[00:00:03] Speaker 02:
Roe vs. Kid Tribe, Inc.

[00:00:23] Speaker 02:
Ms.

[00:00:23] Speaker 03:
Bennett, you may proceed.

[00:00:28] Speaker 03:
Good morning, Your Honor.

[00:00:32] Speaker 03:
So we're here today regarding the use of three words.

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In 2010, the appellants and the applicants, Kelly Brough and William Erickson.

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Kelly Brough is a choreographer and a dancer, and William Erickson is a hoop artist.

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And they decided to go into business together,

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to provide educational services and children.

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Can you tell us where the PTO erred in deciding the priority of youth was found?

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Sure.

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There's a very important distinction that was overlooked by the PTO, the Trial and Appeal Board.

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The most critical fact here is, or the most critical issue is, was these words used by the opposer, kid tribe, used, the words, the disputed words, was it used for the purpose, for commercial purposes?

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Because otherwise we're looking at freedom of speech issues and competition.

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And there's a strong public policy against preventing people from competing in a market, such as we're talking about hula hoop activities.

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So if we're talking about using the word hoop, it's of course functional and descriptive, especially how kid tribe

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the apposer used it.

[00:02:30] Speaker 00:
It seems to me that there was a stipulation that the case would turn on priority abuse and not descriptiveness or confusion.

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But a lot of your arguments seem to be focused on description and descriptiveness and confusion.

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Right, and that was really interesting because very early on, and I was surprised that the Trial and Appeal Board didn't scrutinize that because all along, Kelly Breaux and William Erickson, they took the position that the youth in this

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The three main... Would you reference the record when you hold something up, please?

[00:03:23] Speaker 03:
Yes, Your Honor.

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This was submitted with the brief.

[00:03:31] Speaker 01:
Give me the record on appeal number, please.

[00:03:34] Speaker 03:
Okay.

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It is A71.

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Yes.

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And I will be referencing as well the script, which is A61.

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And so I'm holding up a copy of the Hoopup curriculum guide and the Hoopa Loopa script.

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but uh... uh... uh... uh... uh... uh... uh... uh... uh... uh... uh... uh... uh... uh... uh... uh... uh... uh... uh... uh... uh... uh...

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And I think when we're talking about usage, back to Honorable Raina's question, is that we're talking about use only for trademark use.

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We're not just talking about use because we can use words all throughout.

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The critical factor is, was this commercial usage for purposes of Section 45, which Section 45 of the Lanham Act is strictly

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arises under Article 1, Section 8, Clause 3 of the Constitution.

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So we always have to go back to whether this is commercial usage.

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You can't just say, oh yeah, they used it, therefore they're entitled to a trademark.

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Because then we're stepping on the toes of freedom of speech and competition.

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Because we have a descriptive mark as here.

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Basically, when you look at the opposers program, she applied under class 41 for a trademark kid tribe for the purposes of providing fitness and exercise and workshops.

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And it was a very general one.

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And then they had, she had this special program here that involved the hoop.

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It was only one of her programs.

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And in that, they had this section, which is part three.

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So basically in the Hoopaloopa script, if you can imagine you're at a school assembly,

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elementary school assembly and all the kids are running around and there's a warm-up session and all of a sudden you're picking up hula hoops.

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So she uses the term hoop it up and that's the functional command telling the kids to pick up the hoop.

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So the problem with the appeal board is that they overlooked the important steps of Section 43A

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which you cannot, this is a common law usage.

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We're not talking about Kid Tribe.

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We're not talking about Hoopa Loopa script.

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We're not talking about Hoop Hop.

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There are many terms that the opposer uses to advertise and promote her business.

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Basically, the Hoop It Up is buried

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in a very inconsequential use.

[00:07:39] Speaker 02:
What's the name of the song on page A61?

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There is a song, and I thought that was really interesting that the appeal board seemed to put a lot of emphasis on that song, which we all know, you can't trademark words in a song.

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Actually, you can have a trademark on words in a song,

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But does this serve as evidence that we're... But let's be clear.

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When you're challenging someone else's trademark, you don't have to prove that you yourself are entitled to a trademark.

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That's what the law says.

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The law says you just have to show

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use analogous to trademark use in order to prevent someone else from getting it.

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They're not getting the trademark here.

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Why isn't this good enough to prove use analogous to trademark law?

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They are trying to get a trademark.

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They filed in 2014.

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And we don't have to find that they're entitled to a trademark in order for your client to lose.

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Well, under Section 43A, which there is

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a very detailed analysis that applies when you don't have a registered mark.

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If you have a registered mark, you get a lot of presumptions.

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The policy is to encourage parties to make people aware and to use so that they know that there is a trademark claim.

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Here, based on the facts and the usage, there's no

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signifying elements that show that this person intended to use it for commercial, let me read.

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McCarty on trademarks, I realize this is a leading treatise and not a case, explains that use analogous to trademark for purposes of the section we're under means, quote, use of a nature and extent such as to create an association of the term with the user's goods.

[00:09:37] Speaker 02:
I mean, all of her screaming hoop it up, waving her hands in the air, a song with the word hoop it up on it, why isn't that enough to create an association of the term with her goods, which is not necessarily enough to get herself a trademark, but it is deemed enough under the law to prevent you from getting one?

[00:09:55] Speaker 03:
Well, I think that's addressed in section two, E and F, which creates a bar to trademark rights.

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I mean, basically, we have to recognize that she does have some rights in order to prevent another party from registering that name.

[00:10:14] Speaker 01:
The T-Trab was looking at questions of evidence of prior use.

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Were they not?

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They weren't looking at evidence of prior rights.

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They were looking at evidence of prior use.

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And as evidence for that prior use, there were, I believe, two videos and a recording.

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Is that not correct?

[00:10:34] Speaker 03:
Well, the use that's relevant here is not just use.

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I mean, if we did that, then I could say, well, I use the word to brush my teeth to my kids.

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Therefore, you can't name your case.

[00:10:49] Speaker 00:
I don't think the decision was based on just use.

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I mean, they were looking at the legal standard commercial use and how that fits into the decision on priority use.

[00:11:00] Speaker 03:
Well, it's very clearly defined in the case law that what is considered use for purposes of trademark.

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That's under section 45, the mark must be used or displayed in the sale or advertising of services and services rendered in commerce.

[00:11:18] Speaker 01:
So anything- And weren't those two videos and that record evidence of commercial use?

[00:11:29] Speaker 03:
They were used, no, they were used functionally to tell kids to pick up the hoop.

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It was a song, it was a chant.

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that was created and when you're looking at unregistered markets.

[00:11:41] Speaker 01:
The evidence was that it was used commercially.

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It wasn't just created, it was created for a commercial purpose.

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Isn't that right?

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I don't think the evidence shows that it was created for a commercial purpose.

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It was created for the purpose of

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telling the kids to pick up their hoops.

[00:11:59] Speaker 02:
But that's your interpretation.

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We have to give the highest level of deference to the PTO's fact finding here.

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We have to review it for substantial evidence.

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So if any reasonable person, anyone at all, even if I would agree with you, if any reasonable person would have agreed with the PTO's decision,

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We've got to leave it alone.

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Substantial evidence.

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So, I mean, you may not think the song Hoop It Up is for commercial use and identifies that as their trademark, and maybe I'd even agree with you, but I don't know that I can say the PTO, there's no substantial evidence to support the PTO's determination to the contrary.

[00:12:34] Speaker 02:
You've got a big burden.

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I think what goes beyond that, I think that the THAB failed to apply applicable law.

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which is you have to look at 2 pesos and you have to look at Walmart.

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Those cases make it very clear that when you're talking about a common law mark, and if you're going to assert rights, then you have to have a very specific analysis.

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The TTAB failed to do any of that analysis, one of which they have to decide, is this a distinctive mark or is it a descriptive mark?

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That was completely overlooked.

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So the risk with what the TTAB did here is that it leaves it very subjective and arbitrary.

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And the reasons why we have two cases in Walmart and these cases that discuss is because people in commerce, you need some sort of protection, some sort of guidance.

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And the guidance that has been given by these case law and the guidance that we're given under Section 45 of the Lanham Act

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and Section 43A of the Lanham Act and Sections 2E and F of the Lanham Act is that it's very clear that there's a very narrow window of what we consider a monopoly, given somebody an exclusive right to use a term.

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If you're going to claim exclusive rights to use a term, then you need to use it as a trademark.

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And what this party has used as a trademark is clearly Hoopapalooza, HoopHop, Hoopersize, Peace Out.

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In their book, HoopHop, there's 45 pages, 50 pages, where every single page on there is marked with the word HoopHop and kid tribe.

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only on one page is there any reference to Hoop It Up.

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That particular page discusses the section.

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This is a curriculum guide that basically tells teachers how to do this exercise activity.

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At a certain point, because you're using Hula Hoop,

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There's a certain point that you are to indicate to all these kids when to pick up a hula hoop.

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And that's not commercial usage.

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There's no indications of commercial use.

[00:15:19] Speaker 03:
There's case law.

[00:15:21] Speaker 01:
You have affidavit testimony, I believe, by Ms.

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McCann, is it?

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McQuinn?

[00:15:28] Speaker 01:
Yes.

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You have testimony by her that she's selling it.

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She did claim that, but there was no circumstantial evidence outside of her intent.

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Intent is not really what the person intends as, like if I say, well, I intended that to be of a commercial use, that's not what the test is.

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The test is the effect it had on the consuming public.

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That's all we're concerned about in trademark law is what the consumers are

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how they see the mark as used.

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Do they see, are they, if my clients, if the applicants use the word hoop it up, are they going to be tricked into thinking that they're attending Ms.

[00:16:19] Speaker 03:
McQuinn's Hoopapalooza?

[00:16:22] Speaker 03:
Certainly not.

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She's called her program Hoopapalooza and Hoopop and Kip Tribe.

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She has plenty of trademarks that she's using to commercially advertise her services.

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We're talking about competing services.

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And we're talking about somebody who decided to the hoop artist that are providing what they think is an improvement on kid choice.

[00:16:46] Speaker 02:
We're well beyond our time, so I think we have to close.

[00:16:50] Speaker 02:
Thank you for your argument.

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The court takes the case under submission.

[00:16:54] Speaker 02:
Thank you.