[00:00:00] Speaker 04:
This is case 20-21-20-2120, I be cool versus elsewhere.

[00:00:08] Speaker 04:
Mr. Quinn, please proceed.

[00:00:11] Speaker 02:
Thank you.

[00:00:12] Speaker 02:
May it please the court, Darren Quinn for appellate and trademarked applicant, I be cool, you be hot limited.

[00:00:20] Speaker 02:
The main issue on this appeal is whether the board's final decision erred in finding a likelihood of confusion

[00:00:29] Speaker 02:
between opposers COOL mark in class 25 for clothing and applicants stylized and colorized IB COOL mark in class 25 for clothing, where at least 359 registered marks in class 25 for clothing begin with or contain the word COOL or its phonetic equivalence, COOL spelled K-U-L,

[00:00:57] Speaker 02:
K-U-H-L or K-O-O-L.

[00:01:00] Speaker 01:
Mr. Quinn, this is Judge Toronto.

[00:01:03] Speaker 01:
I think we received a week or so ago a notification from ALFWARE that the particular registration to which the board limited its discussion had been canceled.

[00:01:26] Speaker 01:
What, if any, difference to what we have before us does that fact, assuming it is a fact, make?

[00:01:42] Speaker 01:
And just to elaborate, and you didn't file any kind of response, at least when I looked at the

[00:01:54] Speaker 01:
what the board describes for the four registrations.

[00:01:59] Speaker 01:
The one that it selected is the one with the umlaut and the one with the broadest scope of authorized use.

[00:02:10] Speaker 01:
The other three are different either in missing an umlaut, in the spelling, or in the one that I think has the same spelling, a narrower

[00:02:23] Speaker 01:
scope of use to rugged outdoor clothing and I don't know bottled water or something does that affect what analysis we have before us or should conduct the question is doesn't affect the analysis I believe it does registration

[00:02:50] Speaker 02:
carries with it certain presumptions and rights.

[00:02:54] Speaker 02:
Some of those rights are presumption of validity, presumption that the goods that are listed in the registration, you know, doesn't matter if it's specialty active wear, a shirt is a shirt, as the board had said.

[00:03:09] Speaker 02:
There's also a presumption that goes with the registration that it's all channels.

[00:03:19] Speaker 02:
an issue with respect to the particular registration saying that the mark can be used in any font, color, or size, but that the registration, I believe the analysis would be properly limited to how did Alphware, Opposer Alphware, actually use the mark.

[00:03:40] Speaker 02:
Now all of that, most of that information, I believe, is already on the record.

[00:03:44] Speaker 02:
It's not a question of whether or not this court

[00:03:47] Speaker 02:
whether or not the opposition could be filed by out there without a registration.

[00:03:52] Speaker 02:
Clearly, they could.

[00:03:53] Speaker 02:
A registration is not required to do it.

[00:03:55] Speaker 02:
But once you have the issue that now there's not a registration, it may be more of an analysis of an issue becoming moot.

[00:04:04] Speaker 02:
Because I don't believe that it's clear to Dave DeNovo that it can say,

[00:04:13] Speaker 02:
that you're going to give it all of the presumptions and rights of a registered mark when currently it's not.

[00:04:17] Speaker 00:
So the question, counsel, this is Judge Prouse.

[00:04:20] Speaker 00:
Can you hear me?

[00:04:22] Speaker 00:
Yes, I can.

[00:04:22] Speaker 00:
Thank you.

[00:04:23] Speaker 00:
So the question we're left with is, what do we do now?

[00:04:26] Speaker 00:
So is it your view that a remand is necessary so that the board can reevaluate the conclusions it made without this canceled mark?

[00:04:36] Speaker 00:
Or is it your argument today, which I couldn't

[00:04:39] Speaker 00:
quite get clarity on whether you think we should just reverse on that basis or what?

[00:04:47] Speaker 02:
Well, I think the court certainly has discretion to remand it based on there is no registration now.

[00:04:54] Speaker 02:
That is one option the court can do.

[00:04:55] Speaker 00:
I mean, there were other references that were in play below, but none relied on as heavily as the board did on this one, on the one that was canceled, right?

[00:05:07] Speaker 02:
No, that is true.

[00:05:11] Speaker 02:
There is an issue, you can tell from the briefing, near and dear to my heart is the sixth DuPont factor, which is the number and nature of similar marks and use on similar goods.

[00:05:28] Speaker 02:
So even if the court does determine to remand based upon the fact that the registration that the board relied on has now been canceled, I would request that the court

[00:05:40] Speaker 02:
provide some additional guidance on this sixth DuPont factor because there's certain issues that have come up in the briefing that I just haven't seen in any federal circuit decision.

[00:05:54] Speaker 02:
And as I see it, every single one of the panel here has offered at least one decision, major decision in some cases, on the sixth factor.

[00:06:04] Speaker 04:
Respectfully, counsel, we decide cases.

[00:06:07] Speaker 04:
We review judgments.

[00:06:08] Speaker 04:
We don't issue guidance.

[00:06:11] Speaker 04:
And, you know, there were three other pleaded registrations in this case that the board expressly said it wasn't going to get to because it didn't have to.

[00:06:19] Speaker 04:
So I don't see how we can do anything other than vacate and remand this case at this point since the one they relied on.

[00:06:25] Speaker 04:
I mean, I feel like you're quite right.

[00:06:27] Speaker 04:
And this can be a short argument with all due respect.

[00:06:30] Speaker 04:
You're quite right that they accepted the registrations listing of goods.

[00:06:35] Speaker 04:
It looks like the only evidence of actual use on goods is rugged outdoor clothing, whereas Ivy Cool is on active wear.

[00:06:43] Speaker 04:
That's a fact question that may be significantly different.

[00:06:46] Speaker 04:
I certainly can't decide that in the first instance.

[00:06:49] Speaker 04:
I don't see how we can do anything other than vacate and remand for the board to look at those factual issues, or if it chooses to focus on the other three pleaded registrations.

[00:07:01] Speaker 04:
But I don't see how I could do any of that in the first instance.

[00:07:05] Speaker 02:
Well, I think the court would be correct if it did reverse and remand based on that ground.

[00:07:13] Speaker 04:
And in light of that argument... Well, it wouldn't be a reverse in remand because that would suggest I'm finding in your favor, right?

[00:07:19] Speaker 04:
It would be a vacated remand so that the board could reevaluate under the appropriate facts.

[00:07:25] Speaker 02:
You're correct.

[00:07:25] Speaker 02:
You're correct.

[00:07:26] Speaker 02:
I didn't mean to misbehave.

[00:07:29] Speaker 02:
In light of that, unless the board has other questions, it may be best that I reserve the balance of my time for any rebuttal.

[00:07:39] Speaker 04:
I think that's a wise choice.

[00:07:42] Speaker 04:
OK, we'll hear from Mr. Owen.

[00:07:45] Speaker 04:
Just wait a sec while we get the computer moved, please, and restore the, yeah.

[00:08:33] Speaker 04:
We all set, Justin?

[00:08:36] Speaker 04:
You good?

[00:08:40] Speaker 04:
Okay, Mr. Owen, come on forward.

[00:08:58] Speaker 04:
Please proceed.

[00:09:01] Speaker 03:
OK, I think there are three options the court has, and you've talked about at least one.

[00:09:07] Speaker 04:
Talk a little louder, just so I want to make sure he at home hears you and the mic is up here.

[00:09:12] Speaker 04:
So just be a little louder.

[00:09:13] Speaker 04:
I hear you fine, but I want to make sure he can.

[00:09:15] Speaker 03:
Sure is.

[00:09:15] Speaker 03:
All right.

[00:09:16] Speaker 03:
Is that about right?

[00:09:18] Speaker 04:
Can you just ask him if he can hear real quick?

[00:09:20] Speaker 04:
I just want to make sure he doesn't miss your argument.

[00:09:25] Speaker 02:
I think he should hear.

[00:09:28] Speaker 02:
OK.

[00:09:28] Speaker 02:
As long as he can hear.

[00:09:28] Speaker 02:
OK.

[00:09:28] Speaker 02:
I can hear you, Your Honor.

[00:09:29] Speaker 02:
I think the question is, can you just voice up and see if you've

[00:09:30] Speaker 04:
Thank you.

[00:09:32] Speaker 04:
Sorry.

[00:09:32] Speaker 04:
Don't worry.

[00:09:33] Speaker 04:
You get your full time.

[00:09:35] Speaker 03:
Whatever.

[00:09:35] Speaker 03:
All right.

[00:09:36] Speaker 03:
Yeah, I think there are three different options.

[00:09:37] Speaker 03:
I can give an overview of them, then I'm happy to dive in a little bit to the details if you would like.

[00:09:43] Speaker 03:
So your honor has mentioned one, and that would be to vacate and remand.

[00:09:47] Speaker 03:
The one that I still think the court can do based on the simplicity of the record is to affirm based on at least two of the other registrations.

[00:09:59] Speaker 03:
We asserted four.

[00:10:00] Speaker 04:
They weren't addressed by the board.

[00:10:04] Speaker 04:
The board expressly said it wasn't going to address the other three registrations.

[00:10:08] Speaker 03:
You're right.

[00:10:09] Speaker 03:
It focused on the primary one.

[00:10:11] Speaker 04:
Not focused on it.

[00:10:12] Speaker 04:
Expressly said it wasn't going to rely upon the other three, correct?

[00:10:16] Speaker 03:
That's correct.

[00:10:17] Speaker 04:
So how in the world can an appellate court in the first instance make fact findings underlying this testing, all these factors?

[00:10:27] Speaker 03:
First, let me state we stand ready to go to the TTAB and address those in the first instance.

[00:10:32] Speaker 01:
So maybe option number two is not going to fly.

[00:10:34] Speaker 01:
What was option number three?

[00:10:37] Speaker 03:
Option number three would just be to request additional briefing for you to consider based on what's in their existing record.

[00:10:44] Speaker 03:
So that we would do fact-finding in the first instance based on that additional?

[00:10:50] Speaker 03:
Well, I mean, we've asserted four registrations.

[00:10:53] Speaker 03:
Two are nearly identical.

[00:10:55] Speaker 03:
For instance, one, the only difference is the absence of an umlaut.

[00:11:00] Speaker 03:
The goods and services are identical, completely overlapping and identical.

[00:11:05] Speaker 03:
That's registration 4441177.

[00:11:09] Speaker 03:
Identical recitation of the goods, belts, bottoms, hats, jackets, pants, shirts, shorts, tops, and then it has some added language.

[00:11:21] Speaker 04:
I have very little doubt that when you go back to the board, they're going to come to the same conclusion based on that registration they came based on this one.

[00:11:28] Speaker 04:
And I hate to send people back for unnecessary process, but I can't make fact findings in the first instance.

[00:11:34] Speaker 04:
And what's more, this is all a problem of your client's creation.

[00:11:37] Speaker 04:
They didn't file the paperwork to maintain the mark that was the subject of the cancellation.

[00:11:42] Speaker 04:
So you know what?

[00:11:42] Speaker 04:
The additional process that you have to undertake is really on them.

[00:11:47] Speaker 00:
Now let me just ask you a process question.

[00:11:50] Speaker 00:
In one of the papers, the 28J or something, there was some reference to the fact that you had a pending motion with regard to the cancellation.

[00:11:58] Speaker 00:
Has that been disposed of?

[00:12:00] Speaker 03:
No, it's still pending.

[00:12:01] Speaker 03:
You're right.

[00:12:03] Speaker 03:
Client filed a petition to reinstate the registration that has not yet been acted on to my knowledge correct So we assume the t tab will they'll just take care of all of that.

[00:12:13] Speaker 00:
I mean the motion is before them Yeah, if it goes down.

[00:12:17] Speaker 03:
I think that either Either that petition will have been acted on at that point or depending on how quickly they they go it will not have and then they'll make a decision based on that and

[00:12:28] Speaker 04:
Just out of curiosity, why don't you think about asking us to stay this case and ordering the PTAB to decide your reinstatement motion or stay it until they decide it?

[00:12:36] Speaker 04:
Because if it was reinstated, could we arguably pick back up the case?

[00:12:40] Speaker 03:
Yes.

[00:12:41] Speaker 03:
Yes, I think that's a good option.

[00:12:42] Speaker 03:
And my option number two or three.

[00:12:44] Speaker 03:
That would be option four.

[00:12:47] Speaker 03:
My option four.

[00:12:48] Speaker 03:
I guess it would fall under my option of additional briefing to you.

[00:12:51] Speaker 03:
And I think that suggestion would be one that would certainly be open to it.

[00:12:55] Speaker 00:
I mean, you practiced presumably before them.

[00:12:57] Speaker 00:
We don't get that many cases.

[00:13:00] Speaker 00:
Is there any sense of how long it takes them to rule on these motions?

[00:13:04] Speaker 00:
It's pretty rapid or could make it into a black hole.

[00:13:08] Speaker 03:
Fairly quickly two to three months.

[00:13:10] Speaker 01:
I think generally we should get a decision on the petition to reinstate So I think it is the nature of a reinstatement is if granted it It's as if there was never a gap and it would not affect the analysis here.

[00:13:23] Speaker 01:
That's my understanding and reinstatement is still available even though

[00:13:28] Speaker 01:
You had a notification that it was about to expire.

[00:13:33] Speaker 01:
It expired.

[00:13:34] Speaker 01:
And then there's either a statutory or a regulatory.

[00:13:37] Speaker 01:
Is it a six-month window?

[00:13:39] Speaker 01:
And you missed that too?

[00:13:40] Speaker 03:
That's correct, yeah.

[00:13:41] Speaker 03:
There's a one-year time during which the renewal papers need to be filed.

[00:13:47] Speaker 03:
And then there's a six-month grace period.

[00:13:48] Speaker 03:
And that is what the client has missed.

[00:13:50] Speaker 03:
And so we're beyond that.

[00:13:52] Speaker 03:
That's why the client filed.

[00:13:55] Speaker 01:
I don't know if this matters.

[00:13:56] Speaker 01:
Do you happen to know?

[00:13:58] Speaker 01:
Does the board, is it the board or some other aspect, some other component of the PTO?

[00:14:04] Speaker 03:
Yeah, the board.

[00:14:06] Speaker 01:
So does the board grant reinstatements when the grace period has been missed sometimes?

[00:14:12] Speaker 03:
In exceptional circumstances, it has that ability.

[00:14:16] Speaker 00:
But typically it doesn't, I think.

[00:14:18] Speaker 00:
Correct.

[00:14:18] Speaker 00:
Somebody showed it.

[00:14:19] Speaker 00:
That's right.

[00:14:19] Speaker 00:
Typically it does not.

[00:14:21] Speaker 04:
Well, what are your exceptional circumstances?

[00:14:24] Speaker 04:
I'm just wondering if I want this case sitting on my docket.

[00:14:27] Speaker 04:
while all of this plays itself out or not.

[00:14:29] Speaker 03:
You know, I think it's a solo practitioner with, you know, COVID issues going on.

[00:14:34] Speaker 03:
And I think that the petition reinstatement references those.

[00:14:38] Speaker 03:
I'm not sure why reminders were not sent internally or why the PTO reminder was not received by the client, which is what the petition states.

[00:14:51] Speaker 01:
And just for what it's worth, am I remembering correctly that the board did place some emphasis on the umlaut?

[00:15:01] Speaker 01:
Yes, that's correct.

[00:15:02] Speaker 01:
Right, so that's maybe the

[00:15:05] Speaker 01:
I guess the board would have to decide whether that makes the 4441177 significantly different.

[00:15:15] Speaker 03:
Yes, that's right.

[00:15:15] Speaker 03:
And the alternative one would be the 1990375, which we would have to decide which one we would argue as the primary one.

[00:15:24] Speaker 03:
but that one is the identical mark with the umlauts.

[00:15:28] Speaker 01:
Except that that's the one limited to rugged outdoor clothing.

[00:15:32] Speaker 01:
That's correct.

[00:15:33] Speaker 01:
And the board in several of its DuPont factor discussions emphasized or mentioned at least that the registration it was analyzing was essentially unlimited in scope as to clothing and therefore

[00:15:51] Speaker 01:
That's right.

[00:15:52] Speaker 03:
So we'd need to argue either here or below that to the extent that there's not direct overlap that they're highly related.

[00:15:59] Speaker 04:
That is definitely below.

[00:16:02] Speaker 04:
All right.

[00:16:02] Speaker 04:
Anything further?

[00:16:03] Speaker 03:
No, Your Honor.

[00:16:05] Speaker 04:
OK.

[00:16:05] Speaker 04:
Thank you.

[00:16:06] Speaker 04:
We have a little bit of rebuttal time.

[00:16:21] Speaker 04:
Let her take away, because the next person is also remote.

[00:16:25] Speaker 04:
Oh, good.

[00:16:29] Speaker 04:
Because the next person is also remote, so we'll just keep him away for a while.

[00:16:42] Speaker 04:
Are we good, Joseph?

[00:16:44] Speaker 04:
OK.

[00:16:44] Speaker 04:
Mr. Quinn, you have some rebuttal time.

[00:16:49] Speaker 04:
Please proceed.

[00:16:50] Speaker 00:
Could I just ask you as a threshold matter, I don't want to use all of your time, but do you have a view or a strong view on the question we were discussing with your friend about whether we would hold this case here or remand it pending the disposition of the motion that's pending now?

[00:17:08] Speaker 02:
My view would be that the pending motion to reinstate the

[00:17:14] Speaker 02:
Registration is going to be very difficult.

[00:17:17] Speaker 02:
Even he acknowledged it's going to take exceptional circumstances.

[00:17:21] Speaker 02:
When I read his petition, it seemed to be saying that COVID and the distrust.

[00:17:28] Speaker 00:
By very difficult, you mean not that it's challenging for the board, but that it's a real uphill battle.

[00:17:35] Speaker 02:
I think it's challenging for it.

[00:17:37] Speaker 02:
Yeah, it's challenging to reinstate it.

[00:17:39] Speaker 02:
So that may be a reason not to stay.

[00:17:43] Speaker 02:
But the court certainly has discretion to do so.

[00:17:45] Speaker 04:
And just out of curiosity, even if it were reinstated, would you then have arguments that ought to be best addressed by the board in the first instance regarding the effect of the lapse on this case?

[00:18:08] Speaker 02:
Many of my arguments, as you know, end up being more legal as to

[00:18:12] Speaker 02:
what should happen.

[00:18:14] Speaker 02:
So I don't necessarily see the board talking about a lapse.

[00:18:25] Speaker 02:
Are you assuming that?

[00:18:27] Speaker 04:
My question to you is, when the board reinstates it, I don't know trademark law well enough to know this, and you all didn't brief it.

[00:18:33] Speaker 04:
If the board were to reinstate this, does that make it retroactive as though it never canceled it at all, as though there were no laps?

[00:18:41] Speaker 04:
such that there's just no question it is a continuous trademark registration?

[00:18:47] Speaker 02:
That would be my understanding.

[00:18:48] Speaker 02:
If it's reinstated, I believe it would probably be retroactive.

[00:18:55] Speaker 02:
And so it would assume that there's no lapse.

[00:18:58] Speaker 02:
I don't know that for certain.

[00:18:59] Speaker 02:
I've never seen this situation before.

[00:19:01] Speaker 02:
The normal situation, as they say in the notices, are if you miss it,

[00:19:08] Speaker 02:
You've lost it, and there's no way to get it back, absent finally a new trademark application, which Opposer Alphaware has done.

[00:19:17] Speaker 01:
Does your client or any third party play a role in the petition to reinstate?

[00:19:28] Speaker 02:
As I understand it, no.

[00:19:29] Speaker 02:
That's a petition.

[00:19:36] Speaker 02:
DR files is where you see it.

[00:19:38] Speaker 02:
It's not a motion that's laid to the board.

[00:19:41] Speaker 02:
So as I understand it, it's an ex parte motion that I don't have the ability to oppose.

[00:19:49] Speaker 04:
OK, Mr. Quinn, anything else?

[00:19:54] Speaker 02:
No, Your Honor.

[00:19:55] Speaker 04:
OK, then I thank both counsel, and this case is taken under submission.