Does your advertising budget enhance your right to a trademark? OMAHA STEAKS v. OMAHA PACKING

A trademark is a word, phrase, symbol, or design that identifies and distinguishes the products produced by one company from the products produced by other companies. Trademark law in the United States is focused on consumer protection. To ensure that consumers are not confused about who produced a product, trademark owners are given the exclusive right to brand products with their trademark. If someone other than the trademark owner brands similar products in a way that is likely to cause consumer confusion that can be considered trademark infringement. A trademark owner can file a lawsuit for an injunction to stop trademark infringement as well as for money damages for trademark infringement which has occurred.

Registration of a trademark is not necessary to begin using a trademark in the United States or to granted some rights to a trademark. However, because registration of a trademark strengthens the rights associated with the trademark, many trademark owners choose to register their trademarks. In the United States applications to register a trademark are reviewed by the United States Patent and Trademark Office. When the United States Patent and Trademark Office reviews an application to register a trademark, the office will first determine if there is a likelihood of confusion between trademark in the application and existing registered trademarks. If the United States Patent and Trademark Office does not find a likelihood of confusion, the trademark application will be published for opposition. Trademark owners that feel their trademark will be confused with the trademark in the application can file an opposition to stop the application.

Because trademark law in the United States is governed by both statute and case law, each circuit court has a slightly different, but similar, test for likelihood of confusion. In the context of trademark registration, the Court of Appeals for the Federal Circuit is authoritative because it reviews appeals from the Trademark Trial and Appeal Board . The Federal Circuit’s test for likelihood of confusion is refereed to as the Dupont factors. There are 13 factors to be considered, and each factor is a question of fact to be determined on a case by case basis.

The fifth Dupont factor relates to the fame of a trademark. A trademark with extensive public recognition and renown deserves and receives more legal protection than an obscure or weak mark. This means that a trademark owner who can show their trademark is famous has a stronger chance of opposing the registration of a trademark which may be confusingly similar. Because it is difficult to directly measure how famous a trademark is, the fame of a trademark may be measured indirectly, by the volume of sales, advertising expenditures of the products branded with the trademark and other factors.

OMAHA STEAKS INTL, v. GREATER OMAHA PACKING CO., 2018-1152 (C.A.F.C. 2018) is an example of a trademark owner using advertising expenditures to demonstrate their trademark is famous. The defendant in the case filed a trademark application for the phrase “GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF”. The plaintiff filed an opposition to the trademark registration and argued that there was a likelihood of confusion for several reasons, including the Omaha Steaks trademark was famous. To prove that their trademark was famous Omaha Steaks offered advertising expenditures as evidence. The Trademark Trial and Appeal Board rejected the advertising expenditures and sales figures as evidence of the fame of the Omaha Steaks trademark and denied the opposition. Omaha Steaks appealed to the Federal Circuit.

The Federal Circuit held that denying advertising expenditures and sales figures as evidence was an error and remanded the case for reconsideration. The Federal Circuit held that the Trademark Trial and Appeal Board 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.

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