[00:00:00] Speaker 04:
This case is Enrae Branded, 2018-1828.

[00:00:03] Speaker 04:
Mr. Furr.

[00:00:04] Speaker 04:
May it please the court?

[00:00:16] Speaker 03:
This case involves the registration of the marked tweeds for shirts and sweaters.

[00:00:23] Speaker 03:
The board and examiner found the mark to be generic.

[00:00:29] Speaker 03:
Board has a burden of proof to be generic by clear and convincing evidence.

[00:00:36] Speaker 03:
Appigant believes that this was not properly founded.

[00:00:44] Speaker 03:
Appigant originally had read your tweets in 1987, a long time use of MARC.

[00:00:54] Speaker 03:
It was abandoned inadvertently through a mistake.

[00:00:58] Speaker 04:
Is genericness a question of fact?

[00:01:00] Speaker 03:
Excuse me?

[00:01:01] Speaker 04:
Is genericness a question of fact?

[00:01:05] Speaker 03:
I do not believe so, Your Honor.

[00:01:07] Speaker 04:
I don't think so.

[00:01:09] Speaker 04:
I don't think we owe any deference to the board.

[00:01:13] Speaker 03:
We always deserve deference to the board, Your Honor.

[00:01:17] Speaker 03:
They are the experts.

[00:01:18] Speaker 03:
We're arguing in this situation that they didn't properly find the finding of genericness.

[00:01:26] Speaker 05:
My problem is with the record that you presented.

[00:01:29] Speaker 05:
I mean, you didn't provide any evidence to rebut the board's dictionary definitions, tweets.

[00:01:38] Speaker 05:
You didn't submit any evidence that rebutted the board's reference to competitor use of the mark and the concepts.

[00:01:49] Speaker 05:
So what are we supposed to do with that?

[00:01:51] Speaker 05:
It's really just an absence of proof, isn't it?

[00:01:54] Speaker 03:
well you know it's it's well-known even in the definitions of tweeds is more known for uh... suits and suits and tweed suits not for shirts and sweaters there's no genius between the term tweeds and shirts and sweaters they were shirts and sweaters were made out of tweeds or tweed-like fabric right there is an evidence of some but a lot of the evidence uh... is based on non-us findings so uh...

[00:02:24] Speaker 03:
And that doesn't necessarily mean that there, that people, the general public was going to associate tweeds with shirts and sweaters, your honor.

[00:02:33] Speaker 05:
But I mean, I don't disagree that usually sweaters aren't made of tweed, you know, unless you live in a crazy cold environment, like, you know, some of the European countries, but, but you didn't disclaim sweaters made of tweed.

[00:02:50] Speaker 05:
You just said for use in sweaters.

[00:02:53] Speaker 05:
I mean, there are sweaters that are made from tweed.

[00:02:56] Speaker 05:
Maybe not the most comfortable ones, but they are.

[00:02:59] Speaker 03:
And the record, yes, the examiner did find that.

[00:03:01] Speaker 03:
Like I said, we don't think that associates a genus or excludes a finding of tweeds to be more of a generic term or mark versus, I mean, more of a descriptive term or mark and not generic.

[00:03:13] Speaker 03:
Please skip that generic conversation.

[00:03:17] Speaker 03:
We believe the examiner was proper in their initial finding that tweeds for this mark was descriptive.

[00:03:23] Speaker 03:
and based on the applicant's long-term use of the mark that has acquired secondary meaning.

[00:03:30] Speaker 04:
Did you present evidence of secondary meaning?

[00:03:36] Speaker 03:
We produced the evidence of long-term usage.

[00:03:41] Speaker 03:
Your Honor, the fact that it was registered since 1987, registered for over 31 years before it inadvertently was abandoned.

[00:03:53] Speaker 05:
and so what and then but you say somehow it's still relevant even though it was abandoned can the board really consider it once it's abandoned yes because it's a prior history okay but you're not saying that it somehow creates a presumption i would argue that it does somehow create a presumption it's it has been in the rulings that uh

[00:04:17] Speaker 01:
Well, in Cordova, we said that that's not the case.

[00:04:22] Speaker 01:
I mean, it was similar in that respect there.

[00:04:24] Speaker 01:
Excuse me, Your Honor?

[00:04:25] Speaker 01:
Cordova.

[00:04:27] Speaker 01:
Yes, Your Honor.

[00:04:28] Speaker 01:
Yeah.

[00:04:28] Speaker 01:
Resolves this question against you, right?

[00:04:32] Speaker 03:
I love the Cordova case.

[00:04:35] Speaker 03:
I would argue that this is different.

[00:04:38] Speaker 03:
But I understand your argument.

[00:04:40] Speaker 04:
Yes, Your Honor.

[00:04:41] Speaker 04:
You seem not to want to follow precedent.

[00:04:44] Speaker 04:
PTO says whether a proposed block is generic is a question of fact in the Nordic Naturals.

[00:04:53] Speaker 04:
Is that not what Nordic Naturals holds?

[00:04:56] Speaker 02:
Yes, Your Honor.

[00:04:58] Speaker 05:
And haven't we said the same thing?

[00:05:00] Speaker 02:
Yes, Your Honor.

[00:05:03] Speaker 03:
Okay.

[00:05:03] Speaker 03:
Yes, Your Honor.

[00:05:04] Speaker 03:
We're just arguing that based on the long-term usage and the fact that the genus does not, the general public is not going to associate

[00:05:13] Speaker 03:
with shirts and sweaters.

[00:05:15] Speaker 03:
And that distinguishes it from the prior, I want to say prior art, I'm too used to talking trademark terms, from the prior record.

[00:05:25] Speaker 05:
So what evidence did you present on secondary meaning?

[00:05:31] Speaker 03:
We presented the evidence of the prior registered mark, Your Honor.

[00:05:35] Speaker 05:
But there was no survey evidence, there was no advertising materials, you just didn't submit anything.

[00:05:43] Speaker 03:
No, Your Honor.

[00:05:45] Speaker 04:
And that's the way one would do it.

[00:05:47] Speaker 04:
For example, there was a survey showing that X percent of people understood tweeds to mean shirts and sweaters.

[00:05:56] Speaker 03:
Yes, Your Honor.

[00:05:57] Speaker 03:
I understand.

[00:05:58] Speaker 04:
Not there.

[00:05:59] Speaker 03:
I understand.

[00:06:04] Speaker 03:
But as I said, still we would argue that it has acquired extinguishedness.

[00:06:12] Speaker 03:
based on its long-term usage, based on the use of the prior mark, which did have many renewals with proof of usage.

[00:06:24] Speaker 04:
We understand your point.

[00:06:26] Speaker 03:
Thank you, Your Honor.

[00:06:28] Speaker 04:
Any other thoughts, arguments?

[00:06:33] Speaker 03:
As I said, I just would like to review the fact that we do not believe that it's genius with shirts and sweaters.

[00:06:40] Speaker 03:
The public would not recognize that as such.

[00:06:44] Speaker 05:
Well, but Cordua and Royal both said, the Royal Crown both said, that it doesn't have to be generic for the entire genus, as long as the public would understand it to be generic for some subset of that genus.

[00:06:59] Speaker 05:
And even if you weren't aiming for that subset, that still shows what the public would understand, right?

[00:07:07] Speaker 03:
Right, Your Honor, but I don't think that they would understand this as a subset.

[00:07:11] Speaker 04:
You have a basic argument that Tweed doesn't necessarily mean shirts and sweaters.

[00:07:17] Speaker 04:
I have a Tweed jacket.

[00:07:19] Speaker 03:
Yes, Your Honor.

[00:07:20] Speaker 04:
But you've got the standard of review here.

[00:07:24] Speaker 04:
And the PTO did provide samples showing Tweed shirts and sweaters.

[00:07:32] Speaker 03:
Yes, Your Honor.

[00:07:32] Speaker 03:
I would argue many of those samples are non-U.S.

[00:07:37] Speaker 03:
and that it's not a greatly widely known

[00:07:41] Speaker 03:
As by the public, there may be a specific example here and there, but those are limited, Your Honor.

[00:07:48] Speaker 04:
Shall we save the rest of your time for a bottle?

[00:07:51] Speaker 03:
Yes, Your Honor.

[00:07:51] Speaker 03:
I appreciate your time.

[00:07:56] Speaker 04:
Pass it to Randy.

[00:08:01] Speaker 00:
Good morning, Your Honors.

[00:08:02] Speaker 00:
May it please the Court.

[00:08:03] Speaker 00:
Just a couple of points I want to pick up on, on Appellant's argument.

[00:08:08] Speaker 00:
First of all, the TTAB specifically excluded the foreign websites that were in the record.

[00:08:15] Speaker 00:
It did so at page 8 of the record, appendix 8, footnote 20.

[00:08:21] Speaker 05:
So then what was left with respect to evidence of tweed sweaters?

[00:08:26] Speaker 00:
There were a lot of, as we pointed out in the brief, there were a lot of websites that were US websites that showed use by competitors of tweed shirts and tweed sweaters as

[00:08:37] Speaker 00:
the kind of thing that was being offered on their websites.

[00:08:41] Speaker 04:
But none of them just say tweeds.

[00:08:44] Speaker 04:
They always have shirt or sweater attached, as if they weren't generic.

[00:08:51] Speaker 00:
Right.

[00:08:51] Speaker 00:
There were dictionary definitions from Merriam-Webster and the Oxford dictionary as well that showed that the plural tweeds is defined by the public as clothes made out of tweed fabric.

[00:09:03] Speaker 00:
And these are just a subset of clothes made out of tweed fabric.

[00:09:07] Speaker 00:
And these websites show that, in fact, the word tweed has the same meaning when referring to sweaters and shirts.

[00:09:14] Speaker 05:
But you can see that the use of tweed fabric for sweaters and shirts is extremely limited.

[00:09:22] Speaker 05:
It's not like the normal person goes out looking for a tweed sweater or tweed shirt, right?

[00:09:29] Speaker 00:
I, apparently they do.

[00:09:31] Speaker 00:
Tweed jackets, yes.

[00:09:32] Speaker 00:
What's in this record, it appears that they do that there are Tweed shirts and Tweed sweaters offered to the public.

[00:09:39] Speaker 00:
That's really the only evidence of that in this record is what the examining attorney put in.

[00:09:45] Speaker 00:
There is no countervailing evidence.

[00:09:48] Speaker 05:
There was, in fact, a mark that was granted for this that existed for a long time, right?

[00:09:54] Speaker 00:
Yes.

[00:09:55] Speaker 05:
And do you put any weight on the fact that the

[00:10:01] Speaker 05:
that the cancellation was due to inadvertence?

[00:10:04] Speaker 00:
No.

[00:10:04] Speaker 00:
The fact that it, first of all, even if it were a live and existing registration, it would have no impact on this case because every time we get an application, we have to review it for all of the statutory requirements.

[00:10:17] Speaker 00:
The Cordua case basically takes care of the entire argument that the appellant is making about any effect that the prior registration would have.

[00:10:25] Speaker 05:
But it would have some registration with respect to the question of

[00:10:31] Speaker 05:
if it had secondary meaning with respect to secondary meaning.

[00:10:34] Speaker 00:
Potentially it would, yes, but there is no question of secondary meaning in this particular case because A, the only issue was genericness and B, they amended to try to seek registration not on the principal register but on the supplemental register and that basically took secondary meaning out of the case even if it would have been in there to begin with.

[00:10:56] Speaker 00:
If there are no further questions that Your Honors have?

[00:11:01] Speaker 04:
Thank you, Mr. Furr has some rebuttal time.

[00:11:09] Speaker 03:
Yes, Your Honor.

[00:11:14] Speaker 03:
The applicant would argue that the long-term registration should be given some deference at least to show that the public is aware of tweeds

[00:11:29] Speaker 03:
based on the applicant's usage in the marketplace.

[00:11:33] Speaker 03:
But there's no secondary meaning issue here, right?

[00:11:36] Speaker 03:
I have an argument.

[00:11:37] Speaker 03:
The applicant moved the request to supplemental register based on the request from the examiner.

[00:11:45] Speaker 03:
The examiner did not raise the issue of genericness until after the applicant followed the examiner's request to move to the supplemental register.

[00:12:00] Speaker 03:
The applicant argues that basically some difference should be given to the prior registered mark.

[00:12:06] Speaker 03:
It was a 31-year-old mark to show usage and to show that it is not generic.

[00:12:14] Speaker 05:
Why couldn't you have put some evidence in of that 31 years of usage?

[00:12:22] Speaker 05:
Well, clearly you could have.

[00:12:23] Speaker 05:
Why didn't you?

[00:12:26] Speaker 03:
Based on what you get from the client.

[00:12:29] Speaker 05:
Okay.

[00:12:30] Speaker 05:
Sorry, I don't... No, I get it.

[00:12:33] Speaker 03:
Okay.

[00:12:34] Speaker 03:
I would like to say that it's an honor to argue before this court.

[00:12:38] Speaker 03:
The opposing counsel has been very professional.

[00:12:42] Speaker 03:
As a standing professional, your clerk's court's office is fantastic.

[00:12:45] Speaker 03:
This is my first experience here, so I do appreciate that.

[00:12:49] Speaker 03:
I do ask that you find that the first ruling of the examiner, that it was descriptive, was correct, based on long-term usage.

[00:12:59] Speaker 03:
the prior registration.

[00:13:02] Speaker 03:
I appreciate your time.

[00:13:03] Speaker 03:
As I said, it's been an honor.

[00:13:06] Speaker 04:
Thank you, Mr. Furrow.

[00:13:07] Speaker 04:
We'll consider your arguments and cases submitted.