June 2010 Issue
TTAB Cases
Nat’l Pork Bd. v. Supreme Lobster & Seafood Co.,
Opp. No. 91166701 (TTAB June 11, 2010)
ABSTRACT
Opposers’ opposition to Applicant’s registration of THE OTHER RED MEAT for fresh and frozen salmon was sustained by the TTAB on the basis that Applicant’s mark was likely to dilute Opposers’ famous mark THE OTHER WHITE MEAT for promotion of the pork industry. The TTAB found that THE OTHER WHITE MEAT was among the most recognized consumer slogans in the United States, and survey evidence supported a finding that Applicant’s mark was associated with Opposers’ famous mark.
CASE SUMMARY
FACTS
Supreme Lobster and Seafood Company (“Applicant”) applied to register the mark THE OTHER RED MEAT for “fresh and frozen salmon.” The National Pork Board and National Pork Producers Council (collectively “Opposers”) opposed the registration on the grounds that Applicant’s mark was likely to cause confusion and dilute Opposers’ registered mark THE OTHER WHITE MEAT.
Opposers are organizations committed to promoting the consumption of pork and pork products in the United States. Opposers’ mark THE OTHER WHITE MEAT is registered for numerous goods and services, including association services for promoting the interests of members of the pork industry and providing a website featuring information about cooking and accompanying recipes. Between 1987 and 2007, Opposers spent more than $550 million dollars on the promotion and advertisement of pork products to U.S. consumers, most of it including a display or verbal expression of the slogan THE OTHER WHITE MEAT. Opposers have launched advertising campaigns based on their mark on radio, television, billboards, taxi cabs, and transit shelters, and featured their mark in supermarket promotional programs, on meat package labeling, by sponsorship of race cars, through celebrity spokespersons, and via websites. Additionally, retailers and food manufacturers have participated in cobranded advertising campaigns with Opposers to promote the mark THE OTHER WHITE MEAT. Opposers have stretched the scope of their brand by launching advertising campaigns stressing the phrase “The Other” combined with additional terms, such as in THE OTHER HAMBURGER.
Applicant is a wholesale seafood distributor headquartered in Chicago that sells fresh and frozen salmon to retailers and food service providers. Applicant selected THE OTHER RED MEAT mark to exemplify salmon’s nutritious qualities. Opposers’ mark THE OTHER WHITE MEAT was included in a trademark search received by Applicant prior to applying for its mark. Applicant filed THE OTHER RED MEAT as an intent−to−use (“ITU”) application, and there was no indication of any use of the mark at the time of the TTAB proceedings.
ANALYSIS
Although Opposers based their opposition on both likelihood of confusion and dilution grounds, the TTAB only addressed the dilution claim. To determine whether Applicant’s mark dilutes Opposers’ mark, the TTAB needed to determine (1) whether Opposers’ mark is famous; (2) whether Opposers’ mark became famous prior to the date of Applicant’s ITU application; and (3) whether Applicant’s mark is likely to blur the distinctiveness of Opposers’ famous mark.
Applicant made several unsuccessful arguments that Opposers’ voluminous advertising and promotional evidence was inadequate to show the fame of Opposers’ mark. For example, Applicant argued that Opposers presented merely “imprecise statements regarding advertising expenditures” rather than substantiated evidence of actual advertising expenditures. Rejecting this argument, the TTAB pointed to the $550 million in advertising expenditures over more than twenty years and found that, despite the presence of other marks or taglines in the promotions, THE OTHER WHITE MEAT was always the central focus. Similarly, Applicant argued that Opposers’ promotional efforts were insufficient when contrasted with the campaigns of other famous marks, such as JUST DO IT (Nike) or DON’T LEAVE HOME WITHOUT IT (American Express), and that Opposers failed to show advertising of their associational services. Again, the TTAB flatly rejected these contentions since Opposers’ promotional activities were designed and functioned to promote the pork industry, and it was therefore insignificant whether consumers could name the Opposers’ organization names.
The TTAB considered several additional facts in finding Opposers’ mark to be famous: (1) Opposers’ substantial cross−promotional and cobranding activities with third parties; (2) tracking studies that consistently showed consumer recognition of the mark above the eighty−five percent level;
(3) extensive references to the mark in popular culture; and (4) discussions of the mark in unsolicited media and third-party publications. The TTAB relied on two nonlitigation consumer surveys to support its finding of a high degree of consumer and general public recognition of THE OTHER WHITE MEAT mark. Particularly, a study conducted in 2000 by outside academics at Northwestern University
(the “Northwestern Study”) showed nearly eighty percent awareness of Opposers’ mark among the general adult population. In fact, the Northwestern Study showed only four nationally known slogans ranked higher than THE OTHER WHITE MEAT, and that the slogan ranked higher than others that have been recognized as famous, including JUST DO IT, DON’T LEAVE HOME WITHOUT IT, and KING OF BEERS. Accepting Opposers’ contention that THE OTHER WHITE MEAT was among the most well−known advertising slogans in the United States, the TTAB concluded that Opposers’ mark was famous among a broad spectrum of the general consuming public. Moreover, the TTAB found that THE OTHER WHITE MEAT was famous before Applicant’s ITU filing date because the majority of evidence predated the application filing date.
In evaluating the final factor—whether Applicant’s mark is likely to blur the distinctiveness of Opposers’ mark—the TTAB considered statutory, nonexclusive factors, including: (1) the degree of similarity between Applicant’s mark and Opposers’ mark; (2) the degree of distinctiveness of Opposers’ mark; (3) the extent to which Opposers are engaging in substantially exclusive use of the mark; (4) the degree of recognition of Opposers’ mark; (5) whether Applicant intended to create an association with Opposers’ mark; and (6) any actual association between Applicant’s mark and Opposers’ mark.
The TTAB found the two marks to be highly similar, as they both have the same structure and cadence and three of the same words. The sole difference between them is a single word which, in both cases, is an adjective describing the color of meat, to which the TTAB remarked that “there are precious few from which to choose.” Moreover, the TTAB found that both slogans elicit the same mental processing, suggesting a comparison of the promoted meat with other kinds of meat. Supporting this finding, the TTAB referred to Opposers’ dilution survey showing that more than thirty−five percent of respondents associated Applicant’s slogan, THE OTHER RED MEAT, with Opposers’ slogan, THE OTHER WHITE MEAT.
Further supporting the finding that dilution by blurring was likely, the TTAB noted that Opposers’ mark was entitled to a presumption of inherent distinctiveness due to its incontestable status, and that Opposers’ use of the mark THE OTHER WHITE MEAT was virtually exclusive. The TTAB also acknowledged that Opposers’ slogan has “become part of the fabric of popular culture in the United States,” and was the fifth most recognized consumer slogan in the United States according to the Northwestern Study. This high recognition of Opposers’ mark in the United States supported a finding of dilution.
Finding that Applicant intended to create an association with Opposers’ slogan, the TTAB relied on evidence that Applicant’s CEO was aware of Opposers’ mark, Applicant had customer relationships with restaurants in the Chicago area that participated in Opposers’ THE OTHER WHITE MEAT campaign, and Applicant stated that it had chosen THE OTHER RED MEAT to suggest the nutritious qualities of salmon, coincidentally the same connotation with respect to pork that Opposer intended with its mark. While the TTAB was reluctant to conclude that Applicant acted in bad faith, it nonetheless concluded that Applicant’s belief that it was permissible to create an association with Opposers’ mark was consistent with a finding of likelihood of dilution by blurring.
As Applicant had not yet used its mark in commerce, it was impossible to present any evidence of actual association between the marks in the marketplace. Interestingly, the TTAB rejected Opposers’ argument that its dilution survey suggesting that more than thirty−five percent of respondents associated Applicant’s slogan with Opposers’ slogan was a replacement for actual marketplace association. While the TTAB called this result “compelling,” it refused to draw any “actual association” conclusions from the survey.
Considering all the relevant factors, the TTAB concluded that Applicant’s mark, THE OTHER RED MEAT, was likely to dilute Opposers’ mark, THE OTHER WHITE MEAT.
CONCLUSION
As one of the very few TTAB decisions sustaining a dilution claim, this case emphasizes the significance that both prelitigation and litigation survey evidence can play in establishing a dilution claim. Brand−tracking studies, such as the Northwestern Study that Opposers conducted well before the litigation began, can help prove the level of fame of a mark at an earlier point in time. In this case, the Northwestern Study showed that eighty percent of the general adult population was aware of Opposers’ mark prior to Applicant’s ITU filing date, supporting the finding of fame. Opposers’ substantial evidence of unsolicited media attention also played a large role in establishing fame. The TTAB then found a likelihood of dilution, notwithstanding the differences between the parties’ marks, relying on the degree of recognition of Opposers’ mark, as well as their dilution survey that showed that more than thirty−five percent of respondents associated Applicant’s slogan with Opposers’ slogan.
