[00:00:00] Speaker 01:
Good morning.

[00:00:02] Speaker 01:
First argued case this morning is number 18-22-36 in Ray Inn at St.

[00:00:07] Speaker 01:
John's.

[00:00:09] Speaker 01:
Mr. Ragdolley.

[00:00:14] Speaker 02:
Good morning.

[00:00:15] Speaker 02:
May it please the court.

[00:00:17] Speaker 02:
There are two main issues in this case.

[00:00:19] Speaker 02:
The first is the board's failure to apply the 13th Dupont Factor or to even correctly apply its own strategic partners test.

[00:00:28] Speaker 02:
The second is its overemphasis on the generic and literal elements of the marks without giving due weight to the visual differences in the two marks.

[00:00:38] Speaker 02:
The primary issue, and I believe the key to this case, should be the failure to apply the 13th Dupont factor or to correctly apply the strategic partners test.

[00:00:48] Speaker 03:
Can I ask you, we're not bound by strategic partners, right?

[00:00:52] Speaker 02:
That's true, Your Honor.

[00:00:53] Speaker 03:
So all the, in terms of,

[00:00:57] Speaker 03:
But we could either decide strategic partners is right.

[00:00:59] Speaker 03:
And then we could say, if the board failed to follow it, that is a reversible error.

[00:01:05] Speaker 03:
Or if we don't think it's necessarily right, there's just a general APA obligation to address something that the relevant agency here in the board previously did and say, here's why we are either repudiating it or distinguishing it.

[00:01:22] Speaker 03:
And it certainly did the latter, right?

[00:01:24] Speaker 02:
I think that's right.

[00:01:25] Speaker 02:
And I've searched for federal circuit doctrine on the 13th factor that might apply here.

[00:01:31] Speaker 02:
And there really isn't a whole lot.

[00:01:32] Speaker 02:
So we are left with, in terms of existing law on this subject, what the board has decided as strategic partners in the case.

[00:01:39] Speaker 02:
But you're certainly right that if the court wishes to write more on this subject, it could.

[00:01:45] Speaker 02:
Although I think all you really have to do here is look

[00:01:48] Speaker 02:
the fact that they said they would apply their own tests to strategic partners.

[00:01:51] Speaker 02:
And then they failed to do it correctly.

[00:01:53] Speaker 02:
I mean, they didn't apply their own test rates because they compared the wrong models.

[00:01:57] Speaker 04:
Please let me understand.

[00:01:58] Speaker 04:
Has this court ever commented on the aversion of strategic partners, the origin of it, which is something called Morehouse?

[00:02:10] Speaker 02:
So there is a case law from this court about Morehouse.

[00:02:14] Speaker 02:
Although Morehouse only applies in inter partes proceedings.

[00:02:17] Speaker 02:
So it doesn't technically apply here.

[00:02:18] Speaker 02:
Although it is related in that I do think if this had been a proceeding between St.

[00:02:24] Speaker 02:
John's and OTG, and hypothetically if OTG had filed an opposition or cancellation, Morehouse applies in either.

[00:02:32] Speaker 04:
Wasn't there a Federal Circuit case called OM Bread or something like that?

[00:02:36] Speaker 02:
Yes.

[00:02:36] Speaker 02:
Yes, there is.

[00:02:36] Speaker 04:
That talked about Morehouse?

[00:02:38] Speaker 02:
Yes, there is.

[00:02:39] Speaker 02:
And I have a citation for that.

[00:02:41] Speaker 04:
Courtney, that'll sound a little bit... Well, I guess from what I remember reading in OM Bread, the idea is what we're trying to figure out is whether the opposer in the trademark composition, and I guess here it would be the prior registrant for five stake,

[00:03:02] Speaker 04:
whether they would be any further injured by the registration of this new mark compared to the earlier mark that you already have a registration on.

[00:03:14] Speaker 04:
And so then the question is, OK, the inquiry has always been, OK, is there any colorable difference between what you had before, I guess, for five restaurants, and now you have something called five steakhouse that you want a registration on.

[00:03:29] Speaker 04:
But it seemed like the question was, well,

[00:03:32] Speaker 04:
Would there be any delta of injury to the other registration?

[00:03:37] Speaker 04:
And here, that's five-stake.

[00:03:39] Speaker 02:
So I think you're close, Your Honor, although I think I would put it this way.

[00:03:43] Speaker 02:
When I think about the Morehouse defense and how it might apply in this case, it would actually be if OTG, who owns the five-stake registration, the one that was cited against our updated application for five-stakehouse, if they had opposed our application

[00:04:02] Speaker 02:
St.

[00:04:02] Speaker 02:
John's would have

[00:04:04] Speaker 02:
very strong more house defense and I think would win on it because OTG could not claim any further injury because we already have five restaurant which is virtually identical to five stakeouts so St.

[00:04:14] Speaker 02:
John's would prevail because OTG would not be able to say they have any colorable injury to claim because we already have a registration for five stakeouts.

[00:04:23] Speaker 04:
Well that's the that's the inquiry that we have now and this is the and you know the board basically addressed that very inquiry here and and disagreed and found that

[00:04:34] Speaker 04:
No, what you're trying to do with this new application for a trademark is different enough from your older registration that essentially it would cause a further injury to five steak.

[00:04:52] Speaker 02:
That's not quite what they said.

[00:04:53] Speaker 04:
It's not quite what they said, but that's basically the thrust of the inquiry in the sense that they said, okay, you want to delete restaurant, you want to say steakhouse,

[00:05:04] Speaker 04:
Five Steakhouse.

[00:05:06] Speaker 04:
And ooh, we see we have this other registration on our register called Five Steak.

[00:05:12] Speaker 04:
And so this is, you've really migrated into a zone that's closer to Five Steak by moving away from Five Steakhouse, Five Restaurant and moving to, trying to move to Five

[00:05:27] Speaker 02:
Steakhouse so here's where they made their legal error and it came right at the moment when you said ooh That's when they made their legal error because the comparison between five restaurant and five steakhouse should have happened in a vacuum They said five steakhouse moves closer to the OTG mark That's not the question.

[00:05:42] Speaker 02:
The question is our five restaurant and five steakhouse Substantially similar.

[00:05:47] Speaker 02:
Do they create the same commercial impression?

[00:05:49] Speaker 02:
And the reason that's the test is because we have rights in our existing registration.

[00:05:53] Speaker 02:
Under, you know, 1052D, the board is not supposed to allow anything to register that is confusingly similar to what we already have.

[00:06:01] Speaker 02:
I think this test is designed to protect those rights in existing registrations, particularly in contestable registrations, like the five restaurant mark is here, as is the OTG mark.

[00:06:12] Speaker 02:
And that is baked into the strategic partners test.

[00:06:16] Speaker 02:
It's one of the elements in the TTAB cases talked about.

[00:06:19] Speaker 03:
When five steak was registered, do we know whether the examiner considered five restaurant

[00:06:30] Speaker 02:
It was never cited, never came up.

[00:06:34] Speaker 03:
It just never came up.

[00:06:35] Speaker 03:
The word cited, I guess, was in patent land, you cite a lot of things that you don't find to be a problem, but you cite them anyway on the face of the patent.

[00:06:46] Speaker 03:
So when you say it wasn't cited, I couldn't tell whether that meant it wasn't viewed as a problem or was not even recognized to exist.

[00:06:58] Speaker 02:
So the record that we have doesn't show any indication that the examiner looked at the five restaurant mark.

[00:07:10] Speaker 02:
and didn't consider it.

[00:07:12] Speaker 04:
And then when the five-stake application was published for opposition, did you seek to oppose the five-stake mark?

[00:07:22] Speaker 04:
They did not.

[00:07:23] Speaker 04:
Our client was unaware of it.

[00:07:26] Speaker 02:
Right.

[00:07:26] Speaker 04:
So you didn't seek to oppose it, nor did you seek to cancel it when you had the time to cancel it.

[00:07:32] Speaker 02:
Is that right?

[00:07:34] Speaker 02:
That's true.

[00:07:34] Speaker 02:
And the reason is simply because they didn't know about it until it was already incontestable.

[00:07:39] Speaker 02:
Crux of the problem here, though, are the inconsistent results from the trademark office, where in 2009, apparently, there was no likelihood of confusion between Five Restaurant and Five Steakhouse.

[00:07:52] Speaker 02:
And then now in 2016, all of a sudden, there is a likelihood of confusion between Five Steakhouse and Five Steak.

[00:07:58] Speaker 04:
That does rest on the assumption that the trademark examining attorney was aware of Five Restaurant when it was examining and evaluating Five Steak.

[00:08:09] Speaker 02:
Although I'm not really sure that the inquiry depends upon whether the examiner actually looked at it or not.

[00:08:19] Speaker 02:
I mean, the fact is it proceeded toward registration.

[00:08:21] Speaker 02:
And if it was likely to cause confusion with Five Restaurant, it shouldn't have, but it did.

[00:08:26] Speaker 04:
Well, I think what you're arguing is that the agency is being arbitrary and capricious by allowing the five-stake mark and now refusing to allow your

[00:08:39] Speaker 04:
five steakhouse mark.

[00:08:41] Speaker 04:
But that's why I'm saying that requires the agency to consciously understand and believe that five steak when it had to decide whether to register it is not confusingly similar to five restaurant.

[00:08:56] Speaker 04:
And if they just never found five restaurant and were unaware of it, then you can't necessarily say that the agency is acting

[00:09:06] Speaker 04:
arbitrarily and capriciously in its decision-making process of judging the relative confusion among all these different marks that have the word five in it.

[00:09:17] Speaker 02:
So it's true that I don't know what was in the head of the examiner in 2009, but I do know what

[00:09:22] Speaker 02:
did in 2016 when it looked at the facts here and it looked at the fact that the 2009 registration went through regardless of whether the examiner saw it or not and Didn't give that any weight when it issued its decision in this case Which it should have done I mean if you look at the strategic partners test that it said it would apply This case checks all the boxes, and it should have proceeded toward registration based on that 13th factor that decision I do know you know we have a written opinion on it.

[00:09:47] Speaker 02:
I know everything that went into that decision

[00:09:49] Speaker 02:
That, I think, is arbitrary because it disregards what happened in 2009 when the only meaningful difference here, and it is just the swap of one generic term for another, is that restaurant turned into steakhouse.

[00:10:07] Speaker 01:
would be that even if confusion is likely, and I think it's hard to say that it's not, on this history, whatever reason, whether a mistake was made in the examination or for some other reason on this history, you ought to be entitled to take this next step.

[00:10:26] Speaker 02:
I think that's correct, Your Honor, yes.

[00:10:28] Speaker 02:
Because, again, they decided in 2009, or the effect of the decision anyway.

[00:10:33] Speaker 04:
So if the trademark office was wrong one time around, then they're stuck.

[00:10:37] Speaker 04:
And now they need to be doubly wrong.

[00:10:41] Speaker 02:
No, I wouldn't put it that way, Your Honor.

[00:10:43] Speaker 02:
The key, I think, to this particular issue is our existing rights in our registered mark, which is incontestable, which protect our mark from

[00:10:54] Speaker 02:
Registration of anything confusingly similar to it and I deciding no likelihood of confusion in 2009 and then all of a sudden Deciding there's a like there is a likelihood of confusion in 2016 when we just swapped a generic for another generic and added the fork and knife which makes them are less similar certainly not more similar if there were error that and the applicant relied on the error and proceeded and

[00:11:21] Speaker 01:
One doesn't have to spend all one's time reading trademarks published for opposition, and so it was missed.

[00:11:29] Speaker 01:
But more likely than not, it certainly looks like error on the part of the office.

[00:11:36] Speaker 01:
And it does seem as if the public who is entitled to rely on it, that's a dilemma.

[00:11:46] Speaker 01:
But then, of course, the other side is how about the rest of the public who

[00:11:50] Speaker 01:
more likely than not, is not going to be able to tell these establishments apart.

[00:11:57] Speaker 02:
So I do think the two marks are not confusingly similar.

[00:12:01] Speaker 02:
So I don't think there's going to be an issue with the public not being able to tell the two marks apart.

[00:12:06] Speaker 02:
And the trademark office, again, allowed in 2009 five steak to go through.

[00:12:11] Speaker 02:
There was no likelihood of confusion then.

[00:12:13] Speaker 02:
So switching restaurant to steakhouse doesn't create a likelihood of confusion.

[00:12:17] Speaker 02:
It's a generic component that should be given.

[00:12:20] Speaker 02:
very, very little weight in the analysis.

[00:12:24] Speaker 02:
thinking about the way the mark would get used.

[00:12:26] Speaker 02:
And it's also highly visual, which I think is very important.

[00:12:28] Speaker 02:
It was also not given enough weight by the Trademark Office.

[00:12:31] Speaker 02:
I mean, the St.

[00:12:32] Speaker 02:
John's mark is bold and very brush stroked lettering that St.

[00:12:40] Speaker 02:
John's came up with on its own.

[00:12:42] Speaker 02:
The generic is a much smaller font at the bottom, whereas the OTG mark is in what looks like a standard font.

[00:12:50] Speaker 02:
It has color as a component of it.

[00:12:52] Speaker 02:
design or other visual element to it.

[00:12:56] Speaker 02:
And even the director focuses somewhat on the vocalizable elements, in essence, as G doesn't five-stake house sound like five-stake when you say it, which, number one, doesn't give enough weight to the visual, and number two, continues to overemphasize the generics.

[00:13:15] Speaker 02:
I mean, if you just step back for a minute and think about it, I've never... What we have here is

[00:13:21] Speaker 04:
We have two marks.

[00:13:23] Speaker 04:
They both say five in the marks.

[00:13:26] Speaker 04:
And they both replace the letter F with the number five in the word five.

[00:13:33] Speaker 04:
And we have one that has that unusual spelling of five with five stake.

[00:13:38] Speaker 04:
And then we have another one with that same unusual spelling with five steakhouse.

[00:13:45] Speaker 04:
And we've also said that

[00:13:50] Speaker 04:
It's not unusual.

[00:13:51] Speaker 04:
In fact, it's fairly common to have the words of a mark be the predominant parts to analyze in the confusion analysis over any kind of stylization or design.

[00:14:05] Speaker 04:
And here, whatever design component there is, I think we can say it's on the less dominant side compared to

[00:14:15] Speaker 04:
the unusual spelling of the word five associated with steak or steakhouse.

[00:14:21] Speaker 04:
So I don't see why we can say that the trademark board lacked substantial evidence when it found that these two marks are highly similar.

[00:14:32] Speaker 04:
And so what's wrong in this particular instance for the trademark board to find that the

[00:14:41] Speaker 04:
unusual spelling of five associated with some version of the word stake is the dominant portion of the overall marks.

[00:14:53] Speaker 02:
Right.

[00:14:53] Speaker 02:
So first of all, there's no general rule on that in terms of the words being... Right.

[00:14:59] Speaker 02:
And so we're in deference land now when we apply the general rule.

[00:15:03] Speaker 02:
This does have to come back though to

[00:15:06] Speaker 02:
Legal error in the failure to apply the 13th vector because there was no likelihood of confusion in 2009 and they both used five the same five 2009 that they do 2016 one was for five restaurant true and the other one was for five state But if we're talking if we're talking about now gee couldn't they have decided that the problem is one says five and the other one also says five That was true in 2009 equally as it's true in 2016 and there was no likelihood of confusion then I guess I thought there was case law that says

[00:15:35] Speaker 04:
Even if we can find what are arguable mistakes in the register, that doesn't mean that the trademark office is bound by those mistakes on the trademark register to continually make additional mistakes.

[00:15:52] Speaker 04:
Am I wrong about that?

[00:15:54] Speaker 02:
So the Trademark Office is not, as they like to remind folks, often not bound by its prior decisions.

[00:16:03] Speaker 02:
And in their own manual, they say they're to be given no evidentiary value.

[00:16:09] Speaker 02:
But they do.

[00:16:10] Speaker 02:
I mean, we have plenty of decisions from the board cited in our briefing, the Allegiant Staffing case, Random Acts of Kindness case, the American Sale Training Association case.

[00:16:19] Speaker 02:
where they do in fact look at how they decided prior cases and say, you know what, under the 13th factor, it would be inconsistent or inequitable for us to decide differently than we'd have before and prejudicial to this applicant.

[00:16:33] Speaker 02:
And they have decided cases on that basis and should have done that here.

[00:16:40] Speaker 03:
What's the relationship between what you said, I guess it's the MTP and the

[00:16:49] Speaker 03:
And the cases that you are, are they just contradictory or?

[00:16:54] Speaker 02:
So I do think there's some contradiction because the manual says prior decisions are without evidentiary value.

[00:17:01] Speaker 02:
But there are decisions from the board where they do look at how they decided prior applications, particularly prior applications by the same party.

[00:17:13] Speaker 02:
and have said, you know, the Allegiant Staffing Case, for example.

[00:17:16] Speaker 03:
They look at prior written decisions about those or just the mere fact of the registration?

[00:17:24] Speaker 02:
Mere fact of the registration.

[00:17:26] Speaker 02:
So, I mean, if you look at the Allegiant Staffing Case, for example, there the applicant had a registered mark.

[00:17:32] Speaker 02:
A different party filed a whole bunch of other applications that went through and they got registrations.

[00:17:37] Speaker 02:
And then the original applicant, its mark lapsed by accident.

[00:17:41] Speaker 02:
It forgot to renew it.

[00:17:43] Speaker 02:
And then they reapplied and were refused on the basis of all those other ones that went through when their original registration was still valid.

[00:17:52] Speaker 02:
And the board said, well, wait a minute.

[00:17:54] Speaker 02:
If there was no likelihood of confusion when all of those other ones issued when you had your original registration, we can't now say you're blocked by all those people who we let through while you had a registration.

[00:18:04] Speaker 02:
And that would be inequitable.

[00:18:06] Speaker 02:
And so they decided, nope, you actually do get to have your registration.

[00:18:09] Speaker 02:
So again, they're looking at the history of that party's marks and other marks being cited against it.

[00:18:16] Speaker 02:
And even when they go through all the other factors, and even when they have said, gee, there might be a likelihood of confusion here, they can and have and should have done here said, we've got to look at the 13th Dupont factor and say, well, wait a minute.

[00:18:30] Speaker 02:
There's something else going on here.

[00:18:32] Speaker 02:
We need to let this one go through.

[00:18:33] Speaker 01:
Let's hear from the office and we'll save you some rebuttal time.

[00:18:37] Speaker 02:
Thank you.

[00:18:45] Speaker 00:
Ms.

[00:18:45] Speaker 00:
Walker.

[00:18:47] Speaker 00:
Good morning.

[00:18:47] Speaker 00:
May it please the court?

[00:18:49] Speaker 00:
The Patent and Trademark Office has a statutory mandate to refuse registration to a mark that so resembles a previously registered mark as to be likely to cause confusion.

[00:18:59] Speaker 00:
The PTO is required to give full effect

[00:19:02] Speaker 00:
to a previously registered mark, in this case, the five-stake mark.

[00:19:06] Speaker 00:
And that's particularly true here, where that registration is more than five years old, and it's impossible.

[00:19:11] Speaker 01:
I think there's no question that confusion is likely.

[00:19:14] Speaker 01:
But there is a very large question about the prior registration.

[00:19:19] Speaker 01:
What's your response to the things that we've been talking about?

[00:19:24] Speaker 00:
Yes, Your Honor.

[00:19:24] Speaker 00:
I want to be clear, first of all, that under the strategic partners analysis that the board applied,

[00:19:31] Speaker 00:
that the issue of substantial similarity is a question of fact.

[00:19:34] Speaker 00:
There is not a legal error here.

[00:19:36] Speaker 00:
There is not something that the board did that was legally wrong in applying strategic partners.

[00:19:41] Speaker 00:
And so my answer to that question is that the board considered strategic partners and considered whether the previous, whether appellant's previously registered five restaurant mark was substantially similar to its new mark for five

[00:19:58] Speaker 04:
I guess what I'm trying to understand about strategic partners is what is the substantive quality of the similarity that the Trademark Office and Trademark Board demands when it comes to

[00:20:14] Speaker 04:
a trademark applicant trying to piggyback on an earlier registration that it owns.

[00:20:21] Speaker 04:
And so substantial similarity, I mean, to me, that sounds kind of loose.

[00:20:26] Speaker 04:
I mean, if someone were to ask me, do I think Five Restaurant is confusingly similar with Five Steakhouse,

[00:20:36] Speaker 04:
its follow-on applied for Mark, I'd say, yeah, they look pretty much the same to me.

[00:20:42] Speaker 04:
They look confusingly similar to me.

[00:20:43] Speaker 04:
They look like they would come from the same source.

[00:20:47] Speaker 04:
But what I'm guessing here is that the Trademark Board isn't thinking of its coined term, substantial similarity, in that particular way.

[00:20:57] Speaker 04:
I mean, to me, I would expect that if you're going to allow a Trademark applicant to piggyback on some

[00:21:05] Speaker 04:
version that it got registered earlier, it would have to be a standard more like no colorable distinction between the two marks for you to say that you should be able to get the new mark.

[00:21:20] Speaker 04:
And so I'm trying to understand now what does the trademark office think when it comes to the strategic partners inquiry.

[00:21:29] Speaker 00:
Yes, Your Honor.

[00:21:30] Speaker 00:
And strategic partners itself applies a no meaningful difference test.

[00:21:35] Speaker 00:
And that is also the test that's incorporated into the trademark trial and appeal board and the one that was applied here.

[00:21:40] Speaker 00:
So the test is no meaningful difference.

[00:21:43] Speaker 00:
The office hasn't had much opportunity to apply that in other cases.

[00:21:49] Speaker 00:
So we don't have much directly applying strategic partners on that point.

[00:21:55] Speaker 00:
But we do have analogies, both in the tacking context and in the Morehouse defense, which you

[00:22:02] Speaker 00:
referred to earlier.

[00:22:04] Speaker 00:
And in both of those cases, the standard is closer than it would be in, say, for a likelihood of confusion context.

[00:22:11] Speaker 00:
And I think that the OM case that you referenced earlier is a good example where this court said that Olympic kids was a different mark than Olympic, even though the relevant portion of the mark at issue was Olympic.

[00:22:26] Speaker 00:
So it is a tighter standard, a more narrow standard than likelihood of confusion.

[00:22:32] Speaker 00:
And what the board found here is a factual matter is that where you have the second mark moving closer to the cited registration, that is a meaningful difference.

[00:22:43] Speaker 00:
That is something that the board has to consider when it is looking at whether or not the coexistence on the register of the five restaurant mark and the five steak mark is one that would tend to show that there's no likelihood of confusion.

[00:23:01] Speaker 00:
Because that ultimately is the relevant inquiry under strategic partners.

[00:23:05] Speaker 00:
Is there a factual evidence that suggests that there is actually no likelihood of confusion, even though the other factors point to likelihood of confusion?

[00:23:13] Speaker 00:
And it's the coexistence of more than five years that points to that no likelihood of confusion.

[00:23:18] Speaker 00:
And when you have a meaningful difference in the coexistence of the marks, you no longer have the relevant factual information that could suggest that there is no likelihood of confusion.

[00:23:29] Speaker 00:
if the court has no further questions.

[00:23:31] Speaker 03:
Can I just ask, at some fairly high level of generality, is there something that St.

[00:23:42] Speaker 03:
John's can do?

[00:23:43] Speaker 03:
Is there some mechanism to go back and say to the PTO, you've got these two marks.

[00:23:50] Speaker 03:
You registered them both.

[00:23:51] Speaker 03:
Apparently, the second one, without being aware of the first, there's a problem here, notwithstanding incontestability.

[00:23:59] Speaker 03:
This state of affairs should not stand, or are we just stuck with this?

[00:24:06] Speaker 03:
It's not the end of the world, so they can't use this particular modification of their earlier mark.

[00:24:15] Speaker 00:
I mean, one of the things that they could have done here is they could have sought consent to register.

[00:24:19] Speaker 00:
That would have been an additional fact that we don't have here.

[00:24:22] Speaker 00:
Sort of short of that.

[00:24:24] Speaker 03:
I'm sorry to elaborate with that.

[00:24:26] Speaker 00:
Yeah, so a consent to register from, it wouldn't have been an additional fact.

[00:24:29] Speaker 00:
So a consent to registration from the owner of the five stake marks.

[00:24:34] Speaker 00:
is something that says that the owner recognizes that there is no likelihood of confusion here.

[00:24:39] Speaker 00:
So that is an additional fact that the office will take into account when considering likelihood of confusion.

[00:24:44] Speaker 03:
If St.

[00:24:44] Speaker 03:
John's could have gone and asked the owner of Five Stake, will you consent to my doing this, and say the owner says no?

[00:24:56] Speaker 00:
Then we don't have that additional evidence.

[00:24:59] Speaker 00:
But that is evidence that has been accepted by the office in the past.

[00:25:03] Speaker 00:
additional evidence.

[00:25:04] Speaker 03:
You mean evidence, yes, would be accepted?

[00:25:07] Speaker 00:
If they had said, sorry, if the owner of the five-stake mark had consented to registration, and the consent would say something like, we recognize that there is no likelihood of confusion between these two marks, and that would have gone into the record, that would have been additional

[00:25:23] Speaker 00:
evidence that the office would have considered in the likelihood of confusion analysis.

[00:25:27] Speaker 00:
But we don't have a consensus.

[00:25:28] Speaker 01:
That's very interesting because there's a question.

[00:25:32] Speaker 01:
Because the likelihood of confusion standard is designed to protect the public.

[00:25:38] Speaker 01:
not the trademark owner.

[00:25:40] Speaker 01:
Well, of course, also the trademark owner, but it's designed to protect the public.

[00:25:44] Speaker 01:
So, in fact, if they wish to agree, we're just talking about registration, we're not talking about the right to use.

[00:25:54] Speaker 01:
If they agree, can each has nationwide exclusivity of an identical mark of unrelated entities

[00:26:04] Speaker 01:
that this is something that the trademark office has no authority to object to?

[00:26:14] Speaker 00:
It's not that they don't have an authority to object to.

[00:26:16] Speaker 00:
It's additional evidence.

[00:26:18] Speaker 00:
So it's not dispositive, just as evidence in any of these cases is not dispositive.

[00:26:23] Speaker 01:
What do you mean by if there's no evidence?

[00:26:24] Speaker 01:
We were talking about, I was suggesting that these are substantially identical marks in terms of the words.

[00:26:33] Speaker 00:
Yes, Your Honor, and the consent to registration that I was talking about is not something that the office would consider that.

[00:26:39] Speaker 00:
So ultimately, the office would consider that as part of the likelihood of confusion.

[00:26:43] Speaker 03:
But it wouldn't be bound to accept it.

[00:26:45] Speaker 00:
That's right, Your Honor.

[00:26:50] Speaker 00:
Thank you.

[00:26:51] Speaker 00:
Are you sure?

[00:26:51] Speaker 00:
Yes, Your Honor.

[00:26:55] Speaker 01:
I think that's very strange.

[00:26:58] Speaker 01:
And if that's the rule, is that the rule here?

[00:27:04] Speaker 04:
If the applied for mark here was five stake and the cited registration against it was five stake, and then the two parties came to the trademark office and said, oh, don't worry about a trademark office.

[00:27:16] Speaker 04:
We're just going to carve up everything on our own and go ahead and register the applied for five stake mark.

[00:27:25] Speaker 04:
There's no possible way that Trademark Office would go along with that, would it?

[00:27:29] Speaker 00:
I don't believe so, Your Honor.

[00:27:30] Speaker 00:
And typically in those... No.

[00:27:32] Speaker 00:
It wouldn't.

[00:27:33] Speaker 00:
No.

[00:27:33] Speaker 00:
OK.

[00:27:33] Speaker 00:
Well, but I can't... Right.

[00:27:35] Speaker 00:
But typically in those... All right.

[00:27:38] Speaker 00:
Typically in those cases, you have further restrictions, right?

[00:27:40] Speaker 00:
The parties would agree to further restrictions so that you don't have the two identical marks for the identical goods or services.

[00:27:46] Speaker 03:
And they might even have corporate affiliations by then so that each benefits from the other's good marketing and they compete with each other.

[00:27:53] Speaker 01:
That's easier.

[00:27:54] Speaker 01:
That's easier.

[00:27:55] Speaker 01:
Or to me, maybe that's harder.

[00:27:58] Speaker 01:
To me, the real question is the identical, substantially identical, marks nationwide exclusivity, right to exclude, right to enforce.

[00:28:12] Speaker 01:
One of these days, who knows, they might somehow find some conflict.

[00:28:19] Speaker 01:
Well, all right, so is that the position of the office that it may or may not have made a mistake

[00:28:26] Speaker 01:
But now they can veto the reliance that apparently was placed on the mistake?

[00:28:39] Speaker 00:
I don't think that it's about a reliance on the mistake.

[00:28:42] Speaker 00:
It's about a valid, subsisting trademark registration that the office cannot, in an ex parte context, challenge because it is a valid trademark registration.

[00:28:53] Speaker 00:
And to the extent that there was a concern about that registration, as Judge Chen pointed out, the applicant had both the opportunity to oppose and the opportunity for five years to cancel that registration.

[00:29:05] Speaker 00:
So there is a mechanism that the statute provides as a checkup.

[00:29:10] Speaker 03:
There was a mechanism.

[00:29:11] Speaker 00:
There was a mechanism.

[00:29:12] Speaker 03:
As far as you're aware, there currently is no mechanism.

[00:29:16] Speaker 03:
That's correct, Your Honor.

[00:29:21] Speaker 01:
Thank you.

[00:29:23] Speaker 01:
Thank you, Ms.

[00:29:24] Speaker 01:
Walker.

[00:29:26] Speaker 01:
You have two minutes of rebuttal.

[00:29:28] Speaker ?:
Okay.

[00:29:28] Speaker 02:
Thank you, Your Honor.

[00:29:29] Speaker 02:
I do want to stress, so the error here was not in 2009 when the OTG mark went through.

[00:29:35] Speaker 02:
There is no likelihood of confusion between either of the St.

[00:29:39] Speaker 02:
John's marks and the OTG mark.

[00:29:41] Speaker 02:
The error was in 2016 when they should have done, they said they were going to apply the strategic partners test.

[00:29:47] Speaker 02:
And it's not just the case that they applied it.

[00:29:49] Speaker 02:
And we don't like the outcome, and so now we're appealing.

[00:29:51] Speaker 02:
They said they would apply it, but they ran.

[00:29:53] Speaker 02:
They didn't actually apply it.

[00:29:54] Speaker 02:
They ran the wrong test altogether.

[00:29:55] Speaker 02:
They were supposed to do a substantial similarity comparison between the two St.

[00:29:59] Speaker 02:
John's marks.

[00:30:00] Speaker 02:
They didn't do that.

[00:30:01] Speaker 02:
They did a comparison between the applied form.

[00:30:03] Speaker 03:
Sorry, is that different from what strategic partners articulates in terms of no meaningful difference?

[00:30:11] Speaker 02:
Right.

[00:30:11] Speaker 03:
So if you read substantial partners.

[00:30:13] Speaker 03:
The no meaningful difference language is in strategic partners.

[00:30:17] Speaker 03:
And it's logically, I don't know.

[00:30:21] Speaker 03:
sensible on its face to say whether there's a meaningful difference might actually depend on what this intervening one, this intervening mark looked like and whether the new one is closer to the intervening one.

[00:30:34] Speaker 03:
Why would that not legitimately go into assessing the meaningfulness now of the difference between applied for and prior mark, not the reference mark?

[00:30:47] Speaker 02:
So I do think that runs the risk of doing

[00:30:51] Speaker 02:
Exactly what happened here, which is they essentially repeated the first factor analysis just and just said we've already found these two to be similar We say where they just kind of paired that again in the 13th factor analysis and you're done But the whole point of it is is to look at and protect and think about and consider the rights that The party has who applied for the new mark in their existing registration particularly an incontestable registration It's about those rights in a vacuum.

[00:31:16] Speaker 02:
It's not about those rights in

[00:31:17] Speaker 02:
compared to whatever the market that's being cited against it now and I do so Substantially similar it's also fun as treaty partners sometimes they seem uniquely different I do think the court has some leeway here if the court thinks the test ought to be something else to my mind whether the two marks create the same commercial impression makes an awful lot of sense and You said so yourself judge Chen that if you look at the two st.

[00:31:39] Speaker 02:
John's marks and

[00:31:41] Speaker 02:
They look pretty much the same.

[00:31:43] Speaker 02:
I think there's no doubt that they create the same commercial impressions.

[00:31:46] Speaker 02:
Switching from restaurant to steakhouse doesn't change the commercial impression.

[00:31:50] Speaker 02:
You can look at the Detroit Athletic Company case from this court from last year for the point that using a generic term has no impact.

[00:31:58] Speaker 02:
very, very little impact, if any, on what the commercial impression of the mark is.

[00:32:02] Speaker 02:
It should not matter whether it's five-restaurant, or steakhouse, or tavern, or bistro, or eatery.

[00:32:07] Speaker 02:
Thank you.

[00:32:10] Speaker 01:
Thank you both.

[00:32:12] Speaker 01:
This is taken under submission.