[00:00:00] Speaker 05:
Second appeal to be argued this morning is appeal number 22-1744, Universal Life Church Monastery Storehouse versus American Marriage Ministries.

[00:00:14] Speaker 05:
Mr. Maske.

[00:00:15] Speaker 05:
Whenever you're ready.

[00:00:17] Speaker 05:
Am I pronouncing that right?

[00:00:19] Speaker 05:
It's Miteski.

[00:00:20] Speaker 05:
Miteski, OK.

[00:00:21] Speaker 04:
Good morning, Your Honors.

[00:00:22] Speaker 04:
May it please the Court, Mike Miteski, on behalf of Universal Life Church Monastery Storehouse, which I will refer to as ULC Monastery.

[00:00:29] Speaker 04:
I will refer to the Appellee as AMM.

[00:00:32] Speaker 04:
Your Honors, I'm happy to launch into my argument.

[00:00:34] Speaker 04:
But if there are particular issues the panel would like me to address up front, I'm happy to do so.

[00:00:38] Speaker 05:
So I guess you've conceded that you don't deserve a registration for Class 45, right?

[00:00:44] Speaker 04:
ULC Monastery is not appealing the board's decision with regard to Class 45.

[00:00:50] Speaker 05:
So just in terms of logistics, how would it work if you were to prevail on Class 35?

[00:00:55] Speaker 05:
What would happen to the application?

[00:00:57] Speaker 05:
Did you file a motion to, I don't know, delete Class 45 or does the agency do that or do you have to refile?

[00:01:06] Speaker 05:
I just don't know.

[00:01:09] Speaker 04:
Your Honor, I have not thought through the procedural implications of how that would go about.

[00:01:13] Speaker 04:
There can be a motion to divide.

[00:01:16] Speaker 04:
The board itself could render a decision canceling in part, sorry, not canceling, but refusing registration in part.

[00:01:24] Speaker 04:
With regard to the procedural mechanism, when there is a pending opposition, I can't give a precise answer.

[00:01:31] Speaker 05:
Okay.

[00:01:32] Speaker 05:
Because you're not appealing 45, you've essentially conceded that it doesn't function as a mark where it's descriptive or something like that.

[00:01:41] Speaker 03:
Correct.

[00:01:41] Speaker 03:
We're not appealing that issue.

[00:01:43] Speaker 03:
And could I ask, you applied for both class 35 and 45, right?

[00:01:49] Speaker 03:
Correct.

[00:01:50] Speaker 03:
They contend that they oppose.

[00:01:52] Speaker 03:
I think you agree that they initially at least opposed both classes, right?

[00:01:57] Speaker 03:
In their original pleading, that is correct.

[00:01:59] Speaker 03:
Now what if they had only opposed

[00:02:01] Speaker 03:
class 45.

[00:02:03] Speaker 03:
Would you then be entitled to your class 35 registration or does the board have an independent obligation or at least discretion to review whether 35 should be granted?

[00:02:14] Speaker 04:
Well, under this court's precedent and the board's own rules, the board can only render a decision based on the arguments presented in the file briefs.

[00:02:21] Speaker 04:
So

[00:02:23] Speaker 04:
Because the board did not do that, because the board rendered a decision based on arguments that were not presented in the trial brief, that is the error of the board's decision.

[00:02:32] Speaker 03:
Well, I understand that argument.

[00:02:33] Speaker 03:
But would you go so far as to say that the board is powerless to exercise any review of, in this instance, your class 35 application had there been no opposition from anyone to it?

[00:02:48] Speaker 04:
Yes, because of the board's own manual of procedure and litigants entitlement to rely on the rules promulgated by the board and the board's decisions, which say that it's not going to render a decision.

[00:03:00] Speaker 05:
Before you said this court's precedent and trademark board's rules, is there, in fact, any precedent from this court that says the trademark board

[00:03:12] Speaker 05:
is limited in its scope of what it can do in an opposition proceeding to only the arguments raised by the opposer, and has no ability or authority to go beyond that to find problems with the trademark application.

[00:03:27] Speaker 04:
This court has held that tribunals of the Patent and Trademark Office are subject to the Administrative Procedure Act, and therefore such tribunals must base their decisions on arguments advanced

[00:03:41] Speaker 04:
by the litigants at trial or advanced by the litigants?

[00:03:45] Speaker 05:
Well, there's notions of notice and opportunity to respond and fair play and all that.

[00:03:50] Speaker 05:
But that's different from what is the scope of authority.

[00:03:53] Speaker 05:
If the trademark court independently saw a problem and said, you will see, I see a separate problem beyond the ones raised by your opposer, I want you to brief this particular question.

[00:04:06] Speaker 05:
Would the trademark court be without authority to do that?

[00:04:11] Speaker 04:
I believe there's two responses to that.

[00:04:13] Speaker 04:
First, I think no, because of the board's own promulgated manual of procedure saying, if it's not raised, then it's waived.

[00:04:22] Speaker 04:
And so litigants are entitled to rely on that.

[00:04:24] Speaker 04:
Because if not, then they're not getting notice and opportunity to respond.

[00:04:28] Speaker 04:
But as it relates to this particular case, there was no situation.

[00:04:31] Speaker 05:
My question puts that to the side.

[00:04:34] Speaker 05:
My question includes the board going directly to you and raising an independent

[00:04:41] Speaker 05:
possible defect and then asking you to brief it.

[00:04:46] Speaker 04:
So the first response was I believe that is in conflict with the board's own manual procedure.

[00:04:50] Speaker 05:
I don't see anything in the manual that says the trademark board is without authority to identify separate problems and present them to the applicant for the applicant to then respond to.

[00:05:01] Speaker 04:
I think if the board were to do that that would with regard to due process provide notice and opportunity to respond.

[00:05:09] Speaker 04:
That's not what happened in this case though.

[00:05:12] Speaker 05:
Right.

[00:05:13] Speaker 05:
OK, so then the answer to my question then is you don't know of anything that would actually stop the board from raising an independent problem for the applicant to brief during an opposition procedure.

[00:05:26] Speaker 04:
Oh, it is our position that that is in conflict with the board's manual procedure.

[00:05:30] Speaker 04:
But even if it were not.

[00:05:31] Speaker 05:
What are you citing to for that, 801.01?

[00:05:33] Speaker 04:
Yes.

[00:05:34] Speaker 05:
OK.

[00:05:34] Speaker 04:
Yes.

[00:05:35] Speaker 04:
Anything else?

[00:05:36] Speaker 04:
No, that's the only section I'm saying.

[00:05:38] Speaker 03:
OK, so that's your interpretation of 801.01.

[00:05:40] Speaker 03:
Yes, correct.

[00:05:41] Speaker 03:
OK.

[00:05:42] Speaker 03:
And in some of this, you've referenced that we have our own federal circuit precedent that's pertinent to this.

[00:05:48] Speaker 03:
Yes.

[00:05:48] Speaker 03:
I understand you to be relying on basically IPR petitions and patent-related matters.

[00:05:57] Speaker 03:
Have you cited or found any authority from us that considers what the scope of authority of the patent and trademark office is with respect to oppositions to a trademark registration application?

[00:06:11] Speaker 04:
with reference to this particular context, no, I have not.

[00:06:14] Speaker 04:
However, the IPR licensing case from this court, which quotes prior federal circuit precedent, does say that board decisions

[00:06:33] Speaker 04:
in that case, not referring to trademark trial and appeal board, but that tribunals of the Patent and Trademark Office are subject to the APA and that such decisions must be based on arguments advanced by the parties.

[00:06:46] Speaker 04:
And I don't believe there's any reason why that would not apply to another tribunal.

[00:06:51] Speaker 05:
Notice an opportunity, sure, but the patent statute for triggering an IPR proceeding is different from the statute section for triggering an opposition proceeding.

[00:07:00] Speaker 05:
There are certain terms in the IPR statute that make it clear that the proceeding will be confined to the arguments raised and the grounds raised by the petitioner.

[00:07:11] Speaker 05:
I don't think I see that same kind of language in the opposition statute, the trademark propositions.

[00:07:17] Speaker 04:
I don't believe the same language exists in the statute, but... And we're talking... IPRs are post-grant proceedings.

[00:07:23] Speaker 05:
Here we're talking about an opposition.

[00:07:25] Speaker 05:
where the registration hasn't gone out the door yet, it's still technically pending as an application in front of the agency.

[00:07:32] Speaker 04:
Yes.

[00:07:33] Speaker 04:
But I don't believe that vitiates the board's requirement to give notice an opportunity to respond.

[00:07:38] Speaker 05:
That we don't disagree on.

[00:07:45] Speaker 04:
And in this case, there was no notice because the argument simply was not made.

[00:07:52] Speaker 05:
If there's evidence in the record

[00:07:54] Speaker 05:
Can the trademark board construe the evidence in the record as tantamount to making an argument?

[00:08:01] Speaker 04:
No, and that's, I would call the court's authority, excuse me, call the court's attention to new authority that was issued after the close of the appellate briefing, which I only discovered yesterday, which is Monster Energy versus Chun Hua Lo.

[00:08:14] Speaker 04:
That's opposition number 912250- Is this a trademark court opinion?

[00:08:19] Speaker 04:
This is a trademark, a presidential TTAB opinion, yes.

[00:08:22] Speaker 05:
When did it issue?

[00:08:23] Speaker 04:
January of this year.

[00:08:25] Speaker 05:
Did you file a 28-J letter?

[00:08:27] Speaker 04:
I did not.

[00:08:28] Speaker 04:
I only discovered this case yesterday as I was preparing for argument.

[00:08:34] Speaker 04:
In that case, in the original pleading, the opposer alleged that it had a family of Marx.

[00:08:41] Speaker 04:
It did not argue the family of Marx theory at trial, and the board said, well, that argument is waived.

[00:08:47] Speaker 04:
Now, in that case, not that the entire likelihood of confusion claims waived, but that legal theory, that argument is waived because it's not raised in the briefing.

[00:08:57] Speaker 04:
Now, in that case, though, the record evidence included 18 registrations owned by the opposer that included the word monster.

[00:09:04] Speaker 04:
And so that record evidence may very well have supported a family of Marx conclusion, a family of Marx argument.

[00:09:10] Speaker 04:
But because the argument was not made in the brief, the fact that that evidence is in the record is not sufficient.

[00:09:17] Speaker 04:
And the board, in a presidential opinion, interpreting its own rules, waived that argument, or deemed it waived.

[00:09:23] Speaker 03:
AMN suggests, and we made an argument in a moment to it, that you had some sort of obligation to make clear to the board that you thought the evidence and argument with respect to class 35 and 45 should be seen differently.

[00:09:36] Speaker 03:
You filed, I think, a unified application.

[00:09:39] Speaker 03:
You could have filed a motion to divide.

[00:09:42] Speaker 03:
You could have pointed out on the merits why you thought ordination services are somehow different than online retail services.

[00:09:50] Speaker 03:
And they suggest you did none of that.

[00:09:52] Speaker 03:
and therefore the board was understanding this dispute at the level at which you raised it.

[00:09:58] Speaker 03:
What's wrong with that interpretation?

[00:09:59] Speaker 04:
I think there are two problems with that argument.

[00:10:01] Speaker 04:
The first is that in our briefing, we explicitly called out in our response trial brief to the board, they're not challenging class 35 services, therefore they have not met their burden and we're not addressing it.

[00:10:14] Speaker 04:
And in their reply, they didn't dispute that.

[00:10:16] Speaker 04:
In fact, they confirmed it.

[00:10:17] Speaker 04:
They admitted.

[00:10:18] Speaker 04:
In their trial reply brief, they concede, quote, applicants claimed Mark is clearly distinctive in the context of one of its claimed services.

[00:10:27] Speaker 04:
That's out of appendix 2714.

[00:10:29] Speaker 04:
And so it's very clear that in response to our explicit calling out that class 35 isn't at issue here, they didn't say, no, no, actually it is.

[00:10:38] Speaker 04:
They said, yeah, we're talking about one set of services here.

[00:10:41] Speaker 04:
The second response is that that argument contradicts this court's precedent in Henry Latham.

[00:10:47] Speaker 04:
In Henry Latham, this court rejected the argument that, oh, well, you should have addressed this below when the decision below was based on a new argument that had not been raised.

[00:10:59] Speaker 04:
Clearly, we're going to have to raise new issues on appeal when the board below makes a decision based on our argument that was not raised below.

[00:11:07] Speaker 05:
Let's assume we have to get to the descriptiveness question for Class 35, that somehow they did argue that

[00:11:17] Speaker 05:
this mark get working is descriptive of all the client services by the applicant and and the board went forward and found yes get ordained is not only Descriptive of ordaining ministers, but it's also descriptive of this online retail store for selling clothing books whatever related to

[00:11:47] Speaker 05:
religion and marriage.

[00:11:50] Speaker 05:
Why isn't it descriptive of online retail services for books, clothing related to conducting marriages and religion?

[00:12:00] Speaker 04:
Well, for the purposes of this court's review, it's because the board below

[00:12:07] Speaker 04:
did not cite any record evidence in support of that determination.

[00:12:11] Speaker 04:
And therefore, it's reversible under due appross.

[00:12:15] Speaker 04:
But also because the single factual finding made by the board to support the descriptiveness determination in relation to class 35 services was not supported by any record evidence.

[00:12:26] Speaker 04:
The board at length discusses descriptiveness in relation to ordination services in class 45.

[00:12:32] Speaker 04:
But there is only a single sentence laying a supposed factual predicate

[00:12:37] Speaker 04:
for determining that term get ordained is not only descriptive, but highly descriptive of online ordination services.

[00:12:44] Speaker 04:
And that is this.

[00:12:45] Speaker 05:
What if there was evidence in the record that people testified that online ordination services also sell lots of religious paraphernalia, like credentials, religious clothing, books and written materials about how to perform religious ceremonies?

[00:13:07] Speaker 05:
and other wedding accoutrements.

[00:13:13] Speaker 05:
I'm reading out of the background of the opening trial group.

[00:13:16] Speaker 05:
But let's just assume for the moment all of this is true.

[00:13:20] Speaker 05:
So we get past your technical procedural argument that they didn't cite evidence that you feel like they needed to cite.

[00:13:27] Speaker 05:
Just get down to the bottom of this.

[00:13:29] Speaker 05:
Why isn't it descriptive?

[00:13:31] Speaker 04:
because as found by the court below, which were not challenging, get ordained immediately conveys information regarding the characteristics of the ordination services.

[00:13:41] Speaker 04:
Get ordained, ordination.

[00:13:43] Speaker 04:
It does not immediately convey information regarding the online retail source services.

[00:13:49] Speaker 04:
You could

[00:13:52] Speaker 04:
get ordained, the selling of a t-shirt or a religious book for that matter, get ordained does not immediately convey information regarding that.

[00:14:04] Speaker 04:
Moreover, this court under the Michigan versus Environmental Protection Agency case, this court can only uphold.

[00:14:11] Speaker 05:
So if the online retail service sold books that had sample wedding-efficient scripts,

[00:14:21] Speaker 05:
You're saying that get ordained isn't descriptive of a retail service that sells a book like that.

[00:14:30] Speaker 04:
That's correct.

[00:14:31] Speaker 04:
And moreover, it's not highly descriptive and determining whether it's highly descriptive.

[00:14:36] Speaker 05:
I'm just trying to figure out the descriptiveness law and what makes something descriptive versus not descriptive.

[00:14:43] Speaker 05:
I mean, certainly it feels very closely related, but that, I agree, doesn't necessarily

[00:14:51] Speaker 05:
What starts to make something descriptive versus not descriptive?

[00:14:54] Speaker 04:
In this case, get ordained is suggestive of the online retail store services.

[00:14:59] Speaker 04:
It requires some leap, some thought process required in the mind of consumers to relate get ordained to the services at issue.

[00:15:09] Speaker 04:
Because the services are not enabling to get ordained.

[00:15:11] Speaker 04:
The services are not getting them ordained, as the terminology that every day man had used.

[00:15:18] Speaker 04:
There's a mental leap required.

[00:15:20] Speaker 04:
It doesn't have to be a big mental leap.

[00:15:22] Speaker 04:
It just does not, quote, immediately describe a characteristic of the services.

[00:15:26] Speaker 05:
For your client's website, what kinds of products do they sell and what are they used for?

[00:15:32] Speaker 04:
A wide variety.

[00:15:33] Speaker 04:
They, for example, have books on barely religious topics or what people would say are not religious.

[00:15:40] Speaker 05:
Let's stick to the ones that are related to an ordained minister.

[00:15:43] Speaker 05:
What are those kinds of books or clothing or

[00:15:47] Speaker 04:
I think the question of what the relationship is to an ordained minister is key.

[00:15:54] Speaker 05:
I'm just trying to find out what's on the online store.

[00:15:59] Speaker 05:
Can you tell me?

[00:16:00] Speaker 05:
Do you know?

[00:16:00] Speaker 04:
I mean, there's a wide variety of products.

[00:16:02] Speaker 04:
They have stoles.

[00:16:04] Speaker 04:
They have garments that a minister might wear.

[00:16:09] Speaker 04:
I mean, there really is a very wide variety of products being sold.

[00:16:16] Speaker 04:
believe that at one point in time, they sold not wine, but bread or other things that might be used in ecclesiastical ceremonies.

[00:16:27] Speaker 04:
So there are some goods being sold that might be used by an ordained minister.

[00:16:35] Speaker 04:
But the factual finding that the board

[00:16:38] Speaker 04:
based its entire decision on related to Class 35 services is that it sold goods that are needed to become ordained or needed once you are become ordained.

[00:16:49] Speaker 04:
There's no evidence in the record that supports that.

[00:16:52] Speaker 04:
In fact, the evidence shows that you don't need to buy anything from ULC Monastery and I believe it's maybe the case for AMM as well.

[00:17:00] Speaker 04:
You don't need to buy anything to become an ordained minister through the organizations at issue.

[00:17:05] Speaker 04:
And so that was, despite many pages of analysis and factual findings supporting the class 45 decision, that was the only factual finding, as I would characterize it, on which the board based its class 35 decision.

[00:17:19] Speaker 04:
And that factual finding was not supported by the record.

[00:17:21] Speaker 04:
Thank you very much, Mr. SD.

[00:17:24] Speaker 05:
These are your bubble funds.

[00:17:25] Speaker 05:
Thank you.

[00:17:30] Speaker 05:
Mr. Hodges?

[00:17:44] Speaker 02:
Thank you, Maeve.

[00:17:45] Speaker 02:
Please, the court.

[00:17:47] Speaker 02:
In AMM's view, this ULC's appeal simply tries to put form over function.

[00:17:54] Speaker 02:
There should be no doubt that everything that the board ultimately issued an opinion on was before the board properly, and all the parties knew it.

[00:18:05] Speaker 05:
What I'm trying to understand is your brief, your opening trial brief,

[00:18:13] Speaker 05:
let's just take it for granted that it's devoted exclusively to attacking class 45 and then the responsible group from ULC says Well, they didn't attack my class 35 portion of my application So I'm not going to be arguing I have no need to defend that I'm just going to defend my class 45 part of my application and

[00:18:39] Speaker 05:
Any argument in the notice of opposition as to Class 35 is weighted.

[00:18:45] Speaker 05:
And then in your reply brief, you completely ignored that proclamation by the other side.

[00:18:52] Speaker 05:
And so just sitting here on a cold record reading those three briefs, it looks pretty clear to me that you're not attacking Class 35.

[00:19:03] Speaker 05:
What's wrong with that reading?

[00:19:06] Speaker 02:
There's a couple things that I would say we disagree with in that reading, Your Honor.

[00:19:10] Speaker 02:
First off, start with how it impacts the very first question that the panel asked about what happens next if, for instance, the court were to agree with ULC.

[00:19:21] Speaker 02:
And I think we get at the heart of one of the main issues, which is

[00:19:25] Speaker 02:
ULC chose to have a multi-class application.

[00:19:29] Speaker 02:
ULC chose never to divide that.

[00:19:31] Speaker 02:
And there is Federal Circuit law, which we cited both in our down below at the board and in our briefing here, mainly in Ray Chamber of Commerce of the US, that says,

[00:19:45] Speaker 02:
And I quote, a mark need not be merely descriptive of all recited goods or services in an application.

[00:19:50] Speaker 02:
A descriptiveness refusal is proper if the mark is descriptive of any of the services for which registration is sought.

[00:19:56] Speaker 05:
That's a class-by-class kind of analysis.

[00:19:58] Speaker 05:
That's not for across multi-classes that if something is descriptive of one item in a given class, that necessarily means that the descriptiveness finding applies to all the classes applied for.

[00:20:13] Speaker 02:
Respectfully,

[00:20:15] Speaker 02:
when you read the cases that both that case directly, and then the 188 mattress case, and the NRA stereo Texas case, none of those cases make a distinction by class by class.

[00:20:26] Speaker 02:
They all talk about as an application as a whole.

[00:20:28] Speaker 05:
Were those multi-class applications?

[00:20:30] Speaker 02:
I was about to say, I will grant you, that none of those were multi-class applications, but none of them make the distinction.

[00:20:35] Speaker 05:
Let's put that to the side for now.

[00:20:36] Speaker 05:
Why is my reading of the briefing below wrong as to

[00:20:43] Speaker 05:
painfully obvious conclusion that there was a waiver by your side as to class 35.

[00:20:50] Speaker 02:
We acknowledge the fact that we did not specifically call out class 35 often times in the briefing.

[00:20:56] Speaker 02:
We did often call out goods or services repeatedly.

[00:21:01] Speaker 02:
We didn't use a magic phrase of class 35 and class 45.

[00:21:06] Speaker 02:
But when we say goods and services, if you look at the two things that are claimed, the only possible goods

[00:21:13] Speaker 02:
are in class 35.

[00:21:14] Speaker 02:
And for instance, if you look at appendix 2508, which is an argument section in our opening brief about descriptiveness and about how all these other online ordination services also use the phrase get ordained across their variety of services, not just the directly ordaining, but they all have stores as well.

[00:21:38] Speaker 02:
That section, I think specifically on that page, if I hopefully highlighted this correctly,

[00:21:43] Speaker 02:
calls back out and incorporates by reference our factual section, specifically appendix 2488, which is section three F2.

[00:21:55] Speaker 01:
Do you have any cases that would address kind of the multi-class application and say that basically these classes arise and fall together, which I think is kind of the argument you're making?

[00:22:04] Speaker 02:
Yeah, in regards to that first argument, no, we do not.

[00:22:09] Speaker 02:
I think it's one of the things that people generally don't do a multi-class application in this sort of context.

[00:22:16] Speaker 02:
and possibly for this exact reason and ambiguity that it's kind of unclear what happens if you have a multi-class application.

[00:22:24] Speaker 01:
Why did you decide to use words?

[00:22:26] Speaker 01:
You basically said that you called out class 45 by the number, but in return for class 35, you're basically saying you substituted in words.

[00:22:34] Speaker 01:
Why did you kind of treat them differently in that way?

[00:22:38] Speaker 02:
Sorry, Your Honor.

[00:22:39] Speaker 01:
You said, or at least the argument I heard you making here was that with respect to class 35, you used words as opposed to saying class 35, but when you were talking about class 45, you would actually say class 45.

[00:22:53] Speaker 01:
Why would you treat them differently?

[00:22:55] Speaker 02:
I think there are times we specifically called out class 45, and then there are other times that we just generically say goods and services.

[00:23:06] Speaker 02:
Sitting here today, can I remember why we chose to do that?

[00:23:10] Speaker 02:
I'd love to tell you that I have a definite answer of what the strategy was.

[00:23:15] Speaker 02:
I honestly can't remember why we chose to write with specific words in our brief at that time.

[00:23:22] Speaker 02:
But I think that when we reference goods and services,

[00:23:26] Speaker 02:
Not only just looking at the two classes involved, should that have been understood to be attacking everything, but as this court has acknowledged, as ULC acknowledged, our opposition itself did notify ULC that we were opposing both class 35 and 45.

[00:23:45] Speaker 02:
So when we generically reference goods and services,

[00:23:50] Speaker 02:
that should be done in reference to what proceedings we had started.

[00:23:54] Speaker 05:
It's fair to say that your reply brief did not address ULC's argument that your challenge to Class 35 is waived.

[00:24:06] Speaker 05:
That's fair to say, right?

[00:24:09] Speaker 02:
We did not specifically address it.

[00:24:11] Speaker 02:
We did generically address it.

[00:24:12] Speaker 05:
And it's probably also fair to say that the board decision doesn't address this one argument by ULC.

[00:24:19] Speaker 05:
that your side, AMM, has waived a challenge to Class 35.

[00:24:25] Speaker 02:
I would say by implication, it does address it, because ULC acknowledges the fact that it did put into its trial brief the argument that this should be waived.

[00:24:39] Speaker 02:
And the court ultimately, or the board ultimately, issued an opinion on it.

[00:24:42] Speaker 05:
Another fair reading is that they just blew right past it.

[00:24:47] Speaker 05:
They ignored it.

[00:24:48] Speaker 05:
They didn't see it.

[00:24:49] Speaker 05:
They forgot about it because they didn't say anything about it.

[00:24:54] Speaker 05:
We have no way of knowing.

[00:24:55] Speaker 05:
And we have no analysis to review as to why the board may have secretly thought that there was no waiver.

[00:25:04] Speaker 05:
Is that fair to say?

[00:25:07] Speaker 02:
I believe that is fair to say, Ron.

[00:25:09] Speaker 02:
There's clearly not an explicit section in the board's ultimate opinion that deals with that, that they only

[00:25:16] Speaker 02:
As I argue, you could say by implication they saw the argument.

[00:25:21] Speaker 02:
They decided it was not waived.

[00:25:22] Speaker 02:
So they ultimately issued an opinion on both Class 35 and Class 45.

[00:25:31] Speaker 03:
If we were to reach that, putting aside the waiver, what do you think the board has actually told us about Class 35 and is there evidence to support what they say about Class 35?

[00:25:43] Speaker 02:
Yes, I believe the board ultimately said

[00:25:47] Speaker 02:
you'll see you cannot have a trademark on get ordained for both of these classes in part because it's descriptive and in part because too many other people are using it.

[00:25:57] Speaker 03:
But do they tell us that they're making that finding about class 35?

[00:26:01] Speaker 03:
I recognize that in the end.

[00:26:03] Speaker 03:
They say no class 35, but how do we discern what their reasoning was specific to class 35?

[00:26:10] Speaker 03:
Where do we see that in the board's opinion?

[00:26:12] Speaker 02:
I apologize, Your Honor, I don't have the specific site for this, but I believe they have a section where they say it fails to function as a mark because there are so many other people using this.

[00:26:23] Speaker 05:
But on descriptiveness, the board says that they find this mark yet again descriptive not only for

[00:26:32] Speaker 05:
ordaining ministers, but also for online retail services, because the kinds of things that are sold or that are listed in class 35 include products that one would use to get ordained.

[00:26:48] Speaker 05:
And then in addition, also sells products that one would use once you've been ordained.

[00:26:55] Speaker 05:
And I'm trying to, first of all, they don't give any analysis or fact

[00:27:02] Speaker 05:
facts for why those two things are true.

[00:27:05] Speaker 05:
But even assuming that they are true, why does that necessarily make it descriptive, make a get ordained descriptive for selling those kinds of goods, or a retail service for selling those kinds of goods?

[00:27:21] Speaker 02:
I think it's the interrelated nature of both the application with the multiclass application, but which also just reflects the reality of how these ULC operates, AMM operates, all these other third parties operate, which was very much in the record.

[00:27:40] Speaker 02:
And I believe that was, for instance, in our fact section of 2488, which I earlier said we incorporated into our argument section as well.

[00:27:51] Speaker 02:
of, and respectfully, I disagree with counsel in that the board did not hold that these were required or necessary for a minister once they ordained.

[00:28:02] Speaker 02:
They're just related to the minister's job once.

[00:28:05] Speaker 05:
Related, but related is not the test for descriptiveness.

[00:28:09] Speaker 05:
I'm trying to figure out what is the technical way to think through a descriptiveness inquiry and why

[00:28:20] Speaker 05:
The relatedness here is enough to count as the mark being descriptive of an online retail service for clothing and books.

[00:28:30] Speaker 02:
I think it's because when it is being used in one way, it's also simultaneously being used in the same way.

[00:28:38] Speaker 02:
It's being used in the same metadata, on the same website, in the same header for whether or not

[00:28:45] Speaker 02:
every page that it appears, both directly on the ordination page and then on its linked page that is also with the goods.

[00:28:53] Speaker 05:
Let me try a different thing.

[00:28:55] Speaker 05:
Let me try a hypothetical.

[00:28:57] Speaker 05:
Let's assume the mark is learn yoga, okay?

[00:29:04] Speaker 05:
And it's for yoga studio, where there's some yoga master that teaches yoga classes, okay?

[00:29:12] Speaker 05:
And you're not going to get that mark, learn yoga, for teaching people yoga for that service.

[00:29:22] Speaker 05:
But what if there's a second service, and it's a store service for selling yoga mats, yoga gear?

[00:29:33] Speaker 05:
Is the mark, learn yoga, descriptive of that store service for selling yoga gear and yoga mats?

[00:29:44] Speaker 02:
I would have to say I'd like to see, not to be difficult about the hypothetical, but I think a lot depends on how it's actually used.

[00:29:52] Speaker 02:
Is it used in a way that links these two things together?

[00:29:56] Speaker 02:
This goes back to one of the problems that the board faced and that we all faced.

[00:30:02] Speaker 05:
Is learning yoga describing some feature or characteristic of a store service selling yoga mats and yoga gear?

[00:30:12] Speaker 02:
I think it is if you're using it to learn yoga.

[00:30:17] Speaker 02:
It's still all that gear is related to learning yoga.

[00:30:22] Speaker 02:
But I also think, again, this is highly dependent upon the way that ULC chose to make its own application.

[00:30:27] Speaker 02:
We're talking about a potential

[00:30:29] Speaker 02:
factual finding or trial that didn't actually happen in this case because it's not the way that the application was put in.

[00:30:36] Speaker 02:
It wasn't put in as two separate applications that are unrelated to each other.

[00:30:40] Speaker 02:
It was put in as a multi-class application.

[00:30:43] Speaker 02:
I would also point the court back to the underlying

[00:30:48] Speaker 02:
opinion and the underlying result, which was that it failed to function as a mark not just for descriptiveness issues, but because so many third parties were using the mark in the exact same way that how could this act as a source identifier for anyone, for ULC.

[00:31:04] Speaker 05:
That particular argument wasn't raised in your opening brief, right?

[00:31:09] Speaker 05:
Your opening brief on failure to function as a mark was solely devoted to the idea that the applicant was using the term get ordained

[00:31:18] Speaker 05:
in combination with the actual name of the company, United Universal Life Church.

[00:31:24] Speaker 05:
And there wasn't this additional argument, which the board had ultimately bought off on, which wasn't raised until your reply brief.

[00:31:32] Speaker 05:
So I guess I'm wondering, why isn't that also a waiver?

[00:31:37] Speaker 05:
Can you raise stuff in your reply brief that you didn't raise in your opening brief?

[00:31:41] Speaker 05:
I guess that's the basic question.

[00:31:42] Speaker 02:
The very straightforward answer is no.

[00:31:45] Speaker 02:
If it were only raised in our reply brief,

[00:31:48] Speaker 02:
that would be improper.

[00:31:50] Speaker 02:
That gets to the interrelated nature between a descriptiveness, this type of descriptiveness, and this type of failure to function as a mark.

[00:31:58] Speaker 02:
The fact that multiple third parties were using this identically, or in very similar ways, in their metadata, in their navigation pages, in headers, was specifically raised in our opening brief.

[00:32:11] Speaker 05:
Where?

[00:32:12] Speaker 02:
2508.

[00:32:14] Speaker 02:
It is in a descriptiveness section.

[00:32:17] Speaker 02:
And it specifically references back to 2488, which is 3F2 of our back section.

[00:32:24] Speaker 02:
2508.

[00:32:26] Speaker 05:
Right.

[00:32:30] Speaker 05:
This is in your descriptiveness section of your legal argument.

[00:32:34] Speaker 05:
Yes.

[00:32:35] Speaker 02:
And then on 2508, it specifically... And then there's a separate section.

[00:32:39] Speaker 05:
It doesn't start till 2513.

[00:32:41] Speaker 05:
That's your failure of functioning as a trademark section.

[00:32:47] Speaker 05:
So you embedded part of your failure to function as a trademark argument.

[00:32:54] Speaker 05:
You pulled it out of your actual section on failure to function as a trademark and embedded it in your descriptive legal argument section?

[00:33:03] Speaker 05:
I mean, is that really good enough notice for the tribunal to understand that?

[00:33:10] Speaker 02:
I believe it is, Your Honor.

[00:33:11] Speaker 02:
And if we go back to, for instance, 801.01, it only requires that an argument be referenced.

[00:33:17] Speaker 02:
It doesn't require an exact organization, an exact detail.

[00:33:21] Speaker 05:
And again, I would say that these- So where is it in 2508 that you say, oh, by the way, this also fails to function as a trademark, because so many other people are just commonly using this, and it's common ordinary meaning?

[00:33:35] Speaker 02:
Try to bring it up myself your honor, but it references to our fact section, which is 3f to The very thought that

[00:33:47] Speaker 02:
Not the very last paragraph, which is just one.

[00:33:50] Speaker 05:
So this is inside the paragraph that begins with the topic sentence, get another measure of amongst the effectivenesses used by competitors.

[00:33:56] Speaker 02:
And then at the bottom it says CSUPA section 3F2.

[00:33:59] Speaker 02:
And if you go back and look at section 3F2, which I believe the relevant part is on Appendix 24, it contains a list of multiple third-party sites that all use, get ordained, both for coordination services and for store services.

[00:34:16] Speaker 03:
I have one other question for you.

[00:34:18] Speaker 03:
At Appendix 28, which is the board decision, and there's been a reading to this finding before, I'm struggling to know your view as to what this finding means and more important what the evidence is for.

[00:34:31] Speaker 03:
But the board says that consumers use applicants ecclesiastical services

[00:34:37] Speaker 03:
so they can get ordained and applicants online retail store service feature products that consumers need both to prepare to get ordained and once they get ordained and then list those services.

[00:34:54] Speaker 03:
Shouldn't we read that as a finding of fact by the board that those services are needed

[00:35:00] Speaker 03:
Really clearly erroneous finding a fact because there's no evidence cited for it And I'm not sure you've pointed us to any evidence that would support it I'm I think in that one section, and I apologize.

[00:35:14] Speaker 02:
I don't have that your honor I think it does use the word need, but I think if you look at the finding as a whole it relates more to

[00:35:23] Speaker 02:
Sorry to use the word relate, but it relates to the services and the goods being related.

[00:35:28] Speaker 05:
There's another sentence in the board decision of A31.

[00:35:32] Speaker 05:
In the bottom paragraph, in the middle of it, the board says we find, you know,

[00:35:41] Speaker 05:
applicants online retail story services featuring products used to prepare for getting organ and used after getting organ.

[00:35:49] Speaker 05:
So this is something that came up at briefing.

[00:35:51] Speaker 05:
There's one sentence that talks about, these products are absolutely needed.

[00:35:55] Speaker 05:
And then there's another sentence from the board that says, these are products that are used.

[00:36:02] Speaker 05:
So the board here is a little equivocal in terms of helping us understand what the board is thinking on this floor.

[00:36:12] Speaker 03:
You would have us read needed on 28 as not meaning needed.

[00:36:18] Speaker 02:
I would have you read that particular set.

[00:36:22] Speaker 02:
I think you have to read it in that section.

[00:36:24] Speaker 02:
They said needed.

[00:36:26] Speaker 02:
I don't want to equivocate that out.

[00:36:28] Speaker 02:
But I think the overall holding is not necessarily based upon needed.

[00:36:32] Speaker 02:
It's based upon the related nature of these and that they are used.

[00:36:37] Speaker 02:
I think we could debate whether or not needed in somebody's mind.

[00:36:41] Speaker 02:
They're clearly not legally needed, but whether or not a minister then thinks they need them might be a second question.

[00:36:49] Speaker 05:
Mr. Hodges, thanks very much.

[00:36:51] Speaker 05:
Thank you, Your Honor.

[00:36:55] Speaker 05:
We went over with Mr. Hodges.

[00:36:57] Speaker 05:
Can we get Mr. Pitesky five minutes if he needs it?

[00:37:02] Speaker 04:
Thank you, Your Honor.

[00:37:03] Speaker 04:
I wanted to address a couple of points.

[00:37:05] Speaker 04:
First, with regard to the class by class distinction.

[00:37:09] Speaker 04:
Your Honor is correct, and this is the argument that was explicitly made in the opening trial booth by AMN.

[00:37:15] Speaker 04:
If any of the services in class 45 are found to be not distinctive, then all the services in class 45, then the board must reject registration for all services in class 45.

[00:37:29] Speaker 04:
That's the explicit argument made by AMM in their opening brief.

[00:37:32] Speaker 04:
And that is the law.

[00:37:33] Speaker 01:
To the extent that- Are you aware of any multi-class cases?

[00:37:38] Speaker 04:
Not in regards to waiver.

[00:37:41] Speaker 04:
There's no federal circuit opinion that's ever

[00:37:45] Speaker 05:
opined on whether a given good listed in one class being descriptive makes an entire multi-class application descriptive.

[00:37:59] Speaker 04:
I'm not aware of any.

[00:38:01] Speaker 04:
And I think more to the point, this is a new argument being raised on appeal.

[00:38:04] Speaker 04:
This was not argued down below.

[00:38:06] Speaker 04:
So it's.

[00:38:07] Speaker 05:
The TTAB, however, does have precedent for at least multiple trademark board decisions

[00:38:15] Speaker 05:
that do say that descriptiveness has to be examined on a class by class basis.

[00:38:22] Speaker 04:
Well, it is black letter law that it has to be examined with regard to the particular goods and services at issue.

[00:38:31] Speaker 04:
I believe the board manual and board precedent says yes, and we don't dispute that if

[00:38:37] Speaker 04:
a mark or a purported mark is descriptive in regard to a good or services or service within a particular class, that entire class may be rejected.

[00:38:48] Speaker 04:
And we don't dispute that.

[00:38:49] Speaker 04:
But this is a new argument being raised on appeal for the first time that, oh, actually, the entire multi-class application must be rejected.

[00:38:56] Speaker 04:
And that argument was not made below.

[00:38:58] Speaker 01:
How do you respond to opposing counsel's argument that it was using words to describe class 35 but that instead for class 45 would use the number?

[00:39:07] Speaker 04:
I think that's mistaken, and I don't think that's a reasonable reading of the briefing.

[00:39:11] Speaker 04:
Mr. Hodges has argued, and in the briefing it's argued that, well, when we refer to goods and services, that meant we were referring to the services in Class 35.

[00:39:21] Speaker 04:
But there's only services in Class 35.

[00:39:22] Speaker 04:
There's no goods.

[00:39:24] Speaker 04:
ULC Montessori was not applying to register get ordained on a coffee mug or on the hang tag for a shirt.

[00:39:31] Speaker 04:
There's only services at issue here.

[00:39:33] Speaker 04:
I think an oblique reference to goods and services is simply not sufficient to raise the argument specifically in relation to Class 35 online retail store services.

[00:39:44] Speaker 04:
Moreover, I would reference Appendix 2508, which AMN has cited saying, oh, well, in this section, we referred back to a prior section where we discussed third-party use of the term get ordained.

[00:40:00] Speaker 04:
But in the particular sentence they're citing to, they're specifically referring to ordination services.

[00:40:09] Speaker 04:
The sentence is, the evidence of record demonstrates that competitors routinely and extensively use, quote, get ordained, end quote,

[00:40:16] Speaker 04:
in conjunction with their own ordination services.

[00:40:19] Speaker 04:
And then they cite back to the prior fact section.

[00:40:22] Speaker 04:
So even there, it's specifically referring to ordination services, not supposed third party use of get ordained in relation to online retail store services in class 35.

[00:40:33] Speaker 03:
Class 35 does include goods as well as services, but you're saying your application only

[00:40:39] Speaker 03:
went to services.

[00:40:40] Speaker 04:
Class 35 respectfully your honor only includes the service of online retail store services.

[00:40:48] Speaker 04:
Featuring whereby certain goods are sold.

[00:40:52] Speaker 04:
But it is an application for servicemen.

[00:40:56] Speaker 03:
Was it an application for the service of selling goods correct?

[00:41:00] Speaker 03:
Correct.

[00:41:01] Speaker 03:
That is correct.

[00:41:09] Speaker 04:
Oh, and I simply wanted to address, because I don't believe I had time to do it earlier, the acquired distinctiveness argument.

[00:41:15] Speaker 04:
Acquired distinctiveness can only be judged on a sliding scale depending on whether the mark in question is highly descriptive, weakly descriptive, or somewhere in the middle.

[00:41:26] Speaker 04:
More evidence of acquired distinctiveness is needed.

[00:41:28] Speaker 04:
We have your argument on highly descriptive.

[00:41:31] Speaker 05:
What about if you were to prevail in the opposition, because the trademark board concluded

[00:41:39] Speaker 05:
Yeah, Class 35 is waived.

[00:41:42] Speaker 05:
We had to remand it, and they made that kind of conclusion.

[00:41:46] Speaker 05:
Is there anything stopping the examining attorney from taking a second look at descriptiveness for Class 35?

[00:41:53] Speaker 04:
I believe so.

[00:41:53] Speaker 04:
This application was allowed by the examiner, so the examiner would not have an opportunity to go back and re-examine it.

[00:42:00] Speaker 05:
The director of the agency doesn't have any power to take a last look at this before it goes out the door?

[00:42:08] Speaker 04:
not after a final judgment in the opposition.

[00:42:11] Speaker 04:
I don't believe so.

[00:42:14] Speaker 04:
I believe there would be a final judgment.

[00:42:15] Speaker 05:
You don't know of any authority one way or another inside the agency?

[00:42:20] Speaker 04:
Specifically on that point, I do not, Your Honor.

[00:42:22] Speaker 04:
Okay.

[00:42:23] Speaker 04:
Thanks very much.

[00:42:24] Speaker 04:
Thank you.

[00:42:24] Speaker 04:
The case is submitted.