Before Prost, O’Malley, and Stoll. Appeal from the Trademark Trial and Appeal Board

Summary: Advertising costs and sales figures are relevant in determining whether a trademark is famous and, thus, whether a likelihood of confusion exists between it and another mark.

Omaha Steaks filed an opposition to refuse registration of Greater Omaha Packing’s mark, “GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF.” The Trademark Trial and Appeals Board (“the Board”) dismissed the opposition, and Omaha Steaks appealed to the Federal Circuit.

The Board acknowledged that Omaha Steaks spent about $50 million per year on advertising its beef products, and that during the holiday season it processes 100,000 orders per day. The Board disregarded this evidence, however, when analyzing the fame of Omaha Steaks’ trademarks because “these ‘raw’ figures lacked context[.]” The Federal Circuit disagreed finding contextual evidence in the record, including a variety of sales and marketing programs, demonstrating that Omaha Steaks’ sales and marketing efforts regularly exposed the public to their marks on a nationwide scale.  In remanding the case, the Federal Circuit noted that such figures did not have to be accompanied by market share evidence, or by copies of the advertisements when it was clear that the advertisements all included “Omaha Steaks.”  Accordingly, the Federal Circuit vacated and remanded the TTAB’s decision.