[00:00:00] Speaker 04:
of the day, I'll turn it over to Judge Raina who wants to make a motion.

[00:00:05] Speaker 01:
Thank you Judge Moore.

[00:00:09] Speaker 01:
Colleagues, I'd like to move for admission one of my law clerks, Vladimir Semendayi.

[00:00:18] Speaker 01:
And, Blatt, could you please stand up?

[00:00:23] Speaker 01:
Well, it's been a great year having you clerking for me and time has flown by.

[00:00:28] Speaker 01:
I guess it's because

[00:00:30] Speaker 01:
You're having fun, and I'm having fun, but we're both working hard.

[00:00:35] Speaker 01:
When you're working hard, it even goes by faster.

[00:00:39] Speaker 01:
You've impressed me with your hard work and your work ethic, which has produced excellent work product.

[00:00:47] Speaker 01:
And that product has enhanced not only my work, but the work of the court as a whole.

[00:00:54] Speaker 01:
I remember not too long ago that we celebrated you becoming an American citizen.

[00:01:01] Speaker 01:
You're an exemplar of what this country stands for in immigrants coming to the United States and excelling, taking advantage of opportunities, working hard, and adhering to good ethics.

[00:01:21] Speaker 01:
Colleagues, I know that in the well stands a young man who is an excellent lawyer and that I'm sure will be a leading light

[00:01:31] Speaker 01:
in the legal profession.

[00:01:32] Speaker 01:
I move for his admission to the US Court of Appeals for the Federal Circuit.

[00:01:38] Speaker 04:
Wow.

[00:01:38] Speaker 04:
Those were some very kind words.

[00:01:46] Speaker 04:
What are you doing over there?

[00:01:48] Speaker 04:
I was inappropriately consulting with him about whether we really shouldn't accept this motion or not.

[00:01:54] Speaker 04:
I had some important questions to flush out.

[00:01:56] Speaker 04:
They're flushed out.

[00:01:58] Speaker 04:
What do you think, Judge Chen?

[00:02:00] Speaker 03:
I've also been impressed with Mr. Vlad here, and so I approve the motion.

[00:02:06] Speaker 04:
OK.

[00:02:07] Speaker 04:
Well, I agree, and I'd like to ask the clerk of court.

[00:02:12] Speaker 04:
So I don't know how to say a lot, but I'll say spasibo for your service here to the court.

[00:02:18] Speaker 04:
And that's what I was asking, I was saying, does he speak Russian?

[00:02:21] Speaker 04:
So then before I try and blutter something out in Russian, I figured I should make sure you speak it.

[00:02:26] Speaker 04:
Not that you understand what I said anyway, but okay.

[00:02:29] Speaker 03:
Let's have you sworn in.

[00:02:47] Speaker 04:
All right, our first case for today is in right FSA number two zero one eight dash two zero six nine.

[00:02:55] Speaker 04:
Mr. Breiner, please proceed.

[00:03:01] Speaker 00:
Good morning and may it please the court.

[00:03:03] Speaker 00:
My name is Bill Breiner.

[00:03:04] Speaker 00:
I'm with the law firm of Kilpatrick Townsend in Stockton in Winston Salem, North Carolina.

[00:03:08] Speaker 00:
I'm here representing the appellant FCA US LLC.

[00:03:13] Speaker 00:
This is an appeal that arises from the affirmance by the trademark trial and appeal board of a trademark examining attorney's refusal of FCA's application to register the mark Moab in connection with passenger automobiles structural parts trim and badges based on a prior registered mark owned by Moab Industries LLC for the mark Moab Industries and

[00:03:38] Speaker 00:
for automotive conversion services, specifically installing specialty automotive equipment.

[00:03:46] Speaker 00:
That affirmance by the board and the refusal by the trademark examining attorney came following district court litigation to trial and to a final judgment in the United States District Court for the District of Arizona between FCA and Moab Industries LLC regarding the marks at issue here.

[00:04:06] Speaker 00:
If this court

[00:04:08] Speaker 00:
affirms the trademark trial and appeal board's ruling, we will have a circumstance in which two Article III courts will have reached exactly opposite conclusions about whether a likelihood of confusion arises.

[00:04:21] Speaker 04:
On different facts and after different hearings, correct?

[00:04:27] Speaker 03:
The trademark board's not an Article III court, right?

[00:04:30] Speaker 03:
Correct.

[00:04:31] Speaker 00:
It is not.

[00:04:32] Speaker 04:
That was an easier question than mine, so you'll get back to mine after you're finished with this.

[00:04:36] Speaker 00:
Sure, certainly.

[00:04:38] Speaker 00:
But this court is.

[00:04:40] Speaker 00:
If this court were to affirm the board, we would have that circumstance.

[00:04:44] Speaker 01:
I'm glad we agree that the PTAB and the panels are not Article III courts.

[00:04:53] Speaker 00:
Yes.

[00:04:54] Speaker 00:
Judge Moore, to your question, the cases are far more similar than they are different.

[00:05:02] Speaker 04:
But can't two different triers of fact

[00:05:05] Speaker 04:
Hearing witnesses, maybe you're more compelling on one day than another.

[00:05:10] Speaker 04:
Can't two different triers of fact reach different conclusions?

[00:05:15] Speaker 04:
When even hearing the same witness, but certainly when they're hearing different testimony in different settings, can't they reach different conclusions?

[00:05:24] Speaker 00:
Different triers of fact can.

[00:05:26] Speaker 00:
To be clear, this is an ex parte appeal.

[00:05:29] Speaker 00:
Where there were not witnesses there was evidence adduced to the board by the trademark examining attorney There was a far greater volume of evidence adduced to the district court and the district court recognized that

[00:05:42] Speaker 00:
It said and was aware that an office action had issued on the application and that the application by FCA had been suspended, but was clear that that was not going to be given great weight in his analysis because of the greater volume of evidence that the district court would hear.

[00:06:02] Speaker 03:
You're saying that the marks are the same.

[00:06:04] Speaker 03:
Is that really the case?

[00:06:06] Speaker 03:
My understanding in the district court litigation

[00:06:10] Speaker 03:
The asserted mark was the word Moab in conjunction with Jeep or Wrangler.

[00:06:19] Speaker 03:
And here, your applied form mark is just Moab in isolation.

[00:06:25] Speaker 00:
The applied form mark here is Moab in isolation.

[00:06:28] Speaker 00:
In the district court, the district court analyzed marketplace usage of the mark by both parties, which is entirely appropriate.

[00:06:37] Speaker 00:
Even the examining attorney adduced some evidence of the ways in which the marks were used in the marketplace.

[00:06:43] Speaker 03:
My understanding is the trademark board saw that there wasn't an identity of issues between what was in front of the agency and what was in front of the District of Arizona because the marks were different.

[00:06:56] Speaker 03:
The mark here in your application is just Moab.

[00:07:00] Speaker 03:
The mark there debated in Arizona was

[00:07:03] Speaker 03:
Moab in conjunction with the word Jeep or Wrangler.

[00:07:07] Speaker 03:
And so for that reason, we couldn't necessarily conclude that the marks were identical.

[00:07:14] Speaker 03:
Is that an incorrect understanding of what was going on in the district court?

[00:07:21] Speaker 00:
Certainly Jeep and Wrangler formed part of the usages that the district court assessed.

[00:07:27] Speaker 00:
But the district court's likelihood of confusion analysis focused on the

[00:07:32] Speaker 00:
The two words Moab and Moab Industries, that was the nature of the claims that gave rise to the infringement assessment, determined, for instance, that the Moab mark was not particularly commercially strong in that instance.

[00:07:50] Speaker 00:
And although there were other usages and a marketplace context for the district court to evaluate, its assessment was about infringement or not arising out of FCA's use of the word Moab.

[00:08:03] Speaker 00:
At the board level, that is a similar focus.

[00:08:06] Speaker 03:
That didn't come out clear for me.

[00:08:08] Speaker 03:
Are you saying that the district court did not consider the word Jeep or Wrangler in conjunction with the word Moab when it was trying to figure out whether there was a likelihood of confusion between Moab Industries and your usage of the term Moab?

[00:08:24] Speaker 00:
Evidence of Jeep and Wrangler being present in the way FCA was using the word Moab was certainly before the district court.

[00:08:32] Speaker 00:
Right.

[00:08:33] Speaker 03:
And so the district court considered those additional words in trying to assess whether or not there was a likelihood of confusion.

[00:08:40] Speaker 03:
Am I wrong about that?

[00:08:42] Speaker 00:
No, you're not wrong about that.

[00:08:45] Speaker 00:
It did consider those things.

[00:08:46] Speaker 00:
I don't think that was dispositive of its assessment, but it did consider that broader marketplace context.

[00:08:52] Speaker 00:
And Dupont is clear as well that the assessment, even at the registrability level, bears at least in part on how the mark is used in reference to when used in connection with the goods or services involved, and counsels against a mental exercise, but instead an assessment of the marketplace circumstances in which the party's respective marks may appear in the marketplace.

[00:09:21] Speaker 00:
So the district court's analysis is not terribly far afield from the kind of assessment that DuPont asked the board to make.

[00:09:29] Speaker 00:
And I think part of the error, in my view, in the board's assessment here is its unwillingness to recognize the similarities, and the great degree of similarity in our view, between what the district court was evaluating and what the board is

[00:09:47] Speaker 00:
to evaluate inter-registerability.

[00:09:48] Speaker 01:
That may be true if the TTAB had ignored entirely the district court proceeding, but it didn't ignore it.

[00:09:54] Speaker 01:
It considered it and determined that it was a different proceeding altogether.

[00:09:59] Speaker 00:
It did consider it.

[00:10:01] Speaker 00:
It did come to an opposite conclusion from the district court.

[00:10:04] Speaker 01:
Isn't that conclusion, don't we review that conclusion by reviewing whether it's supported by substantial evidence?

[00:10:13] Speaker 00:
Yes, on the facts, you may do that.

[00:10:16] Speaker 00:
Of course, the likelihood of confusion standard in this circuit is a question of law, and you can review that matter of law at de novo.

[00:10:23] Speaker 00:
But the underlying facts would need to be supported by substantial evidence at the board level.

[00:10:30] Speaker 04:
So why don't you move away from the idea that the TTAB is somehow constrained by the district court, because it's not.

[00:10:36] Speaker 04:
And as Dodrina said, it properly considered it, but it came to a different conclusion.

[00:10:42] Speaker 04:
tell us whether you think that conclusion is flawed either as a matter of law or if some of the facts are not supported by substantial evidence, why don't you get to the merits of why you think we should reverse this case?

[00:10:54] Speaker 00:
Sure.

[00:10:55] Speaker 00:
So for instance, we view the board's ruling on certain of the DuPont factors as not having been fully considered.

[00:11:12] Speaker 00:
the sophistication of customers.

[00:11:14] Speaker 00:
The district court engaged in a fairly extensive analysis of that.

[00:11:20] Speaker 00:
The board said, we just need to extrapolate to how sophisticated the purchasers of the most inexpensive subcompact car would be, without reducing evidence of what level of care someone buying a subcompact car, for example, would evaluate.

[00:11:39] Speaker 00:
The district court

[00:11:41] Speaker 00:
viewed the trade channels of the parties' respective marks as being quite different.

[00:11:46] Speaker 00:
Without evidence, the board said that the owner of the cited registration is itself a trade channel for the kind of structural parts that are identified in FCA's application.

[00:12:00] Speaker 00:
There was no evidence underlying that, and the district court fleshed out the degree to which the trade channels differ.

[00:12:07] Speaker 00:
There was a finding.

[00:12:09] Speaker 03:
We can see that the marks Moab

[00:12:11] Speaker 03:
And MOAB industries are pretty similar?

[00:12:17] Speaker 03:
Longly similar.

[00:12:17] Speaker 00:
There is a similarity there.

[00:12:19] Speaker 00:
There's no question.

[00:12:20] Speaker 00:
And the district court recognized that.

[00:12:23] Speaker 03:
And what about the relatedness of the goods for MOAB and MOAB industries?

[00:12:30] Speaker 03:
Certainly.

[00:12:30] Speaker 03:
Pretty similar, right?

[00:12:32] Speaker 00:
MOAB sells or FCA sells goods or has applied to register for goods under the MOAB mark, passenger vehicles.

[00:12:39] Speaker 00:
Moab Industries, cell services, automotive conversion services.

[00:12:45] Speaker 00:
There may be some related this and that.

[00:12:47] Speaker 00:
And the district court recognized that as well.

[00:12:49] Speaker 03:
Can we talk about what the TTAB said instead of what the district court said?

[00:12:54] Speaker 03:
We're here reviewing the Trademark Board, as I understand it.

[00:12:58] Speaker 00:
That's right.

[00:12:59] Speaker 00:
And the board found that.

[00:13:02] Speaker 00:
There is some degree of relatedness to those goods and services in that context.

[00:13:07] Speaker 00:
Again, I think it relied in fair part without evidence on the notion that the owner of the cited registration is itself a trade channel for structural parts for automobiles.

[00:13:23] Speaker 00:
I don't think there's evidence to support that particular aspect of the relatedness.

[00:13:32] Speaker 00:
These similarities in the marks and the similarities in goods shouldn't be dispositive when there are other factors and other evidence to consider, which the board did do some of that.

[00:13:46] Speaker 00:
We think there are some flaws to that assessment.

[00:13:48] Speaker 00:
The district court certainly did that in coming to its different conclusion about whether there was a likelihood of confusion arising from the various marks.

[00:14:02] Speaker 00:
And we certainly think that, at minimum, the 13th DuPont factor, the catch-all, permits the board to assess and evaluate the district court's opinion.

[00:14:18] Speaker 00:
And we think it simply did not give sufficient weight to that conclusion after a full evidentiary hearing between these parties about

[00:14:28] Speaker 00:
The marks in question, the goods in question, the trade channels in question, the sophisticated nature of the purchasers in question, whether there was any likelihood or actual confusion, all of the kinds of factors that DuPont lays out that the district court assessed in its infringement assessment at trial.

[00:14:48] Speaker 00:
And we think that merits a reversal.

[00:14:51] Speaker 00:
And we'll be happy to take further questions in my rebuttal time.

[00:14:56] Speaker 04:
Okay.

[00:14:56] Speaker 04:
Thank you very much, Mr. Breiner.

[00:14:57] Speaker 04:
We'll save the remaining time for rebuttal.

[00:14:59] Speaker 04:
Ms.

[00:15:00] Speaker 04:
Heber, please proceed.

[00:15:05] Speaker 02:
Good morning and may it please the court.

[00:15:08] Speaker 02:
The board did exactly what it was supposed to do here.

[00:15:11] Speaker 02:
It looked at the application and the cited registration.

[00:15:14] Speaker 02:
It considered the marks and the scope of the usages disclosed in them.

[00:15:19] Speaker 02:
It pointed to substantial evidence in the record for all of its findings on the relevant DuPont factors.

[00:15:24] Speaker 02:
It weighed those factors and correctly concluded that confusion was likely.

[00:15:28] Speaker 02:
As part of that analysis, it addressed the district court's decision.

[00:15:32] Speaker 02:
It found that the district court had decided materially different facts, a different likelihood of confusion question than it had to decide because of the difference in FCA's mark.

[00:15:43] Speaker 02:
and the scope of the usages and the trade channels and the customers that the TTAB had to look at.

[00:15:47] Speaker 01:
So is it a position that had the district court considered the same facts or identical facts, then perhaps the district court decision would be controlling?

[00:15:57] Speaker 02:
No.

[00:15:58] Speaker 02:
I think it would be certainly more relevant in that the

[00:16:05] Speaker 02:
the board would have to look at the district court.

[00:16:08] Speaker 02:
And if we're talking the exact same facts, evidence, the exact same mark, it would have to explain why it wouldn't be finding the same way.

[00:16:16] Speaker 02:
I think in that instance, it would be more of a comedy kind of thing.

[00:16:20] Speaker 03:
You don't think B&B hardware would require preclusion to apply?

[00:16:25] Speaker 02:
B&B hardware doesn't require preclusion to apply unless the usages are materially the same.

[00:16:31] Speaker 02:
And Proclusion again if we're talking issue Proclusion would also have to require that the PTO was a party And so I think what's more appropriate here is what this court said in power integrations Which was a patent case in a re-examination context where there was a claim construction issue about the term coupled and in that case the party to the re-exam had argued to the district court one meaning and they argued to the board that

[00:16:58] Speaker 02:
look, the district court's claim construction, this is what you should follow board.

[00:17:02] Speaker 02:
The board, in that case, didn't address it at all.

[00:17:05] Speaker 02:
And this court remanded for the board to consider it.

[00:17:08] Speaker 02:
And so I think it's more that situation that if generally they're in power integrations, this court held that generally the board's not bound by prior district court determinations.

[00:17:18] Speaker 02:
But in circumstances where the applicant has argued the court's finding, the board hasn't.

[00:17:23] Speaker 03:
The different claim construction rubric, though,

[00:17:26] Speaker 03:
the agency uses compared to district courts.

[00:17:31] Speaker 03:
So it's not exactly identical.

[00:17:33] Speaker 02:
And here, it's not exactly identical either, right?

[00:17:37] Speaker 02:
Because FCA's mark in the application is Moab.

[00:17:40] Speaker 03:
The hypothetical is, what if the facts are identical?

[00:17:44] Speaker 02:
If it is the exact same mark and usages, I would suspect that the board would find the same way.

[00:17:50] Speaker 02:
But it's not under a theory that it's bound to.

[00:17:53] Speaker 02:
I think it's because it would be the evidence before the board.

[00:17:56] Speaker 02:
And the board is certainly free to say, yeah, I agree with it.

[00:18:01] Speaker 03:
Your brief didn't respond to the blue brief's citations to Mother's Restaurant.

[00:18:06] Speaker 03:
Could you help us out understand why Mother's Restaurant doesn't say something to the contrary?

[00:18:14] Speaker 02:
Mother's Restaurant doesn't say something to the contrary.

[00:18:17] Speaker 02:
And I think our brief addressed what Mother's Restaurant says.

[00:18:21] Speaker 02:
Without citing it?

[00:18:22] Speaker 02:
But it did not exactly cite that case.

[00:18:25] Speaker 02:
I understand your honor's point.

[00:18:27] Speaker 02:
Mothers Restaurant involved a situation where the trademark licensee of the owner.

[00:18:34] Speaker 02:
So the owner wasn't a party to, I believe it was a state court proceeding, but the licensee was.

[00:18:39] Speaker 02:
And there, the mark owner's interests were deemed to have been virtually represented by the licensee in that prior case.

[00:18:48] Speaker 02:
That's not what we have here.

[00:18:50] Speaker 02:
There's no world in which the PTO's interests are virtually represented by a prior litigant and this court held as much in trans-Texas holdings that the PTO is not the same as a private litigant.

[00:19:04] Speaker 02:
And so that would be why Mother's Restaurant doesn't apply.

[00:19:08] Speaker 02:
PTO is acting in the public interest in assessing registrability under its statutory mandate to determine if marks are eligible for registration.

[00:19:16] Speaker 02:
And in light of the presumptions that an issued registration has to be afforded under Section 7B.

[00:19:26] Speaker 02:
The court has no further questions.

[00:19:28] Speaker 02:
I would simply close with saying that there's substantial evidence in the record to support each of the board's findings.

[00:19:33] Speaker 02:
FCA has not pointed to error in any of them.

[00:19:36] Speaker 02:
On the trade channels question the board and in our brief we point out that the board in fact cited two record evidence that showed that MI itself and conversion shops in general are a trade channel for structural parts of this nature.

[00:19:52] Speaker 02:
That finding is correct.

[00:19:54] Speaker 02:
So are the other findings and we would ask this court to affirm.

[00:19:58] Speaker 04:
Thank you, Ms.

[00:19:58] Speaker 04:
Hubert.

[00:20:00] Speaker 04:
Reiner, you have your rebuttal time.

[00:20:06] Speaker 00:
Certainly.

[00:20:07] Speaker 00:
And I want to get to Judge Chen, your point about Mother's Restaurant, because the office and registrants, registrants in trademark infringement litigation, both seek to serve the public interest.

[00:20:20] Speaker 00:
Registrants often rely on trademark litigation plaintiffs often cite that the public interest is also involved and is a party.

[00:20:28] Speaker 00:
I don't see where there is a greater interest from the office than there is from Moab Industries

[00:20:35] Speaker 00:
in vindicating Moab Industries' rights.

[00:20:40] Speaker 00:
And often, and this court's cases and board cases recite this frequently, that if there is doubt, the doubt goes, in a likelihood of confusion instance, the doubt is resolved in favor of the senior registrant.

[00:20:54] Speaker 00:
Those interests are highly aligned with one another.

[00:20:57] Speaker 00:
And the office, until today, made virtually no effort in its briefing to distinguish those interests.

[00:21:05] Speaker 00:
mother's restaurant supports the notion.

[00:21:07] Speaker 03:
What about trans Texas holdings?

[00:21:09] Speaker 03:
Trans Texas holdings makes it pretty clear that the agency, if it wasn't a party to that other district court litigation that did a claim construction of agency by having not been a party, is it bound by that claim construction?

[00:21:25] Speaker 00:
Yes, that is its holding.

[00:21:28] Speaker 00:
There is no

[00:21:30] Speaker 00:
At least, as I understand the office's position, there isn't a mechanism by which the trademark office can then be made a party in order to be bound by litigation.

[00:21:41] Speaker 00:
So the position, I believe, from the office is there is no set of circumstances under which the office is bound by issue preclusion principles.

[00:21:52] Speaker 00:
seems counterintuitive and to me in many respects and and doesn't seem to be bolstered by the notions that mother's restaurant subject further questions from the court we appreciate the court's time this morning we thank both counsel for their argument the case is taken under submission