On June 11, 2010, the Trademark Trial and Appeal Board (the “Board”) sustained the National Pork Board and National Pork Producers Council’s (“Opposers”) opposition to registration of the mark “THE OTHER RED MEAT” based on the likelihood that its registration would blur the distinctiveness of Opposers’ mark “THE OTHER WHITE MEAT.” Nat’l Pork Bd. & Nat’l Pork Producers Council v. Supreme Lobster & Seafood Co., 2010 WL 2513872 (Trademark Tr. & App. Bd. Jun. 11, 2010). The ruling is significant because the Board sustained the opposition without considering likelihood of confusion as a ground for opposing the registration. The Board’s decision is the first to sustain an opposition based solely on the ground of likelihood of dilution by blurring since the Federal Dilution Trademark Act, and the Trademark Amendments Act of 1999 went into effect.

When a trademark application is opposed on grounds of dilution under 15 U.S.C. 1125(c), the owner of the mark must prove that 1) its mark is famous, 2) such fame was achieved before the applicant’s filing and 3) that applicant’s mark is likely to blur the distinctiveness of the famous mark. The Opposers established the fame of its “THE OTHER WHITE MEAT” mark by submitting evidence of extensive advertising expenditures, twenty years of consumer tracking studies, and “earned media” activities that garnered widespread news and media coverage. In addition, the Board gave weight to non-litigation consumer surveys performed at Northwestern University ranking “THE OTHER WHITE MEAT” as the fifth highest ranking slogan in terms of correct attribution between the slogan and source by survey participants. The Board concluded that “THE OTHER WHITE MEAT” was among the most well-known advertising slogans in the U.S., given the awareness rates of eighty to eighty-five percent of the general adult population as to the source of the slogan.

The Board, in determining that “THE OTHER RED MEAT” was likely to blur the distinctiveness of “THE OTHER WHITE MEAT,” concluded that all six statutory factors under 15 U.S.C. § 1125(c)(2)(b), namely, 1) degree of similarity between the marks, 2) degree of inherent or acquired distinctiveness of the mark, 3) extent to which the owner is making exclusive use of the mark, 4) degree of recognition of the mark, 5) whether the user (applicant) intended to create an association with the famous mark and 6) actual association between the mark and the famous mark, weighed in favor of its holding. The Board held that in a situation such as this one, where the application is filed based on an intent-to-use, and it is impossible to present any evidence of actual association between the marks in the marketplace, the neutrality of this sixth factor is consistent with a likelihood of dilution by blurring.

The Board’s decision is instructive for owners of famous trademarks because it highlights the types of evidence that the Board will consider in determining the fame of a mark. The Board appeared to be particularly impressed by the inclusion and reference to “THE OTHER WHITE MEAT” in news reporting, pop culture, and third party publications such as college textbooks, business school case studies and instructional materials on how to conduct trademark searches.