[00:00:00] Speaker 04:
The case today, number 14, 1853, Juice Generation Inc.

[00:00:06] Speaker 04:
against GS Enterprises, Mr. Acharya.

[00:00:10] Speaker 04:
Thank you.

[00:00:14] Speaker 02:
Good afternoon and thank you.

[00:00:16] Speaker 02:
May it please the court.

[00:00:18] Speaker 02:
My name is Nigam Acharya and I'm representing Juice Generation in the appeal of the United States trademark and trial appeal decision.

[00:00:26] Speaker 02:
in the case of G.S.

[00:00:27] Speaker 02:
Enterprises versus Juice Generation.

[00:00:30] Speaker 02:
This trademark case is about the widespread use of the moniker, Peace and Love, reminiscent of the 1960s, and directly test the crowded field theory in trademark law.

[00:00:43] Speaker 02:
Juice Generation submits, if this is not a crowded field, then the concept of crowded field has very little value in trademark law.

[00:00:51] Speaker 02:
It can't be the case that Juice Generation's mark, Peace, Love and Juice,

[00:00:55] Speaker 02:
creates confusion with peace and love in a landscape full of peace, love, and formative.

[00:01:02] Speaker 02:
There are at least 41 marks owned by over 30 entities coexisting in the marketplace.

[00:01:10] Speaker 02:
And this is a very crowded field and should have been dispositive of the case.

[00:01:14] Speaker 01:
I don't remember.

[00:01:15] Speaker 01:
Are all of those in the food-related marketplace?

[00:01:19] Speaker 02:
Food-related and restaurant services.

[00:01:22] Speaker 04:
Is this application on the principal register or the supplemental?

[00:01:26] Speaker 02:
It is on the principal register.

[00:01:30] Speaker 02:
GS Enterprises does not dispute that the mark co-exists with Peace Love and Pizza, Peace Love and Noodles, Peace Love and Ice Cream, Peace Love and Popcorn, Peace Love and Rocky Road.

[00:01:42] Speaker 01:
What do you mean by they don't dispute that it co-exists, that these other things in fact exist or they concede that there's no confusion as to them?

[00:01:52] Speaker 02:
They can see that they've coexisted with these marketplaces.

[00:01:55] Speaker 02:
They haven't put any evidence into the record saying that there's confusion between these entities, which have existed prior to their registrations.

[00:02:07] Speaker 03:
So your theory is the more crowded the field, the less confusion there is.

[00:02:12] Speaker 02:
Less confusion.

[00:02:12] Speaker 02:
And then it's like Broadway in Ray Broadway's case.

[00:02:20] Speaker 04:
Maybe the more crowded the field, the more confusing.

[00:02:25] Speaker 04:
Maybe it's time to slow down on the crowding.

[00:02:29] Speaker 02:
But when you get to this crowded place where you're using the moniker that the reason it's crowded is it's reminiscent of the 1960s theme, it's got that descriptive aspect, is once you get to the point of crowdedness, consumers already learn to decipher between goods and services based on extra elements, whether it's beer, pizza,

[00:02:49] Speaker 02:
juice or some other factor.

[00:02:52] Speaker 02:
The consumer base turns into that type of naming.

[00:02:57] Speaker 03:
Isn't there some point though where the field is too crowded and you just keep adding to it?

[00:03:05] Speaker 02:
At some point it would become so crowded that the names would be confusingly similar, but we don't have that in this case because it's peace and love versus peace, love and juice.

[00:03:17] Speaker 02:
If we pick something less close

[00:03:20] Speaker 02:
If it's something closer, we'd have more trouble.

[00:03:24] Speaker 02:
But we're still in the field where it's peace, love, and something else.

[00:03:29] Speaker 02:
And here we've got peace, love, and Jews.

[00:03:31] Speaker 01:
And you have, I guess, as I take it, your argument rests on a combination of two things.

[00:03:39] Speaker 01:
One is the crowdedness, and second, that both the peace, love, and blank has

[00:03:46] Speaker 01:
something at least suggestive, maybe somewhat descriptive about it.

[00:03:51] Speaker 02:
Yeah, it's just another term that we think consumers have recognized.

[00:03:57] Speaker 02:
We've got juice bar services.

[00:03:59] Speaker 02:
And so we said, peace, love, and juice, reminiscent of the 60s, this kind of highly descriptive term at the beginning, and then our extra element, which create a new commercial impression that we think that doesn't create likely a confusion.

[00:04:15] Speaker 02:
between anything in the space.

[00:04:20] Speaker 02:
And we believe the board's decision is erroneous because it's not supported by any type of... When you look at the factors, the third party use, the differences in the mark and the weakness of the mark altogether overwhelmingly show that there couldn't be confusion in the marketplace.

[00:04:41] Speaker 02:
GS Enterprises admits that consumers

[00:04:44] Speaker 02:
recognize subtle differences in marks in this space.

[00:04:50] Speaker 02:
And to defend this decision, GS Enterprises is not going to point to any evidence in the record because the only evidence in the record they entered was evidence directed towards showing that restaurant services and juice services were related, which juice generation readily conceded.

[00:05:10] Speaker 02:
And we believe that the legal conclusion of likelihood of confusion, which gets renewed, reviewed de novo, overwhelmingly favors no likelihood of confusion.

[00:05:21] Speaker 02:
Here the peace and love marks are used throughout the United States.

[00:05:28] Speaker 02:
GS enterprises, they've recognized that even in USPTO responses and admissions that consumers recognize extra elements on their mark.

[00:05:41] Speaker 02:
Like in Broadway, Broadway is a very similar case to this, in which case the court said in view of the crowded field, the mark in Broadway, Broadway was considered a weak term in that customers recognized Broadway versus something else.

[00:05:57] Speaker 02:
And there they allowed Broadway versus Broadway pizza, noticing that consumers have been conditioned to differentiate between those types of marks.

[00:06:08] Speaker 01:
And they also...

[00:06:11] Speaker 01:
businesses all geographically, in fact, connected with Broadway?

[00:06:18] Speaker 02:
Not always.

[00:06:18] Speaker 02:
Not always.

[00:06:19] Speaker 02:
They were across the country.

[00:06:20] Speaker 02:
They entered in evidence of around 400 different listings in multiple.

[00:06:28] Speaker 02:
The evidence was very similar in that they were all in the area.

[00:06:32] Speaker 02:
They went after the theme of Broadway being New York, as we did in the theme of peace and love of the 1960s.

[00:06:40] Speaker 02:
And so we think when the factors of confusion are looked into that lens, the board made a clear error in law in finding confusion.

[00:06:50] Speaker 03:
But turning to the second point.

[00:06:52] Speaker 03:
The word juice was disclaimed though, right?

[00:06:55] Speaker 03:
Yeah.

[00:06:55] Speaker 03:
Does that change your analysis any as to the crowded field?

[00:07:01] Speaker 02:
No, it doesn't.

[00:07:02] Speaker 02:
It actually, it goes on to the second point that

[00:07:05] Speaker 02:
We think that word actually has the more relevance in the sense that people are looking at peace, love, and juice, peace, love, and beer, peace, love, and ice cream.

[00:07:14] Speaker 02:
We enter testimony to show that that's what the marketplace was looking at.

[00:07:19] Speaker 02:
It was uncontroverted.

[00:07:20] Speaker 02:
No one questioned the credibility of it, which turns to my next point is we think the board created error in that there's not substantial evidence supporting the factual findings.

[00:07:33] Speaker 02:
and they're arbitrary and capricious.

[00:07:36] Speaker 02:
The board error by failing to give credit to juice generation's uncontroverted evidence of third-party use, the conditions of the marketplace, which included GS Enterprise's statements about the market, the weakness of the terms peace and love, and the consumer's ability to filter between marks.

[00:07:57] Speaker 02:
We think that the board's

[00:07:59] Speaker 02:
The board's findings actually rest against the uncontroverted evidence.

[00:08:04] Speaker 02:
The board says, well, peace and love are the dominant words.

[00:08:09] Speaker 02:
But it's on the contrary.

[00:08:10] Speaker 02:
We've introduced evidence to the contrary that said it's not the peace, love, or it's the peace, love, and juice, the overall impression that creates no likelihood of confusion.

[00:08:20] Speaker 02:
So here, even though the board points out correctly that normally the words are the dominant terms,

[00:08:26] Speaker 02:
That wasn't the case here.

[00:08:27] Speaker 02:
You had evidence to the contrary and without some type of finding on that issue.

[00:08:33] Speaker 03:
What evidence did you present that a customer could distinguish between the differences in peace, love, and whatever follows?

[00:08:43] Speaker 02:
Our evidence came into two forms.

[00:08:45] Speaker 02:
One, a testimony from our founder who is familiar with the environment, who is familiar with the marketplace.

[00:08:52] Speaker 02:
And then also juice generate, GS Enterprises own statements about what the marketplace looked like.

[00:08:57] Speaker 02:
They had made certain admissions about how customers look at, they found significantly and between peace and juice, peace and love versus peace love.

[00:09:08] Speaker 02:
They had made those admissions on the record.

[00:09:12] Speaker 04:
I don't hear you saying very much about the design.

[00:09:15] Speaker 04:
Is this viewed as entirely a word mark with a design just

[00:09:21] Speaker 04:
Decorative or is it limited to the design?

[00:09:24] Speaker 02:
No, we also add the design as even compounding this difference, but we think on the words themselves, the mark stands on its own.

[00:09:32] Speaker 04:
The design just makes things more... But you haven't applied for the words alone, is that right?

[00:09:36] Speaker 02:
We did not apply for, in this application, we did not apply for the words alone.

[00:09:40] Speaker 02:
We put them in a design and because that's how the customer, how the client was using, how Juice Generation was using it at the time.

[00:09:47] Speaker 04:
So if someone uses the words without the design, in your view, is that covered by any registration you might obtain?

[00:09:56] Speaker 02:
Not this registration necessarily, unless they put it in a confusingly similar with the design.

[00:10:02] Speaker 02:
It would have to be a complete.

[00:10:03] Speaker 02:
We'd have to look at the 16 factors against that design.

[00:10:06] Speaker 01:
Do you have pending applications for the words without the design?

[00:10:12] Speaker 02:
We have a pending application for the words with juices themselves.

[00:10:16] Speaker 02:
With what?

[00:10:16] Speaker 02:
With the juices themselves, not juice services.

[00:10:21] Speaker 02:
We have one pending application for the words with juices themselves, not juices.

[00:10:26] Speaker 01:
So that's the same collection of words without the design, but different goods.

[00:10:33] Speaker 02:
With different goods, which we think further obviates the differences, and is also how the client uses the mark.

[00:10:42] Speaker 02:
And the second thing is we found that

[00:10:44] Speaker 02:
So we think that the board stating that it was unable to find consumers were conditioned to recognize that entities use peace and love with similar services despite uncontroverted evidence of third-party uses, testimony about the marketplace, and even GS Enterprises own admissions about the marketplace, we think contradicts this.

[00:11:09] Speaker 02:
There can't be substantial evidence around that.

[00:11:12] Speaker 02:
Because without some type of explanation, the record only speaks one way.

[00:11:19] Speaker 02:
And the board must have acted outside the record to go to side again, to rule against those facts.

[00:11:29] Speaker 04:
What do you mean by outside the record?

[00:11:31] Speaker 04:
What about human intelligence?

[00:11:33] Speaker 04:
Is that outside the record?

[00:11:36] Speaker 04:
Are they not permitted to appreciate that the words cease

[00:11:40] Speaker 04:
in love and juice or in the dictionary?

[00:11:44] Speaker 02:
This wasn't a question of necessarily, of what the words meant.

[00:11:50] Speaker 02:
These were marketplace definitions.

[00:11:53] Speaker 02:
And the Federal Circuit has said that the board should stay within, should let the parties define the marketplace.

[00:12:03] Speaker 02:
They are in better position to know what the marketplace then is in the board.

[00:12:08] Speaker 02:
And that's in the Van Greggen decision.

[00:12:10] Speaker 03:
Could you address the issue of whether the board considered the mark as a whole in its entirety?

[00:12:16] Speaker 02:
We think the board did not consider the mark in a whole in its entirety because we think that the board took peace and love and said it's comprised within it and then it subtracted the and from the peace from the peace love and said oh the marks must be the same.

[00:12:35] Speaker 02:
And they ignored the disclaimed word saying it had very little impact on the overall impression, which we thought was inconsistent with the testimony that we provided, which was inconsistent with the way they actually get viewed in the market.

[00:12:52] Speaker 03:
So if the board assigns zero weight or little weight to a disclaimed word, then do they need to bring that back up into the review in the market in its entirety?

[00:13:05] Speaker 03:
that it's got a zero weight.

[00:13:08] Speaker 02:
I think in this case, ordinarily without our testimonial evidence saying it has weight, it would be inconsistent with the marketplace to give it no weight.

[00:13:19] Speaker 02:
Because it's peace, love, and beer, beer disclaimed.

[00:13:21] Speaker 02:
Legally, would it be inconsistent?

[00:13:24] Speaker 02:
It would be legally inconsistent because the overall impressions of the mark are changed by that disclaimed word.

[00:13:36] Speaker 04:
So if you can briefly summarize, what is the distinction between your mark and the other peace and love marks?

[00:13:49] Speaker 02:
As a whole?

[00:13:51] Speaker 02:
So our peace love marks are we use the theme common to all the 1960s mark, but we've added the unique term no one else has added Jews.

[00:14:01] Speaker 02:
And consumers see peace, love, and Jews and know they're our service.

[00:14:05] Speaker 02:
They know, they don't believe their GS's services.

[00:14:08] Speaker 02:
They don't believe their Baskin Robbins Peace Loving Ice Cream.

[00:14:15] Speaker 02:
They know that their Peace Loving Juice is ours.

[00:14:19] Speaker 04:
And how does one know?

[00:14:20] Speaker 04:
You say they know.

[00:14:22] Speaker 02:
The consumers know.

[00:14:23] Speaker 02:
Through our advertising, our branding, our overall marketing strategy.

[00:14:30] Speaker 02:
And it's just through that.

[00:14:32] Speaker 02:
Do you introduce evidence about what the consumers know?

[00:14:35] Speaker 02:
Yes, we introduced testimony regarding what consumers know, and we also introduced comments from you.

[00:14:41] Speaker 03:
I know the testimony of the CEO of the company, but what did you have?

[00:14:45] Speaker 03:
Customer surveys?

[00:14:47] Speaker 02:
We did not have surveys in this case.

[00:14:49] Speaker 02:
Well, how do you know what the consumer knows?

[00:14:51] Speaker 02:
We went with uncontested testimony at the time, and he was familiar with this marketplace for the last seven years.

[00:14:59] Speaker 02:
Whose testimony?

[00:15:00] Speaker 02:
The CEO, right?

[00:15:02] Speaker 02:
Yeah, the CEO.

[00:15:04] Speaker 02:
He had looked at the evidence and given his uncontested testimony.

[00:15:10] Speaker 02:
No one questioned the credibility.

[00:15:14] Speaker 02:
I think my time is up.

[00:15:14] Speaker 04:
Okay, let's hear from the other side.

[00:15:16] Speaker 02:
Thanks.

[00:15:21] Speaker 04:
Mr. Barks.

[00:15:25] Speaker 00:
May it please the court.

[00:15:27] Speaker 00:
Good afternoon, Your Honors.

[00:15:28] Speaker 00:
My name is Justin Barks.

[00:15:29] Speaker 00:
I'm here on behalf of GS Enterprises, aptly in this case.

[00:15:33] Speaker 00:
honors this as a case simply about whether Juice Generation's mark, Peace, Love, and Juice, is likely to confuse the relevant consumers in light of GS Enterprise's family of marks, which include Peace and Love.

[00:15:50] Speaker 00:
Now, the board made a determination finding in favor of likelihood of confusion based on one of Appley's marks, specifically the standard character mark, Peace and Love.

[00:16:03] Speaker 00:
in class 43 for restaurant services.

[00:16:07] Speaker 00:
This is not a case about whether appellee's marks are valid, whether they are descriptive or not descriptive, or whether they're distinctive.

[00:16:19] Speaker 01:
Right, but isn't there case law that indicates that either the strength of the opposer's

[00:16:33] Speaker 01:
or the descriptive character in some degree is relevant to the likelihood of confusion inquiry, even if not so compelling as to render the registration invalid.

[00:16:53] Speaker 00:
Your Honor, in the case in which two answers to that question, because you're talking about strength of the mark

[00:17:00] Speaker 00:
And the sixth upon factor, which is the field.

[00:17:04] Speaker 00:
And the question of whether the field, the question of the number and nature of similar marks to the opposer, in this case, Appellee, is a separate question of the strength of the mark, which actually tends to do with fame of the mark, which is not present in this case.

[00:17:25] Speaker 01:
Right.

[00:17:25] Speaker 01:
We are not limited to a list of 13 factors.

[00:17:29] Speaker 00:
Yes, Your Honor.

[00:17:30] Speaker 01:
So strength of the mark does intuitively bear on whether confusion is likely.

[00:17:37] Speaker 01:
And there are a number of cases, right, that say that we can consider that.

[00:17:41] Speaker 00:
Yes, Your Honor.

[00:17:42] Speaker 01:
Without invalidating the opposer's own registration.

[00:17:46] Speaker 01:
And I know it's a separate question, but is that not similarly the case with respect to the descriptiveness or suggestiveness, the non-fanciful

[00:17:58] Speaker 01:
of the terminology being used.

[00:18:04] Speaker 00:
Yes, Your Honor.

[00:18:05] Speaker 00:
Insofar as there is not an impermissible collateral attack on the registrations, those are aspects which the Board and in your de novo review of the facts can consider.

[00:18:16] Speaker 00:
However, no evidence

[00:18:19] Speaker 00:
of descriptiveness or suggestiveness was met by the board that was outside the bounds of this collateral attack.

[00:18:30] Speaker 00:
Appellants actually stated in their brief, in their trial brief before the board, that the term peace and love is descriptive.

[00:18:41] Speaker 00:
And then just before you a moment ago, they stated again,

[00:18:44] Speaker 00:
The peace and love is descriptive in their own.

[00:18:47] Speaker 01:
Right.

[00:18:48] Speaker 01:
This is what I guess you're more familiar than I am at the moment with the case law.

[00:18:53] Speaker 01:
I thought that the registration applicant is entitled to say that about the opposers registration without it being a challenge to the validity of the

[00:19:11] Speaker 01:
the opposers registration say it is actually somewhat descriptive and that is a reason that consumers are fundamentally not going to be confused because they're going to see those collection of symbols or words and they're going to think that's not GS it's something about the atmosphere about the mood the you know what what mindset the

[00:19:39] Speaker 01:
the store wants the customers to have when they come in.

[00:19:44] Speaker 00:
Yes, Your Honor.

[00:19:47] Speaker 01:
So in that sense, it's relevant without being an impermissible collateral attack.

[00:19:52] Speaker 00:
Yes, Your Honor.

[00:19:53] Speaker 00:
And the factors, the DuPont factors themselves, are necessarily intertwined with one another.

[00:19:59] Speaker 00:
Thus, the sixth DuPont factor and the third DuPont factor, and the question of whether the marks compared in sight-sound meaning and commercial impression

[00:20:08] Speaker 00:
which is an aspect of the strength of the mark.

[00:20:11] Speaker 00:
Each of these come together to form the board's decision of whether a likelihood of confusion exists.

[00:20:17] Speaker 00:
That's why we have all of those factors.

[00:20:19] Speaker 00:
In this case, the question of the Dupont factor, number six, and whether there are these other marks, that's how appellants raised the issue of distinctiveness, of peace and love in the greater field.

[00:20:35] Speaker 00:
However, they overstepped that boundary of strength by stating that we had a descriptive mark in its entirety because our mark is peace and love, not the peace, love formatives that appellants state that their mark is and that each and every other third party use and mark that they raise in the Six DuPont factor is.

[00:21:02] Speaker 00:
As this court stated in

[00:21:04] Speaker 00:
The issue of the 6th DuPont factor is whether or not opposers' mark is present in this field.

[00:21:18] Speaker 00:
Every single one of the third party uses and or registrations, because APOLI does not, APOLI does contest that the quote unquote 41 uses are all uses.

[00:21:29] Speaker 00:
Many of them are simply registrations without any additional use information.

[00:21:34] Speaker 00:
that these are all peace, love, formative, or love, peace, formative, or something, something, peace, love.

[00:21:41] Speaker 00:
That's not our mark.

[00:21:42] Speaker 00:
Our mark is peace and love.

[00:21:44] Speaker 04:
Well, when you started your argument, you said something about the family of marks.

[00:21:50] Speaker 04:
And I thought you were talking about your client's family of marks.

[00:21:54] Speaker 04:
But you're now saying that all these marks that are listed, peace, love, and pizza, peace, love, and ice cream, peace, love, and little donuts, and so on, these have nothing to do

[00:22:04] Speaker 04:
with your client, their old third party, unrelated marks?

[00:22:09] Speaker 00:
Yes, Your Honor.

[00:22:10] Speaker 00:
The evidence that was proffered by appellants, the Thompson CompuMark search, the exhibits that were attached to Mr. Helms' deposition, these are all additional marks that they're bringing to the field to compare opposer GS Enterprises, family of peace and love marks,

[00:22:34] Speaker 00:
to the world, essentially.

[00:22:36] Speaker 04:
Well, then how really is it reasonable to counter the argument that the marketplace is already so encumbered with peace and love marks that one more or less isn't going to cause any more confusion to your client than may already be out there?

[00:22:55] Speaker 04:
I'm sorry, Your Honor.

[00:22:59] Speaker 04:
Accepting that there are three or four dozen peace, love, and something or else

[00:23:04] Speaker 04:
marks that have no relationship to your client.

[00:23:09] Speaker 04:
How are you injured by one more of the same?

[00:23:14] Speaker 00:
Yes, Your Honor.

[00:23:14] Speaker 00:
And this goes to a question that Judge Toronto asked of appellants in his opening.

[00:23:23] Speaker 00:
The 41 or so that appellants are stating are this massive number of registrations and uses are not 41 marks, Your Honor.

[00:23:34] Speaker 00:
We do not agree that the number of marks in this field are as many and multitudinous as appellants would tend to have the court believe.

[00:23:45] Speaker 04:
So there are only 10, then we don't have to worry about how many dozen.

[00:23:50] Speaker 00:
Yes, Your Honor.

[00:23:50] Speaker 00:
But in the case that there are only 10, that does not mean that peace and love is a diluted term that's not afforded the protection under the Trademark Act.

[00:23:58] Speaker 00:
In this case, peace and love is distinctive.

[00:24:02] Speaker 04:
in none of the red... They're not asking for peace and love.

[00:24:05] Speaker 04:
They're asking for peace, love, and juice.

[00:24:07] Speaker 00:
Yes, Your Honor.

[00:24:08] Speaker 00:
And that brings me to the comparison of the two marks in terms of sight, sound, meaning, and commercial impression.

[00:24:16] Speaker 00:
The fact that applicants' appellants have included the word juice at the end of their mark and then proceeded to disclaim the word juice effectively renders their protection over the word peace, love, and juice to just peace

[00:24:33] Speaker 00:
and love, just those two elements.

[00:24:36] Speaker 01:
To some extent, maybe the board's reasoning kind of turns on that.

[00:24:40] Speaker 01:
That's counterintuitive to me.

[00:24:46] Speaker 01:
There are many combinations of words that are more than the sum of their individual parts.

[00:24:57] Speaker 01:
Supreme Court had a decision not long ago about personal privacy and rejected the notion that personal privacy had a meaning that was the result of breaking down the thing into the two pieces and translating personal into like personal property or something like that.

[00:25:16] Speaker 01:
The trio, peace, love, and whatever, has a meaning maybe reflecting peace, love, and understanding or something that

[00:25:26] Speaker 01:
that has maybe some whimsy in it as a trio that the first two don't standing by itself.

[00:25:38] Speaker 01:
And if that's right, and I guess I'm having a little hard time overcoming that, then it seems as if maybe the board in wiping out the third number of the trio focused on the wrong question.

[00:25:55] Speaker 00:
Your honor, I'm going to break your question into... I won't hold that again.

[00:26:02] Speaker 00:
Okay.

[00:26:02] Speaker 00:
First, your honor, the board did not dissect either of the marks.

[00:26:09] Speaker 00:
Under the law, a proper comparison of the mark allows and necessitates the board to take the mark in pieces, determine which pieces to give greater weight to,

[00:26:24] Speaker 00:
and then essentially bring the mark together and weigh the marks and those individual pieces.

[00:26:30] Speaker 00:
Now, the marks can't be compared side by side.

[00:26:33] Speaker 00:
They have to be compared as the relevant consumers would see them in the marketplace, and they have to be considered in terms of the general impression that consumers will be left with.

[00:26:44] Speaker 00:
In the board's comparison of the two marks, Appellee's peace and love mark and Appellant's peace, love, and juice mark

[00:26:54] Speaker 00:
were taken apart to determine the dominant portions of these marks.

[00:27:00] Speaker 00:
In light of, and this is wholly separate from the board's decision, but under the law, under Tektronix versus Daktronix, a CCPA court in 1976 determined that third-party registrations without any additional use can show dictionary-type meanings

[00:27:22] Speaker 00:
of certain words if used throughout the principal and supplemental registers.

[00:27:26] Speaker 00:
In this case, we have a number of uses of peace and love in conjunction.

[00:27:31] Speaker 00:
Therefore, peace and love are the two words that are joined here.

[00:27:35] Speaker 00:
The addition of the extraneous juice or beer or little donuts is not a part of the dominant elements of the mark.

[00:27:45] Speaker 00:
Again, the law also states

[00:27:47] Speaker 00:
that disclaimed elements, while must be considered and afforded some amount of weight, unless they're generic, they cannot be the dominant elements of the mark.

[00:27:59] Speaker 03:
Can they have zero weight?

[00:28:02] Speaker 00:
In the case that they're generic of the goods or services, Your Honor, I would imagine that they should have zero weight.

[00:28:07] Speaker 00:
In this case, the board found that juice was generic of the goods and services.

[00:28:12] Speaker 00:
specifically, juice bar services of appellants.

[00:28:15] Speaker 03:
Does that mean that the Board doesn't have to consider adding that word juice and looking at the mark as a whole?

[00:28:22] Speaker 00:
Your Honor, no.

[00:28:24] Speaker 03:
As Judge Tarantos... What evidence do we have, or what do we have in the record that shows that the Board did that?

[00:28:30] Speaker 00:
Your Honor, in their consideration of the mark, and I can get you a record site if you prefer that, in their consideration of the mark, the Board took procedurally steps to compare the dominant

[00:28:42] Speaker 00:
and then the additional non-distinctive elements, the disclaimed elements, and then the design elements and font elements in appellant's mark.

[00:28:50] Speaker 00:
The board stated explicitly that the marks need to be considered in their whole, not just the dominant element.

[00:28:56] Speaker 03:
I know they said that, but where did they do it?

[00:29:00] Speaker 03:
What process did they go through?

[00:29:02] Speaker 03:
What analysis and what was the resolution of that analysis?

[00:29:07] Speaker 00:
Your Honor, to the extent that we have in the board's decision, they stated that the

[00:29:13] Speaker 00:
the peace, love elements were dominant, that the and or the ampersand, which would sound like the word and in Appellee's Mark, was not distinctive.

[00:29:23] Speaker 00:
They stated that because juice had been disclaimed, it was also not distinctive, and then compared peace, love, and peace and love.

[00:29:30] Speaker 00:
Following that, they added in the ampersand and the disclaimed element, stating that even if juice is added to the end of peace, love, and juice,

[00:29:41] Speaker 00:
the dominant elements still outweigh because juice is generic of the goods of the appellant.

[00:29:48] Speaker 00:
Then they considered the design elements.

[00:29:53] Speaker 00:
They stated that while peace and love is a standard character mark and can be displayed in any font, in vertical or horizontal, that the design elements were also not distinctive because

[00:30:10] Speaker 00:
of the standard character element.

[00:30:11] Speaker 00:
So let me, if that doesn't answer your question.

[00:30:14] Speaker 03:
What was the evidence that juice is not distinctive?

[00:30:17] Speaker 00:
It was a determination by the board of the disclaimer that was included in the application of appellants, Your Honor.

[00:30:28] Speaker 00:
And that goes, I just want to close briefly.

[00:30:32] Speaker 00:
It's for these reasons, Your Honors, that Appellee respectively requests that this court uphold

[00:30:40] Speaker 00:
the determination of the board, because the crowded field is not nearly as crowded as appellant contends, and the board did not improperly dissect the marks in their comparison.

[00:30:54] Speaker 00:
Thank you.

[00:30:55] Speaker 04:
Any more questions?

[00:30:56] Speaker 04:
More questions?

[00:30:57] Speaker 04:
Thank you.

[00:30:57] Speaker 04:
Thank you.

[00:31:15] Speaker 02:
So GS Enterprises has made a point that their mark is peace and love.

[00:31:20] Speaker 02:
And it's a red herring to say we're attacking the validity of that mark.

[00:31:25] Speaker 02:
What we are saying is it's hemmed in on all sides in this marketplace.

[00:31:30] Speaker 02:
Peace, love, and juice, and beer, and little donuts, and another 30 or so other marks.

[00:31:41] Speaker 01:
Can I ask, is the analysis here

[00:31:44] Speaker 01:
In the analysis here, is it right to ask, suppose GS opened a juice bar, used its mark, peace and love on a juice bar, so identical services.

[00:31:59] Speaker 01:
Their registration, I think, is broad enough to cover that, right?

[00:32:04] Speaker 01:
Is that right?

[00:32:05] Speaker 02:
I mean, they're... We consider them legally related for this proceeding.

[00:32:09] Speaker 01:
Okay, so is it really the case that there would not be

[00:32:15] Speaker 01:
likely confusion in that instance.

[00:32:19] Speaker 01:
Your juice bar, Peace, Love and Juice, their juice bar, Peace and Love.

[00:32:23] Speaker 02:
So if they call it Peace, Love... No, no, no, Peace and Love.

[00:32:26] Speaker 02:
They use their registered mark on identical services.

[00:32:31] Speaker 02:
In this dilute environment with more than 41, we don't argue that we wouldn't be hemmed in just as narrowly as they are.

[00:32:38] Speaker 01:
And we would, in order to rule for you, we have to think that that's right, right?

[00:32:42] Speaker 01:
Because their registration covers that.

[00:32:46] Speaker 02:
It wouldn't cover that broadly.

[00:32:49] Speaker 02:
It would have to be peace and love, juice bar services, juice bar, juice.

[00:32:55] Speaker 02:
Peace and love, juice.

[00:32:58] Speaker 02:
They would be hemmed in just as much as we are.

[00:33:02] Speaker 02:
We would not be able to enforce against that because that's so narrow.

[00:33:07] Speaker 02:
Consumers would recognize the difference between peace and love and with juice bar services.

[00:33:14] Speaker 02:
just as we would not be able to, people, they would know us as peace, love, and juice.

[00:33:20] Speaker 02:
If they said peace and love and juice, and juice for our services, it's even questionable there.

[00:33:26] Speaker 02:
It's because this is such a crowded field.

[00:33:29] Speaker 02:
It's tough to do anything long-term in this hemmed out environment.

[00:33:33] Speaker 02:
And that's why we see peace, love, and beer, peace, love, and all the other formatives that we see out there.

[00:33:39] Speaker 02:
We're not arguing that our mark will be the most powerful mark out there.

[00:33:42] Speaker 02:
It's a thinner mark, as all these other ones are, too.

[00:33:47] Speaker 04:
But once you disclaim and juice, aren't you claiming the same mark as the opposite?

[00:33:53] Speaker 02:
No.

[00:33:53] Speaker 02:
This court has also said that the disclaimed term remains in the analysis of the DuPont factors.

[00:34:04] Speaker 02:
It doesn't get dissected.

[00:34:06] Speaker 02:
There's no evidence in the record that consumers do not see that as... The answer is yes or no.

[00:34:12] Speaker 03:
Is it legally correct for the board to assign zero weight to a disclaimer?

[00:34:16] Speaker 02:
It is not appropriate for zero weight to it.

[00:34:19] Speaker 02:
It has to be in the analysis and there's established case law.

[00:34:22] Speaker 04:
Why is when you have a mark of three words and you disclaim the third word, how does that differ from a two-word mark?

[00:34:32] Speaker 02:
It's another term that changes the consumer impression of the overall mark, whether it's

[00:34:39] Speaker 02:
peace, love, and little doughnuts.

[00:34:41] Speaker 04:
You say overall mark, we disclaim the third word.

[00:34:45] Speaker 04:
Now your overall mark is two words, not three.

[00:34:49] Speaker 02:
The disclaimer is part of the entire mark in its commercial impression.

[00:34:52] Speaker 04:
And what is accomplished by the disclaimer?

[00:34:56] Speaker 02:
It's just saying that we're not going to enforce, it's saying we're not going to enforce Jews against Jews bar services.

[00:35:03] Speaker 02:
That's all that disclaimer means under trademark prosecution guidance.

[00:35:07] Speaker 02:
It's saying, all right, we've got juice in this, Mark.

[00:35:10] Speaker 02:
We're not going to enforce it against juice and peace bar services.

[00:35:15] Speaker 02:
We're not.

[00:35:15] Speaker 04:
So I can start selling peace, love, and juice, and you're not going to enforce the registration?

[00:35:21] Speaker 02:
Peace, love, and juice.

[00:35:22] Speaker 02:
Peace and love and juice, we wouldn't enforce it against that.

[00:35:25] Speaker 02:
Actually, you would?

[00:35:26] Speaker 02:
We would not.

[00:35:28] Speaker 02:
At least it's limited.

[00:35:32] Speaker 02:
Peace, love, and juice, we would enforce against that.

[00:35:35] Speaker 04:
So if I say peace and love and juice, but if I sell peace, love and juice and disclaim the juice, then there's nothing for you to enforce or don't disclaim the juice.

[00:35:47] Speaker 02:
If we don't disclaim the juice, there would be a likelihood of confusion because that word there would cause confusion without the other portion of the market.

[00:35:59] Speaker 02:
Because it's, Apolle has already said that the and between peace and love is distinctive in their mark.

[00:36:04] Speaker 04:
You didn't just claim and, you just claimed Jews?

[00:36:08] Speaker 02:
But it's the position of peace, the ampersand between peace and love that Apolle has said is their key to their mark.

[00:36:15] Speaker 02:
So if they said peace and love and Jews, we would not have a problem with that.

[00:36:20] Speaker 02:
If they use peace, love, and Jews, we would have a problem with that.

[00:36:23] Speaker 04:
And what good is your proposed registration?

[00:36:27] Speaker 02:
It's not, with 41 in this crowded mark,

[00:36:30] Speaker 02:
It would prevent people from just doing the identical, essential more or less.

[00:36:34] Speaker 02:
It would prevent people.

[00:36:36] Speaker 02:
It's not a perfect registration.

[00:36:39] Speaker 02:
It's not a perfect registration, because it's in a crowded field.

[00:36:44] Speaker 02:
And the crowded field doctrine takes that into account.

[00:36:47] Speaker 02:
It's hemmed in on all sides that you don't get.

[00:36:50] Speaker 02:
But you have to preserve the design, right?

[00:36:54] Speaker 02:
The design is what we would also be going with.

[00:36:57] Speaker 04:
If I use peace, love, and juice,

[00:37:00] Speaker 04:
and don't use the flour or whatever that is, there's no recourse.

[00:37:06] Speaker 02:
There's largely no recourse.

[00:37:07] Speaker 02:
This is a very, in a crowded field where our mark is hemmed in.

[00:37:13] Speaker 02:
It's just like Peace, Love and Pizza, Peace, Love and Beer.

[00:37:18] Speaker 02:
If they started a beer company or if they started a pizza company, it would be Peace, Love and Pizza.

[00:37:24] Speaker 02:
The recourse is limited in the crowded field.

[00:37:27] Speaker 02:
That's the whole idea behind when you choose a weak mark like this, you don't have an extraordinary amount of protection.

[00:37:35] Speaker 02:
You only have a limited amount of protection here.

[00:37:37] Speaker 02:
Peace, love, and Jews, we would have protection on, plus this design element.

[00:37:42] Speaker 02:
Nothing more.

[00:37:43] Speaker 02:
And the examiner has let this one through, and it had let the other one for Jews through.

[00:37:49] Speaker 02:
And they... You have to disclaim Jews in order for it to go through?

[00:37:52] Speaker 02:
Yeah, you have to disclaim Jews because we're not asserting any rights to Jews independent of

[00:37:57] Speaker 02:
The mark.

[00:37:58] Speaker 02:
That's all the disclaimer is saying.

[00:37:59] Speaker 04:
But wasn't the disclaimer with your application as filed?

[00:38:03] Speaker 02:
Yeah, we disclaimed juice with the application as filed.

[00:38:06] Speaker 04:
It wasn't required by the board?

[00:38:09] Speaker 02:
It would have been.

[00:38:10] Speaker 02:
It would have been.

[00:38:11] Speaker 04:
How do you know?

[00:38:12] Speaker 04:
Because just the ordinary... What if they might have disclaimed peace?

[00:38:18] Speaker 02:
Peace is not descriptive of the goods, even though it... Because we're not arguing that it's highly descriptive of the good.

[00:38:25] Speaker 02:
Because peace is highly generic.

[00:38:27] Speaker 02:
Yeah, highly descriptive.

[00:38:31] Speaker 02:
Yeah, it's generic of the juice bar services.

[00:38:35] Speaker 02:
And it's just like pizza is generic of the pizza services.

[00:38:43] Speaker 04:
Thank you.

[00:38:46] Speaker 04:
Thank you both for taking on this submission.

[00:38:49] Speaker 02:
Thank you.