[00:00:01] Speaker 01:
Mr. Moore?

[00:00:30] Speaker 04:
Your honor.

[00:00:31] Speaker 04:
May I please report?

[00:00:32] Speaker 04:
You're reserving five.

[00:00:33] Speaker 04:
Reserving five.

[00:00:34] Speaker 04:
Okay.

[00:00:35] Speaker 04:
Please proceed.

[00:00:38] Speaker 05:
I'm Thomas Moore.

[00:00:38] Speaker 05:
I represent the appellant, Martin Woodman, with my co-counsel, Mr. Lee.

[00:00:43] Speaker 05:
For the appellee, Michelle Lee, director of the USPTO, are Thomas Casagrande, associate solicitor, and Mai Trang, both with the USPTO.

[00:00:54] Speaker 05:
A brief statement of the question before this court is whether the words fraternal financial,

[00:01:01] Speaker 05:
have acquired distinctiveness as a service mark for financial services that are provided by my client, Modern Woodman, which is a fraternal benefits organization?

[00:01:12] Speaker 05:
The correct answer is yes, and the TTA be erred in ruling otherwise.

[00:01:17] Speaker 01:
The primary is five years of exclusive use.

[00:01:20] Speaker 05:
Substantially exclusive and continuous use of the mark.

[00:01:23] Speaker 01:
Substantially.

[00:01:24] Speaker 01:
The statute says exclusive, right?

[00:01:29] Speaker 05:
I believe the statute says substantially exclusive and continuous use.

[00:01:35] Speaker 05:
I think that's designed to require you to indicate that Congress did not want 100% standard.

[00:01:43] Speaker 05:
So for example, if in the period of five years you stopped use of the mark for two weeks, that's still substantially continuous.

[00:01:51] Speaker 01:
Well, exclusive is what I was pointing to.

[00:01:54] Speaker 01:
Exclusive means nobody else is using it.

[00:01:57] Speaker 05:
That's correct.

[00:01:58] Speaker 01:
I don't understand there to be any challenge in this record to the five years that you're claiming.

[00:02:04] Speaker 01:
Do you understand the other side to have made any challenge below?

[00:02:07] Speaker 05:
No, I think we're agreed on more than five years.

[00:02:10] Speaker 01:
Just me wondering what does exclusive mean?

[00:02:14] Speaker 01:
Because exclusive to me means nobody else was using it for any purpose.

[00:02:18] Speaker 05:
Well, I think the word substantially exclusive means 100% is not required.

[00:02:24] Speaker 05:
That if they find two instances

[00:02:27] Speaker 05:
of use of these words by other parties.

[00:02:32] Speaker 01:
Substantially exclusive and continuous.

[00:02:34] Speaker 01:
But you have the five years, and you believe that should entitle you to acquire just thinkingness.

[00:02:41] Speaker 05:
Yeah, well, we think the substantially exclusive is very important, too, and the degree of exclusiveness.

[00:02:46] Speaker 05:
Because I think one of the things the case law indicates is the court should be concerned with

[00:02:52] Speaker 05:
whether we're taking words away from competitors.

[00:02:55] Speaker 05:
Do my clients need to use these words to be able to fairly compete?

[00:02:59] Speaker 05:
And I think the record shows no.

[00:03:01] Speaker 05:
And I think for those of us that have been practicing for a while, the situation with the internet and web searches now gives us a much higher degree of confidence.

[00:03:12] Speaker 05:
And in the old days, I'll say, when I would start practicing in the 80s, you would have to go around and pull brochures from all these different insurance companies to find out what they're doing.

[00:03:22] Speaker 05:
But now all you've got to do is have the examining attorney sit at his or her computer terminal and type the words into Google search or one of those other search engines.

[00:03:32] Speaker 05:
And they get all the web pages.

[00:03:34] Speaker 05:
And most businesses now have a website and have a web page.

[00:03:39] Speaker 05:
Because as you walk around town on the sidewalks, you have to watch out for people that are glued to their cell phones reading emails or links to web pages or things like that.

[00:03:49] Speaker 03:
Would you agree 1052F is discretionary?

[00:03:53] Speaker 03:
It may accept.

[00:03:54] Speaker 03:
Yes.

[00:03:56] Speaker 03:
I would agree it's discretionary.

[00:03:59] Speaker 01:
And then that's what leads to this sliding scale concept, which is the more descriptive you are, then the more you need to show whatever in the way of your views.

[00:04:12] Speaker 05:
Yes, sir.

[00:04:14] Speaker 01:
And I gather nobody can test that that's what the law really is.

[00:04:17] Speaker 01:
So this sliding scale is almost impossible to use.

[00:04:23] Speaker 01:
in the real world.

[00:04:25] Speaker 05:
Yes, I think some of the case law would suggest an attempt at a bright line test.

[00:04:30] Speaker 01:
Yeah, but I mean, someone talking about it would say, well, I've got to now decide whether your trademark is highly descriptive or just descriptive or almost highly descriptive because it makes a real difference because five years of substantially continuous and exclusive use may not be enough if you're really descriptive.

[00:04:52] Speaker 01:
But I don't see any

[00:04:54] Speaker 01:
any metrics to tell me how I'm supposed to manage this, other than to say, well, as the presiding judge pointed out, it's sort of discretionary in the hands of the decision maker.

[00:05:05] Speaker 01:
Yes, Your Honor, I think... But you put you in a difficult position.

[00:05:10] Speaker 05:
Yes, Your Honor, it's somewhat vague.

[00:05:12] Speaker 05:
I think the... Help me out.

[00:05:13] Speaker 01:
How am I supposed to help you?

[00:05:14] Speaker 01:
I mean, assume that I decide that this is not as highly descriptive as I guess

[00:05:24] Speaker 01:
TTAB thought it was, then I would say, well, I should then tell them they should have given more weight to more evidence of five years of explicit and continuous use, right?

[00:05:36] Speaker 03:
Was there any evidence of sales, marketing, figures, examples of advertisements?

[00:05:43] Speaker 05:
The only specimen that we're considering of use is the web page that appears in the appendix

[00:05:54] Speaker 05:
You've got two affidavits.

[00:05:56] Speaker 05:
Two affidavits.

[00:05:59] Speaker 05:
Appellant's brief appendix is pages 13 and 15, I think.

[00:06:03] Speaker 03:
I mean, you look at Louisiana fish fry, which says that affidavit of continuous use and sales figures weren't sufficient.

[00:06:17] Speaker 03:
And I don't think you rise to that level.

[00:06:21] Speaker 03:
How do you deal with that?

[00:06:22] Speaker 05:
Well, I think if Congress had wanted sales figures, or if Congress had wanted consumer surveys, they've certainly had ample time to say so.

[00:06:31] Speaker 05:
And it provides a statement that if you can make the use statement, the length of use, and the substantially exclusive, then that's a prima facie case, or maybe a prima facie case.

[00:06:47] Speaker 05:
And our position is that, you know,

[00:06:51] Speaker 05:
Congress did not require sales figures or geographic scope for the reason that that's valuable to competitors.

[00:07:00] Speaker 05:
I may not want to put on the public record what my sales figures are.

[00:07:05] Speaker 05:
Where are my customers?

[00:07:06] Speaker 01:
Well, but there are ways to make it confidential.

[00:07:09] Speaker 01:
We see that in the international trade cases all the time.

[00:07:12] Speaker 01:
That parties go in front of commerce and make their arguments on countervailing duty and anti-dumping cases and have sensitive price information that's masked.

[00:07:21] Speaker 05:
I would agree that if we had taken the district court appeal route out of the Patent and Trademark Office, I'd have no trouble advising my client that your confidential information should be confidential.

[00:07:33] Speaker 05:
But the Trademark Trial and Appeal Board has, in my experience, two procedures for inter-parties cases.

[00:07:42] Speaker 05:
You get a letter that says, our standard protective order applies unless the parties do something to remove it.

[00:07:51] Speaker 05:
With the next party case, they don't do that.

[00:07:54] Speaker 05:
And I think somebody with a FOIA request could take the position that there's no rule that says that the information stays confidential.

[00:08:04] Speaker 05:
And I mentioned the possibility of a district court case because that alternative is mentioned in the B&B hardware case.

[00:08:13] Speaker 05:
One of the reasons the Supreme Court

[00:08:16] Speaker 05:
made the decision in the B&B hardware case was they said, look, so coming out of the trademark trial and appeal board, you can go directly to the federal circuit, or you can go to the US District Court for the Eastern District of Virginia.

[00:08:27] Speaker 05:
It's your choice.

[00:08:29] Speaker 05:
The second part of that is, for most of my clients, now a joke.

[00:08:33] Speaker 05:
But B&B was an inter-party case.

[00:08:35] Speaker 05:
That's correct.

[00:08:37] Speaker 03:
How is it applicable here that T-Dev's governing regulation was different?

[00:08:43] Speaker 05:
I think that you're correct that the TTAB regulations are different for ex parte cases versus inter parte cases, but I think the language of B and B hardware is did the applicant for a trademark registration have a full and fair opportunity?

[00:08:59] Speaker 05:
The other considerations might be were they represented by an attorney?

[00:09:04] Speaker 05:
Was it a fact or an issue that was clearly presented by the tribunal and addressed and important to the decision?

[00:09:13] Speaker 05:
adversaries, so let's say later my client sues an infringer, which is not contemplated as far as I know at this point, if you stop at the board, don't go to the Federal Circuit, don't go to the Eastern District of Virginia, they're going to say, aha, it's not distinctive.

[00:09:33] Speaker 05:
They litigated it because the board made a decision, they were represented by council, it was central to the decision,

[00:09:41] Speaker 05:
We don't want all this piecemeal litigation.

[00:09:43] Speaker 05:
We want repose, just like the Supreme Court encouraged us.

[00:09:46] Speaker 05:
And therefore, that issue is settled.

[00:09:49] Speaker 05:
And I think we had one case where the standard for collateral stoppable was enunciated by the Eastern District of Virginia.

[00:09:58] Speaker 05:
I regret we don't have it in our briefs.

[00:10:00] Speaker 05:
I'd like to submit it to the court now verbally, if I could.

[00:10:04] Speaker 05:
That's the Nation Star Mortgage case, which is at 155 F sub

[00:10:10] Speaker 05:
F sub 3rd, 585, in particular, pages 592, 593, where the Eastern District of Virginia applied collateral estoppel.

[00:10:21] Speaker 05:
They listed five factors.

[00:10:24] Speaker 05:
First, the issue sought to be precluded must be identical to the one previously litigated.

[00:10:30] Speaker 05:
Two, the issue must have been actually determined in the prior proceeding.

[00:10:34] Speaker 05:
Three, the determination of the issue must have been a critical and necessary part of the decision in the prior proceeding.

[00:10:39] Speaker 05:
Four, the prior judgment must be final and valid.

[00:10:42] Speaker 05:
We can read.

[00:10:43] Speaker 03:
Why don't you deal instead with a case that the government raised, which was Norton v. Curtis, which is not mentioned in your reply brief.

[00:10:53] Speaker 03:
So you have an opportunity to just address it here.

[00:10:56] Speaker 05:
I'm forgetting exactly what they cited Norton v. Curtis for.

[00:11:03] Speaker 03:
The ex parte, I'll quote from it, the ex parte prosecution examination with patent application must be considered

[00:11:09] Speaker 03:
as an adversary proceeding and should not be limited to standards required in inter-parties proceedings?

[00:11:16] Speaker 05:
I think the standards are different for inter-parties cases before the trademark trial and appeal board, before the patent trial and appeal board, versus ex-party cases.

[00:11:26] Speaker 05:
And my problem with that is what the Supreme Court said in B&B hardware.

[00:11:31] Speaker 05:
They said issue preclusion

[00:11:36] Speaker 05:
should apply because our goal is reposed.

[00:11:39] Speaker 03:
Congress has let... But in B&B, the Supreme Court's discussion addressed the TTAB's trial role.

[00:11:50] Speaker 05:
The case in B&B Hardware was an inter-party case before the board.

[00:11:56] Speaker 05:
It was, I believe, an opposition where the unsuccessful party there was trying to re-argue the case.

[00:12:06] Speaker 03:
they're acting in an appellate role, right?

[00:12:10] Speaker 05:
They're acting as an appellate role, but the examiner is really... Once you get to the board, the examining attorney is the adversary, and they're looking at evidence in the record just like an appellate court would.

[00:12:29] Speaker 03:
You've got three minutes left.

[00:12:30] Speaker 03:
You can keep going if you want to.

[00:12:32] Speaker 05:
I think I would like to reserve it for rebuttal unless there are any immediate questions.

[00:12:49] Speaker 03:
If you were from Arizona, I'd say Mr. Casagrande.

[00:12:53] Speaker 00:
That's what it is.

[00:12:54] Speaker 00:
May it please the court.

[00:12:58] Speaker 00:
Your honors don't really have to get into the whole question of highly descriptive versus merely descriptive.

[00:13:03] Speaker 00:
The TTAB did not decide that issue.

[00:13:06] Speaker 00:
Its holding was based on basically the assumption that this is a run-of-the-mill, merely descriptive case, and that this evidence, even in a run-of-the-mill case, did not line up

[00:13:18] Speaker 00:
with this court's precedent, such as the Louisiana fish fry case your honor pointed out.

[00:13:24] Speaker 00:
So you really don't need to go down that path.

[00:13:28] Speaker 00:
There was a question you asked appellants council about the confidentiality of evidence submitted in connection with 2F proceedings as between going to this court on a closed record or going to the district court.

[00:13:42] Speaker 00:
And the PTO doesn't take any different position in those two venues.

[00:13:46] Speaker 00:
The position is the same.

[00:13:48] Speaker 00:
that anything that an applicant wants to put in the record to support their claim for registration becomes part of the public record.

[00:13:56] Speaker 00:
What we usually do in the district court is negotiate a protective order that says you can show us all the new evidence that you want to put in and we'll agree to confidentiality until such time as you submit it to the court to prove your case, at which point all bets are off and it's a part of the public record.

[00:14:11] Speaker 00:
Just so the public knows what was used for our decision in that case or the court's decision

[00:14:17] Speaker 00:
to show that the mark did or did not have secondary meaning or required distinctiveness.

[00:14:23] Speaker 00:
There was also a question about collateral estoppel and B&B hardware.

[00:14:31] Speaker 00:
Section 2F disputes really are kind of the type of dispute that really doesn't lend itself usually to collateral estoppel because they're so changing over time.

[00:14:42] Speaker 00:
You're constantly supposedly using the mark over time

[00:14:46] Speaker 00:
you're spending more money sometimes on advertising, your sales will change, maybe the way you use it will change.

[00:14:52] Speaker 00:
Those facts will kind of be the exception to the typical rule of collateral estoppel.

[00:14:57] Speaker 00:
So that's a case where you wouldn't really have to be very concerned about that.

[00:15:02] Speaker 00:
What I want to just point out is there was very little evidence here

[00:15:07] Speaker 00:
Your Honor, the CAFC cases give a clear roadmap about what kinds of evidence are needed to show or can be used to show secondary meaning, including advertising expenditures, which we're not in the record here, sales dollars, unsolicited media coverage showing that the media accepts your mark, consumer declarations or surveys.

[00:15:28] Speaker 00:
None of that is in the record here.

[00:15:31] Speaker 00:
Unless there are any further questions, I'll yield back the remainder of my time.

[00:15:35] Speaker 01:
I wanted to ask a question about the certificate of interest issue, which I know you believe isn't right because it wasn't raised below.

[00:15:43] Speaker 01:
Your adversary is suggesting that it would be a good idea if there were certificates of interest so your judges would know whether or not they needed to refuse them.

[00:15:54] Speaker 01:
And your argument, I believe, is, well, the owner of the mark has to be the applicant.

[00:16:01] Speaker 01:
the judges can look at the registration request and say, well, for example, let's assume it was the Coca-Cola Company.

[00:16:09] Speaker 01:
They would say, well, the Coca-Cola Company, we can look and see if we own any stock in Coca-Cola Company.

[00:16:15] Speaker 01:
That's great if the applicant isn't the wholly owned subsidiary of a holding company, for example.

[00:16:24] Speaker 01:
In my hypothetical, let's assume that Coca-Cola Company was owned by United Beverages.

[00:16:29] Speaker 01:
And that was the stock that was treated in the public.

[00:16:33] Speaker 01:
But Cope did own the mark.

[00:16:36] Speaker 01:
So Cope comes in and says, here's the mark.

[00:16:38] Speaker 01:
How did the three members of the board know that there isn't a true owner someplace else?

[00:16:46] Speaker 01:
And your answer was, well, this is in the 5 CFR.

[00:16:51] Speaker 01:
You're supposed to recuse yourself if you have a financial interest.

[00:16:55] Speaker 01:
That only applies that regulation on its face if you have knowledge.

[00:17:00] Speaker 01:
And so in my hypothetical, the judges would have no way of knowing.

[00:17:07] Speaker 01:
And so assume that the conflict of interest issue were right, had been raised.

[00:17:13] Speaker 01:
What's your response?

[00:17:15] Speaker 00:
Well, first of all, I'd say that that would clearly be a hypothetical, because in this record, Your Honor... I understand.

[00:17:23] Speaker 01:
My problem is that I know and you know

[00:17:27] Speaker 01:
that many people who come in and apply for registrations are wholly owned subsidiaries of holding companies or other entities.

[00:17:34] Speaker 01:
Right.

[00:17:34] Speaker 01:
And we all believe that it's a good idea to have the judges be impartial and not have financial interest, because it's against the law if they don't have financial interest.

[00:17:43] Speaker 01:
So how do you protect your judges when you don't have a conflict or you don't have a certificate of interest procedure at the PTO?

[00:17:54] Speaker 00:
That would be an interesting question to raise, and it's something we will be discussing with the board.

[00:17:59] Speaker 01:
I know you were here at the earlier argument when I asked the government contractor whether you all ever take anything back home from an oral argument here and say, hey, there's a way we might improve our procedures.

[00:18:11] Speaker 00:
We do that a lot, actually.

[00:18:12] Speaker 00:
We find a lot of good in some questions here.

[00:18:14] Speaker 01:
And I believe your argument is that you can always rely on the registrant to tell you who's

[00:18:21] Speaker 01:
who's the real party in interest just doesn't work in the real world?

[00:18:26] Speaker 00:
We do require them to be the owner or for the intent to use the person who intends to use it.

[00:18:31] Speaker 00:
But sometimes you'll get information in the specimen that'll raise a question with the examining attorney.

[00:18:37] Speaker 01:
For example, if you look at the specimen they had here, there might be something in the record that would cause an attentive and a highly skilled and honorable examiner to ask a few more questions.

[00:18:47] Speaker 01:
But I'm just saying by the time it gets to the judges,

[00:18:50] Speaker 01:
or the ultimate decision makers.

[00:18:53] Speaker 01:
We rely very, very heavily on certificates of interest in this court to make certain that we can avoid, if possible, sitting on a case in which we have a financial interest.

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

[00:19:05] Speaker 00:
And really just one response to that is, as I said, this is something we are going to take back and discuss in this case and see whether or not that's something that we might do.

[00:19:14] Speaker 00:
The second thing is, and the reason why I said it's purely hypothetical, is in the certificate of interest that you

[00:19:20] Speaker 00:
They said there are no people lurking behind the scenes who hold any of those interests in the ass of error.

[00:19:30] Speaker 00:
Anything further, counsel?

[00:19:31] Speaker 00:
No.

[00:19:31] Speaker 00:
They are, and we were just asked that the court affirm the board's finding.

[00:19:36] Speaker 02:
Look into that United Beverage Company, Lawrence.

[00:19:48] Speaker 05:
On the court's raising of the certificate of interest,

[00:19:50] Speaker 05:
I'd like to submit that the current political climate includes suggestions that for every regulation promulgated, two have to be removed.

[00:20:02] Speaker 05:
And so the PTO might find valuable, if the court deems a remand of this case, and a suggestion that they should implement this rule, which would then perhaps give them covered evidence.

[00:20:18] Speaker 02:
Is that regulation?

[00:20:20] Speaker 02:
Where is that regulation to which you're citing, two for one?

[00:20:24] Speaker 05:
That was a presidential proclamation, I believe, or a tweet perhaps.

[00:20:30] Speaker 05:
And I think you would, being pragmatistic, people would recognize the chances of the applicant in this case coming back to this court after a remand with a decision with appropriate comments would be unlikely to

[00:20:50] Speaker 05:
burden this court again and it might provide the U.S.

[00:20:53] Speaker 05:
patent and trademark off with an incentive after decades of having a certificate of interest required by this court.

[00:21:01] Speaker 02:
Wait a minute, there was no conflict of interest?

[00:21:03] Speaker 05:
There was no conflict of interest in this case.

[00:21:05] Speaker 05:
The owner has always been and the real party in interest has always been modern Woodman of America.

[00:21:12] Speaker 05:
But I think the appearance of

[00:21:15] Speaker 05:
propriety and giving the judges a chance is important and that would be a good rule for the TTAB to implement on expiry cases.

[00:21:25] Speaker 01:
Well, they may even have an idea box over there where employees put a good idea in the box that gets some benefit out of it.

[00:21:34] Speaker 05:
That might be, Your Honor.

[00:21:35] Speaker 01:
The possibility of improving the government has come up twice in this hearing today, so we've all done good work.

[00:21:42] Speaker 05:
Thank you, Your Honor.

[00:21:44] Speaker 05:
If there are no further questions, then the appellant rest.

[00:21:47] Speaker 05:
The matter all stands submitted.

[00:21:48] Speaker 05:
Thank you, counsel.

[00:21:50] Speaker 00:
All rise.