[00:00:00] Speaker 05: 15, 1939, Southwestern Management against Delmonico backwards. [00:00:07] Speaker 05: I'm not going to say the word. [00:00:10] Speaker 05: Please. [00:00:19] Speaker 00: May it please the court. [00:00:22] Speaker 00: I ask the court to reinforce the, quote, policy of rewarding those who first seek federal registration [00:00:29] Speaker 00: end quote, of their trademark. [00:00:32] Speaker 00: This court's predecessor, the CCPA, announced this policy in its 1970 decision in Ray Beatrice Foods. [00:00:39] Speaker 00: That case also involved the concurrent use proceeding on appeal from the trademark trial appeal board. [00:00:45] Speaker 00: The policy of rewarding those who first seek federal registration has been reaffirmed by the CCPA in the Wiener King case in 1980, as well as by other district courts. [00:00:57] Speaker 00: Since 1970, [00:00:59] Speaker 00: Congress has amended the Lanham Act in ways that augment the policy. [00:01:03] Speaker 05: But how do you think that the policy bears on whether the concurrent registration may be denied if there is a sufficient likelihood of confusion? [00:01:19] Speaker 00: I think in determining whether there is a likelihood of confusion, in the context of concurrent use proceeding, the courts have always indicated who was the first to [00:01:29] Speaker 00: apply to register their trademark. [00:01:32] Speaker 00: That is one of the factors that is to be considered in connection with that likelihood confusion analysis. [00:01:39] Speaker 05: Do I understand your question? [00:01:43] Speaker 05: But translate that into a rule. [00:01:44] Speaker 05: Does that mean that the board here erred by placing the burden on the likelihood of confusion issue on the wrong party, or what exactly? [00:01:54] Speaker 00: No. [00:01:55] Speaker 00: The board erred by basically [00:01:57] Speaker 00: disregarding that policy and giving essentially no weight to the important factor of Southwestern management's first and early application to seek registration of its trademark. [00:02:11] Speaker 00: It gave no weight to that. [00:02:13] Speaker 05: And that was an error. [00:02:15] Speaker 05: But what I'm trying to understand is how that weight is to be implemented. [00:02:22] Speaker 05: Is it because that shifts the burden on likelihood of confusion? [00:02:26] Speaker 05: Is it because [00:02:27] Speaker 05: in considering whether there is a likelihood of confusion, a first applicant is less likely to generate confusion or something. [00:02:43] Speaker 05: It seems to me one needs to translate that into what exactly to do with likelihood of confusion. [00:02:50] Speaker 00: The case law to date has not said that the party who first seeks registration [00:02:56] Speaker 00: has a presumptive right to the nationwide protection for its trademark. [00:03:02] Speaker 00: The case law has not done that today. [00:03:03] Speaker 00: Whether it should be that, should be transformed to that by this court in this case today, I leave for the court's discretion. [00:03:11] Speaker 01: The presiding judge and you were exploring [00:03:16] Speaker 01: the possibility of a link between the fact that one is the first to apply and whether there's going to be a likelihood of confusion if the mark is granted, right? [00:03:26] Speaker 01: And what I don't understand is why the first to apply is relevant at all to a likelihood of confusion. [00:03:34] Speaker 01: Give me a fact circumstance. [00:03:37] Speaker 01: The presiding judge suggested that, well, maybe the first person to apply maybe has some respect for the system or something and will maybe do things in such a way that there couldn't be confusion, which seems utterly far-fetched to me. [00:03:52] Speaker 01: Can you improve on them? [00:03:54] Speaker 01: I don't mean to criticize the presiding judge. [00:03:56] Speaker 01: Can you improve on that? [00:03:57] Speaker 01: Give me a hypothetical where the fact that someone was the first to apply tells you anything about whether there would or would not be a likelihood of confusion. [00:04:07] Speaker 00: All right. [00:04:08] Speaker 00: Please. [00:04:09] Speaker 00: All right. [00:04:10] Speaker 00: I'll do my best. [00:04:12] Speaker 00: If one applies for a federal registration in the current scheme of things, especially on an actual use basis, and the registration issues, then the effective date of nationwide constructive notice and use is retroactive back to the date of the application. [00:04:29] Speaker 00: Now, let's say that later on, some parties then move to cancel the registration as concurrent users. [00:04:36] Speaker 00: Well, the nationwide constructive use went back to the date of the application. [00:04:42] Speaker 00: So presumptively, the applicant would have had nationwide notice and use as of the date of this application if the registration had issued. [00:04:52] Speaker 01: Had the right, but may not have done it. [00:04:56] Speaker 01: There may not have been any actual nationwide use. [00:04:59] Speaker 01: You had this presumptive right to it that he didn't do anything about. [00:05:02] Speaker 00: Well, the statute says that it is constructive. [00:05:06] Speaker 00: nationwide notice and use. [00:05:08] Speaker 00: It is as though. [00:05:10] Speaker 01: You're going from something that's constructive to something that's actual. [00:05:13] Speaker 01: The likelihood of confusion is actual. [00:05:17] Speaker 01: We're looking for a likelihood of actual, not hypothetical, confusion. [00:05:22] Speaker 01: Right? [00:05:27] Speaker 01: Isn't that the nature when you're talking about likelihood of confusion, when we say, well, there's likely to be confusion in a mark? [00:05:35] Speaker 00: And we're trying to minimize or eliminate the likelihood confusion by segregating the registration rights among the parties, respective parties, to various geographic territories or other restrictions so as to minimize that likelihood confusion. [00:05:54] Speaker 00: And one of the factors to consider is if you were first to apply and you would obtain your registration, your nationwide constructive [00:06:02] Speaker 00: notice and use would have been throughout the United States going back to the day to day application. [00:06:06] Speaker 00: Here that was 2003. [00:06:07] Speaker 05: Can I ask, I know that you are appealing the rejection of the current concurrent use registration application which covers the whole country with a certain number of islands taken out. [00:06:29] Speaker 05: What [00:06:30] Speaker 05: Given the board's opinion here, what room do you think there is for a more geographically limited application you might file? [00:06:42] Speaker 05: Or do you think that you just can't file one? [00:06:47] Speaker 05: Because the board, if I remember right, at the end of the opinion said, put in some words to say, we're just ruling on the one that we have in front of us, and maybe something narrower would be permissible. [00:06:59] Speaker 00: That's a great question. [00:07:00] Speaker 00: I think there is room from Southwestern standpoint to modify the 40 mile radius and things like that. [00:07:06] Speaker 00: That's not sacrosanct at all. [00:07:09] Speaker 00: Probably not 45 miles. [00:07:10] Speaker 00: That probably wouldn't change things. [00:07:13] Speaker 00: But the board gave us no guidance at all as to what it considered to be the respective geographic rights of the parties or any indication of what it thought might be appropriate. [00:07:24] Speaker 00: Other limitations on the party's uses of their trademarks that might [00:07:28] Speaker 00: eliminate elected confusion. [00:07:31] Speaker 00: So we have no guidance on that from the board. [00:07:33] Speaker 00: And yet there is a statutory mandate that the board shall determine the respective rights to registration of the parties. [00:07:41] Speaker 00: So we are a bit in the dark. [00:07:42] Speaker 00: And I'm not sure how the board would go about that, except maybe to have a behind the scenes discussion with the parties or to just flat out come through with a ruling. [00:07:51] Speaker 00: And I know saying to the fact, I know that this registration has requested this 40 mile radio around these three cities. [00:07:58] Speaker 00: However, we deem that the proper scope of the concurrent use application should be this, and then just come out with an order and a ruling to the fact of what they think should be the proper scope of any limitations geographically or otherwise. [00:08:18] Speaker 04: So what do you think should have been the progression of the legal framework on the facts of this case that the board should have used? [00:08:30] Speaker 04: I guess, for example, is part of your argument that they shouldn't have engaged in a likelihood of confusion inquiry? [00:08:38] Speaker 00: Well, the likelihood of confusion analysis under the DuPont factors should never have been used, because those factors always gravitate towards a finding of a likelihood of confusion in a concurrent use situation, always. [00:08:52] Speaker 00: And if there were no likelihood of confusion, there would be no need for a concurrent use application. [00:08:58] Speaker 00: There's no likelihood of confusion. [00:09:00] Speaker 00: So if you look at some of the DuPont factors, such as the similarity of the marks in sight, sound, and meaning, the similarity of the goods and services in connection with the parties' use of respective marks, the similarity of the channels of distribution that the parties use for their trademarked goods or services, any instances of likely confusion, and so forth. [00:09:18] Speaker 00: The first several factors are given. [00:09:20] Speaker 00: Yes, the marks are very, very similar. [00:09:22] Speaker 00: Yes, the goods and services are extremely similar. [00:09:25] Speaker 04: Is that necessarily the case in every concurrent [00:09:28] Speaker 04: This is concurrent use is new to me and I sort of look at it as a relic from a hundred years ago, but given the situation we have here, it's not always the case in one of these concurrent use proceedings. [00:09:44] Speaker 04: Is it that we're dealing with identical marks for the identical services? [00:09:48] Speaker 00: I'm not saying identical marks or identical services, all concurrent use situations, but they're so extremely similar in [00:09:55] Speaker 00: the marks so extremely similar in the goods and services, so extremely similar in the channels of trade and distribution, that that's why we have these concurrent use situations. [00:10:04] Speaker 00: If they weren't similar, then there would be no need for a concurrent use application or consideration. [00:10:11] Speaker 05: So that's why I think... But isn't the classic concurrent use situation for which the provision is designed one that essentially presumes a real local [00:10:24] Speaker 05: that one user is quite local and therefore it may be the identical mark in Maine versus California, but then the Maine business, nobody's going to get confused going into the shop with the same name in California just because somebody in Maine has it. [00:10:45] Speaker 05: So that it's true that you would have even a restaurant, same line of business, same name, but nevertheless you could establish no likelihood of confusion. [00:10:55] Speaker 05: even taking into account all of the DuPont analysis. [00:10:59] Speaker 00: I think that is the majority of cases in Concord use, but is by no means the sole situation Concord use proceeds. [00:11:07] Speaker 00: In fact, the N. Ray Batre Spood's case involved major chunks of territory in the United States, which were carved between the two parties there. [00:11:17] Speaker 05: You are into your rebuttal time, unless you have something further. [00:11:21] Speaker 05: Why don't you reserve that, and we'll hear from this. [00:11:25] Speaker 05: Both of the other two parties. [00:11:31] Speaker 02: Good morning, Your Honors. [00:11:32] Speaker 02: I'm Debbie Squires, and I represent Emeril's Food of Love, one of the accepted users in this proceeding. [00:11:38] Speaker 02: So I'm going to turn first to what Southwestern has essentially lost sight of in these proceedings. [00:11:44] Speaker 02: And I think that's what their burden was here, that in order to issue a concurrent use registration, it's very important that there's no likelihood of confusion. [00:11:54] Speaker 02: You know, he's talked about that the marks and services, DuPont shouldn't have applied because the marks and services are identical. [00:11:59] Speaker 02: Well, that's the exact problem with the concurrent use registration. [00:12:03] Speaker 02: And what the board is concerned about and should be concerned about is that consumers are going to be confused. [00:12:08] Speaker 05: Can I ask you, do you think that under this board decision or under your position that they could get a registration anywhere or is [00:12:22] Speaker 05: Chef Emeril? [00:12:23] Speaker 05: Is that the one? [00:12:24] Speaker 05: Is it so famous everywhere that there would be a likelihood of confusion, essentially everywhere, maybe even including upstate New York? [00:12:37] Speaker 02: I think what came out of trial and what we knew before but was certainly proven here was that Chef Emeril and his restaurants, Delmonica restaurants, he has two of them, are so famous across the United States that now [00:12:50] Speaker 02: you can't carve out a territory. [00:12:53] Speaker 02: And I understand that the board did get into some issues. [00:12:56] Speaker 02: It had some discussion about its right to use the mark. [00:13:00] Speaker 02: Obviously, it's dictated the board has no authority. [00:13:03] Speaker 01: Remind me, were there specific pieces of evidence that proved the point you just made? [00:13:08] Speaker 01: Sure, of course. [00:13:12] Speaker 02: The first really objective evidence that we put in, and I think it's something that really makes this case unique from some of the [00:13:19] Speaker 02: prior concurrent use registry cases that dealt with hotels and restaurants. [00:13:23] Speaker 02: We put in objective evidence that showed that customers at the Delmonico restaurants, Emeralds Delmonico restaurants in Las Vegas and New Orleans come from all over the country. [00:13:34] Speaker 02: We actually flew to Arizona, took the testimony of American Express, and put in reports showing exactly what percentages of customers dine, excuse me, what [00:13:48] Speaker 02: customers who charge with American Express cards at the Las Vegas location, the New Orleans location. [00:13:53] Speaker 01: So the theory is what they learn when they go to the New Orleans or to Las Vegas is they take it back home. [00:14:01] Speaker 01: Burnished in their memory? [00:14:02] Speaker 02: Yes, I'm sorry. [00:14:03] Speaker 01: I thought you meant takeout food. [00:14:05] Speaker 02: Yes, no, that is correct. [00:14:07] Speaker 02: They do. [00:14:08] Speaker 02: They don't forget these restaurants. [00:14:10] Speaker 02: We put in evidence of sales. [00:14:12] Speaker 02: I mean, the one in Las Vegas is one of the highest grocery restaurants. [00:14:16] Speaker 01: Do you need proof of length to prove that second point? [00:14:19] Speaker 01: There are some people who probably go someplace and see something and they didn't really focus on the name. [00:14:24] Speaker 01: They were in Vegas to gamble. [00:14:27] Speaker 01: They were in New Orleans to drink during the music festival. [00:14:30] Speaker 01: They can't even remember the name of the restaurant they went in. [00:14:33] Speaker 01: But don't you need an element of proof to show that the people who, for your theory, the people who traveled home, you know, carried with them a matchbook or something, a memory of the fabulous meal that they connect with the name. [00:14:48] Speaker 02: Right. [00:14:49] Speaker 01: Or their credit card. [00:14:50] Speaker 01: There's no such evidence in this record, is there? [00:14:53] Speaker 01: Of evidence that they took home? [00:14:54] Speaker 01: All you have is that a lot of people travel from all over the world to come to New Orleans or Las Vegas. [00:14:59] Speaker 01: No, not at all, Your Honor. [00:15:00] Speaker 02: That's actually, we put in evidence of Emeril as, Chef Emeril, as essentially a walking billboard. [00:15:09] Speaker 02: You know, while someone has a traditional... What was the piece of evidence that showed that fact? [00:15:14] Speaker 02: Of course. [00:15:15] Speaker 02: Emeril had a show called Emeril Live. [00:15:17] Speaker 02: on the Food Network. [00:15:19] Speaker 02: And on that show, at least six episodes specifically took place at the Delmonico restaurants. [00:15:25] Speaker 02: And they were called Delmonico that was in the title. [00:15:28] Speaker 02: Those aired all over the country. [00:15:30] Speaker 02: We put in evidence of how many people saw them. [00:15:32] Speaker 02: And this is just the beginning. [00:15:34] Speaker 02: He went on his serious radio show. [00:15:36] Speaker 02: He talked about his Delmonico restaurants. [00:15:39] Speaker 02: He's regularly on Good Morning America, where he would, again, talk about it, a morning program. [00:15:46] Speaker 02: Uh, other national shows. [00:15:47] Speaker 02: Uh, he wrote a book. [00:15:49] Speaker 02: I'm sorry. [00:15:49] Speaker 02: He wrote a book called Delmonico, a restaurant with the past. [00:15:52] Speaker 01: So like if it was Good Morning America, your view would be that any, any area of the country that broadcasts that show would then the knowledge of this market goes there. [00:16:03] Speaker 01: So upstate New York, presumably they have a Good Morning America. [00:16:07] Speaker ?: Yes. [00:16:07] Speaker 02: And when he wrote this book, he actually went on a book tour with it. [00:16:11] Speaker 02: So that book tour took him all over the country, including New York. [00:16:15] Speaker 02: He went on the home shop. [00:16:16] Speaker 02: That book was sold on the home shopping network and online service. [00:16:20] Speaker 02: The book was promoted in bookstores. [00:16:28] Speaker 02: Publications. [00:16:28] Speaker 02: We put in a huge volume. [00:16:31] Speaker 05: I guess that's a legal question because you understand the way that all of the trademark laws fit together better than I. It is a notable fact here that [00:16:44] Speaker 05: It's been almost 20 years since Chef Emeril opened the two restaurants and he hasn't in fact expanded, I guess. [00:16:54] Speaker 05: I guess, was there an attempt in Georgia or someplace that failed? [00:16:59] Speaker 05: There are two restaurants, New Orleans and then Las Vegas. [00:17:02] Speaker 05: So how does this, the trademark statute deal with, I guess, the possibility that [00:17:13] Speaker 05: There is no current possibility of expansion into these other markets that it's been a very, very long time. [00:17:25] Speaker 05: Is that irrelevant because as long as he keeps going on Good Morning America and people keep buying the books, then diners in Syracuse are still going to be confused? [00:17:40] Speaker 02: That is true. [00:17:42] Speaker 02: I think that there is a distinction here between, you had raised before the idea of a local establishment, which just serves customers in the area and people in California. [00:17:52] Speaker 02: If it's in New York, they're not going to be confused. [00:17:55] Speaker 02: These are very fact-specific cases, and Wiener King was clear that you have to do an intense fact analysis. [00:18:03] Speaker 05: Outside the concurrent registration context, can [00:18:07] Speaker 05: You sue them for using the name in Syracuse and Utica and Rochester and Albany? [00:18:13] Speaker 05: Well, what is issue right now is- No, no, I know that's not an issue now. [00:18:18] Speaker 05: But if there's a likelihood of confusion, can you prevent them from using the name? [00:18:25] Speaker 02: I think before the board, the issue is the application is applied for, which is restaurant services. [00:18:30] Speaker 02: And then the second analysis before a court is a different one. [00:18:33] Speaker 02: And that's as to the motor style of restaurant, [00:18:36] Speaker 04: Let me try getting at the same question, or what I think is the same question. [00:18:43] Speaker 04: You have a currently pending application for an unrestricted registration for Delmonico. [00:18:49] Speaker 04: Is that right? [00:18:50] Speaker 02: That's correct. [00:18:51] Speaker 04: Okay. [00:18:52] Speaker 04: And so if you succeed, I assume that's been stayed pending the outcome of this proceeding. [00:19:02] Speaker 04: Let's say this case gets affirmed. [00:19:03] Speaker 04: Let's say that now you can proceed with your application. [00:19:07] Speaker 04: You probably are going to have to face an opposition. [00:19:11] Speaker 04: But even if you were to succeed all of that and then you get a registration, then what does that mean for the other two parties here in the court? [00:19:20] Speaker 04: Does that mean you would then have the right to prevent them from using the Delmonico mark, whether it's 56 Beaver Street or in Syracuse in Rochester? [00:19:31] Speaker 02: I think that is a result, Your Honor, because I think that finding, I mean, I guess the opening question is whether B&B would find that, whether you could take that as a precedent and use it in a federal court, that's an open question. [00:19:46] Speaker 02: But the answer is yes. [00:19:47] Speaker 02: If likely the confusion is found, then yes, you could go and you could stop them. [00:19:56] Speaker 01: I think that hasn't happened yet. [00:19:58] Speaker 01: That, no, no. [00:19:59] Speaker 01: There are no laws. [00:20:00] Speaker 01: Because in your desire to obtain the sole registration, you have to show there's no likelihood of confusion? [00:20:08] Speaker 01: No. [00:20:08] Speaker 01: You'll be met with a claim that there will be a likelihood of confusion because there's been a holding in this case that there is. [00:20:14] Speaker 02: It's very confusing. [00:20:15] Speaker 02: This is true. [00:20:16] Speaker 02: But what is crystal clear is that there was a burden on the part of Southwestern. [00:20:20] Speaker 02: Southwestern, and the statute is clear, there's two prerequisites to getting a concurrent use registration. [00:20:25] Speaker 02: There's a jurisdictional one. [00:20:27] Speaker 02: which isn't really on a field here, it's not disputed. [00:20:29] Speaker 02: The second one is that the statute itself speaks to that no confusion can arise if this concurrent use of registration is issued. [00:20:38] Speaker 02: And that was a burden they had. [00:20:40] Speaker 02: There was no testimony put forth by Southwestern, no notice of reliance, essentially no evidence. [00:20:45] Speaker 02: In fact, the exact opposite happened. [00:20:48] Speaker 02: What happened when I asked Southwestern's officer, John Wade Sr., who founded the company, I asked him, [00:20:56] Speaker 02: How is it, are these two restaurants going to be confused? [00:20:59] Speaker 02: In your opinion, are Emma's restaurants confusing with yours? [00:21:03] Speaker 02: And his response was no, because the styles of the restaurants are different. [00:21:08] Speaker 02: He said, and I also use Italian steakhouse in my name. [00:21:12] Speaker 02: And it was a fundamental misunderstanding in this case of what was at issue before the board and what Southwestern had to prove. [00:21:20] Speaker 02: Southwestern didn't prove that the issue as to the style of restaurant [00:21:26] Speaker 02: was not before the board because the applied for mark is Delmonico's and the services are restaurant services. [00:21:32] Speaker 04: Go back to my hypothetical. [00:21:34] Speaker 04: So my hypothetical was if this case were to be affirmed and then you go back and seek an unrestricted registration for the mark Delmonico's for restaurant services, how would that be able to [00:21:52] Speaker 04: be approved in the face of the fact that we have multiple users throughout the country that are using Delmonicos and therefore that is strong evidence that consumers, at least in those respective locales, would be confused by these multiple uses of Delmonicos for restaurant services. [00:22:14] Speaker 02: Your Honor, what is really at issue right now is one application, and I appreciate... No, I have a hypothetical. [00:22:20] Speaker 02: I know. [00:22:20] Speaker 02: You're predicting into the future, and I appreciate that that is at the top of the mind for you. [00:22:25] Speaker 02: But with respect to our unrestricted application, Beatrice Foods makes clear that the senior user, which is Emeril's, the senior user gets prima facie the entire United States except for any carved out territories by junior users. [00:22:43] Speaker 02: So we prima facie are entitled to the entire United States. [00:22:47] Speaker 02: And that gives us the right to a national registration. [00:22:53] Speaker 02: But here at issue is an application by Southwestern. [00:22:57] Speaker 02: As the board may clear, our application, which is behind, it has to clear several hurdles just to even get to that point, just to register. [00:23:06] Speaker 04: And we're not there yet. [00:23:07] Speaker 04: I'm not that familiar with trademark law, just so I understand. [00:23:10] Speaker 04: If a junior user has in fact been using a mark in a particular location for 20 years or 100 years, but nevertheless they're junior to the applicant who is deemed to be the senior user, can the senior user really get an unrestricted registration that can thereby enjoin the [00:23:35] Speaker 04: hundred-year junior user from continuing to use the mark in their specific location? [00:23:42] Speaker 02: Yes, theoretically they can. [00:23:47] Speaker 01: I don't think that we want to put you in any type of a box. [00:23:50] Speaker 01: I mean, you've got a proceeding that's going to go forward at the patent office and you don't want to be met with some argument over there that you conceded something here. [00:23:58] Speaker 02: I understand that. [00:24:00] Speaker 02: So, Your Honors, if you have any other further questions, I think I might have run over my time and used up some of them. [00:24:12] Speaker 03: May it please the court, my name is Dick Downing, I represent accepted user of Cinemolid. [00:24:18] Speaker 03: How do you say the word? [00:24:19] Speaker 03: Pardon? [00:24:20] Speaker 03: How do you say the word? [00:24:20] Speaker 03: Oh, Cinemolid. [00:24:22] Speaker 03: Delmonico's back. [00:24:24] Speaker 03: I'm not going to even try. [00:24:26] Speaker 03: Well, I've worked in a variety of different ways. [00:24:29] Speaker 01: This is New York Delmonico. [00:24:30] Speaker 03: This is one in New York City, yes sir. [00:24:32] Speaker 01: Down in Wall Street, isn't that where it was? [00:24:33] Speaker 03: It's in the Wall Street area, it's on Beaver Street. [00:24:36] Speaker 01: Was it open in the early 60s, do you remember? [00:24:40] Speaker 03: It's a long history, and we don't claim a chain of title going back to the original restaurant. [00:24:47] Speaker 03: Our restaurant, the one we claim a chain of title going back to, is open to 1998. [00:24:51] Speaker 01: I worked in Wall Street in the 60s. [00:24:55] Speaker 01: I think I ate there, so I have full disclosure, but it doesn't affect my judgment in any way. [00:25:00] Speaker 03: You very well might have. [00:25:01] Speaker 03: I'd like to start by focusing on the premise for this entire appeal. [00:25:09] Speaker 03: And that's that Beatrice Foods replace the DuPont factors in concurrent use proceedings. [00:25:16] Speaker 03: That's clearly not the case. [00:25:18] Speaker 03: There's no support for that whatsoever. [00:25:20] Speaker 03: To the contrary, the Beatrice Food Court expressly said that the touchstone of any concurrent use proceeding is whether or not the registration sought will result in a likelihood of confusion. [00:25:35] Speaker 03: And if you go back to the statute, which is section 2D of the Lanham Act, [00:25:39] Speaker 03: It says that the concurrent use of registration will only be permitted when the conditions and limitations set forth in that application would avoid a likelihood of confusion. [00:25:51] Speaker 03: To repeat, the burden is on the appellant in this case to show that its registration, the registration it sought for Delmonico's for restaurant services would not cause a likelihood of confusion. [00:26:05] Speaker 03: And it clearly hasn't met that burden. [00:26:06] Speaker 04: Did Beatrice Foods say something like if [00:26:09] Speaker 04: Southwestern is the senior user here, then it's entitled to a prima facie finding that it gets a registration over the entire United States? [00:26:20] Speaker 03: I don't think it said that. [00:26:21] Speaker 03: I think it's very complicated. [00:26:23] Speaker 03: I'm not trying to say this is simple. [00:26:25] Speaker 03: It said something like that, right? [00:26:27] Speaker 03: There are certain findings in Beatrice Food and in Wiener King and some of the other cases. [00:26:32] Speaker 03: I can show you cases where the first file was not the party that won. [00:26:37] Speaker 04: I'm not talking about the first file, I'm talking about the senior user of the mark. [00:26:42] Speaker 04: That's correct. [00:26:44] Speaker 04: deemed to be the senior user, the prior user, then they're entitled to some prima facie consideration that they're entitled to. [00:26:52] Speaker 03: There may be certain presumptions that apply, but they're all rebuttable. [00:26:55] Speaker 04: I can show you cases where... That's fine, but I just want to make sure that we have the same understanding of what Beatrice Foods said right there in that section of the opinion. [00:27:03] Speaker 03: I believe that's what it said. [00:27:04] Speaker 03: Okay. [00:27:05] Speaker 03: But again, the first to use is not always the winner. [00:27:10] Speaker 03: In many cases, it's not. [00:27:11] Speaker 03: The first to file is not always the winner. [00:27:14] Speaker 03: The first to register is not always the winner. [00:27:17] Speaker 03: This is a very, very complex case. [00:27:19] Speaker 05: Can I ask you a question? [00:27:20] Speaker 05: Remind me, what did the board find about, let's call it, priority dates for users as between you and the Emerald? [00:27:33] Speaker 03: Between Osenwa and Emerald? [00:27:34] Speaker 05: Yes. [00:27:35] Speaker 03: The board found that Emerald had the priority date. [00:27:38] Speaker 05: And that's because it basically reached back to the prior [00:27:42] Speaker 05: Chain of owners. [00:27:43] Speaker 03: That's correct. [00:27:44] Speaker 03: The board made that finding. [00:27:45] Speaker 03: We did not argue against that. [00:27:47] Speaker 03: We were not given the opportunity to submit a rebuttal brief on that. [00:27:52] Speaker 05: Is that going to have some forward-looking effect when they go for their national registration and try to stop you? [00:27:59] Speaker 03: It's a very complex proceeding. [00:28:01] Speaker 03: It's certainly something they will try and rely on. [00:28:03] Speaker 03: We think that we will have the opportunity to rebut that. [00:28:06] Speaker 03: One of the problems with this proceeding, and you mentioned it, generally concurrent use proceedings involve two companies [00:28:12] Speaker 03: one of which is expanding or at least larger than one company, which is basically in a small area and doesn't have a reputation beyond a small enclave geographically. [00:28:23] Speaker 03: This is not that case. [00:28:25] Speaker 03: These are three companies, two of which have national reputations or very strong reputations, one of which, Southwestern, is a fine company, but it does not have a national reputation or any type of reputation beyond a rather limited area in upstate New York. [00:28:40] Speaker 03: There's no evidence of any [00:28:42] Speaker 03: publicity for Southwestern Stillmonica restaurants. [00:28:46] Speaker 03: There's no evidence of any public renown. [00:28:48] Speaker 05: Has the Orlando place opened yet? [00:28:50] Speaker 05: I know it hadn't. [00:28:51] Speaker 03: As of the close of testimony, it had not opened. [00:28:53] Speaker 03: Right. [00:28:53] Speaker 03: So that's why I asked the question. [00:28:55] Speaker 05: Tell me something outside the record. [00:28:57] Speaker 03: I think it probably has. [00:28:59] Speaker 03: I haven't seen it. [00:29:03] Speaker 01: You must have much more familiarity with these concurrent. [00:29:08] Speaker 01: use cases than we do. [00:29:10] Speaker 01: It sounds to me like there are cases that are ripe for settlement between the parties. [00:29:16] Speaker 01: Sit down and agree and say, you know something, I'll use my mark here, and you use your mark over there, and we won't sue each other. [00:29:27] Speaker 03: Concurrent use cases are very rare. [00:29:29] Speaker 03: I've only had two. [00:29:30] Speaker 03: And that may be two more than I've had. [00:29:33] Speaker 03: Two more than maybe other attorneys have had. [00:29:35] Speaker 03: They're very rare. [00:29:35] Speaker 03: They can be very complicated. [00:29:38] Speaker 03: They do lend themselves to settlement in certain cases. [00:29:40] Speaker 03: And the conditions and limitations are not always geographical. [00:29:45] Speaker 03: They could be the manner in which the mark is displayed or used, or even the type of goods or services offered under the mark. [00:29:53] Speaker 03: But this is a very complex situation. [00:29:56] Speaker 03: It does not lend itself to the simplistic type of rote analysis that Southwestern's offered here. [00:30:03] Speaker 03: This is unlike any case involving restaurants [00:30:07] Speaker 03: or hotels that I'm familiar with. [00:30:11] Speaker 03: And I think that the board was correct in finding that given the conditions and limitations in the application that Southwestern seeks, it would not avoid a likelihood of confusion. [00:30:23] Speaker 03: And Southwestern really doesn't make that argument. [00:30:25] Speaker 01: Do you think the world that we're living in today, as opposed to the world that [00:30:31] Speaker 01: Judge Baldwin was living in Beatrice Foods. [00:30:35] Speaker 01: Makes any difference for all this analysis? [00:30:37] Speaker 01: Social media is what I'm thinking about in particular. [00:30:41] Speaker 01: Your colleague on your side of the fence here, at least, was operating the TV and all the rest of the way that information is circulated. [00:30:50] Speaker 03: I think that the internet certainly has changed things in that regard. [00:30:56] Speaker 03: And I think the case law does say that a certain amount of [00:30:58] Speaker 03: overlap is permissible, certainly southwestern-side in those cases. [00:31:02] Speaker 03: But in this particular case, I think that going back to conditions and limitations that are in this application, they're purely geographical, and they're purely way far too confining to avoid a likelihood of confusion. [00:31:19] Speaker 03: Sorry, that's my timer. [00:31:25] Speaker 01: Podium shake. [00:31:26] Speaker 01: It's my personal, I'm sorry, I was using an iPhone to time. [00:31:37] Speaker 03: I wasn't sure that I'd have a timer here. [00:31:39] Speaker 05: Well, if you have nothing else, I don't think we have any further questions. [00:31:42] Speaker 03: Thank you. [00:31:58] Speaker 00: My adversaries have commented about the fame of their trademarks. [00:32:02] Speaker 00: Let it be clear, the Trademark Crown Appeal Board found there was no fame to no degree anywhere by either of their trademarks. [00:32:10] Speaker 00: What they did was say something, well, there's some reputation through a substantial portion of the United States for each of them. [00:32:16] Speaker 00: There's no case law talking about what does reputation mean. [00:32:20] Speaker 00: My adversaries have not come under any case law to support the finding of the reputation, what that means, and how it can be injected into a likely confusion analysis. [00:32:31] Speaker 05: Why isn't that just a colloquial way of talking about the reason that there will be confusion? [00:32:39] Speaker 05: Lots and lots of consumers know about this, and so they will be confused in some significant numbers when you had the mark. [00:32:50] Speaker 05: everywhere except Las Vegas and New Orleans, and I guess a piece of New York City. [00:32:57] Speaker 00: Is that the finding that lots and lots of people, I'm not sure what reputation means, lots and lots of people or some people? [00:33:04] Speaker 05: Enough that there would be a likelihood of confusion. [00:33:08] Speaker 00: Then I think that Southwestern would challenge that determination by the TTAB. [00:33:15] Speaker 00: There's been evidence of some dispersion of the trademarks [00:33:19] Speaker 00: in all concurrent use proceedings, the Holladians case, Winnarkin case, all involving restaurants and hotels, customers come from everywhere in these concurrent use cases. [00:33:30] Speaker 00: And the advertising overlaps. [00:33:32] Speaker 00: Holladians was making national advertisements and so forth. [00:33:37] Speaker 00: And the case law said, well, we understand that. [00:33:40] Speaker 00: In the context of restaurants and hotels, people come from all over the country. [00:33:45] Speaker 00: You got a hotel in Arizona, people come from all over, down there in the wintertime to go at that hotel. [00:33:50] Speaker 04: But just to get to the underlying point of the question, it seems entirely appropriate for the board to try to inquire what is the relative territorial reach of each of these brands in terms of understanding whether there would be a likelihood of confusion. [00:34:07] Speaker 04: So in terms of trying to understand what's the relative reputation of a mark and what's the reach of that reputation, [00:34:15] Speaker 04: That just logically seems like a natural inquiry one would want to make. [00:34:20] Speaker 04: Are you resisting whether the board was correct as a legal matter from even making that kind of fact finding? [00:34:28] Speaker 00: It's logical to make that analysis, Your Honor. [00:34:31] Speaker 00: Yes. [00:34:32] Speaker 00: But here, there's no consumer awareness surveys. [00:34:36] Speaker 00: There was no indication of the numbers of the relevant population to be considered in connection with Arkansas or Minnesota or wherever. [00:34:44] Speaker 00: and how much there was a saturation of those customers by either a Simulant or Emeralds. [00:34:52] Speaker 00: And strangely enough, each of them contend that they have a nationwide reputation. [00:34:56] Speaker 00: So when somebody in Utah thinks of Delmonico's or Delmonico, a Simulant says, well, they think of us in New York City. [00:35:03] Speaker 00: And Emeralds says, no, they think of us in New Orleans or Las Vegas. [00:35:06] Speaker 00: How can that be? [00:35:07] Speaker 00: How can somebody sitting in Utah hear the term Delmonico's or Delmonico restaurant and simultaneously think, [00:35:14] Speaker 00: you know, New York, no, no, Las Vegas, or so it can't be. [00:35:19] Speaker 00: It cannot possibly be that this overlapping reputation has such a degree of saturation as to be significant. [00:35:28] Speaker 00: And the underlying evidence is lacking for the determination made by the Trade Montrell and Peer War that there's this reputation in some sort of substantial portion of the United States. [00:35:38] Speaker 00: Also looking forward, a lot of the reputations, put it that way, [00:35:44] Speaker 00: was based on Emeril Lagasse and his TV show and so forth, and some of the advertisements or promotional things done there, and his book and so forth. [00:35:50] Speaker 00: Well, looking forward, looking forward, we're talking about electric infusion of the registrations going forward, Emeril Lagasse is a has-been. [00:35:58] Speaker 00: He's going to die. [00:35:59] Speaker 00: And there's no evidence of record indicating that his TV shows would continue or have continued or anything like that. [00:36:06] Speaker 00: So that's past. [00:36:08] Speaker 00: What's going to happen going forward? [00:36:12] Speaker 05: And your time is up. [00:36:13] Speaker 05: Could you just wrap up very quickly, please? [00:36:16] Speaker 00: With regard to the likely confusion analysis, the Bakers Foods case itself involved the exact same trademarks, Judge Chen, Homestead. [00:36:24] Speaker 00: One party used it for dairy products. [00:36:27] Speaker 00: The other party used it for oil margarine. [00:36:29] Speaker 00: If they used the DePont factors in likely confusion analysis, they would never have had a concurrent use registration dividing up the United States. [00:36:36] Speaker 00: So they could not have used the DePont analysis in connection with that case, as well as other concurrent use cases. [00:36:42] Speaker 00: Thank you very much.