[00:00:00] Speaker 04:
Is it Mr. Masita?

[00:00:07] Speaker 04:
Masita, that's correct.

[00:00:09] Speaker 04:
Good morning.

[00:00:09] Speaker 04:
Please proceed.

[00:00:11] Speaker 02:
Thank you.

[00:00:11] Speaker 02:
I have a sore throat this morning, so just bear with me a little bit on the presentation.

[00:00:16] Speaker 02:
So this appeal presents the question of whether or not the USPTO can be bound in the actions it has taken in separate but related applications, and whether or not Agadia Systems Smart Formulary Hub.com

[00:00:30] Speaker 02:
is merely descriptive.

[00:00:31] Speaker 02:
I like to address the arguments in that order.

[00:00:35] Speaker 02:
So the USPTO and the TTAB have taken the unequivocal view that the USPTO can never be bound by actions it has taken in separate but related applications.

[00:00:46] Speaker 02:
Now, Agadir systems, we acknowledge that that is generally the case, that the USPTO is not bound.

[00:00:54] Speaker 02:
However, this court's opinion in Boulevard

[00:00:57] Speaker 02:
indicates that the USPTO may be bound when they act impermissibly or pursuant to some arbitrary standard.

[00:01:05] Speaker 02:
I'm a little confused about this.

[00:01:08] Speaker 04:
When you say they're not bound, maybe they're not bound because they're two different cases.

[00:01:16] Speaker 04:
Your question presumes that the result and the analysis

[00:01:22] Speaker 04:
for your mark versus the dot com mark would be identical.

[00:01:28] Speaker 04:
And therefore they'd be bound by whatever they said.

[00:01:32] Speaker 02:
What's the basis for that?

[00:01:34] Speaker 02:
I respectfully disagree with that, your honor.

[00:01:36] Speaker 02:
I think what the TTAB got focused on is that the applications that have been filed are separate, but substantively they're the same.

[00:01:50] Speaker 02:
And that's really the crux of our argument.

[00:01:54] Speaker 04:
You state that as a given, an unassailable principle.

[00:01:57] Speaker 04:
Does everybody else agree with that, including the PTO?

[00:02:01] Speaker 02:
The PTO does not agree with that, John.

[00:02:04] Speaker 04:
So our view is during the... So your view is predicated on the fact that this mark and then the markplus.com are unassailably the exact same thing that have to be treated precisely the same way?

[00:02:19] Speaker 02:
I'm saying that because they're substantively the same, because the USPTO, in reviewing the markformularyhub.com, described the .com as a non-source identifying GTLD that does not need to be disclaimed.

[00:02:38] Speaker 02:
That matter was up on appeal to the TTAB.

[00:02:40] Speaker 02:
During that appeal, the examining attorney withdrew the opposition to that mark, allowing it to be registered on the principal register subject to the specimen still needs to be approved.

[00:02:53] Speaker 02:
And so therefore, what we're saying is if you take the position one step, FormularyHub.com,

[00:02:59] Speaker 02:
is merely descriptive.

[00:03:01] Speaker 02:
We appeal that.

[00:03:03] Speaker 02:
You review our appellate brief.

[00:03:05] Speaker 02:
You then withdraw your opposition.

[00:03:07] Speaker 02:
You describe the .com as a non-source identifying GTLD.

[00:03:13] Speaker 02:
Therefore, a formulary hub and the .com application has the exact same meaning in this application, a formulary hub.

[00:03:21] Speaker 02:
And critically, the USPTO, they do not argue that the marks are substantively different.

[00:03:27] Speaker 02:
Nor do they argue that they made a mistake

[00:03:30] Speaker 02:
in registering or approving for registration.

[00:03:32] Speaker 04:
What is the status of the dot com?

[00:03:36] Speaker 02:
The dot com has been stayed.

[00:03:38] Speaker 02:
It's been stayed twice.

[00:03:40] Speaker 04:
So your position is they can't reject this until they decide that?

[00:03:48] Speaker 04:
I want to see where your argument is taking us.

[00:03:50] Speaker 04:
That case is not before us.

[00:03:53] Speaker 02:
The dot com case is not before this panel correct.

[00:03:58] Speaker 02:
But what we're indicating is in our briefing, and I'll try to briefly summarize it.

[00:04:04] Speaker 02:
So we had formularyhub.com and then formularyhub filed roughly the same time.

[00:04:09] Speaker 02:
The arguments and objections on both sides, us and USPTO, were the same going through up through the T-tab.

[00:04:17] Speaker 02:
And then what happened is on formularyhub.com,

[00:04:20] Speaker 02:
The examining attorney on her own stated, indicating that although I think you're going to hear this morning that the applications are separate, she stated that they're related and that this mark could have an influence on the dot com mark.

[00:04:37] Speaker 02:
So it was suspended once and then it was resumed after the TTAB made a ruling on Formulary Hub, which we now appeal to this

[00:04:47] Speaker 02:
But then the USPTO then obtained an order.

[00:04:51] Speaker 02:
We stayed on an ex-party basis.

[00:04:53] Speaker 02:
But nevertheless, they obtained an order staying.com awaiting this court's result on formulary hub.

[00:05:01] Speaker 02:
So to us, it's disingenuous to say, oh, the applications are separate but unrelated with no effect on each other.

[00:05:08] Speaker 02:
But oh, by the way, we're going to stay the dot com.

[00:05:11] Speaker 04:
But disingenuous doesn't carry a legal consequence to it.

[00:05:15] Speaker 04:
So it seems like their view, as you stated, is we're going to wait for dot com to see what the Federal Circuit says on this case.

[00:05:24] Speaker 04:
Your view is we should what?

[00:05:27] Speaker 04:
finalize the dot-com analysis and get us on appeal there before we decide the case before us now?

[00:05:35] Speaker 02:
No.

[00:05:36] Speaker 04:
You mean that we have to decide the two together?

[00:05:39] Speaker 04:
No, Your Honor.

[00:05:40] Speaker 02:
You can decide the formulary hub appeal before you today because our arguments related to dot-com as it relates to formulary hub

[00:05:49] Speaker 02:
Are the arguments of waiver, are the arguments of judicial estoppel, are the arguments of equitable estoppel, which by the way, the USPTO did not even oppose at the TTAB regarding equitable estoppel.

[00:06:02] Speaker 02:
So our argument is that this, the formulary hub merely descriptive objection is foreclosed.

[00:06:09] Speaker 02:
You already went through this, the USPTO and Agadia have already gone through this process.

[00:06:15] Speaker 02:
You reviewed it.

[00:06:16] Speaker 02:
when you're winning the USPTO.

[00:06:19] Speaker 02:
And then upon us filing our appeal in the TTAB, you reviewed our arguments and said, yep, we withdraw our opposition.

[00:06:27] Speaker 02:
It's not a merely descriptive mark.

[00:06:29] Speaker 02:
We're going to approve it on the principal register.

[00:06:32] Speaker 02:
So if you're going to do that in formularyhub.com, remember the dot com is a non-source identifying GTLD, formularyhub.com

[00:06:40] Speaker 02:
has the same nondescriptive meaning there as it does here.

[00:06:44] Speaker 02:
And they don't argue to the contrary.

[00:06:47] Speaker 02:
I've lost a step here.

[00:06:50] Speaker 03:
What exactly, then, when you say they've already decided that formulary.com is fine, what I thought and my understanding was that has not been finally determined.

[00:07:06] Speaker 02:
Judge, the issue of whether or not it's merely descriptive has been determined by their own concession.

[00:07:12] Speaker 02:
What remains pending is our specimen.

[00:07:14] Speaker 02:
They have also objected on the basis that our specimen doesn't meet the statutory requirement.

[00:07:19] Speaker 03:
That's the only thing that's being held up for this case?

[00:07:23] Speaker 02:
Yes, because they obtained the stay of .com.

[00:07:27] Speaker 03:
But in any event, there has not been a registration that has been approved, finally approved, for formularyhub.com.

[00:07:36] Speaker 02:
That's correct, Your Honor.

[00:07:37] Speaker 03:
All right.

[00:07:37] Speaker 03:
So if that has not become final, why does it have some form of estoppel effect on this proceeding?

[00:07:45] Speaker 02:
Because, Your Honor, what's in our briefing is, and this goes back to our judicial estoppel, equitable estoppel, and waiver arguments,

[00:07:53] Speaker 02:
is they reviewed our appellate brief in the formularyhub.com appeal.

[00:07:58] Speaker 02:
And then right after that, they submitted new arguments and new evidence in this matter, in this formulary hub application to rebut the very arguments that we made in the .com appeal.

[00:08:12] Speaker 02:
And they go so far as to indicate to this court, it's in our reply brief pages 12 through 13.

[00:08:19] Speaker 02:
This is the USPTO now.

[00:08:21] Speaker 02:
The proposed dot com mark can still be refused registration on other grounds, including under section 2E1, if appropriate, while on appeal to the board.

[00:08:32] Speaker 02:
So it's our view that what they did in the formulary hub dot com appeal, which the TTAB failed to address for reasons unknown, but we raised, is they reviewed our appellate brief.

[00:08:45] Speaker 02:
They said they might lose the argument, withdrew it, and then reloaded in this application

[00:08:50] Speaker 02:
with new arguments designed to rebut our merely descriptiveness argument in formularyhub.com, with an eye to this court, if they obtain a favorable ruling from this panel, jumping back into the .com proceeding that they claim is separate and unrelated, to say, oh, by the way, even though we once approved that, that's now merely descriptive too, because the Federal Circuit said so.

[00:09:16] Speaker 02:
And that's why we raised the arguments, again, of waiver, judicial estoppel, and equitable estoppel.

[00:09:21] Speaker 04:
Does the Supreme Court's opinion in bookings.com have any bearing on this case?

[00:09:27] Speaker 02:
No, Your Honor.

[00:09:28] Speaker 02:
That has to do with acquired distinctiveness, which we don't argue in this case.

[00:09:36] Speaker 02:
Booking.com, the Supreme Court indicated that the .com had acquired secondary meaning within the marketplace.

[00:09:45] Speaker 02:
The USPTO has said exactly the opposite.

[00:09:47] Speaker 02:
The .com is a non-source identifying GTLD.

[00:09:51] Speaker 02:
And two, we filed .com as a Section 1B application.

[00:09:55] Speaker 02:
So it's an intent to use.

[00:09:57] Speaker 02:
So booking.com is completely inopposite.

[00:10:01] Speaker 02:
And the TTAB, in our view, improperly raised that argument on the USPTO's behalf.

[00:10:08] Speaker 02:
The USPTO did not raise that in their briefing.

[00:10:11] Speaker 02:
And this is the first time that... Did they raise it in their briefing here?

[00:10:15] Speaker 02:
Oh, I think they respond to it because...

[00:10:18] Speaker 02:
We received the TTAB opinion.

[00:10:20] Speaker 02:
I argued in our opening brief how the TTAB improperly made arguments on behalf of the USPTO, and then they responded to that in their response brief.

[00:10:30] Speaker 02:
But our position is that, one, it's improperly raised.

[00:10:35] Speaker 02:
This is the first time I'm having a conversation

[00:10:38] Speaker 02:
with a judicial panel regarding that argument, because the USPO didn't raise it, and therefore we deem it to be improperly raised.

[00:10:53] Speaker 02:
I'm sorry, Your Honor.

[00:10:54] Speaker 04:
You want to save your rebuttal when we're here for the government, or you want to?

[00:10:58] Speaker 02:
Yes, I don't know how much I see my lights still on.

[00:11:00] Speaker 04:
OK, well, let me just add, aside from all the estoppel and all that stuff, do you have another argument just on the merits of this case?

[00:11:09] Speaker 02:
Yes, I do.

[00:11:10] Speaker 02:
I want to just address the... Merely descriptive issue.

[00:11:14] Speaker 02:
Merely descriptive issue when it comes to, in particular, the term hub.

[00:11:20] Speaker 02:
So, Your Honor,

[00:11:21] Speaker 02:
The TTAB agreed with our definition of formulary.

[00:11:25] Speaker 02:
It's in the brief.

[00:11:27] Speaker 02:
I don't think the USPTO challenges that.

[00:11:29] Speaker 02:
At least it's not in the briefing.

[00:11:31] Speaker 02:
But on HUB, both the USPTO and the TTAB took issue with the fact that we used a hardware definition of HUB.

[00:11:38] Speaker 02:
When in reality, all of us used a hardware definition of HUB, the TTAB adopted the USPTO's hardware definition, which is on page 43 of our brief, which is, I

[00:11:52] Speaker 02:
essentially identical to Agadia's definition, which is quoted on 39 of our brief.

[00:11:59] Speaker 02:
In a hub is a piece of computer hardware, not software, that acts as a connection point for other devices or computers in a network.

[00:12:08] Speaker 02:
And therefore it cannot merely describe the customized computing software services,

[00:12:14] Speaker 02:
The TTAB also relied on what we submit is an inopposite definition of hub as the effective center of an activity, region, or network.

[00:12:26] Speaker 02:
That's on page 45 of our brief.

[00:12:28] Speaker 02:
We submit that's legal error because you have to evaluate our computer-related mark with computer-related definitions.

[00:12:35] Speaker 02:
This is not.

[00:12:37] Speaker 02:
I believe the example of that definition states that the city is the financial hub of the country or something to that effect.

[00:12:44] Speaker 02:
So it's an inopposite definition, but it further illustrates how the mark is, at a minimum, suggestive because consumers would have to either evaluate the hardware definition of hub or the abstract definition of hub

[00:13:00] Speaker 02:
Choose between the two or apply the both.

[00:13:02] Speaker 02:
Either way, when you do that, in reference to our customized computing software services, the mental leap to what our services are is not instantaneous, which is, as you know, is the legal standard, therefore making it a suggestive mark.

[00:13:18] Speaker 02:
Now I'd like to, I see my time is up.

[00:13:21] Speaker 02:
You're getting into your rebuttal, Tom.

[00:13:23] Speaker 02:
I will just briefly state that we also submit that the

[00:13:29] Speaker 02:
TTAB improperly relied solely upon our advertising materials in evaluating the mark.

[00:13:36] Speaker 02:
We don't contest they have the ability to do that under NRAE North Carolina for commercial context, but it does not supplant evaluating the mark to the customized computer software services themselves, because as this court's predecessor and NRAE Reynolds ruled, it's the mark that the appellant seeks to register, not its advertisements.

[00:13:56] Speaker 02:
the sole focus by the USPTO and the TTAB on solely our advertisements to evaluate the mark we submit is legal error.

[00:14:07] Speaker 02:
Thank you.

[00:14:15] Speaker 01:
Good morning, Your Honor.

[00:14:18] Speaker 01:
The USPTO has an obligation to evaluate each trademark application on its own merit and its own record

[00:14:26] Speaker 01:
and to enforce every requirement for registration.

[00:14:30] Speaker 01:
The board fulfilled that obligation in this case by assessing the mere descriptiveness of the mark, formulary hub, when used for... So what is the status of the other case?

[00:14:41] Speaker 04:
Is it merely stayed?

[00:14:42] Speaker 04:
Has there been any dispositive action taken in that regard?

[00:14:46] Speaker 01:
That case is stayed.

[00:14:47] Speaker 01:
There's been no final agency action on the dot com mark.

[00:14:51] Speaker 04:
And has the PTO stated, has anyone stated on the record what the basis is for staying it?

[00:14:59] Speaker 01:
The board's decision to stay the case was based on the board rule that allows for stay when a case on appeal to this court or some other case may have a bearing on the appeal before the board.

[00:15:14] Speaker 01:
So the board's stay order is a recognition that this case may have a bearing on the dot com case.

[00:15:22] Speaker 01:
Now, Agadia, in essence, tries to capitalize on a technical error in the examination of the dot-com mark, which has not registered and is still pending, to keep the board and the examining attorney from performing their duty in this case based on the record at hand.

[00:15:40] Speaker 01:
In essence, Agadia is asking for a windfall in the form of... You say technical error.

[00:15:45] Speaker 01:
What technical error are you talking about?

[00:15:49] Speaker 01:
Sure.

[00:15:50] Speaker 01:
We know from the record why the refusal in the .com application was withdrawn.

[00:15:57] Speaker 01:
On appendix page 264, that's the decision on reconsideration in this case.

[00:16:05] Speaker 01:
The examining attorney spoke to what happened in the .com case and said evidence that was referenced in the final office action for that case

[00:16:15] Speaker 01:
was not properly made of record due to a technical error.

[00:16:20] Speaker 01:
She went on to say, the examining attorney went on to say, that she was unable to correct the technical error and was thus forced to withdraw the refusal.

[00:16:30] Speaker 01:
So we know from the record that the examining attorney believed she had no choice and had to withdraw.

[00:16:35] Speaker 04:
So it had nothing to do with this case.

[00:16:37] Speaker 04:
It was based on something else that was going on?

[00:16:39] Speaker 01:
Yes.

[00:16:40] Speaker 04:
So I thought you started by telling us it's your practice, sort of like if you have

[00:16:45] Speaker 04:
cases that might affect each other, you treat them separately, and you go on appeal.

[00:16:50] Speaker 04:
And now you're saying, no, no, no, we're only staying that because of some extraneous thing that happened with respect to that case.

[00:16:56] Speaker 01:
That's not why they're staying the case, Your Honors.

[00:16:58] Speaker 01:
That's why the refusal was withdrawn.

[00:17:02] Speaker 01:
So these cases both had mere descriptiveness refusals because the term formulary hub describes a Gaudia services, customizing computer software,

[00:17:13] Speaker 01:
that provides a central location online, a hub for formularies.

[00:17:17] Speaker 01:
So both cases had the mere descriptiveness refusal.

[00:17:21] Speaker 01:
We know from the record that the reason that the mere descriptiveness refusal was withdrawn in the dot com case was because of a technical error, because of the examining attorney's belief that she was forced to withdraw.

[00:17:35] Speaker 03:
So what you're saying in a sentence, I guess, is that

[00:17:37] Speaker 03:
they are trying to leverage a technical error in the other case into a merits decision in their favor in this case.

[00:17:43] Speaker 01:
Exactly, exactly.

[00:17:44] Speaker 01:
So they're essentially asking for a windfall based on ongoing examination, and they're asking for a registration for a mark, formulary hub, that's merely descriptive given the record in this case.

[00:18:00] Speaker 04:
No, they're not asking for a thing that's, you're asking for

[00:18:06] Speaker 04:
merely descriptive.

[00:18:08] Speaker 01:
They're asking for a registration of a mark that's merely descriptive on this record.

[00:18:13] Speaker 01:
And the board had substantial evidence for its finding on the mere descriptiveness issue.

[00:18:18] Speaker 01:
It relied on most notably on Agadia's own.

[00:18:21] Speaker 04:
So the stay though, I'm still a little confused.

[00:18:27] Speaker 04:
Is the reason the board hasn't ruled on the dot com proceeding?

[00:18:32] Speaker 04:
Because they're waiting to see what we say on the descriptiveness here.

[00:18:36] Speaker 04:
or and or because there was some technical error so they just couldn't get around to doing it.

[00:18:43] Speaker 01:
No it's because the board has recognized that this case may have a bearing on the case

[00:18:47] Speaker 01:
the dot com case because of the mere descriptiveness refusal or because of the other refusal, the specimen-based refusal.

[00:18:56] Speaker 00:
This application was... I thought it was a board policy to rule on each case, case by case, and not rely on the type of process that you're talking about.

[00:19:10] Speaker 01:
No, that's right.

[00:19:11] Speaker 01:
I mean, the dot com application will still have to be assessed on its record if

[00:19:15] Speaker 01:
The record we know is different in that case.

[00:19:18] Speaker 01:
The mark is different.

[00:19:20] Speaker 01:
The record is different.

[00:19:21] Speaker 01:
So based on what happens in this case, the board will still have to consider the .com application based on the record at hand.

[00:19:29] Speaker 01:
Now there is, like I said, a bit of a discrepancy in how the applications have been treated because of this technical error and because of the examining attorney's belief that she had no choice but to withdraw the refusal.

[00:19:45] Speaker 01:
As Agadia points out, remand was available to the examining attorney, so that belief may have been mistaken.

[00:19:55] Speaker 03:
Is that issue the question of whether that belief was mistaken, one that the TTAB is in a position to override?

[00:20:06] Speaker 01:
The examining attorney can request remand of that case if there's an issue not involved in the case that may render

[00:20:14] Speaker 01:
the mark at issue unregisterable.

[00:20:19] Speaker 01:
So the examining attorney we cited in footnote 6, the rule, it says 37 CFR 2142 F6 that allows the examining attorney to request remand to the board upon a ruling in this case.

[00:20:34] Speaker 01:
The board manual, corresponding section of the board manual, explains that those requests for remand are generally granted.

[00:20:42] Speaker 01:
That's the TBMP section 120902.

[00:20:46] Speaker 01:
And the manual says, we generally grant these requests for remand because the mandate of the USPTO is to register only eligible marks.

[00:20:57] Speaker 01:
So there's a discrepancy now.

[00:21:00] Speaker 01:
It can be addressed if the ruling in this court has an effect.

[00:21:06] Speaker 04:
Can you want to go to the merits of the case in particular, the discussion of how to buy your friend

[00:21:13] Speaker 01:
Okay, now the board's decision was based on the evidence of record, including the dictionary entries for the term hub, and there's no disagreement that mere descriptiveness is assessed in the context of the services, and the board started its analysis on page 12 of its decision by noting that the purpose of the services is to manage formularies through a centralized solution,

[00:21:42] Speaker 01:
And it went through the dictionary entries in the record for the term hub and saw that they all were in line with this notion of a central location, a central solution, a central place for things to occur.

[00:22:00] Speaker 01:
The lexico.com dictionary entry on page 12 of the board's decision explains that a hub is the effective center of an activity.

[00:22:10] Speaker 01:
The software services Agadia provides

[00:22:13] Speaker 01:
provide a center of activity on the internet for activity related to formularies for formulary management.

[00:22:20] Speaker 01:
The board on pages 12 and 13 goes on to rely on the entry from netlingo.com that describes a hub as a place of convergence where data arrives from one or more direction and is forwarded out in one or more direction, and the software services do that as well.

[00:22:39] Speaker 01:
It's a collection point, a repository for the client's formularies.

[00:22:44] Speaker 01:
Information comes in from regulatory bodies and other places.

[00:22:50] Speaker 01:
Formularies are edited, are created, and then information is forwarded out to health plan members, to pharmacies.

[00:22:59] Speaker 01:
So the services act as a place of convergence.

[00:23:05] Speaker 01:
The board considered the evidence that Agadia had put forward on page 13 that the term hub is used in the context of computer hardware as the name or reference to a particular piece of equipment, a router-like device to which computers connect.

[00:23:25] Speaker 01:
But the board said in the context of these services, which pertain to software, there's no indication that the relevant purchasers

[00:23:34] Speaker 01:
who know what the services are, who know that the services are computer software related, that they will perceive the term hub in this context as a reference to that device.

[00:23:47] Speaker 01:
So the board recognized the different

[00:23:51] Speaker 01:
ways the term hub is used, they all were in line with what Agadia is doing with its services, and there was no reason to believe that the relevant purchasers who know we're dealing with customizing computer software that provides a location on the internet for managing formularies, that they will view that term as a reference to the device.

[00:24:15] Speaker 01:
Unless the court has any other questions on the merits, I will rest on the points in our brief.

[00:24:22] Speaker 01:
And I believe we're fully addressed on the preclusion theories.

[00:24:27] Speaker 01:
I'm happy to discuss any of them.

[00:24:29] Speaker 01:
We know why the discrepancy occurred.

[00:24:32] Speaker 01:
Agadia asks the USPTO to perpetuate the technical error and the issues in the dot-com case here.

[00:24:41] Speaker 01:
But this case should be decided on its record.

[00:24:44] Speaker 01:
the board had substantial evidence for its decision.

[00:24:47] Speaker 01:
Agadia is asking for a windfall based on ongoing examination, but the board's decision was reasonable based on substantial evidence, based on the specimen of use, Agadia's brochure, based on Agadia's website, based on Agadia's witness declaration, based on the dictionary entries in the record, based on third-party websites.

[00:25:10] Speaker 01:
from third parties in Agadia's industry that use the term hub as a reference to a collection point on the internet for information, and the record also contains third party registrations for services similar to the ones that issue here, software services for marks with the term hub in formulary, registrations that recognize that those terms are merely descriptive.

[00:25:39] Speaker 01:
One point is this refusal is not an absolute bar to Agadia.

[00:25:43] Speaker 01:
This is a mere descriptiveness refusal.

[00:25:45] Speaker 01:
Agadia is free to reapply in the future in an application that recognizes the descriptiveness of the term, makes a claim of acquired distinctiveness, makes a disclaimer, things of that sort.

[00:25:59] Speaker 01:
So this is not an absolute bar.

[00:26:01] Speaker 01:
And given the record in the evidence and the board's well-based decision based on substantial evidence,

[00:26:09] Speaker 01:
we ask this court to affirm.

[00:26:12] Speaker 01:
Thank you.

[00:26:19] Speaker 02:
Now, counsel indicated to the court that there's a so-called technical error.

[00:26:24] Speaker 02:
The TBMP section 1207.02 provided the examining attorney with a remedy, and that was to seek remand.

[00:26:32] Speaker 02:
And to do that, she needed to establish good cause to get that remand, to get that evidence into the record.

[00:26:39] Speaker 02:
So we're describing it as a technical error.

[00:26:41] Speaker 02:
There's nothing technical about it.

[00:26:43] Speaker 02:
There's a rule and a standard that wasn't complied with.

[00:26:46] Speaker 02:
But I think maybe even more importantly is the fact that nothing required the examining attorney to approve the mark for publication on the principal register.

[00:26:59] Speaker 02:
So when we're classifying it as a technical error, it's not.

[00:27:05] Speaker 02:
It was approved for registration on the principal register by the examining attorney.

[00:27:10] Speaker 02:
So I just want to highlight that point.

[00:27:13] Speaker 02:
The other points, very briefly, is counsel indicated that the records are not different.

[00:27:18] Speaker 02:
So first time we're hearing that argument, number one.

[00:27:21] Speaker 02:
And number two, nowhere in there is that in the briefing of the USPTO.

[00:27:26] Speaker 02:
The council also references a so-called centralized solution in our advertising materials.

[00:27:33] Speaker 02:
Again, that goes back to us arguing before on solely focusing on our advertising materials, but presumes that centralized solution somehow equates to hub.

[00:27:43] Speaker 02:
There's no evidence for that.

[00:27:44] Speaker 02:
There's no evidence in the record that centralized solution equates to a hub, yet they're proceeding on that basis as if it is.

[00:27:52] Speaker 02:
Hence the problem in not evaluating the mark to the customized computer software services themselves.

[00:27:59] Speaker 02:
Again, council indicated that the TTAB did that.

[00:28:03] Speaker 02:
They did not.

[00:28:04] Speaker 02:
I mean, I'm sure this panel has read the opinion and hopefully you'll reread it.

[00:28:08] Speaker 02:
It's not in there.

[00:28:09] Speaker 02:
Mr. Swarnes declaration, I believe is on page 35 of our brief.

[00:28:14] Speaker 02:
but it's also in the appendix indicates exactly what it does.

[00:28:19] Speaker 02:
And it was never cited by the TTAB when the panel issued its opinion.

[00:28:24] Speaker 02:
It's always the advertising materials, but never to the services themselves.

[00:28:30] Speaker 02:
So they focus on a conclusion which anybody's advertising materials will do is explain the ultimate function of the product or service.

[00:28:39] Speaker 02:
That's the point.

[00:28:40] Speaker 02:
And I think that's what this court's predecessor

[00:28:43] Speaker 02:
and Enbury Reynolds focused on, but that's here.

[00:28:46] Speaker 02:
What we're skipping over is here, the services to get there.

[00:28:51] Speaker 02:
And that was never addressed by the TTAB, and we submit that that's legal error.

[00:28:58] Speaker 02:
Now, finally, I think my time is up.

[00:29:00] Speaker 02:
It is up.

[00:29:01] Speaker 02:
One more point.

[00:29:01] Speaker 02:
One more, finally.

[00:29:03] Speaker 02:
The third party registrations were not part of the TTAB's opinion, and therefore, we don't believe it's appropriate for this court to opine on those.

[00:29:12] Speaker 04:
Thank you.

[00:29:13] Speaker 02:
Thank you.