[00:00:12] Speaker 01:
May it please court my name is Michael Bradford and I'm here on behalf of the appellant Spirian Inc.

[00:00:21] Speaker 01:
This is a TTAB case and appeal from the TTAB case and primary purpose of the Trademarks Office principal register is to provide public notice.

[00:00:31] Speaker 01:
I think it's important to understand

[00:00:34] Speaker 01:
the state of the principal register at the time that the appellant filed his application.

[00:00:39] Speaker 01:
So in late 2018, Spearian filed an application to register FLFLEX for electronic tracking devices for trailers and cargo containers.

[00:00:50] Speaker 01:
It was approved by the Trademark Office.

[00:00:53] Speaker 01:
for publication over numerous marks that contained the Flex term and include Appellee's Flex mark for supply chain management and logistics, as well as electronics design, development, and manufacture, and its Flex Pulse mark for those same services and also software for supply chain management.

[00:01:14] Speaker 01:
But it also registered over another mark for Flex for computer software used for logistics management, another mark

[00:01:22] Speaker 01:
Flex for computer software platforms for use in managing supply chains.

[00:01:28] Speaker 01:
Another mark, Flex for transportation controllers for use with vehicles, so electronic devices.

[00:01:36] Speaker 01:
SC Flex.

[00:01:38] Speaker 01:
for software for managing supply chains, as well as 15 other marks that were registered that included FLEX for logistics and supply chain related goods and services, much less hundreds of other FLEX marks for a realm of other goods and services.

[00:01:54] Speaker 01:
And of course, FLFLEX was approved over this landscape of marks, as I would have expected.

[00:02:01] Speaker 01:
And this court explained in Jews Generation and Jack Wolfskin, when a portion of a mark appears in numerous third-party registrations and is used by numerous entities, that term is weak.

[00:02:15] Speaker 01:
And here, it's not just a portion of the mark appearing in multiple registrations.

[00:02:20] Speaker 01:
The entirety of the mark flex appears in numerous registrations by itself.

[00:02:26] Speaker 01:
And in such a case where a term is weak,

[00:02:29] Speaker 01:
The one entities rights in that term are limited and other entities can coexist if they have relatively minor differences in the marks or the goods and services Here flex again.

[00:02:44] Speaker 01:
It's very weak three flex registrations for very similar almost identical services flex for electronic devices SC flex for software for supply chain management, and so I'm a patent and trademark attorney and

[00:02:59] Speaker 01:
In addition to appeals, one of the trademark attorney's jobs is clearing trademarks.

[00:03:04] Speaker 01:
And the primary source that we rely on when we clear trademarks are the Trademark Office principal register.

[00:03:10] Speaker 01:
And if Spearian had come and said, well, I'd like to register FLFLEX, we'd have looked at the principal register.

[00:03:17] Speaker 01:
and said, well, these marks register, these flex, identical flex marks registered over each other and many other registrations containing the flex term.

[00:03:26] Speaker 01:
You have the additional FL term, the FL flex mark.

[00:03:29] Speaker 01:
You're selling tracking products that are different than what these other entities have registered their marks for.

[00:03:37] Speaker 01:
So if they're able to register, they're more similar to each other than you are to them, your mark should be fine to be registered.

[00:03:46] Speaker 01:
So if the TTAB's decision in this case is right, the principal register is not serving its purpose.

[00:03:52] Speaker 01:
It's flawed.

[00:03:54] Speaker 01:
It can't be relied on.

[00:03:55] Speaker 01:
It's not serving a public notice function.

[00:03:57] Speaker 03:
Counselor, the board found that it found 30 examples of registered marks.

[00:04:02] Speaker 03:
They use the term flex, correct?

[00:04:04] Speaker 01:
Excuse me.

[00:04:05] Speaker 03:
It found around 30 instances on the register where the term flex is used.

[00:04:11] Speaker 01:
I don't have the exact, that sounds correct.

[00:04:13] Speaker 03:
But then the board went on and said 10 should be given no weight.

[00:04:17] Speaker 03:
15 included other letters or words in addition to flex.

[00:04:25] Speaker 03:
And overall, they found that it reduced the number of registrations from about 30 to five.

[00:04:34] Speaker 01:
Correct, Your Honor.

[00:04:35] Speaker 01:
And I think that's actually a legal error on their part.

[00:04:37] Speaker 01:
The Jewish Generation case,

[00:04:39] Speaker 01:
explains that composite marks must be considered to determine if a portion is weak.

[00:04:44] Speaker 01:
So if they take away composite marks and just focus on marks that only have that term, that's not a correct analysis.

[00:04:52] Speaker 03:
What about expired marks?

[00:04:54] Speaker 01:
Well, I agree.

[00:04:55] Speaker 01:
And expired marks actually were not in the chart in our briefs.

[00:04:58] Speaker 01:
We took out the expired marks and we actually took out the marks that the trademark office

[00:05:02] Speaker 01:
said were not relevant to supply chain and logistics.

[00:05:05] Speaker 01:
So the marks in here are just the ones that they did consider and then ones they did not consider because they're composite marks.

[00:05:13] Speaker 01:
And I think it's interesting to note, they did not consider, for example, SCFLEX because it has different letters that create a different commercial impression.

[00:05:23] Speaker 01:
FLFLEX has two additional letters.

[00:05:27] Speaker 01:
So if SCFLEX creates a different commercial impression than FLEX,

[00:05:32] Speaker 01:
then surely FL-Flex also creates a different commercial impression.

[00:05:35] Speaker 03:
But one was one word and FL-Flex is two.

[00:05:39] Speaker 01:
I think that's not a material alteration.

[00:05:45] Speaker 01:
Just having a space between the letters doesn't material or alter the commercial impression of a mark.

[00:05:51] Speaker 01:
I don't believe consumers are going to see a space and be like, oh, that alters the commercial impression of the FL-Flex mark.

[00:06:00] Speaker 01:
So that is one of the legal areas here.

[00:06:04] Speaker 01:
But even if they were correct in disregarding the vast majority of the registrations, the fact remains that three registrations for flex by itself registered over each other for services are much more similar to themselves than what Spearian is providing.

[00:06:23] Speaker 01:
So that just shows extreme weakness.

[00:06:28] Speaker 01:
And the TTAB did not

[00:06:31] Speaker 01:
They didn't conduct any substantive review of those registrations.

[00:06:34] Speaker 03:
The board went back and looked at deuce generation and some of the other cases, Jack Wolfenstein, and said that in this case, we don't reach the same numerous amount of registrations in most cases.

[00:06:47] Speaker 01:
Yeah, and they did say they're wrong.

[00:06:49] Speaker 03:
But isn't this a substantial evidence issue?

[00:06:52] Speaker 03:
At the end of the day, isn't the board looking at what's before it and decided whether that's numerous or not?

[00:06:59] Speaker 01:
Well, I believe

[00:07:02] Speaker 01:
The failure to consider the composite marks is legal error.

[00:07:08] Speaker 04:
But if you consider the composite marks, the numbers are similar to Jules and Robinson.

[00:07:13] Speaker 01:
Correct, if you do.

[00:07:14] Speaker 01:
And actually, I think more.

[00:07:17] Speaker 01:
So if they had considered it, but if this is just a numbers game, and I think that's an incorrect analysis, then I still think we should properly be found to be more evidence than the prior cases.

[00:07:31] Speaker 01:
But I still think it's an error just to focus on the number of registrations.

[00:07:36] Speaker 01:
Instead, they should have focused on the substance of three identical flex registrations.

[00:07:41] Speaker 01:
And when you take the weakness of flex in the proper context, the addition of FL to the FL flex mark is sufficient to create a different commercial impression.

[00:07:56] Speaker 01:
And the TTAB just waved FL away.

[00:07:59] Speaker 01:
They said, well, FL, that's just two letters.

[00:08:01] Speaker 01:
It's non-distinctive.

[00:08:03] Speaker 01:
So I believe that's legal here.

[00:08:04] Speaker 01:
You're required to consider marks in their entireities.

[00:08:08] Speaker 01:
You can't just wave away two letters because you don't think two letters can

[00:08:14] Speaker 01:
be distinctive.

[00:08:16] Speaker 01:
Whereas, again, they said SC flex.

[00:08:17] Speaker 02:
Is it significant that FL identifies a whole series of products?

[00:08:25] Speaker 01:
Well, I think that does show it's a house mark.

[00:08:29] Speaker 01:
These are supposed to be considered as they're seen in the marketplace.

[00:08:33] Speaker 01:
Consumers see FL1, FL2, FL3, FL Solar, FL Flex.

[00:08:39] Speaker 01:
The marketplace, they're not going to say, oh, that FL Flex mark is Flextronics.

[00:08:43] Speaker 01:
or FlexLimited, that they have seen a line of products.

[00:08:50] Speaker 01:
And that further shows the differences in the goods and services here.

[00:08:54] Speaker 01:
And for example, as it's a CCPA decision, but it's my understanding that applies here, the Cottonburg decision in CCPA says that only strong marks are assertable against non-competitive products.

[00:09:09] Speaker 01:
And FlexLimited, this isn't,

[00:09:11] Speaker 01:
This isn't a strong mark.

[00:09:14] Speaker 01:
At a minimum, I think we can say that.

[00:09:16] Speaker 01:
And the Flex Limited has not asserted rights to electronic devices.

[00:09:24] Speaker 01:
They have not asserted rights to tracking products in particular.

[00:09:27] Speaker 01:
And I think it's important then to look at Flex, another entity has registered Flex for electronic devices that are integrated into vehicles.

[00:09:39] Speaker 01:
And other entities that are included here have FLEX in their names with other words.

[00:09:44] Speaker 01:
For example, BAD-ELF-FLEX is registered, I believe they're next on the appeal, for GPS apparatuses.

[00:09:51] Speaker 01:
And VDO-FLEX-LITE is registered for, I believe, also GPS apparatuses.

[00:09:56] Speaker 01:
So the differences in the MARS and the differences in the goods and services here are more than sufficient to avoid a likelihood of confusion

[00:10:06] Speaker 01:
especially when you consider the weakness of flex, which is a highly suggestive term.

[00:10:11] Speaker 01:
Flex is used all the time to suggest flexibility.

[00:10:15] Speaker 01:
And for the TTAB, just to ignore the suggestive context of what flex means, for them to ignore the huge number of third parties that have registered and used flex marks, I think is in legal error.

[00:10:33] Speaker 02:
So I believe Even if we don't go with you on that and I make no judgment about the fact that the board

[00:10:46] Speaker 02:
concentrated on the describing and deciding flex plus well miss reading flex pulse.

[00:10:55] Speaker 01:
I didn't raise that.

[00:10:57] Speaker 02:
They didn't they didn't they didn't even they didn't even analyze pulse.

[00:11:02] Speaker 01:
I think I think that shows why I'm just surprised that occurred.

[00:11:06] Speaker 02:
Now I'm just wondering if you don't think that's an independent reason to send it back.

[00:11:10] Speaker 01:
I think that's an independent reason to have it vacated, but I believe this should be reversed in its entirety.

[00:11:17] Speaker 02:
Well, I know you do, but who does not?

[00:11:20] Speaker 01:
Well, sure, I'll take that as well.

[00:11:21] Speaker 02:
Well, I don't worry.

[00:11:22] Speaker 02:
I asked him, too.

[00:11:24] Speaker 02:
But that seems pretty significant, how it happened.

[00:11:27] Speaker 01:
They didn't even mention the actual trademark.

[00:11:33] Speaker 01:
I agree.

[00:11:34] Speaker 01:
For the flex pulse mark, that is the grounds.

[00:11:38] Speaker 01:
But I think just the flex mark by itself is also incorrect.

[00:11:41] Speaker 04:
But it's not.

[00:11:42] Speaker 04:
The flex pulse error is not independent around the reversal or the remand because even if we would agree that they made a mistake there, if we agree with their analysis of the FL flex slash flex

[00:12:02] Speaker 04:
situation.

[00:12:03] Speaker 04:
That in itself is sufficient to affirm, right?

[00:12:07] Speaker 01:
Well, so FlexPulse has additional goods and services.

[00:12:11] Speaker 01:
So I believe it would still need to be vacated for full consideration of the scope of the goods and services for which they did look at the market.

[00:12:26] Speaker 04:
You mean the FlexPulse ground is applicable for some goods and services that

[00:12:32] Speaker 01:
So FlexPulse, sorry, FlexPulse is also registered for computer software for supply chain management.

[00:12:41] Speaker 01:
That Flex is not.

[00:12:43] Speaker 01:
So if the grounds are based on that at all, that would be an independent.

[00:12:52] Speaker 03:
Isn't this harmless, Jared?

[00:12:54] Speaker 03:
that we're looking at, because if there's a finding that just FLEX alone causes a likelihood of confusion, what does it matter if you add something to it or not, like a FLEX test?

[00:13:08] Speaker 03:
If FLEX... If you can't register FLEX, you're out, right?

[00:13:13] Speaker 01:
Yeah, well, but we're registering FLFLEX, which I think is at Stink-a-Mar, but if

[00:13:19] Speaker 01:
If the ground is based at all on the different goods and services that are in flex pulse, then that has to be sent back.

[00:13:27] Speaker 01:
But if the determination is that flex, that there is a likelihood of confusion with flex for the goods and services that are in both the flex and flex pulse marks, then I would tend to agree with you.

[00:13:45] Speaker 01:
I just think that would be incorrect decision.

[00:13:50] Speaker 01:
Thank you your honor may please the court

[00:14:09] Speaker 00:
The issue in this case is that there's a likelihood of confusion between Spurion's proposed FL flex mark and the flex flex stylized and flex pulse marks.

[00:14:19] Speaker 04:
Isn't there an inconsistency in the board's decision here in respect to the analysis of the flex opposition because they've said the addition of FL flex making a composite mark makes no difference

[00:14:35] Speaker 04:
but then they've dismissed a lot of registrations and uses on the grounds of their composite marks.

[00:14:41] Speaker 04:
That doesn't seem consistent, and they make no effort to represent that.

[00:14:46] Speaker 00:
Your Honor, Your Honor, this Court's precedent is clear that

[00:14:51] Speaker 00:
when comparing marks, composite marks must be viewed in their entirety.

[00:14:55] Speaker 00:
But every time this court has said that, they've added a caveat that the board can and should exercise reasoned judgment to identify aspects of the marks that are more dominant than others.

[00:15:07] Speaker 04:
They don't say that there's a difference in the nature of the composite marks.

[00:15:11] Speaker 04:
They dismiss the registrations and uses simply on the ground that they are composite.

[00:15:17] Speaker 04:
respectfully your honor I don't believe that's accurate they actually did include show me where it's not accurate they included of the five marks that they included in the in the final comparison two of them were composite marks load flex and value flex show me where the board set what you're saying I don't see that all I see is they dismiss registrations and uses on the ground if they have additional interest

[00:15:45] Speaker 00:
Your Honor, I believe what they said was they have additional features that detract from the word flex, which they viewed as... So many words.

[00:16:07] Speaker 04:
Oh, I see.

[00:16:08] Speaker 04:
Page 60, they talked about these marks contain additional elements, and they're the same

[00:16:14] Speaker 04:
thing is true at 65 where they are talking about uses and they say additional elements.

[00:16:25] Speaker 00:
Did you say additional elements?

[00:16:26] Speaker 04:
There's no explanation as to why the additional elements here are different from the FL flex deposit.

[00:16:35] Speaker 00:
Well, Your Honor, to

[00:16:39] Speaker 00:
Talk about the SC flex mark, which is at the centerpiece.

[00:16:43] Speaker 04:
Answer my question.

[00:16:44] Speaker 04:
My question is they don't explain other than saying they contain additional features, right?

[00:16:50] Speaker 00:
I believe, I'm not finding a specific comment here, but I believe what they said was they're additional.

[00:16:56] Speaker 04:
No, it's not what you believe they said.

[00:16:58] Speaker 04:
You've got to show us what they said.

[00:17:03] Speaker 00:
Okay, so what they said on page 16 of the decision is 15 of these marks are compound terms, including another word or letters in addition to flex, that change the overall meaning and or commercial impression of the marks as a whole.

[00:17:18] Speaker 00:
So they made a factual finding, not just that these composite marks had additional elements, but those additional elements change the overall meaning and or commercial impression of the marks as a whole.

[00:17:29] Speaker 00:
And I think that was a valid factual finding on the board under the substantial evidence standard.

[00:17:37] Speaker 04:
And where do they say something similar about the uses?

[00:17:42] Speaker 00:
Well, the use marks, Your Honor, I believe, were in the context of the commercial strength, which they found to not favor flex.

[00:18:14] Speaker 00:
Well, on page 21 to 22, they say, you find at the bottom, beginning at the bottom of page 21, Appendix 64, you therefore find of low probative value applicants evidence of third-party use of marks and names associated with the relevant goods and services.

[00:18:31] Speaker 04:
That's a different point.

[00:18:37] Speaker 04:
They just say additional elements that cause many of them to be less similar.

[00:18:41] Speaker 00:
that cause them to be less similar.

[00:18:42] Speaker 00:
It's not the fact that the additional elements exist, it's the fact that the additional elements cause the marks to be less similar.

[00:18:50] Speaker 00:
And if you look at the way SC flex actually appears in the register, you can see this is different from FL flex.

[00:18:57] Speaker 00:
This is SC in large bold letters and flex in small italicized letters.

[00:19:03] Speaker 04:
It's not a registration in standard character?

[00:19:06] Speaker 04:
It's not a standard character registration?

[00:19:08] Speaker 00:
No, unlike the FL-FLEX proposed registration, which is a standard character registration, which is, I think, an important point the board made.

[00:19:17] Speaker 00:
In particular, in regard to the FLEX-Stylized mark, the board noted that if Spurion's registration were to go through, they could simply add FL in front of FLEX-Limited's FLEX-Stylized mark.

[00:19:29] Speaker 04:
Is the SC-FLEX registration a standard registration or a stylized registration?

[00:19:36] Speaker 00:
This is how it appears in the register, Your Honor.

[00:19:39] Speaker 00:
It's this stylized logo.

[00:19:42] Speaker 04:
Yeah, but what does the registration say?

[00:19:46] Speaker 04:
Does it say standard character?

[00:19:53] Speaker 00:
The mark consists of SC flex and a stylized font under description of mark, and that's appendix 1113.

[00:20:01] Speaker 00:
Okay.

[00:20:03] Speaker 00:
So the board's factual finding and its factual decision to cull the list of relevant marks down was well supported by the record and on all fours of this court's precedents.

[00:20:18] Speaker 04:
In the Copeland-Smith case, we decided that- You're not to thank that there are three uses of registrations here that are virtually identical.

[00:20:28] Speaker 04:
the use of flex term standing alone.

[00:20:31] Speaker 00:
That is part of the, under the Juice Generation and Jack Wolfskin cases, those can be considered as evidence of third party use that would weaken a mark.

[00:20:42] Speaker 00:
But the Jewish generation in Jack Wilson cases are clear that in order for third party use to weaken a registered mark, there must be extensive ubiquitous voluminous widespread use by third parties.

[00:20:56] Speaker 03:
What does that mean in terms of actual numbers?

[00:20:59] Speaker 03:
Ubiquitous?

[00:21:01] Speaker 00:
Your Honor, I don't know that there is a specific over-under under that standard.

[00:21:06] Speaker 00:
It is a factual determination that the board is entitled to make.

[00:21:10] Speaker 00:
In Juice Generation, there were 26 third-party uses that were found relevant.

[00:21:14] Speaker 00:
In Jack Wolfskin, there were 14.

[00:21:16] Speaker 00:
Here, there are five.

[00:21:17] Speaker 00:
And the board made a factual finding that that was not sufficient to weaken the protection of flex limit and flex marks.

[00:21:31] Speaker 00:
I think it's helpful to take a step back and look at the standard of review on the subsidiary factual findings.

[00:21:40] Speaker 00:
It is true that the ultimate conclusion of likelihood of confusion is a legal determination that's reviewed de novo.

[00:21:48] Speaker 00:
But the subsidiary factual findings are reduced for substantial evidence.

[00:21:52] Speaker 00:
The substantial evidence standard under this court's precedent simply states that if there are two possible outcomes based on the evidence, as long as the board's conclusion was reasonable and supportable, it should stand.

[00:22:05] Speaker 00:
The Copeland-Smith case has some very useful guidance on this.

[00:22:10] Speaker 00:
In that case, this court found that the appellant did nothing more than raise arbitrary disagreement with the board's findings regarding the impact of the evidence.

[00:22:18] Speaker 00:
The court in that case acknowledged that comparing marks is subjective and fact-dependent.

[00:22:25] Speaker 04:
Well, it is not subjective and fact-dependent if it's exactly the same mark for the same goods.

[00:22:31] Speaker 04:
And where did Wolfson and Deuce

[00:22:35] Speaker 04:
say that that's irrelevant?

[00:22:39] Speaker 00:
For the exact same marks and the exact same goods, it is relevant.

[00:22:43] Speaker 00:
But having only three instances is not sufficient under those precedents.

[00:22:49] Speaker 00:
Why not?

[00:22:50] Speaker 00:
Because it's not widespread ubiquitous and voluminous use of the mark by third parties.

[00:22:55] Speaker 04:
But are those cases saying that where it's identical mark for identical goods, that you have to have some large number of competing marks?

[00:23:07] Speaker 00:
Those cases didn't say, what the cases say is third-party use in general must be ubiquitous and voluminous.

[00:23:15] Speaker 00:
The cases don't say that if you have one, two, three, four, or five identical uses of the mark for the same goods, then that undercuts an inherently distinctive mark, which is- Did the court-induced generation make that statement in establishing a standard or a level that must be met?

[00:23:34] Speaker 03:
And if so, isn't that a question of law?

[00:23:39] Speaker 00:
No, Your Honor, it's a question of fact.

[00:23:41] Speaker 00:
Because in those cases, like I said, the court-induced generation in Jack Wolfskin did not set a minimum number of third-party uses that would show weakness of the mark.

[00:23:53] Speaker 00:
It's a factual determination that is qualitative and quantitative.

[00:23:57] Speaker 03:
It compares the similarity of the marks, which- But here it said, after the culling, we're only left with five marks because they're not ubiquitous.

[00:24:09] Speaker 03:
And there's not a plethora of these marks.

[00:24:14] Speaker 03:
We find them to be of low probative weight.

[00:24:18] Speaker 00:
Yes, Your Honor.

[00:24:19] Speaker 00:
And that was a factual determination based on the evidence.

[00:24:23] Speaker 00:
And they were seeking guidance.

[00:24:24] Speaker 00:
They were drawing guidance from this court's precedent.

[00:24:27] Speaker 03:
But what does ubiquitous mean in that context?

[00:24:32] Speaker 00:
Your Honor, it's a factual determination, is all I can say.

[00:24:35] Speaker 04:
It's the... Yeah, but how is it that it's fair to allow the second and third people to register the same work and the same goods, but then the fourth person comes along, who should have a stronger case, and the second and third person is denied registration?

[00:24:52] Speaker 04:
How do you justify that?

[00:24:55] Speaker 00:
Well, as a procedural matter, this is the mark that this mark caught our attention because they sent us a cease and desist letter saying that there was a risk of confusion between our two marks.

[00:25:06] Speaker 00:
So we filed an opposition.

[00:25:07] Speaker 04:
OK, but you're not addressing my question.

[00:25:10] Speaker 00:
Well, Your Honor, I believe just as a procedural matter, the fairness comes from the fact that we had a statutory right to a cause of action.

[00:25:17] Speaker 04:
Please address my question.

[00:25:19] Speaker 04:
Why is it fair to say that the second and the third

[00:25:23] Speaker 04:
can register that same mark for the same goods.

[00:25:26] Speaker 04:
And the fourth person comes along and should have a stronger case.

[00:25:30] Speaker 04:
And you say, oh, no, no, the fourth person can't register.

[00:25:34] Speaker 00:
There's not a final factual and legal determination that those first three should have been allowed over the flex marks in the context of an opposition proceeding.

[00:25:45] Speaker 02:
Was it ever raised?

[00:25:47] Speaker 00:
Not that I'm aware of, Your Honor.

[00:25:48] Speaker 02:
Well, then there wouldn't be, would there?

[00:25:51] Speaker 00:
No, Your Honor.

[00:25:52] Speaker 00:
Like I said, the reason we're here is because we caught sight of this one.

[00:25:56] Speaker 02:
But that doesn't solve the problem that Judge Kikas raised.

[00:26:01] Speaker 00:
Well, Your Honor, if the contrary approach would be if there's even one identical mark for similar goods and services,

[00:26:13] Speaker 00:
then the floodgates are open and anybody can file confusingly similar marks for goods and services.

[00:26:18] Speaker 00:
I don't think that's fair either.

[00:26:20] Speaker 00:
That's not what the law says.

[00:26:21] Speaker 04:
Well, but it's up to the trademark holder to police its marks, right?

[00:26:26] Speaker 04:
Yes, Your Honor, and we did that here, and we got a fair... Police the mark with respect to the first and second similar identical administrations, too.

[00:26:36] Speaker 00:
Your Honor,

[00:26:37] Speaker 00:
We do police our marks.

[00:26:38] Speaker 00:
We police our marks very aggressively.

[00:26:40] Speaker 00:
I don't know the circumstances under which those first three marks were allowed through.

[00:26:45] Speaker 00:
But I do not believe that the law commands that a first, second, or third registration that slips past the goalie opens the floodgates for everybody else to register their own identical and confusionally similar marks.

[00:27:00] Speaker 00:
Or not identical, but confusionally similar marks.

[00:27:02] Speaker 00:
I don't believe the law says that.

[00:27:04] Speaker 00:
What the law says is,

[00:27:06] Speaker 00:
if there is a strong mark or if there is a mark that's entitled to the normal scope of protection, which the flex marks are, if there is similarity between the marks, if there's similarity of the goods and services, if there's similarity

[00:27:21] Speaker 00:
of the trade channels and customers, all of which were found in Flex's favor here, then the senior mark holder is entitled to bring a cause of action to oppose the mark.

[00:27:32] Speaker 00:
And if there is ubiquitous third-party use, more than three, more than five, then our mark is weakened.

[00:27:44] Speaker 03:
Where does this say more than three or five?

[00:27:47] Speaker 00:
It doesn't.

[00:27:49] Speaker 03:
Why do you say that?

[00:27:51] Speaker 00:
The board found that five was not ubiquitous.

[00:27:55] Speaker 00:
That is a factual determination.

[00:27:56] Speaker 00:
They were drawing guidance from Jewish generation and Jack Wolfskin.

[00:28:00] Speaker 00:
They said, this isn't as high as those.

[00:28:02] Speaker 04:
OK, but those, we're talking about a different situation.

[00:28:05] Speaker 04:
We're talking about identical marks for identical goods.

[00:28:08] Speaker 04:
I understand, Your Honor.

[00:28:09] Speaker 04:
And I thought you agreed that they don't have to be ubiquitous under those circumstances.

[00:28:15] Speaker 00:
No, I don't agree with that.

[00:28:16] Speaker 00:
I think even identical marks is part of the overall inquiry into the third-party landscape and how widely used and ubiquitous and voluminous third-party use of the same or similar marks is.

[00:28:35] Speaker 00:
I keep coming back to this.

[00:28:37] Speaker 00:
I believe it's a factual determination.

[00:28:38] Speaker 00:
I think it would be reasonable for the board to conclude if there were, let's say, three identical marks and 10 similar marks.

[00:28:46] Speaker 04:
But my recollection would be, shall we, if I'm wrong, is that the board here was dismissive of the identical marks, right?

[00:28:54] Speaker 04:
And those, in fact, they weren't ubiquitous, right?

[00:28:58] Speaker 00:
Right, as part of the five total marks.

[00:29:02] Speaker 04:
That seems to be the wrong standard, right?

[00:29:06] Speaker 00:
I just read, Your Honor, I think the entire field of third-party use must be ubiquitous under Juice Generation and Jack Wolfskin.

[00:29:12] Speaker 00:
Now, if the third-party use is more tilted toward identical marks, maybe a lower number would be satisfactory, but the Board's review of the factual record and the factual determination as to the

[00:29:25] Speaker 00:
impact of those third-party uses and third-party registrations is reviewed for substantial evidence and was thorough and reasonable.

[00:29:33] Speaker 02:
Let me ask you before your time runs out.

[00:29:35] Speaker 02:
What do you suggest we do with what the Board did on Pulse and PLOS by not even recognizing the mark?

[00:29:46] Speaker 00:
That was an unfortunate, harmless error by the board, Your Honor.

[00:29:50] Speaker 02:
That's your position.

[00:29:51] Speaker 00:
Yes, Your Honor.

[00:29:52] Speaker 00:
Under the Omaha Stakes case, there was a typo in the board's decision in that case, and this court said, well, this is an obvious typo, the balance of error.

[00:30:00] Speaker 02:
This wasn't a typo.

[00:30:02] Speaker 02:
They decided to taste on that basis.

[00:30:05] Speaker 00:
The board did not decide the case on that part of the case on that basis.

[00:30:09] Speaker 00:
Well, that was one paragraph in the similarity of the marks.

[00:30:12] Speaker 00:
You can take out that paragraph, and we still win similarity of the marks.

[00:30:16] Speaker 00:
You can take out similarity of the marks.

[00:30:18] Speaker 02:
Well, we're bound by what they did.

[00:30:20] Speaker 00:
Under the harmless error, what I'm saying is you can treat that as a harmless error, excise that paragraph entirely from the board's decision.

[00:30:31] Speaker 00:
and we would still support sustaining our opposition.

[00:30:34] Speaker 03:
But the problem is that the board has to look at the entirety of the mark.

[00:30:41] Speaker 03:
And here, it obviously didn't do that.

[00:30:43] Speaker 03:
I'm just wondering to what extent does that taint all the other decisions that have been made?

[00:30:49] Speaker 03:
And you heard my example of harm that I made to opposing counsel.

[00:30:53] Speaker 03:
But setting that aside, isn't this a pretty egregious error on the part of the board?

[00:31:01] Speaker 00:
I wouldn't want to call it egregious, Your Honor.

[00:31:03] Speaker 00:
I think it's an unfortunate, harmless error, as I said.

[00:31:05] Speaker 00:
I think if you remove that paragraph and just focus on flex and flex stylized, particularly in light of the plain lettering nature of the proposed registration, there is so much likelihood of confusion as to flex and flex stylize independent of the flex pulse issue that the board's decision could be sustained on that basis.

[00:31:34] Speaker 04:
Mr. Bradford, you have two minutes.

[00:31:38] Speaker 01:
Thank you, Your Honor.

[00:31:39] Speaker 01:
I mean, I think I have an answer to why Appellee may have had trouble answering the question about multiple identical marks.

[00:31:48] Speaker 01:
It's because Flex Limited is the third registrant.

[00:31:52] Speaker 01:
Flex registered its Flex mark over registration

[00:31:57] Speaker 01:
a registration for Flex, for computer software for logistics management.

[00:32:02] Speaker 01:
Another registration for Flex, for computer software platforms for use in supply chain management.

[00:32:09] Speaker 01:
So it wasn't up to them to police the mark.

[00:32:13] Speaker 01:
They're the third registrant.

[00:32:16] Speaker 01:
So now they come in and say, well, our rights are broader.

[00:32:21] Speaker 01:
But the fact is they obtained registrations over very similar, almost identical,

[00:32:27] Speaker 01:
goods and services for the flex mark.

[00:32:31] Speaker 01:
And as far as the juice generation case, they explained at page 1338 in juice generation that the bulk of the marks they were looking at included other terms in addition to the terms at issue that they found to be weak.

[00:32:47] Speaker 01:
So there, the bulk included other terms.

[00:32:50] Speaker 01:
And there was no suggestion that that all of a sudden meant that those terms were, that those marks should not be considered.

[00:32:58] Speaker 01:
So here, three identical flex term marks, much more similar to each other than our clients.

[00:33:06] Speaker 01:
And then when you put in the whole universe of flex composite marks, I think we've far exceeded the ubiquitous and extensive use of flex and marks in the logistics and supply chain management field.

[00:33:19] Speaker 01:
So we don't believe there's any confusion here.

[00:33:23] Speaker 04:
Is the SC flex mark a stylized registration?

[00:33:26] Speaker 01:
I just looked and it is stylized.

[00:33:28] Speaker 04:
There's no design, but it is stylized registration.