[00:00:00] Speaker 00:
Mr. Day, whenever you're ready.

[00:00:06] Speaker 03:
Please, Court William Day, on behalf of the Appellant Charger Ventures LLC.

[00:00:11] Speaker 03:
I'm here because the trademark trial appeal or trademark refused registration based on a likelihood of confusion versus for a registered mark spark and ours spark living.

[00:00:27] Speaker 03:
I believe it is our argument that the board did not properly weigh the DuPont factors and it didn't explain how they weighed them in their refusal.

[00:00:38] Speaker 03:
As the court's aware from the evidence, there's considerable evidence of third-party use of the mark.

[00:00:43] Speaker 01:
Okay, counsel, I'm interested in your arguments about the manner in which the DuPont factors were addressed.

[00:00:52] Speaker 01:
Is it the case that the board has to

[00:00:57] Speaker 01:
make a full analysis, do more than what they did in this particular case?

[00:01:02] Speaker 01:
And especially, is it the case that the board is required by law to actually assign weight to one party over the other?

[00:01:12] Speaker 03:
I think that they should assign weight.

[00:01:16] Speaker 03:
I don't know if it's black-letter law, but there's many cases where they do assign weight.

[00:01:24] Speaker 03:
There's a likelihood it weighs heavily

[00:01:27] Speaker 03:
against likelihood of confusion or weighs heavily for confusion.

[00:01:31] Speaker 03:
In this case, we had significant third party uses of spark and spark formative marks in the real estate market, which is what this was for.

[00:01:40] Speaker 03:
And this court in 2015 had two cases that they reversed.

[00:01:46] Speaker 03:
One, Jack Wolfson had 14 uses of the mark in commerce.

[00:01:51] Speaker 03:
And juice generation had 26 uses.

[00:01:55] Speaker 03:
In this case, we've got 21 spark formative marks being used in commerce that were in evidence on the record here.

[00:02:03] Speaker 03:
In the way the board articulated it, they said there is some likelihood of weakness.

[00:02:10] Speaker 03:
It shows some weakness.

[00:02:11] Speaker 03:
They didn't articulate that this is

[00:02:13] Speaker 03:
It doesn't weigh heavily, or it does weigh heavily.

[00:02:15] Speaker 03:
They just said it's some sign of weakness, but we have to look at it in terms of the other factors as well.

[00:02:21] Speaker 00:
But that's what happens in these cases.

[00:02:23] Speaker 00:
There are a bunch of factors, and the board has to look at it.

[00:02:26] Speaker 00:
Well, it's not required, I guess, to look at every factor.

[00:02:28] Speaker 00:
But the ones that it does look at, then it has to weigh them.

[00:02:31] Speaker 00:
So that doesn't seem to me to be an unusual aspect of this case in terms of what they do in establishing the error.

[00:02:39] Speaker 03:
But with this court's de novo review of the weighing of the evidence, I don't think they did weigh the other considerable third-party uses at all, especially when this court has reversed for 14 uses and 26 uses.

[00:02:55] Speaker 03:
And this one had 21 spark formative uses.

[00:02:59] Speaker 03:
More if you add the international uses.

[00:03:02] Speaker 03:
This was all in evidence.

[00:03:03] Speaker 03:
These are all used in commerce as the chart

[00:03:07] Speaker 03:
in Appendix 14 shows, and the Trademark Tribal Court actually printed it in their decision.

[00:03:14] Speaker 03:
But that shows the uses.

[00:03:16] Speaker 03:
And I don't think they gave that sufficient weight in terms of a likelihood of confusion analysis.

[00:03:20] Speaker 03:
It's our argument.

[00:03:21] Speaker 02:
Have you found any cases where we've required the board to articulate with some degree of clarity how much weight they're giving to each of the factors?

[00:03:31] Speaker 03:
Nothing that requires it.

[00:03:33] Speaker 03:
But in terms of the way they wrote it,

[00:03:36] Speaker 03:
at least my reading of it, it doesn't show the weight they gave it if it was considerable at all.

[00:03:43] Speaker 03:
And I think it's our argument that the weakness of the mark, because of the other 21 uses of the spark form and mark, should have been just positive of that one DuPont factor.

[00:03:58] Speaker 00:
And I don't understand you said they didn't say it.

[00:04:01] Speaker 00:
Isn't there a quote from JA 15 where they say the board, I think the board specifically found that the third party uses meant that, quote, the term spark is used in association with real estate services has some commercial weakness?

[00:04:15] Speaker 03:
Some commercial weakness.

[00:04:17] Speaker 03:
But I don't think they gave that the weight that it deserves based on the other rulings from this court.

[00:04:23] Speaker 03:
They didn't give it the weight that it deserves from those users.

[00:04:27] Speaker 01:
You're saying that the board didn't take the next step and say that there's commercial weakness, and this way is in favor of the appellant.

[00:04:36] Speaker 01:
That would have been more helpful, I think.

[00:04:38] Speaker 03:
But that's one of the arguments.

[00:04:41] Speaker 01:
The other argument is they didn't get the legal authority for that.

[00:04:45] Speaker 03:
No.

[00:04:45] Speaker 03:
I don't get it.

[00:04:47] Speaker 03:
But the other point is they didn't

[00:04:51] Speaker 03:
give it, even with their argument, they didn't give it the weight that it should deserve with respect to other cases coming out of this court, the Jack Wolfskin and the Juice Generation cases.

[00:05:04] Speaker 03:
So looking at that commercial weakness, when you look at the other factors, I believe they dissected the mark improperly.

[00:05:15] Speaker 03:
Yes, they said spark as the first word is the dominant

[00:05:20] Speaker 03:
The dominant word but this also we add living to it.

[00:05:24] Speaker 03:
So that changes the site sounding connotation of the of the mark Taking that into consideration is one of the factors and the other factor is one focuses spark focuses on commercial real estate services and

[00:05:38] Speaker 03:
And that's specifically self-limited in their description on their trademark application, whereas Spark Living focuses on residential real estate services.

[00:05:49] Speaker 03:
And we self-limited based on that.

[00:05:50] Speaker 00:
To me, that was a central focus on why the board ended up where it did, because of the potential of the actual overlap with respect to commercial and residential real estate.

[00:06:02] Speaker 00:
And weren't there lots of marks that they had where people used both?

[00:06:07] Speaker 00:
with the same producer, the same person, was both in the commercial and the residential real estate market, right?

[00:06:16] Speaker 03:
Yes, they showed a lot of those.

[00:06:17] Speaker 00:
So there's a lot establishing that there's a great deal of overlap in the residential and the commercial real estate market.

[00:06:28] Speaker 00:
And that seemed to me to have really propelled their conclusions in this

[00:06:34] Speaker 03:
Right, but what's the purpose of having a self-limiting description?

[00:06:38] Speaker 03:
It's the rule in the trademark.

[00:06:42] Speaker 03:
It's a rule that you can further... I can't think of the word, but you can reduce your description of the mark, but you can't expand

[00:06:55] Speaker 03:
on the descriptions.

[00:06:56] Speaker 00:
Yeah, but we're looking at it from the point of view of consumers as well, right?

[00:07:00] Speaker 00:
Yes.

[00:07:00] Speaker 00:
And the likelihood of confusion.

[00:07:02] Speaker 00:
So whether you limit it to residential, whether in the minds of consumers, they're going to still confuse the connection between that and commercial real estate.

[00:07:13] Speaker 00:
So the distinction that you are drawing is not going to carry over into the marketplace.

[00:07:18] Speaker 03:
Right.

[00:07:18] Speaker 03:
But that goes back into the third-party uses in the marketplace, how it's not as distinctive

[00:07:24] Speaker 03:
because it's being used in residential services by 21 other companies that people are likely to see.

[00:07:31] Speaker 03:
And they're likely to look at them and know the differences because it's being used by other companies.

[00:07:42] Speaker 03:
And then that goes to the next one, which is consumer sophistication.

[00:07:47] Speaker 03:
We believe that a real estate transaction, they're going to be more sophisticated than just grabbing something off a shelf at a grocery store.

[00:07:54] Speaker 03:
And looking at that, they were going to realize, and they're going to do their due diligence and look into the companies, and that weighs against likelihood of confusion as well.

[00:08:07] Speaker 02:
Did the board give you some credit for that, though, in their way?

[00:08:11] Speaker 03:
Yes, they did, I believe.

[00:08:14] Speaker 03:
But looking at, I guess my main argument for this is they didn't give the weight that I think, based on other cases,

[00:08:22] Speaker 03:
of the 21 other spark formative marks.

[00:08:26] Speaker 02:
The argument ultimately is we review the weighing de novo and you think we should just weigh things differently than the board did.

[00:08:33] Speaker 03:
Yes, based on other cases that have come out of this court.

[00:08:36] Speaker 03:
I believe that.

[00:08:40] Speaker 01:
Is it further your argument that this court cannot undertake a de novo review if, in fact, the board did not complete its analysis and tell us

[00:08:51] Speaker 01:
Which factor weighs in favor of whom?

[00:08:56] Speaker 03:
Well, I mean, I think this court has the de novo review.

[00:08:59] Speaker 03:
So whether they articulated it sufficiently, I don't know if that would be helpful, I think, but in terms of this court being able to undertake a de novo review.

[00:09:10] Speaker 01:
That statement hurts your argument.

[00:09:16] Speaker 01:
I was very interested in the sufficiency of the board's opinion.

[00:09:20] Speaker 01:
Your statement now just gives clarity to it, that it doesn't matter how detailed it is.

[00:09:25] Speaker 01:
This is a Genoa review.

[00:09:27] Speaker 01:
Yes.

[00:09:29] Speaker 00:
Okay.

[00:09:29] Speaker 00:
What's the case for Genoa review on the wade?

[00:09:34] Speaker 03:
That would be QuickTrip West, Inc.

[00:09:40] Speaker 03:
versus Weigel Stores, Inc.

[00:09:41] Speaker 03:
984 F3rd, 1031, Federal Circuit 2021, citing Swagway, LLC versus International Trade Commission.

[00:09:50] Speaker 03:
nine thirty four after thirteen thirty two that's a two thousand eighteen case and that would be and uh... excited that in our uh... response on page one under argument is where i quote that you're into your rebuttal i have nothing to reserve on this one thank you good morning your honor uh... may it please the court council said

[00:10:18] Speaker 05:
The board did not give weakness the weight it deserved.

[00:10:23] Speaker 05:
It thinks it should have been something more than some commercial weakness.

[00:10:28] Speaker 05:
Number one, that's something that can't be done here.

[00:10:32] Speaker 05:
They're looking at that individual factor and saying it should have been more commercial weakness than the board found when it said some.

[00:10:40] Speaker 05:
And on substantial evidence, that's really not something that can be done.

[00:10:45] Speaker 05:
Council talked about the weighing of the DuPont factors in the case.

[00:10:49] Speaker 05:
The board explained exactly how it weighed them.

[00:10:52] Speaker 05:
It said which ones it found weighing for confusion, which ones it found weighing against confusion, and ultimately weighed them in finding that there is likely to be confusion.

[00:11:02] Speaker 00:
Is that weighing a legal, subject to legal review?

[00:11:07] Speaker 05:
Yes.

[00:11:07] Speaker 05:
That last part of the DuPont analysis where you take findings on the individual factors and weigh them together is performed in this court de novo.

[00:11:15] Speaker 05:
But we don't think there's any real reason here that that calculus ought to change, primarily because if you're going to be giving weight to commercial weakness in a particular case, that's usually in an ex parte case, that's a difficult position for the patent office to be in.

[00:11:36] Speaker 05:
The two cases that were cited, Jack Wolfskin and Juice Generation, were both inter partes cases, where the person whose mark is attacked as being weak

[00:11:44] Speaker 05:
can come back and give evidence of marketplace strength through their business practices and their sales success and their advertising and things of that nature and we at the patent office can't do that.

[00:11:54] Speaker 05:
So we think there ought to be some caution when doing that.

[00:11:57] Speaker 05:
I wanted to also point out that in

[00:12:00] Speaker 05:
The counsel mentioned that Jack Wolfskin, there were 14, I think, registrations in the case.

[00:12:06] Speaker 05:
That's actually not accurate.

[00:12:07] Speaker 05:
In that particular case, if you go back to the board's decision, which this court vacated, there were 94 registrations in the case and 28 examples of uses.

[00:12:18] Speaker 05:
That's far less than we have here.

[00:12:20] Speaker 05:
And that's what prompted that court to say it was ubiquitous or overwhelming evidence of third party use in that case.

[00:12:26] Speaker 05:
So we don't think that those particular cases govern here.

[00:12:30] Speaker 05:
Particularly when you have marks that are so close, the applicant's mark shares the same first word as the only word in the registered mark and adds a disclaimed descriptive term to it.

[00:12:42] Speaker 05:
So it's very close and there was really overwhelming evidence that the services are related, that lots of companies offer both commercial and residential real estate.

[00:12:52] Speaker 05:
services on their same website, which goes to the trade channels?

[00:12:56] Speaker 00:
That may be true.

[00:12:57] Speaker 00:
That's not instinctively obvious to me.

[00:13:00] Speaker 00:
There might be companies that offer the same services.

[00:13:04] Speaker 00:
But if you're looking at it from the perspective of the consumer, I'm not a consumer that says, OK, I want to do, it can be either commercial or residential real estate.

[00:13:13] Speaker 00:
It doesn't matter to me, or there's an overlap between.

[00:13:16] Speaker 00:
From the consumer's perspective, there's two very, very different avenues.

[00:13:22] Speaker 00:
And somebody who's interested in something in commercial real estate is not very likely, if likely at all, to be interested in residential and vice versa, right?

[00:13:33] Speaker 05:
We think that the board addressed that when it said that the people who are looking for commercial real estate are also people that have

[00:13:41] Speaker 05:
uh... there's a lot of overlap with people who look to those companies for residential real estate because they have to live somewhere uh... they're not there you know the when you're the people who look for commercial real estate actually have residential real estate and some of them would get it from the same companies and you know in that regard there's a finding i don't know if this is the one you're referring to but on appendix eleven of the board's opinion

[00:14:04] Speaker 00:
stuff kind of sticks out at me.

[00:14:06] Speaker 00:
When you're talking about the conditions of sale, consumers of applicant services are those that are seeking to list their residential property for sale or to lease their residential property to others or seek a property manager for their residential property.

[00:14:21] Speaker 00:
So that's all residential.

[00:14:22] Speaker 00:
And then it goes on to say, it is possible that consumers in need of at least

[00:14:28] Speaker 00:
of that at least encounter, applicants, real estate, and real estate services may also be consumers.

[00:14:35] Speaker 00:
It is possible.

[00:14:37] Speaker 00:
I mean, as we all know, anything's possible.

[00:14:40] Speaker 00:
Yeah, anything's possible.

[00:14:43] Speaker 00:
I can't refute that.

[00:14:44] Speaker 00:
But is that the standard we're supposed to be applying here?

[00:14:48] Speaker 05:
No, it's not possible.

[00:14:50] Speaker 05:
But if you look at the evidence that they were characterizing, it shows a number of different web pages for like Century 21, or Remax, or a number of other companies

[00:14:58] Speaker 05:
where on the same web page you have their residential drop-down menu and their commercial drop-down menu.

[00:15:05] Speaker 05:
And so there is evidence that when someone looks at a web page like that, they will encounter both of them.

[00:15:12] Speaker 05:
So the evidence actually shows that they would see them on the same web page.

[00:15:17] Speaker 05:
So I think that while the board probably qualified that, it didn't need to based on the evidence.

[00:15:26] Speaker 05:
And I'd like to point out one last thing.

[00:15:29] Speaker 05:
The marks here, there's really not much of an effort to say that the word spark is a weak term.

[00:15:38] Speaker 05:
There's only one registration in the record for something related to real estate services.

[00:15:44] Speaker 05:
It has a different second word, labs, and it's in color with the design.

[00:15:48] Speaker 01:
This is a really crowded field, isn't it?

[00:15:53] Speaker 05:
Not particularly, particularly when

[00:15:56] Speaker 05:
compared to Jack Wolfskin or Juice Generation.

[00:16:00] Speaker 01:
The evidence here shows that there's a significant number of businesses operating using the word SPARK in their name.

[00:16:09] Speaker 05:
There are a few.

[00:16:10] Speaker 05:
I'll give that.

[00:16:12] Speaker 05:
But some of the ones that were in that chart were foreign.

[00:16:15] Speaker 01:
Did the board examine that?

[00:16:16] Speaker 01:
I'm sorry?

[00:16:17] Speaker 05:
Did the board examine?

[00:16:18] Speaker 05:
Yes, the board did.

[00:16:19] Speaker 05:
The board looked at it carefully.

[00:16:20] Speaker 01:
You said there's quite a few.

[00:16:22] Speaker 01:
Is that what the board found?

[00:16:24] Speaker 05:
The board found that there were enough to convince it to find that there was some commercial weakness in the case.

[00:16:30] Speaker 05:
But notwithstanding that, the other factors such as the similarity of the marks and the similarity of the services outweighed that, because usually, as this court says, those are the two predominant factors.

[00:16:41] Speaker 01:
I thought that in this area, the board found that it's pretty much even here.

[00:16:46] Speaker 01:
Is that correct?

[00:16:48] Speaker 05:
What, the ultimate weighing?

[00:16:49] Speaker 05:
Yes.

[00:16:50] Speaker 05:
No, the board did not find that.

[00:16:51] Speaker 05:
The board found that

[00:16:53] Speaker 05:
That there was overlap.

[00:16:56] Speaker 05:
That there was overlap, I'm sorry, as to which factor?

[00:16:59] Speaker 01:
The board found that there was overlap in the commercial and residential source of the service.

[00:17:08] Speaker 04:
That's correct, Your Honor.

[00:17:09] Speaker 04:
That's what the board found.

[00:17:11] Speaker 01:
But did it resolve the overlap?

[00:17:14] Speaker 01:
I mean, so when Judge Pross was asking the questions, you centered on the word also.

[00:17:20] Speaker 01:
That to me signifies it can go either way.

[00:17:24] Speaker 05:
Oh, no.

[00:17:24] Speaker 05:
I think what the board was saying was that some customers will also encounter, if they're looking for residential real estate, will also encounter commercial real estate offerings.

[00:17:36] Speaker 05:
And that's what that evidence was pointing to.

[00:17:38] Speaker 01:
Do we apply a substantial evidence

[00:17:45] Speaker 01:
standard in any of this?

[00:17:47] Speaker 01:
I mean, we heard you say, and also your friend, that we're looking at a de novo review standard.

[00:17:58] Speaker 01:
Is there an underlying factual finding that we're not to touch?

[00:18:06] Speaker 05:
Well, you can't touch them, but it's the underlying DuPont factors themselves, the similarity of the marks, the services, the trade channels.

[00:18:15] Speaker 05:
things of that nature, those findings are all reviewed.

[00:18:20] Speaker 01:
We agree with the legal conclusion reached under the DuPont factors.

[00:18:24] Speaker 01:
We don't reach the underlying factual findings.

[00:18:28] Speaker 05:
You do review them for substantial evidence.

[00:18:32] Speaker 05:
Yes.

[00:18:33] Speaker 01:
But if we don't have a decision or anything that indicates from the board how it decided the case, then how can we say, how can we review for substantial evidence a decision if we don't have a decision?

[00:18:46] Speaker 05:
The board did explain at the very end of the decision, after it went through all of the individual factors, that then in the part of the decision marked conclusion, it actually went through how it weighed the factors.

[00:18:58] Speaker 05:
And it said, while we have found that the purchasers may exercise care given the nature of real estate services, there is insufficient evidence in the record regarding the degree of purchaser care of sophistication to overcome the close similarity of the marks and the relatedness of the services.

[00:19:16] Speaker 05:
And as we pointed out, those are the two predominant inquiries in almost any trademark case.

[00:19:22] Speaker 05:
Given those similarities, the board went on.

[00:19:24] Speaker 05:
as well as the overlapping channels of trade, we find that conclusion is likely.

[00:19:28] Speaker 05:
We make this conclusion despite our finding that there is some commercial weakness of the term spark in connection with real estate services.

[00:19:36] Speaker 05:
So the board actually went fairly far into telling everyone what its thinking was on this particular case and weighing the DuPont factors.

[00:19:47] Speaker 05:
So that in connection or in conjunction with the fact that substantial evidence

[00:19:53] Speaker 05:
supports its finding on all of those factors, we think that the court ought to affirm this particular judgment.

[00:20:00] Speaker 02:
I just want to make sure I follow on the standard of review.

[00:20:03] Speaker 02:
The only thing in that paragraph on A-19 that we reviewed de novo is the ultimate weighing as to the legal conclusion as to whether confusion is likely.

[00:20:15] Speaker 02:
Is that right?

[00:20:16] Speaker 02:
That's correct.

[00:20:16] Speaker 02:
And each of those subsidiary factors you say we reviewed just for substantial evidence?

[00:20:21] Speaker 04:
That is correct, Your Honor.

[00:20:22] Speaker 01:
Does the board ever use the word weigh in its decision?

[00:20:27] Speaker 05:
I did not do a search for the word weighing, but I think it's clear from the passage I read that it was sort of looking at the findings that it made and weighing them together.

[00:20:37] Speaker 05:
If there are no further questions, I'll yield back the rest of my time.

[00:20:41] Speaker 05:
Thank you.

[00:20:43] Speaker 00:
Mr. Day, you've got some rebuttal time.

[00:20:45] Speaker 00:
Thank you, Your Honor.

[00:20:48] Speaker 03:
I would just conclude

[00:20:52] Speaker 03:
that the board has stated its policy to resolve any doubt as the registerability of a mark by publishing it for opposition.

[00:21:05] Speaker 03:
I would argue that there is enough doubt in this case with all the facts and the evidence and the record that it should be published for opposition.

[00:21:19] Speaker 03:
Uh, and to out to, to, um, to remedy this.

[00:21:25] Speaker 03:
So unless there's any other questions, I have nothing further for the court.