[00:00:14] Speaker 02:
Will Mr. Patty, is Mr. Patty here?

[00:00:20] Speaker 02:
Yes, sir.

[00:00:20] Speaker 02:
Please come forward.

[00:00:25] Speaker 02:
Next case is Henry White, 2018-12-42.

[00:00:31] Speaker 02:
You have a co-counsel, he's welcome to come up.

[00:00:39] Speaker 04:
He's an applicant, actually.

[00:00:40] Speaker 02:
I'm sorry?

[00:00:41] Speaker 04:
The applicant.

[00:00:42] Speaker 02:
All right, well, he belongs in the audience rather than on the council table.

[00:00:45] Speaker 02:
Yes.

[00:00:47] Speaker 02:
Mr. Patty, please proceed.

[00:00:49] Speaker 04:
Good morning, Your Honors.

[00:00:52] Speaker 04:
This case before you is a great example of the maxims and trademarks that marks should be viewed in their entirety.

[00:01:03] Speaker 04:
The similar case to that maxim is entering national data court.

[00:01:09] Speaker 03:
Mr. Patty, on page 18 of the blue brief,

[00:01:12] Speaker 03:
You asked us to take judicial notice of the teaching of American history in public schools pursuant to FR-8201.

[00:01:22] Speaker 03:
On what legal basis can we take judicial notice of the teaching of American history?

[00:01:29] Speaker 03:
Is there a particular book or academic reference or something to which you're referring us?

[00:01:37] Speaker 04:
Yes, Your Honor, during the prosecution of this matter, we did submit copies of several sources.

[00:01:47] Speaker 04:
Most of them were online, I think in terms of the format, which was the basis of denying the entry of that evidence into the record.

[00:01:58] Speaker 03:
But in particular... Wait, are they in the record or no?

[00:02:01] Speaker 04:
They're not.

[00:02:03] Speaker 04:
Well, we submitted them in our response.

[00:02:06] Speaker 04:
But they're not part of the evidence for this case.

[00:02:13] Speaker 02:
But look, Mr. Patty, the goods here are shirts.

[00:02:19] Speaker 02:
They're identical.

[00:02:22] Speaker 02:
The maps give the same commercial impression.

[00:02:26] Speaker 02:
They overlay the map of the United States and the map of Africa, and both of them do.

[00:02:34] Speaker 02:
And so what was the

[00:02:36] Speaker 04:
We believe they erred in a few ways, one in terms of their conclusion with regards to lack of confusion.

[00:02:46] Speaker 04:
Your Honor, Judge Lurie, we do concede, we always have, that the goods and services in this particular case, t-shirts versus clothing, namely hats and shirts, that they are legally related per the DuPont test.

[00:03:04] Speaker 04:
We concede that point.

[00:03:05] Speaker 04:
We disagree with the PTO with regards to the first viewpoint factor in terms of similarity of the march themselves.

[00:03:15] Speaker 04:
What's interesting about this case is that generally speaking, when an examiner will... Yes, sir.

[00:03:22] Speaker 03:
Yes, sir.

[00:03:22] Speaker 03:
One of the points you make about that is that the African-American population of the United States would know that distinction.

[00:03:32] Speaker 03:
But your claim wasn't limited to the African-American population.

[00:03:36] Speaker 04:
Yes, Your Honor, we do recognize that.

[00:03:39] Speaker 04:
And part of our argument and our petition to the court is that the standard with regards to the general public, in terms of what the general public would perceive, we believe that due to the shifting demographics in the country and how the country has progressed with regards to

[00:03:59] Speaker 04:
it's being more inclusive, that that standard should be maybe reviewed by the court.

[00:04:05] Speaker 04:
We do believe that, in particular, African Americans in general, they have a long tenure within the country.

[00:04:13] Speaker 04:
And so, you know, over 30 million Americans, if it is true that there are certain perspectives that African Americans may have and their context may be different based upon their experiences,

[00:04:29] Speaker 04:
that their perceptions with regards to Mark will also be different as well.

[00:04:33] Speaker 04:
Well, you can limit the claim, right?

[00:04:35] Speaker 04:
Well, Your Honor, we actually thought about that, Judge, Your Honor.

[00:04:40] Speaker 04:
We've thought about that.

[00:04:43] Speaker 04:
Claims are limited.

[00:04:44] Speaker 04:
I'm sorry.

[00:04:46] Speaker 04:
IDs are amended all the time.

[00:04:49] Speaker 04:
They're amended with regards to gender sometimes, with regards to level of sophistication other times.

[00:04:55] Speaker 04:
But in terms of limiting

[00:04:58] Speaker 04:
the ID, which is what the PTO has suggested that we do, with regards to African-Americans, we think that is impractical.

[00:05:06] Speaker 04:
And we think it's because you can't necessarily control who's going to purchase the goods.

[00:05:13] Speaker 04:
And so you can't control that.

[00:05:14] Speaker 04:
I don't know if an amendment to exclude it by race is something that the PTO should encourage.

[00:05:25] Speaker 04:
Just, Laurie, going back to a comment you made with regards to the similarity of the marks themselves, what's unique about this case is that examiners, they generally, when they examine marks, they will identify what they consider the dominant portions of each mark.

[00:05:44] Speaker 04:
The examiner in this case refused to state on the record what he believed were the dominant portions of the mark.

[00:05:51] Speaker 04:
These marks are very

[00:05:52] Speaker 04:
Simplicit in the sense that they only have two components, the map of Africa and the map of the United States.

[00:05:59] Speaker 03:
We believe, as our contention, that... One's in black and white, which means everything.

[00:06:03] Speaker 03:
And yours is in color, but it could be the same colors.

[00:06:09] Speaker 04:
It could be the same colors, although another point of contention, it is the, what we understand, the PTO's construction of TMEP rule 807.14,

[00:06:20] Speaker 04:
is that basically a special form mark that's in black and white can basically use color without any limitation whatsoever.

[00:06:31] Speaker 04:
The PTO has emphasized that without any limitation.

[00:06:36] Speaker 04:
We disagree at that point.

[00:06:38] Speaker 04:
We do believe that color can be used, but using color to create new matter within a mark itself will run afoul of the registration system.

[00:06:47] Speaker 04:
Part of the registration system, trademark registration system, is to give notice to the public in terms of what the mark is, right?

[00:06:55] Speaker 04:
If you go to the USPTO site or their basic facts, it states that explicitly.

[00:07:01] Speaker 04:
If, in fact, you can construe TMEP 807.14 such that you can create a new subject matter of the mark, then essentially we don't have a registration system at all because it would never put anyone on notice.

[00:07:12] Speaker 04:
In our example, we use color.

[00:07:14] Speaker 04:
The applicants use color.

[00:07:16] Speaker 04:
to embed the map of the United States within the continent of Africa.

[00:07:21] Speaker 04:
The side of the registered mark does not have that at all.

[00:07:25] Speaker 04:
And so if, based upon the PTO's construction, they could have the map of Canada, Mexico, it could go on.

[00:07:37] Speaker 04:
Another point with regards to what we believe is different in this case, Judge Laurie, you mentioned that

[00:07:44] Speaker 04:
They're kind of reverse combinations, or the legal term that we typically use in trademarks is what we consider a transposition.

[00:07:52] Speaker 04:
A transposition is a buzzword.

[00:07:54] Speaker 04:
Again, this is a term that the examiner really refused to use, because when we hear the term transpositions, the law is very clear and in great best that, you know, simply because two marks are reverse combinations of each other, or transpositions,

[00:08:11] Speaker 04:
does not mean necessarily that likelihood of confusion exists.

[00:08:17] Speaker 04:
And in this case, in particular, the cited registered mark, you have the map of Africa in a somewhat dominant fashion over the United States.

[00:08:25] Speaker 04:
That's why we believe in the cited mark.

[00:08:28] Speaker 04:
The dominant portion of the mark is Africa.

[00:08:30] Speaker 04:
The question is, to consumers, why is the map of Africa over the United States?

[00:08:36] Speaker 04:
And it appeared to be in an aggressive manner.

[00:08:39] Speaker 04:
In our mark,

[00:08:41] Speaker 04:
we see the United States, what we consider within the bosom of the continent of Africa, which raises the question, what is the United States doing there?

[00:08:52] Speaker 04:
Again, the PTO, they view these marks outside of any historical context.

[00:08:59] Speaker 04:
It is our belief that the PTO views these marks within a vacuum.

[00:09:04] Speaker 04:
They refuse to look at the historical context of the marks themselves.

[00:09:09] Speaker 04:
If you would see our mark, which has the colors red, black, and green, it's very obvious, at least to many, what those colors represent and why the United States, what that represents as well.

[00:09:22] Speaker 04:
In terms of the African diaspora, the displacement of African people, I saw the country, particularly to North and South America.

[00:09:30] Speaker 04:
In addition to this whole notion of repatriation, which was a pretty big movement early in the 20th century.

[00:09:38] Speaker 01:
You recognize, I'm sure, that what you're asking for, we actually can't give you this relief as a panel.

[00:09:47] Speaker 01:
Not only has this court already held many times that the entire consuming public is the source for assessing the meaning behind a mark, the consumer public, which is not limited,

[00:09:58] Speaker 01:
to African Americans or white people or anything else.

[00:10:01] Speaker 01:
But every court in the country, every regional circuit in the country, has similarly adopted that same standard, the entire consuming public, when you haven't limited the class of customers for your goods.

[00:10:14] Speaker 01:
So what you're asking this panel to do is to look at it from the perspective of a particular racial group, which would put us at odds with our own circuit precedent, as well as the circuit precedent of every circuit in the country.

[00:10:27] Speaker 01:
So I hope that you recognize that even if there was merit to what you're saying, this panel can't possibly give you that relief.

[00:10:33] Speaker 01:
Your only possible relief would be an in-bank action.

[00:10:36] Speaker 01:
And then it'd be an uphill battle because you'd be telling us to adopt a standard that is different than the standard every regional circuit in the country employs to similar cases.

[00:10:45] Speaker 04:
Judge Moore, that's an excellent point.

[00:10:47] Speaker 04:
The point with regards to that standard, we don't rest our positions solely on that.

[00:10:52] Speaker 04:
We believe even outside of that, looking at the marks themselves,

[00:10:56] Speaker 04:
You know, we believe it's clear to consumers that there's no likelihood of confusion.

[00:11:02] Speaker 04:
In addition to that, we thought this could be an opportunity to maybe review the standard.

[00:11:07] Speaker 04:
But looking at the marks, again, I spoke with the examiner.

[00:11:11] Speaker 04:
We had an interview.

[00:11:12] Speaker 04:
And based upon what's on the record in terms of the office actions that were submitted, the examiner was fairly dismissive, so to speak.

[00:11:25] Speaker 04:
was very, very brief.

[00:11:27] Speaker 04:
It was, one has the map of Africa in the United States, another one has the map of Africa in the United States, and pretty much there's likelihood of confusion.

[00:11:37] Speaker 04:
Again, looking at the maps, we think, sorry, looking at the marks themselves, we believe that consumers would notice the distinction.

[00:11:55] Speaker 02:
You're in your rebuttal time.

[00:11:56] Speaker 02:
You may continue to use it or you can save it.

[00:12:00] Speaker 04:
I save for a report.

[00:12:03] Speaker 02:
Ms.

[00:12:03] Speaker 02:
Heber.

[00:12:07] Speaker 00:
Good morning, Your Honor.

[00:12:08] Speaker 00:
May it please the Court?

[00:12:11] Speaker 00:
I do want to clarify to begin that there's nothing in the TMEP or the way that the office considers design marks that would allow us to construe a mark like the registered mark

[00:12:23] Speaker 00:
or any design mark that doesn't claim color to use color in a way that creates a new design element that isn't present in the mark.

[00:12:30] Speaker 00:
That would be a different mark.

[00:12:31] Speaker 00:
But there is no restriction and we can imagine many schemes of color being used in this black and white drawing here in the registered mark that would include

[00:12:42] Speaker 00:
red, black, and green, the same colors that are in the applicant's market.

[00:12:46] Speaker 01:
Well, in fact, I mean, this isn't even a question that we can answer, right?

[00:12:49] Speaker 01:
Because didn't our data packaging case from the CCPA already answer this question?

[00:12:53] Speaker 01:
So even if we were to disagree with that idea, we'd have to take it in bank.

[00:12:58] Speaker 01:
This panel wouldn't be able to overrule the data packaging case, correct?

[00:13:02] Speaker 00:
That's correct, Judge Warren.

[00:13:03] Speaker 00:
Yes.

[00:13:04] Speaker 00:
And here, what the basis of the similarity finding

[00:13:08] Speaker 00:
We have to also remember that this is always from the perspective of- I'll tell you, I don't think they're similar.

[00:13:13] Speaker 01:
I look at them, no chance I would think that these two things came from the same source.

[00:13:17] Speaker 01:
No chance.

[00:13:18] Speaker 01:
So what do I do about that?

[00:13:20] Speaker 00:
Is that because you're looking at the registered mark only in a black and white form?

[00:13:24] Speaker 00:
Could you imagine?

[00:13:24] Speaker 01:
Yeah, do you want to give it to me in color form?

[00:13:26] Speaker 01:
Do you have a color version?

[00:13:27] Speaker 00:
It didn't bring one with me, but if we visualize the west coast of the United States, for example, in red, the Africa portion in black, the east coast in green, and... Still not even close.

[00:13:38] Speaker 01:
One of the marks is Africa within the U.S.

[00:13:41] Speaker 01:
The other is the U.S.

[00:13:42] Speaker 01:
within Africa.

[00:13:44] Speaker 01:
If we're going to change the white portions to red and green and not the black portion in the actually already registered design mark, then you're changing the left and the right, not the up and the down.

[00:13:57] Speaker 01:
There are all kinds of flags out there that use the same three colors, right?

[00:14:00] Speaker 01:
Some of them use them vertically, some of them use them horizontally.

[00:14:02] Speaker 01:
I don't get them confused.

[00:14:04] Speaker 01:
Right, James?

[00:14:08] Speaker 00:
Your Honor, here it's about the average recollection, not a side-by-side comparison we're not dissecting.

[00:14:14] Speaker 00:
So if you see on a shirt a map of Africa and the United States, they're center-aligned, they're vertically oriented.

[00:14:21] Speaker 00:
I see this map, and gosh, it's in the colors of the Pan-African flag, assuming that

[00:14:26] Speaker 00:
people understand that those are the colors that it represents, right?

[00:14:29] Speaker 00:
I mean, there's no evidence in this record of the historical context or that those are the colors.

[00:14:34] Speaker 00:
But even if we accept that to be so, the same general impression is conveyed when you see those colors, red, black, and green, with Africa and the United States.

[00:14:43] Speaker 01:
To me, the marks-seeking registration, by virtue of having the U.S.

[00:14:49] Speaker 01:
contained within Africa, it actually

[00:14:52] Speaker 01:
tells me, even if I don't know what the message is that that mark is trying to convey, it's trying to convey a message about Africa and the United States.

[00:15:00] Speaker 01:
The one on the right doesn't necessarily have, by any stretch, conveyed that same message, especially when the one on the left breaks up, you know, the top and the bottom and the colors and stuff.

[00:15:10] Speaker 01:
Where the one on the right, I don't know, it doesn't, to me, I don't have any clue what the one on the right's supposed to convey, and it doesn't jump out to me as indicating

[00:15:19] Speaker 01:
that it's attempting to convey any kind of political message.

[00:15:22] Speaker 01:
Whereas the one on the left actually does.

[00:15:23] Speaker 01:
I look at the one on the left, I think there's a political message in there.

[00:15:27] Speaker 01:
Even if I don't know what it is that they're attempting to convey something about their political views.

[00:15:33] Speaker 01:
Whereas the one on the right is just two countries superimposed on top of each other.

[00:15:37] Speaker 01:
You know, I don't know.

[00:15:38] Speaker 01:
They don't look similar to me.

[00:15:39] Speaker 01:
So I don't know.

[00:15:43] Speaker 00:
We have to assume the same colors.

[00:15:45] Speaker 00:
And in the registered mark, there's nothing that prevents even the map of Africa portion being presented in multiple colors.

[00:15:50] Speaker 01:
In the registered mark, the black part can be presented in different colors?

[00:15:54] Speaker 00:
It can be presented in different colors.

[00:15:57] Speaker 00:
It's not limited to any array.

[00:15:58] Speaker 00:
Really, the only limitation is if you create some new design element from color that's not encompassed here.

[00:16:05] Speaker 00:
But you could have gradient colors in any of the portions.

[00:16:11] Speaker 01:
And we have to construe, you know, under... Along that logic, if that's true, are you suggesting to me that the black portion could be red, black, and green and look identical to the design mark on the left?

[00:16:24] Speaker 00:
It can't look identical because that has a distinct design element of the United States inside of it.

[00:16:31] Speaker 00:
But you don't even need to

[00:16:34] Speaker 00:
go there, I think the scope is broad enough to, and certainly under this Court's precedent, the arrangement of colors that we have to consider.

[00:16:41] Speaker 03:
Would dividing the United States into red, white, and blue be a new design element using vertical lines?

[00:16:56] Speaker 03:
That is, now you have three blocks.

[00:16:58] Speaker 03:
Or would it just be colors?

[00:17:00] Speaker 00:
It could be.

[00:17:00] Speaker 00:
I mean, I think if you color the segments that exist there, those three regions in color, that's not a new design element.

[00:17:07] Speaker 00:
But if you put a distinct pattern in there, maybe now you're having a new design element that isn't actually part of this mark.

[00:17:14] Speaker 00:
Now, the registered mark owner can use it in any way they want, but would the scope of the registration cover that design element?

[00:17:21] Speaker 00:
No.

[00:17:22] Speaker 00:
And I think if they came in to amend, the registered mark owner came in to amend their registration

[00:17:28] Speaker 00:
put a design exactly like the registered mark owner, the PTO, would say no, because there's a map of the United States in it now that wasn't there in your original mark.

[00:17:36] Speaker 00:
But the ways that this registered mark can be displayed, if it's in the same colors of the Pan-African flag, to the average consumer who sees these marks at a distance and spatially in time, they're going to have the same idea of, oh, it's Africa and the United States in this Pan-African flag.

[00:17:55] Speaker 00:
That's the kind of similarity and

[00:17:57] Speaker 00:
a similar commercial impression that we're concerned about here, particularly where we have identical goods, and the consumers and channels in trade are the same, and these are low-cost items.

[00:18:07] Speaker 00:
This is, you know, a classic case of where confusion is likely, and if there's any doubt on the issue of likelihood of confusion, it does not get resolved in favor of an applicant.

[00:18:17] Speaker 00:
It gets resolved in favor of the registrant.

[00:18:20] Speaker 00:
So here, Mr. White has shown no error in the board's analysis.

[00:18:25] Speaker 00:
It's legally correct, and we ask this court to affirm.

[00:18:29] Speaker 00:
If you have no further questions.

[00:18:31] Speaker 02:
Thank you, Ms.

[00:18:32] Speaker 02:
Heber.

[00:18:33] Speaker 02:
Mr. Paddy has some rebuttal time, close to four minutes, if you need it.

[00:18:39] Speaker 04:
Thank you, Your Honor.

[00:18:40] Speaker 04:
Well, I just want to say from the outset, we agree with the PCO.

[00:18:46] Speaker 04:
It's good to hear that their understanding of the rule, TMEP 807.14E1, is not, it has some limitations.

[00:18:54] Speaker 04:
This is the first that we've heard in terms of what the commercial impressions of the marks are.

[00:18:59] Speaker 04:
I think in terms of placement, placement is very, very important.

[00:19:03] Speaker 04:
In the cited registered mark, you have the continent of Africa over the United States.

[00:19:09] Speaker 04:
I think, again, the United States is a sovereign nation.

[00:19:12] Speaker 04:
Having any country or continent overshadowing it

[00:19:16] Speaker 01:
The one on the left tells me Africa is the dominant conveyance and the U.S.

[00:19:21] Speaker 01:
is within Africa.

[00:19:23] Speaker 01:
The one on the right is the U.S.

[00:19:24] Speaker 01:
is the dominant and Africa has been consumed by the U.S.

[00:19:28] Speaker 04:
Exactly.

[00:19:28] Speaker 01:
I don't know, but the problem for you is I don't get to make this decision.

[00:19:31] Speaker 01:
I mean, I find in your favor.

[00:19:33] Speaker 01:
I'll tell you right now.

[00:19:34] Speaker 01:
But the problem is substantial evidence is my standard of review for the similarity of the marks.

[00:19:40] Speaker 01:
And I'm struggling.

[00:19:40] Speaker 01:
I mean, the examiner did this divorced from sort of the pictures, although

[00:19:45] Speaker 01:
all the elements he explained makes it sound pretty persuasive.

[00:19:49] Speaker 01:
Both marks involve superimposing one country on the other.

[00:19:52] Speaker 01:
You know, the registered mark doesn't use color, so the color can't really be the visually distinctive factor because the registered mark could use the same color.

[00:20:00] Speaker 01:
So in the abstract, I read his opinion, and it's hard, or her opinion, I don't know if it's a guy or a girl, but it's harder for me, if I got to decide this de novo, I'd find it in your favor, but I don't get to.

[00:20:11] Speaker 01:
I have to say,

[00:20:12] Speaker 01:
Is there no evidence that supports what the examiner decided?

[00:20:16] Speaker 01:
And that's harder for me because, you know, I certainly don't want to go beyond what my authority is.

[00:20:23] Speaker 01:
And I think to find in your favor would cause me to go beyond what my authority is because I'm supposed to give a lot of deference and weight to what the examiner said.

[00:20:33] Speaker 04:
Your Honor, we definitely respect that sentiment.

[00:20:37] Speaker 04:
What we will say is that if you take a look at what the examiner stated on the record,

[00:20:42] Speaker 04:
It's almost like it's almost a cookie cutter.

[00:20:45] Speaker 01:
I know, it's very cursory.

[00:20:46] Speaker 01:
I saw, I read it, it was very cursory.

[00:20:48] Speaker 04:
And it could be applied to any... What often is?

[00:20:52] Speaker 04:
Well, Your Honor, respectively, I've prosecuted many trademark applications.

[00:21:01] Speaker 04:
And generally speaking, when it comes to a 2D analysis, it's pretty lengthy and pretty involved.

[00:21:08] Speaker 04:
And I just tell you... Not the ones we can.

[00:21:10] Speaker 04:
Oh, not the ones you can, okay, got it.

[00:21:12] Speaker 04:
But on this one in particular from the examiner, it was so brief that it appeared that the examiner just pretty much was very dismissive of it.

[00:21:21] Speaker 04:
He said, OK, both marks have the map of Africa and the map of the United States, likely a little confusion.

[00:21:28] Speaker 04:
And so without really taking the time to do what I think what a normal consumer would do to kind of see exactly what I mean, these are pure design marks.

[00:21:37] Speaker 04:
So there has to be some messages being conveyed.

[00:21:42] Speaker 04:
no literal elements.

[00:21:43] Speaker 04:
And so again, we think the examiner, I'm sorry, the PTO erred in terms of their conclusion, in terms of likelihood of confusion.

[00:21:53] Speaker 03:
And notably, the grandpa case that they're... I have to say, I agree with Judge Moore in the sense that if I was trying this, if this was a trial and I was trying it at the trial level, I'd make you put in one of Professor Gates's books.

[00:22:09] Speaker 03:
and have, or a couple of them, and have some background that could add weight to your argument, but it's not there.

[00:22:23] Speaker 02:
Anything further, Counsel?

[00:22:24] Speaker 04:
I think that is it.

[00:22:26] Speaker 02:
Thank you.

[00:22:26] Speaker 02:
Thank you very much.

[00:22:27] Speaker 02:
We'll take the case under review.