[00:00:00] Speaker 00:
papers refer as Galperty USA to try and reduce the confusion between the parties.

[00:00:06] Speaker 00:
As the Court knows, this is the second appeal in this case that arises from the second of two final orders by the Trademark Trial and Appeal Board in a cancellation action in which the parties claim rights to the same surname mark, namely Galperty for flanges, metal fittings, and forages.

[00:00:23] Speaker 00:
The first of the board's two opinions dismissed the petition for cancellation, and it did so despite Galperti USA's showing that Galperti of Italy had procured its registration through a false declaration under Section 2F of the Land Act.

[00:00:36] Speaker 05:
So your view is we send it back for the board to do an analysis of the intent prong?

[00:00:42] Speaker 05:
I'm sorry.

[00:00:43] Speaker 05:
In your view, we send it back so that the board can do an analysis which it has not yet done on the intent prong?

[00:00:51] Speaker 00:
Yes, Your Honor, we asked for that.

[00:00:53] Speaker 00:
The Board has not yet addressed the question of signature in either of its two opinions.

[00:01:00] Speaker 01:
I'm sorry.

[00:01:00] Speaker 01:
I thought, well, that seems like the right thing to do if we agree with you on your main argument.

[00:01:07] Speaker 01:
I thought your brief actually asked us to decide the intent standard.

[00:01:13] Speaker 00:
Your Honor, we believe that the evidence is... You think we could, but you're not going to press that.

[00:01:17] Speaker 00:
Well, Your Honor, as we have recently submitted on Monday, in light of the Board's new presidential opinion addressing the intent prong of the fraud analysis, we believe that it is equally appropriate for this Court to remand to allow the Board to address intent under that clarified test in the first instance.

[00:01:43] Speaker 00:
And, Your Honor, the showing in both the first appeal, the first proceeding before the Board and the second, included an admission by Yelperdi, Italy's principal that of her contemporary knowledge,

[00:01:55] Speaker 00:
that the magnitude of other entities' use of the Galperti mark was many times greater than that of her own company.

[00:02:02] Speaker 01:
I'm sorry.

[00:02:02] Speaker 01:
Does that have anything to do with this falsity question, or does that bear on the intent question?

[00:02:08] Speaker 00:
Your Honor, it bears on both, but most immediately upon falsity.

[00:02:12] Speaker 00:
The avariment at issue is a representation under Section 2F of the Act that Galperti Italy enjoyed the substantially exclusive

[00:02:22] Speaker 00:
use of the Gail Purdy mark for the five years immediately preceding that declaration.

[00:02:26] Speaker 00:
And the case law is clear that other parties' use of the same mark

[00:02:32] Speaker 01:
Properly plays a role in the inquiry into whether the representation As I understand it you think that the board committed two errors one was in Disregarding third parties for lack of privity and a second

[00:02:53] Speaker 01:
is what the board referred to as your failure to show proprietary rights, I think was the phrase at one point.

[00:03:03] Speaker 01:
Proprietary interest is a phrase.

[00:03:05] Speaker 01:
I want to ask you about that, this proprietary rights business.

[00:03:09] Speaker 01:
The statute which the September 2007 response clearly intends to

[00:03:18] Speaker 01:
talks about substantially exclusive use as a mark.

[00:03:28] Speaker 01:
What is the law on whether other users of the same word have to be doing so as a mark?

[00:03:39] Speaker 00:
Your honor I can refer you to the case law of this circuit and in particular the CCPA's opinion in auto rock the universal foods in this opinion expressly rejects that theory and it expressly rejects the methodology applied by the board in this particular case because it holds that any use

[00:03:57] Speaker 00:
of a mark, a challenge's mark, is relevant to the inquiry into whether a Section 2F declaration is false.

[00:04:03] Speaker 00:
And, Your Honor, it does so in very expressed terms.

[00:04:06] Speaker 00:
It holds that it reaches that holding even if that use is, quote, in a descriptive manner or in the manner of a mark, unquote, and even if that use is subsequent to the applicant's own.

[00:04:22] Speaker 00:
And, Your Honor, we'll find that holding at 640F Second at 1320.

[00:04:27] Speaker 00:
And even more to the point, Your Honor, you'll find the same rule being applied by this court in NRA Boston Beer Company Limited Partnership, in which this court affirmed the board's rejection of a Section 2F declaration with the observation that, quote, the examples of the use by others in its descriptive form

[00:04:48] Speaker 00:
support the board's conclusion that the mark had not acquired distinctiveness, unquote.

[00:04:53] Speaker 00:
And your honor will find that holding at 198 F third at 1373.

[00:04:58] Speaker 01:
One other question, and this is, I guess, on the other legal basis of the board's decision about third parties.

[00:05:10] Speaker 01:
What do you make of the fact that

[00:05:14] Speaker 01:
In our 2019 decision, we said that what the board should do is consider the significance of appellate's use.

[00:05:27] Speaker 01:
That is Gilberte's USA.

[00:05:34] Speaker 01:
Did that set the parameters of the mandate and did the board think it did?

[00:05:40] Speaker 00:
Well, Your Honor, that observation comes after this board's interpretation of LD Kichler, in which it said when evaluating whether an applicant has had substantial exclusive use of the mark, we look to whether any use by a third party was significant or whether it was merely inconsequential.

[00:06:02] Speaker 00:
And so if the court holds in this case that only trademark uses matter for purposes of the substantial exclusivity analysis under Section 2F, it will, Your Honor, I believe, be the first tribunal to reach such a holding.

[00:06:17] Speaker 00:
And again, it is not a holding that would be consistent with this court's past case law.

[00:06:29] Speaker 00:
Now, Your Honor, with respect to substantial exclusivity, again, this is not the board's approach, which is to limit the analysis to trademark uses.

[00:06:44] Speaker 00:
It's not something that has firm doctrinal warnings in this court's decision.

[00:06:48] Speaker 00:
And again, Your Honor, we submit in any of the regional circuits as well.

[00:06:52] Speaker 00:
But we also think the board erred in equal measure by limiting its analysis to other uses that it believed were in privity or somehow inured to the benefit of Galperdi USA.

[00:07:05] Speaker 00:
And Your Honor, this too is a requirement with no basis in this court's case law.

[00:07:12] Speaker 04:
Where is it that you think the board required a showing of privity?

[00:07:17] Speaker 00:
Your Honor, we'll find it.

[00:07:28] Speaker 00:
towards the end of the board's second decision.

[00:07:31] Speaker 00:
Your honor is correct on page 17 of the appendix.

[00:07:48] Speaker 00:
The long concluding paragraph somewhere right in the middle there.

[00:07:53] Speaker 00:
That's correct, Your Honor.

[00:07:55] Speaker 00:
It appears in the middle of the concluding paragraph, you know, because petitioners, the petitioning parties, were neither, or because the petitioners' affiliates, quote, were neither predecessors nor successors in interest, but rather affiliates, any common law use did not iner to petitioners' benefit.

[00:08:19] Speaker 00:
It is certainly the case that even a single party's use may be sufficiently inconsistent with the claim of substantially exclusive use to render a Section 2f claim false.

[00:08:32] Speaker 00:
And indeed, you'll find a great example of that in the CCPA's opinion in Roselux, in which you had more than one party, but the uses of the aggregate were far less than the party claiming substantially exclusive use.

[00:08:47] Speaker 00:
And here, Your Honor, in the aggregate, we have an admission against interest, a concession of contemporary knowledge that the aggregate uses were greater than those of the applicant using the same basic name.

[00:09:01] Speaker 01:
This may be getting ahead of the game even if we're sending it back, but what you were referring to just now was the statement by Ms.

[00:09:16] Speaker 01:
Kilperty that

[00:09:18] Speaker 01:
she knew that the Italian company was only one-fifth or a fourth the size of the U.S.

[00:09:26] Speaker 01:
companies?

[00:09:28] Speaker 00:
Yes.

[00:09:28] Speaker 00:
Is that right?

[00:09:29] Speaker 01:
Because that doesn't specifically refer to the extent of their uses of the word.

[00:09:35] Speaker 00:
Well, Your Honor, that observation, the testimony, was directed at her awareness arising from a state court litigation in which only the party's use of Gal-Party party marks was at issue.

[00:09:50] Speaker 00:
So it wasn't litigation in which the scope of that use was somehow ancillary to the main issue in the case.

[00:09:57] Speaker 00:
It was the only issue in that case.

[00:10:01] Speaker 00:
And your honor, that witness sat through two full days of a preliminary injunction hearing that focused on that.

[00:10:09] Speaker 01:
And so... But as I understand it, what you think we should do is to remand not just the intent question, but also the falsity question to be assessed without the burden of the two legal errors that the board made.

[00:10:31] Speaker 00:
That is correct your honor and as a 10th of a matter we haven't asked for necessarily a remand on intent because the board again has yet to address that.

[00:10:42] Speaker 00:
But yes your honor that's correct.

[00:10:48] Speaker 00:
And again, Your Honor, with respect to the privity question, it is certainly the case that a single user's use can defeat a claim of substantial exclusivity.

[00:11:00] Speaker 00:
But it is far more common for a challenger to such a claim to put forward uses of the same or similar mark by unaffiliated parties.

[00:11:11] Speaker 00:
And Your Honor, that is even a characteristic of what happened in the Kichler case.

[00:11:18] Speaker 00:
It's apparent from the court's opinion that one of the uses of the issue was that of the primary challenger to the registration in the case.

[00:11:28] Speaker 00:
But there were two other uses.

[00:11:31] Speaker 00:
And those were apparently by unrelated third parties.

[00:11:35] Speaker 00:
And the court will find the same analysis, again, in Boston Beer, in which the opinion refers to uses of the same phrase by different brewers, in other words,

[00:11:48] Speaker 00:
parties not affiliated with each other and again it has never been the case that

[00:11:54] Speaker 00:
this court, or the board, or any other tribunal, has required a showing of privity or showing that all the uses at issue inured to the benefit of the challenger for them to account in the analysis.

[00:12:09] Speaker 01:
On the theory that if I say I have substantially exclusive use, any other uses in a total would make that false, if significant enough.

[00:12:18] Speaker 01:
And it doesn't matter whether there are 17 people using it or one person doing all the uses.

[00:12:24] Speaker 00:
Your honor is correct and your honor will find just that methodology in the auto the auto wrath opinion You're using your rebuttal time.

[00:12:36] Speaker 04:
Do you want to save it?

[00:12:37] Speaker 00:
I would like to save it.

[00:12:38] Speaker 04:
Thank you

[00:12:54] Speaker 02:
May it please the court?

[00:13:02] Speaker 03:
I'm Paolo Strino of Cabins, and I'm arguing today on behalf of Up and Legal for the SRL.

[00:13:10] Speaker 03:
In its 2019 decision, this court affirmed the board's finding that the petitioner lacked prior common law rights to support its allegation of priority and likely confusion on the Section 2D of the Tremor Act.

[00:13:24] Speaker 02:
This court affirmed the board's decision that appellant had failed to rely on threatening rights in support of its claims.

[00:13:34] Speaker 03:
However, this court remanded decision to the board for further liberation on one single discreet issue.

[00:13:45] Speaker 03:
That is, whether in light of the 2009 decision in Kichler, appellants

[00:13:51] Speaker 03:
not third parties, use of the Galberti mark, not trade name, was significant and consequential, as so to render false a police declaration of substantial exclusives.

[00:14:05] Speaker 03:
There are obvious reasons why this court

[00:14:09] Speaker 03:
drafted the romance so gnarly and so precisely.

[00:14:12] Speaker 05:
Did we explicitly instruct the board to consider any use by a third party?

[00:14:17] Speaker 03:
You did not.

[00:14:19] Speaker 03:
This court did not.

[00:14:20] Speaker 03:
But there are obvious reasons why these courts did not do that.

[00:14:25] Speaker 03:
At no point at any stage of these proceedings had appellant relied

[00:14:32] Speaker 03:
not in its briefing, not in its extension motion practice, but more importantly, not in operating pleadings on any use other than appellants.

[00:14:42] Speaker 01:
I would like in that regard... I'm sorry that I'm not remembering the details.

[00:14:48] Speaker 01:
I looked into this a little bit and I thought that I saw in the briefing before this court last time reliance on appellant and its affiliates.

[00:15:03] Speaker 03:
There is reference at some point after the board initial decisions already indicated and made a founding of fact that appellant lacked property interest in the mark, that appellant lacked any kind of legal relationship for the record.

[00:15:19] Speaker 03:
At that point, at that late stage, appellant had at some point reference to these affiliated companies.

[00:15:27] Speaker 03:
But the operating pleadings in this matter are very clear.

[00:15:31] Speaker 03:
I invite the court to look through Appendix 189 and 196.

[00:15:37] Speaker 03:
This is the second amended petition to cancel.

[00:15:41] Speaker 03:
That again, illustrates the operating pleadings of appellant.

[00:15:44] Speaker 03:
There are two counts of fraud.

[00:15:47] Speaker 03:
On page three, it should be Appendix 189 and on.

[00:15:53] Speaker 03:
It's the second amended petition for cancellation.

[00:15:57] Speaker 03:
The two following counts

[00:16:00] Speaker 03:
starts at page three and then page four.

[00:16:05] Speaker 03:
On page four, I'd like to read a passage.

[00:16:09] Speaker 03:
Registrant did not obtain the right to use petitioner's word, Mark Alberti, through the litigation, and therefore had no right to file the application or claim that he had substantial exclusive and continuous use of the mark.

[00:16:24] Speaker 03:
It doesn't talk about other parties.

[00:16:25] Speaker 03:
It talks about petitioner.

[00:16:27] Speaker 03:
Likewise, on the count three,

[00:16:31] Speaker 03:
paragraph 13 because the registrant knowingly made a false material presentation of fact and so on by stating under oath that he was the owner of the Galberti mark with full knowledge the petitioner was already using the mark in the United States for the sale of goods and services.

[00:16:49] Speaker 03:
In other words, this court drafted the remand so gnarly and so precisely because appellant had failed to rely on any rights by third parties, let alone its perverted alleged affiliated companies and predecessors in interest.

[00:17:02] Speaker 03:
This court should resist.

[00:17:03] Speaker 01:
I think I'm confused about this.

[00:17:06] Speaker 01:
On the remand, the record was not expanded, right?

[00:17:09] Speaker 01:
It was just the board deciding on the same record, answering the questions on the remand.

[00:17:17] Speaker 03:
That's correct.

[00:17:18] Speaker 01:
It's the same record.

[00:17:19] Speaker 01:
And the record that the board talked about in this opinion, and I don't remember the last one, but since it was pre-2019, it must have included in this, included all sorts of stuff about these affiliates' third party's use.

[00:17:31] Speaker 03:
That's correct.

[00:17:32] Speaker 03:
That's correct, Your Honor.

[00:17:35] Speaker 03:
If I may continue, not only did the board not commit legal error, because in our view, privity is an inherent requirement of the remand.

[00:17:44] Speaker 03:
The court should not have to restate

[00:17:47] Speaker 03:
a general principle with regard to the interplay between privity, third party use, and so on.

[00:17:52] Speaker 03:
However, and this was a key point in the previous decision, this court could not find supporting reasoning in the previous decision of the board to show an analysis in isolation of the evidence of appellant's affiliated company's use.

[00:18:06] Speaker 05:
I don't know, I think Judge Toronto, I'm not sure what your response is to Judge Toronto's query.

[00:18:13] Speaker 03:
My response is the record has not been expended.

[00:18:16] Speaker 03:
However, in this new decision, the board is now devoting a significant amount of time to the analysis of the use, not only by appellant, but also by its appropriate affiliated companies.

[00:18:29] Speaker 03:
This is to say, the lack of property ownership, the lack of privity by appellant, it's not the sole decisions of the board analysis.

[00:18:38] Speaker 03:
The board devoted approximately 30%, that is to say five pages in this new decision,

[00:18:43] Speaker 03:
to analyze in isolation evidence of appellant's use, also with regard to that alleged use that belonged to those additional companies.

[00:18:54] Speaker 03:
And I would like to point in that regard your Honour's attention to Appendix 11.

[00:19:02] Speaker 03:
Between Appendix 11 and Appendix 15, this contains

[00:19:08] Speaker 03:
Again, a significant amount of the reasoning of the board and addresses specifically evidence of use.

[00:19:14] Speaker 03:
And the board says, a brochure that was introduced through the position of sender was undated.

[00:19:23] Speaker 03:
It restates a general principle that appellant had failed to rely on trade name rights and analyzed again those uses in isolation.

[00:19:31] Speaker 03:
Website not includes the word Calperty.

[00:19:33] Speaker 03:
There were building and low signs that were illegible.

[00:19:36] Speaker 03:
Importantly,

[00:19:37] Speaker 03:
On page 13, in the beginning, the board analyzes invoices and related documents from Petitioner and Galberti SPA.

[00:19:47] Speaker 03:
The vast majority of invoices were issued under the trade name of Ficino, Nicola, Galberti and Figlio SPA.

[00:19:55] Speaker 03:
This statement alone defeats

[00:19:58] Speaker 03:
the appellant's conjectural exercise for at least two reasons.

[00:20:01] Speaker 03:
It shows that the board has in fact considered those invoices bearing the name of its affiliated companies, alleged affiliated companies.

[00:20:10] Speaker 03:
And in addition to that, underlights that that's trade name use.

[00:20:14] Speaker 03:
It's not trademark use.

[00:20:16] Speaker 05:
And this is telling me... So you were telling us that the board did analyze the affiliates.

[00:20:25] Speaker 05:
It didn't exclude them as a legal matter.

[00:20:28] Speaker 05:
And they said that the evidence was insufficient to establish substantial use, even if you combine all of those uses.

[00:20:36] Speaker 03:
It is correct, Your Honour, and I'll show you where, in our view, that reasoning appears in the decision.

[00:20:43] Speaker 03:
In other words, the Board's analysis is a multiple prong analysis.

[00:20:48] Speaker 03:
It discusses the fact that the appellant lacked privity.

[00:20:51] Speaker 03:
As far as it lacks privity, again, the analysis shouldn't even extend.

[00:20:55] Speaker 03:
the third party uses because it's outside of the scope of the remainder.

[00:20:58] Speaker 03:
But then, in an abundance of caution, analyzes also those documents.

[00:21:02] Speaker 03:
It doesn't exclude the documents of those affiliated companies.

[00:21:05] Speaker 03:
And on page 15, your honors, second paragraph, the board states, from the aforementioned documentary evidence, we are unable to conclude that petitioner engaged in significant, common low use of its pleaded Galverti mark, or variation, therefore,

[00:21:24] Speaker 03:
during the relevant time period.

[00:21:26] Speaker 03:
In other words, the board did not commit an illegal error.

[00:21:29] Speaker 03:
It faithfully followed the remand, stayed within the confines of this board remand, and yet, in an abundance of caution, analyzed also those evidence of alleged use, not just by appellants, but also by its appropriate affiliated parties.

[00:21:47] Speaker 04:
Well, I mean, it seems clear on page 15 that the board found that petitioner engaged in significant common law use of its fleeted Galberti mark during the relevant time period.

[00:22:03] Speaker 04:
But where does it address the affiliates?

[00:22:09] Speaker 03:
OK.

[00:22:09] Speaker 03:
Again, going back to page 13.

[00:22:13] Speaker 04:
So just to be clear, I mean, do you think if,

[00:22:17] Speaker 04:
this case, if in this case the parties had argued about petitioners use and affiliates or third party use, do you think it would have been appropriate for us to remand only to look at appellants use of the mark?

[00:22:36] Speaker 03:
Had they argued differently, this court would have had any right to remand on also those third party use.

[00:22:43] Speaker 03:
However, on this record,

[00:22:45] Speaker 03:
On this record, an appellant could have not prevailed.

[00:22:50] Speaker 03:
There is significant evidentiary deficiency throughout the proceeding.

[00:22:54] Speaker 03:
The testimony of appellant's president failed to verify any of those documents, other than stating their authenticity, but never to render any testimony thereof.

[00:23:05] Speaker 03:
The documents do not often show the Mark Galberti, but show logos, and I can point exactly in the decision.

[00:23:14] Speaker 03:
Other documents do not show any form of customer-facing use of these documents, such as a certificate of quality assurance by Lloyd.

[00:23:24] Speaker 03:
I mean, even in combination, those documents, and even as the board did, considering those invoices, and that's the vast amount of invoices, and we're showing a name that is not Alberti, even considering those invoices, the outcome doesn't change, and the board already considered it for its decision.

[00:23:41] Speaker 05:
But in your brief here, you say, you argue that Appellant never pled or otherwise alleged third-party usage.

[00:23:47] Speaker 05:
We did not.

[00:23:48] Speaker 05:
So you're saying it never pled or alleged it.

[00:23:52] Speaker 05:
Nonetheless, the board on remand

[00:23:55] Speaker 05:
analyzed it yes essentially where is it that they conclude that draw conclusion with respect to I see the discussion of individual pieces of evidence but we are and I think this is what the chief was getting at where is the conclusion with respect to those page 15 the board says from the aforementioned documentary evidence

[00:24:18] Speaker 04:
And the aforementioned documentary evidence has stated, includes... Yes, but the problem is they arguably misstate the analysis there in that same sentence.

[00:24:29] Speaker 04:
From the aforementioned documents, we are unable to conclude petitioner has engaged in significant common law use.

[00:24:38] Speaker 04:
If it's not limited to petitioner, but could be anyone,

[00:24:42] Speaker 03:
The petitioner failed to allege it was third party use, and there is a good reason for it.

[00:24:46] Speaker 01:
Just on that, so I think before I was saying, I vaguely recalled something in the brief last time.

[00:24:52] Speaker 01:
So it's actually in the joint appendix 4419 and 4431 are pages from Galperty USA's brief to this court.

[00:25:01] Speaker 01:
And specifically talking about Appellee was well aware of the use of the Galkarty mark, all caps, by Appellant and one of Appellant's affiliates.

[00:25:09] Speaker 01:
That's 4419.

[00:25:11] Speaker 01:
Same thing on 4431.

[00:25:13] Speaker 01:
And the evidence clearly was put in last time.

[00:25:16] Speaker 03:
That's why we have a record full of... On the basis that all that prior use had been transferred to Petitioner was Petitioner's mark.

[00:25:25] Speaker 03:
That was the basis.

[00:25:27] Speaker 03:
In other words, petitioner maintained that it was its own use.

[00:25:30] Speaker 01:
Why either under our precedent, like the Otto case and the Boston Beer case, or under logic?

[00:25:38] Speaker 01:
I guess those are about the proprietary stuff.

[00:25:40] Speaker 01:
I'm sorry, it's the third party.

[00:25:41] Speaker 01:
Why does it make any kind of logical sense to say that if I say I have substantially exclusive use, that the question of the falsity of that should turn on whether

[00:25:54] Speaker 01:
Let's say the 1,300 other uses were by one party or by 1,300 separate people.

[00:26:01] Speaker 01:
Both of them render my statement false.

[00:26:04] Speaker 03:
I agree, Your Honor.

[00:26:05] Speaker 03:
As a matter of general principle, it shouldn't matter.

[00:26:07] Speaker 03:
But it should be in the pleadings.

[00:26:10] Speaker 03:
Appellant failed to argue.

[00:26:13] Speaker 03:
And again, we are coming to this appeal.

[00:26:16] Speaker 03:
After there have been a number of claims, the only issue in appeal was petitioners using the mark.

[00:26:23] Speaker 03:
because Petitioner alleged so news as capable of rendering false that declaration.

[00:26:29] Speaker 03:
So this court should, in our view, should resist the invitation of restating the general principle because this is not what the case is.

[00:26:37] Speaker 03:
This appeal, it's on the record.

[00:26:39] Speaker 03:
It is based on the record.

[00:26:41] Speaker 03:
And regardless of privity, the board has already also again analyzed those documentary evidence and concluded for a number of reasons

[00:26:49] Speaker 03:
that those documentary evidence do not show significant use for a variety of reasons.

[00:26:53] Speaker 03:
Again, because at some points they're illegible.

[00:26:56] Speaker 03:
Other times they're here saying they lack corroborating testimony.

[00:27:01] Speaker 03:
Other times they are essentially showing trade name use on which this court already affirmed the board's finding appellant did not rely on.

[00:27:09] Speaker 03:
So the insistence that the board made a general mistake on stating

[00:27:16] Speaker 03:
Again, the law, when it comes to the interplay between privity, third-party use, and substantial exclusive use statements, we don't believe that that's what the board did.

[00:27:29] Speaker 03:
This decision, again, analyzed in isolation and then in combined form all those evidence.

[00:27:34] Speaker 03:
It did not make a distinction.

[00:27:37] Speaker 03:
In the end, in the conclusion section, in summarizing the background of the case and so on, the board

[00:27:44] Speaker 03:
Again, stated that he lacked property interest, lacked a privity, and, regardless, that evidence of use was not a significant consequence within the leaning of Kichler.

[00:27:59] Speaker 04:
Okay.

[00:28:00] Speaker 04:
Thank you, Mr. Strino.

[00:28:02] Speaker 04:
Mr. Davis, you have some rebuttal time.

[00:28:23] Speaker 00:
Very briefly, in rebuttal, the parties agree on what the operative pleading is in this case, and Respondents' Council has referred you to it.

[00:28:34] Speaker 00:
But in doing so, he was referred to the court to a cause of action asserted in that petition for cancellation relating to the claim of ownership in the mark that is not involved at all in this appeal and wasn't even pursued in the first appeal.

[00:28:50] Speaker 00:
With respect to the language and the operative pleading that relates to the cause of action currently before the court That cause of action contains the following sentence I'm sorry your honor.

[00:29:03] Speaker 00:
It's begins at appendix 189 And this is also quoted by the board at appendix 4 if that's easier to get in I

[00:29:12] Speaker 00:
But that cause of action contains the following sentence, quote, the declaration fraudulently.

[00:29:18] Speaker 01:
Just to orient me, this is count two, fraudulent registration, false declaration, starting on 192?

[00:29:25] Speaker 00:
Yes, Your Honor.

[00:29:27] Speaker 01:
OK.

[00:29:27] Speaker 01:
And which paragraph under that are you now reading from?

[00:29:30] Speaker 00:
Your Honor, I can't refer you to a specific paragraph.

[00:29:32] Speaker 00:
I'm sorry.

[00:29:33] Speaker 01:
It's not very long, so.

[00:29:35] Speaker 00:
But it does read.

[00:29:36] Speaker 00:
The Declaration fraudulently and knowingly misrepresented that Respondent had substantially exclusive and continuous use of the mark within the United States since 1965 with an intent to deceive.

[00:29:49] Speaker 00:
No reference in that sense to other parties' uses.

[00:29:52] Speaker 00:
Flat out, no substantially exclusive use.

[00:29:59] Speaker 00:
As we heard, Your Honor, it's correct that throughout these proceedings, Galperti USA has put forward that use as evidence of non-substantially exclusive use.

[00:30:12] Speaker 00:
And it's also the case, Your Honor, that until the remand in this action, and you can see where Galperti Italy is seizing upon some language in this court's opinion, it had not asserted

[00:30:23] Speaker 00:
that these uses were not relevant to the substantially exclusive use inquiry.

[00:30:28] Speaker 04:
Counsel, I certainly see the sentence on page 17 that you directed me to about privity, but I think Mr. Strino's argument is

[00:30:37] Speaker 04:
Yes, the board found they were not in privity, but the board also independently evaluated each of these pieces of evidence, even though it was evidence of the affiliate, not the petitioner's use.

[00:30:51] Speaker 04:
And in each case, you can see the reasons why the board concluded that that evidence didn't demonstrate consequential use.

[00:30:58] Speaker 04:
So what is your response to that?

[00:31:00] Speaker 04:
How did the board fail to analyze the affiliate evidence?

[00:31:07] Speaker 00:
If I may respond, Your Honor, I see my time is up.

[00:31:09] Speaker 04:
Yes, please.

[00:31:11] Speaker 00:
It did so because the board expressly states in its conclusion that that use did not inure to the petitioners.

[00:31:19] Speaker 04:
Yes, but it went through each piece of evidence one by one and explained the flaws with regard to each piece of evidence individually.

[00:31:28] Speaker 04:
Which pieces of affiliate evidence do you think establish the consequential use?

[00:31:35] Speaker 00:
Your Honor, we believe they all do.

[00:31:38] Speaker 00:
And again, Your Honor, this is not a case in which the Respondent itself has failed to evaluate that evidence.

[00:31:45] Speaker 00:
It's a case in which Respondent's own principle acknowledged the magnitude of that use.

[00:31:50] Speaker 00:
And that's an issue that the Board has yet to address.

[00:31:54] Speaker 05:
I guess I'm...

[00:31:56] Speaker 05:
with the chief on this, I don't think you're responding to her question.

[00:32:00] Speaker 05:
If the board for whatever reason, even if he thought it didn't have to under its view of the law, evaluated all of the evidence that was put forward with respect to these third party use and said this doesn't do anything for us, this doesn't establish anything, it's insufficient, why doesn't that matter for our purposes here?

[00:32:22] Speaker 00:
Because it's inextricably linked to the board's legal proposition that it doesn't matter.

[00:32:29] Speaker 00:
And against that... How do we know that?

[00:32:31] Speaker 05:
I mean, is there anything you can point to in the board's opinion?

[00:32:33] Speaker 05:
I know we talked about the language 15 where it specifically just calls out the petitioner.

[00:32:41] Speaker 05:
But how do we know that?

[00:32:44] Speaker 00:
And 17 as well, Your Honor.

[00:32:48] Speaker 04:
Well, but you've got to answer Judge Prost's question, because I'll just give you one example.

[00:32:52] Speaker 04:
Brochures and catalogs.

[00:32:53] Speaker 04:
You claim that is some of the affiliate evidence of consequential use, but what the board said about the brochures and catalogs is that the testimony presented by Mr. Sanders was woefully inadequate, that within this catalog, Mr. Sanders didn't testify to its use, its distribution, the extent of circulation of the brochure, that basically there was a failure of proof on your end to demonstrate

[00:33:16] Speaker 04:
Yes, there was a brochure, but there was a failure of proof as to whether that brochure was circulated in any significant way.

[00:33:25] Speaker 04:
So the board didn't conclude it constituted consequential use because there was no evidence of its circulation.

[00:33:32] Speaker 04:
So that's an example of the affiliate evidence that you're saying the board didn't properly count and I'm saying actually they did and they concluded that you didn't prove anything by it.

[00:33:44] Speaker 00:
Your honor, all I can do is refer you back to the two doctrinal frameworks that the board adopted here.

[00:33:50] Speaker 04:
Do you have some answer to why brochures and catalogs amount to consequential use or why the board erred in concluding they didn't in light of the failure of proof on your end?

[00:34:02] Speaker 00:
Again, your honor, the applicant itself was aware of that use.

[00:34:07] Speaker 00:
And that's something that the board has yet to consider.

[00:34:12] Speaker 04:
Okay, thank you.

[00:34:13] Speaker 04:
This case is taken under submission.