[00:00:00] Speaker 00:
4 in Ray Zeta Tau Alpha sorority, Mr. Wheat.

[00:00:24] Speaker ?:
Thank you.

[00:00:26] Speaker 01:
May I place the court?

[00:00:29] Speaker 01:
At the outset, although this is a third-party uses case, it's important to remember what the ultimate question is.

[00:00:37] Speaker 01:
That is, is there a probability of confusion?

[00:00:41] Speaker 01:
A possibility of confusion is not enough.

[00:00:44] Speaker 01:
A speculative assumption, there might be confusion is not enough.

[00:00:50] Speaker 01:
This court requires that there be a probability of confusion.

[00:00:54] Speaker 01:
And the PTO bears the burden of proof on that question.

[00:00:59] Speaker 01:
What's the standard of review that you would apply to that question?

[00:01:03] Speaker 01:
It's a question of law.

[00:01:05] Speaker 01:
The likelihood of coot confusion is a question of law.

[00:01:09] Speaker 01:
The underlying factual determinations would be subject to the substantial evidence of a burden.

[00:01:17] Speaker 01:
But the ultimate question, whether there's probability of confusion, is a question of law to be reviewed de novo.

[00:01:24] Speaker 00:
You ask us to send this back.

[00:01:28] Speaker 00:
so that you can amend the application and limit it to sales on the sorority website.

[00:01:37] Speaker 00:
Suppose we reject that and reject your argument for reversing the board.

[00:01:50] Speaker 00:
My question is, can't you just file a new application that's limited to the sorority context?

[00:01:58] Speaker 01:
We certainly could.

[00:01:59] Speaker 01:
And our primary argument is not that amending the recitation of goods would resolve the problem.

[00:02:09] Speaker 01:
Our primary argument is there's no probability of confusion here.

[00:02:14] Speaker 01:
That we don't need to go through all those gymnastics and to amend the recitation and to start all over again.

[00:02:24] Speaker 01:
Our contention is this application should have been accepted from the get-go.

[00:02:30] Speaker 01:
Let's look at the third-party evidence the PTO relied upon.

[00:02:37] Speaker 01:
As this court said in Hewlett-Packard at pages 1267 to 68, quote, whether a single company sells the goods and services of both parties if presented is relevant to a relatedness analysis, end quote.

[00:02:53] Speaker 01:
But it's not conclusive.

[00:02:55] Speaker 01:
It's just a consideration.

[00:02:59] Speaker 01:
And this circuit has kept that consideration within adequate guardrails.

[00:03:05] Speaker 01:
The cases where you've held the third party use as evidence was adequate.

[00:03:10] Speaker 01:
Take Hewlett Packard, for instance.

[00:03:16] Speaker 01:
The goods and services there were data processing services on the one hand.

[00:03:23] Speaker 01:
and data processing products on the other hand.

[00:03:27] Speaker 01:
I don't even think you had to go to the third party uses evidence to hold that those were adequately related.

[00:03:33] Speaker 01:
The test is not simply related.

[00:03:35] Speaker 01:
They have to be adequately related, sufficiently related, adequately related and sufficiently related to create a probability of confusion, not a mere possibility of confusion.

[00:03:51] Speaker 01:
Another case where this court held the third party evidence was adequate in Ray Detroit Athletic.

[00:03:58] Speaker 01:
But the goods and services there were clothing and clothing stores.

[00:04:02] Speaker 01:
I don't think you had to go to third party evidence to say those are adequately related.

[00:04:07] Speaker 01:
The curious ones are the ones where this court held they weren't adequately related.

[00:04:14] Speaker 01:
In Coors, you held at page 1341, quote,

[00:04:20] Speaker 01:
Board aired by finding that beer and restaurant services are related, regardless of the fact that countless restaurants serve beer.

[00:04:33] Speaker 01:
This is the third party evidence rule is not something that's to be loosely applied and converted into a per se determination that there's relatedness.

[00:04:44] Speaker 01:
The test is adequate relatedness are sufficiently related.

[00:04:48] Speaker 01:
to create a probability of confusion.

[00:04:52] Speaker 01:
A possibility is not enough.

[00:04:55] Speaker 01:
In St.

[00:04:56] Speaker 01:
Helena, this court at page 752 held that the goods and services were not, quote, related enough to cause confusion about the source of origin.

[00:05:12] Speaker 01:
Later on in the same case, same page, this court said,

[00:05:17] Speaker 01:
And when the relatedness of the goods and services is obscure or less evident, the PTO will need to show something more.

[00:05:28] Speaker 01:
This isn't a broad rule.

[00:05:30] Speaker 01:
You don't just show relatedness.

[00:05:32] Speaker 01:
That's the end-all, do-all, be-all.

[00:05:35] Speaker 01:
There must be a probability of confusion.

[00:05:37] Speaker 01:
The PTO still has the burden of showing there's a probable likelihood of confusion.

[00:05:44] Speaker 01:
The PTO is going nuts.

[00:05:46] Speaker 01:
in this arena.

[00:05:48] Speaker 01:
They have converted that into a per se rule.

[00:05:53] Speaker 01:
I hate to overburden the court with a supplemental citation of authorities, but since our briefs were filed in this case, here are some of the things the PTO is held to be were adequately related.

[00:06:06] Speaker 01:
NRA, AVR, cups and mugs, pastries, sandwiches, coffee beans, ground coffee beans,

[00:06:14] Speaker 01:
adequately related to tote bags and shirts.

[00:06:20] Speaker 01:
In Ray C&D Brewing, the PTO held that autos, the mark was autos, for soda pop.

[00:06:28] Speaker 00:
Did you file a 28-J letter with respect to that?

[00:06:31] Speaker 01:
Yes, I did, Your Honor, and provided all the soap opinions.

[00:06:37] Speaker 01:
In Ray C&D Brewing, autos, soda pops,

[00:06:42] Speaker 01:
The mark was Otto's.

[00:06:43] Speaker 01:
The goods were soda pops.

[00:06:45] Speaker 01:
They held that was likely to be confused with Otto's oatmeal stout for beer.

[00:06:53] Speaker 01:
How many breweries also produce and sell soda pops?

[00:06:59] Speaker 01:
The PTOs turned this into a per se rule.

[00:07:02] Speaker 01:
Enrae Pizza Inn held that pizza is related to bakery goods.

[00:07:10] Speaker 01:
I don't know any bakeries.

[00:07:12] Speaker 01:
that bake and sell pizzas.

[00:07:16] Speaker 01:
Enray DeLieb, D-I-L-E-E-P, they held that candles are adequately related to skin care products.

[00:07:31] Speaker 01:
They're going nuts with cosmetics.

[00:07:34] Speaker 01:
Enray Salvation Nutraceuticals held that gummy vitamins, little rubbery candy vitamins,

[00:07:41] Speaker 01:
adequately related to hair shampoo and hair conditioner, soaps, things of that sort.

[00:07:49] Speaker 01:
N-ray SUAREZ, S-U-A-R-E-Z, held that household cleaners are adequately related to body care products and cosmetics.

[00:08:03] Speaker 01:
And Coors, let's go back to Coors.

[00:08:06] Speaker 01:
Remember the quote from Coors where this court held

[00:08:12] Speaker 01:
At page 1341, board erred by finding that beer and restaurant services are related, regardless of the fact that countless restaurants serve beer.

[00:08:26] Speaker 01:
Since our briefs have been filed in this case, Enrae came as vineyards.

[00:08:32] Speaker 01:
They held that wine is related to restaurant and bar services.

[00:08:38] Speaker 01:
N-Ray Veneto, V-I-N-E-D-O de Zorro, held that wine is adequately related to restaurant and bar services.

[00:08:49] Speaker 01:
Totally ignoring, giving lip service to coers, but ignoring what you said in coers that, yes, restaurants serve drinks.

[00:08:59] Speaker 01:
Restaurants have bars.

[00:09:01] Speaker 01:
But that doesn't create a probability that consumers are going to think an alcoholic beverage with the same name

[00:09:08] Speaker 01:
is likely to be confused with the restaurant with the same name.

[00:09:12] Speaker 01:
The PTO has turned the third party uses rule into a per se rule, ignoring the guardrails this court set up, saying, no, you need an adequate, sufficient relationship.

[00:09:26] Speaker 01:
Relationship alone is not enough.

[00:09:28] Speaker 01:
It needs to be an adequate or sufficient relationship.

[00:09:35] Speaker 01:
And that brings us to this case.

[00:09:38] Speaker 01:
If beer and restaurants are not adequately related, how do you make the leap into saying that jewelry and clothing is adequately related to common housewares?

[00:09:52] Speaker 01:
It's certainly not as closely related as restaurants and beer, restaurant-serving beer.

[00:09:59] Speaker 01:
Another guardrail.

[00:10:01] Speaker 03:
Let's make sure I'm understanding.

[00:10:03] Speaker 03:
It's a factual question, right, on that factor.

[00:10:06] Speaker 03:
But you're saying that the board's wrong.

[00:10:08] Speaker 03:
If there's no evidence, no substantial evidence, then it's their legal construct.

[00:10:13] Speaker 01:
And actually, you're a point ahead of me.

[00:10:16] Speaker 01:
The next point I was going to make, the PTO has expanded this rule grossly out of proportion.

[00:10:25] Speaker 01:
In the past, it was traditionally held your big boxes.

[00:10:29] Speaker 01:
Grocery stores have a wide variety of goods.

[00:10:33] Speaker 01:
The fact that a grocery store might sell Kleenexes is not adequately related to justify finding a likelihood of confusion of someone selling Kleenexes.

[00:10:44] Speaker 01:
It's a wide variety.

[00:10:45] Speaker 01:
Consumers are not going to make that leap and probably be confused into believing they came from the same source.

[00:10:53] Speaker 01:
the cases that used to be followed said the same about department stores when it's a wide variety of goods you know consumers aren't going to make that mental leap into believing that a single item simply because it's sold in a department store is related enough to create confusion in the same thing when you're dealing in more recently they said in the past when you're dealing with online variety stores so does it matter sir how the

[00:11:24] Speaker 02:
big box store or whatever presents the goods.

[00:11:28] Speaker 02:
Let's assume that at the University of Michigan, Michigan State game weekend, I think they get 125,000 people in the stand.

[00:11:38] Speaker 02:
And let's assume that the local big box store decides to have a presentation of fraternity sorority stuff.

[00:11:47] Speaker 02:
Because they know they're all coming, and they're having one room, and they have the coffee mug with Zeta on it.

[00:11:52] Speaker 02:
They've got the t-shirt with Zeta on it.

[00:11:54] Speaker 01:
But the difference there is it's specifically being marketed as a Michigan State item.

[00:12:01] Speaker 02:
Well, let's say it's not.

[00:12:03] Speaker 02:
Let's say, for example, that particular store decides that they think they can promote further sales if they have a bunch of stuff that's got Zeta on it.

[00:12:13] Speaker 02:
They've got Zane on t-shirts, they've got it on jewelry, they've got it on coffee mugs, and they all display it in the same room.

[00:12:22] Speaker 01:
Now, that's a harder case for you, isn't it?

[00:12:24] Speaker 01:
But they don't have to say it.

[00:12:26] Speaker 01:
It's obviously being promoted and marketed as Zeta Tau Alpha merchandise.

[00:12:33] Speaker 01:
And that is something more that would cause consumers to make that mental leap to assume that the store is a licensed vendor.

[00:12:41] Speaker 02:
Well, in that case, there is a potential likelihood of confusion as to source, right?

[00:12:48] Speaker 01:
When it's presented as the merchandise of the other, of the trademark owner, oh yes, I totally agree, Your Honor.

[00:12:56] Speaker 01:
But that's something more.

[00:12:58] Speaker 01:
It is marketed as being the same thing.

[00:13:02] Speaker 02:
They might not say... Well, what I'm trying to get at is whether or not you're arguing that there ought to be some restrictions in this third-party situation for the kind of situation.

[00:13:12] Speaker 02:
if things are, maybe they're not trying to promote it just to sorority people.

[00:13:16] Speaker 02:
I mean, a lot of people don't know what zeta means.

[00:13:19] Speaker 02:
I mean, the members of the fraternity and sorority maybe, but not many more people.

[00:13:23] Speaker 01:
And a good point there, Your Honor.

[00:13:26] Speaker 01:
I mean, the consumer for a product that says zeta tau alpha.

[00:13:30] Speaker 02:
I think your basic problem is with the rule.

[00:13:34] Speaker 02:
When we talk about relatedness of goods, typically, we're simply looking at the relatedness of the good.

[00:13:39] Speaker 02:
And so we're going to ask whether or not

[00:13:42] Speaker 02:
cup is somehow related to this piece of paper.

[00:13:46] Speaker 02:
And ordinarily, a human being would say no.

[00:13:50] Speaker 02:
Our law says that when things are sold and the consumer can see them together, we're going to have a new way of looking at relatedness, which is source, not the product itself.

[00:14:04] Speaker 01:
And the third party uses rule makes sense in context.

[00:14:09] Speaker 01:
But the cases have already held

[00:14:12] Speaker 01:
that big boxes are bad examples for third-party uses.

[00:14:17] Speaker 00:
What about the registrations?

[00:14:19] Speaker 00:
Registrations.

[00:14:20] Speaker 00:
Which registration?

[00:14:22] Speaker 00:
The board relied on registrations that covered both kinds of goods.

[00:14:30] Speaker 01:
Well, the registration did not mention any of our goods.

[00:14:34] Speaker 00:
No third-party registrations.

[00:14:36] Speaker 01:
But even those

[00:14:38] Speaker 01:
were typically a wide variety of products.

[00:14:42] Speaker 01:
I mean, the PTO's Princeton tectonics case addresses that point.

[00:15:01] Speaker 01:
So if it's a variety store,

[00:15:04] Speaker 01:
a registration with a wide variety of products.

[00:15:09] Speaker 01:
Consumers, with it being a wide variety, consumers are more than likely to assume that, oh, it's just a reseller that's buying all these unrelated products and putting their trademark on it, and not likely to confuse it with someone in an unrelated product line.

[00:15:30] Speaker 01:
And that's in Ray Prince

[00:15:32] Speaker 01:
Princeton tectonics 95 USP second, page 1509.

[00:15:39] Speaker 00:
Mr. Wheat, we're out of time.

[00:15:45] Speaker 00:
I think we'll give you two minutes for a bubble.

[00:15:49] Speaker 01:
Bad me.

[00:15:50] Speaker 01:
Thank you, Your Honor, for giving me extra time.

[00:15:59] Speaker 00:
Ms.

[00:15:59] Speaker 00:
Heiber?

[00:16:09] Speaker 04:
Let me please the court.

[00:16:11] Speaker 00:
This is the- Before we get into the merits, is it correct that if we affirm they can file a new application limited to this sorority context without being barred by collateral stop or race judicata?

[00:16:28] Speaker 04:
That is correct, Your Honor, because it's not the exact same application.

[00:16:32] Speaker 04:
If there's any difference in the goods, then we have to consider that a new.

[00:16:36] Speaker 00:
OK.

[00:16:37] Speaker 04:
And I would also add to that.

[00:16:40] Speaker 00:
Well, it's not just difference in goods.

[00:16:42] Speaker 00:
It's difference in channels of trade.

[00:16:44] Speaker 04:
Yes.

[00:16:44] Speaker 00:
Yes.

[00:16:46] Speaker 04:
I'm sorry.

[00:16:46] Speaker 04:
In the identification of goods, right?

[00:16:48] Speaker 04:
That would kind of tell you differences in channels of trade or other things.

[00:16:52] Speaker 04:
It gets considered for the mark and the goods in the application edition.

[00:16:57] Speaker 04:
I would also add to that, Pelham has other options.

[00:17:00] Speaker 04:
If the court were to affirm and they believe that the registered mark is a problem and they have priority,

[00:17:07] Speaker 04:
or they find other problems with the mark, it is less than five years old, and they could petition to cancel it.

[00:17:13] Speaker 04:
And if there's issues with the use claim, the new proceedings that the Trademark Monetization Act created are available to them as well.

[00:17:21] Speaker 04:
Going to the merits.

[00:17:22] Speaker 04:
This is an ordinary likelihood of confusion case.

[00:17:25] Speaker 04:
Likelihood of confusion considers a variety of factors.

[00:17:29] Speaker 04:
Here we have identical marks.

[00:17:31] Speaker 04:
When we have identical marks, a lesser degree of similarity between goods is required.

[00:17:36] Speaker 02:
and we're only... Can I ask you a question about that lesser degree in that?

[00:17:41] Speaker 02:
Supposedly comes from Shell.

[00:17:43] Speaker 02:
Yes.

[00:17:44] Speaker 02:
Right?

[00:17:46] Speaker 02:
It doesn't come from Shell at hardcore.

[00:17:49] Speaker 02:
It comes from Shell at the PTAB, I believe.

[00:17:53] Speaker 02:
You don't have a copy of Shell with you, do you?

[00:17:55] Speaker 02:
I do not, Your Honor, no.

[00:17:57] Speaker 02:
I don't know if anybody's ever made this point, but it's page 1207 in Shell that's used for that citation.

[00:18:08] Speaker 02:
So if the service marks not identical, it doesn't go on to say there's a lesser test.

[00:18:14] Speaker 04:
And I'm not suggesting that there is a lesser test.

[00:18:16] Speaker 04:
The test that we look for, so let me back up.

[00:18:21] Speaker 04:
We're dealing with non-competitive goods, as Your Honor pointed out.

[00:18:25] Speaker 04:
These are not the same product.

[00:18:29] Speaker 04:
But that's what the DuPont test is designed to look at.

[00:18:33] Speaker 04:
What is the relationship between the goods?

[00:18:35] Speaker 04:
and the court has held time and time again, if the circumstances are such that consumers are going to encounter these goods offered by the same party under the same mark, that is evidence of relatedness.

[00:18:47] Speaker 04:
That is also evidence that in the limited circumstances where the something more principle applies satisfies that.

[00:18:54] Speaker 04:
It's the kind of evidence that the court held was lacking in St.

[00:18:57] Speaker 04:
Helena.

[00:18:58] Speaker 04:
In that case, the services, the health care services,

[00:19:01] Speaker 04:
and the printed educational materials about fitness didn't have the same mark.

[00:19:06] Speaker 02:
Let's assume that it's a fraternity, it's a deke house where it's a masculine, very muscular group of guys join the deke house.

[00:19:19] Speaker 02:
And what they have is the mark that you're fighting up, you have a situation where they put the deke on, like here they want for

[00:19:31] Speaker 02:
clothing and jewelry.

[00:19:33] Speaker 02:
And they're met with somebody that sells, puts on tires.

[00:19:39] Speaker 02:
Somebody puts the deep load on an automobile tire.

[00:19:43] Speaker 02:
And the tires are being sold at Walmart, right along with the other goods.

[00:19:50] Speaker 02:
Does the third party work in that situation?

[00:19:55] Speaker 04:
It would depend on what the evidence shows here.

[00:19:57] Speaker 02:
The evidence just shows that, like the evidence just shows here.

[00:20:01] Speaker 02:
doesn't show any more than the fact that at a point of sale, these goods with the same trademark on it exist.

[00:20:11] Speaker 02:
The consumer can walk up and see them.

[00:20:15] Speaker 04:
Then it would be the same.

[00:20:17] Speaker 02:
What we're looking for here is... So even if it was an automobile tire, I'm trying to get an example where the goods are so clearly unrelated in fact.

[00:20:27] Speaker 04:
But if the evidence shows that

[00:20:29] Speaker 04:
the same mark is put on these goods, and consumers encounter them in a way that they would think there's an affiliation or sponsorship.

[00:20:37] Speaker 02:
No, that's a per se rule, isn't it?

[00:20:38] Speaker 04:
It's not a per se rule, Your Honor.

[00:20:40] Speaker 04:
Because it depends on, it's all evidence-based.

[00:20:43] Speaker 04:
Here we have evidence.

[00:20:45] Speaker 00:
Suppose it's all sold in a single big box store, a Walmart.

[00:20:50] Speaker 00:
Is that enough?

[00:20:51] Speaker 04:
That alone is not enough.

[00:20:53] Speaker 04:
That's not what we have here.

[00:20:55] Speaker 00:
That's not enough, OK?

[00:20:56] Speaker 04:
Yeah.

[00:20:56] Speaker 04:
Well, again, it depends, right?

[00:20:58] Speaker 04:
If they are marketed right next to each other in the same store.

[00:21:01] Speaker 00:
No, no, no.

[00:21:01] Speaker 00:
Just the fact that they're sold in the same store is not enough, right?

[00:21:04] Speaker 04:
Typically, that is not enough.

[00:21:06] Speaker 04:
Sometimes it is.

[00:21:07] Speaker 04:
The court's law holds that the same party sells the goods of each party.

[00:21:11] Speaker 04:
That's probative of relatedness.

[00:21:14] Speaker 04:
But what's really probative is when it's under the same mark.

[00:21:16] Speaker 00:
You seem to be saying two different things.

[00:21:18] Speaker 04:
Well, no, I'm not, Your Honor.

[00:21:19] Speaker 04:
What I'm saying is, if they're sold in the same place, consumers might encounter these goods together in a way that if they see the same mark on them, they could be confused about who's sponsoring, who's the source, who's behind these goods.

[00:21:32] Speaker 04:
That's one thing.

[00:21:34] Speaker 04:
But it's another, and it's, again, this is the kind of situation that is really textbook for relatedness.

[00:21:42] Speaker 04:
You don't only have them being sold together in the same store.

[00:21:46] Speaker 04:
They are sold together under the same mark.

[00:21:49] Speaker 04:
That's the kind of evidence that tells us consumers... Wait, wait.

[00:21:53] Speaker 00:
That's the assumption here.

[00:21:55] Speaker 00:
My question is same more different goods.

[00:21:58] Speaker 00:
The mere fact that the goods are sold in the same store is enough to make them related.

[00:22:06] Speaker 04:
It can be when they're sold under the same mark.

[00:22:09] Speaker 00:
Why?

[00:22:09] Speaker 00:
Why is that enough?

[00:22:10] Speaker 04:
Because consumers encounter them in circumstances where I see my ZTA shirt and I see my ZTA mug, I wonder if they're connected, if they're both made by the same product.

[00:22:24] Speaker 03:
We're looking at the facts in this case.

[00:22:26] Speaker 03:
But what about, are there examples?

[00:22:27] Speaker 03:
Can you think of an example where it is sold in the same Walmart, and yet there isn't likelihood or the goods are not related?

[00:22:38] Speaker 03:
Like, I think the example was tires versus mugs or t-shirts.

[00:22:43] Speaker 03:
Would that be enough?

[00:22:45] Speaker 03:
Can you envision an example?

[00:22:46] Speaker 03:
Or is it always the case that if it's sold in the same store, that that's going to be enough to satisfy the TTAV's requirement?

[00:22:55] Speaker 04:
I do not think that it is always the case.

[00:22:58] Speaker 04:
But if you have enough examples that this is a common practice, then that's going to inform what consumers encounter in the marketplace and think.

[00:23:08] Speaker 00:
I mean, big box stores sell lots of different kinds of goods.

[00:23:11] Speaker 00:
Websites sell lots of different kinds of goods.

[00:23:14] Speaker 00:
If that's enough, that begins to look like a per se rule.

[00:23:19] Speaker 04:
It is not a per se rule, Your Honor.

[00:23:21] Speaker 04:
And the tire example is one that is likely far afield.

[00:23:24] Speaker 04:
I cannot think of evidence where this would be the case.

[00:23:27] Speaker 02:
But in today's license- Well, here's an example of an automobile tire and a diamond ring.

[00:23:35] Speaker 04:
Right, the mere fact that they're still living in the same store.

[00:23:38] Speaker 02:
What's happening here is that we're not asking whether or not the goods themselves are actually factually related.

[00:23:44] Speaker 02:
We're asking whether or not there could be some confusion in the mind of the consumer as to the source of unrelated goods.

[00:23:51] Speaker 04:
That's exactly right.

[00:23:53] Speaker 04:
That's exactly right.

[00:23:54] Speaker 02:
And so what the law says is that if a consumer can be confused about the source of utterly unrelated goods, that qualifies under the DuPont factor for relatedness of the goods.

[00:24:05] Speaker 02:
Yes, but it depends on how the- Does that strike you that maybe that standard has something wrong with it?

[00:24:12] Speaker 02:
No, it does not because it's- I know it's been applied forever.

[00:24:16] Speaker 04:
Well, I think we're talking about two different things here, okay?

[00:24:20] Speaker 04:
We're not in a big box store context at all in this case.

[00:24:25] Speaker 02:
We're in a case- We don't know what kind of context we're in from the point of sale, do we?

[00:24:30] Speaker 02:
Did the record show where the points of sale that are compared here are?

[00:24:35] Speaker 04:
No, they're presumed to be in all normal channels of trade to all customers.

[00:24:40] Speaker 04:
But the point that we're looking at for are these goods related in the minds of consumers in the sense that matters for likelihood of confusion, could they believe mistakenly that they emanate from a common source?

[00:24:51] Speaker 02:
The best example on the record is the PiFi site, right?

[00:24:54] Speaker 04:
That's a good example for the particular goods.

[00:24:56] Speaker 02:
The PiFi site is a sorority, and it has its own site, and it sells totally unrelated, physically unrelated goods with its brand on them, right?

[00:25:04] Speaker 04:
Yes.

[00:25:06] Speaker 04:
But that's exactly the point.

[00:25:08] Speaker 04:
Consumers are accustomed to seeing, and in this case the evidence does show, sororities offering the goods of both the applicant and the registrant under the same mark in the same store.

[00:25:18] Speaker 04:
And it's the under the same mark that is really critical in this case and in other cases where the court has a felony.

[00:25:25] Speaker 02:
We put our court logo on coffee mugs and we put it on T-shirts.

[00:25:30] Speaker 02:
It's the same idea.

[00:25:31] Speaker 04:
Yes, Your Honor, and the court in Tiger Lilly recognized that it is very common practice today for companies that are providing very different things to license their good marks on collateral merchandise.

[00:25:45] Speaker 04:
That case involved financial services and why.

[00:25:48] Speaker 00:
Well, that may be true, but that doesn't mean that's always true.

[00:25:50] Speaker 04:
It doesn't, Your Honor, which is why it's completely evidence dependent.

[00:25:53] Speaker 00:
So give us an example when it's not true.

[00:25:57] Speaker 00:
Same mark, different goods.

[00:26:00] Speaker 00:
sold in the same store or at the same website.

[00:26:05] Speaker 00:
What evidence would suggest that they're not related under those circumstances, in your view?

[00:26:11] Speaker 04:
I think you would need some kind of rebuttal evidence that would show consumers wouldn't make that mistake of thinking when they encounter.

[00:26:19] Speaker 00:
A survey?

[00:26:20] Speaker 04:
A survey, possibly.

[00:26:23] Speaker 03:
Declarations other things about animals like the diamond ring and Tires that are so far afield that evidence wouldn't be required.

[00:26:34] Speaker 04:
I Don't think we could find evidence of relatedness of those goods like my friend on the other side I think what?

[00:26:41] Speaker 02:
Just all that is not there should be a requirement that where the goods are practically wildly different there has to be some showing

[00:26:52] Speaker 04:
Yeah, and there is.

[00:26:53] Speaker 02:
And it would be- The consumer would be confused as to source?

[00:26:57] Speaker 04:
It would be the same exact showing that this court has required time and again.

[00:27:01] Speaker 02:
Evidence that the same parties- But who would it be to produce that?

[00:27:08] Speaker 02:
You want to invoke what looks like a per se rule, right?

[00:27:12] Speaker 04:
Your Honor, there's no per se rule here.

[00:27:14] Speaker 04:
It's 100% based on the evidence of how consumers encounter goods in the marketplace.

[00:27:19] Speaker 04:
And when they encounter them offered by the same provider,

[00:27:22] Speaker 04:
in the same store, under the same mark, the goods under the same mark.

[00:27:27] Speaker 03:
We're not talking about Walmart that sells various... I'm really confused right now.

[00:27:31] Speaker 03:
What I want to make sure I understand is what you're saying is that in the example of a tire and a diamond ring, the trademark registrant for the diamond ring would have to present evidence that there wouldn't be confusion because their diamond rings are sold in the same store as a tire.

[00:27:48] Speaker 04:
No, Your Honor.

[00:27:49] Speaker 03:
It's the opposite.

[00:27:50] Speaker 04:
The PTO would have to present evidence that this is a common thing that consumers would encounter, diamond rings and tires offered under the same mark, not just in the same store, offered under the same mark.

[00:28:02] Speaker 04:
That's really what's getting to the heart of why this evidence shows relatedness.

[00:28:09] Speaker 04:
Do the goods commonly emanate from a single source under the same mark?

[00:28:14] Speaker 04:
That is, time and again, the evidence the court has upheld is sufficient to show relatedness.

[00:28:18] Speaker 04:
An applicant had options to rebut it.

[00:28:20] Speaker 00:
You mean that the seller, that individual sellers are offering the two goods, the tires and the diamond rings, under the same mark?

[00:28:28] Speaker 04:
Correct.

[00:28:29] Speaker 04:
If we had multiple examples of that, then that might be enough for a prima facie case.

[00:28:34] Speaker 00:
And you're saying that that's true here because other sororities are selling diverse goods?

[00:28:38] Speaker 00:
Is that the idea?

[00:28:39] Speaker 04:
Not just other sororities, but just generally, because these are not limited.

[00:28:44] Speaker 04:
Are these the kinds of goods that consumers encounter under the same mark, sold together?

[00:28:49] Speaker 00:
And they are.

[00:28:50] Speaker 00:
But it's not enough that they're sold in the same store or the same website, right?

[00:28:56] Speaker 00:
That in and of itself is not enough.

[00:28:58] Speaker 04:
If it's under the same mark, the goods are branded and the website has the same name.

[00:29:03] Speaker 00:
It is enough that they're the same mark, that they're sold in the same website or in the same store to show relatedness.

[00:29:11] Speaker 04:
It is, Your Honor.

[00:29:12] Speaker 04:
The court recently appealed that in charge of ventures because the record shows that companies are known to offer both residential and commercial services under the same mark and often on the same website.

[00:29:22] Speaker 04:
We find that substantial evidence supports the board's finding.

[00:29:25] Speaker 00:
That's not the same thing.

[00:29:26] Speaker 00:
That's not the same thing.

[00:29:27] Speaker 00:
My question was the mere fact that they're sold on the same website or sort of sold by a third party website or a third party big box store doesn't make them related.

[00:29:40] Speaker 00:
is not sufficient evidence of relatedness.

[00:29:42] Speaker 04:
I think we might be talking past each other.

[00:29:45] Speaker 04:
So maybe an example is helpful from the case that Appellant cited, the Princeton tectonics case.

[00:29:51] Speaker 04:
In that case, Appellant has plucked a quote out of context.

[00:29:54] Speaker 04:
But the website that the board found did not show relatedness was stars.com.

[00:30:01] Speaker 04:
The board described it as virtually any product or service a consumer may desire was available on that website.

[00:30:09] Speaker 04:
And it did not show.

[00:30:10] Speaker 04:
that the goods at issue there were personal headlamps and electric lighting fixtures, were sold in the same section of the site by the same provider under the same mark.

[00:30:22] Speaker 04:
That is not enough.

[00:30:23] Speaker 04:
So yes, Your Honor, that is not enough.

[00:30:25] Speaker 04:
But if it's the same mark, like the website like Kate Spade, it's the katespade.com website, and the goods are also branded Kate Spade, that is enough.

[00:30:35] Speaker 00:
No, we're not talking about the Kate Spade website.

[00:30:37] Speaker 00:
We're talking about a third party website.

[00:30:40] Speaker 00:
The questions that we've been asking about third party websites, third party stores, the mere fact that goods are sold under identical mark tires and diamond rings in that context is not sufficient to show relatedness, right?

[00:30:55] Speaker 00:
Or not?

[00:30:57] Speaker 04:
I think I'm having

[00:30:59] Speaker 04:
I'm resisting only because I'm not sure if we're assuming that the website, the store, has a different brand name than the goods.

[00:31:05] Speaker 03:
We are.

[00:31:06] Speaker 03:
Like Amazon, for example.

[00:31:09] Speaker 04:
Yes.

[00:31:10] Speaker 04:
Alibaba, Amazon.

[00:31:12] Speaker 04:
Those are like the big box stores.

[00:31:15] Speaker 04:
They sell a variety of things by different providers under different marks.

[00:31:20] Speaker 04:
What I'm talking about is the evidence to the record here.

[00:31:22] Speaker 00:
Under those circumstances, the fact that the goods are sold

[00:31:26] Speaker 00:
on the same third-party website or Walmart is not sufficient to establish relatedness.

[00:31:33] Speaker 04:
If it's a big-box store like that, yes.

[00:31:36] Speaker 04:
But if it's a small, focused retail channel, like if it's a houseware store, I would say that's, for example, if it's Pottery Barn, OK?

[00:31:46] Speaker 04:
That is enough, where it's a houseware store that sells.

[00:31:51] Speaker 02:
Why is there a difference?

[00:31:52] Speaker 02:
in the mind of the consumer.

[00:31:54] Speaker 02:
Some people don't ever go to the small retail store anymore.

[00:31:58] Speaker 02:
They do all their business online on the big places.

[00:32:03] Speaker 02:
And so when I'm shopping on the big place and I see the zeta mark on a diamond ring and I see it on a tire, why is my reaction different than if I were in a smaller store and I encountered the same thing?

[00:32:18] Speaker 04:
I don't know if it would be, Your Honor.

[00:32:20] Speaker 02:
Well, you've said there is, now, in your response to Judge Stein.

[00:32:25] Speaker 04:
It 100% depends on what the evidence shows and the commonality of it.

[00:32:29] Speaker 04:
But I do submit that Amazon, generally, you have two different goods sold on there.

[00:32:35] Speaker 04:
That's not enough to show they're related in the minds of consumers, because consumers go to Amazon, different brand, expecting to find all sorts of goods from all different parties.

[00:32:44] Speaker 04:
They go to

[00:32:46] Speaker 04:
at Phi Beta Alpha store to find things from Phi Beta Alpha, branded with Phi Beta Alpha, and they offer jewelry, clothing, mugs.

[00:32:54] Speaker 02:
Okay, so they go to a local department store, right?

[00:32:58] Speaker 02:
And the local department store is, you know, what Amazon used to be.

[00:33:02] Speaker 02:
Like the old heck company or whatever here in town.

[00:33:06] Speaker 02:
Right.

[00:33:07] Speaker 02:
Department store... Will your rule that it won't work on Amazon website, does that apply to the local department store?

[00:33:16] Speaker 04:
That's been the law, that department stores sell a lot of things.

[00:33:20] Speaker 04:
So the mere fact that two things are sold in a department store is normally not going to be enough.

[00:33:25] Speaker 04:
It, again, would depend if they're sold under the same mark in circumstances that consumers would encounter them in a way that they could mistakenly believe they come from the same source.

[00:33:35] Speaker 04:
That's what the standard is.

[00:33:37] Speaker 04:
That's what the evidence needs to show.

[00:33:39] Speaker 04:
And the evidence we have here amply shows these are related, these are

[00:33:43] Speaker 04:
goods that are of a type that commonly emanate from the same source.

[00:33:48] Speaker 04:
And that's what the board found.

[00:33:49] Speaker 04:
It's what the evidence shows.

[00:33:51] Speaker 04:
It's what the court has directed in time and time again as sufficient to show relatedness of goods.

[00:33:57] Speaker 04:
We do not have evidence of department stores, big box stores.

[00:34:01] Speaker 04:
That's not what the evidence in this case is.

[00:34:03] Speaker 04:
This is targeted retailers under a single brand selling their own branded goods

[00:34:09] Speaker 04:
and goods of both parties.

[00:34:10] Speaker 02:
How does an applicant protect him or herself when they file their application?

[00:34:14] Speaker 02:
Do they carve out Amazon and say, we apply to basically all forms of commerce, channels of commerce, except Amazon?

[00:34:24] Speaker 04:
But this isn't an Amazon case, Your Honor.

[00:34:26] Speaker 02:
I'm asking you, how does the applicant protect themselves?

[00:34:29] Speaker 02:
Because you're saying that a local department store, the fact that they're sold together with the same market is not enough.

[00:34:39] Speaker 04:
No, Your Honor, I'm not saying that.

[00:34:42] Speaker 04:
We have to look at the circumstances in every case.

[00:34:45] Speaker 04:
Normally, just that mere fact that it's a department store that sells both kinds of goods, that's not enough to show relatedness.

[00:34:54] Speaker 04:
But if it's the same marks and they're presented near each other in the store, you might very well be walking by, similar to your example of the bookstore, except

[00:35:04] Speaker 04:
bookstore is different than a department store.

[00:35:08] Speaker 04:
But if you would think, oh, I wonder if that's made by the same company that makes the shirts I just saw over here, and it's a football or something.

[00:35:20] Speaker 04:
It's about what the common practice is, the marketing circumstances.

[00:35:27] Speaker 04:
And if there's evidence that this is a common thing, that these things are sold under the same mark, in circumstances that consumers could be confused,

[00:35:34] Speaker 04:
as to their source, that's what the evidence needs to show.

[00:35:38] Speaker 04:
Mere fact of department stores, mere fact online on Amazon, not enough in and of itself.

[00:35:44] Speaker 04:
I hope that kind of draws the line.

[00:35:50] Speaker 00:
OK.

[00:35:50] Speaker 00:
OK.

[00:35:50] Speaker 00:
I think we're out of time.

[00:35:51] Speaker 00:
OK.

[00:36:09] Speaker 01:
May it please the court?

[00:36:11] Speaker 01:
Judge Clebinger, the answer to your question when the goods are widely different is provided by this court in the St.

[00:36:17] Speaker 01:
Helena case at page 754.

[00:36:20] Speaker 01:
In situations like the present in which the relatedness of the goods and services is obscure or less evident, the PTO will need to show something more than the mere fact that the goods and services are used together.

[00:36:38] Speaker 01:
Later in that paragraph, the rule is not so limited and has application.

[00:36:45] Speaker 01:
While we have applied to something more standard in the past in the context of restaurant services, the rule is not so limited and has application.

[00:36:58] Speaker 01:
Whenever the relatedness of the goods and services is not evident, well-known or generally recognized.

[00:37:07] Speaker 02:
What case was that?

[00:37:09] Speaker 01:
The St.

[00:37:09] Speaker 01:
Helena case, 774F3.

[00:37:11] Speaker 01:
I was reading from the end of page 753 and end of page 754.

[00:37:17] Speaker 01:
The wide variety rule from Princeton Technotics, 95 USPQ at page 1511.

[00:37:32] Speaker 01:
In addition to goods, the registration also identifies automatic bread making machines, rice cookers, various types of cooking ovens, ventilation systems, and air conditioners.

[00:37:45] Speaker 01:
The diversity of the goods identified in the registration diminishes the probative value in establishing that any two items identified in the registration are related.

[00:38:01] Speaker 01:
We conclude the diversity of goods identified.

[00:38:04] Speaker 02:
Is that case just dealing with actual relatedness, or is it dealing with a third party?

[00:38:09] Speaker 01:
It's a third party uses case where the example was an online store with a wide variety of products.

[00:38:21] Speaker 01:
We conclude that the diversity of goods identified in the registration of record is sufficient to establish

[00:38:28] Speaker 01:
that Panasonic is a house mark or the equivalent used on a wide variety of goods which are otherwise unrelated.

[00:38:36] Speaker 01:
That's most of the examples here.

[00:38:39] Speaker 01:
Sorority stores, souvenir shops, college book stores, the sorority, the tourist attraction.

[00:38:50] Speaker 01:
The college didn't produce any of these products.

[00:38:53] Speaker 01:
They buy them and put their house mark on them.

[00:38:56] Speaker 00:
Okay, I think we're out of time.

[00:38:59] Speaker 00:
Okay.

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

[00:39:01] Speaker 00:
I appreciate the extra time, your honor.

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

[00:39:03] Speaker 00:
Thank you both counsel.

[00:39:04] Speaker 00:
The case is submitted.