TTAB sustains opposition based on likelihood of dilution by blurring

United States of America
In National Pork Board v Supreme Lobster and Seafood Company (Opposition 91166701, June 11 2010), the Trademark Trial and Appeal Board (TTAB) has held that the mark THE OTHER RED MEAT for use with fresh and frozen salmon was likely to blur the distinctiveness of opponent National Pork Board's mark THE OTHER WHITE MEAT, which is registered and used for goods and services relating to the promotion of the pork industry and pork products. The second opponent, the National Pork Producers Council (NPPC), used the mark as one of National Pork Board’s licensees and had standing, along with National Pork Board, to pursue the opposition.

National Pork Board and NPPC have used the mark THE OTHER WHITE MEAT for years to stress nutritional benefits of pork similar to those of chicken, another white meat. The TTAB recounted evidence showing the extensive use of the slogan, not only by the opponents, but also by retailers and food manufacturers which have participated in co-branding advertising campaigns with the opponents. In addition to the main slogan, the opponents have launched advertising campaigns stressing the phrase 'the other' in close association with the mark THE OTHER WHITE MEAT. Examples of these similar uses include THE OTHER BURGER and THE OTHER TAILGATE PARTY.

The applicant, Supreme Lobster and Seafood Company, attacked National Pork Board’s mark as a commodity promotional slogan that did not function as a source indicator, but rather was a merely generic label or marketing campaign. The TTAB rejected this argument, finding that Supreme Lobster had misapprehended the quality control responsibilities of trade associations, such as the opponents. The TTAB concluded that National Pork Board’s marks, including THE OTHER WHITE MEAT, served to distinguish the service of promoting the pork industry. National Pork Board’s commodity promotion slogan is instantly recognizable and has a pervasive impact on the consumer marketplace and popular culture.

The TTAB also rejected Supreme Lobster's argument that the widespread adoption of the phrase within the industry somehow lessened its ability to function as a trademark for the National Pork Board. The TTAB observed that Supreme Lobster seemed to be relying on the fact that this type of demand-enhancing, promotional activity is sometimes labelled 'generic advertising'. This type of generic advertising is a cooperative group effort by suppliers to promote demand for a particular generic product, rather than to promote the product of a particular producer. The TTAB commented that the fact that the primary focus of campaigns using the slogan is to promote the consumption of a particular commodity does not disqualify the mark from protection under the Lanham Act.

The TTAB found that the mark THE OTHER WHITE MEAT was famous, as required for a dilution by blurring claim. The TTAB relied on evidence including:
  • extensive advertising expenditures using the mark by National Pork Board and other pork producer associations;
  • non-litigation consumer surveys demonstrating very high consumer recognition of the mark;
  • extensive references to the mark in the popular culture; and
  • frequent discussion of the mark in third-party news, reference and educational publications. 
The TTAB also found that the mark was famous before Supreme Lobster filed its application to register THE OTHER RED MEAT.

In finding dilution by blurring, the TTAB relied on several factors, including:
  • the similarity between the two marks;
  • a dilution survey finding that more than 35% of respondents associated Supreme Lobster’s slogan with National Pork Board’s slogan;
  • the inherent distinctiveness of National Pork Board’s mark, which the TTAB categorized as suggestive;
  • the National Pork Board’s virtually exclusive use of the mark;
  • voluminous evidence that the mark is extremely well recognized by a broad spectrum of consumers; and
  • evidence that Supreme Lobster’s CEO was aware of National Pork Board’s mark before the application was filed, suggesting that Supreme Lobster's principals may have believed that it was permissible to create an association with the National Pork Board’s mark.
Based on these findings, the TTAB sustained the opposition based on likelihood of dilution by blurring. The TTAB did not reach the opponents' likelihood of confusion claim because it was able to sustain the opposition based on dilution by blurring.

David S Fleming, Brinks Hofer Gilson & Lione, Chicago

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