[00:00:00] Speaker 04:
Our last case for argument today is 23-2143 Apex Bank vs. CC Surge Court.

[00:00:37] Speaker 04:
Mr. Bradford, please proceed.

[00:00:43] Speaker 02:
Please record I'm Michael Bradford here on behalf of the Appellant Apex Bank.

[00:00:47] Speaker 02:
The primary issue on this appeal is the board's fair to give appropriate consideration to the extensive evidence of third-party use of Aspire and Aspire formative marks for credit card services and other banking and financial services.

[00:01:00] Speaker 04:
Well, let's be more specific.

[00:01:02] Speaker 04:
Isn't the real issue that the board messed up the sixth DuPont factor?

[00:01:05] Speaker 02:
Correct.

[00:01:06] Speaker 04:
There's a whole bunch of DuPont factors and they messed up number six.

[00:01:08] Speaker 02:
Is that right?

[00:01:09] Speaker 02:
They messed up number six, that's correct.

[00:01:10] Speaker 04:
Okay, so tell me how they messed it up.

[00:01:11] Speaker 02:
They messed it up in two ways.

[00:01:13] Speaker 02:
First, we'll get to their failure to consider all of the third party use, but they did consider nine examples of third party use for credit card services.

[00:01:26] Speaker 02:
So the opposer's mark is Aspire for credit card services.

[00:01:31] Speaker 02:
The record shows five other entities using Aspire for credit card services.

[00:01:37] Speaker 02:
Four other entities using

[00:01:39] Speaker 02:
marks containing a spire.

[00:01:41] Speaker 04:
I guess I thought your argument was going to be a little simpler.

[00:01:44] Speaker 04:
I thought your argument was going to be that the law says they have to consider similar goods and services and the board expressly said no you have to consider only the same ones and so I thought your argument could be way simpler than starting with the nine versus the 32 versus the whatever.

[00:02:01] Speaker 02:
Well and I

[00:02:04] Speaker 02:
Let's go and get to that, but I can get to that.

[00:02:06] Speaker 04:
Well, I think the simpler parts, the better parts.

[00:02:08] Speaker 02:
Okay, start with that.

[00:02:09] Speaker 02:
Okay, we'll start there.

[00:02:11] Speaker 02:
So yes, the sixth DuPont factor is you're supposed to consider similar marks for similar goods and services.

[00:02:18] Speaker 02:
The board essentially said when, when the- Not essentially, what the board actually said.

[00:02:24] Speaker 04:
Okay.

[00:02:24] Speaker 04:
I'm trying to help you here.

[00:02:26] Speaker 02:
Yeah, yeah.

[00:02:26] Speaker 04:
Don't fight me.

[00:02:27] Speaker 02:
Well, when the applicant and the opposers marks covered the same- Oh dear God, what did the board actually say?

[00:02:34] Speaker 02:
Sorry, sorry.

[00:02:34] Speaker 02:
The party services are legally identified page sorry on page 47.

[00:02:53] Speaker 02:
Yep.

[00:03:01] Speaker 02:
And they say the party services are legally identical to the extent applicants' banking and financing services encompass imposer's credit card services.

[00:03:09] Speaker 02:
Accordingly, for purposes of the sixth DuPont factor, the properly defined relevant public is consumers of credit card services.

[00:03:16] Speaker 02:
and assessing the strength of a person's mark, we therefore focus solely on those marks for credit card services identified above.

[00:03:23] Speaker 04:
So they, what they did is they said we're only going to look at third party marks that are for the identical services.

[00:03:32] Speaker 00:
Correct.

[00:03:33] Speaker 04:
We're not going to look at third party marks even though the law says to look at ones for similar goods and services, we're only going to look at the ones for the exact same goods and services.

[00:03:42] Speaker 02:
Correct.

[00:03:42] Speaker 02:
They said the rest are essentially irrelevant.

[00:03:45] Speaker 04:
Right.

[00:03:45] Speaker 04:
And you had others in this record that you wanted them to look at, right?

[00:03:50] Speaker 02:
Correct.

[00:03:50] Speaker 02:
There were over 30 other marks.

[00:03:52] Speaker 02:
So there are nine for credit card services and over 30 others for checking accounts, for debit card services.

[00:03:59] Speaker 04:
All relating to banking.

[00:04:00] Speaker 02:
All related to banking.

[00:04:01] Speaker 02:
Yep.

[00:04:02] Speaker 02:
And the

[00:04:04] Speaker 02:
And they said those are not relevant.

[00:04:07] Speaker 02:
So for example, if you go into Chase and you get a credit card, they try to give you a checking account.

[00:04:11] Speaker 02:
They try to give you a banking account.

[00:04:13] Speaker 02:
They try to give you a loan.

[00:04:14] Speaker 02:
Those are all directed to the same relevant public.

[00:04:18] Speaker 02:
What do consumers think?

[00:04:19] Speaker 04:
When you walk into Chase, they try to give you a loan?

[00:04:22] Speaker 04:
Like that's what they do with you?

[00:04:23] Speaker 04:
They don't do that with me.

[00:04:24] Speaker 04:
I walk in the bank, they don't say, I want to give you this, and I want to give you that.

[00:04:28] Speaker 02:
Unfortunately, I have a few loans.

[00:04:31] Speaker 02:
But so they said these are not similar goods and services.

[00:04:36] Speaker 02:
And they relied on the national cable case for this decision and the home hold stakes case.

[00:04:40] Speaker 04:
Where did they say these are not similar goods and services?

[00:04:42] Speaker 02:
Well, they say they're not.

[00:04:43] Speaker 02:
I'm sorry.

[00:04:44] Speaker 04:
Yeah, I know.

[00:04:44] Speaker 04:
I'm trying to keep you on track.

[00:04:45] Speaker 02:
They refuse to consider them.

[00:04:47] Speaker 02:
And they rely on the national cable.

[00:04:50] Speaker 02:
Yeah, can you help me with that case?

[00:04:52] Speaker 03:
I mean, there's some language in that case that seems to be consistent with that they did, but not consistent with what the law actually is.

[00:05:00] Speaker 02:
So I think the national cable case involves two parties that were using ACE, A-C-E, for award ceremonies directed at the film industry.

[00:05:10] Speaker 02:
And there the board looked at other ACE marks for this, all kinds of good services that weren't directed at the film industry.

[00:05:18] Speaker 03:
And there you were both the both parties were looking at the same identical.

[00:05:26] Speaker 02:
Yeah, they were using the mark for the same services.

[00:05:29] Speaker 03:
Now, that's not the case here.

[00:05:31] Speaker 02:
Well, right.

[00:05:31] Speaker 03:
Well, it's not.

[00:05:32] Speaker 03:
But no, but again, I don't think I'm, I'm not trying to trick you on other parts of the DuPont factors.

[00:05:38] Speaker 03:
They actually did argue

[00:05:40] Speaker 03:
The opposer argued that you did have to look beyond just credit card services to determine the relevant public, which I found, and the board accepted it there, that you could look to the general banking versus just credit card.

[00:05:56] Speaker 03:
In the second DePauw factor, they actually looked at- How can they say it's relevant for that, but not relevant for this?

[00:06:03] Speaker 03:
I completely agree.

[00:06:05] Speaker 04:
Well, they just got the law wrong.

[00:06:06] Speaker 02:
Exactly.

[00:06:08] Speaker 04:
Because, and in the end, I don't even know, do we have to, I mean, we have to send it back, I think, but they seem to have, in the second Dupont factor, made the fact-finding that all those other marks you wanted to look at are directed to similar services.

[00:06:24] Speaker 02:
Exactly.

[00:06:24] Speaker 02:
The way you look at this is you look at all these third-party registrations and it shows that Cathay Bank offers all these services.

[00:06:31] Speaker 02:
They're all out for the same role in public.

[00:06:34] Speaker 04:
But what we can't do, while we can tell the board, look at your own fact findings, what we can't do is then weigh it all for them, right?

[00:06:42] Speaker 04:
We should send it back for them to do it, correct?

[00:06:46] Speaker 02:
For weighing

[00:06:48] Speaker 02:
Correct.

[00:06:49] Speaker 02:
Yes, you should send it back to them for fact-finding.

[00:06:53] Speaker 02:
But I think you can say that it's a commercially weak mark.

[00:06:58] Speaker 02:
You can make that determination based solely on the credit card services.

[00:07:01] Speaker 04:
That feels like a fact-finding.

[00:07:03] Speaker 04:
But if you look at the spirit of the case... That would be Judge Hughes' job, Nick.

[00:07:07] Speaker 03:
We already established that.

[00:07:09] Speaker 03:
I mean, you all came up here and asked for too much.

[00:07:13] Speaker 03:
It sounds like you're going to get part of what you want.

[00:07:15] Speaker 03:
Why do you want us to make fact findings on appeal?

[00:07:18] Speaker 02:
I'm basing it on the Spurgeon case.

[00:07:22] Speaker 02:
And there, they said there were three identical marks used for identical services as the opposer.

[00:07:32] Speaker 02:
And with that situation, they said, you must find it's a commercially leaked mark.

[00:07:38] Speaker 02:
That was a fact finding and I just, I don't see.

[00:07:43] Speaker 02:
if three identical marks used for identical services.

[00:07:48] Speaker 03:
Yeah, but here, that's the problem.

[00:07:50] Speaker 03:
This is not identical services.

[00:07:52] Speaker 03:
I mean, the board would apply the incorrect law when it said it had to be identical services, but what you're saying is it could be similar services, but that case doesn't help me because then you still have to determine whether the similar services are, the marks there are enough to make it weak, which sounds very fact-finding.

[00:08:12] Speaker 02:
Correct.

[00:08:12] Speaker 02:
But if let's say I was wrong and you can't consider these other 30 marks.

[00:08:18] Speaker 02:
Under the Spearian case if you only looked at the credit card services there are five identical Aspire marks for identical credit card services as the opposer.

[00:08:29] Speaker 02:
In Spearian there were three identical for for identical services and there the federal circuit said in that situation you must

[00:08:41] Speaker 03:
wrong, the marks they did find identical is enough to render this a weak mark.

[00:08:46] Speaker 03:
That sounds like a substantial evidence argument, though.

[00:08:50] Speaker 03:
I don't see why you want to go there.

[00:08:52] Speaker 03:
But substantial evidence is not a high hurdle for them to overcome.

[00:08:58] Speaker 02:
Yes, I mean, I'll stick with the DeNova review of the legal test.

[00:09:03] Speaker 04:
Sounds like a really good plan.

[00:09:05] Speaker 04:
Okay, thank you, Mr. Baffert.

[00:09:06] Speaker 04:
Why don't you send the rest of the time for rebuttal.

[00:09:08] Speaker 04:
Mr. Padgett.

[00:09:12] Speaker 01:
Please the court Austin pageant for CC serve turning all these points.

[00:09:19] Speaker 01:
I think if you look at the board's decision was really guided by apex's trial brief.

[00:09:25] Speaker 04:
If you turn it's 7032 in the record, one comment and I'll definitely let you walk us through that trial brief, but they can't stipulate to bad law, right?

[00:09:35] Speaker 04:
The law is for the judge.

[00:09:37] Speaker 04:
and it can't be stipulated to.

[00:09:39] Speaker 04:
And so if the board misapplied the law, like in terms of I said the wrong law and then I applied it, not just misapplied as an application law to fact, but to actually state the law wrong, they can't stipulate that away, right?

[00:09:54] Speaker 04:
They can't do that.

[00:09:55] Speaker 04:
So here on page 47, it looks like the board stated the wrong law with regard to DuPont factor number six.

[00:10:02] Speaker 04:
So tell me, what am I missing about that?

[00:10:05] Speaker 01:
And on page 40 is where the board goes through the prompt factor and states the similar marks for similar goods and services standard.

[00:10:18] Speaker 01:
And while I agree that the bad law can't be waived, the board is tied down by the record that it receives from the parties.

[00:10:28] Speaker 00:
But can you respond specifically to the point raised on appendix page 47 where the board talks about

[00:10:36] Speaker 00:
The third party aspire formative marks for services other than credit card services are essentially irrelevant.

[00:10:42] Speaker 00:
Can you respond to that?

[00:10:44] Speaker 01:
Right.

[00:10:44] Speaker 01:
That language is taken from the Omaha Stakes quote that's up above the national cable, citing national cable as well.

[00:10:54] Speaker 01:
So the essentially identical or essentially irrelevant

[00:11:00] Speaker 01:
language comes from that case where the this court's warning the board not to stray too far and what it's considering the scope of what it's looking at when it's thinking.

[00:11:11] Speaker 00:
So is it your opinion that the board was perfectly fine to only look at the nine and not look at the other 30 plus?

[00:11:18] Speaker 01:
It didn't have any basis to look at the other 30 plus and that's in if you go to their.

[00:11:22] Speaker 03:
Because banking and financial services aren't similar to credit card services.

[00:11:29] Speaker 01:
because the record isn't built that way, Your Honor, that if you go to their brief.

[00:11:33] Speaker 00:
What do you mean you say the record isn't built that way?

[00:11:35] Speaker 01:
Right.

[00:11:36] Speaker 01:
In their brief, their thesis statement for similarity is, and this is from 7032, the word aspire is weak as applied to credit card services and should be afforded a narrow scope of protection.

[00:11:47] Speaker 01:
And then the Apex provides 13, sorry, 16, a list of 16 items

[00:11:56] Speaker 01:
that it goes through for credit card services, credit card, and other credit offerings throughout the country.

[00:12:03] Speaker 01:
And that's what it gives the board.

[00:12:05] Speaker 01:
And then it makes a second statement on 7034 where it says that it's going to provide a list of other items

[00:12:16] Speaker 01:
that relate to quote financial services and the financial services industry more broadly.

[00:12:22] Speaker 00:
So just so I understand what you're arguing, are you saying that opposing counsel did not provide that group of 40 plus and only provided the nine or what are you indicating?

[00:12:32] Speaker 01:
He provided the group of 40 plus your honor, but if you look at it like a dark board,

[00:12:38] Speaker 01:
It said, okay, here's the identical services, and here are the similar services, because if you could look at just even number one of it.

[00:12:44] Speaker 03:
If you agree that they're similar services, then the law says they have to be considered.

[00:12:48] Speaker 03:
Maybe they're not as relevant because they're related to the broader universe rather than the specific credit card, but they still have to consider them in terms of similar services, not exclude them altogether.

[00:13:01] Speaker 01:
Your honor, I think the board lists these items and considers them.

[00:13:05] Speaker 04:
No, no, no, it says essentially irrelevant.

[00:13:08] Speaker 04:
Essentially irrelevant is not considering.

[00:13:11] Speaker 01:
Right, because of the shotgun approach that Apex Bank took and included real estate investments, real estate rentals, all sorts of things in this list of items.

[00:13:23] Speaker 01:
You don't even get into checking accounts until

[00:13:26] Speaker 01:
into the thirties.

[00:13:28] Speaker 01:
Um, and so it's the burden.

[00:13:30] Speaker 00:
Are you trying to suggest that the board is somehow off the hook because opposing counsel included more than you think was necessary?

[00:13:37] Speaker 00:
Is that what your argument is?

[00:13:40] Speaker 01:
My argument is that there's no corroborating evidence demonstrated by any of these items.

[00:13:46] Speaker 01:
The identical items, I can see certainly, they're automatically, they're inherently relevant.

[00:13:51] Speaker 04:
I'm sorry, I'll let him answer your question.

[00:13:53] Speaker 04:
Sorry about that.

[00:13:53] Speaker 04:
No, that's okay.

[00:13:54] Speaker 01:
Go ahead.

[00:13:54] Speaker 01:
Sure.

[00:13:55] Speaker 01:
There's no corroborating evidence and the board agreed with us that there's nothing that says

[00:14:00] Speaker 01:
Well, how am I supposed to understand the similarity of these things?

[00:14:04] Speaker 00:
But why don't they have to, with respect to DuPont factor six, need to consider the similar ones as well?

[00:14:09] Speaker 00:
What is your argument as to why that is not necessary?

[00:14:12] Speaker 01:
Because the Will IM case, the IM symbolic case, states that for third party items, you need to have some sort of corroborating evidence as to the probative value that they provide on the way in.

[00:14:22] Speaker 04:
Yeah, but under DuPont factor two, the board defined what amounted to similar, right?

[00:14:28] Speaker 04:
Under DuPont factor two, what did they find?

[00:14:31] Speaker 01:
Right.

[00:14:32] Speaker 04:
They expressly found.

[00:14:33] Speaker 04:
It's an express fact-finding.

[00:14:34] Speaker 04:
What is it?

[00:14:35] Speaker 01:
That their application and our registration were legally identical.

[00:14:46] Speaker 04:
I don't think so.

[00:14:47] Speaker 04:
I think factor number two is similarity of services, right?

[00:14:52] Speaker 04:
DuPont factor number two, similarity of services?

[00:14:56] Speaker 03:
The board rejected the argument that credit and banking were not similar.

[00:15:03] Speaker 03:
They found that they were sufficiently similar.

[00:15:07] Speaker 03:
How can they make that finding for factor two and make the opposite finding for factor six?

[00:15:13] Speaker 01:
Because the finding that they're asserting there is that their application is for banking and financing services is so broad that it includes my client's credit card services.

[00:15:24] Speaker 01:
And so there's inherent overlap.

[00:15:25] Speaker 01:
And they took a look at testimony, definitions of banking, bank, finance, all things that we provided to show them that these things include our client services.

[00:15:38] Speaker 01:
And so when you're weighing them, they're legally identical.

[00:15:46] Speaker 01:
Well, not that every banking service or that every financing service would be a credit card service, but that credit card services are underneath that umbrella.

[00:16:03] Speaker 01:
As to the second or first factors, we stand on our briefs as far as that's related to.

[00:16:09] Speaker 01:
Are there any other questions?

[00:16:12] Speaker 04:
Okay.

[00:16:12] Speaker 04:
Thank you, Mr. Padgett.

[00:16:14] Speaker 04:
Mr. Bradford, you have rebuttal time?

[00:16:18] Speaker 02:
Your Honors, have any other questions?

[00:16:21] Speaker 04:
That was an excellent rebuttal.

[00:16:23] Speaker 04:
Cases taken under submission.