[00:00:00] Speaker 04:
The next case is Raoultville versus Framois or Framboise Holdings.

[00:00:07] Speaker 04:
23-11-42.

[00:00:08] Speaker 04:
This too is it Charmel?

[00:00:10] Speaker 04:
That's me.

[00:00:11] Speaker 04:
Good morning, Aaron.

[00:00:13] Speaker 01:
How are you doing?

[00:00:16] Speaker 01:
Good morning, Your Honor.

[00:00:17] Speaker 01:
May it please the Court?

[00:00:18] Speaker 01:
This is a fairly straightforward question on a trademark case.

[00:00:23] Speaker 01:
It fundamentally boils down to two trademarks at issue.

[00:00:27] Speaker 01:
The main issue in this case was priority and a likelihood of confusion as to whether the two marks at issue were confusingly similar.

[00:00:34] Speaker 01:
Ultimately, before the T-temp, this case ended up boiling down to a question of priority.

[00:00:41] Speaker 01:
The issue is on appeal here.

[00:00:42] Speaker 04:
I didn't pronounce the trademark.

[00:00:44] Speaker 01:
I'm sorry?

[00:00:45] Speaker 04:
Have you pronounced the train?

[00:00:47] Speaker 01:
I would pronounce it as torecacho.

[00:00:49] Speaker 01:
I believe it's Brazilian, or Portuguese, probably.

[00:00:52] Speaker 04:
It seems to be the only way to pronounce it.

[00:00:55] Speaker 01:
Yeah, that's how I would pronounce it, Your Honor.

[00:00:58] Speaker 01:
The issues on the appeal, though, are pretty straightforward.

[00:01:02] Speaker 01:
And all of it seems to stem from the weight of the testimony that was introduced by the appellee, the opposer.

[00:01:13] Speaker 04:
You're significantly arguing an error in the boards

[00:01:18] Speaker 04:
Letting in some late evidence.

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

[00:01:21] Speaker 04:
Four days late?

[00:01:23] Speaker 01:
Right.

[00:01:23] Speaker 01:
So that is one of the sub-issues.

[00:01:26] Speaker 01:
The main issue that we feel is important for the appeal is really the weight that that testimony was given.

[00:01:32] Speaker 01:
That it was late is we feel is still relevant, but less so necessarily than the weight that it was given.

[00:01:39] Speaker 00:
What standard of review do we apply to that question?

[00:01:42] Speaker 01:
So it's a mixed question ultimately, Your Honor.

[00:01:44] Speaker 01:
The standard of review for the

[00:01:47] Speaker 00:
whether the extension should be granted is generally... I meant the primary question you were talking about, which is the weight the testimony should be provided.

[00:01:56] Speaker 01:
would be the standard of review here.

[00:01:59] Speaker 00:
That's a difficult hurdle for you to overcome.

[00:02:01] Speaker 01:
Right.

[00:02:02] Speaker 01:
So it's a less differential standard than the abuse of discretion, of course.

[00:02:10] Speaker 01:
The ultimate legal conclusion of priority is generally one that's resolved de novo on appeal.

[00:02:16] Speaker 01:
So I would say that the overall question of fact and law is one that's mixed.

[00:02:22] Speaker 00:
But you're not arguing that a corroboration standard applies to the testimony of Mr. Extract, right?

[00:02:32] Speaker 01:
No.

[00:02:34] Speaker 03:
So if a corroboration requirement is not present, why is the declaration of Mr. Extract not sufficient in and of itself?

[00:02:47] Speaker 01:
The board and the Federal Circuit's president is fairly clear on this, that the testimony of a single witness can be clear and convincing enough, but it needs to be more than a mere scintilla of proof as kind of happened.

[00:03:04] Speaker 00:
Why isn't the testimony alone of somebody who has personal knowledge and personal experience, then more than a scintilla?

[00:03:14] Speaker 01:
So in this case, ultimately, what's presented in the testimony is very threadbare.

[00:03:23] Speaker 01:
So in his testimony, Mr. Extract basically states or restates that, which is in the original opposition, and basically repeats the original date of first use, which I believe is March 24, 2017.

[00:03:42] Speaker 01:
Now, during trial before the TTED, the board seemed to agree with us that a lot of the... So there were two pieces of testimony that were turned in, and then two sets of documents under notice of reliance that were introduced.

[00:04:01] Speaker 01:
So the appellee in reviewing the documents that were introduced under notice of reliance

[00:04:11] Speaker 01:
tried to show that these documents that were introduced could show that it was prior use as far back as this.

[00:04:18] Speaker 01:
Now, the TTAB seemed to take our position at trial that they could only be introduced for what they show on their face, not for the truth of the matter asserted therein.

[00:04:29] Speaker 01:
So in essence, the testimony of Mr. Extract, not the documents under notice of reliance, not even the rebuttal testimony, it's the initial testimony that was late

[00:04:42] Speaker 01:
Uh, originally is, is essentially the sole reason why priority.

[00:04:46] Speaker 00:
Was Mr. Extract, um, was he deposed on this issue?

[00:04:51] Speaker 01:
No, it was just done via a testimonial affidavit introduced.

[00:04:55] Speaker 00:
Was there an opportunity?

[00:04:57] Speaker 00:
I don't know that much about the discovery in these kinds of proceedings.

[00:05:02] Speaker 00:
I did see maybe reference to a first trial period, a second trial period.

[00:05:08] Speaker 00:
Is there opportunity for depositions at that time?

[00:05:13] Speaker 01:
So the way that the TTAB will do its procedure is they have a normal discovery period.

[00:05:21] Speaker 01:
And you can do depositions during that time.

[00:05:23] Speaker 01:
The only discovery that took place during the TTAB at that time was written discovery.

[00:05:29] Speaker 00:
Was that the choice of the parties?

[00:05:31] Speaker 00:
no it just ended up that's just how it ended up happening so are you suggesting that you didn't have an opportunity to take a deposition no your honor we are not okay so it wasn't the choice of the parties to it was the choice of the parties to not take depositions correct okay that's fair so during the initial discovery period

[00:05:53] Speaker 01:
There was just written discovery, admissions, interrogatories, and request for production of documents.

[00:06:01] Speaker 01:
Then during the trial period, that's when you're able to introduce testimonial affidavits or documents.

[00:06:09] Speaker 03:
And does it work?

[00:06:10] Speaker 03:
Go ahead.

[00:06:11] Speaker 03:
Were the declarations of Mr. Extract submitted during the term of discovery, prior to the end of discovery?

[00:06:22] Speaker 01:
No, not during discovery, Your Honor.

[00:06:24] Speaker 01:
It came in during the trial period.

[00:06:27] Speaker 03:
Well, that was the notice of reliance.

[00:06:29] Speaker 01:
Correct.

[00:06:30] Speaker 01:
Yeah, in the TTAB, that'll come during the trial period.

[00:06:35] Speaker 03:
So you did not see the declaration until that notice of reliance?

[00:06:41] Speaker 01:
Correct.

[00:06:41] Speaker 01:
So they would have been submitted around the same time.

[00:06:44] Speaker 01:
That declaration is the one that came, I believe, four days late after the end of the trial period.

[00:06:52] Speaker 01:
I believe you also have a question, Your Honor.

[00:06:55] Speaker 00:
I was just going to ask if there would be an opportunity to depose Mr. Extract after that submission of his second declaration.

[00:07:05] Speaker 01:
Of his second declaration?

[00:07:06] Speaker 01:
No.

[00:07:07] Speaker 01:
So during the trial period, the

[00:07:12] Speaker 01:
opposer, which would be the appellee here.

[00:07:15] Speaker 01:
They can introduce their trial testimony.

[00:07:18] Speaker 01:
During our trial period, we introduced our own rebuttal testimony, the testimony of Mr. Araujo, and then they get their rebuttal.

[00:07:26] Speaker 01:
which they also introduced the rebuttal testimony of Mr. Extract.

[00:07:30] Speaker 01:
The defendant, which would be us as applicants in the TCAT, doesn't get another opportunity to be able to introduce or to rebut that testimony after those securities are passed.

[00:07:41] Speaker 00:
But you did have a trial period where you could have?

[00:07:45] Speaker 00:
Correct.

[00:07:45] Speaker 00:
OK.

[00:07:47] Speaker 00:
In other words, what I'm trying to say, just to make sure I'm being clear, I understand that

[00:07:54] Speaker 00:
I guess the opposer had the opportunity to first have his trial period, then you had a trial period, and then they had the rebuttal trial period.

[00:08:05] Speaker 00:
Correct.

[00:08:05] Speaker 00:
Do I understand correctly that the second declaration of Mr. Extract was introduced at the end of the first trial period?

[00:08:14] Speaker 01:
So not quite.

[00:08:16] Speaker 01:
So the initial 30-day trial period, that's when they introduced the documents.

[00:08:22] Speaker 01:
That's the notes of reliance documents, the two sets of documents.

[00:08:27] Speaker 01:
And the testimony of Mr. Extract, they get their 30 days.

[00:08:29] Speaker 01:
The testimony was the one that was late initially.

[00:08:33] Speaker 01:
Then we get our 30 days.

[00:08:35] Speaker 01:
And then I believe after that, they get a 15-day rebuttal period.

[00:08:38] Speaker 01:
So that rebuttal testimony came after.

[00:08:42] Speaker 01:
all of this.

[00:08:43] Speaker 03:
So to pick up on the line of questioning of Judge Stallman, so during your 30-day trial period, you did have the opportunity to take Mr. Extract's deposition, correct?

[00:08:57] Speaker 01:
Yes, Your Honor, I would so.

[00:08:59] Speaker 03:
And wouldn't that have been the time and place to question what was said in this declaration as to

[00:09:08] Speaker 03:
the dates and whether there were any sales receipts or invoices or any of the documentary things that you argue are missing here.

[00:09:21] Speaker 01:
Yes, Your Honor.

[00:09:23] Speaker 01:
At the time, it was our strategy that we came up with the client that we would end up attempting

[00:09:31] Speaker 01:
to defend against this by introducing our own documents, what we produced to the opposer during the discovery, as well as our testimony.

[00:09:41] Speaker 01:
Because that left you with a hard thing to prove a negative.

[00:09:45] Speaker 01:
Yeah.

[00:09:48] Speaker 01:
And if there's no further questions, I'll reserve the rest of my time.

[00:09:55] Speaker 04:
Then we'll send it for you.

[00:10:13] Speaker 02:
May it please the court.

[00:10:15] Speaker 02:
I'm Steve Bean, and I represent Fran Boyce Holdings in this matter.

[00:10:21] Speaker 02:
I'd like to begin by stating that it's an honor to be here.

[00:10:25] Speaker 02:
31 years ago, when I was a first-year law student at the University of Virginia, Judge Randy Rader came down to Charlottesville and taught a patent class.

[00:10:38] Speaker 02:
And I was exposed to the Federal Circuit through that class.

[00:10:42] Speaker 02:
I was exposed to patent law through Judge Rader and his commitment to come down every weekend.

[00:10:48] Speaker 02:
And at the end of that class, Judge Rader invited me to come up to the court the following summer for what he called an internship.

[00:10:59] Speaker 02:
And I came up to the court.

[00:11:02] Speaker 02:
And I spent a summer, I think I was in a storage room, one floor below his office.

[00:11:09] Speaker 02:
But there was a desk in there and a computer, and it was a wonderful summer.

[00:11:15] Speaker 02:
I even got to meet Judge Rich in the elevator one day, and that was a formative experience.

[00:11:21] Speaker 04:
Mr. B, you can continue to work from this, but you're defending a case.

[00:11:26] Speaker 02:
I realize that.

[00:11:27] Speaker 02:
I realize that.

[00:11:28] Speaker 02:
It was a formative experience and one that I have been grateful for.

[00:11:33] Speaker 02:
In acknowledgment of the Federal Circuit, the Federal Circuit has had a profound effect on the system's intellectual property laws and our interpretation of those laws.

[00:11:47] Speaker 02:
today, I'm hoping to persuade Your Honours to not overturn the TTAB's decision, sustaining the opposition of the trademark application wherein the appellant was attempting to register our client's trademark.

[00:12:06] Speaker 02:
uh... there's two issues in the case and uh... i'm not going to rehash those issues i'm gonna hopefully provide some context to those two issues the first issue is the issue of the uh... propriety the appropriateness of the extension of time that was raised in the briefing and i think that it's uh...

[00:12:31] Speaker 02:
it's important to understand the context of how those extensions of time are used before the trademark trial and appeal board.

[00:12:39] Speaker 02:
The trademark trial and appeal board in the TBMP explains that they are liberal with granting extensions of time.

[00:12:49] Speaker 02:
They are liberal with the first request.

[00:12:52] Speaker 02:
They are not so liberal with the second request.

[00:12:55] Speaker 02:
And getting a third request is

[00:12:58] Speaker 02:
akin to getting a handwritten note from God to move the case.

[00:13:04] Speaker 02:
But the board is fairly liberal on the first request.

[00:13:10] Speaker 02:
And they look at the totality of the circumstances surrounding the request.

[00:13:14] Speaker 02:
And in this instance, most good trademark attorneys will try to save their first request in case they really need it.

[00:13:23] Speaker 02:
And in this case, it was needed.

[00:13:24] Speaker 02:
At the very end of the trial period,

[00:13:27] Speaker 02:
There were some difficulties in obtaining a signed declaration from a witness in a foreign country, and that first request was made.

[00:13:38] Speaker 02:
Admittedly, the reasons for the request were thin, but the full reasons did come out through that briefing process.

[00:13:46] Speaker 02:
And there was a need for the additional extension of time.

[00:13:51] Speaker 02:
It was four days.

[00:13:52] Speaker 00:
When you say full reasons, you mean that there was a need for time?

[00:13:55] Speaker 00:
That there was a need for time.

[00:13:57] Speaker 02:
And admittedly, counsel probably could have and should have written a little bit more thorough explanation of why the request was needed.

[00:14:05] Speaker 02:
The records reflect that the request went in at 10 o'clock at night, the day of the deadline.

[00:14:11] Speaker 02:
And I've been in those situations, and it's hard to reach counsel at 10 o'clock on the day of a deadline.

[00:14:17] Speaker 02:
But the request went in.

[00:14:19] Speaker 00:
So we review this for an abuse of discretion.

[00:14:21] Speaker 02:
It's reviewed under the abuse of discretion standard, whether or not the decision was arbitrary, capricious, and an abuse of discretion.

[00:14:29] Speaker 00:
And do I remember correctly that consideration of prejudice was considered?

[00:14:35] Speaker 00:
It was considered.

[00:14:36] Speaker 02:
That was one of the factors that the court considered.

[00:14:39] Speaker 02:
The court also considered the fact that this was a first request and that in two and a half years of the underlying action that this party, our party, had never before requested an extension.

[00:14:50] Speaker 02:
And the court determined that the effect was de minimis and that the appellant in this case still had their whole 30 day trial period ahead of them in which to test the sufficiency of the declaration that came in.

[00:15:04] Speaker 00:
That sounds like a very reasonable reason to me or analysis to me.

[00:15:10] Speaker 00:
Do you want to talk about the other issue?

[00:15:12] Speaker 02:
Yes.

[00:15:13] Speaker 02:
Yes, I'm happy to talk about the other issue.

[00:15:14] Speaker 02:
The other issue is the weight that's afforded the evidence and whether or not that decision was correct.

[00:15:24] Speaker 02:
Now, it's interesting.

[00:15:25] Speaker 02:
I've heard some questions asked about the procedure in the TTAB trial mechanism.

[00:15:33] Speaker 02:
And during the discovery period, the parties have opportunity to take depositions.

[00:15:38] Speaker 02:
They can propound interrogatories, requests for admission, requests for discovery.

[00:15:43] Speaker 02:
They can schedule and notice depositions.

[00:15:45] Speaker 02:
And then you can test the sufficiency of whether or not a party has first use of the mark.

[00:15:51] Speaker 02:
In this case, for reasons not reflected, it appears to have been strategy by some of the parties not to take depositions.

[00:16:02] Speaker 02:
And the risk in that case is that you're going to have a declaration put in front of you that you may not have complete background on.

[00:16:09] Speaker 02:
But that's a strategy decision that you make, and it's not a reason to overturn a lower decision.

[00:16:15] Speaker 02:
So in this case, the declaration from Mr. Extract was complete.

[00:16:21] Speaker 02:
I believe the board called it clear and convincing and compelling, I think was the language there.

[00:16:27] Speaker 03:
Well, the declaration is, and let me back up a little.

[00:16:33] Speaker 03:
Sure.

[00:16:33] Speaker 03:
Is there any other, did you submit or rely on any other evidence to show use prior to the critical date in question?

[00:16:44] Speaker 02:
Framboise attempted to use evidence of some Amazon web pages that showed reviews dating back to 2017, which is two years prior and in line with the testimony of Mr. Extract.

[00:16:57] Speaker 02:
The board did not admit those exhibits into evidence for hearsay.

[00:17:02] Speaker 02:
They were out of court statements offered to prove the truth of the matter asserted.

[00:17:06] Speaker 02:
So those exhibits were not considered by the board.

[00:17:10] Speaker 02:
But what the board did consider was Mr. Extract's testimony.

[00:17:13] Speaker 03:
And his testimony... And that's all.

[00:17:18] Speaker 03:
Yes.

[00:17:19] Speaker 03:
So his testimony is that, I mean, usually to establish a priority of use, you have evidence to show sale or advertising of the mark on a product in question.

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

[00:17:34] Speaker 03:
Here, even the declaration doesn't talk about sale or

[00:17:41] Speaker 03:
advertising directly.

[00:17:43] Speaker 03:
It says Rimbaud has used the mark.

[00:17:47] Speaker 03:
How?

[00:17:48] Speaker 03:
In what connection?

[00:17:50] Speaker 03:
So and why?

[00:17:52] Speaker 03:
Then it says it's consistently promoted the goods.

[00:17:55] Speaker 03:
Does that mean advertising?

[00:18:00] Speaker 03:
I mean it's pretty thin.

[00:18:04] Speaker 03:
Pretty thin.

[00:18:05] Speaker 03:
Now, you've got the benefit of substantial evidence.

[00:18:09] Speaker 03:
helping you here, but nonetheless, it's about as thin a statement of use that I've seen in a long, long time.

[00:18:22] Speaker 02:
not to overly argue or take an antagonistic approach here, but I don't think it's that thin.

[00:18:30] Speaker 02:
And the reason why I don't think it's that thin is because the declaration, in paragraph four of the declaration, first of all, paragraph two states that it's based upon his personal knowledge, right?

[00:18:41] Speaker 02:
So we have a witness with personal knowledge, but in paragraph four, he lists dates.

[00:18:47] Speaker 02:
He gives a date of March 24th, 2017.

[00:18:50] Speaker 02:
He discusses continuous use of the mark.

[00:18:54] Speaker 02:
He discusses different product types associated with the mark.

[00:19:00] Speaker 02:
He also discusses the types of stores.

[00:19:03] Speaker 02:
So in that tight little paragraph, you've got dates of first use, you've got the requirement for continuous use, which is non-abandonment of a mark,

[00:19:12] Speaker 02:
You have channels of trade, which is the stores that are involved in presenting the goods to the public, and the different types of goods.

[00:19:23] Speaker 00:
Could you answer the question about what promoted its goods means?

[00:19:28] Speaker 00:
I'm sorry, again?

[00:19:30] Speaker 00:
Could you answer the question from Judge Lin about what promoted its goods means in this declaration?

[00:19:39] Speaker 02:
Promoting goods in trademark vernacular means presenting the goods to the public.

[00:19:44] Speaker 02:
It means advertising.

[00:19:45] Speaker 02:
It means Amazon web pages.

[00:19:47] Speaker 02:
It means Amazon reviews.

[00:19:48] Speaker 02:
Well, that doesn't say Amazon web pages.

[00:19:51] Speaker 02:
That's not fair.

[00:19:52] Speaker 02:
It doesn't state that.

[00:19:53] Speaker 02:
But promoting the mark is presenting the mark out to the public.

[00:19:58] Speaker 02:
And if you look at the exhibits accompanying the declaration, there are representative examples of how the mark was promoted.

[00:20:06] Speaker 02:
And there's pictures from store shelves.

[00:20:10] Speaker 02:
And those pictures show numerous products in different stores, all bearing the mark Todokacho.

[00:20:17] Speaker 02:
So although the declaration, paragraph four, is tight, it's supported with personal knowledge, and it's also supported with the exhibits that were representative examples discussed in paragraph four.

[00:20:31] Speaker 02:
So what happens here in the substantial evidence standard

[00:20:35] Speaker 02:
It's not that there can only be one outcome.

[00:20:39] Speaker 02:
It's that there is sufficient evidence that a reasonable mind could find that the outcome is supported.

[00:20:46] Speaker 00:
I noticed that your client filed their own trademark application at some point during this proceeding.

[00:20:54] Speaker 00:
Is that right?

[00:20:56] Speaker 00:
Yes.

[00:20:56] Speaker 00:
And provided the same date as in paragraph four for the first date of use.

[00:21:02] Speaker 00:
Yes.

[00:21:02] Speaker 00:
Is that right?

[00:21:03] Speaker 00:
Yes.

[00:21:04] Speaker 00:
I understand.

[00:21:05] Speaker 00:
I was guessing that that would not be considered cooperative, could not be relied on, because it was actually filed after the date of the suit.

[00:21:12] Speaker 00:
Is that right?

[00:21:13] Speaker 00:
Right.

[00:21:13] Speaker 02:
So what was happening here was that our client is a large foreign company that had neglected to file its rather well-known mark in the United States.

[00:21:24] Speaker 02:
And the mark, pound sign Toda Gacho, a very unique mark, was filed by the appellant.

[00:21:33] Speaker 02:
And when our client learned of that filing, our client, first of all, opposed it because they believed and did have common law rights from their substantial and lengthy use of Todokacho in the United States.

[00:21:45] Speaker 02:
But then they filed their own separate trademark registration.

[00:21:48] Speaker 02:
So the underlying opposition here is to dispose of appellant's application to our mark.

[00:21:57] Speaker 02:
And then we have a subsequent application to shore up those rights and obtain a federal registration.

[00:22:08] Speaker 02:
I have three more minutes.

[00:22:09] Speaker 02:
I could reminisce a little more, but I dare not.

[00:22:13] Speaker 04:
No one loses points by not using up all their time.

[00:22:17] Speaker 04:
All right.

[00:22:18] Speaker 02:
Well, with no further questions, that is all.

[00:22:21] Speaker 02:
Thank you very much.

[00:22:23] Speaker 04:
Thank you, Mr. Dean.

[00:22:25] Speaker 04:
Mr. Chairman?

[00:22:31] Speaker 01:
So I just want to say just a couple more things about the testimony itself.

[00:22:37] Speaker 01:
I tend to agree that it's fairly thin.

[00:22:41] Speaker 01:
But one thing I also wish to convey, it's not that it can't be afforded any weight, just that it should have been afforded less weight when it was before the T-tab, given how thin it is.

[00:22:52] Speaker 01:
I believe in the testimony, he places it on his personal knowledge and a reflection of the records that he had.

[00:23:00] Speaker 01:
I'm not sure what these records were, if it was just the Amazon documents that were produced under Notice of Reliance that accompanied the testimony, or if it's some other set of documents that were never introduced.

[00:23:16] Speaker 00:
The point that I wish to emphasize is that... Do I remember correctly that the standard, the burden, I guess, of persuasion that was placed on them was clear and convincing evidence?

[00:23:29] Speaker 01:
preponderance of the evidence.

[00:23:31] Speaker 01:
Since the issue here would be priority ultimately, it would be preponderance of the evidence.

[00:23:36] Speaker 00:
So it's whether there's substantial evidence that that evidence could be

[00:23:42] Speaker 00:
of the evidence of the assertions made.

[00:23:46] Speaker 01:
Correct.

[00:23:46] Speaker 01:
And then as to the evidentiary issue, it needs to be clear and convincing, and that it has to be able to convince a reasonable mind that based on this evidence, or in this case, this testimony, that you could rule in their favor.

[00:24:00] Speaker 01:
The only other thing I would wish to add is that in the modern age where the appellee as well as my client deal in digital and online sales, getting copies of documents where you could get invoices and sales, these are all readily available, easy to be produced, and just a simple search of your own business records that are easily accessible on any of your online accounts.

[00:24:26] Speaker 01:
such documents could have been produced to corroborate that testimony.

[00:24:33] Speaker 01:
Unless the court has any other questions, I thank you for your time.