[00:00:00] Speaker 02:
This is a case that involves, it has constitutional implications and it has

[00:00:30] Speaker 01:
It involves issues of intellectual property, but it has much more to do with administrative law, with normative administrative law, and questions of whether or not an administrative legal decision may be made without proper application of

[00:00:53] Speaker 02:
Isn't it simply a question of whether the TTAB had substantial evidence for its conclusions?

[00:01:00] Speaker 01:
Yes, it really is.

[00:01:02] Speaker 01:
And we believe that the record is very clear that it didn't.

[00:01:05] Speaker 01:
And the office actions and the response to office actions on examination make it very clear that the applicant, as much as invited the examining attorney

[00:01:19] Speaker 01:
to specify what sort of evidence the examining attorney would need to consider the application before him, the actual application under consideration, in order to make a determination with respect to the use of the mark at that time and the meaning of the mark, not with respect to dictionary definitions that were cherry picked, not with respect to what

[00:01:49] Speaker 01:
obscure reference works with dates from the 1970s.

[00:01:54] Speaker 01:
But again, looking for evidence, contemporaneous evidence, with respect to the use of the mark, with respect to the meaning of the mark, and certainly with respect to the substantial composite of the targeted group, which is... But it's not the examiner's obligation to tell the applicant how to

[00:02:15] Speaker 03:
were brought to a prima facie case, is this?

[00:02:19] Speaker 01:
No, but it is the examiner's obligation to make a prima facie case on a two-way rejection.

[00:02:23] Speaker 01:
And he didn't make the slightest attempt to do so.

[00:02:25] Speaker 01:
All he did was cut and paste from a previous application, which was not the forehand.

[00:02:30] Speaker 01:
The prima facie case was the primary.

[00:02:33] Speaker 03:
But the current application did report to date back to uses that go all the way back to 2006, correct?

[00:02:40] Speaker 01:
Only for purposes of the first date of use.

[00:02:43] Speaker 01:
But the evidence of use

[00:02:46] Speaker 01:
In other words, the use of the mark, the two-way rejection must be premised on evidence.

[00:02:54] Speaker 01:
The evidence of the two-way rejection must be based on contemporaneous use.

[00:03:06] Speaker 01:
There was no evidence of contemporaneous use.

[00:03:08] Speaker 01:
There was evidence of use based on other historical information.

[00:03:13] Speaker 01:
If an applicant makes a previous application and there is evidence in the record that that applicant has in the past made what is deemed under the standards of the PTO to be improper use under Section 2A, it is entirely plausible that that applicant might learn the lesson, might say this

[00:03:37] Speaker 01:
We see here that the PTO will not issue a registration because our use is improper.

[00:03:41] Speaker 01:
Let's mend our ways.

[00:03:43] Speaker 01:
Let's use it in a content neutral way.

[00:03:47] Speaker 01:
Whereas here, you have a mark which is not inherently disparaging.

[00:03:55] Speaker 01:
There are certain words that can never be redeemed because they have no place in the English language for purposes of Section 2A.

[00:04:02] Speaker 01:
But a word like slants, which does have a place,

[00:04:06] Speaker 01:
can be redeemed.

[00:04:09] Speaker 01:
So my obligation as an applicant is merely to give the neutral, clean application.

[00:04:15] Speaker 01:
And then if the examining attorney believes there's a problem, to find contemporaneous evidence of that problem, or to request from the applicant, given your history, what can you show me?

[00:04:27] Speaker 01:
Or to go on the internet afresh and say, I've gone to your website and I see a problem.

[00:04:33] Speaker 01:
None of that happened.

[00:04:34] Speaker 01:
Instead, what we have was, oh, you're the guy from last time.

[00:04:37] Speaker 01:
And the problem with that is there's no limit to it.

[00:04:41] Speaker 03:
He bears the market's change for the rest of the time.

[00:04:43] Speaker 03:
The applicant maybe would have learned a lesson.

[00:04:45] Speaker 03:
Why didn't the applicant learn the lesson that it might be useful to bring in information to show, as he argues, that this is a generational issue and that a substantial cross-section of the affected population really isn't defended by this?

[00:04:59] Speaker 01:
Nothing he could have shown could have rebutted

[00:05:04] Speaker 01:
In other words, he showed crime and facial evidence.

[00:05:11] Speaker 01:
He submitted specimens that were not Asian related.

[00:05:18] Speaker 01:
First of all, we know, the TCAD is very clear on this.

[00:05:22] Speaker 01:
The argument of reclaiming or reappropriating an ethnic identity, words that have been deemed to be offensive, but which an ethnic group

[00:05:32] Speaker 01:
now wants to re-appropriate have been rejected consistently by the DTAB.

[00:05:38] Speaker 01:
So an ethnic group wishing to take that approach with the DTAB may choose to die on that hill, but it's going to be a death in all probability.

[00:05:47] Speaker 05:
Isn't that the heart of your First Amendment argument, though, that unlike even, say, the Redskins case, where the First Amendment argument is at issue, your trademark registrant

[00:06:02] Speaker 05:
really sought to use this very much as a form of speech.

[00:06:07] Speaker 05:
He wasn't just choosing the word plant because it's a catchy tune.

[00:06:11] Speaker 05:
He was choosing the word plant in part to reclaim the word, in part to raise awareness and or use it as a form of speech.

[00:06:22] Speaker 01:
That was the argument of my client in the registration application that is not on appeal.

[00:06:31] Speaker 01:
The only First Amendment argument in our submission is that to the extent that the TTA decision skirts the issue, but to the extent that the PTO decision, that the office actions make any reference whatsoever to the ethnic identity of the applicant himself, that that is entirely improper.

[00:06:59] Speaker 01:
And it does do so.

[00:07:01] Speaker 01:
We don't want to push that too hard.

[00:07:02] Speaker 01:
We don't think that it's necessary to address that issue, to address the more far more obvious issue that the evidentiary standards were not met here.

[00:07:15] Speaker 03:
But I thought that at that point went your equal protection argument, not your First Amendment argument.

[00:07:19] Speaker 01:
Well, the First Amendment argument is the broader argument that an applicant in this situation is really at sea.

[00:07:29] Speaker 01:
in understanding what on earth he's supposed to do.

[00:07:32] Speaker 01:
Looking at the statute and looking at the precedents and looking at the registrations that are in the Federal Register, he really has very little guidance in the year 2014 to understand what is and what is not permitted.

[00:07:46] Speaker 01:
If he wished to take the reappropriation tack,

[00:07:50] Speaker 01:
He certainly is able to do so if he wants to reappropriate slurs that refer to sexual orientation.

[00:07:59] Speaker 01:
If, however, he wishes to reappropriate slurs that have to do with ethic identity, that's clearly a no-no.

[00:08:05] Speaker 01:
Why that should be the case?

[00:08:08] Speaker 01:
Clearly nothing in section 2A guides us.

[00:08:10] Speaker 01:
Clearly no jurisprudence from this court guides us, and no jurisprudence from the TTAB guides us.

[00:08:16] Speaker 03:
That goes to your void for vagueness argument.

[00:08:19] Speaker 03:
Or, to some extent, to your arbitrary and capricious argument.

[00:08:22] Speaker 03:
So now I'm totally confused.

[00:08:23] Speaker 03:
Do you have a First Amendment argument?

[00:08:26] Speaker 01:
Yes.

[00:08:31] Speaker 01:
One never likes to go, my fundamental argument is an administrative argument.

[00:08:36] Speaker 01:
Do I have a First Amendment argument?

[00:08:37] Speaker 01:
Yes.

[00:08:38] Speaker 02:
The First Amendment issue was settled in McGinley.

[00:08:43] Speaker 02:
Isn't that correct in that finding on us?

[00:08:45] Speaker 01:
It was.

[00:08:46] Speaker 01:
It was.

[00:08:47] Speaker 02:
That's aside from the fact that the failure to be able to register does not affect anyone's free speech.

[00:08:55] Speaker 02:
In fact, if anything, it enables more speech because one could use this unregisterable mark.

[00:09:02] Speaker 05:
I would think you wouldn't agree with that.

[00:09:04] Speaker 05:
I'm just going to help you out a little bit.

[00:09:05] Speaker 01:
I would.

[00:09:06] Speaker 05:
Just say no.

[00:09:07] Speaker 01:
I would agree with it.

[00:09:09] Speaker 01:
I would agree with it, and that is- Do you agree with what he just said?

[00:09:13] Speaker 01:
I would agree that this court has every opportunity to make the First Amendment point, to adopt my First Amendment argument in my briefing.

[00:09:24] Speaker 01:
I'm not asking the court to go against Supreme Court precedent, but I do believe that this court has the opportunity to revisit its own precedent with respect to the register- You mean to go in bank?

[00:09:38] Speaker 01:
If necessary, of course.

[00:09:40] Speaker 01:
If the courts compel, the First Amendment is a pretty important one.

[00:09:45] Speaker 01:
That's why it's number one.

[00:09:48] Speaker 03:
Well, I'm not so sure about that, but I think they're all pretty important.

[00:09:52] Speaker 03:
But I still am having a hard time just grasping what your First Amendment argument is.

[00:09:59] Speaker 03:
So why don't you articulate it for us?

[00:10:07] Speaker 01:
no question that an applicant, that a person wishing to express himself through the use of speech and through the use of a trademark.

[00:10:22] Speaker 01:
A trademark is a component of speech.

[00:10:25] Speaker 01:
The nexus between trademark speech, trademark as a component of speech has been recognized by the court.

[00:10:36] Speaker 01:
Its limitation as commercial speech or non-commercial speech is an established part of jurisprudence as well.

[00:10:46] Speaker 01:
Government's ability to limit that speech has also in many contexts been acknowledged.

[00:10:53] Speaker 01:
Trademark registration is a privilege, but there's a point in which when government acts in selecting which kind of speech will be approved.

[00:11:04] Speaker 01:
It acts as a censor.

[00:11:06] Speaker 01:
It acts as a censor.

[00:11:10] Speaker 03:
There was a time when there was... Isn't there a difference, though, between prohibiting speech on the one hand, which very much would be a censorship, and refusing to give one a monopoly on a particular mechanism for that speech?

[00:11:28] Speaker 01:
Yes, but we're not talking about a monopoly on a mechanism for speech.

[00:11:30] Speaker 03:
We're talking about a trademark registration, which is... A trademark does provide you with effectively a monopoly of that form.

[00:11:39] Speaker 01:
Right.

[00:11:39] Speaker 01:
But let's consider now what the criterion is that we're utilizing to use your honor's formulation, limiting monopoly, limiting a sort of monopoly on speech.

[00:11:57] Speaker 01:
obscene, scandalous, offensive.

[00:12:00] Speaker 01:
These are terms that in almost any other area of law, we would acknowledge the government has virtually no business exercising control.

[00:12:11] Speaker 01:
It is in the year 2014, considering the range of topics, that government considers itself unfit to make decisions for the population in general.

[00:12:24] Speaker 01:
We would never engage.

[00:12:27] Speaker 02:
Mr. Coleman, you're into your rebuttal time.

[00:12:29] Speaker 02:
You wanted to say something?

[00:12:30] Speaker 01:
I will save it.

[00:12:30] Speaker 01:
Thank you.

[00:12:31] Speaker 01:
All right.

[00:12:32] Speaker 02:
Ms.

[00:12:32] Speaker 02:
Selfridge.

[00:12:38] Speaker 04:
Good morning.

[00:12:39] Speaker 04:
May I please the court?

[00:12:41] Speaker 04:
The two-part test for disparagement requires determining first what the likely meaning of the mark is in the context in which it's used.

[00:12:48] Speaker 04:
And second, in that context, is it disparaging to the reference group?

[00:12:52] Speaker 04:
I wanted to pick up on the point of, to start with the context in which it's used, because Mr. Tam is arguing that he submitted specimens in this application that are different from the specimens he had submitted earlier.

[00:13:06] Speaker 04:
But the board is required to look at the context in which the mark is used, not just the specimens that the applicant submits as they're convenient to his purposes.

[00:13:19] Speaker 04:
In this case, the examining attorney and the board looked at the applicant's website and statements that he has made in the public about the way he intends to use the mark.

[00:13:34] Speaker 04:
On the second part of the test, substantial evidence shows that the word slants when referring to people of Asian descent is disparaging.

[00:13:43] Speaker 03:
Isn't there a little bit of a concern that the actual way that the search was done for purposes of seeing how the word was used sort of invited the response?

[00:13:55] Speaker 04:
Well, to the extent there's any concern, Mr. Tam hasn't submitted any evidence to show that

[00:14:03] Speaker 04:
that a different meaning is the likely meaning here.

[00:14:06] Speaker 04:
The only evidence in the record here is that the dictionary definitions uniformly, in the definitions that are referring to people at all, discuss those definitions as disparaging or offensive.

[00:14:24] Speaker 04:
So even if there was a problem with the examiner's search terms,

[00:14:32] Speaker 04:
There's just no evidence to the contrary in this case.

[00:14:35] Speaker 04:
On top of that, it may have been inelegant, but the examiners intend to find the definitions that are referring to people to weed out the definitions that are clearly inapplicable in this case.

[00:14:49] Speaker 04:
He had to have some way to do that.

[00:14:51] Speaker 03:
Once you put slant in the context of other hate words, you're going to come up with a response that discusses slant in the context of hate words.

[00:15:02] Speaker 04:
That's right, because there is a definition that is a hate word.

[00:15:09] Speaker 04:
the examining attorney had to pick a likely meaning.

[00:15:11] Speaker 04:
And in picking a likely meaning, he looked to the evidence of the use in the marketplace here, which shows that the applicant intended to use the mark to use it for the meaning that is referring to people of Asian descent.

[00:15:28] Speaker 02:
What about the First Amendment point here?

[00:15:31] Speaker 02:
Dr. O'Connor makes that the government is suppressing speech.

[00:15:36] Speaker 04:
Well, there's no speech that is suppressed or prescribed by the

[00:15:44] Speaker 04:
registering or refusing to register a mark.

[00:15:47] Speaker 04:
And that's what this court has decided repeatedly.

[00:15:51] Speaker 05:
No, we decided it in 1981 in the three cases, 1981 McGinley.

[00:15:55] Speaker 05:
And the three cases since then simply say McGinley is our rule.

[00:15:59] Speaker 05:
None of them reanalyze the issue at all.

[00:16:02] Speaker 04:
Right.

[00:16:02] Speaker 05:
But it has been, well, they discuss it.

[00:16:04] Speaker 05:
And we decided it in two sentences.

[00:16:05] Speaker 05:
And I don't know if you happened to hold brief in that case.

[00:16:08] Speaker 05:
But it was a relatively minor and unexplored point.

[00:16:12] Speaker 04:
In McGinley?

[00:16:14] Speaker 04:
In McGinley it discusses pretty significantly the extent of the benefits that are accruing to a trademark registrant and explains that they're more procedural than substantive and then also discusses the

[00:16:36] Speaker 04:
the fact that there is no speech prescribed.

[00:16:39] Speaker 05:
What about the unconstitutional conditions doctrine, which I'm sure you're familiar with and quite clearly limits government's ability to place limits upon benefits that you could otherwise receive on the basis of relinquishment or impingement on First Amendment rights?

[00:17:01] Speaker 04:
This court has decided this issue to start with.

[00:17:04] Speaker 05:
I understand that argument and you don't have to make it again.

[00:17:06] Speaker 05:
I totally get your argument and I have no issues with that argument.

[00:17:10] Speaker 05:
I'm going now to whether there is merit to the argument to the contrary such that we should take it in bank and reconsider the two sentences in McGinley issued 35 years ago.

[00:17:21] Speaker 05:
and possibly analyze them under what has been an immense evolution of Supreme Court jurisprudence on this point.

[00:17:27] Speaker 05:
So you may not be prepared to discuss with me, and you can say so, and I will let you sit down without further question.

[00:17:33] Speaker 05:
If you are completely unprepared to discuss with me the evolution of that Supreme Court doctrine, I'll let you off the hook.

[00:17:41] Speaker 05:
But if you're open and game for it, because it would help me decide whether I think there's a need to take this case in bank, I'd love to hear your thoughts on it.

[00:17:50] Speaker 04:
I will accept the invitation to hold off.

[00:17:54] Speaker 04:
And if the court wants to take the case in banks, it can.

[00:17:59] Speaker 04:
But as a panel, it's bound by the precedent of this court.

[00:18:05] Speaker 05:
Most people come prepared to discuss the underlying issue nonetheless.

[00:18:10] Speaker 05:
You're not willing to engage in that discussion?

[00:18:13] Speaker 04:
That's right.

[00:18:13] Speaker 04:
I would like to rest on my briefs on the evolution of the Supreme Court authority in this area.

[00:18:22] Speaker 03:
Can I just ask one question?

[00:18:23] Speaker 03:
Do you think that a trademark is actually speech, or is it more like expressive conduct?

[00:18:30] Speaker 04:
Well, the analysis in McGinley, while terse, explains that no speech is prescribed by the refusal to register a mark.

[00:18:42] Speaker 04:
So there are still common law rights in the trademark to enforce it.

[00:18:48] Speaker 04:
And there's certainly still the ability to use the mark anywhere an applicant would like.

[00:18:53] Speaker 04:
And so to that extent, the refusal to register the mark under this court's precedent is not prescribing any speech.

[00:19:04] Speaker 04:
Why do you think the landmark enacted Section 2A?

[00:19:09] Speaker 04:
Section 2A is

[00:19:13] Speaker 04:
as far as I can tell, designed to avoid the government having to endorse it, endorse Marx.

[00:19:23] Speaker 05:
Are you familiar with the legislative history, N2A?

[00:19:26] Speaker 05:
Oh, somewhat.

[00:19:27] Speaker 05:
And in the legislative history hearings, aren't the only discussions that we don't want people to use marks like this?

[00:19:33] Speaker 05:
And don't they expressly say, so by forbidding them registrability, they won't use those marks?

[00:19:40] Speaker 05:
I don't see any discussion ever of government imprimatur or government funding or otherwise in the legislative history, but I see quite clearly statements that suggest they don't want those marks to be used.

[00:19:52] Speaker 04:
But this court's analysis of 2A has found that the effect is primarily procedural, first of all.

[00:20:05] Speaker 04:
I don't understand.

[00:20:08] Speaker 04:
What does that mean, primarily procedural?

[00:20:10] Speaker 04:
So the benefits of registration include certain presumptions that you get in... They also give you access to a federal forum, which you wouldn't otherwise have, right?

[00:20:23] Speaker 05:
That may be true.

[00:20:25] Speaker 05:
It is true.

[00:20:26] Speaker 05:
And they also give you the ability to actually bar importation at customs, which you absolutely would not have by common law, right?

[00:20:34] Speaker 05:
Correct.

[00:20:34] Speaker 05:
That's right.

[00:20:35] Speaker 05:
So it's giving you lots of additional substantive rights you don't have otherwise, isn't it?

[00:20:40] Speaker 05:
Well, with the court explaining... Is that a substantive right that you do not have otherwise?

[00:20:45] Speaker 04:
It's a procedural right, as McGinley viewed it, as the CCPA viewed it.

[00:20:51] Speaker 05:
How in the world is the ability to bar importations at customs, which you do not have under common law, not a substantive right?

[00:21:03] Speaker 04:
They said they are more procedural than substantive, is what the court said.

[00:21:09] Speaker 04:
on the issue.

[00:21:10] Speaker 05:
Are you familiar with the Ninth Circuit's Bullfrog case or the Fifth Circuit's Bingo case, both of which seem almost directly analogous to this one?

[00:21:19] Speaker 04:
To the extent that the Fifth Circuit has addressed this issue... In fact, in the Bingo case, yeah.

[00:21:25] Speaker 04:
Well, to the extent the Fifth Circuit has addressed the issue of trademark registration, it has agreed with the Federal Circuit and the CCPA that Section 2A is constitutional.

[00:21:36] Speaker 04:
And on the benefit point, I just wanted to... Are you familiar with the bullfrog case in the Ninth Circuit?

[00:21:42] Speaker 05:
I'm not.

[00:21:44] Speaker 05:
It's a case about extending benefits to films that are solely films if they are educational in nature and it was struck down by the Ninth Circuit.

[00:22:00] Speaker 05:
It didn't stop you from ever making these films, selling these films or doing anything you want.

[00:22:06] Speaker 05:
prohibited you from paying certain import duties and or extended certain benefits otherwise.

[00:22:13] Speaker 05:
And the Ninth Circuit struck that down and said that's unconstitutional.

[00:22:17] Speaker 05:
Why isn't that analogous to the trademark case?

[00:22:19] Speaker 04:
Well, we've cited some Supreme Court cases on the government on the benefit issue, which held that the government is allowed to.

[00:22:28] Speaker 05:
And in every single one of those, it is only because the benefit at issue fell under the spending clause of the United States Constitution, which allowed for the government to condition benefits in the interest of general welfare.

[00:22:44] Speaker 05:
It's the Lanham Act.

[00:22:45] Speaker 05:
under the federal spending power of the U.S.

[00:22:48] Speaker 05:
Constitution?

[00:22:50] Speaker 04:
I would point again to McGinley's analysis of benefits.

[00:22:53] Speaker 05:
No, but I did ask you about McGinley's analysis of benefits.

[00:22:56] Speaker 05:
I asked you if the Lanham Act is a statute that was enacted by Congress pursuant to its spending power under the spending clause of the United States Constitution.

[00:23:05] Speaker 04:
I'm not sure, Your Honor.

[00:23:07] Speaker 05:
Do you know what provision of the Constitution the Lanham Act was enacted under?

[00:23:10] Speaker 04:
I don't.

[00:23:13] Speaker 04:
But on the benefits issue, McGinley explained the government resources that are going into the registration of a mark, including, it says, the responsibilities of the government with respect to a mark are not ended once a registration is granted.

[00:23:32] Speaker 04:
The benefits of registration, in part with government assistance, include public notice of the mark in an official government publication and in official records.

[00:23:40] Speaker 04:
which are distributed throughout the world, maintenance of permanent public records concerning the mark, availability of the custom service for blocking importation of infringing goods, access to federal courts where there's a presumption of validity of the registration, notices to the registrant concerning maintenance of the registration, and to some extent, direct government protection of the mark in that the PTO searches its records and refuses registrations to others of conflicting marks.

[00:24:05] Speaker 04:
And that was all to show the benefits that the government is

[00:24:10] Speaker 04:
is using its resources to provide to registrants.

[00:24:14] Speaker 05:
Which resources are they using?

[00:24:16] Speaker 04:
Well, those are the resources.

[00:24:18] Speaker 05:
Aren't private trademarks fully privately funded by the application fee?

[00:24:24] Speaker 04:
Not always.

[00:24:26] Speaker 04:
At certain times they are, and at certain times they are not.

[00:24:32] Speaker 04:
But on top of that, as McGinley explained, there are

[00:24:38] Speaker 05:
numerous other resources going into the... You mean like when the government has to be involved in enforcement efforts, like the courts?

[00:24:45] Speaker 05:
That's right.

[00:24:45] Speaker 05:
Okay, so when the government licenses somebody or regulates or issues a zoning regulation or anything else of that nature, none of which have anything to do with spending by and large, aren't the government courts nonetheless implicated in lawsuits involving whether or not someone is correctly licensed, reaching their license, like a medical license, for example?

[00:25:05] Speaker 05:
So there would be government lawsuits in all of those cases, but that doesn't suddenly morph it into a spending power case, does it?

[00:25:13] Speaker 04:
No, not necessarily.

[00:25:14] Speaker 04:
But I was simply trying to point the analysis in McGinley of the benefits that the government is providing.

[00:25:22] Speaker 03:
Before you sit down, I want to ask you a question about the argument that the way Lanomax is analyzed is arbitrary and capricious because

[00:25:37] Speaker 03:
individual examiners, you know, everything is in the eye of the beholder, individual examiners get to say what they think is scandalous or what they think might offend someone and they can do things like maybe manipulate their searches for purposes of making their prime and face the case.

[00:25:53] Speaker 03:
Is that the kind of argument that could be made in the context of this appeal or does that have to be made under the APA?

[00:26:02] Speaker 04:
I think that kind of argument could be made in this appeal.

[00:26:06] Speaker 04:
I don't think that argument has much sway because, well, for one thing, there's a very clear test for how to determine if a mark is disparaging, which involves finding evidence of the likely meaning in context and finding whether that likely meaning is disparaging to the reference group.

[00:26:31] Speaker 04:
And each case does depend on the evidence in that case.

[00:26:36] Speaker 04:
For example, Mr. Tam refers to a number of marks, including one Dykes with Bikes, that was registered.

[00:26:47] Speaker 04:
In that case, in fact, there were hundreds of pages of rebuttal evidence that the applicant came forth with saying that the meaning had changed since the time that the

[00:27:02] Speaker 04:
that the evidence came from, that the examining attorney's evidence came from, and so that mark was then registered, even though it had initially been subject to a refusal on the same basis.

[00:27:11] Speaker 03:
So would you agree that it's not good enough to just say, well, just because we might have made a mistake somewhere else, that that doesn't help you here?

[00:27:18] Speaker 03:
The better argument actually is that you have to look at

[00:27:22] Speaker 03:
analysis that was made somewhere else and that if the facts are different then the results could be different.

[00:27:28] Speaker 03:
But that doesn't mean that the test isn't clear enough for an examiner to follow.

[00:27:33] Speaker 05:
That's exactly right.

[00:27:35] Speaker 03:
Because some of the cases that you cite seem to just say, just because we may have screwed up somewhere else, or the PTO may have screwed up somewhere else, doesn't mean that that matters.

[00:27:47] Speaker 03:
Right.

[00:27:47] Speaker 04:
Some of the cases do mention that.

[00:27:49] Speaker 04:
But I think you're right that the stronger argument is that they are all decided on their own facts.

[00:27:57] Speaker 04:
And also, to the extent any party thinks that

[00:28:03] Speaker 04:
The right evidence wasn't brought forth in a proceeding and a mark should not have been registered.

[00:28:08] Speaker 04:
There's also the cancellation proceeding available to them.

[00:28:11] Speaker 04:
to cancel a mark that shouldn't have been registered.

[00:28:14] Speaker 03:
But that sort of goes the other way, which is that you generally favor the applicant.

[00:28:18] Speaker 03:
That's right.

[00:28:19] Speaker 03:
With respect to the evidence, and I think that your Dyches the Pike example is a good one, because in that particular case, there was substantial evidence that showed that it was a generational thing.

[00:28:34] Speaker 03:
The argument here is that this is a generational thing, but there was no evidence offered by the applicant to that effect.

[00:28:39] Speaker 03:
other than his own statements, right?

[00:28:41] Speaker 04:
That's right.

[00:28:41] Speaker 04:
That's right.

[00:28:42] Speaker 04:
And he certainly could have come forth with evidence that the likely meaning to a substantial composite of the reference group had changed.

[00:28:51] Speaker 02:
Thank you, Ms.

[00:28:52] Speaker 02:
Hoffman.

[00:28:53] Speaker 02:
Thank you.

[00:28:53] Speaker 02:
Mr. Coleman has a couple of minutes of rebuttal time.

[00:28:56] Speaker 01:
Thank you.

[00:28:58] Speaker 01:
I have three minutes and three points.

[00:29:03] Speaker 01:
One on the one we just made, the generational point, and Doug Spikes.

[00:29:08] Speaker 01:
In that case, the generational case, the applicant was responding to evidence.

[00:29:12] Speaker 01:
Here, the examining attorney didn't bother to present any evidence.

[00:29:20] Speaker 01:
He just asserted.

[00:29:22] Speaker 01:
He just made an assertion based on another application.

[00:29:27] Speaker 01:
And that's why there was nothing to rebut.

[00:29:30] Speaker 01:
The burden was on the app, was on the examining attorney, and it wasn't met.

[00:29:35] Speaker 01:
There was nothing to rebut.

[00:29:36] Speaker 03:
But wasn't there evidence that the very use of this bad name in the context that the mark was designed to be used in had resulted in substantial controversy, had resulted in this individual, your client being pulled from the podium in a particular youth program for Asian Americans?

[00:29:59] Speaker 01:
There was evidence from another application that, again,

[00:30:07] Speaker 01:
If that same web search had been done anew for this examination, would have perhaps demonstrated that subsequent public commentary had been to the exact contrary.

[00:30:18] Speaker 03:
So we're supposed to assume that if today someone expresses serious concern about the name of a mark, but you file your, or the name that's been used, and you file it tomorrow, that we're not allowed to look at what someone said today?

[00:30:35] Speaker 01:
No, everything in the past is relevant, but it is never determinative.

[00:30:40] Speaker 01:
The examining attorney should always at least do a fresh search, at the very least, and that wasn't done here.

[00:30:47] Speaker 01:
If I may just quickly use my remaining minute.

[00:30:50] Speaker 01:
The Trademark Law Revision Act of 1988

[00:30:53] Speaker 01:
which is post-McGinley, completely changes the substantive meaning and rights inherent in trademark rights.

[00:31:02] Speaker 01:
That's what Judge Moore was, I think, getting at.

[00:31:05] Speaker 01:
It is a substantive right.

[00:31:07] Speaker 01:
It's not merely a procedural right.

[00:31:08] Speaker 01:
And that's why McGinley cannot merely be waived at or relied on as the end of the discussion.

[00:31:14] Speaker 01:
Trademark rights do have a direct relation to speech.

[00:31:19] Speaker 01:
It's addressed in both of our briefs.

[00:31:21] Speaker 01:
And finally, the PTO repeatedly refers to people.

[00:31:27] Speaker 01:
You can't talk about references to people whenever you talk about slants and people.

[00:31:37] Speaker 01:
Rock bands don't always refer to people.

[00:31:40] Speaker 01:
Many rock bands, Black Flag, Social Distortion, I know that I am dating myself, Tears for Fears, Counting Crows, Verge Pipe, Frankie Goes to Hollywood,

[00:31:49] Speaker 01:
The ban didn't, the flance did not have to mean the name of the group.

[00:31:53] Speaker 01:
It could have referred to a concept.

[00:31:56] Speaker 01:
The examining attorney did not demonstrate the evidence to the contrary.

[00:32:00] Speaker 01:
That's why registration, he didn't meet his burden to reject this registration.

[00:32:06] Speaker 02:
Thank you, Mr. Coleman.

[00:32:07] Speaker 02:
We'll take the case under advisement.

[00:32:09] Speaker 02:
Thank you, Mr. Coleman.