[00:00:26] Speaker 04:
OK.

[00:00:27] Speaker 04:
The next argued case is number 161531, Evade LLC against Under Armour, Incorporated.

[00:00:35] Speaker 04:
Mr. Welch.

[00:00:37] Speaker 00:
Thank you, Your Honor.

[00:00:38] Speaker 00:
Good morning.

[00:00:40] Speaker 00:
As you know, this appeal involves three trademarks.

[00:00:44] Speaker 00:
The first two are registered, Evade Offshore Armour in stylized form, where the word evade is 10 times bigger than offshore armor.

[00:00:53] Speaker 00:
The second mark is evade offshore armor in standard form.

[00:00:57] Speaker 00:
And the third is an applied form mark, evade outdoor armor in standard character form.

[00:01:03] Speaker 00:
And as you also know, this appeal arises out of a consolidated opposition cancellation proceeding before the TTAB.

[00:01:10] Speaker 00:
And the board faced the question of whether these three marks, or any of them, are likely to cause confusion with the marks pleaded by Under Armour.

[00:01:21] Speaker 00:
The board ruled in favor of evade on one mark.

[00:01:23] Speaker 00:
a stylized version of evade offshore armor, but in favor of under armor on the two standard character marks, both parties appealed.

[00:01:33] Speaker 00:
Of course, in the proceedings below, under armor bore the burden of proof because it was a plaintiff in both proceedings.

[00:01:41] Speaker 01:
Can I ask you a very specific question?

[00:01:43] Speaker 01:
It's my understanding that you disclaimed the word outdoor, not offshore, try and keep it all straight, but outdoor.

[00:01:53] Speaker 01:
I didn't see you really give any sort of differing treatment then in the briefs to the similarity or the respective weakness or strength or anything else.

[00:02:05] Speaker 01:
What impact do you think your disclaimer of one of your three words has on the Dupont factors and the likelihood of confusion?

[00:02:15] Speaker 00:
weakens that portion of the mark, but nonetheless the board and the court has to look at the mark.

[00:02:20] Speaker 01:
Will you say weakens?

[00:02:21] Speaker 01:
I mean, does it allow us to say it's now a two-word mark instead of a three-word mark?

[00:02:24] Speaker 00:
No, of course not.

[00:02:26] Speaker 00:
The test has to be applied to the marks as a whole.

[00:02:28] Speaker 00:
That word doesn't disappear.

[00:02:30] Speaker 00:
In fact, the use of the phrase outdoor armor and offshore armor, we submit, makes the word armor even more suggestive because the modifiers make it sound like you're talking about

[00:02:42] Speaker 00:
either protective clothing or clothing that's durable or strong.

[00:02:46] Speaker 00:
So isolating the word armor by itself, isolating the word outdoor by itself, isolating the thing.

[00:02:52] Speaker 00:
That's not the case.

[00:02:54] Speaker 03:
But the disclaimer has to mean something.

[00:02:56] Speaker 03:
I'm sorry?

[00:02:57] Speaker 03:
The disclaimer has to mean something.

[00:02:59] Speaker 00:
To the public, it doesn't mean anything.

[00:03:00] Speaker 00:
The public doesn't know these words are disclaimed.

[00:03:03] Speaker 01:
So what it means... I think so, Joe Malley's question is the same one I still have and don't really fully understand your answer, which is,

[00:03:09] Speaker 01:
You disclaimed the word outdoor.

[00:03:12] Speaker 01:
How ought I to factor that in?

[00:03:15] Speaker 01:
Or how should the board have factored that in when it was assessing likelihood of confusion?

[00:03:19] Speaker 00:
I have two answers to that.

[00:03:22] Speaker 00:
One, the consuming public, they don't know it's disclaimed.

[00:03:26] Speaker 00:
What it does is it says, well, maybe the word outdoor doesn't count so much when you're comparing the three marks.

[00:03:32] Speaker 00:
That's all it means.

[00:03:34] Speaker 00:
I don't think it gets anybody off the hook in trying to prove what the ordinary consumer

[00:03:40] Speaker 00:
thinks of when he's here.

[00:03:42] Speaker 01:
This is a really stupid question, so I hope that you're not offended.

[00:03:45] Speaker 01:
But what does it mean when you say we disclaim it?

[00:03:47] Speaker 01:
Doesn't it mean that you're pretty much saying, OK, listen, we understand this is a descriptor, a normal, everyday descriptor?

[00:03:53] Speaker 01:
What does it mean?

[00:03:54] Speaker 00:
It means you don't claim any right in that mark by itself apart from the mark as shown.

[00:03:59] Speaker 00:
That's what the disclaimer language is in the statute.

[00:04:02] Speaker 00:
It's a way to get it registered.

[00:04:04] Speaker 00:
It's a way to get the examiner off your back.

[00:04:07] Speaker 00:
But it doesn't affect it.

[00:04:09] Speaker 01:
or she is nipping at you about the fact that it's a descriptor.

[00:04:12] Speaker 00:
Right.

[00:04:13] Speaker 00:
OK.

[00:04:13] Speaker 00:
You say, OK, we'll disclaim outdoor.

[00:04:15] Speaker 00:
We're not claiming the word outdoor.

[00:04:16] Speaker 00:
We don't claim any rights to the outdoor by itself.

[00:04:19] Speaker 00:
But that doesn't remove it from the mark.

[00:04:21] Speaker 00:
In fact, the disclaimer section of this statute says it doesn't affect the mark as a whole.

[00:04:27] Speaker 00:
Now, why did my predecessor disclaim the one and not the other?

[00:04:30] Speaker 01:
I was completely bewildered by it.

[00:04:36] Speaker 00:
That's the way the case came to me, Your Honor.

[00:04:39] Speaker 00:
We submit in our brief that the board erred in its likelihood of confusion analysis, first because it didn't consider at all the sound of the marks, how they sounded.

[00:04:53] Speaker 00:
It never even mentioned the sound of the marks.

[00:04:55] Speaker 00:
It talked about the appearance of the marks, but not completely and not with full understanding of how you compare standard character marks.

[00:05:05] Speaker 00:
We believe that under the sixth Dupont factor,

[00:05:07] Speaker 00:
It didn't consider strongly enough the high suggestiveness of the word armor.

[00:05:17] Speaker 03:
We're talking about similar goods, right?

[00:05:21] Speaker 03:
Use on similar goods.

[00:05:23] Speaker 03:
And you didn't proper any indication of registrations involving the same words on other similar goods, right?

[00:05:31] Speaker 03:
So we've got two head-to-head competitors for the same products off the same.

[00:05:38] Speaker 03:
You think they're different marks, but we are not talking about this is used all the time.

[00:05:45] Speaker 00:
Well, I want to make one distinction.

[00:05:48] Speaker 00:
The board looked at the third-party registration evidence and the third-party use evidence and said, well, this isn't relevant because it's not in the same field.

[00:05:56] Speaker 00:
It's not in the field of ordinary clothing.

[00:05:57] Speaker 00:
But that isn't why it was cited.

[00:05:59] Speaker 00:
We cited those third-party registrations to show how ubiquitous the word armor is and how common it is, and the public understands what

[00:06:07] Speaker 03:
armor means it's a very old word.

[00:06:09] Speaker 03:
But there's no evidence of it being used on similar goods.

[00:06:12] Speaker 00:
But that doesn't erase it from the minds of people.

[00:06:14] Speaker 00:
I mean, a consumer who sees armor on screen protectors, on floor polish, on protective clothing, doesn't walk into a clothing store and say, gee, I don't know what armor means anymore.

[00:06:25] Speaker 00:
It's not in those other fields.

[00:06:26] Speaker 00:
I don't know what it means.

[00:06:27] Speaker 00:
It doesn't erase the word armor from the minds of consumers.

[00:06:30] Speaker 00:
They know what it means.

[00:06:31] Speaker 00:
It's a common word.

[00:06:32] Speaker 00:
And so to say, well, it's not used on clothing, so you can't consider it subscriptiveness makes no sense.

[00:06:38] Speaker 00:
Because you have to look at it from the view of the consumer.

[00:06:41] Speaker 00:
And the consumer is well aware of the word armor.

[00:06:43] Speaker 00:
It's aware of it in all kinds of fields.

[00:06:45] Speaker 00:
And just because it isn't used in this field, thanks to armor's policing policies, doesn't mean it's wiped out of the minds of consumers.

[00:06:53] Speaker 03:
But once it's used in the same field, that's important for purposes of determining whether there's a likelihood of confusion.

[00:06:59] Speaker 00:
Well, then you get into the juice generation case.

[00:07:02] Speaker 00:
And then you start talking about customers being able to distinguish marks in the field

[00:07:08] Speaker 00:
by small variations because other people are using armor.

[00:07:11] Speaker 00:
We're not arguing that.

[00:07:13] Speaker 00:
We're arguing the descriptiveness slash suggestiveness, laudatory nature of the word armor, which is not erased from the minds of consumers when they look at clothing.

[00:07:22] Speaker 00:
It's the same word that they see with all these other protective products.

[00:07:26] Speaker 00:
That's our argument.

[00:07:28] Speaker 04:
So I assume there's a separate registration for evade without the outdoor armor?

[00:07:35] Speaker 00:
Right.

[00:07:35] Speaker 04:
And that this registration is in block letters.

[00:07:39] Speaker 04:
It's not limited to the design for evade.

[00:07:42] Speaker 04:
It's practically the same word for the same goods.

[00:07:47] Speaker 04:
How does one avoid confusion?

[00:07:50] Speaker 04:
That's our registration.

[00:07:52] Speaker 00:
I'm sorry, I misunderstood the question.

[00:07:55] Speaker 00:
Evade has the word evade registered for clothing by itself.

[00:08:02] Speaker 01:
So you're the source in both sets of goods, so there could be no confusion because you're the same source.

[00:08:06] Speaker 01:
Exactly.

[00:08:06] Speaker 00:
That's your argument.

[00:08:07] Speaker 00:
Exactly.

[00:08:07] Speaker 00:
And what the board said, they took that word evade and said, well, evade has just added its house mark to the word armor.

[00:08:17] Speaker 00:
And then it cited a few of these house mark cases.

[00:08:20] Speaker 00:
But the house mark cases are all over the lot.

[00:08:22] Speaker 00:
Some find confusion, some don't.

[00:08:25] Speaker 00:
And what the board did there is it avoided applying the Dupont factors.

[00:08:30] Speaker 00:
the first Dupont factor, sound, meaning, connotation, commercial impression, and it took this shortcut arguing these house mark cases to come to its conclusion.

[00:08:39] Speaker 03:
Well, how long had the evade mark been used before you tried to join it with Armageddon?

[00:08:45] Speaker 00:
I think they all started in 2009, all at the same time.

[00:08:50] Speaker 03:
All the evade marks?

[00:08:50] Speaker 00:
Right.

[00:08:52] Speaker 03:
So you separately use evade in connection with clothing?

[00:08:56] Speaker 00:
Correct, and I'm not sure that's in the record now.

[00:08:59] Speaker 00:
I wouldn't, the evade registration is cited in our brief, but there's no, we didn't put any evidence of using the word evade by itself.

[00:09:10] Speaker 03:
But you're telling me now that you do use it by itself.

[00:09:13] Speaker 00:
If you'll allow me to tell you that, I guess I'm telling you that.

[00:09:21] Speaker 00:
Okay.

[00:09:22] Speaker 00:
I just wanted to point out, your honors are well aware of the Oakville Hills case last year where the

[00:09:28] Speaker 00:
where the CAFC found two marks not confusable, Mayari and Maya for wine.

[00:09:36] Speaker 00:
And the court said, one factor alone can be dispositive, one Dupont factor, particularly where it's the dissimilarity of the marks.

[00:09:46] Speaker 00:
The main discussion I wanted to have today was about the strength of the word armor.

[00:09:53] Speaker 00:
We submitted our briefs, and I think our evidence shows that the word armor has

[00:09:58] Speaker 00:
very little conceptual strength, and the record evidence doesn't show any marketplace strength for the word armor.

[00:10:05] Speaker 00:
As for the conceptual evidence, I spoke about it a little bit.

[00:10:08] Speaker 00:
Different dictionary definitions, third-party uses, third-party registrations, disclaimers of the word armor, I think all leaving little doubt that the word armor is highly suggestive.

[00:10:20] Speaker 00:
And we submit it remains suggestive, even in the clothing field, even though these third-party registrations aren't in the clothing field.

[00:10:27] Speaker 00:
because the consumer still has this word in his or her head.

[00:10:33] Speaker 00:
As to marketplace strength, as we pointed out in the brief, Under Armour hasn't proven anything about actual consumer perception of the two marks or the word armor by itself.

[00:10:44] Speaker 00:
There's no proof of use or sales of the word armor by itself to any extent.

[00:10:49] Speaker 00:
There's no numbers.

[00:10:50] Speaker 00:
There's no proof of promotional expenditures of the word armor.

[00:10:53] Speaker 00:
In fact, Under Armour hasn't been able to segregate its advertising or sales by any of its marks.

[00:11:01] Speaker 00:
And it owns dozens of marks that don't even include the word Armour.

[00:11:08] Speaker 00:
And finally, they have no survey evidence regarding the strength of the word Armour.

[00:11:13] Speaker 00:
So lacking any concrete evidence, they fall back on an argument about policing, that they police the heck out of this mark,

[00:11:20] Speaker 00:
Well, that's all well and good, but it still doesn't erase the word armor from the consumer's mind.

[00:11:25] Speaker 00:
What the policing shows is other entities don't want to go up against Under Armour because it's a big company, and it's very expensive to fight.

[00:11:35] Speaker 00:
They have some testimony.

[00:11:36] Speaker 03:
So under your theory, though, you would have us say that use of armor is never meaningful, and therefore wouldn't that wipe out virtually all of Under Armour's marks?

[00:11:45] Speaker 00:
Oh, no.

[00:11:45] Speaker 00:
I'm not saying that at all.

[00:11:47] Speaker 00:
I'm saying that Armour's name is registered.

[00:11:50] Speaker 00:
It's a suggestive mark.

[00:11:51] Speaker 00:
You have to look at the marks as a whole.

[00:11:54] Speaker 00:
Evade under Armour has one word that is arbitrary.

[00:11:57] Speaker 00:
That's the word evade.

[00:11:58] Speaker 00:
That's the key word in evade's marks.

[00:12:01] Speaker 00:
And that's where the board missed the boat.

[00:12:06] Speaker 00:
I just want to mention a couple things.

[00:12:07] Speaker 03:
Well, you don't think use of the word Armour as it relates to clothing is somewhat arbitrary?

[00:12:12] Speaker 03:
I mean, think about it.

[00:12:13] Speaker 00:
When you think of armor wearing it, other than metal clothing.

[00:12:17] Speaker 03:
Come on, I'm asking the question.

[00:12:18] Speaker 03:
Sure.

[00:12:19] Speaker 03:
Sorry.

[00:12:19] Speaker 03:
Right.

[00:12:20] Speaker 03:
When you think of armor wearing it, you would normally think of wearing metal armor.

[00:12:25] Speaker 00:
Well, I think it also has the connotation of the clothing being strong.

[00:12:30] Speaker 00:
It's puffery.

[00:12:32] Speaker 00:
It's puffery.

[00:12:33] Speaker 00:
People are telling you that our clothing is strong.

[00:12:36] Speaker 00:
It's long lasting.

[00:12:37] Speaker 00:
It's like armor.

[00:12:39] Speaker 03:
Right, and if the reason that they have that perception is because Under Armour started using it for that purpose, then it doesn't make it completely a word that you can co-opt, right?

[00:12:54] Speaker 00:
I don't think we're co-opting it.

[00:12:55] Speaker 00:
And secondly, they haven't proven the strengths of the word Armour.

[00:12:59] Speaker 00:
It's their burden of proof.

[00:13:06] Speaker 01:
Under Armour also cites to some internal... When you say they didn't put the strength, is it because the board itself said it's somewhat suggestive and there was no marketplace evidence for this one?

[00:13:17] Speaker 01:
I mean, there's lots of marketplace evidence for Under Armour that they submitted, Under Armour, but not just for the word Armour by itself.

[00:13:23] Speaker 00:
No marketplace evidence for the word Armour by itself.

[00:13:24] Speaker 00:
They talk about an internal... One of their own employees testified that Armour is important.

[00:13:31] Speaker 01:
To what extent is the fact that they diligently, in fact doggedly,

[00:13:36] Speaker 01:
protect what what to what evidence does that to what extent I mean are there T tab cases I mean certainly there are none of our cases but are there T tab cases or other cases that indicate that that level of protection imbues strength to an otherwise suggestive mark?

[00:13:55] Speaker 00:
I would say no.

[00:13:59] Speaker 03:
Doesn't it go to exclusivity of use?

[00:14:03] Speaker 00:
Look I could have a mark XYZ for clothing

[00:14:06] Speaker 00:
I'm the only one who uses it, but I have very little sales and nobody ever heard about it.

[00:14:10] Speaker 00:
So what does exclusivity mean?

[00:14:13] Speaker 00:
You can have an exclusive mark, but nobody knows about it.

[00:14:15] Speaker 03:
It's one of the factors we're supposed to consider, right?

[00:14:17] Speaker 00:
Well, but it has to be coupled with consumer perception.

[00:14:22] Speaker 00:
When you say it has to be coupled, I guess that's what I'm misunderstanding.

[00:14:27] Speaker 01:
Is the strength of the mark argument only fame?

[00:14:32] Speaker 01:
or is it distinctiveness?

[00:14:34] Speaker 01:
It's distinctiveness.

[00:14:35] Speaker 01:
It's not just fame.

[00:14:37] Speaker 01:
But do you see that those are two different concepts, right?

[00:14:39] Speaker 01:
You can have a famous mark that is not distinctive, and you can have a distinctive mark that's not famous.

[00:14:44] Speaker 00:
So how do you weigh strength?

[00:14:46] Speaker 00:
Nobody's debating that armor is not a famous mark.

[00:14:49] Speaker 01:
So armor is not famous.

[00:14:51] Speaker 00:
The question is, what marketplace strength does it have?

[00:14:55] Speaker 00:
And they haven't proven any.

[00:14:58] Speaker 01:
But that's why I asked you, is this

[00:15:00] Speaker 01:
question of distinctiveness, because distinctiveness can, if being distinctive makes you a strong mark, regardless of marketplace presence, that's what I'm asking.

[00:15:10] Speaker 01:
That's not right.

[00:15:12] Speaker 00:
Being distinct, distinctiveness might give you some conceptual strengths, which we argue they don't have anyway, because armor is suggestive, but it certainly doesn't give you any marketplace strength.

[00:15:22] Speaker 00:
You have to use it, you have to, people have to see it, people have to recognize it, and they don't have that proof.

[00:15:31] Speaker 00:
I have nine seconds left, so I guess I'll just stop talking.

[00:15:35] Speaker 00:
Thank you.

[00:15:35] Speaker 04:
Yes, let's hear from the other side.

[00:15:37] Speaker 04:
Ms.

[00:15:45] Speaker 04:
Lindquist.

[00:15:48] Speaker 02:
May it please the court.

[00:15:49] Speaker 02:
The board's analysis of the standard character marks and their conclusion that those marks conflict with Under Armour's armor mark is absolutely correct.

[00:15:58] Speaker 01:
Okay, well let's start where he left off, since it's fresh in our minds.

[00:16:03] Speaker 01:
Armour was not found by the board to be famous as a mark.

[00:16:07] Speaker 01:
That's correct.

[00:16:09] Speaker 01:
Armour was found by the board to be slightly suggestive.

[00:16:12] Speaker 01:
Slightly suggestive, yes.

[00:16:13] Speaker 01:
Right, but that means it's not distinctive and, you know, it's slightly suggestive.

[00:16:18] Speaker 02:
Suggestive marks are distinctive.

[00:16:20] Speaker 01:
Okay, you're right.

[00:16:21] Speaker 01:
Descriptive.

[00:16:22] Speaker 01:
It's not descriptive.

[00:16:23] Speaker 01:
Right, yeah, okay.

[00:16:24] Speaker 01:
So, slightly suggestive.

[00:16:27] Speaker 01:
And then,

[00:16:28] Speaker 01:
There is no evidence of marketplace strength of armor in this record.

[00:16:34] Speaker 01:
Sorry.

[00:16:34] Speaker 01:
In this record.

[00:16:35] Speaker 01:
The board didn't, okay, the board made no fact-finding.

[00:16:37] Speaker 01:
How about this?

[00:16:37] Speaker 01:
This you'll agree with.

[00:16:38] Speaker 01:
The board made no fact-finding that armor alone has marketplace strength.

[00:16:42] Speaker 02:
That is correct.

[00:16:43] Speaker 01:
Okay.

[00:16:43] Speaker 01:
So you're saying there might be evidence, but the board didn't make a fact-finding on that.

[00:16:46] Speaker 01:
I can't make a fact-finding in the first instance on that.

[00:16:48] Speaker 01:
That is correct.

[00:16:49] Speaker 02:
The board did not make a fact-finding about marketplace strength.

[00:16:51] Speaker 01:
All right.

[00:16:51] Speaker 01:
I figured, I figured we could get to an agreement on that.

[00:16:53] Speaker 01:
So what

[00:16:56] Speaker 01:
What is the basis for the claim that this is then a strong mark?

[00:17:00] Speaker 01:
And what is the standard for this fifth DuPont factor?

[00:17:03] Speaker 01:
That's why I was trying to get at your opposing counsel about does this go to fame?

[00:17:07] Speaker 01:
Does it go to distinctiveness?

[00:17:08] Speaker 01:
Does it go to marketplace?

[00:17:09] Speaker 01:
You know, I am not positive.

[00:17:11] Speaker 01:
I understand.

[00:17:12] Speaker 01:
And we don't get a gazillion trademark cases, but I'm not positive.

[00:17:15] Speaker 01:
I understand what this fifth factor is really supposed to be measuring.

[00:17:19] Speaker 01:
And then tell me in light of all those facts that you and I did just agree on where you get the basis

[00:17:24] Speaker 01:
for substantial evidence to support a fact-finding of strength.

[00:17:28] Speaker 02:
OK.

[00:17:28] Speaker 02:
So there are two parts to strength.

[00:17:30] Speaker 02:
There's conceptual strength, and there's marketplace strength.

[00:17:33] Speaker 02:
And a conceptually strong mark can be a slightly suggestive mark.

[00:17:37] Speaker 02:
And in Jews Generation, this court made a distinction between highly suggestive marks and descriptive marks, noting that those really are very weak marks entitled to very narrow scopes of protection.

[00:17:48] Speaker 02:
So on the realm of distinctiveness,

[00:17:51] Speaker 02:
Highly suggestive is here, and slightly suggestive is here.

[00:17:56] Speaker 02:
So, conceptually, our position is armor is a strong mark.

[00:18:00] Speaker 01:
And then with respect to marketplace... Well, when you say a strong mark, do our cases say, is there anything that ever says slightly suggestive marks or strong marks?

[00:18:08] Speaker 01:
I mean, I'm kind of a little confused by that part.

[00:18:10] Speaker 02:
Yeah, so slightly suggestive is close to arbitrary.

[00:18:15] Speaker 02:
on the realm of distinctiveness marks.

[00:18:18] Speaker 01:
Oh yeah, because there's generic, descriptive, suggestive, and arbitrary.

[00:18:20] Speaker 01:
That's correct.

[00:18:21] Speaker 01:
I mean, I got that order right.

[00:18:22] Speaker 01:
All right, so slightly suggestive would still be in the suggestive range.

[00:18:28] Speaker 02:
With no requirement of showing that there's acquired distinctiveness.

[00:18:32] Speaker 02:
If you have a descriptive mark, you have to show, in order to gain protection for that mark, that the mark has acquired distinctiveness through use.

[00:18:41] Speaker 02:
With a suggestive mark.

[00:18:43] Speaker 01:
I understand that.

[00:18:44] Speaker 01:
I understand you don't have to, but how does that make it a strong mark?

[00:18:47] Speaker 01:
That's what I'm not understanding is I understand how it's registrable because it is slightly suggestive and not descriptive.

[00:18:55] Speaker 01:
Right.

[00:18:56] Speaker 01:
But I don't know why that translates into a fact finding that it is therefore a strong mark.

[00:19:01] Speaker 01:
Is there

[00:19:02] Speaker 01:
really great law out there that shows that the dividing line between strong mark, strong mark, I don't know what that descriptor means, strong mark.

[00:19:11] Speaker 01:
A strong mark to me is certainly an arbitrary mark, is a strong mark.

[00:19:16] Speaker 01:
And a generic mark is definitely not a strong mark, and a descriptive mark is not a strong mark, but I don't know what to make of the suggestive.

[00:19:21] Speaker 01:
Just because it's registerable, does that automatically make it a strong mark?

[00:19:26] Speaker 02:
I don't think it automatically makes it a strong mark, but the board's finding, based on the evidence here we have of record,

[00:19:33] Speaker 02:
with the dictionary definitions and the irrelevant third party registrations, shows that armor might be slightly suggestive for general articles of clothing.

[00:19:43] Speaker 02:
Might be slightly suggestive.

[00:19:44] Speaker 01:
So how does that make it?

[00:19:45] Speaker 01:
But what evidence is there that it's a strong mark?

[00:19:47] Speaker 01:
Because I don't think that just the fact that it could be slightly suggestive and not really, really suggestive makes it, it's like I strenuously object, Your Honor.

[00:19:57] Speaker 01:
But I don't know that I get that all the way to the strong mark.

[00:20:03] Speaker 01:
But that's enough to carry the water.

[00:20:04] Speaker 02:
There are no third party registrations for any armor marks except ours and their evade offshore on the marks at this point.

[00:20:12] Speaker 02:
So that alone shows- For clothing.

[00:20:15] Speaker 02:
You need to qualify yourself because there's a lot of armor marks for things like paint and other things.

[00:20:20] Speaker 02:
That's right.

[00:20:21] Speaker 02:
That's right.

[00:20:22] Speaker 01:
For general articles of clothing, there are no armor marks.

[00:20:25] Speaker 01:
And what about the fact that they showed, I mean, they gave a list of at least 20 marks that have used the word armor and in each case,

[00:20:32] Speaker 01:
it seems to be attempting to convey, with regard to the products it's used on, some notion of the strength or durability or whatever.

[00:20:42] Speaker 01:
I mean, when I think of armor, what comes to mind is it's going to protect me, right?

[00:20:46] Speaker 01:
It's going to be tougher than not wearing armor.

[00:20:50] Speaker 01:
So what about the fact that in all of the ones that they presented to us where the word armor appears, for the various goods that they are being applied to, it is conveying a sense of

[00:21:02] Speaker 01:
strength or durability.

[00:21:04] Speaker 02:
Well, for those particular products, it may be conveying that particular notion.

[00:21:08] Speaker 02:
And that doesn't affect the strength of armor for clothing.

[00:21:13] Speaker 02:
I mean, you can look at apple, and there are probably lots of apple farms out there, or products that are made from apples.

[00:21:20] Speaker 02:
But just because those exist, or there's an apple smell or scent for soap, doesn't impact the strength of apple for computers.

[00:21:28] Speaker 01:
Well, but I guess his argument, as I understand it, is

[00:21:31] Speaker 01:
that the mark is not strong because it's conveying an aspect or a descriptor of the goods, namely, these are strong goods, especially when you're talking about athletic wear, which Under Armour is, that these are strong strengths.

[00:21:46] Speaker 01:
I mean, that's sort of a characteristic, I mean, they don't put wimpy little geeks up there in their commercials, right?

[00:21:53] Speaker 01:
That's right.

[00:21:54] Speaker 01:
They're trying to convey a brand image.

[00:21:57] Speaker 01:
And the word armor contributes to that.

[00:21:59] Speaker 01:
That armor does draw to mind.

[00:22:01] Speaker 02:
But it's not descriptive of the clothing.

[00:22:03] Speaker 01:
Like you want the athletes, not the mathletes.

[00:22:07] Speaker 02:
You're advertising.

[00:22:07] Speaker 02:
But it's not descriptive of clothing.

[00:22:09] Speaker 02:
It's best to have both, if you have daughters.

[00:22:13] Speaker 02:
It's not descriptive of clothing.

[00:22:16] Speaker 02:
I mean, there's no finding here.

[00:22:17] Speaker 02:
There's no evidence of the record.

[00:22:19] Speaker 02:
None of the dictionary definitions.

[00:22:20] Speaker 02:
There are no third party registrations that are relevant.

[00:22:25] Speaker 02:
registrations or abandoned applications even, where armor is disclaimed.

[00:22:31] Speaker 02:
And one of them, it's a body armor mark.

[00:22:34] Speaker 02:
It was filed in 1998 with a disclaimer of body armor, and that was for athletic clothing.

[00:22:41] Speaker 02:
The application was never published.

[00:22:43] Speaker 02:
We don't have the benefit of anything that happened during prosecution of that application.

[00:22:48] Speaker 02:
It's possible that the applicant made a mistake.

[00:22:51] Speaker 02:
and disclaimed body armor for athletic clothes.

[00:22:54] Speaker 01:
Okay, but I feel like I've asked you so many questions you haven't gotten to fully answer the very first one, which I really think I need an answer to, which is so far the only piece of evidence that you've pointed me to that is what ought to be part of a bundle to prove substantial evidence for a finding of strength is the fact that the board found it to be slightly suggestive.

[00:23:14] Speaker 01:
And I kind of don't exactly know how to weigh that, but luckily I review that for substantial evidence, so I don't have to worry about it.

[00:23:21] Speaker 01:
That standing alone cannot equate to strength marks, because then every slightly suggested mark would always be entitled to the DuPont factor.

[00:23:30] Speaker 01:
So tell me what your other pieces of evidence are that lead to the strength.

[00:23:34] Speaker 01:
So an absence of use in the clothing field.

[00:23:37] Speaker 02:
Right.

[00:23:37] Speaker 02:
That is one of ours, and the fact that Under Armour has done this extensive policing.

[00:23:41] Speaker 02:
So when consumers are out in the marketplace based on this record,

[00:23:45] Speaker 02:
The only armor mark that they encounter is under armor's mark.

[00:23:49] Speaker 02:
That's the only armor mark that they're encountering in the marketplace.

[00:23:53] Speaker 02:
And here we have a lot of evidence of use, despite what he says.

[00:23:56] Speaker 02:
It's in the record, and it's in our briefs.

[00:23:59] Speaker 02:
We talked about it on pages 39 and 41 of our opening briefs.

[00:24:02] Speaker 02:
We have hang tags.

[00:24:03] Speaker 02:
And then on 5, 6, 8, 9, 10, 11, and 12 of our reply, we have additional examples of it.

[00:24:09] Speaker 02:
And in those examples, armor's used in different ways.

[00:24:12] Speaker 01:
But the board didn't cite to any of that and the board didn't make any fact findings on it.

[00:24:18] Speaker 01:
That's right, but there is evidence here.

[00:24:20] Speaker 01:
But I can't, we already talked about this earlier, I can't make a marketplace strength fact finding in the first instance, right?

[00:24:26] Speaker 01:
I mean, didn't we discuss that and come to that conclusion that the board did not make a fact finding that Armour had any market strength at all and you're pointing to me that there's evidence in the record upon which they could have but they didn't, you can't ask me to do that in the first instance.

[00:24:39] Speaker 01:
That's true.

[00:24:40] Speaker 02:
The board did not point to any marketplace evidence.

[00:24:43] Speaker 02:
Or make any fact-finding relevant.

[00:24:44] Speaker 01:
They did not.

[00:24:45] Speaker 02:
But there is substantial evidence, and it's in the record here, of marketplace strength for armor.

[00:24:52] Speaker 04:
Let's switch from the time we have left to the cross appeal.

[00:24:56] Speaker 04:
OK.

[00:24:57] Speaker 04:
And to tell us why you think.

[00:25:00] Speaker 04:
Is the theory that despite the design elements in the mark that the

[00:25:09] Speaker 04:
board sustained that there's still likely to be confusion?

[00:25:14] Speaker 02:
Yes, that is our argument.

[00:25:17] Speaker 02:
So the two cases, the standard character marks and then the design marks, it's our argument that the board should have come out the same way on both of them.

[00:25:27] Speaker 02:
The only mark on this record that consumers are familiar with is the armor mark.

[00:25:32] Speaker 02:
And Evade makes some arguments here.

[00:25:36] Speaker 02:
In his opening, he said that Evade, they have a trademark registration.

[00:25:39] Speaker 02:
That registration is not of record in this case.

[00:25:42] Speaker 02:
He noted it in a footnote in his brief.

[00:25:45] Speaker 02:
But that registration is not of record.

[00:25:47] Speaker 02:
The only armor registration that has any strength here, that has any use, is under armor's armor mark.

[00:25:54] Speaker 02:
And there's a lot of that.

[00:25:56] Speaker 02:
And when consumers are in the marketplace and they see the evade stylized offshore armor mark,

[00:26:02] Speaker 02:
They're going to remember the armor portion because that's why I'm looking at it.

[00:26:07] Speaker 01:
I can barely read the armor portion could have something to do with this, but I can barely read.

[00:26:11] Speaker 01:
I mean, evade is, is, is at least a hundred times larger than the words offshore armor, which are like these tiny little minuscule letters underneath the word of aid.

[00:26:22] Speaker 01:
And they can only use it this way.

[00:26:23] Speaker 01:
They can't change the dimensions at all.

[00:26:25] Speaker 01:
They got a really narrow mark.

[00:26:29] Speaker 01:
here in this stylized version.

[00:26:30] Speaker 01:
So why, why would, what, why, what is your evidence?

[00:26:34] Speaker 01:
I mean, you didn't do a survey or anything.

[00:26:35] Speaker 01:
What is your evidence that people looking at this giant stylized word evade with like lightning bolts coming out of the two E's is nonetheless going to focus on the tiny little less adorned, in fact, not at all adorned word armor underneath.

[00:26:49] Speaker 01:
Why?

[00:26:50] Speaker 02:
So that registration has no color claim at all.

[00:26:53] Speaker 02:
It's possible that the mark could be presented in a way that emphasizes armor.

[00:26:58] Speaker 02:
as opposed to the evade.

[00:26:59] Speaker 02:
There's no question that evade is the large part of that mark.

[00:27:03] Speaker 02:
But color could be emphasized.

[00:27:06] Speaker 02:
For example, you could have light gray where the evade and the offshore are.

[00:27:10] Speaker 02:
And then armor could be in light red.

[00:27:12] Speaker 01:
And where is your evidence that that would cause people to then focus on the word armor and so much so that it would cause a likelihood of confusion?

[00:27:23] Speaker 02:
So in our evidence, Under Armour has dynamic marks.

[00:27:27] Speaker 02:
That's seen in the evidence.

[00:27:28] Speaker 02:
They use their marks in lots of different ways.

[00:27:30] Speaker 02:
And specifically on A853 of the appendix, it's a page from an Under Armour catalog.

[00:27:36] Speaker 02:
And this is just one example.

[00:27:37] Speaker 02:
There are other examples.

[00:27:39] Speaker 02:
There's UA Youth Boys.

[00:27:42] Speaker 02:
UA and boys are in white in that presentation, and youth is in white gray.

[00:27:49] Speaker 02:
The UA's and boy, that language is emphasized in that particular presentation.

[00:27:55] Speaker 02:
And there are other presentations like that in our evidence.

[00:27:59] Speaker 02:
And in fact, evade specimen that they submitted during prosecution of their application is used in different colors.

[00:28:05] Speaker 02:
And that's on page 20 of their reply brief.

[00:28:07] Speaker 02:
But the evidence here shows that color can

[00:28:12] Speaker 02:
impact the presentation of a mark and what someone would remember from a mark?

[00:28:17] Speaker 01:
Well, that's the part.

[00:28:19] Speaker 01:
You say it could impact color.

[00:28:21] Speaker 01:
What evidence is there that it does, even with regard to your underarm remark, that it does in fact impact consumer impressions?

[00:28:33] Speaker 01:
You're saying it could, but that just sounds like a lot of attorney argument to me.

[00:28:37] Speaker 01:
Because I'm looking at the mark, and if the only standard is what I think could

[00:28:41] Speaker 01:
happened, there's no way that this could cause confusion, because armor is this tiny little unstylized thing, and the whole word of aid is all that jumps out at me.

[00:28:50] Speaker 02:
But the mark could be used in any color combination at all.

[00:28:53] Speaker 02:
And again, if it's light gray and then you have fire engine red, armor is going to stick out in that presentation.

[00:28:59] Speaker 02:
That's going to be what consumers are going to remember.

[00:29:02] Speaker 02:
based on this record, no one knows of evade.

[00:29:05] Speaker 02:
There is no evidence that anyone has ever heard of evade, has ever purchased any evade.

[00:29:11] Speaker 02:
There's nothing of evidence of record of that.

[00:29:13] Speaker 02:
There is evidence that Armour has been promoted extensively and for a really long time in the record.

[00:29:19] Speaker 02:
It's part of under Armour's telephone number.

[00:29:22] Speaker 02:
There are Armour products all over its websites.

[00:29:24] Speaker 02:
Can I ask you a question?

[00:29:26] Speaker 03:
I don't understand why the board did not consider

[00:29:31] Speaker 03:
the extent to which armor is famous in the context of the under armor mark.

[00:29:36] Speaker 03:
You proposed that, and the board just said, no, we're just going to look at armor by itself.

[00:29:41] Speaker 03:
Do you understand the rationale for that?

[00:29:43] Speaker 03:
Because I couldn't follow it.

[00:29:47] Speaker 02:
Based on their opinion, I think what they tried to do was take the mark that, in their opinion, was closest to the evade marks and completely made a decision based on that, I think.

[00:29:59] Speaker 02:
They thought it was easier.

[00:30:00] Speaker 02:
Again, I don't know what they were thinking, but I'm assuming they thought it was easier to base their decision on the armor mark alone than under armor.

[00:30:07] Speaker 02:
But our position is that under armor has an extensive number of armor marks.

[00:30:12] Speaker 02:
There are lots of them.

[00:30:13] Speaker 02:
And in this evidence, we have use of these armor marks, armor fleece, armor block, all of these.

[00:30:19] Speaker 01:
I want to ask you another question, because your time's about to run out.

[00:30:21] Speaker 01:
So I don't want to miss it.

[00:30:24] Speaker 01:
Similarity or dissimilarity of the marks?

[00:30:25] Speaker 01:
The really only main appeal are only two issues.

[00:30:28] Speaker 01:
We explored strength.

[00:30:29] Speaker 01:
similarity or dissimilarity is probably the most troubling one for me.

[00:30:32] Speaker 01:
The board's fact findings are pretty much non-existent.

[00:30:36] Speaker 01:
Like I can't understand the logic or rationale for how they concluded evade offshore armor is in sight, sound, and appearance, the same thing as the word armor standing alone.

[00:30:49] Speaker 01:
I cite sound and appearance.

[00:30:51] Speaker 01:
Like I get the likelihood of confusion conclusion, but on this one little sub factor,

[00:30:56] Speaker 01:
I'm having a little trouble getting there.

[00:30:58] Speaker 01:
So tell me why I should nonetheless think that one factor.

[00:31:01] Speaker 01:
And by the way, even if that one factor goes in his favor, it doesn't mean there's no likelihood of confusion.

[00:31:05] Speaker 01:
I just want to be clear.

[00:31:06] Speaker 01:
I'm just having trouble with this one factor.

[00:31:08] Speaker 02:
So when you have a registered mark, a junior user can't come along and just add

[00:31:14] Speaker 02:
information or material to that registered mark and create a new mark and avoid confusion.

[00:31:19] Speaker 02:
Actually, the house mark cases.

[00:31:21] Speaker 01:
Well, that's true for confusion overall.

[00:31:23] Speaker 01:
But is that true for sight, sound, appearance, and meaning?

[00:31:27] Speaker 01:
Yes.

[00:31:28] Speaker 01:
Like for that sub-factor?

[00:31:29] Speaker 01:
Because I don't know.

[00:31:31] Speaker 01:
I mean, I just didn't get anything out of the board's opinion.

[00:31:34] Speaker 01:
And sound.

[00:31:36] Speaker 01:
Evade, offshore.

[00:31:37] Speaker 01:
Armor.

[00:31:38] Speaker 01:
Armor.

[00:31:40] Speaker 01:
They sound really different to me.

[00:31:42] Speaker 01:
Most of the sound cases we get, it's words that actually do sound alike.

[00:31:47] Speaker 01:
And it's usually like the same number of syllables are close, same number of words.

[00:31:52] Speaker 01:
You get my point.

[00:31:54] Speaker 02:
Both of the marks have armor in them.

[00:31:56] Speaker 02:
And we have a whole series of armor marks.

[00:31:59] Speaker 02:
We use armor with lights.

[00:31:59] Speaker 01:
But those aren't the ones that the board used for likelihood of confusion analysis.

[00:32:04] Speaker 01:
So I think you're absolutely right.

[00:32:05] Speaker 01:
You actually have that catalog

[00:32:07] Speaker 01:
that doesn't just say armor, it says outdoor right across the middle, right?

[00:32:10] Speaker 01:
If that had been what they used, that would be different.

[00:32:12] Speaker 01:
Then, sight, sound, and appearance hold outdoor armor and evade outdoor armor, getting a lot, lot, lot closer.

[00:32:18] Speaker 01:
But for just armor, you can't talk about the other uses of the word armor, because those aren't the ones that the board found in sight, sound, and meaning to be the same.

[00:32:26] Speaker 02:
So with respect to armor and

[00:32:29] Speaker 02:
evade offshore armor.

[00:32:31] Speaker 02:
The marks do sound alike.

[00:32:32] Speaker 02:
You have to consider that armor is in both marks.

[00:32:35] Speaker 02:
And even if you add something to the mark, that doesn't mean that the marks don't sound alike.

[00:32:41] Speaker 02:
That's the trademark law.

[00:32:43] Speaker 02:
And adding a house mark is looked at when you determine the similarity and the dissimilarity of a

[00:32:49] Speaker 01:
And when you have a mark that's not descriptive, like... When you say adding a house mark to make sure I understand you, you mean like the word evade.

[00:32:55] Speaker 02:
Evade is their house mark.

[00:32:56] Speaker 02:
Yeah, it's an alleged house mark.

[00:32:58] Speaker 02:
Oh, it's not.

[00:32:59] Speaker 02:
So adding a... So this... The board talks about it being a house mark.

[00:33:03] Speaker 02:
Again, there's no evidence here of any use of evade.

[00:33:06] Speaker 02:
So we call it an alleged house mark because we don't know that it is a house mark and no one knows evade.

[00:33:14] Speaker 02:
On this record, no one knows evade, the company or the goods at all.

[00:33:19] Speaker 02:
In the cases about house marks, the two that they've relied on, they're actually quite different.

[00:33:25] Speaker 02:
Kitty was one of the registered marks for cat food.

[00:33:28] Speaker 02:
That was a descriptive term.

[00:33:30] Speaker 02:
So adding a house mark to a descriptive term probably doesn't result in likelihood of confusion.

[00:33:35] Speaker 02:
And in the second case, the applicant didn't take the entirety of the registrant's mark.

[00:33:41] Speaker 02:
It took a portion of the registrant's mark.

[00:33:44] Speaker 02:
And so therefore, the marks were different.

[00:33:46] Speaker 02:
in sound, sight, and meaning.

[00:33:48] Speaker 02:
But here we don't have that.

[00:33:49] Speaker 02:
They've taken all of our armor mark and added material to it, added a house mark to it that does not distinguish it from our armor mark.

[00:34:02] Speaker 04:
OK.

[00:34:02] Speaker 04:
Let's hear from the other side.

[00:34:05] Speaker 04:
We'll save you some time on the cross appeal.

[00:34:12] Speaker 04:
Mr. Welch.

[00:34:13] Speaker 00:
I just wanted to make one point.

[00:34:16] Speaker 00:
Under Armour continues to say that there's no proof that Evade uses its marks.

[00:34:20] Speaker 00:
That's absolutely untrue, because one, there are two registrations which are based on use.

[00:34:27] Speaker 00:
There are specimens in the file.

[00:34:29] Speaker 00:
Section seven of the act says that registration is prima facie evidence that the marks are valid, owned by the registrant, and in use.

[00:34:37] Speaker 00:
Their own evidence includes Evade's interrogatory answers, where it says it uses the marks and it states where it advertised the marks.

[00:34:46] Speaker 00:
So for Under Armour to continue to say that this mark is in use is just nonsense.

[00:34:51] Speaker 00:
And secondly, to say that no one knows about the word evade, that's a red herring.

[00:34:55] Speaker 00:
That's not the question here.

[00:34:57] Speaker 00:
It's not up to evade to prove that its mark is well known.

[00:35:00] Speaker 00:
It's up to Under Armour to prove likelihood of confusion.

[00:35:04] Speaker 00:
And they haven't proven it.

[00:35:05] Speaker 00:
You have to take the word as it is that's applied for and decide whether it's confusable or not.

[00:35:11] Speaker 00:
You don't turn the table on the applicant or the registrant and say, OK, you prove your mark is strong.

[00:35:16] Speaker 00:
That's not the way it works.

[00:35:19] Speaker 00:
That's all I have.

[00:35:20] Speaker 04:
OK.

[00:35:21] Speaker 04:
Thank you.

[00:35:22] Speaker 04:
Do you need the last word, Ms.

[00:35:25] Speaker 04:
Niqueth?

[00:35:27] Speaker 04:
Just on the cross of two.

[00:35:29] Speaker 02:
Yes, yes.

[00:35:39] Speaker 01:
You can turn around and sit back down if you change your mind.

[00:35:42] Speaker 01:
You look like you kind of want to.

[00:35:50] Speaker 01:
Because he really didn't say much.

[00:35:52] Speaker 02:
No, you're exactly right.

[00:35:54] Speaker 02:
I mean, our position is that evade here on this record.

[00:35:59] Speaker 02:
It's the type of mark that Under Armour would use with its armor marks.

[00:36:04] Speaker 02:
We have lots of armor formative marks.

[00:36:06] Speaker 02:
Evade is the type of mark that we would use to armor.

[00:36:09] Speaker 02:
It's conceivable and possible and likely that a consumer would think that evade offshore armor was an under armor product, under its armor marks.

[00:36:20] Speaker 02:
And there's lots of co-branding between different companies.

[00:36:24] Speaker 02:
It happens all of the time.

[00:36:26] Speaker 02:
Disney is a company that partners with lots of people.

[00:36:29] Speaker 02:
And in fact, every 10-year-old knows that Disney today owns the rights to make Star Wars films.

[00:36:37] Speaker 02:
Unlikely, we think it's likely that evade offshore armor would be thought to be an armor product from under armor.

[00:36:46] Speaker 04:
OK.

[00:36:47] Speaker 04:
Thank you.

[00:36:47] Speaker 04:
Thank you both.

[00:36:48] Speaker 04:
The case is taken under submission.

[00:36:50] Speaker 04:
That concludes the argued cases for this morning.