[00:00:00] Speaker 03:
This case is Burel and Monsignal Inter-Processing Analogy Cognac vs. Colon and Cognac Entertainment, 2023-1100.

[00:00:11] Speaker 03:
Mr. Boerty.

[00:00:16] Speaker 01:
Thank you, Your Honor.

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

[00:00:19] Speaker 01:
In its decision below, the Trademark Tribal Appeal Board majority used incorrect legal standards in its analysis of the most important likelihood of confusion factors.

[00:00:29] Speaker 03:
Can you state that just a little bit, please?

[00:00:31] Speaker 01:
Absolutely.

[00:00:32] Speaker 01:
The strength and fame of the opposers' mark.

[00:00:34] Speaker 01:
Is that better?

[00:00:35] Speaker 01:
Thank you.

[00:00:36] Speaker 01:
The similarity of the parties' marks and the relatedness of goods and services.

[00:00:42] Speaker 01:
As to one of these, the similarity of marks, the majority also made factual findings without citing or having any supporting evidence.

[00:00:49] Speaker 01:
And contrary to the record,

[00:00:52] Speaker 03:
These questions don't look alike.

[00:00:54] Speaker 03:
The word Cognac and Cognac, Cologne Cognac Entertainment with the Spockos look quite different.

[00:01:03] Speaker 01:
There are other words in the applicant's mark, certainly, Your Honor, but in a number of cases in this court and in the majority opinion, the majority found that the word Cognac was part of the dominant element

[00:01:20] Speaker 01:
of the applicant's mark, and it was reinforced by what the majority found was an image of a cognac bottle.

[00:01:28] Speaker 01:
There was no dispute about that.

[00:01:30] Speaker 01:
And that gives the consumer the impression that the mark is about cognac, not about cologne, not about entertainment.

[00:01:40] Speaker 03:
But the viewpoint factors were found to be either neutral or not on your side.

[00:01:47] Speaker 01:
That is correct, and we argue that with respect to all three of the factors that were found against the opposers, the incorrect legal standard was applied.

[00:01:57] Speaker 01:
And I have to go through each of those, Your Honor, in detail.

[00:02:03] Speaker 03:
Can we talk a little bit about what the consumer is supposed to be aware of when confronted with this particular mark?

[00:02:11] Speaker 03:
First, let me just say I think, for all on the same page,

[00:02:15] Speaker 03:
The same analysis is used when we're dealing with a common law mark as opposed to a registered mark, right?

[00:02:23] Speaker 03:
And secondly, we all agree that the DuPont factors are the test users in the 2D analysis.

[00:02:29] Speaker 03:
But here we have a mark that your expert says in her declaration is giving a consumer awareness both of the region from which the product comes and the mode of manufacture, the quality.

[00:02:45] Speaker 03:
Correct?

[00:02:46] Speaker 03:
So you would agree that this is a dual-function mark.

[00:02:50] Speaker 01:
It is.

[00:02:51] Speaker 01:
But it only needs to have the regional certification.

[00:02:55] Speaker 03:
That's what I wanted to get at.

[00:02:59] Speaker 03:
So in 1998, almost 30 years to the date, and we were under in this case, so it's like a reprise.

[00:03:07] Speaker 03:
The 1998 board said that, at least in connection with asking whether the mark is generic,

[00:03:13] Speaker 03:
The mark needs only to disclose or to make the consumer aware of the region.

[00:03:21] Speaker 03:
And the question that the majority of the board, in this case, came to the opposite conclusion, correct?

[00:03:31] Speaker 01:
That's correct, Your Honor.

[00:03:32] Speaker 03:
And that's mainly a fundamental legal error is that one.

[00:03:36] Speaker 03:
That's correct.

[00:03:37] Speaker 03:
And the incorrect measurement of commercial success.

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

[00:03:42] Speaker 03:
So look to me like those are the two big issues in the case.

[00:03:45] Speaker 01:
Those are the two big ones, yes.

[00:03:47] Speaker 03:
Because you're not going to get to fame without them, unless you can overcome that.

[00:03:52] Speaker 01:
Correct.

[00:03:53] Speaker 01:
And fame cuts across both the completion plan and the execution plan.

[00:03:56] Speaker 03:
Then the mistakes that were made by the board

[00:04:05] Speaker 03:
and connotation and other issues are there to be discussed in a very well brief.

[00:04:12] Speaker 03:
But it certainly means that the core issues in the case are whether the bill is correct in saying that there has to be evidence of consumer awareness of what are called mode of manufacture and equality.

[00:04:24] Speaker 03:
And so the answer is, why not?

[00:04:27] Speaker 01:
That's not what the board said, actually.

[00:04:29] Speaker 01:
And let me be clear.

[00:04:30] Speaker 03:
Well, it's not way away from what it is the consumer has to be aware of.

[00:04:34] Speaker 01:
Yes.

[00:04:35] Speaker 01:
The consumer, it depends on what kind of certification mark you're talking about.

[00:04:38] Speaker 01:
There are certification marks of regional origin that only certify as to regional origin.

[00:04:44] Speaker 01:
And for those, what the consumer needs to understand is that the mark signifies an exclusive region from which that type of product originates.

[00:04:55] Speaker 03:
In other words, mode of manufacture is not an issue in this case.

[00:04:59] Speaker 01:
That's not an issue on appeal in this case.

[00:05:01] Speaker 03:
That's correct.

[00:05:02] Speaker 03:
Can I ask you a question?

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

[00:05:05] Speaker 03:
that is not a mark for a regional designation, but it's for quality control, like underwriters lab.

[00:05:12] Speaker 01:
Correct.

[00:05:12] Speaker 03:
Now what does the consumer have to know about that when they have to know about the certification?

[00:05:17] Speaker 01:
So according to the TTAB case law,

[00:05:20] Speaker 03:
It's a question of first impression here.

[00:05:25] Speaker 01:
It is a question of first impression.

[00:05:26] Speaker 01:
What I would say is you look to the statutory definition of certification.

[00:05:31] Speaker 01:
Whatever it is the statute says, that's what the mark must be known for.

[00:05:35] Speaker 03:
So if you have a certification mark that is only for quality, not a manufacturer, right?

[00:05:42] Speaker 01:
It has to be known as such.

[00:05:43] Speaker 03:
So you have a mark that has both

[00:05:48] Speaker 03:
region and mode of manufacture in it, correct?

[00:05:52] Speaker 01:
That is what this particular mark involves.

[00:05:56] Speaker 03:
So that's a dual function mark.

[00:05:59] Speaker 03:
Yes.

[00:05:59] Speaker 03:
You have a dual function mark.

[00:06:01] Speaker 03:
So you would agree that if it were a single function mark only for the quality control, you would have to be aware of that.

[00:06:10] Speaker 03:
That's correct.

[00:06:11] Speaker 03:
But you say for this dual purpose mark, you only have to be aware of the region

[00:06:16] Speaker 01:
That's not quite what we're arguing, Your Honor.

[00:06:19] Speaker 01:
Just to be clear, what we're saying is for it to be a famous mark, it only needs to be famous for one of those things.

[00:06:27] Speaker 01:
And in this case, it's famous for its regional exclusivity.

[00:06:31] Speaker 01:
it clearly is famous as representing where the product comes from.

[00:06:35] Speaker 01:
Now, is it also famous as representing mode of manufacture, materials used, and so forth?

[00:06:41] Speaker 01:
That's not clear.

[00:06:41] Speaker 01:
That was not addressed in the record below, and it wasn't really tried.

[00:06:45] Speaker 03:
This is very important to tease this out, because the problem that I have with the 1998

[00:06:54] Speaker 03:
expectation is that it isn't really focused on the 2D analysis because you never got to a 2D trial in that case.

[00:07:02] Speaker 03:
It was all in the terms of running out the phone, had found a little genericness.

[00:07:07] Speaker 03:
And so this distinction about exactly what it is that a consumer has to be aware of in a double their mark, my view is that for fame, it would be sufficient to be either one.

[00:07:20] Speaker 01:
Correct.

[00:07:21] Speaker 03:
That's right.

[00:07:24] Speaker 03:
The question here was more on this to the quality control lady.

[00:07:28] Speaker 01:
Good housekeeping.

[00:07:29] Speaker 03:
The recipe for this or the other?

[00:07:32] Speaker 01:
Correct.

[00:07:33] Speaker 02:
And let me just also clarify.

[00:07:35] Speaker 02:
I just ask you, so you can go ahead, but hypothetically, if you're trying to present evidence, could you, so,

[00:07:43] Speaker 02:
This segment of the consumer audience understands this to be a regional mark that Cognac is placed in France and the evidence there.

[00:07:52] Speaker 02:
And then you can also bring in a different set of the consumer market and say, well, they understand – they may understand the region, but they really understand that this is made according to specific production methods and very detailed things, and they appreciate the quality because of that.

[00:08:10] Speaker 02:
would that be one way of proving it's famous?

[00:08:13] Speaker 02:
Yes, Your Honor.

[00:08:14] Speaker 02:
And that also... Or is that the only way?

[00:08:16] Speaker 02:
Do you have to do... That's, I think that...

[00:08:19] Speaker 02:
If you're asking for a molecule that's based on both of those, are you obligated to bring in evidence on both, or only one, and why?

[00:08:27] Speaker 01:
I think it depends on whether you are asking for fame as to both of those aspects of the certification.

[00:08:35] Speaker 01:
If you are seeking a determination of fame as to both, then yes, you have to prove fame as to both of those.

[00:08:41] Speaker 02:
I find this case difficult because the legal framework to analyze it is kind of lacking, which I guess is why there's – it's a question first.

[00:08:52] Speaker 02:
Why is it that if you're only – even though it's a dual certification mark, and that's what you've asked for, if you're only asking for fame, you only have – as to one part of it, you only – what precedent?

[00:09:05] Speaker 02:
any precedent, or is it just you're reading a basic trademark on the statute?

[00:09:11] Speaker 01:
There's no question that the precedent says with respect to the geographic aspect of the certification mark.

[00:09:16] Speaker 01:
It's a geographic certification mark, whether it's something else as well.

[00:09:20] Speaker 01:
And the fact of it being a certification mark depend on consumer awareness of the regional significance, the exclusive connection between that region and the goods.

[00:09:30] Speaker 01:
There really isn't any case law except in the area of pure non-geographic certification marks like underwriters laboratory or good housekeeping seal approval where, again, the standard is do people recognize it as such, as certifying to those things.

[00:09:45] Speaker 01:
Now, I want to come back to Judge Clevenger's question because – and your question, Judge Hughes, calls to mind the case that you sat on in Newbridge where the issue was who's the relevant consumer for measuring confusion.

[00:10:02] Speaker 01:
And it's always the consumers of the product when you're talking about basic Section 2D likelihood of confusion analysis.

[00:10:10] Speaker 01:
But when you're talking about fame, you may need to go more broadly.

[00:10:13] Speaker 01:
You may need to look at a broader cross-section of the population than simply those who enjoy that product.

[00:10:20] Speaker 01:
And we're fine with that, but that wasn't the standard that was applied here.

[00:10:24] Speaker 01:
And to go to Judge Clevenger's comment, I just want to be clear that our view of the way

[00:10:31] Speaker 01:
majority ruled in this case did not have anything to do with the dual function of the Cognac certification mark.

[00:10:40] Speaker 01:
It had to do with something that the majority invented called certification mark status.

[00:10:45] Speaker 01:
That is, that consumers, they acknowledge.

[00:10:49] Speaker 01:
They use the word renown.

[00:10:51] Speaker 01:
The mark is renowned for its geographic significance as representing where this type of Randy comes from.

[00:10:59] Speaker 01:
But they said, but consumers don't know of its certification status.

[00:11:03] Speaker 01:
And that has never been a requirement.

[00:11:06] Speaker 01:
It's not in the statute.

[00:11:07] Speaker 03:
I don't know what they meant.

[00:11:08] Speaker 01:
We don't either.

[00:11:09] Speaker 01:
But it's not in the statute.

[00:11:10] Speaker 03:
And either we know what you meant back in 1998 when you drew a distinction between consumer awareness of a mark that serves to certify rather than a mark that serves to indicate you drew a distinction

[00:11:28] Speaker 03:
then on the generic loose issue.

[00:11:31] Speaker 03:
So you can have a mark that I was thinking maybe that I was talking about, the mark doesn't have to make a consumer aware of the actual certification process.

[00:11:43] Speaker 03:
Yes.

[00:11:44] Speaker 03:
The mark doesn't have to tell you what's happening in France.

[00:11:47] Speaker 03:
It just has to let you know that something happened that certified as a quality.

[00:11:53] Speaker 01:
I don't have specifically what you're referring to from that 98 case, but I would say there is clearly in the statute a distinction between a, for example, a trademark that has geographic significance.

[00:12:05] Speaker 01:
A trademark can have geographic significance as long as it also has secondary meaning.

[00:12:09] Speaker 01:
But a certification mark has to have geographic significance and it has to have two other things.

[00:12:15] Speaker 01:
It has to have control

[00:12:17] Speaker 01:
by a certifier, and it has to be used not by the certifier.

[00:12:23] Speaker 01:
And it has to be non-discriminately applied to third-party markets.

[00:12:27] Speaker 02:
And is your point that those last two things you're talking about, the board required you to prove that an actual consumer would know, rather than just the flamelessness of the cognac region?

[00:12:37] Speaker 01:
Exactly.

[00:12:38] Speaker 01:
That's what I would consider, as I understand the majority's decision, to be certification status.

[00:12:45] Speaker 01:
Again, it's not crystal clear, of course.

[00:12:51] Speaker 02:
As Cognac, the consumer would have to know all about France's system of making Cognac and the regions.

[00:13:00] Speaker 02:
I mean, France, all of their alcohol and wine production is incredibly complex, and even people that know a little bit about it sometimes don't understand the Byzantine nature of everything.

[00:13:10] Speaker 01:
Yes, Your Honor.

[00:13:11] Speaker 01:
I've been doing this for almost 40 years, and I still don't know everything there is to know about that system.

[00:13:18] Speaker 03:
So one of your bottom line points is that

[00:13:20] Speaker 03:
in terms at least with regard to fame, that one needs only to know if one can establish fame by showing considerance of the geographic region.

[00:13:32] Speaker 01:
Correct.

[00:13:32] Speaker 01:
And of course, that it is in fact controlled and used not by... No, no, that's not the consumer.

[00:13:42] Speaker 01:
I'm sorry if I confuse you.

[00:13:43] Speaker 01:
I'm not saying the consumers need to be aware of it.

[00:13:45] Speaker 01:
That's the certification status.

[00:13:46] Speaker 01:
What I'm saying is to meet the statutory elements for a certification mark, you've got to show those things.

[00:13:54] Speaker 03:
I don't think there's any doubt here that there is a certain expectation mark.

[00:13:58] Speaker 03:
And we're not talking about qualifying as a sort of organization.

[00:14:01] Speaker 03:
We're not talking about whether it's being challenged as being generic.

[00:14:04] Speaker 03:
We're talking about 2D.

[00:14:05] Speaker 03:
That's right.

[00:14:06] Speaker 03:
So it's the likelihood of confusion in the mind of the relevant consumer, whomever that is.

[00:14:11] Speaker 03:
Yes.

[00:14:12] Speaker 03:
There's an open question here in my mind about whether the bird properly defined or ever defined.

[00:14:18] Speaker 03:
whatever the consumer is.

[00:14:20] Speaker 03:
Yes.

[00:14:20] Speaker 03:
Because there's a mixture there, and maybe if the case were manned, it would benefit from a closer analysis.

[00:14:27] Speaker 03:
But it seems to me that what you're trying to say also is that there's teasing out of these two functions, both of which clearly exist and are, that for a phone analysis, it's sufficient to show that a consumer is aware of the original connection.

[00:14:44] Speaker 01:
Yes, correct.

[00:14:45] Speaker 01:
Correct.

[00:14:46] Speaker 03:
But nothing to do with the quality.

[00:14:48] Speaker 01:
That's not necessary unless you're claiming fame as to that aspect of the certification.

[00:14:52] Speaker 03:
So let me ask you a question.

[00:14:55] Speaker 03:
We know that a certification work is going to travel in the marketplace along with another name of some sort.

[00:15:02] Speaker 03:
Yes.

[00:15:03] Speaker 03:
Although it's probably possible that you could sell something just called Cognac.

[00:15:09] Speaker 03:
But practically, Cognac, if it's coming from France,

[00:15:14] Speaker 03:
It's probably going to have a lot of name on it besides Cognac because it's not going to pass the future families with just the name on it because they're looking at a particular name.

[00:15:23] Speaker 01:
Just to correct you, Ryan, I'm not sure I agree with what you just said.

[00:15:27] Speaker 01:
You could, Martel, Remy Martin, they could sell a brandy called Martel Remy Martin without using the term Cognac on it.

[00:15:34] Speaker 01:
That's not required under either French law or U.S.

[00:15:37] Speaker 01:
law.

[00:15:37] Speaker 01:
The amici make this brandy.

[00:15:39] Speaker 03:
How about going in the country?

[00:15:41] Speaker 01:
As long as it meets the U.S.

[00:15:43] Speaker 01:
standard of identity, it would have to say brandy.

[00:15:45] Speaker 01:
It has to have some classification under the Alcohol, Tobacco, Tax, and Trade Bureau's regulatory scheme.

[00:15:52] Speaker 03:
I thought if it came from France, it can't get through customs without a certification when it passed on the first test.

[00:15:58] Speaker 01:
If it says CONAC, it has to have a certificate that says this is genuine.

[00:16:03] Speaker 03:
If it says CONAC, it can't get in without a brand name on it.

[00:16:07] Speaker 01:
It can get in without a brand name.

[00:16:08] Speaker 03:
That would be unusual.

[00:16:10] Speaker 03:
Thanks for the education, but your time is over.

[00:16:13] Speaker 03:
The key question here is whether the commercial success issue in this case, which is the big part of fame, so I think you over-evolved in here.

[00:16:24] Speaker 03:
Right.

[00:16:24] Speaker 03:
So the question is, you're always going to probably always going to have another mark.

[00:16:30] Speaker 03:
And in this case, there are several marks on it.

[00:16:32] Speaker 03:
The big four are dominant.

[00:16:34] Speaker 03:
So the question is, what's the right way to assess the commercial impact?

[00:16:39] Speaker 03:
The board seems to me to have said, well, when the two travel together, there'll be a presumption.

[00:16:45] Speaker 03:
In essence, we're going to assume that the main brain dominates, unless there's a showing of the contrary.

[00:16:52] Speaker 03:
That seemed to me to be wrong.

[00:16:53] Speaker 03:
It doesn't seem to me the only time we've seen this before was in Bose.

[00:16:57] Speaker 03:
And although it isn't for sure, because in Bose, you didn't have this case where all the marks traveled together, Bose said, well, you measure them independently.

[00:17:09] Speaker 01:
Correct, Your Honor.

[00:17:10] Speaker 01:
In your decision, in Bose, you set up what I understood to be... The court's decision, yeah.

[00:17:14] Speaker 01:
The court's decision.

[00:17:17] Speaker 01:
In that decision, the court set up what I understood to be sort of a two-step analysis.

[00:17:22] Speaker 01:
First, you look to see whether there's independent evidence of the fame of the certification mark standing alone.

[00:17:29] Speaker 01:
You look at things like books and newspapers and articles and movies and everything, all of which is in this record and all of which was argued vigorously.

[00:17:37] Speaker 03:
Council your role in excess of your time.

[00:17:41] Speaker 01:
I realize that.

[00:17:41] Speaker 03:
So let's hear from the other side and we'll give you three minutes for a bottle.

[00:17:46] Speaker 01:
Might I just answer the last question?

[00:17:48] Speaker 01:
Please do.

[00:17:50] Speaker 01:
The second step is that if you find that independent evidence, then you certainly have to consider the evidence of the so-called co-branded

[00:17:59] Speaker 01:
sales and advertising.

[00:18:00] Speaker 01:
You can't just discount it and ignore it the way the majority did in this case.

[00:18:04] Speaker 03:
That's how I... But you're basically looking at them independently.

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

[00:18:07] Speaker 03:
And you don't apply your presumptions.

[00:18:09] Speaker 01:
And this is before the dilution statute was written, Your Honor, but if you look at the dilution statute, when it says this is how you measure fame, what it says is,

[00:18:19] Speaker 01:
the duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties, and same for sales.

[00:18:29] Speaker 01:
That's in the statute.

[00:18:31] Speaker 03:
That's the statutory definition of the same factor.

[00:18:33] Speaker 03:
I think it's time to hear from you.

[00:18:34] Speaker 01:
Yes, thank you, Your Honor.

[00:18:35] Speaker 01:
And thank you for the additional time.

[00:18:36] Speaker 03:
Thank you.

[00:18:37] Speaker 03:
Mr. Klobuchar.

[00:18:55] Speaker 00:
Thank you, Your Honor.

[00:18:57] Speaker 00:
May it please the Court.

[00:18:59] Speaker 00:
We're not asking for any finding that is a change in the law.

[00:19:04] Speaker 00:
We're simply asking that you uphold what the Board decided.

[00:19:08] Speaker 02:
If the Board has the law correct and you're incorrect, you're asking us to uphold an incorrect law.

[00:19:17] Speaker 00:
What's what the appellant is arguing?

[00:19:19] Speaker 02:
I know you argue this is a substantial evidence case, but I think there's a definitely a legal issue here about these certification marks.

[00:19:26] Speaker 02:
And the board seemed to require that the relevant consumer know of the certification process or the fact why you would get a CONRAC mark or something to that effect.

[00:19:38] Speaker 02:
I found its decision a little hard to parse.

[00:19:42] Speaker 02:
But why is that true?

[00:19:43] Speaker 02:
Why don't you just have to associate CONRAC

[00:19:46] Speaker 02:
the problem with the region in France where it comes from and that it's famous for coming from.

[00:19:52] Speaker 00:
I think the board did make reference to the certification status.

[00:20:00] Speaker 00:
Independently, the board also made reference to the correct test for fame.

[00:20:06] Speaker 00:
They cited Bose, which we talked about just a minute ago.

[00:20:11] Speaker 00:
The marks need to be viewed independently

[00:20:14] Speaker 02:
And the board also... That's not the question I was asking you about.

[00:20:17] Speaker 02:
We can get to the independent nature of the two different marks.

[00:20:21] Speaker 02:
But I was asking you, the board seemed to rely heavily on the fact that they didn't show enough about the certification process itself and just relied on the fame of cognac as coming from the region.

[00:20:35] Speaker 02:
So why is that legally correct?

[00:20:38] Speaker 02:
Because I think the word acknowledge that there is fame for coming from the Cognac region, right?

[00:20:45] Speaker 02:
Why isn't that enough to make it famous?

[00:20:50] Speaker 00:
i mean i think what you have to take a look at is you have to take a look at the totality of the circumstances you have to take a look at the sales you have to take a look at the advertising and you have to take a look you're not answering the right question you're under different stuff

[00:21:05] Speaker 02:
The board rejected CONAC is famous because it found that it didn't go beyond just the region and show something as to the certification process itself.

[00:21:17] Speaker 02:
It noted, right, that the consumers, they didn't show that the consumers understood the certification process or something to that effect.

[00:21:27] Speaker 02:
If they require that, and we think that's legal error, isn't that a problem?

[00:21:33] Speaker 02:
If you think it's not legal error, then tell me why it isn't legal error.

[00:21:37] Speaker 00:
Yeah, if that was a requirement.

[00:21:40] Speaker 00:
I think what they grabbed onto was the earlier decisions by the board that said that the region is a famous region in France.

[00:21:50] Speaker 00:
The region, being a famous region, doesn't necessarily equate to fame for the trademark.

[00:21:57] Speaker 00:
The region can be famous in and of itself.

[00:22:00] Speaker 00:
The question then becomes, does the fame of the region extend legally, you know, to the trademark?

[00:22:06] Speaker 03:
Fame of the region for what?

[00:22:10] Speaker 00:
I'm sorry?

[00:22:11] Speaker 03:
Fame of the region for what?

[00:22:13] Speaker 03:
Fame for what?

[00:22:15] Speaker 00:
They said that it was a renowned and well-known region.

[00:22:17] Speaker 00:
It was just a famous place?

[00:22:19] Speaker 00:
Yes, exactly.

[00:22:20] Speaker 03:
You don't have nothing to do with the production of the... Right.

[00:22:26] Speaker 03:
That's not what the Brewerberg said.

[00:22:30] Speaker 03:
But if you're talking about the 1998 one, which one are you talking about?

[00:22:34] Speaker 00:
Yeah, back in, you know, 98 when they talked about the region, you know, in and of itself.

[00:22:39] Speaker 03:
It was famous for production of Kodak.

[00:22:42] Speaker 00:
Right.

[00:22:43] Speaker 00:
But I mean, it's a famous region, but they didn't extend the fame to the trademark itself at that point.

[00:22:50] Speaker 03:
There isn't actually a full declaration of fame in the 1988 season.

[00:22:57] Speaker 03:
Excuse me?

[00:22:59] Speaker 03:
There's not a holding of fame in a two-year setting.

[00:23:03] Speaker 03:
The 1998 decision was came up on several judgment motions.

[00:23:09] Speaker 03:
And the holding, the fair trial of the Marquess Everett was survived, and there were several judgment motions in the case for schedule to go to trial.

[00:23:16] Speaker 03:
There would have been a two-year analysis there never was, because by and large, it was through its mark.

[00:23:23] Speaker 02:
That's correct.

[00:23:27] Speaker 03:
So what is your answer to Joe Hughes's question?

[00:23:31] Speaker 00:
I mean, I don't believe that the production methods are required.

[00:23:37] Speaker 00:
And that's what's being referred to here, the knowledge.

[00:23:40] Speaker 00:
And I think we talked about that.

[00:23:41] Speaker 00:
I think the appellant talked about that as well, that the production... I'm not even sure the boy was talking about the production methods.

[00:23:47] Speaker 02:
I think they were talking about the method for getting Cognac certified by the French government.

[00:23:53] Speaker 02:
That clearly can't be relevant in whether something's famous or not, right?

[00:23:58] Speaker 00:
I don't find it to be relevant as to whether something is famous.

[00:24:01] Speaker 00:
Ultimately, no.

[00:24:03] Speaker 02:
Is the only question for us whether Cognac is a famous mark is whether the relevant consumers would understand Cognac to be famous for its geographic designation in France.

[00:24:21] Speaker 00:
I believe that's correct, and I believe that if they required the knowledge of the production methods and the certification methods, then yes.

[00:24:37] Speaker 03:
But I think ultimately what you find is that, you know, they do talk about... Let's ask you the second key question in the case, which is any certification

[00:24:49] Speaker 03:
In the trademark case, when you're trying to measure commercial success of the certification mark, how do you go about measuring that?

[00:24:59] Speaker 03:
You have sales of products like Martel here and others that have a mark associated with that.

[00:25:06] Speaker 03:
So how do you decide how much of the commercial success goes to the certification mark as opposed to the bank?

[00:25:15] Speaker 03:
It's a good question, and I think... Well, that's the answer.

[00:25:17] Speaker 03:
I get to ask the questions in this field, and you get to answer.

[00:25:22] Speaker 00:
And I think the court, you know, this court in Bowes, you know, really touched on that.

[00:25:27] Speaker 03:
How did the board do here?

[00:25:28] Speaker 03:
How did the board answer my question?

[00:25:31] Speaker 03:
How do you go about measuring the... deciding which part of the commercial success falls where?

[00:25:38] Speaker 03:
What was the board holding?

[00:25:39] Speaker 00:
Yeah.

[00:25:39] Speaker 00:
And so the board held that the evidence was lacking at the end of the day.

[00:25:44] Speaker 03:
What was the test the board used?

[00:25:45] Speaker 00:
And so they used a test of advertising expenditure.

[00:25:50] Speaker 03:
Didn't the board say there was a presumption?

[00:25:53] Speaker 03:
I'm sorry?

[00:25:53] Speaker 03:
Didn't the board say that there was a presumption that in a case like this, we're going to assume that the commercial success lies with the brand unless the holder of the certification mark demonstrates to the contrary?

[00:26:09] Speaker 03:
I believe that's correct.

[00:26:10] Speaker 00:
In the words of the board's opinion?

[00:26:12] Speaker 00:
I believe that's correct.

[00:26:14] Speaker 00:
And, you know, ultimately you believe and you know?

[00:26:17] Speaker 00:
It is correct, yes.

[00:26:19] Speaker 03:
And is that the correct test?

[00:26:22] Speaker 02:
Yes.

[00:26:23] Speaker 02:
Why?

[00:26:24] Speaker 02:
Why is there a presumption?

[00:26:26] Speaker 02:
You don't usually get presumptions in the law.

[00:26:28] Speaker 02:
Those are used to fill in gaps when it's hard to come forward with evidence or they're written into the statute.

[00:26:35] Speaker 02:
Why would there be a presumption that the name brand would predominate over the geographic region?

[00:26:41] Speaker 00:
I think ultimately when you have to view the products as they're presented to the consumer and the consumer is

[00:26:51] Speaker 00:
practically hit in the face, you know, with the, what I would call the house mark, the Remy, the Martel.

[00:26:57] Speaker 00:
That's how the consumers presented with it.

[00:27:00] Speaker 02:
Yes, so why is there a presumption?

[00:27:01] Speaker 02:
Why doesn't the board look at the name brand and then the Konrack mark and then look at the evidence from the Konrack people and say they provided enough evidence to show that Konrack is also famous?

[00:27:14] Speaker 02:
lies or presumption that the name brand is the basis for the commercial success rather than Cognac.

[00:27:22] Speaker 02:
Why isn't it just a head-on evidentiary question?

[00:27:25] Speaker 02:
You understand the difference, right?

[00:27:27] Speaker 02:
It makes the burden harder on them.

[00:27:29] Speaker 02:
And what's the legal basis for upping the burden on them?

[00:27:32] Speaker 00:
It does make it, to some extent, harder at the end of the day.

[00:27:37] Speaker 00:
But the evidence should be able to speak for itself.

[00:27:40] Speaker 02:
That's not answering my question.

[00:27:41] Speaker 02:
My question is, as a matter of law, law there should be a presumption.

[00:27:46] Speaker 02:
Is it based in the statute?

[00:27:49] Speaker 00:
I don't believe it's based in the statute, no.

[00:27:51] Speaker 02:
So where does it come from?

[00:27:52] Speaker 02:
Did they just make it up out of thin air?

[00:27:56] Speaker 02:
Is there any good policy reason why you would prefer a name brand over a Marquite Cognac?

[00:28:02] Speaker 00:
I mean, not that I'm immediately aware.

[00:28:04] Speaker 02:
So if they did that, then isn't that legal air?

[00:28:07] Speaker 02:
Doesn't it need to go back on that point, too?

[00:28:10] Speaker 02:
It could be construed to be that way.

[00:28:13] Speaker 02:
But didn't they say presumption?

[00:28:15] Speaker 02:
They did.

[00:28:16] Speaker 02:
If we think there shouldn't be a presumption, then it's legal air.

[00:28:19] Speaker 02:
That would be right.

[00:28:25] Speaker 00:
You know, I think part of what the, you know, board struggled with on this point was the, you know, conflation between, you know, the two marks that is the house marks and the certification marks.

[00:28:37] Speaker 00:
You know, oftentimes when the appellates presented evidence, they referenced both certified cognac goods and certified cognac product independently of one

[00:28:47] Speaker 00:
And so each time they referred to it, they kind of lumped everything together.

[00:28:51] Speaker 00:
And they did a lot of that further when they were talking about media impressions, sales, et cetera.

[00:28:58] Speaker 00:
And I think that's what the board had a hard time with.

[00:28:59] Speaker 02:
But that's why the board has to sort out whether the fame is due to the main brand marks so late or to the Cone Rock mark, or maybe it's famous for both, without applying a presumption, without putting a thumb on the scale.

[00:29:15] Speaker 02:
And I think that'd be desperate.

[00:29:23] Speaker 02:
Well, but they didn't do that.

[00:29:31] Speaker 02:
I'm sorry, the goods and services.

[00:29:37] Speaker 02:
I mean, wasn't the board overly stringent in saying that it had to be the exact same type of goods and services and that obviously your client doesn't produce liquor and theirs does?

[00:29:49] Speaker 02:
I mean, isn't it just an association between the different markets?

[00:29:53] Speaker 02:
It is an association.

[00:29:54] Speaker 00:
I mean, that is the correct standard.

[00:29:57] Speaker 02:
But didn't the board reject it because of that precise reason?

[00:30:01] Speaker 00:
I don't believe they rejected it for that reason.

[00:30:03] Speaker 02:
But there's plenty of evidence that there is an association with the hip-hop market in Cognac, right?

[00:30:11] Speaker 02:
I mean, the records replete with that.

[00:30:13] Speaker 00:
The record definitely shows that the Cognac houses

[00:30:18] Speaker 00:
the Remy, the Martel, those are the entities that are engaging with the hip hop industry.

[00:30:23] Speaker 02:
You know, it's not- Who else would they be engaging with?

[00:30:26] Speaker 02:
That's the people that produce the cognac.

[00:30:30] Speaker 00:
Right, but I mean, it's not the appellant themselves.

[00:30:33] Speaker 00:
I mean, it's the cognac houses at the end of the day.

[00:30:39] Speaker 04:
So what?

[00:30:39] Speaker 03:
Why does that matter?

[00:30:43] Speaker 03:
There was a clear overlap in the consumers

[00:30:48] Speaker 03:
but between the consumers and the users in the hip-hop community with the makers of cognac?

[00:30:56] Speaker 00:
At a certain level.

[00:30:57] Speaker 03:
I mean, I don't believe the evidence shows or suggests that the hip-hop... A very deep level is every single person who listens to hip-hop music hears about cognac and quality cognac.

[00:31:11] Speaker 03:
And the performers, the lead performers who perform in that field have themselves gone to France

[00:31:18] Speaker 03:
and produced cognac that put their own brand on it, along with the cognac certification.

[00:31:29] Speaker 03:
So the inner mixture between the rap music industry and the cognac industry is undeniable.

[00:31:37] Speaker 00:
There is, and that's one particular industry.

[00:31:39] Speaker 00:
I think you have to look at a larger viewpoint in terms of how it's extended outside of what the board

[00:31:46] Speaker 00:
you know, tried to constrain to, and I think what Judge Hughes was touching on, you know, with, um, you know, the hip hop industry in and of itself.

[00:31:54] Speaker 00:
I think there's, there's a larger area that has to be involved.

[00:31:58] Speaker 00:
I mean, it's not the entire hip hop industry is, is intimately, you know, involved with, with Cognac.

[00:32:04] Speaker 00:
You know, there are some players, there are some celebrities who are involved with it, but that in and of itself, I don't believe creates the crossover, you know, between the market at the end of the day.

[00:32:17] Speaker 02:
Why?

[00:32:18] Speaker 02:
I mean, all this evidence shows that it seems like the board rejected it not because there wasn't enough evidence.

[00:32:26] Speaker 02:
They said, your client is based in recording and audio-visual industries, and yours is based in liquor.

[00:32:33] Speaker 02:
And so they're not the similarity of goods.

[00:32:37] Speaker 02:
If they said that, that's legal, right?

[00:32:40] Speaker 00:
No, I don't.

[00:32:41] Speaker 02:
Well, isn't it, because that's an overly strict requirement on association, as opposed to the factual stuff you're arguing.

[00:32:49] Speaker 02:
Are you saying that because your client does recordings and audio and whatever else they do and they do liquor, that there can never be an association between the two?

[00:33:01] Speaker 00:
It's not that there can never be an association.

[00:33:04] Speaker 02:
There could be, you know, associations and... But the Lord seemed to reject it on that point because, I mean, the record is just replete with association evidence between those two industries.

[00:33:17] Speaker 02:
I mean, I think the evidence... I mean, if the board didn't use that legal test, that improperly narrow legal test, then why isn't their decision not supported by substantial evidence?

[00:33:28] Speaker 02:
Because the amount of evidence they put in seems like no reasonable person could find that there wasn't an association between the hip-hop industry and the cognac mark.

[00:33:41] Speaker 00:
I mean, there is an association, but some association doesn't immediately remove itself to confusion.

[00:33:48] Speaker 00:
And I think part of that hinges, you know, going back to what we talked about.

[00:33:51] Speaker 02:
But didn't they find there wasn't, in that best way, against them?

[00:33:54] Speaker 02:
At best, they should have found that it was neutral, but they didn't.

[00:33:58] Speaker 00:
That is correct.

[00:34:01] Speaker 00:
And I think part of that comes down to the fame factor that we talked about earlier.

[00:34:05] Speaker 02:
We're not talking about fame, though.

[00:34:07] Speaker 02:
We're talking about

[00:34:09] Speaker 02:
the similarity of goods now.

[00:34:11] Speaker 02:
We're talking about different DuPont factors.

[00:34:14] Speaker 00:
I understand that, but fame in and of itself greatly extends the area, the channels of goods and services by which trademarks can be applied to for confusion purposes.

[00:34:26] Speaker 00:
And due to the fact that they found that Mark wasn't famous, they then constrained to some degree the requisite channels of goods and services in conducting their analysis.

[00:34:43] Speaker 03:
Council, thank you very much.

[00:34:45] Speaker 03:
Thank you for your time, Your Honor.

[00:34:47] Speaker 03:
Mr. Klobuchar has some rebuttal time, three minutes.

[00:34:55] Speaker 01:
Thank you, Your Honor.

[00:34:56] Speaker 01:
The Court was very generous with its time in my opening, and if you have any questions.

[00:35:00] Speaker 03:
I may have a question, if I could, on connotation.

[00:35:03] Speaker 03:
Yes.

[00:35:03] Speaker 03:
Because I first understood the connotation, I mean, this is only the boat holding that the applicants want the connotation of sophistication and elegance.

[00:35:13] Speaker 03:
And I first understood your argument to sort of be a complaint that there wasn't any substantial evidence to even support that connotation.

[00:35:22] Speaker 03:
First on the connotation, isn't a connotation simply an influence that the board draws from facts?

[00:35:29] Speaker 01:
That seemed to be what was happening.

[00:35:31] Speaker 03:
The fact that I was entitled to draw influences, if there is evidence to support the inference.

[00:35:38] Speaker 01:
If there is evidence, and if evidence is cited.

[00:35:41] Speaker 03:
But I understood in your reply brief to have refined that argument, that your real complaint is that when they said, well, there is this connotation that they drew by inference and elegance and sophistication on behalf of the equivalent, they ignored

[00:35:57] Speaker 03:
evidence in the record that years ago they would have given you an equal connotation.

[00:36:03] Speaker 01:
Yes, Your Honor, that is correct.

[00:36:04] Speaker 03:
That's what I understood to be your complaint about the connotation analysis, am I correct?

[00:36:11] Speaker 03:
They didn't cite the record for their own connotation, but... Assuming, I would say, I would

[00:36:21] Speaker 03:
If I were, I would allow them to draw the influence they're drawing with regard to the applicant's work based on the description of what it all had in it.

[00:36:30] Speaker 03:
But what they did in their footnote when they came over and talked about the fact that you don't think every gentleman sitting in his fine home with concert music playing in the background wasn't elegant.

[00:36:43] Speaker 03:
That was the implication, yes.

[00:36:45] Speaker 03:
That's what I understood to be your argument, my friend.

[00:36:48] Speaker 01:
That is.

[00:36:48] Speaker 01:
And the dissent's comment, which I think was very apt, that if there is an inferential connotation to applicant's mark, it obviously comes from the CONEC component, not from cologne, not from entertainment.

[00:37:05] Speaker 01:
That's where it's getting that.

[00:37:07] Speaker 03:
I have a quick question to help because I mean, it is.

[00:37:12] Speaker 03:
more expert at this than I am.

[00:37:14] Speaker 03:
If this case were to be remanded, if, for example, we concluded that the Board made an error in the family analysis for the reasons that we've been discussing, that aim can be shown just in the region, and assuming we were concerned with the way in which they measured commercial success, and assuming we were concerned with connotation, as you and I have just discussed.

[00:37:34] Speaker 03:
What, as should be considered by you and some of this case, is properly decided?

[00:37:41] Speaker 03:
Is there, for example, a definition for the relevant consumer rates?

[00:37:46] Speaker 03:
What's missing that could be considered given the record that exists at the moment?

[00:37:51] Speaker 03:
I'm not suggesting that the board is going to reopen the record, so...

[00:37:57] Speaker 01:
Relevant consumer is quite important in this case.

[00:37:59] Speaker 01:
It's important for the similarity of goods and channels of consumers, and as Judge Hughes's question was getting at, that has to do with the consumers of goods.

[00:38:11] Speaker 01:
But it's also relevant to fame, and we acknowledge that for fame you need a broader class of

[00:38:20] Speaker 01:
relevant public for there to be fame.

[00:38:23] Speaker 01:
But we think that the record here establishes that, because the fame of Cognac extends well beyond... So it appears to me that the relevant consumer is a composite, probably.

[00:38:35] Speaker 03:
It depends on the purpose of... By the way, it isn't... The relevant market isn't just rap music aficionados.

[00:38:43] Speaker 01:
Nor is it just Cognac aficionados.

[00:38:46] Speaker 03:
So it's everybody.

[00:38:48] Speaker 01:
For fame purposes, it would be broader than those two categories, were those two categories combined.

[00:38:52] Speaker 01:
I don't know that it's every single person in the world.

[00:38:55] Speaker 03:
It's a very difficult... Okay, so if that issue needed to be anything else?

[00:39:01] Speaker 01:
I would say that with respect to the

[00:39:05] Speaker 01:
I don't know if the court wishes to go there, but obviously, fame for dilution is the same now.

[00:39:17] Speaker 03:
I think the dilution argument has passed us, because we would have no opportunity to respond.

[00:39:25] Speaker 03:
Thank you, counsel.

[00:39:26] Speaker 03:
The case is submitted.

[00:39:27] Speaker 03:
Thank you.