[00:00:00] Speaker 00:
Docket number 161285, NRAE Star.

[00:00:04] Speaker 00:
Appeal from the trademark Tri-Annual Appeal Board.

[00:00:27] Speaker 00:
Mr. Lieb, you want three minutes for rebuttal?

[00:00:33] Speaker 00:
Just one second until everybody gets settled.

[00:00:52] Speaker 00:
OK, you may begin.

[00:00:53] Speaker 04:
Good morning, Your Honors, and may it please the Court

[00:00:56] Speaker 04:
My goal this morning is to convince Your Honors of three different things.

[00:01:01] Speaker 04:
That the trademark trial and appeal board and the examiner abused their discretion when they found that my client... You argue that a cup is different than other forms of glasses, jugs, mugs, sniffers, tumblers, etc.

[00:01:14] Speaker 04:
I argue that it is a specific type of drinking vessel in the same way that the item... If I walk into a 7-Eleven and ask them for a large

[00:01:24] Speaker 03:
cup size for a Slurpee.

[00:01:26] Speaker 03:
How does it look different than the vapor cup design?

[00:01:32] Speaker 04:
I wouldn't know, Your Honor, but that's not in the record.

[00:01:34] Speaker 04:
It wasn't provided by the examiner.

[00:01:36] Speaker 04:
And the examiner does have the burden of providing evidence that this is a purely, a merely descriptive mark.

[00:01:43] Speaker 04:
The examiner's primary evidence is a definition of cup that includes six qualifiers of which we need only two.

[00:01:51] Speaker 04:
The trademark trial and appeal board seemingly recognizing this

[00:01:54] Speaker 04:
unilaterally and without any evidence, rewrote that definition so that the definition of a cup then became a small drinking vessel.

[00:02:02] Speaker 04:
And even on that score, we only meet one of the two qualifiers as our product is not small.

[00:02:07] Speaker 04:
There is nothing in the record to justify referring to my client's product as a cup.

[00:02:15] Speaker 00:
Did you really make an argument though that the mark is merely suggestive?

[00:02:22] Speaker 00:
I didn't really see evidence in the record on that point.

[00:02:26] Speaker 04:
I made the argument that it is suggestive in the absence of any evidence that it, in fact, is merely descriptive.

[00:02:34] Speaker 04:
Again, that is the trademark examiner's obligation.

[00:02:38] Speaker 04:
He did not meet that obligation in providing evidence in the same way that he actively avoided

[00:02:45] Speaker 04:
referring to the VapoCup mark, which is evidence on the record that there is at least a difference of opinion on whether this mark is merely descriptive.

[00:02:58] Speaker 04:
And in the presence of that kind of a disagreement, where reasonable examiners can disagree, well, a tie is supposed to go to the runner in this circumstance.

[00:03:05] Speaker 04:
And we should have been passed forward for publication, but we weren't.

[00:03:10] Speaker 04:
But again, the Trademark Trial Appeal Board made an argument similar to that you just made, Your Honor.

[00:03:17] Speaker 04:
You made an argument, counsel.

[00:03:18] Speaker 04:
Well, I'm sorry.

[00:03:19] Speaker 04:
The point that you raised about going into 711.

[00:03:22] Speaker 03:
I'm looking at figure one in page seven of the red brief.

[00:03:28] Speaker 04:
Oh, the red brief?

[00:03:30] Speaker 03:
It's in figure one from a patent.

[00:03:33] Speaker 04:
Oh, from the patent application?

[00:03:37] Speaker 04:
Yes, that is what our item looks like.

[00:03:41] Speaker 04:
What's that top thing coming out?

[00:03:44] Speaker 04:
It is a cover that comes out of the top of it.

[00:03:47] Speaker 04:
It is a straw.

[00:03:51] Speaker 04:
But again, the trademark examiner has to define what he does based on the evidence he provides.

[00:04:01] Speaker 04:
The Trademark Trial and Appeal Board said, well, we can make the decision based on

[00:04:05] Speaker 04:
our own experience of the marketplace.

[00:04:07] Speaker 04:
But that's completely arbitrary.

[00:04:09] Speaker 04:
It can't be rebutted.

[00:04:10] Speaker 04:
It can't be argued with.

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It can't even be discussed.

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And in this case, the evidence does not support the finding that was put forward.

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The other issue before this court, or one of the other issues, is whether or not my client responded to the questions put forward by the examiner.

[00:04:30] Speaker 04:
And it is our position that one that we did

[00:04:33] Speaker 04:
And two, and I want to make this point because it was admitted from our brief, that both the AOP case and the Cheese Warehouse case, which are cited not only by the examiner but by the TTAB and by the trademark manual of examiner practices, stand for the position not only that you would reject something like this if the material is left out from the examiner and also from the briefs.

[00:05:00] Speaker 04:
Both those cases specifically mentioned that the wrong that was done was that the applicant refused to respond to the examiner or address the issue in their briefs.

[00:05:11] Speaker 03:
How do you deal with the examiner's notation that stars counsel, I don't know who that was below.

[00:05:19] Speaker 03:
I'm sorry?

[00:05:20] Speaker 03:
That stars counsel, whoever that was below.

[00:05:22] Speaker 03:
That would be it.

[00:05:24] Speaker 03:
Stated then that you stated that the goods, quote,

[00:05:29] Speaker 03:
bear, quote, a physical resemblance to a cup.

[00:05:32] Speaker 04:
As we state in our brief, Your Honor, that was in artful writing.

[00:05:37] Speaker 04:
It was misstated by me using the examiner's language.

[00:05:42] Speaker 04:
It was an error.

[00:05:43] Speaker 04:
It's stated in the record that it was an error.

[00:05:46] Speaker 04:
It is certainly not evidence, and it flies in the face of everything else that was said in our books.

[00:05:53] Speaker 03:
You might call it an error, but some others might call it an admission.

[00:05:55] Speaker 03:
And how is an admission not evidence?

[00:05:58] Speaker 04:
Well, Your Honor, to the extent that it might be considered an admission, I certainly understand that it could.

[00:06:03] Speaker 04:
It was, for lack of a better term, withdrawn in our papers, as we do not believe that it is.

[00:06:11] Speaker 04:
It was said inartfully and unfortunately in haste.

[00:06:14] Speaker 00:
But you advertise this thing as having a coffee mug design.

[00:06:20] Speaker 04:
And a mug is not a cup.

[00:06:22] Speaker 00:
Well, you know, people refer to coffee cups and coffee mugs as the same all the time, do they not?

[00:06:28] Speaker 04:
not in my awareness, and there's certainly nothing in the record that says that.

[00:06:32] Speaker 04:
Again, Your Honor, this has to be decided on the record that is before the trademark trial on the appeal board and not before Your Honors.

[00:06:40] Speaker 00:
And if that were... And you're saying that you have no obligation at all with respect to the creation of that record?

[00:06:47] Speaker 04:
Well, of course we do.

[00:06:48] Speaker 00:
Because you're saying it's not descriptive, it's suggestive, right?

[00:06:52] Speaker 00:
Right.

[00:06:52] Speaker 00:
Because it's got to be one or the other.

[00:06:54] Speaker 00:
But you didn't put any evidence to indicate that it's merely suggestive.

[00:06:58] Speaker 00:
You conceded that what comes out of the cup, what's delivered, is vapor, right?

[00:07:02] Speaker 04:
Yes, absolutely.

[00:07:04] Speaker 00:
Or comes out of the mug, I guess, as you want to call it.

[00:07:07] Speaker 04:
Well, out of the container is how we refer to it.

[00:07:09] Speaker 00:
OK.

[00:07:10] Speaker 00:
But you refer to the container as a mug design.

[00:07:13] Speaker 04:
Yes.

[00:07:14] Speaker 04:
But a mug, again, a mug is not a cup as such.

[00:07:19] Speaker 04:
It meets some of the criteria.

[00:07:22] Speaker 04:
If the examiner believed that a mug, and again, he identified as such, if the examiner believed that a mug and cup were synonymous, and therefore we were merely descriptive, the examiner certainly was within their ability to put that information forward and provide evidence on that score.

[00:07:41] Speaker 04:
In the absence of evidence that is merely descriptive, or worse yet, generic, then we are at worst suggesting

[00:07:51] Speaker 02:
Can I just ask you something?

[00:07:54] Speaker 02:
Look at pages 109 to 111 of the Joint Appendix.

[00:07:57] Speaker 03:
That's the Yahoo search?

[00:08:00] Speaker 02:
The Yahoo search.

[00:08:01] Speaker 03:
Yes.

[00:08:02] Speaker 02:
The Yahoo search for cups with straws.

[00:08:05] Speaker 02:
Right.

[00:08:05] Speaker 02:
So quite a lot of the items here look like yours.

[00:08:11] Speaker 02:
So why is that not evidence that cup is descriptive of

[00:08:20] Speaker 02:
an item that looks like yours.

[00:08:21] Speaker 04:
Well, first, I will note that the TTAB did not rely on that.

[00:08:25] Speaker 02:
However, if you look through the list... And I'm sorry, where does this material come from?

[00:08:32] Speaker 04:
This is the examiner's search, I believe, of Yahoo for the descriptive terms

[00:08:40] Speaker 02:
Cup and straw.

[00:08:42] Speaker 02:
Right.

[00:08:42] Speaker 02:
But what do you mean the examiner didn't rely on it?

[00:08:45] Speaker 04:
No, I said the TTAB did not rely on it.

[00:08:46] Speaker 02:
Oh, I see.

[00:08:46] Speaker 02:
Just the TTAB.

[00:08:48] Speaker 04:
Yes.

[00:08:48] Speaker 04:
The examiner lists this as material the examiner relied on.

[00:08:52] Speaker 04:
But it's not really discussed in his opinion brief.

[00:08:56] Speaker 04:
That point aside, if you do look through this list, you will see that there are all numbers of items there.

[00:09:02] Speaker 04:
There are basketball-shaped items, football-shaped items, baseball-shaped items, and even something

[00:09:09] Speaker 04:
that I can't quite identify on page 111 that looks to be a series of drawers.

[00:09:16] Speaker 04:
I'm not quite sure why that's there.

[00:09:18] Speaker 04:
The point I lead up to here, Your Honor, is that we don't know what the Yahoo search engine does here.

[00:09:25] Speaker 04:
The examiner did not search for cup.

[00:09:28] Speaker 04:
He searched for cup and straw, which is a different search and is going to lead to a different result.

[00:09:34] Speaker 04:
And without knowing how we get to these results,

[00:09:38] Speaker 04:
At the very least, this is very minor evidence.

[00:09:41] Speaker 04:
And as I say, it's not relied on by the TTAB, perhaps for that reason.

[00:09:51] Speaker 04:
Let me continue.

[00:09:53] Speaker 04:
On the issue of whether or not we responded to the examiner's questions, of which the TTAB makes quite a bit in their briefs, as I say, AOP and Cheese Warehouse both stand for the proposition that

[00:10:08] Speaker 04:
even if this information is delivered during the appeal process, it would still be considered and that would not be grounds for throwing the mark out.

[00:10:17] Speaker 04:
And I think everybody agrees that at least at that stage it was addressed.

[00:10:21] Speaker 00:
Well, you didn't answer the question, will the goods deliver vapor to the user, right?

[00:10:26] Speaker 04:
I believe we did, Your Honor.

[00:10:27] Speaker 00:
Well, your response was the device does not regulate or process vapor.

[00:10:32] Speaker 00:
But you just admitted to me a few minutes ago that yes, it creates vapor and it delivers it through the straw.

[00:10:36] Speaker 04:
Well, even the definition that we use, I'm sorry, the description we used of our goods vaporizing for, I don't remember the exact phrase, but we use the term vapor about three or four times.

[00:10:49] Speaker 04:
I will note that that was submitted by my client without aid of counsel, but it could not be more clear.

[00:10:55] Speaker 04:
And the trademark office says the same thing, that it could not be more clear from the description that in fact it does

[00:11:01] Speaker 04:
produce vapor.

[00:11:03] Speaker 04:
We've never denied that.

[00:11:04] Speaker 00:
Okay, so you're conceding that what you get when you suck on the straw is vapor.

[00:11:09] Speaker 00:
Absolutely right.

[00:11:10] Speaker 00:
So really then your only debate is whether it's a cup or a mug.

[00:11:14] Speaker 04:
Well, whether the mark itself is merely descriptive.

[00:11:19] Speaker 04:
Our belief is that the two words together create a compound mark that is not descriptive of the product.

[00:11:25] Speaker 04:
That having been said, yes I believe our primary and strongest argument is that

[00:11:30] Speaker 04:
There is nothing in the record that defines my client's goods as being a cop.

[00:11:34] Speaker 04:
And again, we have the Vapo cop.

[00:11:38] Speaker 03:
But there is, whether you like it or not, one part, the Yahoo search you denigrate as best being slight, the other you categorize as an error.

[00:11:54] Speaker 03:
But whether you like it or not, there is evidence in the record.

[00:11:57] Speaker 03:
You can't say there isn't.

[00:11:59] Speaker 04:
But it has to be more than a mere scintilla of evidence, Your Honor.

[00:12:01] Speaker 04:
It has to be substantive evidence.

[00:12:04] Speaker 04:
I don't think anybody would say that the baseball-shaped item is a cup, or the football-shaped item is a cup.

[00:12:11] Speaker 04:
Without knowing, again, how the algorithm works, we don't know how much value this search has.

[00:12:17] Speaker 03:
We could draw a Venn diagram if we had a blackboard, which would show that not all items which are cups have to look like

[00:12:28] Speaker 03:
your slurpee cup with straws sticking out.

[00:12:32] Speaker 03:
But it's certainly in that body of evidence.

[00:12:36] Speaker 04:
Well, as I prefer to put it, your honor, all cups are containers, but not all containers are cups.

[00:12:44] Speaker 00:
For a compal mark, you have to have some new and unique commercial impression that's created from the combination of the two words.

[00:12:51] Speaker 00:
Correct.

[00:12:52] Speaker 00:
So what's the new and unique commercial impression that you claim is created?

[00:12:56] Speaker 04:
Well, it is our contention that the phrase vapor cup is, well, first off, it was, when we created Unique, we were the first ones to ever use it.

[00:13:06] Speaker 04:
Vapor cup.

[00:13:07] Speaker 04:
Vapor cup with an R, yes.

[00:13:10] Speaker 04:
We were the first to apply.

[00:13:12] Speaker 04:
We were the first to use.

[00:13:14] Speaker 04:
That it creates an impression amongst the consumer of, I don't really know what this is.

[00:13:21] Speaker 04:
It may be, and again, this gets to the issue of whether it's

[00:13:26] Speaker 03:
descriptive or not.

[00:13:27] Speaker 03:
Why would a consumer purchase an item like that in that particular shape?

[00:13:34] Speaker 04:
Well, I can't speak for all consumers, and I'm not sure how that plays into the application process.

[00:13:42] Speaker 04:
It is marketed for convenience, for confidentiality.

[00:13:47] Speaker 03:
Right, because somebody will think it's something else.

[00:13:51] Speaker 04:
Well, more that somebody won't think that it is something.

[00:13:57] Speaker 04:
But again, that begs the question of what that something else is.

[00:14:02] Speaker 04:
I mean, we know that it looks like something.

[00:14:04] Speaker 04:
The only issue is, is that something, by definition, a cup?

[00:14:08] Speaker 04:
We know it's something.

[00:14:10] Speaker 04:
It's a container.

[00:14:10] Speaker 04:
It is a beverage container.

[00:14:12] Speaker 04:
But there is nothing in the record.

[00:14:14] Speaker 04:
Oh, let me rephrase it.

[00:14:15] Speaker 04:
The definition of cup supplied by the examiner on which he relied does not define it as cup.

[00:14:23] Speaker 04:
And the trademark trial and appeal board

[00:14:25] Speaker 04:
seemingly acknowledges that when they redefine it from a container with a flat bottom, an open top for holding beverages, et cetera, to basically a small container of beverage.

[00:14:45] Speaker 04:
And there is no reason to take out all the descriptors unless they do realize that the examiner's definition does not meet the definition of our product.

[00:14:54] Speaker 04:
And again,

[00:14:55] Speaker 04:
Examiner Brown, in looking at the VapoCup mark, had no qualms about the issue of merely descriptive.

[00:15:04] Speaker 00:
Well, that's because it was for a totally different purpose.

[00:15:06] Speaker 04:
Oh, no, that's not true, Your Honor.

[00:15:07] Speaker 04:
With all due respect, in reality, it is exactly the same product.

[00:15:13] Speaker 04:
In the description, it is simply phrased differently.

[00:15:16] Speaker 04:
They refer to smoke, but even the definition of vapor put forward by the examiner, smoke is a form of vapor.

[00:15:24] Speaker 04:
It's an item designed to produce vapor exactly the same way that my clients does.

[00:15:32] Speaker 00:
Okay, you're way into your rebuttal time.

[00:15:33] Speaker 00:
We'll give you two minutes for rebuttal.

[00:15:36] Speaker 00:
Thank you.

[00:15:52] Speaker 00:
OK, let's begin where he left off.

[00:15:54] Speaker 00:
I mean, I get the argument that two different marks are two different marks, and we shouldn't assume that how you rule on one is how you're going to rule on any other.

[00:16:03] Speaker 00:
But what is your explanation for why VapoCup gets treated differently than VaporCup?

[00:16:11] Speaker 01:
Good morning, and may it please the court.

[00:16:15] Speaker 01:
Oh, yeah, you could do that.

[00:16:19] Speaker 01:
For the reasons that we said in our brief, we think it's irrelevant how that application is treated, but we did offer reasons why it's different.

[00:16:26] Speaker 01:
VAPO is not the word vapor.

[00:16:29] Speaker 01:
So if there's evidence that those two are synonymous, then they should be treated the same.

[00:16:33] Speaker 01:
If there's not evidence that those two words, VAPO is a known synonym or abbreviation for vapor, maybe they shouldn't be.

[00:16:40] Speaker 01:
But in preparation for this argument, I had to go back and I looked at the prosecution history for the VAPO Cup application.

[00:16:47] Speaker 01:
And that is application number 226640.

[00:16:53] Speaker 01:
And the office actions that the examining attorney issued there included similar things to what were issued to Mr. Starr here.

[00:17:01] Speaker 01:
She issued a request for information asking for product information about the goods there.

[00:17:07] Speaker 01:
So even, you know, the marks are different, the goods are not described the same, but the examining attorney was asking for product information there.

[00:17:15] Speaker 01:
And she also raised this potential likelihood of confusion refusal.

[00:17:19] Speaker 01:
The applicant came back saying, hey, I'd like to suspend pending the outcome of Mr. Starr's application.

[00:17:25] Speaker 01:
In the office action that was dated June 14, 2014, I'm sorry, June 26, 2014, the examining attorney maintained the information requirement.

[00:17:34] Speaker 01:
So that application is still under consideration.

[00:17:38] Speaker 01:
There is no reason to presume that the examining attorney who's well aware of what's happening here

[00:17:44] Speaker 01:
would not have an opportunity to consider descriptiveness when that application is resumed.

[00:17:48] Speaker 01:
So I don't think that there's any inconsistency.

[00:17:51] Speaker 03:
That's as good an answer as I've heard in a while.

[00:17:56] Speaker 01:
Thank you.

[00:17:58] Speaker 01:
Turning to the cup issue, which really does seem to be the basis for why Mr. Starr thinks that vapor cup does not merely describe his goods, I would just like to respond to one point where he said that the Yahoo search was not relied on by the board.

[00:18:14] Speaker 01:
If you turn to page A248 of the board decision, it's right before the decision, they say, in summary, based upon the totality of the evidence of record, including any evidence not specifically discussed herein.

[00:18:27] Speaker 01:
So just because they didn't highlight that Yahoo!

[00:18:29] Speaker 01:
search for Captain Straub does not mean that they did not consider it evidence.

[00:18:33] Speaker 01:
It certainly is evidence to show consumers would perceive an object shaped the way Mr. Starr's is to be a cop.

[00:18:41] Speaker 01:
And that also seems to be a fundamental

[00:18:43] Speaker 01:
misconception that Mr. Starr has about descriptiveness.

[00:18:47] Speaker 01:
The shape of product is a feature or characteristic of that product that can ground descriptiveness refusal.

[00:18:53] Speaker 01:
For descriptiveness, we're concerned about when consumers encounter the goods.

[00:18:57] Speaker 01:
Is the mark going to tell them something about a feature or characteristic of the product?

[00:19:01] Speaker 01:
This court's predecessor, going back to 1938, I believe was the case, in Inray,

[00:19:08] Speaker 01:
American Cyanamid, and that's at 99F2, 964, found that the word plank and the mark gypsum plank for slabs of incombustible material was merely descriptive of the form or shape of the goods.

[00:19:22] Speaker 01:
There's another case where stick and chapstick was merely descriptive of the shape or form of the goods.

[00:19:28] Speaker 01:
So the shape is what we're concerned about here.

[00:19:30] Speaker 01:
It doesn't have to function as a cup.

[00:19:32] Speaker 01:
It doesn't have to hold liquid.

[00:19:33] Speaker 01:
It's sufficient if consumers would

[00:19:36] Speaker 01:
upon viewing stars, goods, and the marketplace, understand that cup describes their shape.

[00:19:40] Speaker 03:
But be intentionally confused to believe that someone is sipping a drink out of a straw rather than ingesting whatever it is one ingests using vapor.

[00:19:51] Speaker 00:
Correct.

[00:19:53] Speaker 00:
What about the argument that a mug is really different than a cup?

[00:19:57] Speaker 00:
I mean, even in the coffee world, at least my mother used to be appalled that we wanted to drink out of mugs because she thought it was much more polite to drink out of what was

[00:20:06] Speaker 00:
formed like a cup.

[00:20:07] Speaker 00:
Isn't there a distinction between mugs and cups?

[00:20:11] Speaker 01:
I don't think that there is, Your Honor.

[00:20:13] Speaker 01:
I think that those words, particularly the coffee context, can be used interchangeably.

[00:20:19] Speaker 01:
But even if there is, again, it's not about are we meeting the semantic dictionary definition, which, by the way, does include a definition of being a cup-like object.

[00:20:29] Speaker 01:
That's pretty broad.

[00:20:31] Speaker 01:
So it doesn't have to have a handle.

[00:20:33] Speaker 01:
It doesn't have to hold liquid.

[00:20:34] Speaker 01:
It has to be a cup-like object.

[00:20:35] Speaker 01:
object.

[00:20:36] Speaker 01:
So I don't think that even if a mug might have different characteristics, here the record shows that the shape of Star's goods would be perceived as being a cup.

[00:20:51] Speaker 01:
And as Your Honor pointed out, Mr. Star did not put in any evidence of any incongruity or other meaning that these two words together mean other than their ordinary dictionary meaning.

[00:21:04] Speaker 01:
And as the board found, consumers would understand that it's a vaporizer that's shaped like a drinking cup that's going to produce vapor for inhalation.

[00:21:15] Speaker 02:
Can I ask you about the other issue here, which presumably doesn't matter if you're right about the merits, but what concrete difference is there between the information that they submitted and the kind of putting it in the right boxes information that the examiner appeared to demand?

[00:21:42] Speaker 02:
What was missing in the information

[00:21:44] Speaker 02:
to justify the idea that questions were not answered, as opposed to questions were not answered by putting the answers under the, slotting them under the right questions.

[00:22:01] Speaker 01:
Well, I think we only need to look at what Starr's initial response was to see that he did not answer the questions.

[00:22:10] Speaker 01:
There were 13 originally.

[00:22:13] Speaker 01:
that were maintained.

[00:22:14] Speaker 01:
So the examiner did look.

[00:22:15] Speaker 03:
Where are you in the record?

[00:22:16] Speaker 01:
Oh, I'm sorry.

[00:22:17] Speaker 01:
I'm actually looking at our red brief at page 10, which produces what's in the record at 850, 760, and also in the board opinion.

[00:22:31] Speaker 01:
Starr was instructed to directly answer questions and provide information.

[00:22:39] Speaker 01:
And the questions were very straightforward.

[00:22:42] Speaker 01:
Do the goods produce vapor?

[00:22:45] Speaker 01:
Even to that, as Judge O'Malley pointed out, he did not answer that yes or no question.

[00:22:53] Speaker 01:
The goods are not made of vapor and does not, as its primary function, contain vapor, is what he said.

[00:22:58] Speaker 01:
And then went on to say, the device does not regulate or process vapor.

[00:23:02] Speaker 01:
So the examining attorney did not get a direct answer to that question there.

[00:23:06] Speaker 01:
And it's the kind of question that the TMEP instructs examining attorneys

[00:23:12] Speaker 01:
is an appropriate question to ask.

[00:23:14] Speaker 01:
Because again, for descriptiveness, we're trying to figure out what are the nature of the goods?

[00:23:20] Speaker 01:
What are their features?

[00:23:21] Speaker 01:
What's the meaning of the mark in the component terms?

[00:23:24] Speaker 02:
What's the significance of the mark in the trader industry?

[00:23:27] Speaker 02:
Let me just try to ask the question.

[00:23:32] Speaker 02:
Maybe it's just repeating myself.

[00:23:33] Speaker 02:
So I guess I'm interested in what information was missing as compared to,

[00:23:42] Speaker 02:
What information was missing?

[00:23:43] Speaker 02:
Because if there's no information that's missing that would be responsive to the questions, then we're talking about you didn't present the information in the right form, which is a much less substantial basis for denying relief.

[00:24:02] Speaker 02:
And I'm trying to understand if there's information missing.

[00:24:05] Speaker 01:
I do understand the distinction you're trying to make.

[00:24:07] Speaker 01:
Thank you.

[00:24:08] Speaker 02:
Because even as to the first point, the first sentence is the product is a device which converts herbs into a form in which they may be inhaled.

[00:24:18] Speaker 02:
Geez, where are they inhaling it out of the straw?

[00:24:22] Speaker 02:
Is there any doubt about that?

[00:24:24] Speaker 02:
What information is missing?

[00:24:26] Speaker 01:
Well, the information that's missing from the questions that he asked, he never responded with any kind of product information at all.

[00:24:33] Speaker 01:
So question three was asking for product information.

[00:24:37] Speaker 01:
And if the information was unavailable, to submit similar documentations for goods of the same type, explaining how his would differ.

[00:24:44] Speaker 01:
The requirement there said that the information has to make clear how the goods operate.

[00:24:49] Speaker 01:
Their features are prospective customers and channels of trade.

[00:24:54] Speaker 01:
Starting to say he didn't have any information.

[00:24:56] Speaker 01:
And in fact, the examining attorney was able to find the website, which indicates the product information was available.

[00:25:02] Speaker 01:
He just didn't respond.

[00:25:03] Speaker 01:
And the same thing with the patent.

[00:25:05] Speaker 01:
He didn't respond to that question saying, oh, here I have a design patent.

[00:25:09] Speaker 01:
He put, after his admission that he said the goods resemble a cup, he dropped a footnote saying, see the drawings from the design patent.

[00:25:16] Speaker 01:
That patent is not identified by an application number.

[00:25:19] Speaker 01:
The specification to the patent is not included.

[00:25:22] Speaker 01:
There's more to a design patent application than just the claims.

[00:25:25] Speaker 01:
He just plainly didn't provide the information.

[00:25:29] Speaker 01:
And the same is true for

[00:25:31] Speaker 01:
some of these other questions.

[00:25:32] Speaker 01:
He didn't say whether the words have any significance in the trader industry.

[00:25:39] Speaker 02:
So it's missing.

[00:25:44] Speaker 02:
Was the design patent application, one or more of them, included with the original trademark application?

[00:25:54] Speaker 01:
No.

[00:25:55] Speaker 01:
The examining attorney and the board said this, and this is true, the point of this rule, 2.61b, and it's analogous to rule 105 on the patent side, it's sort of like a discovery tool.

[00:26:07] Speaker 01:
It recognizes that the office needs information from the applicant who's in the best position to provide that information most cheaply and effectively to the office.

[00:26:17] Speaker 01:
And that's particularly true on the trademark side, where our mission is to register eligible trademarks.

[00:26:23] Speaker 01:
But we need the applicant's help.

[00:26:25] Speaker 01:
in making that assessment.

[00:26:27] Speaker 01:
They created the mark.

[00:26:29] Speaker 01:
They know what their goods are.

[00:26:30] Speaker 01:
They know what their industry is.

[00:26:32] Speaker 01:
And this is an intent to use application.

[00:26:34] Speaker 01:
So it's the kind of situation where an examining attorney rightfully can ask these kinds of questions to try and figure out, hey, is there a refusal to be made here or not?

[00:26:46] Speaker 01:
And the applicant has an obligation to participate in that process and respond.

[00:26:52] Speaker 01:
Starr points in his reply brief

[00:26:55] Speaker 01:
to the Hyatt B. Dudas case, saying that we have to make out a prima facie for refusal before he has to respond to an information requirement.

[00:27:05] Speaker 01:
And that is incorrect.

[00:27:07] Speaker 01:
The Hyatt case was not about a rule 105 information requirement.

[00:27:12] Speaker 01:
It was about whether or not the PTO had made out a prima facie case for lack of written description under 112.

[00:27:22] Speaker 01:
whether or not the provision in the MPEP set out enough information there to shift the burden to the applicant to respond.

[00:27:29] Speaker 01:
But Starfruits, which was about 105 in the office's authority and discretion under that rule, was specifically a situation where the examiner needed information from the applicant about their plant variety and any sales under it to determine if a rejection under 102B should have been made in the first place.

[00:27:50] Speaker 01:
It's not at all the case that we have to make out a prima facie case before we can ask the applicant for information.

[00:27:57] Speaker 01:
Sometimes we need it here.

[00:27:59] Speaker 01:
And in the case of an intent to use application, that is true.

[00:28:03] Speaker 01:
And so what I heard Mr. Starr's counsel saying earlier here is basically that he doesn't have to give us anything or participate or help the office to gather evidence.

[00:28:12] Speaker 01:
And that is not so.

[00:28:13] Speaker 01:
And unfortunately, a lot of trademark applicants

[00:28:17] Speaker 01:
share the same view.

[00:28:18] Speaker 01:
We do not have precedent from this court on Rule 2.61b.

[00:28:22] Speaker 01:
We have star fruits, which is great, but a lot of trademark lawyers don't read the patent precedent.

[00:28:27] Speaker 01:
So if the court isn't inclined to write, we would actually welcome guidance on the information requirement issue.

[00:28:34] Speaker 01:
The court has no further questions.

[00:28:48] Speaker 04:
Briefly, Your Honors, first, Judge O'Malley, I wish your mother had been our examiner on this matter.

[00:28:54] Speaker 04:
We might not be in front of the court today if she had been.

[00:28:57] Speaker 04:
I take issue with the statement that we did not provide information.

[00:29:01] Speaker 04:
As we said in our briefs, and I won't go through it all again, it is our belief that we provided answers to all questions, simply not to the examiner's satisfaction.

[00:29:09] Speaker 04:
The examiner and the TTAB have set forth that the information was needed to determine whether or not the mark was generic.

[00:29:16] Speaker 04:
The solution, as they say out and sit on their briefs, to any information that they feel we did not supply is to judge that information against us.

[00:29:26] Speaker 04:
Even with that presumption against us, the examiners still did not find that we were a generic mark.

[00:29:32] Speaker 04:
And further, quoting from the Joint Stock Committee date case, nor does failure to respond to a 2.61b request require refusal to register on the basis where the nature of the requirement was to confirm

[00:29:46] Speaker 04:
but what the record already showed.

[00:29:50] Speaker 04:
Again, based on the example that was given was we didn't respond to whether or not it produces vapor.

[00:29:56] Speaker 04:
Well, we did offer to disclaim vapor.

[00:29:59] Speaker 04:
The application says that what the product does is a vaporizer that vaporizes vaporizable parts of herbs and whatever.

[00:30:09] Speaker 04:
It's hard to see, and we have never argued that it doesn't produce vapor.

[00:30:13] Speaker 04:
We believe, acknowledge that it does.

[00:30:16] Speaker 04:
It is hard to believe why the examiner felt the need to ask that as part of three separate questions.

[00:30:21] Speaker 02:
What about the reference to the design patent applications, where you referred for a description to design patent applications, which I think, as I understand it, you didn't even provide the numbers for?

[00:30:35] Speaker 04:
We provided the drawings, which are the description, your honor.

[00:30:38] Speaker 04:
Those were provided to the examiner in the response to the first office action.

[00:30:42] Speaker 04:
That's why they were in the record, which one of your honors cited earlier.

[00:30:46] Speaker 04:
Because we had provided that to the examiner.

[00:30:49] Speaker 04:
And in fact, my time is up.

[00:30:51] Speaker 04:
May I finish the thought?

[00:30:53] Speaker 00:
Yes.

[00:30:54] Speaker 04:
That was part of our response in that we had provided all the relevant aspects of the design patent.

[00:31:01] Speaker 04:
And there was nothing more to provide there, just as we had nothing more to provide on a product information, which the examiner had everything there was.

[00:31:08] Speaker 04:
There was no additional information to provide the examiner that would have changed the outcome

[00:31:15] Speaker 04:
that would have changed the examiner's view.

[00:31:17] Speaker 04:
Thank you.

[00:31:19] Speaker 04:
OK.

[00:31:19] Speaker 04:
Thank you.