2018 saw a number of important trademark cases decided across the United States.  Two cases illustrated the similarities between genericness analysis and one of the likelihood of confusion factors considered by the Trademark Trial and Appeal Board (“TTAB”).  Royal Crown Co., Inc. v. The Coca-Cola Co., 892 F.3d 1358 (Fed. Cir. 2018) and Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1318 (Fed. Cir. 2018) showed that there is overlap in the analysis to be conducted under these two different legal theories and provides important lessons for practitioners to remember.

The first of the two cases decided was Royal Crown addressing genericness analysis.  At the TTAB, genericness is a two-step analysis: “First, what is the genus of goods or services at issue? Second, is the term sought to be registered . . . understood by the relevant public primarily to refer to that genus of goods or services?”  H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986).

Royal Crown sought trademark protection for DIET RITE PURE ZERO and PURE ZERO, disclaiming the term “zero”.  Coca-Cola had previously filed 17 trademark applications for marks including the term ”zero”.  Unlike Royal Crown, Coca-Cola argued that the term “zero” had acquired distinctiveness and the United States Patent and Trademark Office agreed.  Royal Crown opposed Coca-Cola’s registrations and the TTAB dismissed Royal Crown’s oppositions; Royal Crown appealed.

In dismissing Royal Crown’s oppositions, the TTAB found that the relevant genus to examine was “soft drinks, sports drinks, and energy drinks”.  Royal Crown argued that “zero” should be deemed generic or highly descriptive if it refers to a particular characteristic of a subset of beverages.  The Federal Circuit agreed with Royal Crown, holding that the TTAB “asked the wrong question in assessing the alleged genericness of the ZERO term.  Specifically, the Board failed to consider that “‘a term can be generic for a genus of goods or services if the relevant public…understands the term to refer to a key aspect of that genus.’”

[I]f the public understands ZERO when used in combination with a designated beverage name to refer to a sub-group or type of beverage that carries specific characteristics, that would be enough to render the term generic…The Board here failed to consider whether the relevant consuming public would consider the term ZERO to be generic for a subcategory of the claimed genus of beverages—i.e., the subcategory of the claimed beverages encompassing the specialty beverage categories of drinks with few or no calories or few or no carbohydrates.

In other words, the TTAB erred when it expanded the genericness inquiry into all soft drinks, sports drinks, and energy drinks and failed to consider whether “zero” could be generic for the sub-category of diet sodas.

Royal Crown was not the last time the Federal Circuit reversed the TTAB for refusing to constrain its analysis to directly-relevant considerations.  In Omaha Steaks the Federal Circuit reversed the TTAB for conducting an over-broad analysis of the existence of similar goods in the marketplace.

At the TTAB, likelihood of confusion between trademarks is weighed using a multifactor balancing test set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).  The “DuPont Factors” are thirteen different elements, including the “sixth factor” which considers “the nature of similar marks on similar goods”.  The sixth factor – which can also be stated as ‘third-party use’ – is “relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection,” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373 (Fed. Cir. 2005), because consumers have become accustomed to distinguishing between different marks “on the bases of minute distinctions.” Id. at 1374.  A party challenging a mark will seek to introduce evidence at the TTAB showing that the challenged mark is widely used in the marketplace and is therefore entitled to minimal, if any, protection.

Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co. involved two companies in the meat business.  Omaha Steaks owns over two dozen mark registrations incorporating ‘Omaha Steaks’.  Greater Omaha applied to register the mark GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF and a related design.  Omaha Steaks opposed Greater Omaha’s applications and the TTAB dismissed the opposition finding that Omaha Steaks failed to show its marks are famous, that third-party use of the word ‘Omaha’ may indicate geographic location rather than a single commercial source, and that the differences between the marks outweigh the similarities.  Omaha Steaks appealed.

While the TTAB found the goods at issue to be legally identical, it “considered a variety of services and products that include the word ‘Omaha,’ regardless of whether they involve meat” including products such as popcorn, wine, oriental food, and alcoholic beverages.  Greater Omaha argued that these third-party products are “similar” to meat because they are food products.  The Federal Circuit rejected this argument,

[Greater Omaha]’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 [Greater Omaha]’s new mark for consumers purchasing meat.

Because the TTAB’s analysis of the sixth du Pont factors was “fatally flawed”, the Federal Circuit reversed the TTAB’s decision.

Royal Crown and Omaha Steaks provide important lessons for practitioners.  The Federal Circuit is taking a narrow view of extrinsic factors in trademark disputes.  Thus, while it is tempting to advocate for the broadest possible scope when addressing extrinsic considerations – such as the relevant genus for a genericness analysis or the relevant market for the sixth du Pont factor – restraint should be exercised.  Otherwise, a victory at the TTAB may be short-lived.

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