[00:00:10] Speaker 02:
Okay, we'll call our last case, 25-8011, JBX versus Island.

[00:00:26] Speaker 01:
May it please the court, my name is Carrie Hartman and I represent the appellant in this matter, Island LLC.

[00:00:36] Speaker 01:
Island is here today asking for this court to reverse various rulings which ultimately culminated in the district court erroneously permitting registration of the marks JBX Bio Island and Bio Island JBX.

[00:00:53] Speaker 01:
Importantly, this is an appeal from a trademark trial and appeal board registration proceeding with the U.S.

[00:01:00] Speaker 01:
Patent and Trademark Office.

[00:01:02] Speaker 01:
It is not a trademark infringement case.

[00:01:06] Speaker 01:
And I think that's an important distinction that the district court missed here in this case.

[00:01:12] Speaker 03:
Council, I have a really threshold question.

[00:01:15] Speaker 03:
So in your brief and in the way that you litigated this before the district court, you framed the error as both a legal problem, in other words,

[00:01:31] Speaker 03:
In 1071b1 proceedings, you're confined to the four corners of the applications and registrations.

[00:01:40] Speaker 03:
And that was a legal mistake that the district court made.

[00:01:43] Speaker 03:
That was one argument.

[00:01:44] Speaker 03:
You also framed it as an evidentiary problem.

[00:01:48] Speaker 03:
This evidence is irrelevant.

[00:01:49] Speaker 03:
It should have been excluded under the federal rules of evidence.

[00:01:54] Speaker 03:
And my question, very threshold question is, is there a right way to think about the error here?

[00:02:00] Speaker 03:
Is it a legal error, which would be sort of a de novo review?

[00:02:04] Speaker 03:
Is it an evidentiary problem, which has a different standard of review?

[00:02:08] Speaker 03:
If you could speak to that.

[00:02:09] Speaker 01:
Thank you.

[00:02:10] Speaker 01:
Yes, I think it's ultimately is a legal error because when we're looking at the likelihood of confusion factors, the court has to know what it's allowed to look at and what it's allowed to consider when ruling on those likelihood of confusion factors.

[00:02:26] Speaker 01:
And I think in this case, as you said, the district court went outside of the registrations and applications in its consideration of various of the likelihood of confusion factors.

[00:02:39] Speaker 01:
And that's the legal error that really is the core of the appeal.

[00:02:44] Speaker 02:
So is it your position that consideration of the outside evidence was inappropriate as to all factors?

[00:02:52] Speaker 01:
No.

[00:02:52] Speaker 01:
And to be clear, what we're arguing here is that evidence of actual marketplace use of the marks was what should not have been considered here.

[00:03:05] Speaker 01:
And that is particularly relevant in terms of the district court's decision on the factors for similarity of the marks.

[00:03:14] Speaker 01:
similarity of the products and the manner of marketing in the trade channels, as well as the degree of care that's exercised by the consumer.

[00:03:23] Speaker 01:
Ultimately, the district court considered other evidence outside of the applications and registrations in considering the strength of the marks, and we aren't challenging that.

[00:03:35] Speaker 01:
Obviously, it considered various third-party

[00:03:39] Speaker 01:
usages and the enforcement efforts that Eiland took when ruling on the strength of the marks.

[00:03:45] Speaker 01:
So it's really just those marks, or sorry, those factors that I just noted.

[00:03:52] Speaker 03:
So on the consumer care factor, the district court considered your witness, the testimony of your witness, right?

[00:04:02] Speaker 03:
Yeah.

[00:04:02] Speaker 03:
Are you saying that that was improper?

[00:04:08] Speaker 01:
Admittedly, that is a difficult position.

[00:04:11] Speaker 01:
I think that

[00:04:14] Speaker 01:
I think it's tough that the witness did testify to that, but I think ultimately it was legal error.

[00:04:22] Speaker 01:
Well, it would be invited error at that point.

[00:04:25] Speaker 03:
I mean, I think that if you offered the witness and under your reading of the rule that you would like us to adopt, her testimony would have been inadmissible because of the rule in 1071b proceedings and the district court considered it.

[00:04:38] Speaker 03:
That doesn't seem to be something that we would fault the district court for.

[00:04:41] Speaker 03:
Do you agree?

[00:04:43] Speaker 01:
I think that the weight that the district court could have placed on that testimony, that at least in that circumstance, that it should have been less weight, especially given the nature of these proceedings and that it's a registration proceeding and that we really should just be looking at the applications and the registrations, at least with respect to those factors.

[00:05:06] Speaker 03:
And I have a similar question on

[00:05:08] Speaker 03:
the similarity of the goods and manner of marketing, the district court's ruling there favored you, favored your client.

[00:05:16] Speaker 03:
And I think your argument on appeal is because the court went outside the four corners, your position is it would have weighed it more heavily in your favor.

[00:05:26] Speaker 03:
Is that correct?

[00:05:28] Speaker 01:
Yes, so I think when you look at the district court's order and the way it explained its ruling with some of the specific factors, it used language as it's slightly in favor of island or it's not overwhelmingly in favor of island.

[00:05:47] Speaker 01:
And when it was erroneously considering the information outside of the applications and registrations,

[00:05:54] Speaker 01:
I think if it hadn't done that, those factors would have tipped more in favor of Island, given that nature.

[00:06:02] Speaker 01:
But I also think because this is a factor test, I mean, any error on any of the factors, it infects the entire analysis here.

[00:06:14] Speaker 01:
And I think that the analysis has to be redone because of that legal error.

[00:06:19] Speaker 01:
And this court can set aside any of those

[00:06:22] Speaker 01:
findings based on that legal error.

[00:06:25] Speaker 02:
Well, you're asking us to review it de novo, aren't you?

[00:06:29] Speaker 02:
Yes.

[00:06:30] Speaker 02:
So can't we look at it and say, you know what, you're right about some of these things.

[00:06:35] Speaker 02:
We're going to throw that out and evaluate it to see who it favors.

[00:06:41] Speaker 01:
Yes, yes, I think this court can do that.

[00:06:44] Speaker 01:
I believe it was the Sabinza case that we cited in our brief.

[00:06:51] Speaker 01:
I may be totally butchering the pronunciation of that case name.

[00:06:55] Speaker 01:
But in that case, the circuit court basically did redo the consideration of the likelihood of confusion factors.

[00:07:04] Speaker 01:
So I think that this court can do that, but another path to relieve

[00:07:08] Speaker 01:
is for this court just to provide the specific confines for what the district court can consider and to reverse and remand with specific instructions for the district court.

[00:07:19] Speaker 01:
So I think there's ultimately a couple of different paths that this court could take here.

[00:07:24] Speaker 03:
Do you agree that the standard for harmlessness, I guess,

[00:07:32] Speaker 03:
for lack of a better word, that applies here is different if we understand this as an error of law versus an evidentiary error.

[00:07:40] Speaker 03:
And what I've been struggling with is how to think about the error, right?

[00:07:46] Speaker 03:
So assuming the district court did what you say and went outside the four corners, but when we review his overall balancing, we can't come away from that and say,

[00:08:01] Speaker 03:
that really he relied on this outside evidence and that's what compelled his conclusion.

[00:08:08] Speaker 03:
What are we supposed to do with that?

[00:08:11] Speaker 03:
I mean, what is the standard that applies?

[00:08:13] Speaker 03:
If it's an evidentiary ruling, we look at whether it would have a substantial influence on the outcome.

[00:08:18] Speaker 03:
You're saying that's not the standard.

[00:08:19] Speaker 03:
So is the standard more of the Pullman standard case that it's, if the record permits only one resolution of the factual issue?

[00:08:28] Speaker 03:
Is that the standard for remand?

[00:08:32] Speaker 01:
Yes, that is what we are arguing here.

[00:08:35] Speaker 01:
I think, as you said, because it's hard to say what the district court would have done, and it's not clear that there's only one path here, that it should just be, at the very least, remanded for the district court to reconsider the factors with the proper legal considerations.

[00:08:54] Speaker 03:
But why isn't it fair to say that there's only one path here?

[00:08:57] Speaker 03:
I mean, I think that if you go factor by factor,

[00:09:01] Speaker 03:
You know, we end up in a place where we can assess, well, for example, we talked about consumer care and that was your witness and what are we to do with that?

[00:09:08] Speaker 03:
We talked about similarity of the marks and so forth.

[00:09:10] Speaker 03:
But at the end of the day, the district court really only relied on the objectionable outside evidence in a really, really limited way, right?

[00:09:22] Speaker 03:
I mean, with respect to the specific marks that are before us.

[00:09:27] Speaker 01:
I guess I wouldn't say that it was totally limited.

[00:09:32] Speaker 01:
I would say that it was limited in the sense of the specific factors that it impacted.

[00:09:37] Speaker 01:
But I think there's some other things that we need to consider here as well, too, that we maybe haven't quite touched upon yet in this argument.

[00:09:46] Speaker 01:
the decision regarding JBX, the inclusion of JBX.

[00:09:51] Speaker 01:
And that is also inconsistent in the sense that the district court is according additional weight to the inclusion of JBX on the marks, but it's also saying that it's not a house mark.

[00:10:03] Speaker 01:
And a lot of the analysis that the district court did is citing the house mark cases.

[00:10:10] Speaker 01:
And that just, I don't think that that can really be reconciled here.

[00:10:15] Speaker 03:
But that's a different error or a different allegation of error, right?

[00:10:18] Speaker 03:
That's not the same as your principal argument concerning the quote-unquote outside evidence, right?

[00:10:24] Speaker 01:
Yes.

[00:10:24] Speaker 01:
Yes, that's a different argument.

[00:10:26] Speaker 01:
I would agree with that.

[00:10:28] Speaker 03:
Well, it seems that the district court's overall likelihood of confusion determination on the marks that are before us

[00:10:35] Speaker 03:
It said, examining the matter as a whole, the court determines, A, the inclusion of JBX is distinguishing, and then the fact that JBX's products primarily target a more specific consumer, the moms and kids, and then the three lesser factors weighing in JBX's favor combined together to outweigh.

[00:10:53] Speaker 03:
Okay, that was his ultimate conclusion.

[00:10:56] Speaker 03:
And it seems there's only one part of that that's kind of corrupted by the outside.

[00:11:00] Speaker 03:
So why shouldn't we say that, well, there may have been an error here, but on the whole, it really doesn't seem like it mattered?

[00:11:09] Speaker 01:
Well, I think because we don't know what the district court would have done and that's why I think that reverse and remand for reconsideration of the factors is at the very least the proper course of action here.

[00:11:23] Speaker 01:
But I think as you noted, it impacted regarding the consumers that were targeted in terms of the mother and

[00:11:33] Speaker 01:
Children, but it also impacted all of those three factors that I noted previously and I think when you take all of that together it I mean, it's a factor test and and none of the factors are dispositive So I think that it has to be reconsidered and re-examined based on the proper legal confines So this so your argument seems to assume a de novo review, which is contested

[00:12:01] Speaker 02:
Um, if we, if we reviewed this for clear error, um, it would be a much, much different case, wouldn't it?

[00:12:09] Speaker 02:
As far as determining, you know, whether we could determine what the district court would do or whether it's finding was leaving us with a firm and definite conviction that an error had been made.

[00:12:22] Speaker 01:
Yes, I would admit that if it's a clearly erroneous standard entirely, that that would be tough.

[00:12:29] Speaker 01:
But I think at the very least, it's a mixed question of fact and law.

[00:12:34] Speaker 01:
But I mean, really, the crux of what we're arguing here is a legal issue, which I think is the de novo review.

[00:12:40] Speaker 00:
But additionally- How about heart springs and beer nets?

[00:12:44] Speaker 00:
Some of these are all cases from the 10th Circuit that found that these determinations are legal conclusions.

[00:12:48] Speaker 00:
I'm sorry there are factual findings subject to clarity around this review.

[00:12:52] Speaker 00:
So what what about those cases?

[00:12:54] Speaker 00:
How do you how do you reconcile your position with those?

[00:12:57] Speaker 01:
So those are all trademark infringement cases, and that's really kind of the crux of what we're arguing here is that what's the difference?

[00:13:03] Speaker 00:
Why would it be any difference in the cancellation proceedings?

[00:13:06] Speaker 00:
Why would that?

[00:13:07] Speaker 00:
Standard that the 10th circuit has laid out and it be any different.

[00:13:10] Speaker 00:
What's the difference between those these two kinds of cases?

[00:13:12] Speaker 01:
Yeah, so in a registration proceeding, you're really just looking at what's claimed in the applications and the registrations, because in this case in particular, specifically, it's been claimed a standard word mark, which is the broadest mark that can encompass all

[00:13:31] Speaker 01:
uses without respect to any particular font, color, style, anything like that.

[00:13:38] Speaker 01:
But if you're in an infringement case, you're looking at the actual use in the marketplace to determine whether that actual use is infringing on another mark.

[00:13:47] Speaker 01:
And an actual use is going to be a lot more narrow than what's claimed in these applications and registrations when it's a standard word mark.

[00:13:56] Speaker 03:
Did JBX file any intent to use in this case?

[00:14:01] Speaker 01:
JBX comes from Australia, so it was seeking extension of protection from what it obtained in Australia.

[00:14:13] Speaker 01:
And I see that I'm getting kind of close to time, so if I may reserve the rest for rebuttal.

[00:14:18] Speaker 02:
Judge Rosman has a question.

[00:14:19] Speaker 02:
I have a few more questions.

[00:14:21] Speaker 02:
You're the last case, so we're going to make sure you get to say a few more things.

[00:14:24] Speaker 02:
Go ahead.

[00:14:24] Speaker 03:
So this concerns just the general approach to these 1071b1 proceedings.

[00:14:32] Speaker 03:
As the briefing acknowledged, this is an unusual type of case to appear in our circuit.

[00:14:39] Speaker 03:
I don't think anyone cited us to have presidential authority on that.

[00:14:44] Speaker 03:
type of district court actions.

[00:14:45] Speaker 03:
Is that fair to say that you haven't come across any case that has addressed 1071B1 in our circuit?

[00:14:52] Speaker 01:
Yes, and I believe our brief noted that we believe this is a case of first impression for this circuit, yes.

[00:14:58] Speaker 03:
Okay, and so can you help me understand how to reconcile two things?

[00:15:04] Speaker 03:
One is your argument about what the law requires in these proceedings, which is

[00:15:09] Speaker 03:
You stay within the four corners of the applications and registrations when it comes to the marks, the goods, and there's one more, right?

[00:15:18] Speaker 03:
What is it?

[00:15:19] Speaker 01:
The marks, the goods, the products, and the degree of consumer care.

[00:15:23] Speaker 03:
The degree of consumer care, okay.

[00:15:26] Speaker 03:
So you stay within the four corners, yet 1071B1 allows for you to submit

[00:15:32] Speaker 03:
additional evidence.

[00:15:33] Speaker 03:
The district court's the fact finder.

[00:15:34] Speaker 03:
It's not really an appeal of the TTAB.

[00:15:37] Speaker 03:
So what does that mean?

[00:15:39] Speaker 03:
Does that mean that the new evidence just has to comply with the first principle rule?

[00:15:46] Speaker 01:
Well, I think that the new evidence, it's kind of what occurred in this case here as well.

[00:15:51] Speaker 01:
As I said, the confining to the applications and registrations really only applies to the factors we noted, but if you're looking at the strength of the mark, the new evidence could come in in terms of that, like third-party uses and enforcement efforts and stuff like that.

[00:16:07] Speaker 01:
That is some of the new evidence that would be considered that is outside of the applications and registrations.

[00:16:14] Speaker 01:
Okay, thank you.

[00:16:15] Speaker 02:
All right.

[00:16:16] Speaker 02:
Do you have anything else?

[00:16:18] Speaker 02:
OK.

[00:16:18] Speaker 02:
We'll give you a little bit of time at the end.

[00:16:21] Speaker 01:
Thank you.

[00:16:21] Speaker 01:
I appreciate it.

[00:16:28] Speaker 04:
Good morning, Your Honors.

[00:16:29] Speaker 04:
May it please the Court?

[00:16:31] Speaker 04:
My name is Laura Myers on behalf of Appellee JBX Proprietary Limited.

[00:16:35] Speaker 04:
I'd like to start by addressing some of the questions Your Honors have asked, because I want to make sure that we're all on the same page about what should apply here.

[00:16:45] Speaker 04:
With respect to what is the standard of review, as was noted by Your Honor, this circuit follows the majority view, which is that likelihood of confusion is a question of fact subject to clearly erroneous review.

[00:17:00] Speaker 03:
The case is- Okay, that's true.

[00:17:02] Speaker 03:
But that does not apply here, where there is a legal error infecting the district court's factual determinations.

[00:17:10] Speaker 03:
And that's not even a trademark rule, right?

[00:17:14] Speaker 03:
This is the rule that says if you have a district court making an inherently factual determination that ordinarily would be reviewed for clear error, that yields when the district court's factual determination is infected by a threshold legal mistake.

[00:17:30] Speaker 04:
And Your Honor, we disagree on the first question you asked to opposing counsel respectfully as well, which we think it is an evidentiary issue, this consideration of the outside evidence

[00:17:42] Speaker 04:
precisely as they characterized it in their opening brief, which was their second appeal issue.

[00:17:48] Speaker 03:
Okay, can I stop you just for a second to make sure that we're talking about things in sort of a sequence?

[00:17:52] Speaker 03:
So with respect to my first observation about your statement of the standard of review, do you agree that clear error, assuming that what we're dealing with is this

[00:18:03] Speaker 03:
inside-outside evidence threshold question, that if the district court's determination is violated a threshold legal rule, we would not be on clear error review for the likelihood of confusion analysis.

[00:18:17] Speaker 03:
Do you agree with that?

[00:18:19] Speaker 04:
I do not agree with that because it does not infect the entire analysis.

[00:18:24] Speaker 04:
So the likelihood of confusion analysis is very fact-specific, and each factor

[00:18:29] Speaker 04:
is its own factual determination and the overall likelihood of confusion is also its own overarching factual determination.

[00:18:39] Speaker 04:
So again, I disagree that it's a legal issue whether or not the evidence that was considered was improperly considered that would infect a particular factor.

[00:18:50] Speaker 04:
I also disagree that it would infect the overall analysis.

[00:18:54] Speaker 04:
That would still be a factual question subject to clear air review.

[00:18:58] Speaker 04:
And going back to the fundamental threshold question, which is this consideration of the marketplace evidence, we don't consider that to be a legal error.

[00:19:08] Speaker 04:
In fact, I mean, in trademark disputes, very few things are legal.

[00:19:11] Speaker 04:
I mean, the case law is all over the place talking about the fact that this is an inherently factual determination.

[00:19:18] Speaker 04:
With respect to the evidence, it's an evidentiary issue, which then this court reviews for an abuse of discretion.

[00:19:24] Speaker 03:
But why is it an evidentiary issue?

[00:19:28] Speaker 03:
how I was originally thinking about the case, and then I've convinced myself I'm wrong.

[00:19:32] Speaker 03:
So maybe you can convince me to go back to how I was originally thinking about it.

[00:19:35] Speaker 03:
I mean, it seems that in this case, to understand this as a pure evidentiary question that's subject to ordinary abuse of discretion doesn't make a whole lot of sense, irrespective of the trademark context.

[00:19:47] Speaker 03:
It's about how we as an appellate court review factual findings that are infected by legal errors.

[00:19:55] Speaker 03:
And that's not an abuse of discretion standard.

[00:19:59] Speaker 03:
That's a standard that requires us to remand in the ordinary course, because we really can't be sure how the district court would have done its factual determination had it known what the correct law was.

[00:20:11] Speaker 03:
unless there's only one resolution of the factual issue.

[00:20:15] Speaker 03:
And it seems to me that that's where your argument needs to go, right?

[00:20:20] Speaker 03:
That if you are able to persuade us that there's only one resolution of the factual issue, then maybe that you prevail.

[00:20:29] Speaker 03:
But I'm not understanding why this is an evidentiary question that's reviewed for relevance and so forth.

[00:20:36] Speaker 03:
It just doesn't seem to fit.

[00:20:38] Speaker 04:
And so again, putting aside the question of the evidentiary issue, which we think that is the standard because it is a question of which evidence should have been considered or not considered with respect to these elements.

[00:20:50] Speaker 04:
But answering Your Honor's first question, which is if the Pullman standard applies to your last point there, is that if there's only one outcome, there's no reason to remand.

[00:21:00] Speaker 04:
That would be the situation we'd be in, because as the panel noted, the district court weighed these factors in the other side's favor already.

[00:21:10] Speaker 04:
So similarity of the marks was weighed in its favor.

[00:21:14] Speaker 04:
Manner of marketing was met, and products were weighed in its favor.

[00:21:20] Speaker 04:
And I'll back up for a second.

[00:21:23] Speaker 04:
Degree of care is not one of the factors that you cannot consider outside evidence on.

[00:21:27] Speaker 04:
The BB hardware case out of the Supreme Court identifies what the factors are.

[00:21:31] Speaker 04:
The factors are similarity of the marks, similarity of the products, and channels of trade.

[00:21:40] Speaker 04:
Now, in this circuit, channels of trade and similarity of the products are combined in one factor.

[00:21:47] Speaker 04:
So degree of care is specifically one that the BB hardware says that you can consider outside evidence.

[00:21:52] Speaker 04:
So we are really talking about similarity of the marks and similarity of

[00:21:57] Speaker 04:
the products in manner of marketing, which is that combination of products and channels of trade.

[00:22:03] Speaker 03:
So we collapse it into one.

[00:22:05] Speaker 04:
Correct.

[00:22:06] Speaker 04:
So those are the two factors that are issue with respect to the outside evidence.

[00:22:10] Speaker 04:
Degree of care does not factor in with respect to that.

[00:22:12] Speaker 04:
So it would have been fine to look at outside evidence with respect to that factor.

[00:22:23] Speaker 04:
issue with respect to similarity of the marks and similarity of the products and manner of marketing, as I was saying, is that they were already weighed in the other side's favor.

[00:22:31] Speaker 03:
So the only... I think their position is that they could have been made more or they could have weighed more.

[00:22:36] Speaker 03:
And so this is an inherently discretionary determination that weighing is an inherently discretionary determination that we can't be put in the position of reweighing the factors.

[00:22:44] Speaker 04:
Well, and precisely.

[00:22:45] Speaker 04:
So the only other outcome would be to weigh it higher.

[00:22:47] Speaker 04:
And I would also say that the district court

[00:22:52] Speaker 04:
didn't say anything about the weight it was providing to similarity of products and manner of marketing.

[00:23:00] Speaker 04:
All it said with respect to weight was that it did not agree with the other side, that it should weigh, quote, overwhelmingly in its favor.

[00:23:09] Speaker 04:
Basically, you know, appellant's argument equated with this overwhelming weight argument that it was essentially a controlling factor.

[00:23:16] Speaker 04:
And the district court disagreed, which is proper, because there was no case law saying that similarity of products

[00:23:21] Speaker 04:
and manner of marketing should be a controlling factor.

[00:23:25] Speaker 04:
An appellant certainly doesn't cite any.

[00:23:27] Speaker 04:
Trademark cases across the board stress typically similarity of the marks or strength of the marks.

[00:23:35] Speaker 04:
This circuit stresses similarity of the marks, which is precisely how the district court got to the decision that it did because it relied very heavily on the addition of JBX to those two marks at issue.

[00:23:50] Speaker 04:
I don't want to gloss over that because that's very important.

[00:23:52] Speaker 04:
And when we look at the split decision here, it's clear that that is what carried the day for the district court was the addition of the JBX in the two marks it issue.

[00:24:00] Speaker 04:
And JBX is our company name.

[00:24:05] Speaker 04:
There's no dispute about that.

[00:24:07] Speaker 04:
The other side wants to make an issue out of the fact that the district court waffled on whether it was a house mark or not.

[00:24:16] Speaker 04:
That question is irrelevant.

[00:24:19] Speaker 04:
In this circuit, the ALFWARE decision that we cited specifically talks about how the addition of a house mark or a trade name can itself be the reason that there is no confusion.

[00:24:34] Speaker 04:
Now we think that JBX is a house mark.

[00:24:39] Speaker 04:
All that a house mark means is that it's

[00:24:42] Speaker 04:
the company name associated with various brands.

[00:24:45] Speaker 04:
So think of General Mills and Cheerios.

[00:24:48] Speaker 04:
General Mills is the house mark.

[00:24:50] Speaker 04:
Cheerios is the brand and the trademark.

[00:24:53] Speaker 04:
In our case, JBX is most certainly our company name and house mark.

[00:24:58] Speaker 04:
And Bioisland is the brand.

[00:25:03] Speaker 04:
But it doesn't matter, because it's certainly a trade name, because it's the company name.

[00:25:06] Speaker 04:
And this circuit has precedent saying that that enough is a loan to find no confusion, and that's well established in McCarthy and other leading treatises on trademark law.

[00:25:14] Speaker 04:
So that is really what carried the day for the district court.

[00:25:18] Speaker 04:
It was not this outside evidence.

[00:25:22] Speaker 03:
would like for you to explain how the record supports what you're saying.

[00:25:27] Speaker 03:
So I think framed in terms of, or inserted into the legal frame, I think here's where we are, and please correct me if I'm wrong, that really the question is no one seems to disagree that this is a case of first impression in terms of this 1071B1 inside outside.

[00:25:46] Speaker 03:
And that the rule is that as to those three

[00:25:51] Speaker 03:
those three types of factors that we discussed, similarity of the marks, similarity of the products, manner of marketing, that has to stay within the four corners of the registration applications.

[00:26:03] Speaker 03:
Do you agree with all that so far?

[00:26:04] Speaker 04:
Correct.

[00:26:05] Speaker 04:
That is how it is done in other 1071B cases.

[00:26:07] Speaker 04:
OK.

[00:26:08] Speaker 03:
So the issue here is, did the district court err by not following that rule, which

[00:26:17] Speaker 03:
to be fair, we have not yet had an occasion to pass on in our circuit.

[00:26:22] Speaker 03:
If we say that the district court did err because of the nature of the inherently factual findings here, don't we have to be able to say that the record permits only one resolution of the factual issue?

[00:26:34] Speaker 03:
You agree with that under Pullman?

[00:26:36] Speaker 04:
Under Pullman, correct.

[00:26:37] Speaker 03:
That's the standard.

[00:26:38] Speaker 03:
And so what I'm struggling with is when we look at what the district court did, if the district court said, gosh,

[00:26:45] Speaker 03:
This is so different.

[00:26:46] Speaker 03:
These two marks are so different because of the bookends of the JBX mark.

[00:26:52] Speaker 03:
That seals the deal for me.

[00:26:54] Speaker 03:
I would have an easier time agreeing that there is only one resolution of the factual issue.

[00:27:00] Speaker 03:
But the district court included other things.

[00:27:03] Speaker 03:
It said the inclusion of the mark, and then it was focusing on the use by the moms and kids and the labels and so forth.

[00:27:12] Speaker 03:
So help me understand how, notwithstanding that the district court

[00:27:16] Speaker 03:
called out three specific things, really, we should be focusing on one thing.

[00:27:21] Speaker 04:
Yeah, sure.

[00:27:22] Speaker 04:
And you're saying to one portion of the opinion, and I'd like to sort of draw the attention to the other sections, which I think make it clear that what the court relied on was, in fact, that use of the JVX, as opposed to that reference in the elements that you identify where they refer to the mothers and children.

[00:27:40] Speaker 04:
So if we look at,

[00:27:42] Speaker 04:
that that's in the discussion of the similarity of the marks, the overall weighing of the factors, and then importantly, the overall conclusion on the likelihood of confusion.

[00:27:52] Speaker 04:
So specifically, if we look at the decision at Appendix Volume 3, page 873, paragraph 57,

[00:28:03] Speaker 04:
The district court explained that, quote, by including JBX's brand name, which looks and sounds unlike island on these two marks, any likelihood of confusion is, quote, significantly decreased.

[00:28:17] Speaker 04:
Then it goes on to say in the following page on paragraph 58 that the significantly reduced likelihood of confusion that it had just said was attributed to the use of JBX

[00:28:32] Speaker 04:
as to the JBX BioIsland and BioIsland JBX marks supports their USPTO registration as sought by JBX.

[00:28:41] Speaker 04:
And then in the court's ultimate conclusion, which is in the appendix volume three at page 874, the district court stated, the inclusion of JBX in the JBX BioIsland mark and BioIsland JBX mark add an important distinguishing element

[00:29:01] Speaker 04:
that makes any confusion with the island marks sufficiently less likely to allow their registration.

[00:29:07] Speaker 04:
So reading the opinion as a whole, I think it's very, very clear that the addition of JBX in these marks is the reason why they were allowed.

[00:29:16] Speaker 04:
And the split decision itself shows that the weighing of the other factors were not determinative in the ultimate factual determination of likelihood of confusion, that ultimate weighing of the factors, the fact that

[00:29:30] Speaker 04:
the TTAB was affirmed on BioIsland, and BioIsland, two words, shows that regardless of the district court's weighing of similarity of the marks and similarity of the price and manner of marketing, it still found that confusion was too likely with respect to those marks.

[00:29:47] Speaker 04:
So what made the difference was the addition of JBX.

[00:29:51] Speaker 04:
And again, the court did weigh those factors, similarity of the marks and similarity of the price and manner of marketing in JBX's

[00:30:00] Speaker 04:
I'm sorry, in Aylin's favor.

[00:30:03] Speaker 02:
Can I ask you one question to clear something up?

[00:30:06] Speaker 02:
From the earlier cases where we weren't sure everything was clear on the record, Judge Rossman asked you about the Pullman standard, and I couldn't tell whether you were conceding that that was the proper standard or if you were accepting her standard for purposes of your argument.

[00:30:22] Speaker 02:
Would you

[00:30:22] Speaker 02:
If you're conceding it, that's great.

[00:30:24] Speaker 02:
I'm good with it.

[00:30:27] Speaker 04:
I think the problem with the Pullman standard is that I don't agree with the fundamental premise that there's been a legal error, which would cause it to apply, or that factual determinations were made in error based on an incorrect legal standard.

[00:30:45] Speaker 04:
I think the consideration of the outside evidence is an evidentiary issue.

[00:30:49] Speaker 04:
They move to exclude that evidence

[00:30:51] Speaker 04:
their appeal.

[00:30:52] Speaker 04:
Second issue was that that was an abuse of discretion, the denial of that exclusion, and that is subject to an analysis which determines whether or not it had a substantial impact on the outcome.

[00:31:05] Speaker 02:
So the short answer is you're not conceding it.

[00:31:08] Speaker 04:
I'm not considering it unless it is determined that the consideration of outside evidence is a legal issue, and then it would apply, I agree, and then we would be able to... I'm sorry, I have to follow up.

[00:31:19] Speaker 03:
Sure, go ahead.

[00:31:20] Speaker 03:
I thought that when we were sort of charting through what everyone was at least on the same page about so far, you agree that this 1071B1 case is an issue of first impression, and we have not passed on this outside-inside evidence issue

[00:31:38] Speaker 03:
And you agree that as to those three categories, the Supreme Court has instructed that you have to look at the four corners of the marks.

[00:31:46] Speaker 03:
I thought you agreed that that was the rule.

[00:31:48] Speaker 03:
And then I thought you agreed that the district court did that a little bit as to some of the factors.

[00:31:54] Speaker 03:
But then you have your ultimate position that maybe that doesn't matter at the end of the day.

[00:31:58] Speaker 04:
I agree with all of that.

[00:32:00] Speaker 04:
I mean, underlying this all, I still want to get to a fundamental point.

[00:32:03] Speaker 04:
I know I'm over.

[00:32:04] Speaker 04:
Because this is a case of first impression in this circuit, I want to make sure that this is very, very clear, that even though this is a 1071b appeal, you still follow the fact that this is a question of fact subject to clearly erroneous review.

[00:32:19] Speaker 04:
And all the circuits that they cite, so federal circuits, second circuit,

[00:32:25] Speaker 04:
Those are circuits that follow the minority review.

[00:32:28] Speaker 04:
I mean, minority standard.

[00:32:29] Speaker 03:
That doesn't make any sense to me.

[00:32:30] Speaker 03:
Maybe I don't understand it, so help me with this.

[00:32:33] Speaker 03:
How can clear error review apply?

[00:32:35] Speaker 03:
Forget 1071, the specific context of this trademark case.

[00:32:41] Speaker 03:
How can clear error review apply if there is an inherently factual determination that the district court has to make that's ordinarily reviewed for clear error, but the factual determination is corrupted by a legal mistake?

[00:32:58] Speaker 03:
How can clear error review have anything to do with this case at that point?

[00:33:03] Speaker 04:
So, Your Honor, the actual factual determination that the district court made was that the factors weighed in the other side's favor.

[00:33:11] Speaker 04:
What they are complaining about is the weight.

[00:33:14] Speaker 04:
And they don't have any authority to support the fact that there's a legal standard out there that the similarity of products and manner of marketing should have weighed overwhelmingly in their favor.

[00:33:27] Speaker 04:
They don't cite any case law talking about overwhelmingly.

[00:33:30] Speaker 04:
The district court did, in fact, weigh it in their favor.

[00:33:34] Speaker 04:
So that factual determination is not in error, and it's not incorrect.

[00:33:40] Speaker 04:
was the way that it should have went.

[00:33:42] Speaker 04:
We didn't even dispute that at trial.

[00:33:43] Speaker 04:
We said the factor should have weighed in their favor.

[00:33:45] Speaker 04:
So there is no error with respect to that particular factor.

[00:33:49] Speaker 04:
With respect to similarity of the marks, again, their complaint is weight.

[00:33:53] Speaker 04:
That factor, again, weighed in their favor.

[00:33:57] Speaker 04:
But the district court's determination that the similarity only weighed slightly in their favor was not based exclusively on this outside evidence.

[00:34:06] Speaker 04:
Sure, they mentioned it, but in their actual opinion, they said,

[00:34:09] Speaker 04:
that it did not have a major outcome, they weren't major distinctions, and it pointed out that it has to weigh similarities over differences.

[00:34:19] Speaker 04:
The crux of the district court's actual decision on similarity was based on the use of bio and JBX as the initial words.

[00:34:29] Speaker 04:
That doesn't consider outside evidence, that's within the four corners of the application and the registration.

[00:34:34] Speaker 04:
And its decision based on that, due to the fact that they were the leading words in the

[00:34:39] Speaker 04:
is supported by the case law.

[00:34:41] Speaker 04:
We cited the Trek bicycle case, which talks about the first word in a mark is typically the most dominant portion of the mark.

[00:34:47] Speaker 04:
So the similarity of the marks factor, again, it's a question of weight and there's other evidence that support the district court's decision and similarity of manner of marking.

[00:34:57] Speaker 04:
We're getting down to whether or not the court should have weighted overwhelmingly and we have no law saying that that's the standard that they didn't follow that would impose Pullman and get us into this

[00:35:08] Speaker 02:
Review that we've been talking about okay Okay, thank you counsel will give you she was over a little bit Okay, we'll give you three minutes Square things up between the two of you

[00:35:26] Speaker 01:
Thank you.

[00:35:29] Speaker 01:
Just briefly, I want to go back to the discussion that just occurred.

[00:35:35] Speaker 01:
I think the different factors also carry different weights, which I think is important to consider too in terms of similarity of the marks carrying more weight.

[00:35:46] Speaker 01:
And so if there was a misstep in the analysis regarding a factor such as similarity of the marks which carries more weight, I think

[00:35:54] Speaker 01:
Again, that's something that could have changed the entire analysis.

[00:35:59] Speaker 01:
I also would like to address the citation to the B&B hardware case.

[00:36:05] Speaker 01:
That case is distinguishable here.

[00:36:07] Speaker 01:
It's not really standing for the proposition that

[00:36:11] Speaker 01:
that evidence, regarding what evidence can be considered in terms of the degree of care exercised by the consumer.

[00:36:19] Speaker 01:
That case involved a concept of issue preclusion involving basically dueling trademark infringement proceedings and also TTAB proceedings.

[00:36:31] Speaker 01:
So I think that case is distinguishable.

[00:36:34] Speaker 02:
I'd also... Let me ask you about that.

[00:36:38] Speaker 02:
If you have one of these dual cases where there's an infringement claim and a, what's the term I'm looking for?

[00:36:45] Speaker 02:
The kind of claim you have.

[00:36:49] Speaker 01:
A T-Tab opposition or a cancellation proceeding?

[00:36:52] Speaker 02:
A cancellation proceeding.

[00:36:54] Speaker 02:
I mean, the court in that case is going to, the standard is going to be clear error, isn't it?

[00:37:02] Speaker 01:
Sorry, the court, in a trademark infringement case, is that what you're asking?

[00:37:09] Speaker 02:
It's a dual case.

[00:37:11] Speaker 02:
You're not going to apply different standards to the different claims, are you?

[00:37:17] Speaker 01:
That's an interesting question.

[00:37:19] Speaker 01:
Honestly, to be frank, I'm not entirely sure what that would look like.

[00:37:25] Speaker 01:
But I think that's not really an issue here, since we don't have dueling trademark infringement.

[00:37:30] Speaker 02:
It's an issue only insofar as that at least some people might think that it would be confusing to have two different standards if they could end up in a dual proceeding

[00:37:47] Speaker 01:
Yes, I would agree that I think it could be confusing under that circumstance, but as I noted, since we don't have those dual proceedings here, I don't think that that's something that we need to be too concerned about.

[00:38:02] Speaker 01:
With my last 20 seconds here, I just would like to note that the inclusion of JBX really doesn't carry much weight, especially where it's undisputed that JBX has not

[00:38:14] Speaker 01:
Entered the us marketplace yet, so it's not going to have even if it is a trade name.

[00:38:19] Speaker 01:
It's not going to have any Significance for the us consumer Where it hasn't entered the us marketplace, and I see that my time is up before you sit down Let's make sure we don't have any follow-ups Okay, thank you counsel.

[00:38:34] Speaker 01:
Thank you.

[00:38:34] Speaker 02:
You're committed counselor excuse will be in recess until tomorrow morning at 9 a.m