United States Court of Appeals 

for the Federal Circuit ______________________ 

OMAHA STEAKS INTERNATIONAL, INC.,

Appellant

v.

GREATER OMAHA PACKING CO., INC.,

Appellee

______________________ 

2018-1152

______________________ 

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board in Nos. 

91213527, 92059455, 92059629. 

______________________ 

Decided: November 15, 2018

______________________ 

NORA MARIE KANE, Omaha Steaks International, Inc., 

Omaha, NE, argued for appellant. 

 I. STEPHEN SAMUELS, Samuels & Hiebert, LLC, Boston, MA, argued for appellee. 

______________________ 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

2

Before PROST, Chief Judge, O’MALLEY and STOLL,

Circuit Judges.

PROST, Chief Judge. 

Omaha Steaks International, Inc. (“Omaha Steaks”) 

appeals a decision of the Trademark Trial and Appeal 

Board (“Board”) dismissing its opposition (No. 91213527)

to Greater Omaha Packing Co., Inc.’s (“GOP”) application

to register the mark “GREATER OMAHA PROVIDING 

THE HIGHEST QUALITY BEEF” (“Opposed Mark”) for 

meat, including boxed beef primal cuts. The Board concluded that there is no likelihood of confusion between the 

Opposed Mark and Omaha Steaks’ previously registered 

trademarks. We conclude that the Board made certain

errors while analyzing the fame of the registered mark, 

third-party usage, and similarity of the marks. Accordingly, we vacate and remand.

BACKGROUND

I 

Appellant began as Table Supply Meat Company in 

1917. Around 1959, Appellant started doing business as 

Omaha Steaks. Omaha Steaks acquires “subprimals,” or 

larger cuts of meat (such as the loin or bovine loin), for 

further processing. It cleans them up, takes the tendons 

off, and packages the processed meat for sale under an 

Omaha Steaks mark. 

Omaha Steaks has over two-dozen registrations for 

Omaha Steaks marks. All of those registrations include 

the words “Omaha Steaks.” 

According to Mr. Todd Simon, Omaha Steaks’ senior 

vice president of sales and marketing, the company spent 

over $45 million in 2011, and over $50 million in 2012 and 

2013, on domestic advertising of its beef products. Omaha 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

3

Steaks advertises its products through national radio, 

television, and freestanding print campaigns. 

Omaha Steaks has been featured in national newspapers, magazines, television shows, and movies. It further 

promotes its products via catalog and direct mail, a daily 

blast e-mail, customer calls, and on social media platforms, including Twitter, Instagram, Pinterest, and 

Facebook. The direct mail advertising program operates 

on a rotating basis, soliciting about 2 million customers

throughout the year.

Omaha Steaks has seventy-five retail stores as well as 

two airport kiosks. It sells its products online via Amazon

as well. 

II

In 1920, GOP’s predecessor was formed as an unincorporated company in Omaha, Nebraska called Greater 

Omaha Packing Company. In 1956, the owners formed 

Greater Omaha Packing Co., Inc. at the same location. 

GOP sells boxed beef, which is beef fabricated from whole 

carcasses. It is sold to wholesalers, such as hotels, restaurants, and food service institutions. GOP has continuously sold beef to Omaha Steaks from 1966 to the present. 

On April 8, 2013, GOP filed an application to register 

the mark “GREATER OMAHA PROVIDING THE 

HIGHEST QUALITY BEEF” and design (Serial No. 

85/897,951). The application was for the following goods 

in International Class 29: “meat, including boxed beef 

primal cuts.” 

The mark and design appear as follows: 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

4

III

On November 15, 2013, Omaha Steaks filed an opposition against the GOP mark and design. Omaha Steaks 

alleged that the Opposed Mark was likely to cause confusion in consumers’ minds as to the source of the goods due 

to its similarity to the registered Omaha Steaks marks. 

On September 30, 2017, the Board dismissed the opposition. The Board concluded there was no likelihood of 

confusion between GOP’s Opposed Mark and Omaha 

Steaks’ marks. To arrive at that result, the Board found

inter alia that (1) Omaha Steaks did not show that its 

marks are famous, (2) third-party use shows that the 

word “Omaha” may indicate geographic location rather 

than a single commercial source, and (3) the differences 

between the GOP and Omaha Steaks marks outweigh 

their similarities. Omaha Steaks appeals the Board’s 

decision. 

We have jurisdiction under 28 U.S.C. § 1295(a)(4)(B). 

DISCUSSION

Omaha Steaks challenges three aspects of the Board’s 

conclusion that there is no likelihood of confusion. First, 

Omaha Steaks contends that the Board ignored evidence 

of the fame of its marks under the fifth DuPont factor. 

Second, Omaha Steaks argues that the Board relied on a 

much broader range of goods lacking any similarity to 

meat products when evaluating the sixth factor, which 

examines the number and nature of third-party uses of 

similar marks on “similar goods.” Third, Omaha Steaks 

contends that the Board’s analysis of the similarity between the parties’ marks was flawed because it ignored 

the word “BEEF” in GOP’s slogan, “PROVIDING THE 

HIGHEST QUALITY BEEF.” 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

5

I 

We review the Board’s legal conclusions de novo and 

its factual findings for substantial evidence. In re Pacer 

Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003). 

Pursuant to 15 U.S.C. § 1052(d), the U.S. Patent and 

Trademark Office (“PTO”) has authority to refuse to 

register an applicant’s mark where it is so similar to a 

previously registered mark “as to be likely, when used on 

or in connection with the goods of the applicant, to cause 

confusion.” Whether a likelihood of confusion exists 

between an applicant’s mark and a previously registered 

mark is determined on a case-by-case basis, aided by 

application of the thirteen DuPont factors. Citigroup Inc. 

v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349 (Fed. 

Cir. 2011); see also In re E. I. DuPont DeNemours & Co., 

476 F.2d 1357, 1361 (CCPA 1973) (reciting factors). 

“Each of the DuPont factors presents a question of 

fact, findings with regard to which we test for substantial 

evidence when called into question on appeal.” Bose Corp. 

v. QSC Audio Prods., Inc., 293 F.3d 1367, 1370 (Fed. Cir. 

2002). However, we review the Board’s overall determination of likelihood of confusion without deference. Coach 

Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 

1366 (Fed. Cir. 2012). 

II

There are three parts to Omaha Steaks’ challenge to 

the Board’s conclusion that its Omaha Steaks marks are 

not famous. First, Omaha Steaks argues the admitted 

evidence confirms the fame of its marks. Second, it contends that the Board inappropriately excluded the Poret 

survey, which evidenced consumer recognition of its 

marks. Third, it asserts that the Board abused its discretion by refusing to take judicial notice of its trademark

lawsuits, which demonstrate fame given that others are 

imitating its marks. We address each argument in turn. 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

6

A 

Omaha Steaks argues that the Board improperly rejected its advertising expenditures and sales figures as 

evidence of the fame of its marks. A mark “with extensive 

public recognition and renown deserves and receives more 

legal protection than an obscure or weak mark.” Kenner 

Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 

353 (Fed. Cir. 1992). “Direct evidence of fame, for example from widespread consumer polls, rarely appears in 

contests over likelihood of confusion.” Bose, 293 F.3d at 

1371. Instead, “the fame of a mark may be measured 

indirectly, among other things, by the volume of sales and 

advertising expenditures of the goods traveling under the

mark, and by the length of time those indicia of commercial awareness have been evident.” Id. 

The Board acknowledged that Omaha Steaks spent 

over $45 million in 2011 to advertise its beef products. 

That number increased to over $50 million in 2012 and

2013. J.A. 37. Furthermore, the Board determined that

during the December holiday season Omaha Steaks

processes 100,000 orders per day. J.A. 26–27. The Board, 

however, concluded that these “raw” figures lacked context and therefore disregarded them. See J.A. 39.

Omaha Steaks contends that contrary to the Board’s 

analysis, it did not rest on these figures alone. Rather, it 

introduced evidence to contextualize these figures, including testimony about how Omaha Steaks promoted its 

products to the public through catalogs, direct mailings, email marketing, customer calls, tradeshows, retail stores, 

national television, radio, magazine and newspaper 

campaigns, digital marketing, and social media. 

GOP does not respond directly to Omaha Steaks’ argument. Instead, it quotes large swaths of the Board’s 

opinion. To the extent the quoted passages relate to 

evidence of ad expenditures and sales, GOP cites to the 

Board’s application of Bose. The Board concluded that 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

7

while these sales figures “appear impressive,” Omaha 

Steaks has not provided “any context for them, i.e., how 

they translate into evidence of market share for Plaintiff’s 

goods.” J.A. 39. 

The Board misreads Bose. The Board interpreted 

Bose to require evidence of resulting “market share.” Our 

holding was not so narrow. Market share is but one way 

of contextualizing ad expenditures or sales figures. See

Bose, 293 F.3d at 1375 (“The Board suggested that one 

form of such context would be the substantiality of the 

sales or advertising figures for comparable types of products.”). Though Bose expressly approves of using market 

share, it does not require it. See id. (discussing other 

contextual evidence such as “general reputation” of 

marked product). 

Bose simply concluded that in light of modern advertising, “raw numbers alone in today’s world may be misleading.” Id. (emphasis added). Bose explained that 

understanding the type of advertising was key to contextualizing the numbers to arrive at a proper understanding 

of whether customers would recognize the mark. For 

example, “a 30-second spot commercial shown during a 

Super Bowl football game may cost a vast sum, but the 

expenditure may have little if any impact on how the 

public reacts to the commercial message.” Id. At the 

other end of the spectrum, “handbills passed at little cost 

to millions of consumers (for example, to New Yorkers 

exiting subway stations) may amount to the kind of 

advertising that is probative of consumer recognition of a 

mark.” Id. 

Here, as the Board’s own factual findings confirm, 

Omaha Steaks provided considerable contextual evidence 

of the type of advertisements and promotions it uses to 

gain sales. Specifically, Omaha Steaks senior vice president of sales and marketing, Mr. Simon, testified that it 

markets and sells its Omaha Steaks’ products via: 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

8

• catalog and direct mail, a daily blast email, 

customer calls, and on social media platforms, 

including Twitter, Instagram, Pinterest, and 

Facebook, where it has over 300,000 followers. 

J.A. 37 (citing J.A. 747 (Simon testimony)). 

• a direct mail advertising program operating on 

a rotating basis with about 2 million customers 

that are solicited throughout the year. Id. (citing J.A. 740 (Simon testimony)). 

• national radio and television campaigns, freestanding print campaigns, and mention in national magazines, including Time, Newsweek, 

Playboy, and PC Magazine, and newspapers, 

including USA Today, the Wall Street Journal, 

the New York Times, and the LA Times. Id.

(citing J.A. 739–47, 801 (Simon testimony)). 

• TV promotions of goods and services under the 

Omaha Steaks mark on the following TV 

shows: “Fox & Friends,” “Hell’s Kitchen,” “Celebrity Apprentice,” and “The View.” Id. (citing 

J.A. 749–50 (Simon testimony)). 

• features of Omaha Steaks products on “The 

Oprah Winfrey Show,” “The Ellen DeGeneres 

Show,” “Food Factory,” “Unwrapped,” and 

“Military Makeover.” Id. (citing J.A. 750–51, 

754 (Simon testimony)). 

• unsolicited movie and TV allusions to Omaha 

Steaks. See, e.g., J.A. 38 (citing J.A. 774–76 

(Simon testimony) (discussing mentions in 

“Dodgeball,” “Flipper,” “The West Wing,” 

“Seinfeld,” “The George Lopez Show,” and 

“Dennis Miller Live”)).

• seventy-five stores in twenty-five states, including New York, Illinois, Florida, Georgia, 

Ohio, Kentucky, Missouri, Nebraska, Califor-
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

9

nia, Colorado, Nevada, Arizona, Texas, Pennsylvania, and New Jersey, as well as two kiosks at the Omaha airport. Id. (citing J.A. 739 

(Simon testimony)). 

• appearances of Omaha Steaks’ kiosks in nationally released films, including “Up in the 

Air” and “About Schmidt.” Id. (citing J.A. 774 

(Simon testimony)). 

The Board’s fact-findings above confirm that due to 

Omaha Steaks’ sales and marketing efforts, the consuming public has been regularly exposed to Omaha Steaks’ 

marks on a nationwide scale. Based on this undisputed 

record, the Board’s conclusion that Omaha Steaks did not 

provide any context for its “raw” sales figures and ad 

expenditures lacks substantial evidence.

Relatedly, GOP also appears to argue that Omaha 

Steaks’ evidence of fame should be disregarded because 

the record does not include copies of the underlying advertisements. The Board emphasized that Omaha Steaks

“provided no examples of its advertising content showing 

how the OMAHA STEAKS marks are used across the 

various referenced media, or any other evidence corroborating Plaintiff’s testimony.” J.A. 40. In the Board’s 

view, such evidence was necessary to understand whether 

the marks were “being displayed in a manner that leads 

to widespread recognition.” Id. 

In Bose, such granular detail was necessary given the 

nature of the marks. Specifically, there was a dispute as 

to whether the Bose marks at issue—ACOUSTIC WAVE 

and WAVE—were well-recognized as freestanding marks, 

or depended on the fame of the already famous BOSE 

“house mark” in the same ads. Bose, 293 F.3d at 1374–75. 

In turn, that case demanded a careful examination of the 

ads’ content. Id. at 1375 (“In this case, the sales and 

advertising numbers for ACOUSTIC WAVE and WAVE 

have to be seen both in the context of how the products 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

10

are presented in the advertising and sales material (here 

with sufficient independence from the famous house 

mark) and in the context of the continuous and extensive 

critical consideration the marked products have enjoyed.”). 

Here, the need to comb through the content of the ad 

to parse out the level of recognition attributable to a 

freestanding mark is not present. It is undisputed that 

the tradename “Omaha Steaks” and related uses in its 

marks are what is being promoted, not a separate brand 

merely associated with its house mark. As counsel for 

Omaha Steaks pointed out during oral argument—and 

GOP did not dispute—every registered mark submitted 

here includes the phrase “Omaha Steaks.” 

In light of the direct overlap between the company’s 

name and its marks, it is undisputed that an Omaha 

Steaks ad involved either its registered tradename, 

“OMAHA STEAKS,” or one of its registered trademarks 

displaying that name. Indeed, in several instances, the 

Board’s own findings also expressly describe the use of an 

Omaha Steaks trademark in promotional appearances on 

national television and in major public venues. See, e.g., 

J.A. 37 (“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.’” (emphasis 

added)); J.A. 38 (“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.” (emphasis added)). 

In GOP’s view, the Board correctly reasoned that because it cannot discern which particular “Omaha Steaks 

marks” are being advertised, it can end the inquiry as to 

the fame of Omaha Steaks marks. This view ignores the 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

11

larger body of evidence here—and the Board’s own factual 

findings—that the tradename Omaha Steaks and related 

marks were appearing in a broad spectrum of national 

media, backed by millions of dollars of advertising, which 

correlated with millions of dollars of sales. While the 

precise content of certain advertisements may have 

strengthened the record regarding fame, the Board’s 

decision to essentially disregard Omaha Steaks’ testimonial evidence of its advertising goes too far. 

Therefore, we agree with Omaha Steaks that the 

Board’s decision to discount this evidence of fame was 

legally flawed. In light of our holding in Bose, the 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. Accordingly, we vacate and remand to allow 

the Board to conduct a proper analysis of this factor. 

B 

Omaha Steaks next contends that a survey conducted 

by its expert, Mr. Hal Poret, further evidenced fame and 

was improperly disregarded. The Board found the expert’s survey questions were self-servingly directed to a 

narrow universe of respondents, exclusively comprised of 

Omaha Steaks’ customer base. See J.A. 21. In Omaha 

Steaks’ view, even if the survey does not target what the 

Board considers to be the optimal universe, the results 

are so compelling that it still supports the factual finding 

that a majority of consumers recognize the Omaha Steaks 

marks and associate them with a single source of meat.

Such evidentiary rulings are reviewed for abuse of 

discretion. Crash Dummy Movie, LLC v. Mattel, Inc., 601 

F.3d 1387, 1390–91 (Fed. Cir. 2010) (reversal appropriate 

only if evidentiary ruling was: (1) “clearly unreasonable, 

arbitrary, or fanciful”; (2) “based on an erroneous conclusion[] of law”; (3) premised on “clearly erroneous findings 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

12

of fact”; or (4) unsupported by the record, which “contains 

no evidence on which the Board could rationally base its 

decision”). We see no abuse of discretion here. 

There is no dispute that the relevant goods for the 

marks at issue are identified broadly as “meat” and “beef.” 

J.A. 21–22. The Board concluded that “the relevant 

public would comprise ordinary consumers who eat meat 

and beef, not just Plaintiff’s current customer base.” J.A.

22. Despite this broad relevant public, Mr. Poret deliberately excluded a large segment of these consumers. 

Omaha Steaks does not challenge the Board’s factual 

finding, based on Mr. Poret’s deposition testimony, that 

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.” J.A. 21 n.20. 

As a result, the Board concluded that by intentionally 

eliminating such “a large segment of meat eaters because 

they purchase their meats from grocery stores and markets, and not specialty kiosks and websites” like Omaha 

Steaks’ customers, Mr. Poret “fatally narrow[ed]” the 

survey universe and skewed the results. J.A. 22. We 

agree. It was not an abuse of discretion to conclude such 

unreliable evidence lacks probative value.1 

 

1 Omaha Steaks also argues that the Tenth Circuit 

refused to reject survey results under similar circumstances in Brunswick Corp. v. Spinit Reel Co., 832 F.2d 

513, 523 n.6 (10th Cir. 1987). However, Brunswick 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 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

13

C 

Omaha Steaks next argues that the Board improperly 

refused to take judicial notice of its various trademark 

lawsuits. In Omaha Steaks’ view, the need to stop imitation evidences fame. To that end, Omaha Steaks provided 

the Board with case captions to show it “filed numerous 

lawsuits against perceived infringers.” J.A. 22. The 

Board, however, concluded that Omaha Steaks failed to 

supply the necessary information to support its request

for judicial notice. Namely, Omaha Steaks did not provide “any material, e.g., the pleadings, to substantiate its 

claim” regarding the other lawsuits. J.A. 23. 

Under Federal Rule of Evidence 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). 

On appeal, GOP does not meaningfully dispute the 

factual substance of Omaha Steaks’ request—i.e., it filed 

around twenty lawsuits “against perceived infringers.” 

Nor does it dispute that this fact can be readily determined from the dockets of those actions, which are publicly accessible via PACER. And it does not contest that the 

only information the Board needed to access these records 

was the caption Omaha Steaks provided for each case. 

Finally, GOP does not reasonably question the accuracy of 

these records.

 

those who are likely to purchase spincast reels.” Id. By 

contrast, here the undisputed facts confirm the Poret 

survey did not come close to providing a reliable sample of 

consumers likely to purchase meat. 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

14

GOP’s only argument on appeal is that Omaha Steaks 

did not affirmatively provide the Board with copies of the 

actual reported decisions and related documents in the 

dockets to prove it filed these suits. GOP cites no authority, however, that a party must provide an underlying copy 

of a publicly available court record where it has provided 

the citation necessary to allow the court to access that 

record. 

To the extent Omaha Steaks was asking the Board to 

take judicial notice of the mere fact that it had filed 

numerous infringement actions, providing the relevant 

case captions, including the case names and docket numbers, was likely sufficient. See United States v. Jones, 29 

F.3d 1549, 1553 (11th Cir. 1994) (“[A] 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.’” (quoting Liberty Mut. Ins. Co. v. Rotches 

Pork Packers, Inc., 969 F.2d 1384, 1388 (2d Cir. 1992))). 

But, the mere fact that lawsuits were filed is not reasonably probative of the fame inquiry, which is focused on 

whether the mark has achieved “extensive public recognition and renown,” Coach Servs., 668 F.3d at 1367, not on 

enforcement efforts. Any error in refusing to take judicial 

notice of the case filings was thus harmless.2

To the extent Omaha Steaks was asking the Board to 

take judicial notice of the contents of the complaints filed 

in those cases, the fact that the cases related to the mark 

at issue here, or that others were actively infringing 

 

2 Indeed, given the limited significance of these 

other lawsuits to the fame inquiry, counsel for Omaha 

Steaks conceded at oral argument that any error in the 

Board’s decision not to take judicial notice was harmless. 

Oral Arg. at 33:29–56, No. 2018-1152,

http://www.cafc.uscourts.gov/oral-argument-recordings. 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

15

Omaha Steaks’ asserted mark, we find no abuse of discretion in the Board’s denial of that request. The 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. Under the circumstances of this case, we cannot say the Board abused 

its discretion in failing to take judicial notice. 

III

Omaha Steaks next challenges the Board’s analysis of 

the sixth DuPont factor regarding third-party usage. This

factor considers “[t]he number and nature of similar 

marks in use on similar goods.” DuPont, 476 F.2d at 

1361. The purpose of introducing evidence of third-party 

use is “to show that customers have become so conditioned by a plethora of such similar marks that customers 

‘have been educated to distinguish between different 

[such] marks on the bases of minute distinctions.’” Palm 

Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison 

Fondee en 1772, 396 F.3d 1369, 1374 (Fed. Cir. 2005)

(quoting Veuve Clicquot Ponsardin Maison Fondee en 

1772 v. Palm Bay Imps., Inc., Opp’n No. 115,438, 2003 

WL 21953664, at *10 (TTAB Aug. 4, 2003)). Third-party 

use is “relevant to show that a mark is relatively weak 

and entitled to only a narrow scope of protection.” Id. at 

1373. 

In Omaha Steaks’ view, the Board improperly broadened its analysis to encompass third-party marks on 

clearly dissimilar goods. The Board determined that the 

“goods” in GOP’s application (“meat, including boxed beef 

primal cuts”) were legally identical to those in Omaha 

Steaks’ pleaded registration (“meat”). J.A. 34. Nonetheless, the Board considered a variety of services and products that include the word “Omaha,” regardless of 

whether they involve meat. The Board then concluded 

that while this evidence is “not overwhelming, it is sufficient” to find that the designation OMAHA “may be 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

16

perceived as an indication of the geographic location of 

the producer of the goods or the geographic origin of the 

goods themselves.” J.A. 45. Based on this finding, the 

Board determined that “OMAHA” is weak as an indicator

of commercial source. Thus, marks relying in whole or in 

part on “OMAHA”—such as the Omaha Steaks marks—

are only entitled to narrow protection. Id. 

The Board’s analysis was flawed. As we underscored 

in Century 21, the “relevant du Pont inquiry is ‘[t]he 

number and nature of similar marks in use on similar 

goods.’” Century 21 Real Estate Corp. v. Century Life of 

Am., 970 F.2d 874, 877 (Fed. Cir. 1992) (quoting Weiss 

Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 1548 

(Fed. Cir. 1990)). 

In Century 21, the parties’ marks were both used in 

relation to insurance services. However, the Board found 

that since “Century” was used in a wide variety of trade 

names and marks, “the public would not regard 

CENTURY as such an unusual term in a trade name or

mark.” Id. Therefore, they would never “expect all companies with CENTURY in their name to be related, or all 

products or services with CENTURY in their marks to 

emanate from a single source.” Id. 

Reversing the Board, we emphasized that the controlling inquiry is the extent of third-party marks in use on 

“similar” goods or services. Id. “It is less relevant that 

‘Century’ is used on unrelated goods or services such as 

‘Century Dental Centers’ or ‘Century Seafoods.’” Id. at 

877–78. As a result, we held that the “paucity” of marks 

containing “Century” in “businesses similar to insurance” 

suggests that “CENTURY 21 is indeed a unique mark for 

insurance services.” Id. at 878. 

Here, the Board cited to a list of third-party businesses that have “Omaha” in their name. In so doing, the 

Board relied on a diverse range of third-party products, 

such as “popcorn,” “wine,” “oriental foods,” and “alcoholic 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

17

beverages.” J.A. 42. But these goods bear no relationship 

to meat or meat-based products. Accordingly, such goods 

are not “similar” to meat products. 

Resisting this conclusion, GOP insisted at oral argument that popcorn is similar to meat. Oral Arg. at 21:53–

22:18. In GOP’s view, because most of its third-party use 

evidence can be categorized as “food products” or products 

sold in a “grocery store,” they are relevant under the sixth 

DuPont factor, which requires only similar—not identical—goods. Id. at 21:31–52, 27:31–44. GOP’s position is 

unpersuasive for two reasons. 

First, GOP’s position lacks support in the record. For 

example, the Board made no analysis or factual findings 

explaining how popcorn and meat are somehow similar 

products. Even if the Board had made such a finding, 

there is insufficient evidence to support it. There is 

simply no meaningful evidence to back up GOP’s view 

that these two distinct types of food are related. The 

same evidentiary gap exists for explaining why goods and 

services for oriental foods, alcoholic beverages, café food, 

or grocery delivery services are “similar” to meat. See J.A. 

42. GOP’s attempt during oral argument to label these 

uses as food or grocery store products does not solve this 

problem. GOP invites us to assume that simply because 

these various uses can be bucketed into such broad categories, they are similar to meat for the relevant public. 

We decline to do so. In sum, GOP’s arguments only 

highlight the Board’s flawed analysis here, which failed to

focus on goods shown to be similar to meat. 

Second, our decision in National Cable Television

Ass’n v. American Cinema Editors, Inc., 937 F.2d 1572

(Fed. Cir. 1991), counsels against GOP’s overbroad view of 

what qualifies as a “similar good.” In National Cable 

Television, we made clear that the present analysis only 

involves goods like those being offered by the parties to 

the “relevant public,” while third-party use outside of that 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

18

relevant market is meaningless. Id. at 1579–80. We 

emphasized that the “real world segment of the public is 

limited to the market or universe necessary to circumscribe purchasers or users of products or services like 

those being offered by the parties” under a common mark. 

Id. at 1579. Such limits are important to the rationale 

underlying this factor. “Only if other offerings under the 

‘common’ mark are also directed to that relevant public is 

it reasonable to infer that they may have become conditioned to draw fine lines between sources of ‘related’ goods 

or services.” Id. To punctuate this point, we explained: 

To take an extreme example, ACE for canned,

large peas could not escape likelihood of confusion 

with a prior use of ACE for canned, small peas because ACE is concurrently used by unrelated third 

parties on aircraft, clothing, computer services, 

hardware or even bread, bananas, milk and 

canned carrots. Properly defined, the relevant 

public in the example need be defined no broader 

than purchasers of canned peas, and the third 

party ACE marks outside the segment become essentially irrelevant.

Id. 

Accordingly, we agreed with the Board that nothing in

the record showed any third-party marks had narrowed 

the scope of the opposer’s mark for the relevant public. 

See id. at 1580 (concluding that no third-party marks and 

uses were as closely related as “the virtually identical 

uses of the parties are to each other”). 

Here, the Board found the parties’ respective marks 

were both used on “meat” products. Indeed, earlier in its 

analysis, the Board concluded that the parties’ goods were 

identical. J.A. 34. The Board also found that the relevant 

public was no broader than “ordinary consumers who eat 

meat and beef.” J.A. 22. 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

19

In turn, GOP’s mark on meat products cannot escape 

a likelihood of confusion with Omaha Steaks’ prior use on 

meat products in the relevant market for meat purely 

because other “Omaha” marks are being used by third 

parties on popcorn, alcoholic beverages, or other food 

products. Independent of these third-party uses on other 

goods, there may still be confusion between Omaha 

Steaks’ marks and GOP’s new mark for consumers purchasing meat.3 

When the marks featuring “Omaha” on unrelated 

goods are properly understood as having no real probative 

value for the analysis at hand, the evidentiary universe is 

much smaller. GOP’s remaining relevant evidence largely 

consists of third-party meat products from meat processing or packaging companies, such as B.I.G. Meats 

Omaha, Omaha Beef Company, and Omaha Meat Processors.4 Because the Board based its narrow decision on 

 

3 The remaining case law cited in GOP’s briefing 

does not unsettle this conclusion. Indeed, given the 

nearly identical overlap between the parties’ products and 

third-party products in those cases, the similarity of the 

goods was not at issue. See, e.g., Jack Wolfskin 

Ausrustung Fur Draussen GmbH & Co. KGAA v. New 

Millennium Sports, S.L.U., 797 F.3d 1363, 1373 (Fed. Cir. 

2015) (evaluating marks for use on “clothing” with thirdparty use of similar marks on clothing); Juice Generation, 

Inc. v. GS Enters. LLC, 794 F.3d 1334, 1337 n.1, 1338–40 

(Fed. Cir. 2015) (evaluating marks for “restaurant services” and “juice bar services” with third-party use of 

similar marks in food service industry).

4 GOP argued that the 118 registrations discussed 

in the Board’s fact-findings were not relevant to thirdparty usage. Oral Arg. at 19:26–45, 20:17–39. To the 

extent the Board’s opinion could be read to incorporate 

these registrations into its analysis of similar goods, the 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

20

irrelevant evidence of unrelated goods, its analysis under 

the sixth factor was legally flawed. We therefore vacate 

its finding and instruct the Board to reweigh the limited, 

relevant evidence of third-party use. 

IV

Turning to the last factor at issue, Omaha Steaks 

mounts two main arguments. First, it argues that the 

Board failed to consider the challenged mark in its entirety when evaluating the similarity of the parties’ marks. 

Second, it contends the Board’s conclusion under this 

factor rested heavily on the now-vacated evidence of thirdparty use regarding the geographic term “Omaha.” 

A 

Omaha Steaks’ first argument is that because the 

Board omitted the word “BEEF” from its reproduction of 

the slogan in the GOP mark, it failed to consider the mark 

in its entirety. 

The slogan in the Opposed Mark states in full: 

“PROVIDING THE HIGHEST QUALITY BEEF.” During 

its discussion of the marks, however, the Board stated: 

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,” 

and are the words that would be used to call for 

the goods.

J.A. 47–48.

Omaha Steaks’ argument carries little force. The absence of “BEEF” from a single sentence in the Board’s 

order appears to be nothing more than a typographical 

 

vast majority of the third-party trademarks are also 

irrelevant as they, too, are unrelated to meat. 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

21

error. Omaha Steaks makes no response to the fact that 

on seven separate occasions, the Board’s opinion correctly 

referred to the Opposed Mark’s slogan in its entirety. In

three instances, the Board recited the complete five-word 

slogan with the word “BEEF” textually. J.A. 2, ll. 2–3; 

J.A. 2 n.2. In four other instances, the Board reproduced

the full mark graphically, including the “BEEF” slogan. 

J.A. 2, l. 4; J.A. 28, l. 11; J.A. 46, l. 13; J.A. 52, l. 6. 

Ignoring these accurate recitations, Omaha Steaks insists this particular passage of the Board’s opinion confirms it failed to consider the marks in their entirety. 

According to Omaha Steaks, the Board improperly focused on the more prominent words appearing in both 

marks—e.g., “Omaha Steaks” and “Greater Omaha”—

while conspicuously leaving out the slogan and its reference to beef. See Appellant’s Reply Br. 2 (discussing J.A. 

49). 

Omaha Steaks is correct that the first DuPont factor 

examines the “similarity or dissimilarity of the marks in 

their entireties as to appearance, sound, connotation and 

commercial impression.” DuPont, 476 F.2d at 1361. “But 

‘in articulating reasons for reaching a conclusion on the 

issue of confusion, 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.’” In re Detroit Athletic Co., 903 F.3d 

1297, 1305 (Fed. Cir. 2018) (quoting In re Nat’l Data 

Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985)). 

As such, Omaha Steaks takes the Board’s statements 

out of context. In the cited portion of its analysis, the 

Board was examining the dominant features of the marks. 

For the Opposed Mark, the Board reasoned that the 

dominant words were “GREATER OMAHA” because they 

are “the first words in the mark” and are “visually larger” 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

22

than the slogan. J.A. 47. As for the Omaha Steaks mark, 

it found “OMAHA STEAKS” was the dominant feature. 

Contrary to Omaha Steaks’ view, the Board then considered 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 Plaintiffs mark.” J.A. 48–49. 

The Board concluded the slogan and other matter “while 

less dominant, also contribute to the differences in appearance and sound” between the marks. J.A. 49. While 

Omaha Steaks may not like that conclusion, we cannot 

say that the Board ignored the slogan in its analysis. 

Omaha Steaks’ reliance on Juice Generation, 794 F.3d 

at 1341, is misplaced. Rather than giving “no significance 

to the term” and thus failing to consider the mark in its 

entirety, see id., here the Board adequately assessed the 

slogan. Indeed, it found that the distinct slogan was one 

of the differences between the marks overall. 

In sum, Omaha Steaks has not shown any error in the 

Board’s analysis here. 

B 

Omaha Steaks’ second argument is that the Board’s 

analysis of this factor relied on its findings regarding

third-party use. As these findings have now been vacated, Omaha Steaks contends we must also vacate its 

conclusions under this factor for further analysis. We 

agree. 

While weighing the similarities and differences between the marks, the Board decided to discount one of the 

main similarities in the marks—the use of the word 

“Omaha”—in large part because that word was in use by 

third parties as a geographically descriptive term for the 

city of Omaha. It reasoned that when “the geographically 

descriptive term ‘Omaha’ is viewed with the evidence of 

third-party uses of OMAHA trademarks and trade names, 

these differences outweigh the similarities, resulting in 
OMAHA STEAKS INTERNATIONAL v. GREATER OMAHA 

PACKING CO. 

23

different overall commercial impressions.” J.A. 49 (emphasis added). Based on this third-party use, the Board 

concluded this DuPont factor favors finding no likelihood 

of confusion. 

As discussed above, however, the Board’s findings regarding third-party use improperly relied on marks found 

on dissimilar goods and services not directed to the relevant public. Those findings have now been vacated. 

Accordingly, we also vacate the Board’s conclusion 

under this first factor and remand for further analysis. 

CONCLUSION

For the foregoing reasons, we vacate the Board’s decision that there is no likelihood of confusion between 

Omaha Steaks’ and GOP’s marks, and we remand for 

further proceedings consistent with this opinion.

VACATED AND REMANDED

COSTS

The parties shall bear their own costs.