ESTTA Tracking number: ESTTA784639 Filing date: 11/22/2016 ...
ESTTA Tracking number: ESTTA902412 Filing date: 06/11/2018 ...
Transcript of ESTTA Tracking number: ESTTA902412 Filing date: 06/11/2018 ...
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ESTTA Tracking number: ESTTA902412
Filing date: 06/11/2018
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91241680
Party PlaintiffOmaha Steaks International, Inc.
CorrespondenceAddress
NORA M KANEOMAHA STEAKS INTERNATIONAL INC11030 "O" STREETOMAHA NE, NE 68137UNITED STATESEmail: [email protected]
Submission Motion to Amend Pleading/Amended Pleading
Filer's Name Nora M. Kane
Filer's email [email protected]
Signature /Nora M. Kane/
Date 06/11/2018
Attachments TTAB Amended Notice of Opposition GREATER OMAHA HERE-FORD.pdf(35999 bytes )Exhibit A - Schedule of Marks.pdf(148876 bytes )Exhibit B.pdf(2181349 bytes )
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the Matter of Application Serial No. 87/677,128
For the mark: GREATER OMAHA HEREFORD
Published: April 10, 2018
– – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – –X
OMAHA STEAKS INTERNATIONAL, INC., :
: Opposition No.: 91241680
Opposer, :
:
v. :
:
GREATER OMAHA PACKING CO., INC., :
:
Applicant. :
– – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – –X
AMENDED NOTICE OF OPPOSITION
Opposer, Omaha Steaks International, Inc., a corporation organized and existing under the laws
of Nebraska with a principal place of business at 11030 “O” Street, Omaha, Nebraska, 68137,
believes that it will be damaged by the issuance of a registration for the alleged mark shown in
Application Serial No. 87/677,128. Opposer hereby opposes same pursuant to Section 13(a) of
the Lanham Trademark Act of 1946 ("Lanham Act"), 15 U.S.C. § 1063(a).
As grounds for opposition, Opposer alleges as follows:
1. From its humble 1917 beginnings, Omaha Steaks has achieved a nationwide
presence and grown to a multimillion dollar purveyor of quality hand-cut steaks, food gifts,
seafood, wine, side dishes, and desserts. Headquartered in Omaha, Nebraska, Omaha Steaks
employs a workforce of about 1,800 employees—a population that nearly doubles during the
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December holidays. Its nationwide markets include foodservice, mail order, incentive, telesales,
its own retail stores, licensed restaurants, sales to specialty and food stores, and online sales.
2. Opposer is a highly successful company and the OMAHA STEAKS mark is
famous in connection with Opposer's products and services and a source of considerable
goodwill for Opposer. The integrity of the OMAHA STEAKS brand is of utmost importance to
Opposer.
3. Omaha Steaks has registered many trademarks prominently incorporating the
words OMAHA STEAKS. Opposer has used the OMAHA STEAKS mark in interstate
commerce in the United States continuously since 1958. See Schedule of Marks attached as
Exhibit A. Pursuant to 37 C.F.R. § 2.122(d)(1), current printouts of information from the
electronic database records of the USPTO showing the current status and title of the
Registrations listed in Exhibit A as of June 7, 2018 are attached hereto as Exhibit B.
4. Opposer's Registration Nos. 1458802, 1515602, 1555215, 1674686, 2002499,
2840193, 2893159, 3758608, 3768689, 3768690, 3768693, and 3857500 are incontestable
pursuant to 15 U.S.C. § 1065, which provides conclusive evidence of Opposer's ownership of the
marks therein, of the validity of the marks therein, and of Opposer's exclusive right to use the
marks in commerce in connection with the goods and/or services identified in the registrations
pursuant to 15 U.S.C. § 1115(b).
5. As a result of its widespread, continuous, and exclusive use of the OMAHA
STEAKS mark to identify its goods and services and Opposer as their source, Opposer owns
valid and subsisting federal statutory and common law rights to the OMAHA STEAKS mark.
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6. Opposer's OMAHA STEAKS mark is distinctive to both the consuming public
and Opposer's trade.
7. Opposer has expended substantial time, money, and resources marketing,
advertising, and promoting the goods and services sold under the OMAHA STEAKS mark
including through Opposer's marketing, advertising and promotional efforts and channels for
goods or services under its mark.
8. As a result of its distinctiveness and widespread use and promotion throughout the
United States, Opposer's OMAHA STEAKS mark is a famous trademark, and became famous
prior to the filing date of or date of first use alleged in the opposed application or any other
priority date on which the applicant may rely.
9. Applicant, Greater Omaha Packing, with an address at 3001 L Street, Omaha,
Nebraska, 68107, on November 8, 2017 filed trademark Application Serial No. 87/677,128 to
register the proposed mark GREATER OMAHA HEREFORD for "Hereford beef for resale by
unrelated entities" in International Class 29.
10. Applicant has stated an intent to use the proposed mark, at least sixty (60) years
after Opposer began using Opposer's OMAHA STEAKS mark.
11. Opposer's OMAHA STEAKS mark has priority over the proposed mark because
Opposer's use and registration date[s] predate the Applicant's filing date or any other date on
which the Applicant may rely for purposes of priority.
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12. Applicant's proposed mark GREATER OMAHA HEREFORD is confusingly
similar to Opposer's OMAHA STEAKS mark in appearance, sound, connotation, and
commercial impression.
13. Applicant’s similar mark, Registration No. 3998763, was cancelled by the TTAB
in Cancellation No. 92059629, upon Opposer’s Petition.
14. The goods covered by the Applicant's Application Serial No. 87/677,128 are
identical and/or similar to the goods Opposer offers under its marks. Applicant’s application
lists "Hereford beef for resale by unrelated entities." Opposer’s asserted marks cover, among
other things, “meat,” “beef,” “meat sold to hotels, restaurants and institutions,” and “wholesale
distributorship services in the field of food.” Each of these are identical to, or subsume the
goods covered by Applicant's Application Serial No. 87/677,128.
FIRST GROUND FOR OPPOSITION -- LIKELIHOOD OF CONFUSION
15. The foregoing paragraphs are re-alleged and incorporated herein.
16. Opposer’s use of its OMAHA STEAKS mark long predates the filing of the
Application.
17. Upon information and belief, when Applicant filed the application that is the basis
of this Opposition, it was aware of Opposer and Opposer's long-standing use of the OMAHA
STEAKS mark.
18. The proposed mark is barred from registration because it consists of or comprises
a mark which so resembles Opposer's previously used and registered OMAHA STEAKS mark as
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to be likely, when used in connection with the alleged goods of Applicant, to cause confusion,
mistake, or deception within the meaning of 15 U.S.C. § 1052(d).
SECOND GROUND FOR OPPOSITION -- DESCRIPTIVENESS
19. The foregoing paragraphs are re-alleged and incorporated herein.
20. Applicant’s proposed mark should be denied trademark protection on the ground
that Applicant’s mark in not entitled to registration because it is merely descriptive and / or
primarily geographically descriptive of the covered goods.
THIRD GROUND FOR OPPOSITION – ISSUE PRECLUSION
21. The foregoing paragraphs are re-alleged and incorporated herein.
22. The identity of issues in this Opposition are the same as those presented and
litigated in Cancellation No. 92059629.
23. The determination of the issues was necessary to the resulting judgment.
24. Applicant Greater Omaha Packing Company had a full and fair opportunity to
litigate the issues.
25. Greater Omaha Packing Company did not appeal the cancellation of its similar
mark, Registration No. 92059629.
REQUEST FOR RELIEF
26. Opposer respectfully requests that its Opposition be sustained and registration of
Applicant’s mark denied.
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June 11, 2018
Respectfully Submitted,
/Nora M. Kane/
Nora M. Kane
General Counsel
Omaha Steaks International, Inc.
11030”O” Street
Omaha, NE 68137
402-599-8866
Attorney for Opposer
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CERTIFICATE OF SERVICE
The undersigned hereby certifies that the foregoing document was served on Applicant
by sending the same this 11th day of June, 2018, via electronic mail to Timothy H. Hiebert at
/s/ Nora M. Kane
Nora M. Kane
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EXHIBIT A
SCHEDULE OF MARKS
Reg.
Number
Registration
Date
Mark Goods/Services
1458802 1987-09-22 OMAHA STEAKS International Class: 042
retail mail-order and retail food store
services in the field of gourmet food
products, kitchen apparel and kitchen
utensils
1515602 1988-12-06 OMAHA STEAKS International Class: 029
Meat sold to hotels, restaurants and
institutions
1555215 1989-09-05 OMAHA STEAKS
FOODSERVICE
International Class: 042
Wholesale distributorship services in the
field of food
1674686 1992-02-04 OMAHA STEAKS International Class: 042
retail food store services
2002499 1996-09-24 OMAHA STEAKS ANGUS International Class: 029
fresh and frozen boxed steaks, and fresh and
frozen cuts of meat
2414603 2000-12-19 OMAHASTEAKS.COM International Class: 042
providing information in the field of food
and food preparation by means of a global
computer network
2840193 2004-05-11 PREMIUM HEARTLAND
QUALITY OMAHA STEAKS
SINCE 1917
International Class: 029
Meat, Hot dogs, Hamburger patties, Corned
beef, Ham, Liver, Bacon, Pork, Processed
lamb, Turkey, Roast beef, Soups, Chicken,
Fish, Processed Potatoes, Frozen vegetables,
fish dip, and frozen meals consisting
primarily of meat, fish, poultry or
vegetables.
International Class: 030
Bakery desserts, Frozen meals consisting
primarily of pasta or rice, Steak seasoning,
Bread, Butter sauce, Hollandaise sauce,
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Bearnaise sauce, Peppercorn sauce,
Bordelaise sauce, Gravy.
International Class: 035
Electronic retailing services via computer
featuring food and food related items; Mail
order catalog services featuring food and
food related items; Telephone shop-at-home
services in the field of food and food related
items.
2893159 2004-10-12 PREMIUM HEARTLAND
QUALITY OMAHA STEAKS
STORES
International Class: 035
retail food store services
3758608 2010-03-09 OMAHA STEAKS PRIVATE
RESERVE
International Class: 029
Meat
3768689 2010-03-30 HEARTLAND QUALITY
OMAHA STEAKS SINCE 1917
International Class: 029
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.
International Class: 030
sauces; bakery desserts; frozen entrees
consisting primarily of pasta or rice; spring
rolls; frozen meals consisting primarily of
pasta or rice; rice cakes; seasonings;
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mustard; horseradish; cakes; cream puffs;
cookies; cookie dough; breakfast burritos;
tarts.
International Class: 035
on-line retail store services featuring food
and food related items; mail order catalog
services featuring food and food related
items, telephone shop-at-home services in
the field of food and food related items;
retail store services featuring food and food-
related items
3768690 2010-03-30 HEARTLAND QUALITY
OMAHA STEAKS SINCE 1917
International Class: 029
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.
International Class: 030
sauces; bakery desserts; frozen entrees
consisting primarily of pasta or rice; spring
rolls; frozen meals consisting primarily of
pasta or rice; rice cakes; seasonings;
mustard; horseradish; cakes; cream puffs;
cookies; cookie dough; breakfast burritos;
tarts
International Class: 035
on-line retail store services featuring food
and food related items; mail order catalog
services featuring food and food related
items, telephone shop-at-home services in
the field of food and food related items;
retail store services featuring food and food-
related items
3768691 2010-03-30 HEARTLAND QUALITY
OMAHA STEAKS SINCE 1917
International Class: 029
frozen entrees consisting primarily of meat,
fish, poultry, seafood or vegetables; frozen
meals consisting primarily of meat, fish,
poultry, seafood or vegetables; meat;
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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.
International Class: 030
sauces; bakery desserts; frozen entrees
consisting primarily of pasta or rice; spring
rolls; frozen meals consisting primarily of
pasta or rice; rice cakes; seasonings;
mustard; horseradish; cakes; cream puffs;
cookies; cookie dough; breakfast burritos;
tarts.
International Class: 035
on-line retail store services featuring food
and food related items; mail order catalog
services featuring food and food related
items, telephone shop-at-home services in
the field of food and food related items;
retail store services featuring food and food-
related items
3768693 2010-03-30 HEARTLAND QUALITY
OMAHA STEAKS SINCE 1917
International Class: 029
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.
International Class: 030
sauces; bakery desserts; frozen entrees
consisting primarily of pasta or rice; spring
rolls; frozen meals consisting primarily of
pasta or rice; rice cakes; seasonings;
mustard; horseradish; cakes; cream puffs;
cookies; cookie dough; breakfast burritos;
tarts.
International Class: 035
5
on-line retail store services featuring food
and food related items; mail order catalog
services featuring food and food related
items, telephone shop-at-home services in
the field of food and food related items;
retail store services featuring food and food-
related items
3774260 2010-04-13 OMAHA STEAKS International Class: 029
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.
International Class: 030
sauces; bakery desserts; frozen entrees
consisting primarily of pasta or rice; spring
rolls; frozen meals consisting primarily of
pasta or rice; rice cakes; seasonings;
mustard; horseradish; cakes; cream puffs;
cookies; cookie dough; breakfast burritos;
tarts.
International Class: 035
on-line retail store services featuring food
and food related items; mail order catalog
services featuring food and food related
items, telephone shop-at-home services in
the field of food and food related items;
retail store services featuring food and food-
related items.
3799411 2010-06-08 OMAHA STEAKS PRIVATE
RESERVE
International Class: 030
Seasonings
International Class: 035
on-line retail store services featuring food
and food related items; mail order catalog
services featuring food and food related
items; telephone shop-at-home services in
the field of food and food related items
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3857498 2010-10-05 HEARTLAND QUALITY
OMAHA STEAKS SINCE 1917
International Class: 035
on-line retail store services featuring food
and food related items; mail order catalog
services featuring food and food related
items, telephone shop-at-home services in
the field of food and food related items;
retail store services featuring food and food-
related items.
3857500 2010-10-05 HEARTLAND QUALITY
OMAHA STEAKS SINCE 1917
International Class: 035
on-line retail store services featuring food
and food related items; mail order catalog
services featuring food and food related
items, telephone shop-at-home services in
the field of food and food related items;
retail store services featuring food and food-
related items.
4172329 2012-07-10 OMAHA FRESH ANGUS BY
OMAHA STEAKS
International Class: 029
angus meat
4172330 2012-07-10 OMAHA FRESH BY OMAHA
STEAKS
International Class: 029
Meat
4325113 2013-04-23 OMAHA STEAKS PRIVATE
RESERVE
International Class: 029
Bacon; Beef; Beef jerky; Beef stick snack
foods; Bratwurst; Cheese; Chicken; Corned
beef; Crab cakes; Crabs; Dips; Fish fillets;
Fish; Frankfurters; Frozen appetizers
consisting primarily of chicken or seafood;
Frozen entrees consisting primarily of meat,
fish, poultry or vegetables; Frozen meals
consisting primarily of meat, fish, poultry or
vegetables; Frozen pre-packaged entrees
consisting primarily of seafood; Frozen
vegetables; Ham; Hash brown potatoes;
Uncooked hamburger patties; Hot dogs;
Liver; Mashed potatoes; Meatballs; Omelets;
Packaged meals consisting primarily of
meat, fish, poultry or vegetables; Pork;
Potato fries; Potato skins; Poultry; Pre-cut
vegetable salad; Prepared foods, namely,
side dishes and casseroles mainly consisting
of vegetables, potatoes, beans or fruit;
Prepared meals consisting primarily of meat,
fish, poultry or vegetables; Prepared nuts;
Processed lamb; Processed potatoes; Roast
beef; Salads except macaroni, rice and pasta
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salads; Salmon; Sausages; Seafood;
Shellfish; Soups; Turkey; Veal
5045810 2016-09-20 OMAHA STEAKS PRIVATE
RESERVE
International Class: 029.
Beef; Uncooked hamburger patties;
Processed lamb; Roast beef; Veal.
5055023 2016-10-04 OMAHA STEAKS PRIME
RESERVE
International Class: 029
Meat; bacon; beef; beef jerky; beef stick
snack foods; bratwurst; cheese; chicken;
corned beef; crab cakes; crabs; dips; fish
fillets; fish; frankfurters; frozen appetizers
consisting primarily of chicken or seafood;
frozen entrees consisting primarily of meat,
fish, poultry or vegetables; frozen meals
consisting primarily of meat, fish, poultry or
vegetables; frozen pre-packaged entrees
consisting primarily of seafood; frozen
vegetables; ham; hash brown potatoes;
uncooked hamburger patties; hot dogs; liver;
mashed potatoes; meatballs; omelets;
packaged meals consisting primarily of
meat, fish, poultry or vegetables; pork;
potato fries; potato skins; poultry; pre-cut
vegetable salad; prepared foods, namely,
side dishes and casseroles mainly consisting
of vegetables, potatoes, beans or fruit;
prepared meals consisting primarily of meat,
fish, poultry or vegetables; prepared nuts;
processed lamb; processed potatoes; roast
beef; salads except macaroni, rice and pasta
salads; salmon; sausages; seafood; shellfish;
soups; turkey; veal
International Class: 035
Retail store services featuring food and food
related items; mail order catalog services
featuring food and food related items;
telephone shop-at-home services in the field
of food and food related items; on-line retail
store services featuring food and food
related items; mobile retail store services
featuring food and food related items;
customer loyalty services and customer club
services, for commercial, promotional and
advertising purposes; administration of an
incentive award program enabling
participants to obtain discounts and
complimentary awards on goods and
services through membership; providing
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incentive award programs for customers by
offering discounts on goods for the purpose
of promoting and awarding loyalty