-known, geographically descriptive city name
‘Omaha,’ coupled with the generic and disclaimed name of the goods ‘steaks.’”
Defendant’s br. p. 21.56 Defendant takes the position that rather than being “famous”
or “strong,” Plaintiff’s OMAHA STEAKS marks are extremely weak because there
are many companies, some of which are in the beef or food business, currently located
in Omaha, Nebraska that are using trademarks or trade names in which the first
word is “Omaha.”57 Id. at 23-24. Pointing to Jack Wolfskin v. New Millennium Sports,
116 USPQ2d at 1136, Defendant maintains that when there are numerous similar
marks in use by third-party sources in related fields, such evidence may establish a
common term to be a weak source indicator that is only entitled to a narrow scope of
protection. To support this position, Defendant submitted evidence of third -party
uses of marks and company names containing the word OMAHA purportedly in

56 49 TTABVUE 22.
57 Id. at 24-25.
Opposition No. 91213527, etc.
- 36 -
connection with beef and food products and services. Defendant posits that the
“evidence shows that typical buyers and potential buyers of beef and other food
products have grown quite accustomed to seeing the city name ‘Omaha’ used in
trademarks and trade names for beef and food products by many third parties, all
without confusion as to source.” Defendant’s br. p. 25.58 Through the Peetz testimony
and exhibits, Defendant made of record evidence of the following third-party uses of
OMAHA-formative marks to identify businesses in the vicinity of Omaha,
Nebraska:59
 Omaha Tower Café for a café located in a large office building in Omaha;

 Omaha Oriental Food & Gifts for a specialty store selling oriental foods,
grocery goods, and gifts;

 Omaha Popcorn for a store located in a strip mall selling various flavors of
popcorn, drinks and popcorn containers;

 Omaha Tap House for a casual restaurant located in downtown Omaha;

 Omaha Wine Company, a specialty store selling various wines, alcoholic
beverages;

 “OmahaFastFoods.com,” a “grocery delivery service for the Omaha metro
area;

 “Omaha Prime,” an “elegant steakhouse” in Omaha;

 “Omaha Picnic Pros,” a “catering service specializing in barbecuing and
grilling located in southern Omaha; and

 Omaha Culinary Tours for a bus tour featuring some of Omaha’s most well-
known steakhouses.

58 49 TTABVUE 26.
59 40 TTABVUE, 41 TTABVUE.
Opposition No. 91213527, etc.
- 37 -
Defendant also made of record through the testimony, and exhibits, of Carol
Mesenbrink, Defendant’s credit manager, evidence that Defendant sold beef to
companies named Omaha Beef Company, Inc.60 and Omaha Meat Processors, Inc. of
Ohio, Nebraska.61
Defendant also introduced printouts from various websites showing third-party
use of OMAHA in company names for businesses that sell meat and other food
products.62 The printouts show that B.I.G. Meats Omaha, Omaha Meat Processors,
Inc., and Omaha Beef Company sell raw meat in bulk, including beef. The printouts
also show restaurant use of OMAHA in connection with beef products. For example,
the website for Husker BBQ states that it uses only the “finest meats” which includes
“Omaha Beef,” and a review of Cascio’s Steak House is titled “This place is why its
calle [sic] Omaha Beef.”
Plaintiff challenges the evidence, arguing that none of the businesses identified in
the Peetz testimony “provid[ed] individual, uncooked beef products or otherwise
compete with Omaha Steaks.”63 Plaintiff further contends that third-party uses are
not entitled to any weight without probative evidence demonstrating the nature and
extent of use, actual sales, and the like.

60 38 TTABVUE 18-20
61 Id. at 20-22.
62 31 TTABVUE. We have not considered the printout showing third-party use of OMAHA
in connection with Vic’s Omaha Popcorn in this decision because such use is not in a related
industry.
63 48 TTABVUE 25.
Opposition No. 91213527, etc.
- 38 -
The Federal Circuit has held that evidence of third-party use “can show that
customers have been educated to distinguish between different marks on the basis of
minute distinctions.” Jack Wolfskin v. New Millennium Sports, 116 USPQ2d at 1136
(quoting Juice Generation, Inc. v. GS Enters., 115 USPQ2d at 1674). Contrary to
Plaintiff’s understanding, the Federal Circuit further held that evidence of extensive
use and registration of a term by others as a mark can be “powerful on its face, even
where the specific extent and impact of the usage has not been established.” Jack
Wolfskin v. New Millennium Sports, 116 USPQ at 1136 (internal quotes omitted).
“The weaker an opposer’s mark, the closer an applicant’s mark can come without
causing a likelihood of confusion and thereby invading what amounts to its
comparatively narrower range of protection.” Juice Generation v. GS Enters., 115
USPQ2d at 1674.
Upon review, we find the evidence introduced through the Peetz testimony does
not show use of OMAHA-formative marks in connection with goods or services related
to meat, and Defendant has not submitted evidence to show that the goods or services
highlighted in that evidence, e.g., oriental foods and gifts, popcorn, restaurant and
café services, may be considered “similar” to the meat in the cited registration. See
Omaha Steaks v. Greater Omaha Packing 128 USPQ2d at 1693-94 (quoting Century
21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992) (internal citation omitted) (“[T]he relevant du Pont inquiry is ‘[t]he
number and nature of similar marks in use on similar goods.’”). As such, they have
no probative value in this decision.
Opposition No. 91213527, etc.
- 39 -
Defendant’s relevant evidence, namely the trade name use of B.I.G. Meats
Omaha, Omaha Meat Processors, Inc., and Omaha Beef Company in connection with
beef-related businesses, fails to demonstrate such extensive use of OMAHA-
formative marks, as contemplated by the sixth DuPont factor. Moreover, even if we
were to consider the two restaurant uses showing OMAHA- formative marks in
connection with beef as a menu item, the five third-party uses here are far too few in
number to be “extensive” evidence of weakness that is “powerful on its face,” Jack
Wolfskin v. New Millennium Sports, 116 USPQ2d at 1136, and there is no
accompanying showing of any long duration or widespread exposure of the referenced
uses that might enhance their probative value. See also Juice Generation v. GS
Enters., 115 USPQ2d at 1674 & n.1 (referring to evidence of “a considerable number,”
26 third-party marks). We thus find that the third-party uses fail to evidence any
commercial weakness of the OMAHA STEAKS mark.
In the absence of a finding of any commercial weakness in the cited mark, we find
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.” Joseph Phelps v. Fairmont
Holdings, 122 USPQ2d at 1734.
2. Inherent Strength
To evaluate the inherent or conceptual strength of Plaintiff’s OMAHA STEAKS
mark, “we evaluate its intrinsic nature, that is, where it lies along the generic-
descriptive-suggestive-arbitrary (or fanciful) continuum of words.” In re Davia, 110
USPQ2d 1810, 1815 (TTAB 2014). “Marks that are descriptive or highly suggestive
are entitled to a narrower scope of protection, i.e., are less likely to generate confusion
Opposition No. 91213527, etc.
- 40 -
over source identification, than their more fanciful counterparts.” Juice Generation v.
GS Enters., 115 USPQ2d at 1675.
Defendant made of record 118 third-party applications and registrations (both live
and dead) for marks that include the word “OMAHA,” and in which that term is
disclaimed.64 “[T]hird-party registrations may be probative of conceptual strength or
weakness as they ‘may be considered to demonstrate the meaning of a word which
comprises the mark, or a portion thereof, to show that there is a well -known and
commonly understood meaning of that word and that the mark has been chosen to
convey that meaning. … The conclusion to be drawn in such a case is that there is an
inherent weakness in a mark comprised in whole or in part of the word in question
and that, therefore, the question of likelihood of confusion is colored by that weakness
to the extent that only slight differences in the marks may be sufficient to distinguish
one from the other.’” Sock It To Me, Inc. v. Aiping Fan, 2020 USPQ2d 10611 at *9
(TTAB 2000) (quoting In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); see
also Juice Generation v. GS Enters., 115 USPQ2d at 1675 (“Third party registrations
are relevant to prove that some segment of the composite marks which both
contesting parties use has a normally understood and well-recognized descriptive or
suggestive meaning, leading to the conclusion that that segment is relatively weak.”).
On review, none of the third-party registrations have any value in this proceeding.
The overwhelming majority of the registrations are cancelled. A cancelled or expired

64 29 TTABVUE. The applications, most of which are cancelled, show only that they have
been filed. See Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463 (TTAB
2003).
Opposition No. 91213527, etc.
- 41 -
registration has no probative value other than to show that it once issued and it is
not entitled to any of the statutory presumptions of Section 7(b) of the Trademark
Act. In Re Ginc UK Limited, 90 USPQ2d 1472, 1480 (TTAB 2007). See also Action
Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309
(Fed. Cir. 1989) (“a cancelled registration does not provide constructive notice of
anything.”). The remaining live registrations cover goods and/or services that are
unrelated to the goods at issue here. See In re i.am.symbolic, llc, 866 F.3d 1315, 123
USPQ2d 1744, 1751 (Fed. Cir. 2017) (disregarding third-party registrations for other
types of goods where the proffering party had neither proven nor explained that they
were related to the goods in the cited registration); In re Thor Tech Inc., 90 USPQ2d
1634, 1639 (TTAB 2009) (the third-party registrations are of limited probative value
because the goods identified in the registrations appear to be in fields which are
removed from the goods at issue).
Nonetheless, Plaintiff’s Registration issued based on a claim of acquired
distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), and with
a disclaimer of the generic term “steaks.”65 Accordingly, the mark is not inherently
distinctive. Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d
1001, 1005 (Fed. Cir. 1988); see also Cold War Museum, Inc. v. Cold War Air Museum,
Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009). We also take judicial

65 We take judicial notice of the definition of “steak” defined in MERRIAM-WEBSTER as “1a:
a slice of meat cut from a fleshy part of a beef carcass.” www.merriam.webster.com, retrieved
September 29, 2020. The Board may take judicial notice of dictionary definitions, including
online dictionaries which exist in printed format. See In re Cordua Rests. LP, 110 USPQ2d
1227, 1229 n.4 (TTAB 2014); In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB
2002).
Opposition No. 91213527, etc.
- 42 -
notice of OMAHA, which is defined in MERRIAM-WEBSTER under the category
“geographical name” as a “city on the Missouri River in eastern Nebraska.”66 We
accordingly find that OMAHA is geographically descriptive of the location of a city,
and conclude that OMAHA is conceptually weak as a source indicator.
The record corroborates this finding and also shows that the City of Omaha is
widely known as a place beef comes from. For example, an article by Denis Horgan,
Courant Travel Editor, is titled “A Gem Of The Midwest Omaha Nebraska It’s Known
For Its Beef, But There’s A Lot More To City That Was Crossroad To Western
Expansion” and states, in part, “Omaha is known for its beef, of course.”67 The “What
is” article in Food & Spirits Magazine, a free magazine distributed in the Omaha
metro area, states “… Omaha is known for its beef … .”68 Moreover, the relevant
third-party uses of OMAHA- formative marks of record 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

66 www.merriam.webster.com/dictionary/Omaha, retrieved September 15, 2020.

67 31 TTABVUE 8.
68 Id. at 18.
Opposition No. 91213527, etc.
- 43 -
Plaintiff’s mark. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-
34 (Fed. Cir. 1997) (finding the disclaimed word CAFÉ the less significant part of the
mark THE DELTA CAFÉ). Consequently, we do not find that Plaintiff’s OMAHA
STEAKS mark bars registration of every mark including the component word
OMAHA; it will only bar registration of marks “as to which the resemblance to
[Defendant’s marks] is striking enough to cause one seeing it to assume that there is
some connection, association or sponsorship between the two.” Anthony’s Pizza &
Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d 1271, 1278 (TTAB
2009), aff’d, 415 Fed. Appx. 222 (Fed. Cir. 2010) (quoting Pizza Inn, Inc. v. Russo, 221
USPQ 281, 283 (TTAB 1983)).
D. The Marks
Marks are compared in their entireties for similarities in appearance, sound,
connotation, and commercial impression. Stone Lion v. Lion Capital, 110 USPQ2d at
1160 (quoting Palm Bay. v. Veuve Clicquot, 73 USPQ2d at1691. When the goods are
legally identical, the degree of similarity between the marks necessary to support a
determination that confusion is likely declines. See Bridgestone Americas Tire
Operations, LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir.
2012); In re Viterra Inc., 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342,
94 USPQ2d 1257, 1260 (Fed. Cir. 2010). Here, that precept is balanced by our finding
that the word OMAHA is inherently weak, and therefore only entitled to a narrow
scope of protection.
With these principles in mind, we compare Defendant’s mark, shown below,
Opposition No. 91213527, etc.
- 44 -

with Petitioner’s typed OMAHA STEAKS mark. Although we must compare the
marks in their entireties, one feature of a mark may be more significant than another
and it is not improper to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985) (“There is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be unavoidable.”).
Further, where both words and a design comprise the mark, the words are
normally accorded greater weight because they are more likely to make an impression
upon purchasers, would be remembered by them, and would be used by them to
request the goods and/or services. In re Viterra Inc., 101 USPQ2d at 1908, citing CBS,
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“in a composite
mark comprising a design and words, the verbal portion of the mark is the one most
likely to indicate the origin of the goods to which it is affixed”); Joel Gott Wines LLC
v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430-31 (TTAB 2013); In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987). See also Giant Food, Inc. v.
Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983).
Considering Plaintiff’s mark, it is dominated by the geographically descriptive
word OMAHA, as the word STEAKS is generic and has been disclaimed. Disclaimed
Opposition No. 91213527, etc.
- 45 -
matter that is descriptive or generic of a party’s goods is typically less significant or
less dominant when comparing marks. See Citigroup Inc. v. Capital City Bank Group
Inc., 98 USPQ2d 1253, 1257 (Fed. Cir. 2011); Dixie Rests., 41 USPQ2d at 1533-34
(finding DELTA the dominant part of the mark THE DELTA CAFÉ because CAFÉ
was disclaimed”). Greater weight is often given to the dominant feature when
determining whether marks are confusingly similar. See In re Nat’l Data Corp., 224
USPQ at 751.
Defendant’s mark is dominated by the words GREATER OMAHA; they are the
first words in the mark, are visually larger than the laudatory slogan, “PROVIDING
THE HIGHEST QUALITY BEEF,” and are the words that would be used to call for
the goods. While we do not find the steer head design, alone, sufficient to distinguish
the two marks, it is an element of visual difference that is not present in Plaintiff’s
mark. Defendant also has disclaimed all of the wording in its mark because it is
laudatory; however, that does not remove those words from the mark, or reduce the
visual dominance of the words GREATER OMAHA. As stated by our primary
reviewing court,
… it is well settled that the disclaimed material still forms
a part of the mark and cannot be ignored in determining
likelihood of confusion. Such disclaimers are not helpful in
preventing likelihood of confusion in the mind of the
consumer, because he is unaware of their existence.
Therefore, the disclaimed portions must be considered in
determining the likelihood of confusion. (citations omitted)
Giant Food v. Nation’s Foodservice, 218 USPQ2d at 395; see also In re Nat’l Data
Corp., 224 USPQ at 751-752; V-M Corp. v. Mayfair Sound Prd., Inc., 480 F.2d 898,
178 USPQ 477, 477-478 (CCPA 1973). As noted above, notwithstanding the
Opposition No. 91213527, etc.
- 46 -
disclaimer, the words GREATER OMAHA can still be dominant, visually, and
because they would be used to call for the goods, when discussed orally.
Although the wording GREATER OMAHA and OMAHA STEAKS look and sound
alike to the extent that OMAHA is present in both marks, the marks are specifically
different. See Jack Wolfskin v. New Millennium Sports, 116 USPQ2d at 1134-35. The
word GREATER is a prominent point of difference that causes Defendant’s mark to
differ in appearance and sound from Plaintiff’s mark. 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.
As regards meaning, in both marks the word OMAHA connotes a geographic
location. The addition of GREATER to Defendant’s mark imparts to it a meaning of
a metropolitan region; whereas the addition of STEAK to Applicant’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.
The DuPont factor of similarity of the marks thus favors a finding of no likelihood
of confusion.
Opposition No. 91213527, etc.
- 47 -
E. Actual Confusion
Defendant’s assertion, confirmed by Plaintiff, that the parties are unaware of any
instances of actual confusion between the marks is entitled to very little weight. First,
it is not necessary to show actual confusion in order to establish likelihood of
confusion. Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. (2002); Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546,
14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990), aff’g HRL Associates, Inc. v. Weiss
Associates, Inc., 12 USPQ2d 1819 (TTAB 1989). Second, the marks have been in
contemporaneous use for only a short time, since 2014. Thus, the opportunity for
actual confusion to have occurred in the marketplace is minimal. See Cunningham v.
Laser Golf, 55 USPQ2d at 1847. Accordingly, the eighth DuPont factor, the length of
time during and conditions under which there has been contemporaneous use without
actual confusion, is neutral.
Defendant maintains that its opposed mark includes the two words GREATER
OMAHA which it has used as a trademark for beef, and as the first two words of its
company name since 1920. Defendant further maintains that Plaintiff claims to have
been using the OMAHA STEAKS mark on meat since 1968 and has admitted that it
has been aware of the existence of Defendant since as least as early as 1996. As a
result, there have been decades of concurrent use without actual confusion. We find
Defendant’s argument unavailing for two reasons: (1) Defendant’s mark at issue in
this proceeding is a composite word and design mark and not the two-word mark
GREATER OMAHA; and (2) because the record raises a question of whether
Opposition No. 91213527, etc.
- 48 -
Defendant is moving into a new market space, we cannot ascertain whether there has
been a meaningful opportunity for contemporaneous use of the respective marks in
connection with the identified goods.
F. 13th DuPont Factor – Bad Faith Adoption
Under the thirteenth DuPont factor, evidence of an applicant’s bad faith adoption
of its mark is relevant to our likelihood of confusion analysis. L.C. Licensing Inc. v.
Berman, 86 USPQ2d 1883, 1890 (TTAB 2008). See J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991) (“Whether
there is evidence of intent to trade on the goodwill of another is a factor to be
considered, but the absence of such evidence does not avoid a ruling of likelihood of
confusion.”); Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641,
643 (CCPA 1982) (Nies, J., concurring opinion) (“The absence of intent to confuse
would not preclude a finding of likelihood of confusion, but had such intent been
shown (which it has not), it would be a factor to weigh against the newcomer.”); Lever
Bros. Co. v. Riodela Chemical Co., 41 F.2d 408, 5 USPQ 152, 154-55 (CCPA 1930)
(“[W]e have a right, in determining the question of likelihood of confusion or mistake,
to consider the motive in adopting the mark as indicating an opinion, upon the part
of one vitally interested, that confusion or mistake would likely result from the use
of the mark.”). In this case, there is no evidence of record of any intent by Defendant
to trade on the goodwill of Plaintiff. Accordingly, this DuPont factor is neutral.
Opposition No. 91213527, etc.
- 49 -
G. Conclusion
We have considered all of the evidence made of record pertaining to the likelihood
of confusion issue, as well as all of the arguments related thereto. We find that the
likely perception of OMAHA as a geographic indicator is a factor entitled to
significant weight in our likelihood of confusion analysis. This fact, together with the
differences in the marks, including the absence of the word STEAKS in Defendant’s
mark, outweighs the legal identity of the goods, the presumed identical trade
channels, and the fame that Plaintiff has demonstrated in the mark OMAHA
STEAKS.
We conclude that consumers familiar with Plaintiff’s “meat” sold under the
OMAHA STEAKS mark are not likely to mistakenly believe, upon encountering
Defendant’s mark for “meat, including boxed beef
primal cuts,” that the goods originate from or are associated with or sponsored by the
same entity.
Decision: The notice of opposition is dismissed.