ESTTA Tracking number: ESTTA902412 Filing date: 06/11/2018

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

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 )

http://estta.uspto.gov

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

2

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


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


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

[email protected]

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

[email protected].

/s/ Nora M. Kane

Nora M. Kane

1

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


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


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


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.


Bakery desserts, Frozen meals consisting

primarily of pasta or rice, Steak seasoning,

Bread, Butter sauce, Hollandaise sauce,

2

Bearnaise sauce, Peppercorn sauce,

Bordelaise sauce, Gravy.


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


retail food store services

3758608 2010-03-09 OMAHA STEAKS PRIVATE

RESERVE


Meat

3768689 2010-03-30 HEARTLAND QUALITY

OMAHA STEAKS SINCE 1917


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.


sauces; bakery desserts; frozen entrees

consisting primarily of pasta or rice; spring

rolls; frozen meals consisting primarily of

pasta or rice; rice cakes; seasonings;

3

mustard; horseradish; cakes; cream puffs;

cookies; cookie dough; breakfast burritos;

tarts.


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














frozen vegetables.








tarts








related items








4







frozen vegetables.








tarts.








related items














frozen vegetables.








tarts.


5







related items












frozen vegetables.








tarts.








related items.


RESERVE


Seasonings





items; telephone shop-at-home services in

the field of food and food related items

6










related items.










related items.

4172329 2012-07-10 OMAHA FRESH ANGUS BY

OMAHA STEAKS


angus meat

4172330 2012-07-10 OMAHA FRESH BY OMAHA

STEAKS


Meat


RESERVE


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

7

salads; Salmon; Sausages; Seafood;

Shellfish; Soups; Turkey; Veal


RESERVE

International Class: 029.

Beef; Uncooked hamburger patties;

Processed lamb; Roast beef; Veal.

5055023 2016-10-04 OMAHA STEAKS PRIME

RESERVE


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;


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


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

8

incentive award programs for customers by

offering discounts on goods for the purpose

of promoting and awarding loyalty

Documents

ESTTA Tracking number: ESTTA902412 Filing date: 06/11/2018