[00:00:00] Speaker 01:
Ms.

[00:00:00] Speaker 01:
141669, Enrique Slot, Group Management.

[00:00:33] Speaker 01:
Mr. Lindemann.

[00:00:36] Speaker 03:
Good morning.

[00:00:36] Speaker 03:
May it please the court, Jeffrey Lindemann on behalf of the appellant, Swatch Group Management Services.

[00:00:42] Speaker 03:
For several years, Swatch has owned the trademark that's at issue in this appeal.

[00:00:46] Speaker 03:
Approximately five years ago, it registered that mark for retail store services and jewelry repair services.

[00:00:53] Speaker 03:
It then sought to expand its rights in the mark and applied for registration of the mark in connection with certain products.

[00:01:00] Speaker 03:
including jewelry and other timekeeping products.

[00:01:04] Speaker 03:
The Trademark Office refused registration of the mark, finding that it was merely descriptive of those goods.

[00:01:10] Speaker 01:
In this appeal swatch... Why are we looking here at the general public for our determination as opposed to the group of people that would actually buy this swatch, which is a really tiny group, right?

[00:01:24] Speaker 03:
Well, the cases teach that you look to the average consumer of the good as identified in the application.

[00:01:33] Speaker 03:
So in this case, the application isn't limited to jewelry, namely watches that include tourbillons, but it just says jewelry without any limitation.

[00:01:44] Speaker 03:
So the average consumer of those products are, as the case cited, are just average consumers who purchase jewelry.

[00:01:55] Speaker 03:
In this appeal, SWATCH is limiting its challenge to just the portion of the TTAB's decision that refused registration, finding that the design element was merely descriptive.

[00:02:07] Speaker 03:
The parties agree on the general test for determining whether a design is merely descriptive.

[00:02:12] Speaker 02:
Help me out with, and here I've lost the train of what's going on with the disclaimers and so forth and the effect of the word.

[00:02:21] Speaker 02:
Where are we exactly in terms of the procedural posture of this case vis-a-vis the respective interests that you're attempting to protect for the word, the drawing, and the combination of the word and the drawing?

[00:02:39] Speaker 03:
So Swatch has not challenged the board's decision that the word is merely descriptive of

[00:02:48] Speaker 03:
of the goods.

[00:02:50] Speaker 03:
But Swatch maintains that the combination of the word and the design is entitled to registration.

[00:02:56] Speaker 03:
Now where does that fit with the total disclaimer problem?

[00:03:00] Speaker 03:
Well, marks all the time are registered where portions of the mark are disclaimed, where the words, for example, are bound.

[00:03:06] Speaker 02:
And you're disclaiming the word in this context so that you're saying that the word and the mark and the drawing together are

[00:03:16] Speaker 02:
protected but not the word alone.

[00:03:19] Speaker 02:
There's that basic position.

[00:03:20] Speaker 02:
That's correct.

[00:03:23] Speaker 02:
The disclaimer doesn't go beyond that, is what I'm asking really.

[00:03:26] Speaker 02:
That's the effect, the limit of the effect of the disclaimer.

[00:03:30] Speaker 03:
That's right.

[00:03:31] Speaker 03:
That's why it's not claiming any rights in the word, but it's been claiming rights to the mark in its entirety and argues in this appeal that it is entitled to do so

[00:03:41] Speaker 03:
because of the distinctive element in the design.

[00:03:43] Speaker 03:
The elements in the design is what distinguishes its mark from others.

[00:03:48] Speaker 03:
So if a design consists merely of an illustration of one's product, the parties agree that it is descriptive and not entitled to registration.

[00:03:56] Speaker 03:
But when an illustration includes arbitrary or fanciful elements, or elements that are unnatural, exaggerated, or otherwise unusual in appearance, the illustration can cross the fine line between descriptive and suggestive and be entitled to registration.

[00:04:10] Speaker 03:
So Swatch's design, while certainly modeled after a Torbjorn component, has some arbitrary and fanciful elements.

[00:04:17] Speaker 03:
So the question before this court is whether the board erred in finding that these stylistic elements were not distinctive enough to permit registration.

[00:04:27] Speaker 03:
And the board on page 15 frames the issue and says, none of the stylistic elements in applicants' design are sufficiently distinctive to be considered fanciful, arbitrary, or suggestive.

[00:04:39] Speaker 03:
But the cases cited do not support that conclusion.

[00:04:42] Speaker 03:
In fact, if you look at the cases on both sides, cases where designs have been permitted to register and those that have been refused, it's clear that Swash's design does contain sufficient stylistic elements to render it more than merely descriptive.

[00:04:56] Speaker 03:
And most compelling on this point is the board's decision in the LRC products case, which is a decision that is designated as precedential.

[00:05:04] Speaker 03:
And that's the case where the board set the standard for what

[00:05:07] Speaker 03:
design elements must be sufficiently distinctive to overcome a descriptiveness refusal.

[00:05:12] Speaker 03:
That's the case involving the design of the two hands or gloves.

[00:05:17] Speaker 03:
And the goods in that case were actual gloves.

[00:05:20] Speaker 03:
And the board there said that that design was sufficiently arbitrary and fanciful because it had abnormally straight lines, relative unnatural positioning of the fingers and the thumbs.

[00:05:32] Speaker 03:
and awkward positioning of the hand.

[00:05:34] Speaker 01:
Can I just ask you, is what we're talking about here this escape wheel or the alleged escape wheel in the sun?

[00:05:42] Speaker 03:
That's the strongest point that Swatch has in terms of why its mark is distinctive.

[00:05:48] Speaker 03:
Yes, if you look at the design compared to all the different tourbillon examples in the record, there's other differences that are clear.

[00:05:56] Speaker 03:
But we maintain that the core argument that we're making today is that element in the upper right corner of the design which looks like the sun or looking through a spotting scope.

[00:06:09] Speaker 03:
And if you consider that in the context, that designation, that element in the context of the LRC products case, it's clear that the board set a very low standard for what

[00:06:22] Speaker 03:
what has to be shown, that's to show that the mark has distinctive and fanciful elements.

[00:06:28] Speaker 02:
This is a question that struck me in looking at the various drawings and photographs here, but you can maybe straighten me out.

[00:06:39] Speaker 02:
On page 21 of the red brief, there is your drawing and one of the photographs, I guess it is, of Tourbillon.

[00:06:51] Speaker 02:
That contains many of the elements of your drawing.

[00:06:55] Speaker 02:
Do you have that in front of you?

[00:06:56] Speaker 00:
I do, yes.

[00:06:57] Speaker 02:
Thank you.

[00:06:58] Speaker 02:
Including the escape wheel, although the escape wheel appears to be there on the bottom of the device.

[00:07:05] Speaker 02:
Now, if you were to turn this device over, it looks like, for the best I can tell, you would have the escape wheel in a much more prominent position on the top of the device.

[00:07:16] Speaker 02:
Do you view that differently?

[00:07:20] Speaker 03:
Well, I make two points on that.

[00:07:22] Speaker 03:
First is this drawing is really where the board, I think, went off the tracks because this drawing is not an actual tourbillon.

[00:07:32] Speaker 03:
This is sourced from the examining attorney who found this on one internet website and then the board elevated this to the status of this being the standard configuration.

[00:07:41] Speaker 02:
But it purported to be.

[00:07:42] Speaker 02:
a depiction, an accurate depiction of tourbillon as opposed to a fanciful version of tourbillon again.

[00:07:48] Speaker 03:
Well, it hasn't been, we don't know what this website was and there hasn't been authenticates.

[00:07:53] Speaker 03:
We don't know really beyond that it was found on one website and one person apparently believed that this was a rendition of that.

[00:08:01] Speaker 02:
But we're really not, I don't understand us to have before us today the question of whether this is an inadmissible reference, right?

[00:08:10] Speaker 03:
Well, our argument is one that you should consider the fact that it's from one website that hasn't been authenticated.

[00:08:18] Speaker 03:
And the much more probative evidence is the comparison of the Torbjorn of the design to the actual Torbjorn products in the case.

[00:08:26] Speaker 03:
That's the point, that this shouldn't be held out as the standard simply because it's set on the website, the anatomy of a Torbjorn.

[00:08:32] Speaker 03:
That has not been established.

[00:08:33] Speaker 00:
But if we assume it's admissible, because I don't think you specifically argued that, it still can be a piece of substantial evidence, can't it?

[00:08:40] Speaker 03:
Well, I would not say it's substantial evidence.

[00:08:43] Speaker 03:
I would say that the actual pictures of the real Torbjorn devices should be given much greater weight than this, and this is just... But if you're asking us to weigh one piece versus the other, then you're asking us to apply a different standard than we do to these cases.

[00:08:58] Speaker 00:
I mean, if we look at these all and decide that this depiction that you don't like is substantial evidence, doesn't that end the inquiry?

[00:09:06] Speaker 03:
Well, it's whether or not that would meet the substantial evidence test, given that it's from one website, it hasn't been verified.

[00:09:13] Speaker 03:
But turning even to the ultimate question, even if we accept this as the standard of Torbjorn and forget about all the other devices, it's

[00:09:23] Speaker 03:
It's clear that Swatch's design still should be entitled to registration because it's not merely just a replacement of the wheel from one spot to another.

[00:09:33] Speaker 03:
By doing so, Swatch has greatly exaggerated the prominence of this wheel in a way that it's not found in any type of actual product or even any drawing, including this one in the record.

[00:09:45] Speaker 01:
So you're not talking about the content, you're talking about the prominence.

[00:09:49] Speaker 03:
In this case, it's what the consumer's impression of looking at the design.

[00:09:53] Speaker 03:
So the prominence is really a key focus of determining whether or not a mark is descriptive or not.

[00:10:00] Speaker 03:
So a consumer who sees this and sees this escape wheel, which is something that it would never have recognized to be in this type of configuration, would recognize this as an identification of source and not nearly a reproduction.

[00:10:16] Speaker 03:
of Swatch's product or any other product.

[00:10:19] Speaker 02:
As I think the board said, no line drawing is going to be a perfect reproduction, even if the line drawer is skilled and is doing the best that they can to reproduce the photograph, what the photograph would indicate.

[00:10:36] Speaker 02:
But isn't the issue whether this is sufficiently far from what a photograph would be, that it would be

[00:10:45] Speaker 02:
arbitrary or suggestive?

[00:10:48] Speaker 03:
Well, that's our position.

[00:10:50] Speaker 02:
That's the question.

[00:10:51] Speaker 02:
In other words, if this is less than fanciful and it's pretty close to what we would regard as a perfect copy, isn't it still within the realm of descriptive and hasn't crossed over?

[00:11:05] Speaker 02:
into the suggested.

[00:11:07] Speaker 03:
Absolutely.

[00:11:08] Speaker 03:
If this is deemed to be a mere reproduction of what a tourbillon looks like, or almost a mere reproduction, then something that's less than passable.

[00:11:16] Speaker 03:
Then yes.

[00:11:17] Speaker 03:
All right.

[00:11:17] Speaker 03:
Well, what's the guidepost for where you cross that line?

[00:11:20] Speaker 02:
Well, that's always a problem in trademark law, because it's a smooth curve.

[00:11:24] Speaker 03:
But we have the answer here, because we have the LRC products case.

[00:11:28] Speaker 03:
In LRC, which is the precedential decision set by the board, it's been cited by several subsequent board decisions

[00:11:34] Speaker 03:
And in fact, it's the case that the board includes... But isn't it ultimately a question for the board?

[00:11:39] Speaker 00:
I mean, whether it's descriptive or not is a question for the board, and they're the ones that can decide in the first instance whether this exaggerated escape wheel and the fact that it doesn't contain all the elements and it's flat is descriptive or not.

[00:11:53] Speaker 00:
And, you know, it almost sounds like you're asking us to look at it anew.

[00:11:58] Speaker 00:
And it seems to me that once you look at this and

[00:12:02] Speaker 00:
realize that this does have a lot of parts that look almost identical to the drawing you don't like, and that the main difference is the escape wheel is perhaps in a different place and exaggerated, that's a weighing, isn't it?

[00:12:16] Speaker 00:
Like I said, it's a line, so if it's, I can't even tell percentage-wise, but say this is 75% accurate of the depiction of an actual device and 25% fanciful,

[00:12:30] Speaker 00:
and the board says that's not enough to get it out of descriptiveness, then how do we just deserve that conclusion?

[00:12:36] Speaker 03:
I think you have to make your decision based on the guideposts that have been set.

[00:12:41] Speaker 03:
That it is, we all agree that the line between suggestive and descriptive is often fuzzy, and with designs it's even more particularly so, because words at least have meaning.

[00:12:51] Speaker 03:
So when you're trying to decide or determine whether a word is descriptive, at least you have a dictionary definition.

[00:12:57] Speaker 03:
You need to go by the guideposts.

[00:12:59] Speaker 03:
And the guideposts were set by the board in LRC products.

[00:13:02] Speaker 02:
But apparently the board thinks that LRC doesn't dictate the result that you want in this case.

[00:13:11] Speaker 02:
And the question, Judge Hughes' question, which I share, is that isn't the board entitled within a realm of permissible leeway to make that determination?

[00:13:21] Speaker 03:
It does, and to the extent it falls within that leeway.

[00:13:25] Speaker 03:
And it's our position that the board fell outside that leeway when you compare the distinctiveness of the design and the prominence of that escape wheel in the upper right corner, and you look at that in the context of the precedential decisions that the board has set in LRC products.

[00:13:40] Speaker 03:
And so it's our position that it goes beyond.

[00:13:44] Speaker 03:
That's exactly why this board should review it, because it went beyond those guideposts.

[00:13:52] Speaker 01:
Why don't we turn to the government, you and to your rebuttal.

[00:13:55] Speaker 01:
Thank you.

[00:14:00] Speaker 01:
Ms.

[00:14:00] Speaker 01:
Walker.

[00:14:03] Speaker 04:
May it please the court.

[00:14:05] Speaker 04:
SWATCH has focused its arguments, both today and in its brief, on the design element of its mark.

[00:14:11] Speaker 04:
But this is not just a design mark.

[00:14:13] Speaker 04:
This is a design and word mark.

[00:14:16] Speaker 04:
This court said in due process that it is improper to look at just the design.

[00:14:22] Speaker 02:
And that goes back to the question that I had at the outset.

[00:14:25] Speaker 02:
And maybe I should understand better the relationship between the word and the mark.

[00:14:31] Speaker 02:
But I had thought that once there was a disclaimer of the word, then we do focus on the design.

[00:14:38] Speaker 02:
And we ask ourselves, is perhaps other than informing by implication the observer that this design is intended to convey the idea of a tourbillon?

[00:14:51] Speaker 02:
which is, if you know what a tourbillon is, presumably that's going to be obvious.

[00:14:54] Speaker 02:
But what beyond that is the significance of the fact that there's a combination of the word and the design, where the word is disclaimed?

[00:15:01] Speaker 04:
So the significance is that the mark as a whole is the mark it's applied for.

[00:15:06] Speaker 04:
So the commercial impression that's measured is the commercial impression of the mark as a whole.

[00:15:12] Speaker 04:
So in dual process, the court found in that case that the word element of the mark

[00:15:18] Speaker 04:
SNAP was descriptive.

[00:15:20] Speaker 04:
And here we have the exact same issue.

[00:15:22] Speaker 04:
SWAT has admitted that Torbjorn, the word, is descriptive because they just disclaimed that from their mark.

[00:15:28] Speaker 04:
And so the only question is whether the mark as a whole, in viewing the word, because the word doesn't come out of the mark just because it's disclaimed, in viewing the word, will consumers understand what the mark means?

[00:15:41] Speaker 04:
And there is simply no question here, and can be no question under dual process.

[00:15:45] Speaker 04:
the consumers are going to know what the mark is because the word tells them what the design is.

[00:15:52] Speaker 04:
To the extent that there's a question about the design, substantial evidence often separately supports the design as descriptive here, but we have to include the word mark.

[00:16:03] Speaker 02:
Well, are you saying then that in the, say, the LRC case that your opposing counselor is relying on, that if that mark had not been just the

[00:16:12] Speaker 02:
more or less abstract drawing of the gloves, but had been a mark which had the drawing of the gloves exactly the same drawing and had the word gloves above it, it would have come out differently.

[00:16:21] Speaker 02:
That's right, Your Honor.

[00:16:22] Speaker 02:
That would have been a different case.

[00:16:24] Speaker 02:
Well, it would have come out differently because even though a person looking at the drawing of gloves would know that that's a drawing of gloves, that the word makes a different impression.

[00:16:35] Speaker 04:
Well, I think that what the board found in LRC actually is that in immediately viewing

[00:16:41] Speaker 04:
the mark in that case, consumers wouldn't know that they were gloves.

[00:16:44] Speaker 04:
The hand or gloves were in an unnatural position, right?

[00:16:48] Speaker 04:
And the lines were unnaturally straight.

[00:16:51] Speaker 04:
And so you have a question, is this a pair of gloves or is this a hand?

[00:16:54] Speaker 04:
And then additionally, you also have the color portion of that, right?

[00:16:58] Speaker 04:
You have one of the hand or gloves in yellow and the other in white, right?

[00:17:02] Speaker 04:
So it's the sort of totality of that drawing that the board, which is in what it said was a very close case, found to be suspicious.

[00:17:10] Speaker 04:
sufficiently suggestive in that case?

[00:17:14] Speaker 02:
Well, I'm having trouble with this distinction.

[00:17:18] Speaker 02:
I don't want to hold you too long on this, but I need the help.

[00:17:24] Speaker 02:
If you have the NBC peacock, which obviously is a stylized peacock, but nonetheless, it's pretty clear to anybody that looks at it, it's a peacock.

[00:17:31] Speaker 02:
That's what they're making it.

[00:17:32] Speaker 02:
That's a colored version of a peacock.

[00:17:36] Speaker 02:
Are you saying that that would be a registrable mark

[00:17:40] Speaker 02:
if it didn't have the word peacock above it, but if you put the word peacock above it, it suddenly becomes non-registrable.

[00:17:46] Speaker 04:
Well, it depends on what the goods are, right?

[00:17:48] Speaker 04:
I mean, you have to look at it in terms of what the goods are that are covered in the application.

[00:17:52] Speaker 02:
Well, that's fair point.

[00:17:53] Speaker 02:
So they're not selling peacocks.

[00:17:55] Speaker 04:
Right.

[00:17:56] Speaker 02:
And it's not, right.

[00:17:57] Speaker 04:
And it's not, right.

[00:17:58] Speaker 02:
So what we're talking about... But suppose they were selling peacocks.

[00:18:02] Speaker 02:
Suppose they were selling peacocks, among other things.

[00:18:04] Speaker 02:
And you had the word

[00:18:08] Speaker 02:
in some kind of script.

[00:18:09] Speaker 02:
Peacocks and then you had this very stylized but nonetheless recognizable peacock below the word.

[00:18:17] Speaker 02:
Are you saying that the presence of the word makes a difference even though everybody would recognize the drawing as being a peacock?

[00:18:23] Speaker 04:
Well I think it's going to depend on the record in that case and it's sort of hard to talk in hypothetical about these types of issues because it so much depends on what's in the record.

[00:18:32] Speaker 04:
So I don't know that I can answer that exactly.

[00:18:35] Speaker 04:
I mean, I think, again, I think the point that you made earlier about it's hard to draw these lines, but here there's no question, and there's no question that substantial evidence supports the board's finding, both at the design standing alone and the mark as a whole as descriptive.

[00:18:51] Speaker 04:
And I do think that, going back to Duoproc again, I think that that case is instructive because the design element in that mark

[00:18:58] Speaker 04:
was an exclamation point.

[00:18:59] Speaker 04:
It was an exclamation point that was broken.

[00:19:01] Speaker 04:
And an issue in that case were these snapping syringes.

[00:19:04] Speaker 04:
And so what this court found was first, even if you assume that the snapping exclamation point is suggestive, sort of just over the edge of suggestive, the mark as a whole, snap and the snapping exclamation part, is clearly descriptive.

[00:19:19] Speaker 04:
And then secondly, this court went on to consider the snapping exclamation point and found that that design element was descriptive in its

[00:19:26] Speaker 04:
in its own right.

[00:19:27] Speaker 04:
So the snapping exclamation point is descriptive.

[00:19:31] Speaker 04:
The snapping exclamation point doesn't tell us nearly what Swatch's design tells us here about the goods.

[00:19:36] Speaker 04:
It's a nearly literal depiction of a tourbillon.

[00:19:41] Speaker 04:
And together with the word tourbillon, there's simply no way that consumers will find that there's any impression from the mark other than a tourbillon.

[00:19:51] Speaker 04:
I did want to make one point.

[00:19:53] Speaker 04:
Council brought up in the argument and also in the reply brief about this.

[00:19:57] Speaker 04:
evidence that the board relied on that we also put on page 21 of our brief.

[00:20:02] Speaker 04:
That's found at 845 in the record.

[00:20:04] Speaker 04:
That same design is also found on page 52 of the record.

[00:20:07] Speaker 04:
So it's incorrect to say that it's only in one website because it's in at least two websites in this record.

[00:20:14] Speaker 04:
But the board was also very clear that it wasn't relying just on that design.

[00:20:19] Speaker 04:
The board went on in its opinion on pages 16 through 19 to say that it looked at many of the designs.

[00:20:26] Speaker 04:
in the record and found that Swatch's design was similar to many of the Torbjorn designs.

[00:20:32] Speaker 04:
And one additional point, you know, Swatch is making some complaints about sort of the authentication, which is an improper objection.

[00:20:40] Speaker 04:
There's no authentication requirement in ex parte cases, and this court has allowed internet evidence.

[00:20:45] Speaker 04:
But if Swatch is complaining about that, then they have a larger problem because much of the evidence that they rely on, which is found in pages 77 through 79 of the record,

[00:20:55] Speaker 04:
are just images with no information whatsoever about the images.

[00:20:59] Speaker 04:
And those are many of the images that Swatch points to in its brief.

[00:21:02] Speaker 04:
They don't give us the website.

[00:21:04] Speaker 04:
They don't tell us where they came from.

[00:21:06] Speaker 04:
So we don't know anything about them.

[00:21:08] Speaker 04:
And so for them to complain here about one website where you can find the information just isn't proper.

[00:21:13] Speaker 04:
Additionally, the inquiry is about what consumers would perceive.

[00:21:18] Speaker 04:
And both of these designs were found on websites that dealt with watches.

[00:21:22] Speaker 04:
So it's very reasonable to assume that a consumer would go to a website about a watch and would perceive this drawing.

[00:21:37] Speaker 04:
If the court has no further questions, I will yield the rest of my time.

[00:21:41] Speaker 02:
Again, a kind of policy-based question.

[00:21:46] Speaker 02:
The evil we're trying to prevent by not allowing the registration of this, particularly the drawing in particular, is we want to have everyone free to have a depiction of the tourbillon and not to have Swatch looking over their shoulder and saying, that's too close to our drawing.

[00:22:06] Speaker 02:
Is that basically the sole real reason that we are keeping these kinds of

[00:22:15] Speaker 02:
realistic depictions of products out of the registration.

[00:22:21] Speaker 04:
That's right, the policy underlying designs is the same as the policy underlying words.

[00:22:24] Speaker 02:
I mean, some places, you know, marks are there for confusion of source and like the confusion of various source, but that's not an issue here, I suppose.

[00:22:35] Speaker 02:
It's entirely trying to free the street for people who want to have just

[00:22:43] Speaker 02:
either photographs or something very close to a photograph in a line drawing form of their product.

[00:22:49] Speaker 02:
Is that the gist of it?

[00:22:50] Speaker 04:
That's right.

[00:22:51] Speaker 04:
I mean, the policy underlying descriptive marks generally is about leaving the public free to use descriptive terms or images to describe their product.

[00:23:00] Speaker 04:
There's a provision in the Lanham Act that allows for a company to come back in after a sufficient period of use and claim acquired distinctiveness.

[00:23:08] Speaker 04:
So it's not that

[00:23:11] Speaker 04:
companies are prohibited from ever using descriptive terms.

[00:23:14] Speaker 04:
They just must show that that descriptive term has come to be a source identifier, right?

[00:23:20] Speaker 04:
So today what we're questioning is whether this is out of the box a source identifier.

[00:23:25] Speaker 04:
And it's our position that substantial evidence more than supports the board's finding here that the composite mark and the design standing alone, but certainly the composite mark is merely descriptive of the good that issued them.

[00:23:39] Speaker 01:
Thank you.

[00:23:44] Speaker 03:
To address, Your Honor, Judge Bryson's question about the play on the words and the design, I think a good hypothetical is if you have the jolly green giant, a very distinctive character, and he's holding a pea pod, and then underneath it says canned peas.

[00:23:59] Speaker 03:
In that case, even though a consumer who sees that right away will recognize that their product is canned peas, because the test is whether it's merely descriptive.

[00:24:08] Speaker 03:
And in that case, there is a distinguishing designation in the mark.

[00:24:14] Speaker 03:
that mark would be entitled to registration.

[00:24:16] Speaker 03:
The company would likely have to disclaim the word canned peas, but consumers who see that would still, notwithstanding the words canned peas, would recognize that mark as an identification of source.

[00:24:27] Speaker 03:
And so that swatches position here is that... And even if not an identification of source, it would still be fanciful.

[00:24:35] Speaker 02:
Nobody has peas that big.

[00:24:40] Speaker 03:
Right.

[00:24:40] Speaker 03:
So in Swatch's case here, that's our argument is that the word does not have to, the design does not have to subsume the impact of the word.

[00:24:51] Speaker 03:
It's whether when you see the design and the word combined, do you recognize it because of the distinctive elements of the design that in fact is indicating source.

[00:25:01] Speaker 03:
And to go to your other question about, well, isn't the policy here to free the street?

[00:25:06] Speaker 03:
And so in that context,

[00:25:08] Speaker 03:
That really is the policy in descriptive marks, I guess.

[00:25:12] Speaker 03:
Ultimately.

[00:25:13] Speaker 03:
But the way that's handled is in the next phase.

[00:25:20] Speaker 03:
When SWATCH goes to enforce its mark, the court will likely find, well, what are you entitled to?

[00:25:26] Speaker 03:
What's the protectable element of this mark?

[00:25:28] Speaker 03:
You're not entitled to exclude all use of the word Torbjorn.

[00:25:31] Speaker 03:
A lot of perhaps your design elements are not enforceable.

[00:25:34] Speaker 03:
But someone has adopted this distinctive part of your mark.

[00:25:38] Speaker 03:
the sun burst and placing it on top and making that prominent.

[00:25:42] Speaker 03:
That steps over the line.

[00:25:43] Speaker 03:
So while you're not entitled to preclude Torbjorn or even almost every image of a Torbjorn, you are entitled, you've met that minimum standard to overcome that it's not merely descriptive to entitle your mark to registration and get at least enforcement for that aspect of the mark.

[00:26:02] Speaker 03:
Quickly, their case of due approach case was mentioned.

[00:26:04] Speaker 03:
I think the distinguishing feature there was that

[00:26:07] Speaker 03:
the design element showed a snapping so it in itself gave indication as to what the feature of the product was.

[00:26:17] Speaker 03:
Here the decision to make the sun appear as it does and make it a prominent feature has no functional capacity and doesn't give further indication as to what the goods are.

[00:26:28] Speaker 03:
That's purely a stylistic

[00:26:31] Speaker 03:
element that Swatch put in that distinguishes its mark from someone else.

[00:26:35] Speaker 03:
Had they intended to really merely just reproduce what a tourbillon looks like, they never would have included that design the way it is.

[00:26:43] Speaker 03:
There's no example, even if you include the drawings that we really don't like and the actual products, there's no example in this record that shows the tourbillon product using that designation and its prominence.

[00:26:56] Speaker 02:
To go back, just to clarify this for my benefit,

[00:27:01] Speaker 02:
To go back to the drawing on page 21, if you flip that over, it does look like the escape wheel becomes much more prominent because it appears to be on the bottom of the device.

[00:27:14] Speaker 03:
Yeah, but I think the response to that is that there's no examples in this record at all that that tourbillon has ever flipped over on its back.

[00:27:23] Speaker 03:
and would ever appear to a consumer.

[00:27:27] Speaker 03:
Every single example we have shows that wheel hidden and partially obscured under the other component.

[00:27:34] Speaker 03:
There's not any example showing that it's ever done.

[00:27:36] Speaker 03:
It's watched it here.

[00:27:38] Speaker 01:
Time is up.

[00:27:39] Speaker 01:
Thank you very much.

[00:27:44] Speaker 01:
All rise.

[00:27:47] Speaker 01:
The Honorable Court is adjourned from day to day.