[00:00:02] Speaker ?: Thank you. [00:01:03] Speaker 04: Okay, the next case, if you're ready, is number 16, 1695, Henry Katakis. [00:01:15] Speaker 04: Mr. Sotone. [00:01:16] Speaker 02: Yes, Henry J. Sotone for Appellant Katakis, may it please the court. [00:01:19] Speaker 02: This case is about suggestive trademarks and whether the trademark candy is suggestive for food cart, food stall, or in food stall services. [00:01:30] Speaker 02: that are envisioned and intend to use trademark. [00:01:33] Speaker 02: The standard for suggestive trademarks are that they require imagination on the consumer's part to call a direct message from the mark about the quality ingredients or characteristics of the service. [00:01:43] Speaker 02: And I would stress call a direct message from that. [00:01:46] Speaker 02: Suggestive trademarks will inevitably lead the consumer to the meaning of the mark. [00:01:54] Speaker 02: So that would be our primary point here. [00:01:59] Speaker 02: the USPTO considers the mark descriptive. [00:02:02] Speaker 02: And they've cited a lot of cases where the marks were ultimate by crack, the handkerchief of the year, those kinds of things that we would argue are definitely descriptive because they convey a real or unequivocal idea of the trademark. [00:02:19] Speaker 02: Abercrombie says it's forthwith conveys the idea. [00:02:21] Speaker 03: Here we have... Can I ask you just about one, I guess, scenario that I'm thinking about? [00:02:29] Speaker 03: I'd like you to address it. [00:02:32] Speaker 03: My recollection is that both in the board's opinion and in the briefs, there are numerous instances in which at least reviewers have used the term meat candy as a term of praise. [00:02:47] Speaker 03: Suppose some of the establishments that were praised started using that in their advertising, saying, [00:02:56] Speaker 03: meat candy, and it becomes widespread as a borrowing from reviewers. [00:03:07] Speaker 03: I'm worried about the idea that those establishments couldn't quote a review without generating a trademark suit from somebody who owns [00:03:22] Speaker 03: neat candy. [00:03:23] Speaker 02: I think fair use will protect them. [00:03:26] Speaker 02: The mark is suggestive, so we are on the borderline between descriptive and suggestive. [00:03:31] Speaker 02: If we say this mark is suggestive, we're going to say a lot of marks are suggestive. [00:03:36] Speaker 02: I mean, if we say it's descriptive, we're going to end up saying a lot of marks are descriptive outside of duopros and some of the other cases that held marks like simply safe or ultimate bike rack. [00:03:48] Speaker 02: to be laudatory or puffery. [00:03:51] Speaker 02: Once we move beyond that, now we start to get into words that have multiple meanings, like meat candy, where you have candy either meaning actual candy, and they only found three instances of that, your honor. [00:04:01] Speaker 02: Well, actually one. [00:04:02] Speaker 02: They say they found three. [00:04:04] Speaker 02: One of them was an ice cream, a foie gras ice cream. [00:04:06] Speaker 02: These are niche products, to be fair. [00:04:09] Speaker 02: The press review said they were gross or interesting, one or the other. [00:04:14] Speaker 02: And the other one was- Close or interesting? [00:04:17] Speaker 02: Yeah, at saver.com, appendix eight. [00:04:21] Speaker 02: The other one was a bacon rice crispy treat, which is a cake, not a candy product. [00:04:27] Speaker 02: They did find the bacon peanut brittle, which we would say might be borderline candied. [00:04:35] Speaker 02: To answer the question, I think Fair Use is gonna hold, because people will have the right to use terms like crack-like or [00:04:44] Speaker 02: One of the synonyms that the PTO brought forward was a review that said that the meat candy is crack-like. [00:04:53] Speaker 02: So if someone said crack wanted to refer to their product as crack-like and our mark had been crack-like instead or crack-like meat, then why not let them engage in fair use and use that review? [00:05:09] Speaker 04: So what good would the trademark do? [00:05:12] Speaker 02: Well, the trademark [00:05:14] Speaker 02: would be on the cart itself. [00:05:16] Speaker 02: I mean, there's a difference between quoting a review that uses a suggestive term and when it's emblazoned on the board of a restaurant or a location. [00:05:32] Speaker 04: Sure, so your client would have the symbol of a registered trademark. [00:05:40] Speaker 04: which by statute applies throughout the nation, and yet anyone selling this product can use the term. [00:05:51] Speaker 02: They could quote a review. [00:05:52] Speaker 02: They couldn't call their product meat candy or call their food, more importantly, call their food. [00:05:57] Speaker 02: There's a difference also between a product called meat candy and a restaurant service. [00:06:01] Speaker 02: It would be like if Sarah Lee were not a famous mark. [00:06:05] Speaker 02: If someone opened a Sara Lee restaurant and there were also Sara Lee baked good in the frozen food section, those are two different markets. [00:06:12] Speaker 02: So there is that to protect them as well. [00:06:18] Speaker 04: So the registration, I guess I didn't read the registration. [00:06:22] Speaker 04: The registration is limited to restaurant names? [00:06:26] Speaker 02: Yeah, it's not a food product. [00:06:27] Speaker 02: This is a food cart, food stall, kiosk, one of the food trucks you see around town. [00:06:36] Speaker 03: I should know this, but is fair use in the statute or a gloss? [00:06:44] Speaker 02: I don't know the answer to that either, Your Honor. [00:06:46] Speaker 02: I know it exists and that you can use a mark when you're making a factual statement. [00:06:55] Speaker 03: Right. [00:06:56] Speaker 03: Have there been instances that the scenario that I was concerned about was not somebody using [00:07:05] Speaker 03: a registrant's mark in commenting on the registrant's product or comparing his to the registrant's product, but quoting somebody using a registered mark simply as a descriptor of his own product. [00:07:26] Speaker 03: Is there an instance of that in the case law? [00:07:29] Speaker 02: I don't know of any, Your Honor. [00:07:33] Speaker 04: So you were sharing your argument with Mr. Dolan, is that correct? [00:07:36] Speaker 02: Yes, he's doing the rebuttal. [00:07:38] Speaker 02: Okay. [00:07:41] Speaker 02: I would point out that a trademark, to be deemed descriptive, all meanings of that mark have to be descriptive. [00:07:49] Speaker 02: If any of the meanings are not descriptive, then the mark is suggestive. [00:07:54] Speaker 02: So you have in Appellee's briefing here, [00:07:58] Speaker 02: the multiple definitions for candy, a sweet food made with sugar or chocolate, or something that is pleasant or appealing or light in a frivolous way. [00:08:05] Speaker 02: So we have to think about what it means when we hear the word candy. [00:08:09] Speaker 02: Do we smile? [00:08:10] Speaker 02: Are we happy? [00:08:11] Speaker 02: There are a lot of connotations to that word. [00:08:14] Speaker 02: There's eye candy, visually appealing. [00:08:17] Speaker 02: All of these things don't have anything to do with food. [00:08:22] Speaker 02: So at that point, we have an incongruous mark. [00:08:26] Speaker 02: So we have to say it's suggestive. [00:08:31] Speaker 04: Okay, let's hear from Mr. Dolan. [00:08:37] Speaker 01: Okay. [00:08:55] Speaker 02: I'll also say that a lot of the usages are very Spartan in the record. [00:09:01] Speaker 02: There are a few Internet websites. [00:09:03] Speaker 02: Most of them are titles of products. [00:09:06] Speaker 02: People are using it as a trademark, which is fine. [00:09:10] Speaker 02: Those are common law users. [00:09:11] Speaker 02: Maybe they predate us. [00:09:12] Speaker 02: Maybe they have superior rights at some point. [00:09:14] Speaker 02: I don't know. [00:09:16] Speaker 02: We certainly were not aware of them at the time of the filing of the mark. [00:09:20] Speaker 02: So those prior usages, if you look at them, are all initial capitals or [00:09:25] Speaker 02: One of them is a menu item from a restaurant. [00:09:29] Speaker 02: They're fairly hard to find unless you start digging. [00:09:32] Speaker 02: But PliBoo says that when something's used as a trademark, it's trademark. [00:09:37] Speaker 02: It doesn't say that it becomes descriptive because other people are using it as a trademark. [00:09:46] Speaker 04: Okay. [00:09:46] Speaker 04: Any questions for Mr. Seacham? [00:09:49] Speaker 04: All right. [00:09:50] Speaker 04: Thank you. [00:09:50] Speaker 02: Thank you, Your Honor. [00:09:57] Speaker 04: Ms. [00:09:58] Speaker 04: Walker. [00:10:01] Speaker 00: Good morning. [00:10:02] Speaker 00: May it please the court. [00:10:04] Speaker 00: This is not a closed case. [00:10:05] Speaker 00: The mark at issue here, or the applied for mark, is descriptive, and the evidence in the record clearly demonstrates that it is descriptive. [00:10:14] Speaker 00: The suggestive meaning that applicant offers in its opening, in her opening brief is that, is [00:10:22] Speaker 00: a almost direct quote from a dictionary definition here. [00:10:26] Speaker 00: Applicants suggest that candy means something pleasing. [00:10:30] Speaker 00: That language tracks exactly one of the dictionary definitions for candy. [00:10:36] Speaker 00: All of the evidence of meat candy as a combined term confirms that descriptive meaning here. [00:10:42] Speaker 00: There is no question that this term, as it applies to these services, which applicant has identified will feature delicious tasting meat, [00:10:51] Speaker 00: is descriptive. [00:10:52] Speaker 00: And I want to offer one point on the fair use. [00:10:54] Speaker 00: Fair use is not an analysis that's undertaken in the registration context. [00:10:59] Speaker 00: A registration here will give the applicant for the first five years prima facie evidence of the right to use and the right to bring [00:11:08] Speaker 00: in action and after that five years it's eligible for incontestable rights. [00:11:13] Speaker 00: So the fair use here prevents someone from using meat candy in a way that could be deemed to be a trademark use. [00:11:24] Speaker 00: It's not true that other uses that could be deemed to be a trademark use will be available to others. [00:11:32] Speaker 00: If the court has no further questions. [00:11:34] Speaker 03: I mean, you said that this was not a close case, clearly descriptive. [00:11:40] Speaker 03: I guess I would, I'm not sure it's not a close case. [00:11:46] Speaker 03: I'm not sure it's purely descriptive, in part because I'm not sure of exactly how to draw the line between the descriptive and suggestive. [00:11:56] Speaker 03: which is a line that I guess the law requires us to draw, even if as a linguistic matter, that may not be a terribly easy line. [00:12:08] Speaker 03: There's something playful, I would use the word fanciful if it didn't have a legal connotation. [00:12:16] Speaker 03: I don't think I've heard of expressions like, you know, ex-candy until, you know, [00:12:23] Speaker 03: somewhere late in my life, relatively new, and there's something other than, I mean, I wouldn't expect, for example, a scientist to use the term meat candy in trying to give an objective description of something. [00:12:40] Speaker 03: What does one do with the distinctive, I don't mean distinctive in a trademark sense, the distinctive character of this expression as a whole, not candy by itself? [00:12:53] Speaker 00: Right. [00:12:53] Speaker 00: Understood, Your Honor. [00:12:54] Speaker 00: And I want to be clear that the court doesn't need to find this is not a close case, of course, right? [00:13:00] Speaker 00: The court just needs to find that the board's decision was supported by substantial evidence. [00:13:05] Speaker 00: Even if it is a close case, if a reasonable person could have found as the board did, the court must affirm. [00:13:10] Speaker 00: And in terms of the mark, the term as a whole, there is substantial evidence in the record. [00:13:17] Speaker 00: And I don't mean that in a legal sense. [00:13:18] Speaker 00: I just mean the volume of evidence. [00:13:20] Speaker 03: How much of that was reviewers and how much of it was establishments that wanted to sell something beyond their own? [00:13:29] Speaker 00: We go through the evidence and the record on pages three through five of our brief. [00:13:36] Speaker 00: And it's a mix. [00:13:38] Speaker 00: There are recipes. [00:13:39] Speaker 00: There are reviews. [00:13:41] Speaker 00: There are menu items that use the term meat candy. [00:13:45] Speaker 00: And there are articles. [00:13:47] Speaker 00: And they all are using the joint term [00:13:50] Speaker 00: meat candy to identify a meat product. [00:13:54] Speaker 00: The other thing, in recognizing, this court in recognizing that suggestiveness and descriptiveness is often a close case, the court also recognized that the board has a duty to place the term in the proper context within the mark [00:14:10] Speaker 00: and to determine the public's perception. [00:14:12] Speaker 00: And here, the suggestive meaning that applicant has offered is one that is in a dictionary. [00:14:19] Speaker 00: It is a dictionary definition of candy. [00:14:21] Speaker 00: So both the dictionary definitions here and the uses of the combined term identify meat candy as descriptive of the featured item of applicant services. [00:14:40] Speaker 00: Unless the court has any further questions, I will sit down. [00:14:43] Speaker 04: I think we're OK. [00:14:44] Speaker 00: Thank you. [00:14:45] Speaker 04: OK. [00:14:45] Speaker 04: Thank you, Ms. [00:14:46] Speaker 04: Walker. [00:14:49] Speaker 04: OK. [00:14:50] Speaker 04: Mr. Dolan. [00:14:51] Speaker 01: Good morning, all. [00:14:52] Speaker 01: May it please the court, Director Dolan, also on behalf of Helen Titakis. [00:14:57] Speaker 01: Let me begin just quickly going back to just Toronto's question on fair use. [00:15:02] Speaker 01: And just to clarify, it is a statutory defense. [00:15:05] Speaker 01: And to the extent this way the statute is written, I don't remember it fully from memory. [00:15:09] Speaker 01: whenever an individual or company uses a term not for trademark purposes, for descriptive or other purposes, and in good faith, fair use will protect them. [00:15:20] Speaker 01: So if they want to quote or review, if they want to describe their goods, for example, companies that would actually... Is the term fair use actually in statutes? [00:15:28] Speaker 01: Yes, there's actually a statutory section that I should call fair use. [00:15:34] Speaker 01: But the point is, for example, if some other company wanted to go out and make bacon-flavored candy that actually would be actual candy, they wanted to say this is meat-based candy or meat candy, this would not be used necessarily as a trademark, right? [00:15:47] Speaker 01: It would be used to describe their goods, and they'll be perfectly safe in a statutory regime. [00:15:54] Speaker 01: So I don't think that really is or should be a concern. [00:15:59] Speaker 01: And it is fair to point out that because the trademark, if this support were to conclude the trademark here is in fact suggestive, then cases do say that the closer a trademark is to that line, the broader the fair use defense. [00:16:16] Speaker 01: So for example, a fair use defense against a fanciful mark or arbitrary mark is going to be much narrower than against a suggestive mark, precisely for that reason, because the line is actually fairly fuzzy. [00:16:26] Speaker 01: So, and yes, I think other, so again to Toronto's question, I think yes, other companies will be able to describe their goods or quotes or reviews because they would not be using that term as a mark, which is really what statutes requires. [00:16:39] Speaker 01: And they would not be using it to confuse consumers. [00:16:42] Speaker 01: Now, in terms to respond to the government's argument, it is, we disagree that it, well, I guess we agree that it's not a close case, I think, except that we think we should prevail. [00:16:55] Speaker 01: The government does cite a number of items in the record and in their brief. [00:17:00] Speaker 01: The problem is they're exactly right. [00:17:02] Speaker 01: They're placed in a proper context. [00:17:04] Speaker 01: And the context is that most of their citations are actually too sweet. [00:17:07] Speaker 01: So they have bacon-flavored dessert. [00:17:10] Speaker 01: They have some other sort of meat-based foie gras ice cream, which I believe my co-counsel is kind of weird. [00:17:16] Speaker 01: But be that as it may, it doesn't [00:17:19] Speaker 01: touch on what our client is trying to sell. [00:17:22] Speaker 01: It doesn't touch on actual antivirus services, which is a food truck. [00:17:25] Speaker 01: So those are actual meat candy. [00:17:27] Speaker 01: And of course, in that context, it's descriptive. [00:17:32] Speaker 01: And that is fine because depending on the market, depending on what you're selling, the same mark can be both descriptive or suggestive or it can be generic versus arbitrary. [00:17:41] Speaker 01: So for example, apple, if you're talking about Macintosh apples, [00:17:44] Speaker 01: That's a generic term. [00:17:45] Speaker 01: If you're talking about computers, it's an arbitrary term. [00:17:48] Speaker 01: So the fact, or you know, Abercrombie and Fitch goes about it as well. [00:17:51] Speaker 01: So if you're talking about hats and you say safari, that's a descriptive term because you can, when I say safari hat, everybody who, you know, watch cartoons can draw that. [00:17:59] Speaker 01: But if I say safari boots, those are not necessarily descriptive term. [00:18:04] Speaker 01: That's somewhat either suggestive or arbitrary. [00:18:07] Speaker 01: And so the courts have drawn that line, recognizing that depending on the market, [00:18:12] Speaker 01: your mark can be one or the other. [00:18:14] Speaker 01: So if we were talking about candy, I think we would agree that meat candy would actually be descriptive. [00:18:20] Speaker 01: But the point is here, when we present meat candy to a consumer, precisely because there are meat-based candies, the consumer has to actually think [00:18:33] Speaker 01: And imagine what exactly our client's product is, that it's not actually candy, that it is meat, and so why is candy there? [00:18:40] Speaker 01: It's just to recognize that it's some other type of product. [00:18:46] Speaker 01: It may be a pleasing product, it may be a very good product, but a consumer doesn't immediately know what's in the box, precisely because [00:18:55] Speaker 01: descriptively meat candy would actually require there to be actual candy, and that's not what we are supposing. [00:19:00] Speaker 01: So I think context matters, but I don't think context works for the government. [00:19:05] Speaker 01: I think it works for us. [00:19:06] Speaker 01: And so the fact that there are dictionary definitions that we set in our briefs and we rely on, again, I think works for us because ultimately what we are trying to get consumers to do is we're trying to get them to think through or to imagine exactly what [00:19:21] Speaker 01: in the boxes were as opposed to really describing what's there. [00:19:25] Speaker 04: And so with the last 30 seconds unless the court has any further questions.