[00:00:00] Speaker 04:
Our next case for argument is 23-1682 Bull Shine Distillery versus Sazerac Brands.

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

[00:00:11] Speaker 01:
Good morning.

[00:00:12] Speaker 01:
Please support.

[00:00:12] Speaker 01:
My name's John Horvack.

[00:00:13] Speaker 01:
I'm here for Bull Shine Distillery.

[00:00:15] Speaker 01:
We're here because the board, in our judgment, applied clearly the incorrect legal standard to the facts of this particular genericness case.

[00:00:25] Speaker 01:
This case concerns flavors for consumable goods.

[00:00:30] Speaker 01:
just like the AJ Canfield case involved chocolate fudge for diet sodas.

[00:00:35] Speaker 01:
It also includes types of drinks, specifically a drink that is trying to replicate a fireball candy, just like the court addressed at zero.

[00:00:47] Speaker 04:
So the question of whether something generic is a question of fact.

[00:00:51] Speaker 04:
So what is the legal standard?

[00:00:53] Speaker 04:
Exactly where in the board's opinion did they articulate the incorrect legal standard?

[00:00:59] Speaker 01:
They articulated the correct standard in a footnote, and that ignored it throughout.

[00:01:05] Speaker 01:
So specifically, they did find that Fireball denotes a spicy cinnamon candy-like taste, a fact established elsewhere in the record that a poser

[00:01:17] Speaker 01:
Sazerac does not seriously dispute.

[00:01:19] Speaker 01:
That's an A48.

[00:01:22] Speaker 01:
Similarly, there's a finding that the opposer admitted fireball candy and its whiskey have the same flavoring.

[00:01:30] Speaker 01:
That's an A28.

[00:01:33] Speaker 01:
And then they go on at A60 and talk about how the flavor taste has been known to many customers who have tried the candy since before opposers started selling fireball candy.

[00:01:43] Speaker 01:
It is a desired flavor.

[00:01:45] Speaker 01:
as evidenced by the number of recipes attempting to mimic it.

[00:01:48] Speaker 01:
That's an A60.

[00:01:51] Speaker 01:
And they do the same type of fact finding for the type of drink.

[00:01:55] Speaker 01:
For example, at age 22 and 38, they note that the opposer unequivocally admitted the fireball name is the generic name for a type of cinnamon flavored alcoholic beverage, and thus is not protectable as a trademark.

[00:02:10] Speaker 01:
So they made findings, which under the law demand.

[00:02:13] Speaker 00:
And when we say admitted, admitted in the earlier proceeding, not admitted here.

[00:02:17] Speaker 01:
Sorry.

[00:02:17] Speaker 01:
Yes.

[00:02:18] Speaker 01:
In the federal proceeding.

[00:02:20] Speaker 01:
Right.

[00:02:22] Speaker 01:
In an answer, they had admitted that when they were on the other side.

[00:02:25] Speaker 01:
The board here made that finding and said it was unequivocal and direct evidence of genericness.

[00:02:32] Speaker 01:
So despite those findings, which demand under law a generic narrative finding, they did two things wrong.

[00:02:38] Speaker 01:
First.

[00:02:38] Speaker 01:
They applied an evolving standard.

[00:02:41] Speaker 01:
They looked at the question over time, over 20 years.

[00:02:44] Speaker 01:
They looked at a period of 2001 to 2004, 2008, and then at the time of trial.

[00:02:52] Speaker 01:
However, the law requires the board to look at the question at the time the trademark or the mark is attempted to be used in commerce for the first time.

[00:03:03] Speaker 01:
Because that's the time where if it's generic as a flavor or a type of drink, nothing that they can do thereafter can change that result.

[00:03:13] Speaker 00:
So is that an assertion?

[00:03:17] Speaker 00:
I guess I can imagine that that's an assertion, a legal assertion.

[00:03:22] Speaker 00:
Are you asserting that it is just not possible as a matter of fact about the world that something, some expression can be generic at time one and 10 years later, no longer be generic?

[00:03:40] Speaker 01:
I think the law precludes.

[00:03:42] Speaker 01:
Subsequent use, advertising, promotion, acquisition of secondary meaning or association from ever changing the result of genericness at the time of first adoption.

[00:03:56] Speaker 01:
Why?

[00:03:57] Speaker 01:
First of all, Weiss Noodle says that.

[00:04:03] Speaker 01:
The predecessor court to this court in 1961 dealt with an interesting case, and if I may, Haluska noodles, Hungarian name apparently for egg noodles.

[00:04:15] Speaker 01:
It talked about how it was undisputed.

[00:04:17] Speaker 01:
The registrant there was the first party ever to bring that product to bear in the United States.

[00:04:25] Speaker 01:
It engaged in extensive marketing to do so.

[00:04:29] Speaker 01:
Consumers began, because of its success and popularity, to associate that name with the provider, the one and only provider.

[00:04:37] Speaker 01:
And it was wildly successful, and others attempted to copy.

[00:04:40] Speaker 01:
This court said all of that cannot be given weight.

[00:04:44] Speaker 01:
It cannot convert a generic term into a subject for trademark protection.

[00:04:50] Speaker 00:
And the law will not give it any.

[00:04:51] Speaker 00:
What was the procedural context of that case?

[00:04:55] Speaker 00:
Was it a cancellation proceeding?

[00:04:56] Speaker 00:
What was it?

[00:04:57] Speaker 00:
It was not a cancellation proceeding.

[00:04:59] Speaker 00:
And that's at least an interesting statutory issue about that.

[00:05:05] Speaker 01:
I agree.

[00:05:06] Speaker 01:
And we can talk about that.

[00:05:07] Speaker 01:
But to the question of whether what we bring to bear here is a question of fact or a question of law, it's a question of law.

[00:05:14] Speaker 01:
It's the legal framework which precludes the board from taking into account any of the evidence that I

[00:05:21] Speaker 01:
outlined in which they credited.

[00:05:23] Speaker 01:
So they credited here significant advertising.

[00:05:28] Speaker 01:
There is no dispute that they engaged in significant advertising after they adopted the mark in 2007.

[00:05:33] Speaker 01:
They claimed wild success.

[00:05:36] Speaker 01:
We didn't dispute that.

[00:05:37] Speaker 01:
Seems so.

[00:05:40] Speaker 01:
They point to media recognition and the like.

[00:05:44] Speaker 01:
Seems so.

[00:05:45] Speaker 01:
The law, though, precludes that from making a difference.

[00:05:48] Speaker 01:
Once they decide its flavor, which they did,

[00:05:52] Speaker 01:
Undisputed in this record, once they decide it's a drink.

[00:05:55] Speaker 04:
Once they decide it's a, where did they decide that?

[00:05:58] Speaker 01:
That it's a flavor?

[00:05:59] Speaker 04:
Where did they decide it's generic?

[00:06:02] Speaker 01:
They didn't.

[00:06:03] Speaker 01:
They made findings which demanded a generic finding.

[00:06:07] Speaker 01:
And I outlined them.

[00:06:09] Speaker 01:
But then they turned around and used the evolutionary standard that they applied over time.

[00:06:16] Speaker 01:
Say advertising, promotion, success, changes the result.

[00:06:20] Speaker 01:
And that's what's legally wrong.

[00:06:21] Speaker 04:
I don't think they said it changes the result.

[00:06:24] Speaker 04:
Where did they say it changes the result?

[00:06:25] Speaker 04:
I think they balanced all of those factors in coming to a conclusion which they said was very close.

[00:06:31] Speaker 04:
and very difficult about whether this is in fact generic.

[00:06:35] Speaker 04:
I mean, I don't think I've ever seen the board be as balanced as they were in this case in terms of, boy, this is a really close one.

[00:06:43] Speaker 01:
Your reading of it is correct.

[00:06:47] Speaker 01:
They were balanced.

[00:06:48] Speaker 01:
They made fact-finding.

[00:06:49] Speaker 01:
They compared this and that.

[00:06:51] Speaker 01:
And Woff said this was something else.

[00:06:53] Speaker 01:
But that's not the legal standard that they had to apply, in which in Royal Crown, it was outlined.

[00:07:00] Speaker 01:
And in Weiss Noodle, it was begun, 1961 to 2018.

[00:07:02] Speaker 01:
The law in this circuit and all other circuits is absolutely consistent.

[00:07:09] Speaker 01:
The board didn't cite a case that supports a balancing approach.

[00:07:14] Speaker 01:
My learning colleagues here don't cite a case.

[00:07:16] Speaker 04:
I don't understand.

[00:07:17] Speaker 04:
Whether something is generic is a question of fact.

[00:07:19] Speaker 04:
And they're trying to figure out, is this generic or is it not generic?

[00:07:22] Speaker 04:
And at what point in time, which is another question, but at what point in time, it seems to me that assessing whether it's generic does require taking all these things into account.

[00:07:37] Speaker 04:
already been a determination it's generic.

[00:07:39] Speaker 04:
And that's the posture, I think, of the Frito-Lay and the Weiss case.

[00:07:43] Speaker 04:
There had already been determinations of genericness, weren't there?

[00:07:49] Speaker 01:
No.

[00:07:49] Speaker 01:
No.

[00:07:49] Speaker 01:
No.

[00:07:49] Speaker 01:
So in the Weiss-Doodle case, there was not.

[00:07:56] Speaker 01:
It was concluded that it was not generic below because of all of the things that outlined the success and the promotion and the association.

[00:08:06] Speaker 01:
But here, this court said very clearly, that does not matter.

[00:08:11] Speaker 04:
It doesn't matter because it was generic.

[00:08:13] Speaker 04:
The point being, it's already generic.

[00:08:18] Speaker 04:
And what you're telling me I should read the Weiss case for, I think, is the proposition that you can't pull a mark out of genericide.

[00:08:30] Speaker 04:
I think.

[00:08:31] Speaker 01:
Not generic side, but genericness.

[00:08:33] Speaker 01:
OK.

[00:08:34] Speaker 04:
OK, yes.

[00:08:34] Speaker 04:
OK, from genericness.

[00:08:35] Speaker 04:
Yes.

[00:08:36] Speaker 04:
But here, they're trying to figure out whether it is generic or not.

[00:08:42] Speaker 04:
And I don't know why all of this evidence can't be considered in that context.

[00:08:49] Speaker 01:
Because, again, respectfully, I believe the law precludes that.

[00:08:52] Speaker 01:
They made findings of flavor and type of drink from the bartending books.

[00:08:57] Speaker 01:
And then after adoption, they looked at the period from 2007 to the present and said things like, on the other hand, we recognize that a poser asserted that fireball is generic over 21 years ago, about a decade before fireball whisky's popularity started to meteoric in price.

[00:09:17] Speaker 01:
That was his assertion.

[00:09:18] Speaker 04:
That wasn't a finding.

[00:09:19] Speaker 04:
There was no finding of genericness.

[00:09:23] Speaker 04:
So there was an assertion.

[00:09:25] Speaker 04:
I grant you, there was an assertion.

[00:09:26] Speaker 04:
In fact, in a litigation way back when, they're the ones that asserted it.

[00:09:32] Speaker 04:
I get all that.

[00:09:32] Speaker 04:
I'm not oblivious to your argument.

[00:09:35] Speaker 04:
But there was no finding that this was, in fact, generic.

[00:09:38] Speaker 04:
And so the TTAB is looking at it in the first instance and saying, is it generic or not?

[00:09:46] Speaker 04:
And respectfully, I think they are looking at whether it's generic at

[00:09:51] Speaker 04:
the time that you're raising these issues, or at the time it was filed, or at the time.

[00:09:56] Speaker 04:
What is the timing?

[00:09:58] Speaker 04:
What is the timing at which you think they should be assessing whether it's generic?

[00:10:02] Speaker 01:
So the chronology, I believe, is undisputed, that they bought Dr. McGillicuddy's fireball, McGillicuddy's with an apostrophe S, in 1999.

[00:10:14] Speaker 01:
From Seagram.

[00:10:15] Speaker 01:
From Seagram.

[00:10:16] Speaker 01:
Yep, Seagram.

[00:10:17] Speaker 01:
In 2001, they began promoting and selling Dr. McGillicuddy's Fireball in the United States.

[00:10:24] Speaker 01:
They applied for the trademark for Dr. McGillicuddy's Fireball because, according to them, that's the brand they bought.

[00:10:31] Speaker 01:
In the application for that, they had to disavow that because the examiner determined that Fireball... They had to disclaim the Fireball piece.

[00:10:40] Speaker 01:
Yes.

[00:10:41] Speaker 01:
So Fireball piece, apart from the entire mark, because it was a drink, a known drink,

[00:10:46] Speaker 01:
So they continue to sell Dr. McGillicuddy's with Fireball disclaim until 2007, and they drop Dr. McGillicuddy's and begin selling Fireball alone.

[00:10:57] Speaker 01:
And that's, so to your question, that's the time.

[00:11:00] Speaker 04:
I still have an answer to a question, though.

[00:11:02] Speaker 04:
What is the time at which, from a legal standpoint, one should be assessing whether a mark is or is not generic?

[00:11:10] Speaker 04:
At what precise point in time?

[00:11:12] Speaker 04:
Are you saying it's when it's used in commerce?

[00:11:14] Speaker 04:
Are you saying it's when the mark is sought for registration?

[00:11:17] Speaker 04:
Are you saying it is when a cancellation proceeding is brought?

[00:11:21] Speaker 04:
What is the precise moment in time that you believe the genericness evaluation ought to take place?

[00:11:28] Speaker 01:
The first time they use it in commerce.

[00:11:31] Speaker 01:
Usually that coincides with registration, but it doesn't have to.

[00:11:34] Speaker 01:
It's not the claim first use, but it's the proven first use.

[00:11:38] Speaker 01:
Why?

[00:11:40] Speaker 04:
What authority do you have to suggest that that is the time in which genericness should be assessed under a cancellation proceeding?

[00:11:51] Speaker 01:
OK.

[00:11:53] Speaker 01:
The standard requires that timing, because it asks the question.

[00:11:58] Speaker 04:
What law?

[00:11:58] Speaker 04:
Point me to the law.

[00:11:59] Speaker 01:
Point me to whatever it is.

[00:12:01] Speaker 01:
It's Weiss Noodle to Royal Crown.

[00:12:05] Speaker 01:
It's the entire body of law which asks the question, is the mark?

[00:12:09] Speaker 00:
Is there any language in the statute that helps on the timing question?

[00:12:15] Speaker 01:
I didn't find any, Your Honor.

[00:12:19] Speaker 01:
It's just the nature of the framework that this court has adopted.

[00:12:24] Speaker 01:
No court that I've found has asked what the critical date is.

[00:12:28] Speaker 04:
I know, I know.

[00:12:30] Speaker 04:
But I've got to be telling you.

[00:12:32] Speaker 04:
But I think the statute does give us some indication, right?

[00:12:38] Speaker 04:
Because a cancellation proceeding under 2094 can be brought in order to see cancellation remark

[00:12:47] Speaker 04:
at any time if the registered mark becomes generic.

[00:12:52] Speaker 04:
So if Congress clearly contemplated that a mark could be or not be generic at a given time,

[00:13:06] Speaker 04:
Why wouldn't the time of the cancellation proceeding be the time at which you measure whether the mark is, in fact, generic?

[00:13:16] Speaker 01:
So this statute is broad enough to encompass two types of generic miscases.

[00:13:21] Speaker 01:
The one we have here, where it's generic at the time of first use, that can be changed according to what I believe the law says.

[00:13:29] Speaker 01:
And there are generic side cases where there's a coin term from the very beginning.

[00:13:34] Speaker 01:
And over time, it becomes so popular that the consuming public begins to associate the name of that, the trademark name, not with the source, but the good itself.

[00:13:48] Speaker 01:
Aspirin, elevator.

[00:13:51] Speaker 01:
arguably Lego.

[00:13:54] Speaker 01:
Those cases, you look at the time of trial to see if... This is a question of first impression as far as I'm concerned.

[00:14:01] Speaker 04:
I know that you think it's already been decided.

[00:14:03] Speaker 04:
I don't think it's already been decided.

[00:14:05] Speaker 04:
And from my perspective, I think about what is the point of trademark law and the Lanham Act, and it's to prevent deception, for the most part.

[00:14:13] Speaker 04:
So that's why at any time, if something becomes generic, you can go after it.

[00:14:17] Speaker 04:
and not so that a trademark can be canceled because there'll be misdescriptiveness.

[00:14:22] Speaker 04:
There'll be misassociation in the eyes of the public otherwise.

[00:14:25] Speaker 04:
And I just don't see how that, which is the primary goal underlying the Lanham Act, is consistent with your notion that something may, if something was generic in the 1800s,

[00:14:41] Speaker 04:
And then today, let me just tell you, none of my law clerks have ever heard of fireball candy, the atomic fireball.

[00:14:50] Speaker 04:
But you know what?

[00:14:51] Speaker 04:
We have.

[00:14:52] Speaker 01:
Me too.

[00:14:53] Speaker 04:
You know what they've all heard of?

[00:14:54] Speaker 04:
The shots.

[00:14:55] Speaker 04:
Yes.

[00:14:56] Speaker 04:
Right?

[00:14:56] Speaker 04:
I agree.

[00:14:57] Speaker 04:
So all those little kids up there know when we said fireball, they're like, oh my god, yeah, the shots.

[00:15:03] Speaker 01:
I agree.

[00:15:03] Speaker 04:
And you know what one of them thought?

[00:15:06] Speaker 04:
Cinnamon flavor.

[00:15:08] Speaker 04:
except for the fact that the shots are cinnamon flavor.

[00:15:11] Speaker 04:
So why, if in light of the notions behind the trademark law, which are what do people associate with this name and how do we prevent deceptiveness, I'm struggling with your argument that once generic, generic for all time.

[00:15:31] Speaker 04:
Because times change.

[00:15:33] Speaker 04:
I'm going to give you time.

[00:15:34] Speaker 04:
I'm not going to restore your rebuttal time.

[00:15:35] Speaker 01:
Don't worry.

[00:15:36] Speaker 04:
It's an interesting case.

[00:15:37] Speaker 01:
So it is.

[00:15:38] Speaker 01:
Two things.

[00:15:39] Speaker 01:
One is I agree that one of the principal purposes of the Lanham Act is to prevent misrepresentation or deception.

[00:15:46] Speaker 01:
The other important one is to protect competition and consumer choice.

[00:15:52] Speaker 01:
So for example, in the A.J.

[00:15:54] Speaker 01:
Canfield case, chocolate fudge for diet soda, the court there said, hey,

[00:16:01] Speaker 01:
There are important competitive issues here because one provider of diet soda cannot monopolize chocolate fudge.

[00:16:12] Speaker 01:
All providers need to be able to do it because it's the essence, the key aspect, it's the flavor of it.

[00:16:20] Speaker 00:
The timing question seems to be, at least as I'm thinking about it as you're talking,

[00:16:27] Speaker 00:
focused on the scenario, which I don't think we've quite seen an example of before, but that I think the board effectively found here, which is that there was a period, say from 2001 or 1955 or whenever,

[00:16:43] Speaker 00:
Fireball came on the market when everybody, when it was clearly, when the flavor was clearly named this.

[00:16:53] Speaker 00:
So it was generic as to the flavor.

[00:16:55] Speaker 00:
But by the time anybody here litigated the issue, let's assume that at that time, it's no longer viewed as the name of the flavor.

[00:17:14] Speaker 00:
And the question of which time period counts, I think, where the rubber meets the road is in a scenario.

[00:17:22] Speaker 00:
And I know you dispute the facts about that.

[00:17:26] Speaker 00:
But assuming that the board could reasonably find that today, this word is not generic as to the flavor.

[00:17:38] Speaker 00:
Why isn't that enough to say, well, at this point, there is no Lanham Act purpose to be served by taking it away from them?

[00:17:51] Speaker 01:
So your scenario assumes that I'm wrong about Weiss Noodle in all the cases that we cited, which preclude advertising promotion and success from changing.

[00:18:07] Speaker 00:
about why an action that is being requested to take place now shouldn't take place even if now there's not a generic character.

[00:18:21] Speaker 01:
I understand.

[00:18:21] Speaker 01:
So in generic side cases, which this is not, it should be at the time of trial.

[00:18:26] Speaker 01:
You look back and did it go over the edge?

[00:18:29] Speaker 01:
Did people say, oh, it's so popular?

[00:18:31] Speaker 00:
Because it's generic now.

[00:18:33] Speaker 01:
Yes, I agree.

[00:18:36] Speaker 01:
Scheme of the Lanham Act, not just the cancellation of registration, which you quoted, but the overall scheme says that a generic term is not entitled to registration.

[00:18:53] Speaker 01:
And so you look at the time it's being first used to determine whether it's generic, or distinctive, or something else.

[00:19:01] Speaker 00:
Right.

[00:19:02] Speaker 00:
But then the, what is it, section 14 that you've referred to before?

[00:19:07] Speaker 00:
1064.

[00:19:08] Speaker 00:
By using, I'm happy to call it 1064.

[00:19:13] Speaker 00:
It's section 14 of the landmark codified at 1064.

[00:19:18] Speaker 00:
With the use of the word becomes, maybe does

[00:19:22] Speaker 00:
say that if the issue doesn't get litigated until some later period, it's that point at which the registration is being challenged that counts.

[00:19:35] Speaker 01:
Right.

[00:19:36] Speaker 01:
And two things.

[00:19:38] Speaker 01:
Registered mark is defined in the Lanham Act to mean the mark that is registered.

[00:19:43] Speaker 01:
So here, that's fireball.

[00:19:45] Speaker 01:
So it's not the time of registration.

[00:19:47] Speaker 01:
It's the word that's being used in commerce.

[00:19:51] Speaker 00:
I think I understand that there is an argument, I mean none of this has been fleshed out, that actually

[00:19:58] Speaker 00:
You could challenge the mark status, notice I did not use the term registration, of fiberball term here, which is the premise of their opposition to your registration.

[00:20:16] Speaker 00:
You might be able to challenge that without effectuating a cancellation, because 1064 might not authorize the cancellation.

[00:20:24] Speaker 01:
All right, so that issue was not argued below.

[00:20:27] Speaker 01:
It was not passed upon below.

[00:20:29] Speaker 01:
And it could be why we're struggling with it here in the first instance.

[00:20:33] Speaker 01:
And so passing on it here is the wrong thing to do.

[00:20:37] Speaker 01:
But I would say a few things.

[00:20:39] Speaker 01:
One, no court has ever said 1064 is focused and only allows a finding of cancellation for genericide.

[00:20:53] Speaker 01:
when you look back.

[00:20:55] Speaker 00:
But I mean, I guess in looking at this statutory question, are you familiar with the 1961 case of the CCBA, Bart Schwartz and International Textiles?

[00:21:07] Speaker 00:
I'm not.

[00:21:07] Speaker 00:
I think that says it might be dictated about maybe that nonsense.

[00:21:15] Speaker 00:
We're going to rule for the Federal Trade Commission, which was the plaintiff there attacking something.

[00:21:24] Speaker 00:
So we don't have to get to the second ground.

[00:21:26] Speaker 00:
But the second ground was that, based on the alleged descriptiveness there of the mark but has not been considered for, it does not state a ground for Kant.

[00:21:35] Speaker 00:
And descriptiveness at that point was actually called.

[00:21:38] Speaker 00:
That's what generic was called then, right?

[00:21:41] Speaker 00:
had not been considered for.

[00:21:43] Speaker 00:
It does not state a ground for cancellation, which can be asserted by the Federal Trade Commission in a cancellation under the language of section 14.

[00:21:49] Speaker 00:
They're talking about becomes.

[00:21:51] Speaker 00:
And we know that because in the months that followed, the FTC went to Congress and said, can you change this language, please?

[00:21:58] Speaker 00:
And Congress said, we're not sure, but we're not going to do it now.

[00:22:02] Speaker 00:
This was actually an issue flagged, what, 60 years ago?

[00:22:09] Speaker 01:
not flagged in this case below, flagged for the first time in the opposition brief here.

[00:22:15] Speaker 01:
I will also say the case cited by my learned opponent is Pennington.

[00:22:20] Speaker 01:
It's called Pennington.

[00:22:22] Speaker 01:
And it dealt with the trademark rebel for grass seed.

[00:22:27] Speaker 01:
And the court there held

[00:22:29] Speaker 01:
that because rebel was known at the time of first adoption to be a type of grass seed with various characteristics, it was then and it will always be generic.

[00:22:45] Speaker 01:
So the case that they

[00:22:50] Speaker 01:
support for their proposition that becomes is limited to generic side is actually a non generic side case that supports the notion that here it's the time of course adoption and It's the entire statutory scheme and again, it hasn't been fleshed out because it hasn't been raised properly, but Challenges to trademarks on certain grounds they end at five years, right?

[00:23:18] Speaker 01:
certain of them

[00:23:20] Speaker 01:
never ends, if it's generic.

[00:23:23] Speaker 01:
That never ends.

[00:23:24] Speaker 01:
Fraud, that never ends.

[00:23:26] Speaker 01:
And so you look, and a registration is never allowed for a term that's generic in first instance.

[00:23:39] Speaker 01:
And so it would be an odd result, for sure, if the cancellation of registration statute cut out

[00:23:46] Speaker 01:
the ability to challenge something that should never have been registered in the first place.

[00:23:50] Speaker 04:
OK, I think we have your argument.

[00:23:52] Speaker 04:
At this point, we need to hear from the government.

[00:23:56] Speaker 04:
Thank you, Your Honor.

[00:23:59] Speaker 04:
Oh, we don't have the government.

[00:24:02] Speaker 04:
Miss Degnan, please proceed.

[00:24:04] Speaker 05:
Lauren Degnan for Sazerac.

[00:24:08] Speaker 05:
So I thought I would start reframing the issue here.

[00:24:12] Speaker 05:
I think the question is to highlight that the issue of the board's decision on genericness is a question of fact.

[00:24:20] Speaker 05:
The board made a factual finding that Bullshine had not proved genericness.

[00:24:27] Speaker 05:
That factual finding is supported by substantial evidence, and that can be the end of the question, because the evidence that supports the finding has been sued.

[00:24:36] Speaker 04:
Well, I don't think that can be the end of the question, because I think his argument is that

[00:24:40] Speaker 04:
they only reach that conclusion by considering evidence that they're prohibited from considering as part of that very question.

[00:24:47] Speaker 04:
So I don't think that that's the end of the question.

[00:24:49] Speaker 04:
I don't know if you just heard the last 25 minutes, but most of it was spent on at what time, because that determines what pieces of evidence the board is allowed to take into account and not take into account.

[00:25:01] Speaker 05:
Absolutely.

[00:25:01] Speaker 05:
So to answer your question, Judge Moore,

[00:25:03] Speaker 05:
The board looked at a long period of time.

[00:25:06] Speaker 05:
It looked at the time of registration, and it looked at the time of trial because it was addressing both those time periods.

[00:25:13] Speaker 05:
And so it did an analysis that looked at a variety of evidence.

[00:25:18] Speaker 05:
But with respect to the finding of non-genericness, we can look at the evidence of the appropriate time period and see that there is substantial evidence to support the finding.

[00:25:29] Speaker 04:
Again, I think the appropriate time period is a good question.

[00:25:32] Speaker 04:
Sure.

[00:25:32] Speaker 05:
I'm happy to talk about the total time period.

[00:25:34] Speaker 05:
And I think your question, Judge Toronto, is a good one.

[00:25:38] Speaker 00:
If we're going to look at the statute, the statute does talk about- I think there's a very, very strong argument that this contention was actually forfeited about the availability of the statute, particularly because I think it's kind of complicated to figure out what the right statutory interpretation is.

[00:26:00] Speaker 00:
But just on the question, which I think the chief initially brought up,

[00:26:04] Speaker 00:
What does this statutory language indicate about the timing at which genericness counts?

[00:26:16] Speaker 00:
Genericness amount counts.

[00:26:17] Speaker 05:
So I would agree that the statute, when it talks about becomes generic, it would be looking at the time, frankly,

[00:26:29] Speaker 05:
at any time up until the trial time.

[00:26:32] Speaker 05:
It had to become generic.

[00:26:34] Speaker 05:
And that assumes it was not generic ab initio because, again, you have to transition from something that was not direct to something that becomes generic under the statute.

[00:26:46] Speaker 05:
But if we want to focus in on the relevant time frame, if we're going to discuss, as in Chippendales, it was the time of registration that include for the 432 registration.

[00:27:00] Speaker 05:
was filed in 2001 and issued in 2004.

[00:27:03] Speaker 05:
Chimney-Dells tells us we need to look at that time period, obviously before.

[00:27:07] Speaker 05:
That would be relevant for the 432 registration.

[00:27:11] Speaker 05:
And the evidence in that time period includes the board's finding that the ward fireball was known for trademark use, more than non-trademark use, based on registrations for the atomic fireball, based on use by Sazerac,

[00:27:29] Speaker 05:
for Dr. McGillick-Killady's fireball whiskey shooter.

[00:27:34] Speaker 05:
That is evidence in the 2001 time frame.

[00:27:37] Speaker 05:
The board found that that was used in commerce of the fireball mark by Sazerac's predecessor.

[00:27:45] Speaker 05:
And that use is supported by the press release and the label that shows use of fireball.

[00:27:52] Speaker 05:
So that is substantial evidence that it was not generic because the board found it was being used in commerce.

[00:27:59] Speaker 05:
The board also looked at recipes.

[00:28:02] Speaker 00:
Let me just understand the fact.

[00:28:04] Speaker 00:
So Sazerac did not use fireball.

[00:28:10] Speaker 00:
in a mark way until it dropped Dr. McGillicuddy's in 2007.

[00:28:18] Speaker 00:
Because when you registered McGillicuddy's fireball, you actually disclaimed the mark status of the fireball.

[00:28:28] Speaker 00:
So you're talking about

[00:28:29] Speaker 00:
the period of use before you acquired whatever the company was that you sued, saying you're not supposed to be doing this.

[00:28:39] Speaker 05:
So let me clarify the facts.

[00:28:42] Speaker 05:
Sazerac did use, through Seabrooms, it's the acquisition of Seabrooms,

[00:28:47] Speaker 05:
fireball as a mark.

[00:28:49] Speaker 05:
The disclaimer you're referring to for Dr. McGillipell is- I'm sorry, Houston standing alone?

[00:28:54] Speaker 05:
Yes, we did.

[00:28:55] Speaker 05:
If you look at the label on Appendix A642- Where's the factual finding on that?

[00:29:02] Speaker 05:
The factual finding?

[00:29:03] Speaker 00:
I'm sorry, the fact that it's on the label does not indicate, does not establish that it's being used as a mark.

[00:29:08] Speaker 00:
You put all kinds of descriptive stuff on the label.

[00:29:12] Speaker 05:
Okay, that's what the board did find that that was used in commerce and it cited the label as evidence of abuse But to point to additional evidence in 2000 after the disclaimer in 2004 Sazerac attempted to withdraw the disclaimer and it filed a new What was the name of the princess Mohawk?

[00:29:34] Speaker 05:
Mohawk owned the 432.

[00:29:36] Speaker 00:
Mohawk was their brand, but there was another name for the company, also beginning with that.

[00:29:40] Speaker 05:
Yes, Marie Brazard was the litigation that was involved.

[00:29:45] Speaker 00:
Did that company use Fireball alone clearly as a mark?

[00:29:51] Speaker 05:
So the record shows that there were registrations and evidence of pictures of how they were using the mark.

[00:30:02] Speaker 05:
The record doesn't have sales data by that company.

[00:30:05] Speaker 05:
has sales data of our company selling the Dr. McGillicuddy's fireball whiskey.

[00:30:12] Speaker 05:
But just to go through this disclaimer, in 2004, Sazerac attempted to withdraw the disclaimer, was denied, and then filed another registration for exactly the same wordmark, Dr. McGillicuddy's fireball.

[00:30:26] Speaker 05:
And there was no disclaimer in that registration.

[00:30:30] Speaker 05:
And that was in 2004.

[00:30:32] Speaker 05:
So there was no suggestion

[00:30:34] Speaker 05:
Not only was there no disclaimer of that second registration, there was no rejection under descriptiveness either.

[00:30:40] Speaker 05:
So we take issue with any finding

[00:30:43] Speaker 05:
that this court might make, contrary to the board's finding, that there was no use, trademarked use, by our client before 2007.

[00:30:52] Speaker 05:
It was being used in 2001.

[00:30:54] Speaker 05:
It was continued the entire time from 2001 through 2004, continued on up through 2007 with the rebranding.

[00:31:03] Speaker 00:
Even though with all of that, including the 2004 registration, you're still not using it alone.

[00:31:10] Speaker 00:
You're still using it with Dr. McGillicutty's.

[00:31:12] Speaker 05:
is used on the bottle.

[00:31:15] Speaker 00:
So it would be like Xerox's photocopier.

[00:31:17] Speaker 05:
Yes, if you look at the imaging and the way it was being used, Fireball is displayed prominently.

[00:31:22] Speaker 05:
And again, the board made a finding that we were using it as a trademark.

[00:31:26] Speaker 05:
And that finding is subject to... Where exactly is that finding?

[00:31:30] Speaker 05:
That finding is Appendix 22-23.

[00:31:34] Speaker 05:
What is that?

[00:31:34] Speaker 05:
22-23.

[00:31:53] Speaker 05:
And it talks about the press release that we gave when we find it.

[00:31:56] Speaker 05:
And the press release is?

[00:31:58] Speaker 00:
On page 23, isn't it?

[00:32:03] Speaker 05:
Yes, thank you.

[00:32:05] Speaker 05:
That's right.

[00:32:05] Speaker 05:
So here, the board says, at the same time, it is using Fireball as a mark for its cinnamon whiskey product.

[00:32:15] Speaker 05:
and using cinnamon whiskey to identify the product's category, as shown in the press release shown on appendix 23.

[00:32:22] Speaker 05:
That is a finding by the board.

[00:32:24] Speaker 05:
It is supported by substantial evidence by both the press release, as well as the label that the board cited.

[00:32:29] Speaker 05:
You can see it on page 24 on the next page.

[00:32:33] Speaker 00:
And the press release is a language that says our company will introduce Fireball, cinnamon whiskey, and the newest member of the McGillicuddy's

[00:32:40] Speaker 00:
And then doesn't it immediately start talking about Dr. McGilligody's fireball?

[00:32:47] Speaker 00:
It talks about that it's part of the family of other drinks.

[00:32:51] Speaker 05:
Excuse me?

[00:32:51] Speaker 00:
That seems rather weak support for an idea that it was actually using, as he marked, stand-alone fireball at the time.

[00:33:02] Speaker 05:
Well, Your Honor, I think we look at the imaging.

[00:33:04] Speaker 05:
Fireball is prominent, displayed.

[00:33:06] Speaker 05:
And again, we're not looking at the substantial evidence test, with all due respect, is not a particularly high burden.

[00:33:12] Speaker 05:
And both of these things count.

[00:33:13] Speaker 04:
In addition, there's evidence on the board.

[00:33:15] Speaker 04:
What is this fact-finding?

[00:33:17] Speaker 04:
Doesn't the final sentence say, suffice it to say, based on the record in its entirety, during the early 2000s, the proponents did not consistently treat or use fireball as a mark?

[00:33:25] Speaker 04:
Well, it does say they didn't consistently do it.

[00:33:28] Speaker 05:
If there's a fact-finding, it doesn't seem to help you.

[00:33:31] Speaker 05:
I don't understand.

[00:33:32] Speaker 05:
Well, in addition to the... What am I missing?

[00:33:36] Speaker 05:
Well, it says that it was using it as a mark.

[00:33:38] Speaker 05:
And, you know, wasn't consistently using it as a mark is part of the evidence, but it's still a finding it was using it as a mark.

[00:33:44] Speaker 05:
Where did you say it was using it as a mark?

[00:33:45] Speaker 05:
On page 22, Your Honor, it was using Fireball as a Marford Cinnamon Risky product on the previous page.

[00:33:51] Speaker 00:
That last sentence on 22.

[00:33:58] Speaker 00:
And then the pictures of the bottles come from 2007, right?

[00:34:02] Speaker 05:
So the picture on page 24 shows the rebranding from 2007, but I would direct the court to the attention of Appendix 642, which reproduces exactly the same picture on the left-hand side of that picture there.

[00:34:15] Speaker 05:
And from, you know, 240, 642 is, I'm sorry, the picture is reproduced at Appendix 639 showing U.S.

[00:34:28] Speaker 05:
sales of 2001.

[00:34:31] Speaker 05:
at 639.

[00:34:33] Speaker 05:
And then the board also mentions that in this time frame, Sazerick's product enjoyed modest success.

[00:34:40] Speaker 05:
It says modest success in the first several years of offering the product.

[00:34:46] Speaker 05:
And that's at appendix 24 is the finding.

[00:34:49] Speaker 05:
And the support is appendix 640 at paragraph 13.

[00:34:53] Speaker 05:
So this is evidence of use in commerce on a product that shows it was trademarked used in 2001.

[00:35:01] Speaker 05:
as early as 2001, and it continued onward.

[00:35:07] Speaker 05:
I think substantial evidence supports the finding.

[00:35:10] Speaker 05:
We have to accept that it was being used in commerce by our client as of 2001.

[00:35:14] Speaker 05:
And as a result, that was an appropriate time frame for it to be.

[00:35:19] Speaker 05:
It was the time when the mark was being registered, the 432 mark.

[00:35:23] Speaker 05:
And it was continued in use through 2004.

[00:35:27] Speaker 05:
Again, we had this issue with disclaimer, and we're calling the disclaimer in 2004.

[00:35:32] Speaker 05:
And it continued on all the way up through 2008 when we had the second registration.

[00:35:36] Speaker 04:
You're spending a lot of time on this.

[00:35:38] Speaker 04:
I guess I don't understand.

[00:35:39] Speaker 04:
You're really wanting us to conclude that it was used in 2001, not 2007.

[00:35:47] Speaker 04:
What substantial impact does that have on this case?

[00:35:50] Speaker 05:
Well, the impact is, Your Honor, that it was not generic evidence issue in 2001.

[00:35:53] Speaker 05:
The board made a finding that, and that's finding supported by substantial evidence.

[00:35:57] Speaker 05:
It was not generic in 2001.

[00:35:59] Speaker 05:
The board also made a finding it was not generic in 2008, taking into consideration all the evidence prior to 2008 with respect to the second registration.

[00:36:09] Speaker 05:
And so in this entire time period, if we're looking at the period of time of the registration, the board made findings saying it's not

[00:36:17] Speaker 05:
It's not generic, and those findings are supported by substantial evidence.

[00:36:22] Speaker 05:
We can continue on through the time of trial, as the board also found, and the evidence only gets better that it was not generic, because the evidence on which they rely predominantly are these recipes.

[00:36:36] Speaker 05:
These recipes have never been consistent.

[00:36:39] Speaker 05:
And most of the recipes were talked about in terms of books that were not directed at the relevant, consuming public.

[00:36:47] Speaker 05:
These recipe books are directed to bartenders, not the public, the consuming public, which is consumers of whiskey and pours.

[00:36:55] Speaker 05:
And so at any relevant time, the board was very thorough looking at all the time periods available to it, and at every possible moment,

[00:37:04] Speaker 05:
it found that the mark was not generic.

[00:37:07] Speaker 05:
And that finding, those findings are scored by substantial evidence, and so that part of the decision should be affirmed.

[00:37:14] Speaker 02:
So just to be clear, you're saying that the times of registration, that the appropriate times, is it the moment of registration and the time of trial?

[00:37:26] Speaker 02:
That's when you look at

[00:37:27] Speaker 05:
We think yes.

[00:37:29] Speaker 05:
We think that the law is clear, that it'd be talking about it.

[00:37:31] Speaker 02:
So all these other pictures that you were showing us and everything, that doesn't matter, does it?

[00:37:35] Speaker 05:
Well, I think this is in 2007, and one of the registrations was filed in 2008.

[00:37:39] Speaker 05:
It's certainly relevant to look at that time period.

[00:37:41] Speaker 05:
That's evidence that tends to prove a fact in 2008, because it's close in time to the 2008 time period.

[00:37:47] Speaker 02:
Well, that kind of confuses the issue.

[00:37:51] Speaker 02:
Now you're talking about relevancy.

[00:37:53] Speaker 02:
It's two years out, three years out.

[00:37:55] Speaker 02:
Is that relevant?

[00:37:56] Speaker 05:
To answer your question very precisely, I think under Chippendales, we look for ab initio genericness at the time of registration.

[00:38:03] Speaker 05:
And Chippendales explains it can be at the time of filing through issuance of the registration.

[00:38:08] Speaker 02:
That's what 1604 says.

[00:38:10] Speaker 05:
That's what the statute says, 1604.

[00:38:15] Speaker 05:
1064.

[00:38:15] Speaker 05:
1064 says it becomes generic.

[00:38:18] Speaker 05:
So that would be a generic side.

[00:38:19] Speaker 05:
scenario, and that would be at the time you would look at any period of time up until the time of trial of whether it became generic.

[00:38:27] Speaker 05:
And again, the board looked at that entire period of time.

[00:38:29] Speaker 00:
I'm not quite sure I understood what you said.

[00:38:32] Speaker 00:
Did you just say that, in fact, the right time to look at this is the time of registration, not today?

[00:38:39] Speaker 05:
I think because they have argued that this is not a generic side case.

[00:38:44] Speaker 00:
There are three periods, three possible periods, right?

[00:38:49] Speaker 00:
way back before this registration, and then today.

[00:38:56] Speaker 00:
Do you think that the right time is the registration time, which is neither the earlier nor today?

[00:39:02] Speaker 05:
Our position is this, Your Honor.

[00:39:04] Speaker 05:
for a generic ab initio from the beginning as the time of registration.

[00:39:09] Speaker 05:
That is the time.

[00:39:10] Speaker 05:
For a generic side, it would be the time of trial.

[00:39:13] Speaker 05:
And you can look at the period, any period coming up through the time of trial.

[00:39:17] Speaker 04:
How do you challenge generic ab initio?

[00:39:20] Speaker 04:
Under what statutory section?

[00:39:22] Speaker 05:
So our position is, Your Honor, is that the Latinx 1064 does not allow that.

[00:39:28] Speaker 05:
And I appreciate your point that that issue was not fully vetted below.

[00:39:32] Speaker 05:
But our position is that under the statute, it says becomes generic.

[00:39:37] Speaker 05:
You cannot charge it ab initio.

[00:39:40] Speaker 04:
So I don't understand.

[00:39:41] Speaker 04:
When is it you think generic ab initio, as you call it, should be challenged?

[00:39:49] Speaker 05:
At the time of registration, Your Honor.

[00:39:51] Speaker 05:
That is the time we think it's well, and we rely on the Chippendale case for support.

[00:39:55] Speaker 05:
Because if you're just saying that this registration should not have issued initially, you would look at the time of registration.

[00:40:02] Speaker 05:
As of that time, is that mark generic?

[00:40:06] Speaker 04:
And under what statutory provision?

[00:40:08] Speaker 04:
Under what statutory provision is that challenge being made?

[00:40:11] Speaker 05:
um... that i think that's just that would be the uh... i don't have a statute you're on a basis that the statute allows you to register in the first instance and that's what you want ten fifty one maybe i think so why don't you look it up and you look it up and i think it would be an opposition there we go and this was case law what periods of time

[00:40:35] Speaker 00:
did the board look at evidence for?

[00:40:38] Speaker 05:
The board was very thorough.

[00:40:39] Speaker 05:
So in making its findings with respect to the time of registration, it reached back in time and looked at the evidence of record, all the evidence before it.

[00:40:46] Speaker 00:
Up to the time of registration.

[00:40:47] Speaker 05:
Up until the time of registration.

[00:40:48] Speaker 00:
Did it look at evidence, I guess, for the last 16 years?

[00:40:52] Speaker 05:
So not for it?

[00:40:53] Speaker 00:
Post-registration until last Saturday night?

[00:40:56] Speaker 05:
Well, and remember, there's one from 2001 and one from 2008.

[00:41:00] Speaker 05:
So it looks at that evidence, and so

[00:41:04] Speaker 05:
For the time of registrations, our answer is no.

[00:41:07] Speaker 05:
It did look at evidence after the time of registrations with respect to up and through time of trial, because it also made findings as of the time of trial.

[00:41:15] Speaker 00:
But it's got two sections in its report.

[00:41:17] Speaker 00:
So what relevance are those findings up to the time of trial to the cancellation issue, putting aside your statutory point that cancellation is not available for something that started out

[00:41:31] Speaker 05:
All right, so I have two responses to that.

[00:41:33] Speaker 05:
First, they don't challenge the findings with respect to the time of trial.

[00:41:37] Speaker 05:
So that's weak.

[00:41:38] Speaker 00:
Well, they say that under Weiss and other cases, it's legally irrelevant.

[00:41:42] Speaker 00:
So you wouldn't expect them to challenge it, right?

[00:41:45] Speaker 05:
What is the relevance of that?

[00:41:47] Speaker 00:
What did the board rely on those for, and why are they relevant under your view that the

[00:41:54] Speaker 00:
relevant time is the time of registration, not anything since in the last 16 years.

[00:41:59] Speaker 05:
The board relied on them because in terms of the evidence presented to it and the arguments that was being made to it, it wasn't entirely clear that this wasn't a generic side case.

[00:42:09] Speaker 05:
So it was OK for the board to rely on that evidence for its finding as of the time of trial.

[00:42:16] Speaker 05:
To affirm under our view, which is the time of registrations, you don't have to look at that evidence at all.

[00:42:21] Speaker 05:
Because there's substantial evidence at the time of registration that the mark was used as a mark.

[00:42:29] Speaker 05:
The evidence is not showing that the name is a common generic name for a good.

[00:42:39] Speaker 05:
Ward made the contrary finding that it was not generic.

[00:42:42] Speaker 05:
And so if you look at the evidence from that time frame, that evidence supports the finding.

[00:42:47] Speaker 05:
So under our theory, when we're only looking at ab initio at the time of the registrations, the fact that the board did a very thorough job in making findings at the time of trial is good for the board.

[00:42:58] Speaker 05:
But we can focus on the time of the registrations and still affirm and should affirm because of the evidence that supports the findings in that time period.

[00:43:14] Speaker 05:
I'm way over my time, Your Honor.

[00:43:17] Speaker 05:
I would like to talk about the cross-appeal, but I want to answer the questions you have.

[00:43:21] Speaker 04:
You've just completely confused me, though.

[00:43:25] Speaker 04:
So let me just ask you something.

[00:43:26] Speaker 04:
Is it your view that a mark could be registered, not be generic at the time, or be generic at the time it's registered, later on not be generic at the time it's challenged, and the challenge should lose?

[00:43:46] Speaker 05:
So then this hypothetical, which again is not our facts given the findings we have, but in the hypothetical that the t-tab makes a mistake and it registers a generic mark.

[00:43:57] Speaker 05:
And then it's challenged later under the statute saying it had to have become a generic.

[00:44:02] Speaker 05:
And in the later time period, it in fact is not generic and the evidence is undisputed.

[00:44:07] Speaker 05:
In that hypothetical, we actually think that would be OK.

[00:44:11] Speaker 05:
I don't even think that that is.

[00:44:13] Speaker 03:
You think what would be OK?

[00:44:15] Speaker 05:
We think that it would be too late to challenge because you're after the five years.

[00:44:20] Speaker 05:
You can only challenge if the column is generic.

[00:44:23] Speaker 05:
And if it hadn't become generic after its initial registration, then you wouldn't be able to cancel it.

[00:44:29] Speaker 05:
In your hypothetical, where there was a mistake that was made initially.

[00:44:32] Speaker 04:
But it doesn't even have to be a mistake that was made because you could have somebody who doesn't register the mark during the period of time in which it is, in fact, generic and then seeks to register it at some later date.

[00:44:45] Speaker 04:
when they believe through their own use it's acquired sufficient secondary meaning that it is no longer generic, that now the consumer public perceives it as a source identifier, even if they didn't initially, right?

[00:44:57] Speaker 04:
Right.

[00:44:57] Speaker 04:
Isn't that a set of facts that could exist?

[00:44:59] Speaker 05:
That is a set of facts that could exist.

[00:45:00] Speaker 05:
And to answer that, I think what this court has said in cases that bind all of us in this room is that you can't take a word that is generic.

[00:45:09] Speaker 05:
and transform it into a trademark through secondary meaning.

[00:45:14] Speaker 05:
That's what this Court has said.

[00:45:15] Speaker 05:
And we're not, of course, this panel can't overturn that law.

[00:45:18] Speaker 05:
So under that law, you can never take a generic word out of the,

[00:45:26] Speaker 05:
then use it as a trademark.

[00:45:28] Speaker 05:
It cannot acquire secondary meaning.

[00:45:30] Speaker 05:
Now, that law, I think, from a policy perspective, is questionable because we do know, especially from Chippendales, that marks do evolve over time.

[00:45:38] Speaker 05:
They can become stronger and they can become weaker.

[00:45:41] Speaker 05:
Words have different meaning over time.

[00:45:43] Speaker 05:
And I think your question sort of suggested that sort of tension is that the law is clear that marks can go up and down over time.

[00:45:50] Speaker 05:
But given the law that this court has set forth in its cases saying you can never remove

[00:45:55] Speaker 05:
Once it's generic, it's always going to be generic.

[00:45:58] Speaker 05:
I think under your scenario, we run into statutory issue.

[00:46:04] Speaker 05:
If you put that aside, we generally agree that this court has said that you can't sort of rescue a generic word and turn it into a trademark, regardless of the amount of secondary meaning that has been attributed to it.

[00:46:19] Speaker 04:
So you think that Weiss Noodle case stands for that?

[00:46:23] Speaker 05:
I can't speak to the Weiss Meadow case today, Your Honor.

[00:46:26] Speaker 05:
I just do know that there are cases that we've seen and cited that this court has said.

[00:46:33] Speaker 05:
What cases?

[00:46:34] Speaker 05:
I don't have them handy.

[00:46:35] Speaker 05:
I apologize for that.

[00:46:40] Speaker 04:
So you're saying there's a definitive proposition of law that we can't get around, but you don't know any cases for it?

[00:46:47] Speaker 05:
Forgive me, Your Honor.

[00:46:47] Speaker 05:
Just standing here, I don't have the cases on hand.

[00:46:49] Speaker 05:
Do you know the cases?

[00:46:54] Speaker 03:
No, I think the conversation maybe got confused about timing and generics, but no.

[00:47:04] Speaker 05:
OK.

[00:47:04] Speaker 05:
Do you have more questions for me?

[00:47:05] Speaker 05:
I'd love to talk about my cross appeal, but I want to be respectful of our time.

[00:47:08] Speaker 03:
Do you want to do anything on the cross appeal?

[00:47:10] Speaker 03:
Do you need anything on the cross appeal?

[00:47:13] Speaker 03:
Nope.

[00:47:13] Speaker 03:
Cross it.

[00:47:13] Speaker 05:
Thank you.

[00:47:22] Speaker 01:
Well, it sounds like we may have agreement as to the law, but not as the precise timing.

[00:47:30] Speaker 01:
So there's a concession that the law precludes.

[00:47:33] Speaker 04:
You do understand there can't be concessions on law, right?

[00:47:35] Speaker 04:
You guys can't stipulate to law.

[00:47:38] Speaker 01:
I agree.

[00:47:39] Speaker 01:
They presented no law contrary to what I've presented to you.

[00:47:42] Speaker 04:
That I'll agree with.

[00:47:44] Speaker 01:
Thank you.

[00:47:45] Speaker 01:
Weiss Noodle.

[00:47:46] Speaker 01:
going all the way to Royal Crown and beyond says what I said.

[00:47:51] Speaker 01:
The question appears now to be, do you time that at the time of first use or registration?

[00:47:58] Speaker 04:
But what about her argument on the factual

[00:48:02] Speaker 04:
findings of the board.

[00:48:05] Speaker 04:
I think that her default is it doesn't matter what the time period was because the board evaluated everything and the board evaluated just this part and the board evaluated just that part and no matter what day they were tethering themselves to it was not generic at any one of those precise times and so that none of the times that you proposed that are the time we should be looking at this for did the board

[00:48:31] Speaker 04:
not already conclude against you on a fact-finding.

[00:48:36] Speaker 01:
She pointed to two things.

[00:48:37] Speaker 01:
First thing was appendix 22 to 23.

[00:48:40] Speaker 01:
And there is a notation that firewall was being used as a mark for cinnamon whiskey.

[00:48:51] Speaker 01:
And the support for that is one press release.

[00:48:55] Speaker 01:
where it says in the very beginning, Fireball, the newest taste sensation and member of the Dr. McGillicuddy's family.

[00:49:04] Speaker 01:
And so it's going back and forth between using it as a trademark and noting that Fireball is a taste.

[00:49:12] Speaker 01:
And then the board notes immediately, on the other hand, in the same press release of Opposer, Sizeret,

[00:49:20] Speaker 01:
states that menthol, mint, schnapps, vanilla schnapps, and fireball are members of the family, which could be perceived as equating fireball with the flavors, menthol, mint, vanilla, schnapps.

[00:49:36] Speaker 01:
And then as Your Honor noted, the ultimate conclusion is that there's not consistent treatment or use of fireball.

[00:49:43] Speaker 04:
Well, it doesn't have to be consistent.

[00:49:45] Speaker 04:
The first thing on page 20, it doesn't have to be consistent to be used as a trademark.

[00:49:49] Speaker 04:
At first thing she said, which seemed accurate, is the board's fact finding that it was using Fireball as a mark at that time.

[00:49:59] Speaker 04:
That's on page 22.

[00:50:00] Speaker 01:
There's one notation for that?

[00:50:03] Speaker 04:
It's not called a notation.

[00:50:05] Speaker 04:
That's called a fact finding.

[00:50:06] Speaker 01:
But the ultimate fact finding is it's inconsistent.

[00:50:09] Speaker 04:
And it's inconsistent with- No, it's treatment.

[00:50:11] Speaker 04:
They didn't say it's inconsistent because they said it didn't consistently treat it as a mark.

[00:50:15] Speaker 04:
But I don't think you have to consistently treat it as a mark to claim you've used it as a mark.

[00:50:21] Speaker 01:
Immediately thereafter, they applied for Dr. McKillicuddy's firewall, because according to their court representative, that was the brand that they bought.

[00:50:30] Speaker 01:
And we know the trademark prosecution history on that.

[00:50:33] Speaker 01:
they needed to disclaim it and disavow exclusive rights as to it.

[00:50:38] Speaker 04:
And in point and fact, they only use... But I guess whether it's been used as a mark or not doesn't mean it's generic.

[00:50:46] Speaker 04:
I don't understand.

[00:50:47] Speaker 04:
How does...

[00:50:49] Speaker 04:
Help me connect your arguments.

[00:50:51] Speaker 04:
I'm just trying to follow it.

[00:50:52] Speaker 04:
And I found this case very confusing.

[00:50:54] Speaker 04:
How does whether they for sure were using it as a mark or not at this exact time impact whether it was or was not generic at this exact time?

[00:51:04] Speaker 01:
From my perspective, it only affects the timing.

[00:51:07] Speaker 01:
It affects the timing of when the board should have inquired as to whether that name, term, whatever you want.

[00:51:14] Speaker 01:
Why?

[00:51:14] Speaker 04:
That's first use in commerce.

[00:51:15] Speaker 04:
That's not even registration.

[00:51:18] Speaker 01:
I agree, I don't think it's registration because of your hypothetical, Your Honor.

[00:51:21] Speaker 04:
You could sit on, you could be using for a long time a mark in commerce, and then acquire- I thought you said you looked to first commercial use as a time to assess genericness, or did you say you look at the date of registration to assess genericness?

[00:51:37] Speaker 01:
Our position is first commercial use.

[00:51:40] Speaker 01:
Their position now appears to be time of registration.

[00:51:44] Speaker 01:
I believe your hypothetical pointed out why it needs to be first use.

[00:51:48] Speaker 01:
You could be using in commerce a generic term, attempting to acquire trademarks through promotion, success, and acquiring association.

[00:52:02] Speaker 01:
contrary to Weiss Noodle and all the law we've talked about.

[00:52:05] Speaker 01:
And then later, once you succeed, file your registration.

[00:52:08] Speaker 01:
And if it's timed at registration, then you've circumvented the law.

[00:52:15] Speaker 01:
And I believe that this is like an invalidity case for patents.

[00:52:20] Speaker 01:
There is a date.

[00:52:21] Speaker 01:
Where you test, is it new or not obvious?

[00:52:26] Speaker 01:
And it's the date of first use.

[00:52:27] Speaker 01:
It's the time you try to take it out of the public domain and take it for yourself.

[00:52:32] Speaker 04:
But just out of curiosity, isn't it the case under trademark law?

[00:52:37] Speaker 04:
that when you apply for a mark, it's the date of registration where it's, for example, distinctiveness is assessed?

[00:52:43] Speaker 04:
And isn't genericness the spectrum of distinctiveness from, you know, suggestive, distinctive, you know, arbitrary, generic?

[00:52:52] Speaker 04:
And isn't it the case that for all registration purposes, that assessment is done the day of registration and not the day of first commercial use?

[00:53:02] Speaker 01:
The work is done after registration.

[00:53:04] Speaker 01:
Not the work.

[00:53:05] Speaker 01:
Not the work.

[00:53:06] Speaker 04:
Doesn't the law say you assess distinctiveness of which generic is a part under 1061, 1064, whatever it is, don't you do it at the time of registration?

[00:53:19] Speaker 04:
Isn't that when the distinctiveness of a mark is considered by the office for purposes of assessing whether to allow it to be registered?

[00:53:28] Speaker ?:
No.

[00:53:28] Speaker 01:
It's the date of first use, and that's why the applicant... Where?

[00:53:30] Speaker 04:
What case do you have that says it's date of first use?

[00:53:33] Speaker 01:
I believe it's the statute.

[00:53:34] Speaker 01:
Again, Your Honor, this is something that was not raised below.

[00:53:37] Speaker 01:
Does the 1604 say differently?

[00:53:40] Speaker 01:
1064 talks about at any time.

[00:53:43] Speaker 01:
It's okay That one says if at any time and so here I would apply that to Before the popular candy fireball fireball was something as in the dictionary falling from the sky But over time because of its popularity The flavor became I know but that's not what I just have one question for you.

[00:54:07] Speaker 04:
Yes, which is at what time is

[00:54:10] Speaker 04:
And under what law can I see at what time precisely the board decides or the TTAB decides when someone attempts to register a mark?

[00:54:21] Speaker 04:
What is its level of distinctiveness?

[00:54:25] Speaker 04:
Because that is critical to its registration.

[00:54:28] Speaker 04:
And I think it's absolutely positively at the time of registration.

[00:54:33] Speaker 04:
And I think that's what the law says.

[00:54:34] Speaker 04:
I don't, as I sit here, know what statute to point to.

[00:54:37] Speaker 04:
I don't know what case to point to.

[00:54:38] Speaker 04:
I'm asking you if you have one that maybe I could look at, because you seem to think I'm not right about what I think the law is.

[00:54:48] Speaker 01:
I don't have a case because this was not briefed, but I will point to the statutes which I think say it's the time of first use.

[00:54:55] Speaker 01:
And it's 15 USC 1052E, 15 USC 1065-4, and

[00:55:06] Speaker 04:
Can I just tell you why I think I'm right?

[00:55:08] Speaker 04:
I mean, I don't know 100% for sure that I'm right, for sure, but the reason I think I'm right is because you can move on that distinctiveness chain as we all recognize under trademark law, right?

[00:55:21] Speaker 04:
From the arbitrary to the suggestive, to the distinctive, to the generic.

[00:55:26] Speaker 04:
You can move on it.

[00:55:28] Speaker 04:
And you know what makes it move a lot?

[00:55:31] Speaker 04:
Secondary meaning, it makes you move.

[00:55:34] Speaker 04:
It can change a mark that starts out in one category and move it to the other.

[00:55:39] Speaker 04:
Secondary meaning is something you acquire with use.

[00:55:42] Speaker 04:
So I'm pretty sure since registration considers distinctiveness and secondary meaning can move you on that timeline of distinctiveness,

[00:55:51] Speaker 04:
that they've got to be doing it at the time of registration.

[00:55:53] Speaker 01:
Can I respectfully say I disagree?

[00:55:55] Speaker 04:
Yeah, no, of course.

[00:55:55] Speaker 04:
You don't need to be respectful.

[00:55:57] Speaker 04:
Just go for it.

[00:56:00] Speaker 01:
Secondary meaning is acquired over time and only affects the category of distinctiveness, which does not include inherently distinctive terms.

[00:56:13] Speaker 01:
So for example,

[00:56:15] Speaker 01:
If you take, if you took fireball before the candy even exists, can you not use fireball, please?

[00:56:21] Speaker 01:
Like just because you're, if you, if you just, I don't know what the right example is then.

[00:56:27] Speaker 01:
Um, but, but if it's in the higher categories of distinctiveness, secondary meaning never matters, right?

[00:56:38] Speaker 04:
Well, the only time secondary, secondary meaning never matters when you have something truly arbitrary.

[00:56:44] Speaker 04:
Right?

[00:56:45] Speaker 04:
Right.

[00:56:46] Speaker 01:
So here I was going to try fireball before the candy, because I do think that that would have been suggestive, right?

[00:56:53] Speaker 01:
A ball of fire is being used to describe a drink.

[00:56:56] Speaker 01:
Huh.

[00:56:57] Speaker 01:
You'd have to use some creativity to say, that must be spicy or hot or something.

[00:57:03] Speaker 01:
Let me try that.

[00:57:04] Speaker 01:
That would be a trick.

[00:57:04] Speaker 01:
Not a lot.

[00:57:06] Speaker 01:
Really hot.

[00:57:07] Speaker 00:
Right.

[00:57:07] Speaker 00:
No, no, not a lot of creativity to think that.

[00:57:10] Speaker 00:
Oh, some.

[00:57:10] Speaker 00:
A lot.

[00:57:11] Speaker 00:
I don't know.

[00:57:12] Speaker 00:
Some?

[00:57:12] Speaker 00:
That's why we use the word hot.

[00:57:15] Speaker 01:
for Certain taste in the mouth and also for you know eat from fighting things right, but don't just be Hot as opposed to fireball soda or something and so I don't think it matters for most categories And so it needs to be and we always tell the office the data first use because that's when it's measured and so

[00:57:43] Speaker 04:
OK, you know what?

[00:57:44] Speaker 04:
I think we're good.

[00:57:46] Speaker 00:
You have one more question?

[00:57:47] Speaker 00:
Oh my god, you didn't have a chance to get it out?

[00:57:49] Speaker 00:
It may not be as central to the disposition of the case as what we've been talking about.

[00:57:54] Speaker 00:
But there's a sentence on page 27 of your yellow brief.

[00:57:57] Speaker 00:
And I wonder if you think in order for you to win, we need to endorse this sentence.

[00:58:02] Speaker 00:
And the sentence reads, Harvard trains bartenders to service the relevant consuming public.

[00:58:10] Speaker 01:
Well, I think that's axiomatically true.

[00:58:12] Speaker 00:
That's what Harvard does.

[00:58:14] Speaker 00:
Well.

[00:58:15] Speaker 04:
I think that this may be a date.

[00:58:17] Speaker 04:
Just to be clear, he is not studying bartending.

[00:58:21] Speaker 04:
I'm not sure what.

[00:58:24] Speaker 01:
It's an extracurricular.

[00:58:24] Speaker 01:
I thought it was an amusing sentence.

[00:58:27] Speaker 01:
All right.

[00:58:27] Speaker 01:
OK.

[00:58:27] Speaker 01:
Thank you, Your Honor.

[00:58:28] Speaker 04:
I appreciate it.

[00:58:29] Speaker 04:
OK.

[00:58:29] Speaker 04:
I thank all the council's cases for their submissions.