[00:00:00] Speaker 03:
Omaha Steaks versus Greater Omaha.

[00:00:50] Speaker 03:
I guess all these people were not here to hear you.

[00:00:52] Speaker 04:
I thought they'd never leave.

[00:00:56] Speaker 03:
Please proceed.

[00:01:01] Speaker 04:
Good morning.

[00:01:01] Speaker 04:
May it please the court, counsel?

[00:01:04] Speaker 04:
My name is Nora Kane.

[00:01:05] Speaker 04:
I'm here on behalf of Omaha Stakes International.

[00:01:07] Speaker 04:
I thank you for hearing our argument today.

[00:01:11] Speaker 04:
The Trademark Trial and Appeal Board

[00:01:20] Speaker 04:
began by stating the basic principle that to determine likelihood of confusion that trademark and the mark in the registration must be compared in their entirities.

[00:01:34] Speaker 04:
And then went on to do just the opposite.

[00:01:39] Speaker 04:
On the first point.

[00:01:41] Speaker 04:
Can I?

[00:01:42] Speaker 03:
We have limited time.

[00:01:43] Speaker 03:
And I get your argument about how at least in one or two places it misstated the mark.

[00:01:50] Speaker 03:
I'd rather focus on another area, which is the board said we've got a discount, and I think they entirely discounted, correctly if I'm wrong, the evidence that you put on with respect to sales and advertising and expenditures.

[00:02:08] Speaker 03:
And why, in your view, were they not justified in doing that?

[00:02:14] Speaker 03:
They said because you didn't provide enough specificity with respect to what the advertisements

[00:02:18] Speaker 03:
and their sales dealt with, is that right?

[00:02:23] Speaker 04:
I have a lot to say about that.

[00:02:24] Speaker 04:
I am not sure exactly why they went through and listed the great amount of evidence we put in about the extent of our sales.

[00:02:34] Speaker 03:
Were you asking the TTAB to infer that all of that advertising had to do with Omaha's stakes, or was there evidence in the record that that's what you were talking about?

[00:02:48] Speaker 03:
I wasn't clear on what was going on here.

[00:02:50] Speaker 03:
Did they say, well, you told us there's all this advertising, but we don't know whether or not it has anything to do with the actual mark of Omaha Steaks?

[00:02:58] Speaker 04:
There's testimony in the record that every single package, every single bit of advertising that's put out there says Omaha Steaks.

[00:03:05] Speaker 04:
And the board was primarily considering the standard word mark.

[00:03:12] Speaker 04:
So to say, should I have shown every type of ad that

[00:03:19] Speaker 04:
Omaha Stakes is used since 1958 in order to convince the court or the board of what sort of advertising was put on when Todd Simon testified to appearances of ads in major newspapers, major magazines, his personal appearance on several television shows.

[00:03:40] Speaker 04:
the 75 retail stores.

[00:03:43] Speaker 03:
What did he say about those ads?

[00:03:45] Speaker 03:
Did he tie them to what we're talking about here, which is the Omaha Steaks mark?

[00:03:51] Speaker 04:
Yes.

[00:03:51] Speaker 04:
He said that every single mention, every single time that they talked about the promotion of the product that they spent $50 million a year on, that Omaha Steaks was the primary, those words,

[00:04:06] Speaker 04:
and that brand and the stakes.

[00:04:09] Speaker 03:
So what is your understanding of what more TTAB was requiring you to put on?

[00:04:21] Speaker 04:
Well, I'll say.

[00:04:22] Speaker 03:
I mean, it's better directed towards your friends, so I'll ask him too.

[00:04:24] Speaker 03:
But I'm just wondering what your takeaway is.

[00:04:26] Speaker 04:
Well, I'll be interested to hear what my friend says as well, because he never once objected to the evidence about the fame, except to the extent

[00:04:36] Speaker 04:
an objection that was rebuffed about whether Todd Simon was competent to testify about the sales, the budget, the placement, all the various areas.

[00:04:50] Speaker 02:
But wasn't the board concerned about the fact that your sales didn't really reflect an annual period?

[00:04:58] Speaker 02:
No.

[00:04:58] Speaker 02:
You put in statistics about sales during the holiday season.

[00:05:03] Speaker 04:
No, there's absolutely evidence in the record of how much was spent per year, and there's absolutely evidence in the record of how much was spent on advertising.

[00:05:13] Speaker 01:
What about context?

[00:05:14] Speaker 01:
I've read the opinion to be saying that some context needs to be provided to place the raw statistics in context.

[00:05:22] Speaker 01:
So, for example, the substantiality of the sales or advertising

[00:05:27] Speaker 01:
for comparable types of products or services.

[00:05:31] Speaker 01:
That was one of the things they pointed out in J836.

[00:05:34] Speaker 01:
And at J837, they talked about the extent to which customers recognize the marks and things like that, or hasn't provided any context for how to translate the evidence of market share to the trademark itself.

[00:05:48] Speaker 04:
And to your first point, when the board talked about putting the numbers into context, they cited to Bose.

[00:05:55] Speaker 04:
And Bo said, you know, it used to be enough to talk about sales and advertising numbers, period.

[00:06:01] Speaker 04:
That's not enough anymore.

[00:06:02] Speaker 04:
You have to show us market share.

[00:06:04] Speaker 04:
Show us something else.

[00:06:05] Speaker 04:
Well, I can't show you market share.

[00:06:07] Speaker 04:
We're a privately held company.

[00:06:09] Speaker 04:
Been in business for 101 years now.

[00:06:11] Speaker 04:
There is nobody that I can go to and say, what are your sales?

[00:06:16] Speaker 04:
How much are you spending on advertising?

[00:06:18] Speaker 04:
And there is no market that I can tell you about.

[00:06:23] Speaker 04:
in any context unless I subpoena somebody else who's attempting to compete with us.

[00:06:30] Speaker 03:
But do you understand the board's concern about, as Judge Stoll says, context?

[00:06:35] Speaker 03:
Because

[00:06:36] Speaker 03:
You're assuming, and maybe you're right, there's an inference that $40 to $50 million of sales a year is a great deal in this market of beef.

[00:06:47] Speaker 03:
But why are we supposed to infer that in the absence of your telling us that this is sort of a big deal in the context of the product?

[00:06:56] Speaker 04:
I do want to say that it's $450 to $500 million in sales.

[00:07:00] Speaker 04:
The budget is $40 to $50 million.

[00:07:02] Speaker 04:
Well, the question still stands.

[00:07:04] Speaker 04:
I just want to be sure that the numbers were clear.

[00:07:07] Speaker 04:
I think that you can show that we have shown that our advertising has had an impact not only on the public to the extent of our sales, but also the fact that popular media without our requests, without our input, and without our money has written us into their shows.

[00:07:27] Speaker 04:
Seinfeld, West Wing, Dennis Miller, the movies about Schmidt,

[00:07:34] Speaker 02:
And do you have an idea, because there wasn't anything in the record, but how many of these retail steak shipping or beef shipping companies exist?

[00:07:48] Speaker 02:
I mean, most beef companies are wholesale, right?

[00:07:53] Speaker 04:
Well, companies that slaughter animals are wholesale.

[00:07:56] Speaker 04:
We don't slaughter animals.

[00:07:57] Speaker 04:
We buy beef from other companies, and there are only three or four big players in that field.

[00:08:03] Speaker 04:
We're not in that field.

[00:08:05] Speaker 04:
My friend's company.

[00:08:07] Speaker 02:
So who are you competing against?

[00:08:09] Speaker 02:
Grocery stores?

[00:08:10] Speaker 02:
No.

[00:08:12] Speaker 02:
Right.

[00:08:12] Speaker 02:
So is there anyone else in your space is what I'm trying to figure out.

[00:08:16] Speaker 04:
I know of a company known as Kansas City Steaks.

[00:08:20] Speaker 04:
It's not in the record.

[00:08:22] Speaker 04:
I can tell you that in approximately 2001, I saw an article where they talked about a comparison about how they'd like to catch up with us.

[00:08:28] Speaker 04:
And at that point, they're millions behind.

[00:08:30] Speaker 04:
That's not in the record.

[00:08:31] Speaker 01:
Can I ask you something else?

[00:08:33] Speaker 01:
Yes.

[00:08:33] Speaker 01:
One of the things that was argued by greater Omaha below and picked up on in the PTAB's opinion, sorry, PTAB, TTAB, the board's opinion, is something about how in looking at whether a mark is famous and truly famous, you should also look at the fact that Omaha stakes marks are not inherently distinctive, really focusing on Omaha and stakes.

[00:09:01] Speaker 01:
And I was wondering what your take is on that law.

[00:09:04] Speaker 01:
What does the law say about when you have a mark that's not as distinctive, and you're looking at fame?

[00:09:13] Speaker 01:
How much do you take that into account?

[00:09:14] Speaker 01:
Because I didn't see that your brief address that at all.

[00:09:17] Speaker 04:
Well, the law says that when there's a... I disagree that it's a weak mark or that it begins from the point of being a weak mark.

[00:09:26] Speaker 01:
I just want to know the law.

[00:09:27] Speaker 01:
When I'm looking at and determining whether a mark is truly famous or not, and I see that

[00:09:33] Speaker 01:
One of the things that the board relied on is the fact that this is not an inherently distinctive mark.

[00:09:39] Speaker 01:
What does the law tell me about how I'm supposed to assess the fame of such a mark?

[00:09:44] Speaker 04:
OK.

[00:09:45] Speaker 04:
So first of all, we start with it.

[00:09:47] Speaker 04:
It's a composite mark Omaha and stakes.

[00:09:49] Speaker 04:
You can't dissect it and look at stakes and say, well, that's generic.

[00:09:53] Speaker 04:
That makes it weak.

[00:09:55] Speaker 04:
And you can't dissect it and say, well, we look at Omaha and that's only geographically descriptive.

[00:10:01] Speaker 04:
You have to compare the two.

[00:10:03] Speaker 04:
Look at the mark, fully.

[00:10:05] Speaker 04:
And how do you know whether it's acquired distinctiveness?

[00:10:08] Speaker 04:
One of our statutes in the Lanham Act says after a certain amount of time, you acquire it.

[00:10:14] Speaker 04:
Omaha State's commissioned a survey that showed we'd earned it.

[00:10:18] Speaker 04:
And back to this fame point, I feel as if the board put us through a dilution fame test in either or.

[00:10:30] Speaker 04:
went on and on about all the evidence we put in and said, you know, that gives them a pretty recognized degree of recognition in the marketplace, but it's still weak.

[00:10:43] Speaker 04:
But that's not the law.

[00:10:44] Speaker 04:
They cited it to be weak.

[00:10:46] Speaker 01:
I just want to know what the law is.

[00:10:48] Speaker 01:
So backing up a little bit, is there a sliding scale of how much evidence you have to put on for fame, depending on where your beginning is, what your mark is, whether it's something unique to begin with,

[00:10:59] Speaker 01:
or whether it's something that's less distinctive.

[00:11:03] Speaker 04:
I wouldn't say that any court or the board has written out a sliding scale of here's the list of evidence you need to show except to the extent both suggested you needed to get outside of sales and advertising budget.

[00:11:16] Speaker 04:
I would say that there's a sliding scale of once you put it on where your mark falls between weak and strong.

[00:11:24] Speaker 02:
But you have a registered mark, so there's inherent distinctiveness.

[00:11:28] Speaker 02:
There's a presumption of distinctiveness, correct?

[00:11:30] Speaker 02:
Yes.

[00:11:31] Speaker 04:
After a certain amount of time, we earned that, correct.

[00:11:34] Speaker 02:
Yes.

[00:11:34] Speaker 02:
OK.

[00:11:35] Speaker 02:
And did you argue that to the board?

[00:11:38] Speaker 04:
Yes.

[00:11:40] Speaker 04:
That is in the briefing to the board and the argument to the board.

[00:11:44] Speaker 04:
And then to supplement that, we commissioned the survey to show that we'd acquired distinctiveness through Hal Peret.

[00:11:53] Speaker 02:
But the board found

[00:11:54] Speaker 02:
flaws in the survey?

[00:11:55] Speaker 04:
It completely discounted it.

[00:11:57] Speaker 04:
And I appreciate that the board is within its discretion to criticize parts of it.

[00:12:04] Speaker 04:
It's hard enough to compete against your opponent when you have to compete against the board that's making all the arguments for your opponent.

[00:12:11] Speaker 04:
And the criticism about the survey was that the universe was too small.

[00:12:20] Speaker 02:
So you're saying your opponent never argued that the survey was flawed?

[00:12:23] Speaker 04:
No, my opponent absolutely argued that the survey was flawed, but didn't put on any evidence.

[00:12:29] Speaker 04:
And if an ordinary person looks at the record and is asked, is there substantial evidence to support that the board rejected correct, what evidence would you find from my friend?

[00:12:41] Speaker 04:
You wouldn't find any.

[00:12:45] Speaker 04:
Now, the board cited to Blue Man Group in saying, it was our burden to prove famousness.

[00:12:52] Speaker 04:
And you go back and read Blue Moon, Blue Man, I'm sorry.

[00:12:56] Speaker 04:
You go back and read Blue Man.

[00:12:58] Speaker 04:
And Blue Man put on far less evidence and far less quality evidence than Omaha Stakes did.

[00:13:09] Speaker 04:
Yet the board determined, you're not famous, but you've shown that you have a strong mark that deserves recognition.

[00:13:18] Speaker 04:
Omaha Stakes put on all the evidence that it did.

[00:13:21] Speaker 04:
The evidence that I challenge anyone to come up with another company that's been written into the cultural zeitgeist that Omaha Steaks has, since this matter's been pending, Saturday Night Live wrote Omaha Steaks into a skit that appeared on May 5th, 2018.

[00:13:39] Speaker 04:
Yet instead of giving Omaha Steaks the same benefit it gave Blue Man, it said, but you're still weak.

[00:13:46] Speaker 04:
On what basis, on what substantial evidence did the board base that?

[00:13:50] Speaker 04:
on, again, on Greater Omaha Packing's argument.

[00:13:54] Speaker 04:
No evidence, just argument.

[00:13:57] Speaker 04:
Well, you can see that it's your burden.

[00:14:00] Speaker 04:
Absolutely.

[00:14:01] Speaker 04:
But if the board is going to discount all the evidence that Omaha Stakes has put on, it has to state a reason.

[00:14:09] Speaker 04:
It can't just say, this wasn't enough under Bose when I submit that we surpassed Bose and we surpassed the other cases upon which you found fame.

[00:14:20] Speaker 04:
And even if you disagree and don't believe that the evidence establishes fame, certainly it took Omaha's stakes beyond the status of a weak mark.

[00:14:34] Speaker 04:
The chart in our brief on pages 19 through 21 compares this case with Coach, Pompe and Bose.

[00:14:45] Speaker 04:
In none of those cases was there this

[00:14:50] Speaker 04:
any kind of an enumeration of things that should be put out that would guide a litigant to the next stage.

[00:15:01] Speaker 04:
Bose had eight years of sales evidence kicked out because they weren't introduced properly at the TTAB, and this court decided one year's evidence of sales was enough.

[00:15:13] Speaker 04:
Advertising in three or four magazines and a newspaper, we listed

[00:15:20] Speaker 04:
Far, far further publications that we've appeared in.

[00:15:25] Speaker 04:
We have 18 million existing customers.

[00:15:28] Speaker 04:
We send a million marketing emails daily.

[00:15:31] Speaker 04:
We have 300,000 to 400,000 customers on our telemarketing list.

[00:15:36] Speaker 04:
The unsolicited publicity I've mentioned.

[00:15:39] Speaker 03:
Well, I think you should say some of your rebuttal, because we've got that information in the record.

[00:15:45] Speaker 03:
So why don't we hear from the other side, and we'll restore a couple minutes of rebuttal.

[00:15:49] Speaker 04:
Thank you.

[00:15:58] Speaker 00:
May it please the court.

[00:15:59] Speaker 02:
What if we conclude that the board erred in its analysis of fame, that it rejected too readily all the evidence that the mark is famous?

[00:16:09] Speaker 02:
Where does that leave you?

[00:16:11] Speaker 00:
Well, when you say erred in the determination about fame, fame is a sliding scope as the set forth in your Joseph Phelps case, the insignia trademark case.

[00:16:23] Speaker 00:
And the board looked at all the evidence that was presented, and frankly, the evidence

[00:16:28] Speaker 00:
of fame typically is what do customers think?

[00:16:32] Speaker 00:
And there's nothing in this evidence before the board about customers.

[00:16:37] Speaker 02:
Well, you're not answering my question.

[00:16:38] Speaker 02:
I'm sorry.

[00:16:38] Speaker 02:
Assume that we think that the board rejected too much evidence of fame.

[00:16:45] Speaker 02:
Assume that we think the board should have taken judicial notice of the infringement lawsuits.

[00:16:50] Speaker 02:
Assume that we think that the board erred as to fame.

[00:16:54] Speaker 02:
Where does that leave you with respect to the rest of the factors?

[00:16:58] Speaker 00:
Where it leaves us is the question of, is there substantial evidence to support the findings that the board made, particularly about DuPont factor one.

[00:17:09] Speaker 00:
The board found that the marks were not similar.

[00:17:12] Speaker 00:
And DuPont factor six, the board found that there was use of similar marks on similar goods.

[00:17:20] Speaker 00:
It weighed DuPont factor one and DuPont factor six findings.

[00:17:25] Speaker 00:
It actually looked at the

[00:17:27] Speaker 01:
You're suggesting that we would not send it back?

[00:17:30] Speaker 01:
Instead, we would think that if we think there's a problem with the finding of fame, that we're supposed to reweigh all of the factors?

[00:17:39] Speaker 00:
Is that what you're suggesting?

[00:17:40] Speaker 00:
No, I'm not suggesting.

[00:17:42] Speaker 00:
I'm saying the issue is, is there substantial evidence to support it?

[00:17:47] Speaker 01:
I understand.

[00:17:47] Speaker 01:
I'm just confused because I thought the question was, assuming that we thought

[00:17:52] Speaker 01:
that the board erred in its fame analysis.

[00:17:55] Speaker 01:
What do we do with the case?

[00:17:57] Speaker 01:
And don't we have to remand?

[00:18:00] Speaker 00:
I would say no, because the board is supposed to look at the totality of circumstances.

[00:18:06] Speaker 01:
Right, but if we change their finding on one of those circumstances.

[00:18:10] Speaker 00:
And I'm saying, if you take the totality, looking at the worst case analysis, as you're positing to me, the board will look at, this court will look at whether or not the board

[00:18:22] Speaker 00:
had substantial evidence.

[00:18:23] Speaker 00:
That's the standard of review.

[00:18:27] Speaker 00:
Did the board have substantial evidence to make its ultimate finding that there was no likelihood of confusion?

[00:18:33] Speaker 03:
And I would say, even assuming your... Okay, well, we have your point.

[00:18:40] Speaker 03:
Let me push back a little more on one of the pillars that's still standing in your view, which is third-party use.

[00:18:47] Speaker 03:
Why is it correct that

[00:18:49] Speaker 03:
they used 118 marks to establish that this was in popular use, third-party use.

[00:18:57] Speaker 03:
And by my count, or I think your friends count, only five of those, they used Omaha, but only five of those marks they used with respect to Omaha had any association with meat.

[00:19:09] Speaker 03:
So why is it fair ground for the board to evaluate factor six, I think it is, in DuPont about third-party use and include

[00:19:18] Speaker 03:
the overwhelming majority of that use, only the word Omaha not related to meat.

[00:19:24] Speaker 03:
Why is that correct as a matter of law?

[00:19:26] Speaker 00:
Because you're picking out one piece of evidence that we've submitted, frankly, to show how weak the word Omaha was.

[00:19:34] Speaker 00:
It was not intended to be a DuPont 6.

[00:19:37] Speaker 00:
We have... Well, didn't the board consider it a DuPont 6 factor?

[00:19:40] Speaker 00:
I don't think so.

[00:19:41] Speaker 00:
The board actually mentioned it just in passing one time.

[00:19:45] Speaker 00:
We said it showed that 118 people thought the word Omaha meant the city of Omaha.

[00:19:51] Speaker 03:
The board didn't make a finding about the six factor, the number and nature of the similar marks used in supplies?

[00:19:59] Speaker 00:
It listed about 20 or 30 of the pieces of evidence that we put in, the Peet's deposition, the many websites, the many showings of

[00:20:09] Speaker 00:
third-party uses of similar modes.

[00:20:11] Speaker 03:
Well, aren't they required to evaluate factor six?

[00:20:14] Speaker 03:
So are you saying they didn't evaluate factor six?

[00:20:17] Speaker 00:
I don't think that they took the 118 registrations that included disclaimers of the word Omaha as being part of the DuPont factor six evaluation.

[00:20:30] Speaker 00:
They took it as part of the number, actually five, showing how weak the mark

[00:20:37] Speaker 00:
Omaha is.

[00:20:39] Speaker 02:
And when they discuss it... But they did, under factor six, point to all the other businesses that use the word Omaha in their title.

[00:20:47] Speaker 02:
And as far as I can tell, none of those businesses are actually in the retail shipment of beef.

[00:20:56] Speaker 02:
There are restaurants, there are wine companies, there's... I mean, so... But they did rely on that.

[00:21:02] Speaker 00:
The DuPont rule is

[00:21:04] Speaker 00:
similar marks on similar goods.

[00:21:07] Speaker 00:
They don't have to be identical goods.

[00:21:09] Speaker 00:
They have to be similar goods.

[00:21:11] Speaker 00:
The goods, you understand, the registration for Omaha's steaks is not limited to anything except meat.

[00:21:18] Speaker 03:
And these goods... Well, why is use of Omaha in connection with something that has no relationship to meat or to food whatsoever?

[00:21:27] Speaker 00:
Your Honor, I would suggest that all the food

[00:21:30] Speaker 00:
the Pete's deposition, which had about 13 or 14 examples of uses of the marks that included the word Omaha on various food products.

[00:21:42] Speaker 00:
Some were steak houses, some were meat, some were popcorn, some were all kinds of food products.

[00:21:47] Speaker 00:
Those are similar, I'm sorry, those are similar goods to meat.

[00:21:52] Speaker 00:
Meat is a food product.

[00:21:53] Speaker 02:
Popcorn is similar to meat?

[00:21:55] Speaker 00:
Well, I would suggest yes.

[00:21:58] Speaker 00:
Food products

[00:21:59] Speaker 00:
I mean meat is a food product.

[00:22:01] Speaker 00:
We're not talking about automobiles or something.

[00:22:04] Speaker 00:
Meat is a food product.

[00:22:05] Speaker 00:
You buy it in the store.

[00:22:08] Speaker 00:
The kinds of evidence that we submitted in the peach deposition were all considered to be food products or food services.

[00:22:18] Speaker 00:
So under the DuPont number six, the peach deposition was strong evidence and the board thought it was very strong evidence.

[00:22:32] Speaker 00:
Well, the other, you dismissed the beef issue about the typographical error of the word beef and I say in our brief that five times, but in fact actually seven times the board specified our trademark accurately and one time they made a typo and they didn't rely on that typo issue at all.

[00:22:57] Speaker 00:
I would suggest that is not a meaningful thing.

[00:23:01] Speaker 00:
What I would say, though, is in connection with the Joseph Phelps case, which you decided last year, and which simply says that it's important that the board not just make a yes-no test on fame, because fame is a sliding scale.

[00:23:21] Speaker 00:
And in fact, the board here... What do you mean by fame is a sliding scale?

[00:23:28] Speaker 00:
Fame goes from weakness up to famous, weakness up to strength.

[00:23:33] Speaker 00:
It's how much fame?

[00:23:35] Speaker 00:
Fame is a relative term.

[00:23:37] Speaker 00:
And in this court, when deciding the Joseph Phelps case, you said, don't use a yes-no fame test.

[00:23:45] Speaker 03:
Isn't that what the board did here, though?

[00:23:47] Speaker 00:
Didn't they analyze it under whether it's famous or not famous?

[00:23:51] Speaker 00:
They did at one point, because the notice of opposition says in the allegation that the Omaha Stakes mark is famous.

[00:23:58] Speaker 00:
We deny that the Omaha Stakes mark was famous.

[00:24:01] Speaker 00:
So the board properly said they evaluated and said it's not famous.

[00:24:06] Speaker 00:
But they then went on and made eight different fact findings between appendix page 39 and appendix page 51 on the relative fame, the relative renown of the plaintiff's trademark.

[00:24:22] Speaker 00:
And they said, we're considering it.

[00:24:24] Speaker 00:
We're weighing our findings in DuPont 1

[00:24:28] Speaker 00:
but no similarity of the marks.

[00:24:30] Speaker 00:
We're weighing our findings in DuPont 6, which says that there is a lot of use of a third party of similar marks on similar goods.

[00:24:39] Speaker 00:
And we're looking at the renown of the plaintiff's mark, but we are simply finding that on balance in the weight we find for the defendant.

[00:24:50] Speaker 00:
And therefore, they found no likelihood of confusion.

[00:24:55] Speaker 02:
They found that it was not famous.

[00:24:57] Speaker 02:
Yes, they did.

[00:24:58] Speaker 02:
They didn't find that, well, it's famous, but not that much.

[00:25:01] Speaker 02:
They just said, there's a reasonable degree of recognition, but it's not famous.

[00:25:07] Speaker 01:
Evidence is not sufficient support of finding that the marks are famous.

[00:25:11] Speaker 00:
Yes, they did find that.

[00:25:12] Speaker 00:
That's exactly correct.

[00:25:13] Speaker 00:
They did find that the mark was not famous.

[00:25:16] Speaker 00:
But they also found that the use of the word Omaha and the use of the word stakes, which makes a very weak combination, means stakes from Omaha, as conceded by the other side.

[00:25:26] Speaker 00:
They say that looking at the weight, they weighed both the lack of similarity of the marks and the third party uses.

[00:25:40] Speaker 00:
And they said that, in fact, if you look on page 51 of the opinion,

[00:25:46] Speaker 00:
They say, in other words, DuPont's Omaha Stakes Marks are not entitled to such a broad scope of protection that they bar registration of every mark comprising in whole or in part the word Omaha.

[00:26:05] Speaker 02:
But where are you pointing?

[00:26:07] Speaker 00:
I'm sorry.

[00:26:08] Speaker 00:
That was 45.

[00:26:09] Speaker 00:
But on 51 is more important, where they talk about the factors together with the differences in the mark

[00:26:16] Speaker 00:
outweighs, this is on 51, outweighs the legal identity of goods and the presumed identical trade channels and the degree, the degree of renown that plaintiff has demonstrated.

[00:26:29] Speaker 00:
It says that the plaintiff has demonstrated a degree of renown.

[00:26:35] Speaker 00:
And that's the point I'm making that it's not just that he said it wasn't famous.

[00:26:40] Speaker 00:
They say actually they showed a degree of renown

[00:26:44] Speaker 00:
But when we look at all of the evidence in its totality, we find there's no likelihood of confusion.

[00:26:50] Speaker 03:
So back to the point that Judge Romali and I were talking about earlier, the factor six, you agree, right, that there's got to be a similarity of goods.

[00:27:00] Speaker 03:
It doesn't have to be identity, but a similarity.

[00:27:03] Speaker 03:
So you would say, because we're dealing with beef here, any food group, any food or beverage group,

[00:27:13] Speaker 03:
What's the similarity?

[00:27:15] Speaker 03:
What's the field here?

[00:27:17] Speaker 03:
I would say it's food.

[00:27:19] Speaker 03:
Including beverage?

[00:27:20] Speaker 03:
Or not beverage?

[00:27:21] Speaker 03:
Because I think the board did rely on a wine company.

[00:27:28] Speaker 00:
It may have.

[00:27:29] Speaker 00:
I'm not sure.

[00:27:31] Speaker 00:
But the point in things that you would buy in a grocery store certainly are similar.

[00:27:36] Speaker 00:
If you see many

[00:27:38] Speaker 00:
many uses of the word Omaha as a trademark on goods sold in a grocery store.

[00:27:45] Speaker 00:
One of them could be Omaha Steaks, because remember, the Omaha Steaks registration is not limited to anything other than just meat.

[00:27:51] Speaker 01:
Where is the example of something that's sold in a grocery store?

[00:27:56] Speaker 01:
I'm looking at page 42, JA 42.

[00:28:01] Speaker 01:
Which example are you referring to for a food product that is sold in a grocery store?

[00:28:09] Speaker 00:
Here with me for a second, 42.

[00:28:16] Speaker 03:
You mean 42 in the opinion?

[00:28:18] Speaker 03:
The appendix, yeah, the TTAB opinion, page 42, the appendix.

[00:28:30] Speaker 00:
Okay, now these were only some of the items.

[00:28:34] Speaker 00:
Okay, one was a cafe, gifts, and it was a specialty gift store selling food.

[00:28:40] Speaker 00:
OK.

[00:28:41] Speaker 00:
Popcorn is sold in a store?

[00:28:42] Speaker 01:
Omaha popcorn was a particular store in a strip mall in Omaha.

[00:28:50] Speaker 01:
And I think that you were referring to marks that use the term Omaha is for goods sold in a grocery store being similar.

[00:28:57] Speaker 01:
And I was wondering what you were referring to in particular.

[00:29:00] Speaker 00:
I was just picking that up.

[00:29:00] Speaker 00:
I would also say that the Omaha Steakhouse is an example.

[00:29:06] Speaker 00:
Omaha Prime, I think, is called Omaha and the third from the bottom.

[00:29:09] Speaker 00:
Omaha Prime, an elegant steakhouse.

[00:29:14] Speaker 00:
These are all wines that are sold in a grocery store, casual restaurant.

[00:29:21] Speaker 00:
These are all things that one could argue, and I did, that they are similar in a general sense.

[00:29:29] Speaker 00:
So that when you have a huge amount of third-party use, and we showed a ton of third-party uses on these goods, that customers, this is what the

[00:29:39] Speaker 00:
the Jack Wolfskin case held, that customers become educated, and you don't have to show the specific amount of everything, but if you have a ton of third-party uses of similar marks, they have the word Omaha, that is powerful in showing evidence as to why the narrowness should be applied, that the amount of fame given to the plaintiff's trademark should be narrowed because

[00:30:09] Speaker 00:
It is not entitled to stop everybody else from using the word Omaha in connection with food products.

[00:30:17] Speaker 03:
Thank you.

[00:30:18] Speaker 03:
Thank you.

[00:30:26] Speaker 04:
Did I have any left?

[00:30:27] Speaker 03:
Yeah, well, we store two minutes of rebuttal.

[00:30:29] Speaker 04:
Oh, thank you.

[00:30:32] Speaker 01:
Could I ask you a question about, I just want to know, for clarification, what were you seeking judicial notice of?

[00:30:39] Speaker 01:
the existence of litigation, the existence of a particular kind of litigation.

[00:30:45] Speaker 01:
It was just unclear to me what you were seeking with the request for judicial notice based on the identification of a bunch of cases that Omaha had, states had asserted.

[00:30:57] Speaker 04:
Thank you.

[00:30:58] Speaker 04:
The request for judicial notice was

[00:31:03] Speaker 04:
asking the board to take notice that Omaha Stakes had filed numerous trademark infringement complaints.

[00:31:12] Speaker 01:
And so what would they have to do in order to do that?

[00:31:15] Speaker 01:
They would have to look up the pleadings in each of the cases you identified to see that, in fact, yes, this is a trademark infringement lawsuit?

[00:31:25] Speaker 04:
Part of the judicial notice rule of evidence is to streamline evidence.

[00:31:31] Speaker 04:
I wasn't offering the complaints to prove the truth of the matter asserted within them.

[00:31:36] Speaker 04:
I was asking the board to take judicial notice without.

[00:31:42] Speaker 04:
If I'd put the complaints in, I wouldn't have asked for judicial notice, right?

[00:31:46] Speaker 04:
It was so to not clutter up the record without the only point being.

[00:31:50] Speaker 03:
So what did you actually put in?

[00:31:52] Speaker 03:
The listing of the litigation numbers, the complaint numbers?

[00:31:55] Speaker 04:
Yes, that they could be found on PACER.

[00:31:56] Speaker 04:
And I cited two cases in my brief that support doing that.

[00:32:00] Speaker 02:
So you put in the caption and the docket number?

[00:32:02] Speaker 04:
Yes.

[00:32:04] Speaker 04:
And the caption and the case number, and therefore that showed the year in the district court that it was filed in, right?

[00:32:11] Speaker 01:
Did you anticipate that they would have to look it up and just verify that it's an infringement suit, or were you asking them to take your word for it?

[00:32:18] Speaker 04:
As an officer of the court, I think that they can take my word for it.

[00:32:22] Speaker 04:
I would rely on my friend to point out to the court, oh no, those were trade dress.

[00:32:26] Speaker 04:
Those were patent.

[00:32:27] Speaker 04:
Those were fill in the blank.

[00:32:29] Speaker 04:
They weren't what she said they were.

[00:32:31] Speaker 04:
And the reason wasn't to show that there had been trademark infringement suits filed.

[00:32:39] Speaker 04:
Well, I shouldn't say that.

[00:32:41] Speaker 04:
It was.

[00:32:41] Speaker 04:
But what I was trying to show is imitation.

[00:32:44] Speaker 04:
With the cease and desist letters and the lawsuits, with the strength of a mark and fame comes imitation.

[00:32:50] Speaker 01:
If you're not relying on those complaints for the truth of the matter asserted, then how are you showing imitation just based on the fact that lawsuits have been filed?

[00:33:02] Speaker 04:
The diligence and prosecution of the trademarks are shown how.

[00:33:07] Speaker 04:
I have testimony that we scour the internet, that we pixel our images, that we write cease and desist letters, that we have lawsuits, presumably that are litigated or settled.

[00:33:19] Speaker 04:
I can't or should I?

[00:33:24] Speaker 04:
Would the board want to hear about the result of each one?

[00:33:27] Speaker 04:
If there had been a finding of non-infringement, I'm sure.

[00:33:30] Speaker 03:
But where does that factor stand?

[00:33:31] Speaker 03:
Because let's assume that we're the only problem we had with this case.

[00:33:36] Speaker 03:
Couldn't we dismiss it as kind of harmless error if we accepted everything else the board did here, other than not take judicial notice of the number of lawsuits?

[00:33:46] Speaker 03:
I mean, that's a pretty insignificant factor in the scheme of things, right?

[00:33:50] Speaker 03:
Agreed.

[00:33:50] Speaker 03:
So by itself.

[00:33:52] Speaker 03:
one could construe that as being a harmless error.

[00:33:55] Speaker 04:
I agree.

[00:33:56] Speaker 04:
I agree.

[00:33:57] Speaker 04:
And you noticed I didn't bring it up.

[00:34:03] Speaker 04:
I was going to rely on the brief for it.

[00:34:05] Speaker 04:
Judicial notice can be taken at any stage in the proceeding.

[00:34:08] Speaker 04:
If this court chooses to do so, it may do so.

[00:34:12] Speaker 04:
There were lawsuits filed since the board decision that I included and asked this court to take judicial notice of.

[00:34:21] Speaker 03:
OK, we've exceeded our time, and that's our fault and not yours.

[00:34:25] Speaker 03:
But you have one other final comment, and let's bring this to a close.

[00:34:29] Speaker 03:
Thank you.

[00:34:30] Speaker 03:
Thank you.

[00:34:31] Speaker 03:
We thank both sides, and the case is submitted.

[00:34:33] Speaker 03:
That concludes our proceedings.