[00:00:08] Speaker 01:
We'd let you know if we had questions.

[00:00:49] Speaker 01:
So should we fire the starting gun here, Mr. Gunn?

[00:00:54] Speaker 05:
Certainly.

[00:00:56] Speaker 05:
I would not be opposed to that.

[00:01:11] Speaker 05:
May it please the court.

[00:01:11] Speaker 05:
My name is Sam Gunn.

[00:01:13] Speaker 05:
Larry Jones and I at Boston and Byrd represent the opposing appellant in this matter, Teresa Earnhardt.

[00:01:19] Speaker 05:
At issue in this appeal is whether the designation of Bernhardt Collection as applied to furniture and the custom construction of homes is primarily merely a surname, and therefore not registrable as a mark pursuant to Section 2E4 of the Lanham Act.

[00:01:33] Speaker 05:
In finding that Bernhardt Collection was not primarily merely a surname, the TTAB misapplied this court's holding in Henry Hutchinson technology, and in the process announced and applied an erroneous rule that the addition of a page 11, you say,

[00:01:49] Speaker 01:
The TTAB, quote, announced and applied a new and erroneous shortcut role to determine incorrectly that in such use, Earnhardt collection is not primarily merely a surname.

[00:02:04] Speaker 01:
But the TTAB considered your arguments, as well as the evidence, in light of Hutchinson.

[00:02:10] Speaker 01:
That's a J3638.

[00:02:13] Speaker 01:
And based on that, determined that the collection was not generic.

[00:02:20] Speaker 01:
How is that a shortcut when they considered the argument and the evidence under the governing legal framework, which you say it is?

[00:02:29] Speaker 05:
Exactly.

[00:02:29] Speaker 05:
They determined that collection was not generic.

[00:02:32] Speaker 05:
But they did not then proceed.

[00:02:34] Speaker 05:
They thought the analysis was over at that point, and that now we have a generic term.

[00:02:39] Speaker 05:
And the addition of this generic term to Earnhardt renders the mark.

[00:02:44] Speaker 05:
Excuse me.

[00:02:46] Speaker 05:
The term collection was not generic.

[00:02:47] Speaker 05:
And the addition of that term to Earnhardt rendered the mark no longer primarily merely a surname.

[00:02:52] Speaker 05:
They found that it was merely descriptive.

[00:02:57] Speaker 05:
They found that collection described the manner in which furniture and the custom construction of homes were marketed.

[00:03:04] Speaker 05:
The board has found in the past that the addition of a merely descriptive term to what is otherwise a surname may not diminish the surname's significance.

[00:03:14] Speaker 05:
An example would be in rate picket hotel company in which the descriptive term suite hotel added to the surname picket did not diminish the certain significance of the composite mark picket suite hotel.

[00:03:26] Speaker 05:
More recently, a very recent decision from 2016, in rate integrated embedded from the TTAB, a presidential decision, found that the mark bar group, that the term group was descriptive of the services offered, that they were offered by an aggregation of persons.

[00:03:42] Speaker 05:
And the addition of this disclaimed descriptive term to what was a surname, bar, did not diminish the surnames.

[00:03:48] Speaker 04:
I'm a little confused about what you're saying is the legal heir.

[00:03:52] Speaker 04:
Is it that the board only looked at the generic issue and didn't look at the descriptive issue?

[00:03:58] Speaker 05:
Exactly.

[00:03:59] Speaker 05:
It is specifically the appendix 36.

[00:04:03] Speaker 05:
You'll see that the board says.

[00:04:05] Speaker 04:
OK, I get it.

[00:04:06] Speaker 04:
This opinion is certainly not a model of clarity.

[00:04:10] Speaker 04:
But they certainly recognize Hutchison and recognize its test.

[00:04:14] Speaker 04:
They cite the evidence.

[00:04:16] Speaker 04:
And don't they, at least on page 37, say that the term collection is not the common descriptive or generic name for applicants' furniture?

[00:04:25] Speaker 05:
Exactly.

[00:04:26] Speaker 04:
In that context.

[00:04:26] Speaker 04:
So don't they understand that they have to apply both, even if they didn't discuss the same evidence separately with regard to descriptive or generic?

[00:04:37] Speaker 05:
I believe that finding that common descriptive is a term that both the board and I believe this court has in the past used as a shorthand for generic.

[00:04:45] Speaker 05:
We're talking about merely descriptive terms.

[00:04:47] Speaker 05:
I believe that that finding is really getting again to whether collection is generic, which appears to be really the focus of the TTAB's entire opinion was collection generic.

[00:04:58] Speaker 05:
It really didn't even consider what the significance could be of collection.

[00:05:01] Speaker 03:
So what quote from the TTAB's decision do you want to point us to?

[00:05:08] Speaker 03:
to drive home the point that the board misapplied Hutchinson because it articulated the rule for composite marks for the surname incorrectly.

[00:05:24] Speaker 05:
I would point you to page 36 of the appendix in the board's decision.

[00:05:29] Speaker 05:
Since the term collection is not generic, the addition of the term to the surname Earnhardt

[00:05:36] Speaker 05:
does diminish the surname significance.

[00:05:39] Speaker 04:
But then it goes on and describes Hutchinson in more detail and talks about descriptiveness.

[00:05:44] Speaker 04:
Again, this opinion could have been written much better and laid out.

[00:05:49] Speaker 04:
Here's the generic evidence, not generic.

[00:05:51] Speaker 04:
Here's the descriptive evidence.

[00:05:52] Speaker 04:
But it's clear they're aware that there's a descriptive form to this, too.

[00:05:56] Speaker 04:
And they're discussing the evidence in that context.

[00:05:59] Speaker 05:
They appear to be, but then at the end of the description of Hutchinson, and as you pointed out,

[00:06:03] Speaker 05:
whether collection was the generic or common descriptive term.

[00:06:07] Speaker 05:
They appear not to have ultimately applied Hutchinson in the correct way, I would argue.

[00:06:12] Speaker 04:
I mean, if we're going to be this nitpicky and send it back, you're just going to get the same result.

[00:06:18] Speaker 04:
They're going to go through this evidence and say collection is not merely descriptive of custom homes or furniture.

[00:06:27] Speaker 05:
I would actually argue the findings in the TTAB opinion appear to be consistent with a finding of merely descriptiveness.

[00:06:33] Speaker 05:
They found that collection is descriptive of the manner in which furniture and custom construction of homes are marketed.

[00:06:39] Speaker 05:
If anything, the way that the court seemed to be considering Hutchinson in the context of descriptiveness was to say, is common use of a term equivalent with descriptiveness?

[00:06:49] Speaker 05:
And we were not arguing that common use was the reason that collection was descriptive.

[00:06:55] Speaker 05:
We were arguing that collection is descriptive

[00:06:57] Speaker 05:
because of the way that it's used not necessarily commonly, but just the fact that it is used descriptively.

[00:07:02] Speaker 05:
Any argument related to common use was getting more towards, does this merely descriptive term affect the primary significance of the composite designation Earnhardt collection to the public?

[00:07:16] Speaker 04:
You can help me with this, because I can't articulate it precisely.

[00:07:19] Speaker 04:
But isn't the standard for descriptiveness whether somebody would understand the mark to be merely descriptive?

[00:07:27] Speaker 05:
It's like an average person or customer or whatever.

[00:07:31] Speaker 05:
The standard is, would someone who knows what the goods or services are perceive the mark or the term to describe or convey information about them?

[00:07:42] Speaker 05:
One problem with the Hutchinson case is that the definition of descriptiveness.

[00:07:46] Speaker 04:
I find that test a little baffling because if you know what the goods are, if you know that's what is sold is furniture and you see Earnhardt collection, then

[00:07:57] Speaker 04:
It's not far of a leap to say collection in this case means furniture.

[00:08:01] Speaker 04:
But if you don't, I mean, collection to me does not immediately designate furniture or custom homes.

[00:08:12] Speaker 05:
Well, I would argue would even in the abstract.

[00:08:14] Speaker 04:
But if we're using the test that has been created, would you think an average person would look at the word collection and think that it designates furniture?

[00:08:24] Speaker 05:
Well, not necessarily.

[00:08:26] Speaker 05:
It may be among their guesses, but the definition... I think you could have multiple guesses.

[00:08:31] Speaker 05:
Well, even if that was the case, the standard for descriptiveness doesn't require the consumer to be guessing in the abstract.

[00:08:38] Speaker 05:
It asks whether the consumer who knows what the goods are.

[00:08:41] Speaker 05:
And the difference is, if it was Earnhardt Unicorns, would you imagine Earnhardt Unicorns conveys information about the furniture sitting in front of you?

[00:08:47] Speaker 05:
I don't think you would.

[00:08:48] Speaker 05:
It's Earnhardt Collection.

[00:08:50] Speaker 05:
There's no

[00:08:51] Speaker 05:
inferential creative leap that needs to be made for someone to connect the term collection to the furniture they see in front of them.

[00:08:59] Speaker 01:
I don't know.

[00:08:59] Speaker 01:
If I got a phone call and showed up on my ID as Earnhardt Collection, I'd assume it was a bill collector.

[00:09:07] Speaker 05:
Well, and if it was a bill collector who called you, then again, you'd be connecting that correctly.

[00:09:12] Speaker 05:
But again, we're not talking about determining whether collection is descriptive of furniture and custom construction of phones in the abstract.

[00:09:21] Speaker 05:
someone to look at a flash card and say the first thing that comes to their head.

[00:09:24] Speaker 05:
That's simply not the standard that the board or this court has applied in the past.

[00:09:28] Speaker 05:
Now, in the Hutchinson case, the definition of descriptiveness that was used and one that the appellee has latched onto in its own briefing is, a mark is merely descriptive if it would immediately convey to one seeing or hearing it the thought of appellant's product.

[00:09:43] Speaker 05:
Sort of getting to the rule that we were sort of discussing here, but that really is not

[00:09:47] Speaker 05:
That really is not the rule that's been hammered home by the board in this court since Hutchinson was decided in 1986 quite some time ago.

[00:09:56] Speaker 00:
So I'm a little confused by that statement.

[00:09:59] Speaker 00:
You're saying that the board misapplied Hutchinson and we need to correct it, but that a statement for Hutchinson is actually not the law anymore?

[00:10:07] Speaker 05:
It's at least not the most accurate statement of the law, I believe, that we could have.

[00:10:12] Speaker 05:
I mean, this board, even in, I'm sorry, this court,

[00:10:16] Speaker 05:
And as recently as 2012, noted in the Duo Pro SS case that the descriptiveness standard is talking about someone who knows what the goods are.

[00:10:26] Speaker 05:
It's not an abstract inquiry.

[00:10:29] Speaker 05:
I'm not sure if Hutchinson was trying to say that it was.

[00:10:31] Speaker 05:
I just think that the words that were used in that opinion did not hammer home

[00:10:35] Speaker 05:
the fact that the standard for descriptiveness is not an abstract inquiry.

[00:10:40] Speaker 03:
It assumes that the concerns... So we have a board opinion that maybe isn't a model of clarity describing a Federal Circuit opinion that likewise wasn't a model of clarity.

[00:10:51] Speaker 05:
I actually think the Federal Circuit opinion, other than perhaps its descriptiveness standard... Other than the part that hurts you.

[00:10:57] Speaker 05:
Well, you could phrase it that way, Your Honor.

[00:10:59] Speaker 05:
But I think that Hutchinson is a good opinion, and in fact recognizes what we're saying, which is that once you determine that a mark is not generic, the inquiry doesn't end there.

[00:11:12] Speaker 05:
Hutchinson engages in a discussion of whether the term technology, which was at issue in that opinion, is merely descriptive or suggestive.

[00:11:23] Speaker 05:
And honestly, even once the court determines that technology is at least suggestive, it goes on to say that there's no other evidence in the record that technology diminishes the surname significance of Hutchinson.

[00:11:35] Speaker 05:
And therefore, the board's decision was an error.

[00:11:38] Speaker 05:
To me, that suggests that even the addition of a suggestive term to what is otherwise merely a surname, depending on what the evidence is in the record,

[00:11:45] Speaker 05:
might not diminish the surname significance of the composite designation as a whole.

[00:11:51] Speaker 05:
Here, the board did not engage in any analysis of what the effect of adding.

[00:11:59] Speaker 01:
Just a reminder that you're under your rebuttal time.

[00:12:01] Speaker 01:
I'll reserve the rest of it.

[00:12:03] Speaker 01:
Thank you.

[00:12:11] Speaker 02:
Good morning, New York's Middle East Court.

[00:12:14] Speaker 02:
I'm Blaine Sanders.

[00:12:15] Speaker 02:
Kerry Davis and I represent Kerry Earnhardt, Incorporated, Neapolite.

[00:12:22] Speaker 02:
The colloquy that just took place reminds me of what the court said in NRA Chamber of Commerce, that this court sits in review of judgments, not opinions.

[00:12:37] Speaker 02:
We would acknowledge that.

[00:12:40] Speaker 02:
that as Judge Chin said, the opinion of the TTAB is not a model of clarity.

[00:12:48] Speaker 02:
Judge Hughes said that there were some things that could have been done better in the opinion.

[00:12:56] Speaker 02:
We would acknowledge that.

[00:12:57] Speaker 02:
But we submit that in the final analysis

[00:13:03] Speaker 02:
Hutchinson Technology, this court's opinion in Hutchinson Technology controls this case.

[00:13:09] Speaker 03:
And is it your understanding that what Hutchinson Technology requires for purposes of this case is to review whether the term collection, an Earnhardt collection, is generic or merely descriptive?

[00:13:26] Speaker 03:
Is that the rule from Hutchinson Technology?

[00:13:29] Speaker 03:
I've got to see if it's generic.

[00:13:31] Speaker 03:
And even if it's not generic, I still need to keep going and see if it's merely descriptive.

[00:13:36] Speaker 03:
And then after determining that, even if it's merely descriptive or generic, then I need to take a step back and look at the word collection in combination with Earnhardt and against the listed items of goods and services, weigh whether it's still primarily a surname.

[00:13:56] Speaker 02:
That gets messy.

[00:13:58] Speaker 02:
But let me answer your question.

[00:14:00] Speaker 03:
If I said anything that's wrong, which part of what I said is wrong?

[00:14:05] Speaker 02:
Hutchinson technology.

[00:14:06] Speaker 03:
If there was a part of what I said is wrong, which part of what I said is wrong?

[00:14:11] Speaker 02:
I can't say that anything that you said was wrong.

[00:14:14] Speaker 03:
OK.

[00:14:15] Speaker 03:
So then everybody in the room agrees that when it comes to the rule of Hutchinson technology, the fact finder here has to determine whether or not the word collection is generic.

[00:14:27] Speaker 03:
And if it concludes it's not generic, it still has to go on and find out whether the word collection is merely descriptive in the context of these goods and services.

[00:14:37] Speaker 02:
I think that's correct, Your Honor.

[00:14:38] Speaker 03:
OK.

[00:14:38] Speaker 02:
And that's what happened in Hutchinson, the court in Hutchinson.

[00:14:41] Speaker 03:
Well, now let's go to what happened here.

[00:14:43] Speaker 03:
All right.

[00:14:44] Speaker 03:
Right?

[00:14:45] Speaker 03:
I mean, I read the structure of the board's opinion.

[00:14:48] Speaker 03:
And it looks like it does an analysis on genericness and concludes, no, the word collection is not generic.

[00:14:57] Speaker 03:
And then it addresses the other side's argument about whether collection is merely descriptive.

[00:15:04] Speaker 03:
And that's where things get hazy or possibly things go haywire.

[00:15:11] Speaker 03:
And it felt like to me that the board was saying, as long as it's not generic, then the mark is no longer primarily a surname.

[00:15:27] Speaker 03:
If we agree, that would be incorrect.

[00:15:29] Speaker 03:
And if that is a legal error, then why wouldn't we remand?

[00:15:34] Speaker 02:
All right.

[00:15:36] Speaker 02:
Let me say that the court in the court considered, I agree with what Your Honor said about that the court addressed the argument, rephrased, quoted Appalach's argument about descriptiveness.

[00:15:56] Speaker 02:
And then it made a statement at Appendix 36 that Mr. Gunn read that said, since the term collection is not generic, the addition of the term surname Earnhardt does diminish the surname significance.

[00:16:11] Speaker 02:
I wouldn't say that that statement is necessarily wrong, but I'd say that goes beyond Hutchinson.

[00:16:20] Speaker 02:
If we're going to nitpick, I'm not saying you're nitpicking.

[00:16:25] Speaker 02:
I'm using the word that Judge Hudgens used said about nitpicking.

[00:16:29] Speaker 02:
I would say that that phrase, that clause goes beyond Hutchinson.

[00:16:35] Speaker 02:
But if, and that sentence is not the board's finest hour, but then immediately the board gets back on track and quotes Hutchinson technology, quotes it twice,

[00:16:49] Speaker 02:
And I do think this is important.

[00:16:50] Speaker 02:
When we get to the Appendix 37, this court focuses on the common usage rationale.

[00:16:59] Speaker 02:
When you get to Appendix 37, and I'll quote, Opposer has submitted evidence establishing the term collection is commonly used in connection with both custom homes and furniture.

[00:17:12] Speaker 02:
Opposer argues that such common usage renders the term generic.

[00:17:17] Speaker 02:
Then it says the term collection is not the common descriptive or generic term for the applicant's furniture or custom home.

[00:17:24] Speaker 02:
So then it gets back on track, and it focuses on the common usage part.

[00:17:31] Speaker 03:
Sorry to interrupt, but this is what scares me, is that in this very part you quoted, what it looks like the T tab has done is it's drifted back to the genericness argument that it already rejected in the earlier paragraphs in the earlier section of the opinion.

[00:17:47] Speaker 03:
when the T-tab says, quote, Opposer argues that the common usage renders the term generic.

[00:17:54] Speaker 03:
See, now everything the board says after that is in the context of, once again, repudiating what it already repudiated a few pages earlier about whether the word collection is generic.

[00:18:07] Speaker 03:
And then if you go back to the bottom of 36 to the top of A37,

[00:18:13] Speaker 03:
The board clearly notes that when it comes to Hutchinson, it says, quote, although the issue of descriptiveness was discussed in Hutchinson, the court in Hutchinson did not change the test for determining whether adding language to a surname alters the significance of the surname.

[00:18:33] Speaker 03:
And to me, the only conclusion I can draw from that sentence is that this board is concluding that the Hutchinson test

[00:18:42] Speaker 03:
strictly looks at whether the term is generic.

[00:18:47] Speaker 03:
And even though it mentioned and described and discussed descriptiveness, it wasn't really in any way suggesting that a descriptiveness inquiry is part of this test.

[00:18:59] Speaker 03:
And of course, as we all know, as we agreed in the beginning, it is part of the test.

[00:19:05] Speaker 02:
Yes.

[00:19:06] Speaker 03:
Descriptiveness has to be looked at.

[00:19:08] Speaker 03:
So now when I look at all of this, what I

[00:19:11] Speaker 03:
fear is that the Trademark Board ignored the descriptiveness inquiry in trying to figure out whether the word collection is something that diminishes the surname of Earnhardt and the Earnhardt collection mark.

[00:19:29] Speaker 02:
Your Honor, I'd agree that the Board goes back and forth discussing generic and descriptiveness.

[00:19:38] Speaker 02:
I would not agree that

[00:19:40] Speaker 02:
the board ignored it because it expressly stated the argument, the opposer's argument about descriptiveness, and then talked about Hutchinson, including quoting the applicable language from Hutchinson's that said, a mark is merely descriptive of a product

[00:19:58] Speaker 02:
if it would immediately convey to one seeing or hearing it the thought of appellant's product.

[00:20:02] Speaker 03:
I'm sorry.

[00:20:04] Speaker 02:
Can you tell me where you were?

[00:20:06] Speaker 02:
Yes, your honor.

[00:20:06] Speaker 02:
That's appendix 37.

[00:20:07] Speaker 03:
Oh, you're quoting from Hutchinson.

[00:20:09] Speaker 02:
They're quoting from Hutchinson.

[00:20:11] Speaker 02:
But that's the part of Hutchinson that is discussing descriptiveness.

[00:20:14] Speaker 02:
And then when it stops quoting Hutchinson, the board talks about the common usage rationale in Hutchinson.

[00:20:24] Speaker 03:
Right.

[00:20:26] Speaker 03:
in repudiating the opposers' arguments about genericness?

[00:20:30] Speaker 02:
Well, they start talking about genericness, but they opened this discussion by talking about descriptiveness.

[00:20:38] Speaker 02:
I would submit, Your Honor, and of course, the writing of this opinion can be picked apart.

[00:20:45] Speaker 02:
But it is reasonable to conclude based on the fact that the board addressed opposers' descriptiveness arguments.

[00:20:56] Speaker 02:
and dealt with it by citing this court's precedent, Hutchinson, which dealt with the descriptiveness argument, and concluded that common usage does not make a term descriptive as in Hutchinson.

[00:21:10] Speaker 03:
Can I just ask you, even if we were to read this your way and say that the board concluded that collection is not descriptive when it comes to these goods,

[00:21:24] Speaker 03:
it didn't explain why it reached that finding that it's not descriptive.

[00:21:32] Speaker 03:
I mean the one place where I see something interesting from the board is going back to the genericness section of the opinion of A34, A35 where at the bottom of A34 it says the word collection does not refer to any class or category of furniture and therefore

[00:21:51] Speaker 03:
While it may be descriptive of the manner in which some furniture is marketed or sold, namely by groupings of brands or groupings of uses, it is not generic.

[00:22:02] Speaker 03:
And so now here's a place where I see the board indicating that the mark or the word collection may be descriptive, but it's not generic.

[00:22:14] Speaker 03:
And that is the only analysis I see of actual comment on descriptiveness.

[00:22:21] Speaker 02:
Your Honor, we would submit that when they talk about common usage, when the board talks about common usage at page 37, that is the label for descriptiveness from Hutchinson.

[00:22:40] Speaker 02:
It answers both questions.

[00:22:42] Speaker 02:
It answers both the genericness and the descriptiveness question.

[00:22:47] Speaker 02:
And we'd also like to point out, Your Honor,

[00:22:52] Speaker 02:
The opposer, the appellant, has argued in its reply brief that these were findings of descriptiveness.

[00:22:59] Speaker 02:
And I want to make clear that those two sentences that your honor read were findings of not generic.

[00:23:06] Speaker 02:
They weren't findings.

[00:23:07] Speaker 02:
They said may be descriptive.

[00:23:08] Speaker 02:
But the court, certainly there's nothing in this opinion that is a finding that it was not descriptive.

[00:23:15] Speaker 02:
The much more reasonable conclusion is that there was a finding, I'm sorry, there wasn't a finding of descriptiveness, I misspoke.

[00:23:22] Speaker 02:
The much more reasonable conclusion is based on quoting the opposer's argument and quoting Hutchinson technology, which clearly did find not descriptive, that that's where the TTAB came out.

[00:23:37] Speaker 03:
How would you interpret the other sentence I quoted at the bottom of 836 to top of 837?

[00:23:44] Speaker 03:
Although the issue of descriptiveness was discussed in Hutchinson, the court in Hutchinson did not change the test.

[00:23:52] Speaker 03:
for determining whether the language added to a surname alters the significance of the surname.

[00:23:58] Speaker 03:
What do you think they were trying to say there?

[00:24:01] Speaker 02:
I think they were saying that you have to look at genericness, and you have to look at descriptiveness.

[00:24:10] Speaker 02:
And Hutchinson didn't change that test.

[00:24:11] Speaker 03:
Even though it introduces the sentence with the clause, although the issue of descriptiveness was discussed,

[00:24:19] Speaker 03:
I mean, to me, that sort of makes it sound like the board was saying that that was something extraneous and ancillary and perhaps even a mistake, but it didn't change the test, which is you've got to look at genericness.

[00:24:33] Speaker 02:
And I do think that's the, I mean, Hutchinson, the rule is that you have to look at, Hutchinson says, Hutchinson looked at, Hutchinson looked at genericness and descriptiveness.

[00:24:42] Speaker 02:
I think that's very clear from the opinion.

[00:24:44] Speaker 03:
I agree.

[00:24:45] Speaker 03:
Then the next question is does the board here understand that?

[00:24:48] Speaker 03:
And maybe it doesn't.

[00:24:49] Speaker 02:
I think that the board did understand that.

[00:24:52] Speaker 02:
And I think that's why.

[00:24:53] Speaker 02:
I think what happened here was that the Appalachian only argued genericness in its opening trial brief.

[00:25:03] Speaker 01:
What's the impacts of footnotes 31 and 32 at those two pages, 36 and 37?

[00:25:08] Speaker 02:
All right, footnotes 31 and 32.

[00:25:12] Speaker 02:
Well, it's talking about that talks about the Miller case and there wasn't any discussion in Miller about descriptiveness It was a it was purely a generic case about law group and that court decided that law group was generic So it wasn't about descriptiveness So in the area found yes, but the word was generic Right that the word that was added to the surname was generic in in Miller.

[00:25:36] Speaker 03:
Yes, sir.

[00:25:36] Speaker 03:
Okay.

[00:25:37] Speaker 03:
Yes, so I

[00:25:40] Speaker 03:
So therefore, Miller didn't need to comment on the question of whether descriptiveness was important.

[00:25:46] Speaker 02:
That's right.

[00:25:47] Speaker 02:
That's right.

[00:25:48] Speaker 02:
But it was argued by the Appalant in their initial trial brief.

[00:25:52] Speaker 02:
Appalant didn't raise the descriptiveness argument.

[00:25:57] Speaker 02:
The case was tried, and the opening trial brief was about generic.

[00:26:01] Speaker 02:
They didn't raise the issue of descriptiveness until their reply below.

[00:26:06] Speaker 02:
And I think that may have had some influence

[00:26:10] Speaker 02:
how the board went back and forth in its opinion.

[00:26:14] Speaker 03:
Here's my last question.

[00:26:17] Speaker 03:
Both sides in this case have some TTAB examples or registration examples of how the word collection in some cases were considered to be just merely descriptive in other places where the registration went straight through with the word collection and perhaps added to a surname.

[00:26:40] Speaker 03:
What's the principle that we should take away and how do we draw a straight line through all of those?

[00:26:46] Speaker 02:
I don't, I think it shows how examiners, I don't think any of those cases were precedential.

[00:26:55] Speaker 03:
But there are examples where the trademark board said the addition of the word collection did not alter the significance of the surname and the composite mark.

[00:27:06] Speaker 03:
So, you know, that I'm trying to understand now.

[00:27:10] Speaker 02:
I don't think that those... I'm out of time.

[00:27:17] Speaker 02:
May I finish?

[00:27:18] Speaker 02:
Those are not presidential.

[00:27:21] Speaker 02:
They're not very helpful.

[00:27:23] Speaker 02:
I think that as a matter of practice, the ones that... There's so many that recognize collection, but they're not contested.

[00:27:28] Speaker 02:
So I don't find... Those may show as a matter of practice, but they don't really show a rule of law.

[00:27:34] Speaker 02:
It really is a case by case analysis.

[00:27:38] Speaker 02:
And here, collection, the board looked at the argument, and they found that collection was commonly used with Earnhardt.

[00:27:47] Speaker 02:
But just like technology and Hutchinson, it did not describe the products that were at issue.

[00:27:58] Speaker 02:
And therefore, it did diminish the surname significance.

[00:28:00] Speaker 02:
And we'd ask that the board be affirmed.

[00:28:03] Speaker 02:
Thank you.

[00:28:04] Speaker 02:
Thank you.

[00:28:06] Speaker 05:
We would argue that the board did find that collection was descriptive at page, I believe it's 36.

[00:28:26] Speaker 04:
I think we all agree that if the board said Hutchinson only requires a look at genericness, that's legally incorrect.

[00:28:35] Speaker 04:
Did the board say that anywhere?

[00:28:40] Speaker 05:
I believe it did.

[00:28:41] Speaker 05:
I don't know how else you interpret it.

[00:28:43] Speaker 04:
If they thought that they didn't have to look at descriptiveness, why did they talk about descriptiveness?

[00:28:49] Speaker 01:
Including in those footnotes.

[00:28:53] Speaker 05:
I think they were perhaps trying to distinguish whether, if something's not generic, what is it the next step would be descriptive.

[00:29:01] Speaker 05:
So there were at least findings consistent with the fact that collection is merely descriptive.

[00:29:06] Speaker 05:
What appears the board did was even though it found that collection was merely descriptive, it did not understand the significance of that finding.

[00:29:13] Speaker 05:
That's why it's so casually referred to, it seems, in the opinion.

[00:29:17] Speaker 05:
They didn't understand that now that we've got a merely descriptive term, that doesn't end the inquiry.

[00:29:22] Speaker 05:
We need to determine what the primary significance of Earnhardt collection is to the purchasing public.

[00:29:27] Speaker 05:
But the finding that collection describes the manner in which furniture is marketed and sold, that it describes groupings of custom homes,

[00:29:36] Speaker 05:
Those are findings that collection is descriptive.

[00:29:39] Speaker 05:
Where is that finding?

[00:29:41] Speaker 04:
Is that that maybe descriptive sentence?

[00:29:45] Speaker 05:
It's page 35, 36.

[00:29:49] Speaker 04:
We're talking about the same two pages.

[00:29:51] Speaker 04:
They have some good sentences to pluck out.

[00:29:55] Speaker 04:
You have some good sentences to pluck out.

[00:29:57] Speaker 04:
I don't see anything in here where the board says, the test under Hutchinson is solely determined whether it's generic or not.

[00:30:04] Speaker 04:
And if it's not generic, it

[00:30:06] Speaker 04:
it can diminish the significance of the surveying.

[00:30:11] Speaker 04:
Do you agree that there's no explicit statement that that's the law?

[00:30:15] Speaker 05:
I would agree with that.

[00:30:16] Speaker 04:
What you're trying to do is infer from various phrases here and there that they didn't apply a descriptiveness test, even though they quoted the descriptiveness test from Hutchison.

[00:30:26] Speaker 04:
Your friend is doing the opposite.

[00:30:29] Speaker 04:
I mean, this opinion is a mess.

[00:30:35] Speaker 04:
We don't reverse cases to get a better opinion just because we don't like the analysis if it's not harmful error.

[00:30:47] Speaker 04:
And if there's no legal error, and I don't see any explicit legal error in stating you only look at genericness, then what we're looking for is, is there substantial evidence to support application of the Hutchinson test?

[00:31:00] Speaker 04:
And I understand your argument's there.

[00:31:04] Speaker 05:
I would argue, you know, when the board says that the term collection describes a manner, and I understand you referenced that one of the statements says may be descriptive.

[00:31:15] Speaker 05:
The second statement about custom construction of home says collection describes a manner in which the services are offered, namely grouped by features or by type of architecture.

[00:31:26] Speaker 05:
Even if that isn't an explicit finding of descriptiveness, which we would argue that it is,

[00:31:30] Speaker 05:
If this case was remanded and the court and the board found the same facts, I think it would conclude that collection is merely descriptive.

[00:31:40] Speaker 04:
Except that when you go on later, and we're just quibbling over different parts of the opinion, you can go on and find a sentence where they said it's not descriptive.

[00:31:48] Speaker 05:
They said it's not the common descriptive or generic name.

[00:31:51] Speaker 05:
And I'm happy to submit supplemental briefing on the fact that common descriptive has been frequently used as a

[00:31:57] Speaker 04:
Honestly, with an opinion this badly written, do you think we are really going to place much significance on their different use of those two terms?

[00:32:05] Speaker 04:
I don't think they understood those two terms different.

[00:32:07] Speaker 04:
But you may say they submit evidence.

[00:32:10] Speaker 04:
But it certainly is not clear from the opinion that they're using them in two different ways.

[00:32:15] Speaker 05:
I admit the opinion is not a model of clarity.

[00:32:17] Speaker 05:
I do believe the board knew what it was saying when it said common descriptive or generic.

[00:32:21] Speaker 05:
Common descriptive is a phrase that's been used frequently as a proxy for genericism.

[00:32:26] Speaker 05:
I have no concern that the board didn't understand what it was saying there.

[00:32:30] Speaker 05:
Now, I understand that cuts against us saying that the board didn't understand what it was saying in other parts of the opinion.

[00:32:35] Speaker 05:
Common descriptive is just so ingrained to me in trademark jurisprudence.

[00:32:42] Speaker 05:
I don't doubt that they're simply talking about genericism there.

[00:32:46] Speaker 05:
And again, I know we're just picking from the opinion, and everyone can pick.

[00:32:49] Speaker 01:
The checkered flag has gone.

[00:32:51] Speaker 05:
The checkered flag.

[00:32:54] Speaker 05:
So in closing.

[00:32:55] Speaker 05:
We would say that the board found collection to be descriptive.

[00:33:02] Speaker 05:
The addition of collection to Earnhardt would not diminish the certain significance of Earnhardt based on the evidence of record here.

[00:33:10] Speaker 05:
And we respectfully request that this court deny applicants opposed registrations.

[00:33:20] Speaker 05:
Thank you.