[00:00:02] Speaker 02:
Good afternoon.

[00:00:27] Speaker 02:
We have four argued cases today.

[00:00:29] Speaker 02:
The first of these is number 16.

[00:00:32] Speaker 02:
23 07 in Ray openings mr. Minsky is that how you pronounce it.

[00:00:45] Speaker 01:
Good afternoon your honors.

[00:00:48] Speaker 01:
Dana connection of tablet to be the rosting for a pellet total door.

[00:00:54] Speaker 01:
The trademark the total door seeks to register is a specific shape of a channel found on the edge of the door.

[00:01:00] Speaker 01:
That specific shape

[00:01:01] Speaker 01:
has no functionality.

[00:01:04] Speaker 01:
In reaching the opposite conclusion, the board committed three legal errors.

[00:01:08] Speaker 02:
Would the shape that you're seeking to trademark come within the scope of the earlier patents?

[00:01:18] Speaker 01:
So the shape, in terms of, yes.

[00:01:25] Speaker 03:
In your advertising, you refer to it as patented, right?

[00:01:29] Speaker 01:
That's correct.

[00:01:30] Speaker 01:
We refer to the doors as patented.

[00:01:33] Speaker 01:
It's important to understand that these patents aren't just for a channel.

[00:01:37] Speaker 01:
They're for an entire door mechanism.

[00:01:39] Speaker 01:
And in the early advertisements, they do refer to the patented, the advantages of the patent.

[00:01:48] Speaker 01:
But in every trade dress case, there will be a distinction between the thing that is the subject of the trade dress and the design of the thing.

[00:01:59] Speaker 01:
the trademark application that we are seeking to register is a very specific shape.

[00:02:06] Speaker 02:
But the Supreme Court has told us that if it comes within the scope of a utility patent, that's strong evidence of functionality, right?

[00:02:15] Speaker 01:
The Supreme Court in traffic was referring to the specific elements of the design being in the utility patent.

[00:02:24] Speaker 01:
In the traffic's case, you have a situation where you have an arrangement of springs on a sign.

[00:02:30] Speaker 01:
And the trademark application was for an arrangement of springs on a sign.

[00:02:35] Speaker 01:
In the trademark case, the court went out of its way, actually, to explain that if the specific feature of the design is not part of the patent, then the result would be very different.

[00:02:49] Speaker 00:
So for example... But you use the phrase U-shaped in the patent itself, do you not?

[00:02:53] Speaker 00:
or at least one of the patents?

[00:02:55] Speaker 01:
In the specification, in one of the patents, the term U-shaped appears.

[00:02:59] Speaker 01:
But it's important to understand that our trademark design is best described in a picture.

[00:03:05] Speaker 01:
In that sense, the Appendix 251, it's actually throughout the appendix, but that's the best place for it.

[00:03:10] Speaker 03:
In the trademark application, you describe the applied form mark as a U-shaped channel that runs the full length of the door.

[00:03:20] Speaker 03:
So we should consider full length of the door as well as just use shape channel, right?

[00:03:26] Speaker 01:
That's correct.

[00:03:27] Speaker 01:
We have to describe the trade dress as it's actually used, and it does go the full length of the door.

[00:03:34] Speaker 01:
But that word description doesn't really capture the entire design.

[00:03:38] Speaker 02:
But the design is not merely decorative, right?

[00:03:41] Speaker 02:
It's functional.

[00:03:43] Speaker 01:
There's no indication in the record that this specific design

[00:03:47] Speaker 01:
is functional.

[00:03:47] Speaker 02:
I thought in the patents, as Judge O'Malley said, it described it as functional.

[00:03:53] Speaker 01:
What the patent describes as functional is a generic channel.

[00:03:57] Speaker 01:
If the court looks at the claims of the 845 patent, for example, the court will find that what is claimed is a channel with walls.

[00:04:08] Speaker 01:
It could be any design of the channel.

[00:04:11] Speaker 01:
And again, there's always going to be a level of abstraction

[00:04:14] Speaker 01:
where a trade dress will appear functional.

[00:04:18] Speaker 01:
But that's not this design of a channel.

[00:04:21] Speaker 00:
Is the determination by the board or ultimately by the examiner and then affirmed by the board that in fact the design is disclosed in the patents?

[00:04:31] Speaker 00:
Is that a determination of fact or a determination of law?

[00:04:39] Speaker 01:
There is, so the application of factor one of the

[00:04:45] Speaker 01:
Morton Norwich test, which relates to patents, is a question of law.

[00:04:52] Speaker 01:
There are no underlying factual determinations here that the board is making.

[00:04:56] Speaker 01:
The board is simply imputing advantages found from the plain language of the patent with respect to generic channels to a specific design.

[00:05:05] Speaker 00:
No, I mean, the board did more than that.

[00:05:06] Speaker 00:
The board pointed out that while you call what was in the patent H-shaped, for instance,

[00:05:11] Speaker 00:
that it's essentially carrying the same shape as your proposed design?

[00:05:19] Speaker 01:
Well, there's a lot of back and forth in the record about H shapes and U shapes and I shapes.

[00:05:28] Speaker 01:
The key is that our trademark application will look very different if we were seeking a trademark with respect to all shapes of a channel.

[00:05:37] Speaker 01:
In fact, we zeroed in on this specific shape

[00:05:40] Speaker 01:
that we use, and it's shown in the photos at appendix 30 and 31 of our application.

[00:05:48] Speaker 01:
It's a very specific design.

[00:05:50] Speaker 01:
U-shaped, H-shaped, I-beams, all of these are word descriptions of a very specific three-dimensional product configuration.

[00:05:58] Speaker 02:
Well, but it can't be that something is non-functional just because it has a specific shape, right?

[00:06:06] Speaker 01:
I respectfully disagree, Your Honor.

[00:06:11] Speaker 01:
Our view is that there is always... Well, what about in graphics itself?

[00:06:15] Speaker 02:
They said that, you know, that even though the particular product at issue had two springs and it was possible to have three springs, it didn't make any difference.

[00:06:29] Speaker 02:
It was still functional.

[00:06:31] Speaker 02:
So there was a situation similar to what you're saying

[00:06:36] Speaker 02:
doesn't raise trademark or trade dress issues.

[00:06:41] Speaker 01:
There's a critical difference between our situation and what the court just described.

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What the court just described is an equivalent arrangement of springs.

[00:06:49] Speaker 01:
There you have a trademark for an arrangement of springs, you have a patent about the arrangement of springs.

[00:06:53] Speaker 01:
But the traffic court went out of its way to explain that with respect to other elements of that spring design that are not described in the patent,

[00:07:03] Speaker 01:
that the result would be very different.

[00:07:05] Speaker 01:
This is on page 34 of TRAFFICS.

[00:07:08] Speaker 01:
In a case where a manufacturer seeks to protect arbitrary, incidental, or ornamental aspects of features of a product found in the patent claim, such as arbitrary curves in the legs or an ornamental pattern painted on the springs, a different result might obtain.

[00:07:25] Speaker 01:
So red springs, for example, would be an example of a registrable trademark despite the existence of this patent.

[00:07:33] Speaker 01:
And that's contrary to the central argument that the board argued and the central argument that the director has in its briefs.

[00:07:40] Speaker 02:
Yeah, but your problem is that the U-shaped channel performs a function.

[00:07:44] Speaker 02:
And that's part of why patents were issued on it.

[00:07:50] Speaker 01:
All channels, if they're used in the invention described in the patent, perform a function.

[00:07:56] Speaker 03:
Is it your position that the patent covered all channels?

[00:08:00] Speaker 01:
It is our position that the patent covers all channels that are consistent with what the claims are claiming, which would be something that would be analyzed through an analysis appropriate for patent claims.

[00:08:17] Speaker 01:
But yes, the functionality here has to do with a channel, generically.

[00:08:22] Speaker 01:
It doesn't have to do with this specific shape.

[00:08:23] Speaker 02:
But if it had some arbitrary feature, like the color red or something like that, that

[00:08:30] Speaker 02:
color red would have nothing to do with infringement of the patent, whereas the U-shaped channel is directly involved in the scope of the patent.

[00:08:42] Speaker 01:
We submit that the specific shape, the flat-floored, parallel-sided channel with a slight lip that is found in the picture is more than what the court is describing and what the patents describe as being functional.

[00:08:58] Speaker 01:
U-shape is really, in a sense, a misnomer because you can't capture all the features.

[00:09:03] Speaker 01:
And this, in fact, is conceded by the director in the briefing, because the director doesn't use the term U-shaped.

[00:09:10] Speaker 01:
It uses this sort of three sides of a rectangle symbol.

[00:09:14] Speaker 01:
It's harder to say, but it captures slightly more of the shape that we're talking about here.

[00:09:20] Speaker 01:
If we were seeking a trademark on all channels, we would have a very different situation.

[00:09:26] Speaker 01:
But we're not.

[00:09:27] Speaker 01:
And our trademark application would look very different if we were seeking a trademark on all channels.

[00:09:33] Speaker 01:
But again, we're not.

[00:09:33] Speaker 00:
But your own advertisements describe the functional benefits of this particular channel, correct?

[00:09:45] Speaker 01:
When considered in light of the patent, the patents.

[00:09:48] Speaker 00:
No.

[00:09:49] Speaker 00:
Let me talk about this particular channel, the advertisements that you have relating to this channel on which you're seeking a trade dress protection.

[00:09:57] Speaker 00:
Don't those advertisements tout the functional benefits of the channel?

[00:10:02] Speaker 01:
I would disagree with that statement, because I believe that all of the advantages in the advertisements are advantages that are common to all channels.

[00:10:12] Speaker 01:
And we know that from the patents.

[00:10:14] Speaker 01:
And so we know, for example, that if one practices the invention with the channel, with any channel, then one achieves this sort of deadbolt-like strength to the doors.

[00:10:27] Speaker 01:
But that isn't related to this specific design.

[00:10:30] Speaker 00:
So is it your position that any little tweak that you do to your patented design somehow makes it ornamental?

[00:10:41] Speaker 01:
No, not any tweak.

[00:10:42] Speaker 01:
I think that what it comes down to is whether the specific design feature

[00:10:48] Speaker 01:
I is identified in the patent as something that's functional.

[00:10:53] Speaker 02:
So, for example, in the Beckton... Well, your position really is if there are alternative ways of performing the function that you can trademark one particular way of doing it, right?

[00:11:05] Speaker 01:
In a sense, one of the things that the Morton-Norwich test asks us to look at is whether there are viable alternatives.

[00:11:12] Speaker 02:
Is the answer yes to my question?

[00:11:14] Speaker 01:
The answer is yes to your question.

[00:11:16] Speaker 01:
And the viability of alternatives is one of the factors.

[00:11:22] Speaker 01:
And another aspect of it is the cost and quality of those alternatives.

[00:11:26] Speaker 01:
So the answer is yes, but there is more.

[00:11:29] Speaker 01:
It's not simply the matter of alternatives.

[00:11:31] Speaker 01:
It's the fact that the evidence here, the unrebutted,

[00:11:34] Speaker 01:
evidence throughout is that these alternatives are interchangeable, both in terms of cost and quality.

[00:11:41] Speaker 01:
So with that situation, we have multitude of alternatives, that's the situation where you have in the Norwich case itself, where you have many spray bottles that can do the same thing.

[00:11:52] Speaker 01:
Here we have many channels that can do the same thing.

[00:11:55] Speaker 02:
So why in traffic couldn't you trademark or find a trade dress coverage for the two spring embodiment

[00:12:04] Speaker 01:
because the two springs, all the trademark was in that circumstance, were related to the arrangement of the springs.

[00:12:13] Speaker 01:
And so this was an equivalent arrangement of springs, as was claimed in the patent, and therefore the traffics case held that it was functional.

[00:12:21] Speaker 01:
If it were red springs, then the court would have, I submit, would have come to a completely different conclusion.

[00:12:27] Speaker 01:
If we were talking about a specific shape of spring,

[00:12:31] Speaker 01:
a spring with a square cross section or something like that, that again would be something that's different.

[00:12:36] Speaker 01:
And the reason it's different is that that color or that specific shape does not appear in the patent as something that is functional.

[00:12:48] Speaker 01:
Is that U-shaped channel utilitarian?

[00:12:54] Speaker 01:
The U-shape of the channel, and by that I mean the... Is the U-shaped channel utilitarian?

[00:13:01] Speaker 01:
To answer your question fully, I need to define U-shaped.

[00:13:04] Speaker 01:
And I define... The patent mentions U-shaped channels.

[00:13:08] Speaker 01:
The patent mentions U-shaped channels.

[00:13:09] Speaker 01:
Is that U-shaped channel in the patent?

[00:13:11] Speaker 01:
Is that utilitarian?

[00:13:13] Speaker 01:
That U-shape is not utilitarian.

[00:13:16] Speaker 01:
And the reason why is because at the specific situation where the... So the channel in the patent is not utilitarian.

[00:13:26] Speaker 01:
Channels are absolutely utilitarian.

[00:13:28] Speaker 01:
But when the only time U-shape appears

[00:13:30] Speaker 01:
That term, which I understand the question to be directed to, that's in the specification of the 845 patent.

[00:13:38] Speaker 01:
And the specification of the 845 patent does not attribute any functionality to the particular design that is at issue there.

[00:13:47] Speaker 03:
And so we know... Okay, so you have an H shape, an E shape, a U shape, but all of those are, within the patent, are utilitarian.

[00:13:57] Speaker 03:
Are they not?

[00:13:59] Speaker 01:
All those are as treated as channels.

[00:14:02] Speaker 01:
They are utilitarian, treated as the non-functional shape of that.

[00:14:08] Speaker 01:
It is that non-functional shape, whether it's an E or sort of a bottom-shaped V or whatever else it is, that shape is not utilitarian.

[00:14:19] Speaker 01:
This is very similar to what happens in the Ethicon case.

[00:14:22] Speaker 01:
In the Ethicon case, you have a situation where it's in design patents, but functionality is the same analysis.

[00:14:28] Speaker 01:
in both areas of the law.

[00:14:31] Speaker 01:
You have a specific device and the court reversed on functionality because the lower court looked at it too high of a level of abstraction.

[00:14:42] Speaker 01:
That's what happened here.

[00:14:44] Speaker 01:
What also happens in Ethicon is that the court affirmed on infringement because that same level of specificity, zeroing on the design, also narrowed the scope

[00:14:58] Speaker 01:
of the protection that was offered by that design patent there.

[00:15:04] Speaker 01:
Here we're not asking for the protection of all channels.

[00:15:08] Speaker 01:
We're not trying to get all channels addressed.

[00:15:11] Speaker 01:
We're simply focusing on this specific channel.

[00:15:15] Speaker 00:
Before you said that, I need to confirm.

[00:15:16] Speaker 00:
You tried to recapture it in your reply brief, but you don't mention anywhere in your blue brief the concept of acquired distinctiveness, do you?

[00:15:27] Speaker 01:
So acquired distinctiveness is the second of two things that we need to prove to obtain a trademark, and it's a reason why we shouldn't have to remand this case.

[00:15:38] Speaker 01:
And, you know, acquired distinctiveness is something that we made a rock-solid case on in the court below.

[00:15:45] Speaker 00:
And so... But you didn't mention it at all in your opening brief to us.

[00:15:48] Speaker 01:
We are not arguing that acquired distinctiveness alone means that there's no functionality.

[00:15:55] Speaker 01:
We are arguing that we have a trademark here because it is both non-functional and has acquired distinctiveness.

[00:16:02] Speaker 00:
But you're asking us to pass judgment on the acquired, assuming we agree with you on the other point, you would ask us to pass judgment on the acquired distinctiveness prong, and yet you never brief it.

[00:16:14] Speaker 01:
So that argument wasn't addressed by the board.

[00:16:18] Speaker 01:
And so the board, by not addressing that point, implicitly concedes it.

[00:16:23] Speaker 01:
That's in the trademark manual procedures.

[00:16:26] Speaker 00:
The board said they didn't have to decide it because they found it designed to be functional.

[00:16:32] Speaker 01:
Fair enough.

[00:16:33] Speaker 01:
In the worst case scenario, we do have to remand.

[00:16:36] Speaker 01:
But it's important to understand that there is a clear distinctiveness here because we have a real trademark.

[00:16:41] Speaker 01:
This is the way that these doors are determined as total door doors.

[00:16:48] Speaker 02:
I'm sorry.

[00:16:49] Speaker 02:
We're out of time.

[00:16:49] Speaker 02:
We'll give you two minutes for a bottle.

[00:16:51] Speaker 02:
Okay.

[00:16:52] Speaker 02:
Thank you, Your Honor.

[00:16:57] Speaker 02:
Mr. Casagrande.

[00:17:00] Speaker 04:
Good afternoon, your honors.

[00:17:00] Speaker 04:
May it please the court?

[00:17:03] Speaker 04:
I think what this boils down to is whether or not if they're seeking trademark protection for one particular shaped channel that goes the length of the door, does that mean that just because there are alternatives out there that could be different, slightly different shaped channels, they could get this one and everyone else could use the other shapes?

[00:17:23] Speaker 00:
Well, but the last point he made, which is an important one, which is that you're not supposed to look at these things at too abstract a level.

[00:17:32] Speaker 00:
I mean, if you have a utility patent on a particular type of hammer, the mere fact that you want a trademark on a different hammer doesn't mean you automatically can't get a trademark.

[00:17:45] Speaker 00:
So the question is, why is it that these two things are so connected, and why is it that this

[00:17:54] Speaker 00:
trademark design or trade design does not have something at least ornamental or different about it.

[00:18:04] Speaker 04:
What they've claimed here is basically a stripped down version that's exactly commensurate with what they claimed in the patent.

[00:18:10] Speaker 04:
For example, if you look at the 845 patent, what they've got in this application is a rectangular strip running the length of the door.

[00:18:18] Speaker 04:
and then they show a cross section of it where you can look within the channel and it looks like a U and they call it a U in their application.

[00:18:25] Speaker 04:
What they claim in the 845 patent, which there's basically several elements, one of the elements is an engaging element that extends substantially the entire height of the door, okay, so that's that part of what they're claiming.

[00:18:40] Speaker 04:
The other part is the engaging element being channel shaped in cross section and including a pair of spaced longitudinal

[00:18:48] Speaker 04:
substantially parallel projections.

[00:18:50] Speaker 04:
That's a long way of saying it looks like a U. And so there's nothing about the application here that differs.

[00:18:58] Speaker 04:
There's nothing ornamental on it.

[00:18:59] Speaker 04:
And we would certainly concede that if it perhaps were red and no one else was using red, or they had some sort of repeating design on the edge of it, that might be something ornamental that they could get a trademark registration for.

[00:19:12] Speaker 04:
But what they would have to do is submit a drawing

[00:19:15] Speaker 02:
where the locking channel is... But those features wouldn't affect the function of the door.

[00:19:19] Speaker 04:
I'm sorry?

[00:19:19] Speaker 02:
Those features, red color, wouldn't affect the function of the door.

[00:19:23] Speaker 04:
Precisely.

[00:19:24] Speaker 04:
And that's why we would consider those to be non-functional and we would consider whether or not they were actually, whether there was likely confusion with someone else or the other things that we look at when we look at trademark registrations.

[00:19:36] Speaker 00:
This... Do you agree that the patents cover channels generally and that the shape is not

[00:19:44] Speaker 00:
important to the patent claims?

[00:19:47] Speaker 04:
Yes.

[00:19:48] Speaker 04:
I think all of the three patents that we talked about, there's a fourth patent in the record that nobody talked about, the 607 patent, so I'll limit myself to the three that were talked about.

[00:19:58] Speaker 04:
They all have claims within them that would cover the particular thing that they are seeking trademark registration for here.

[00:20:07] Speaker 04:
There's nothing ornamental about what they're claiming.

[00:20:11] Speaker 00:
I don't think you understood my question.

[00:20:13] Speaker 00:
Do you think that the claims just claim a locking channel generally or do they claim a particular shape of a locking channel?

[00:20:23] Speaker 04:
Well, the claim I just read to you from the 845 patent to me claims specifically a U shape.

[00:20:29] Speaker 04:
That's when you're talking about parallel projections extending away from the door.

[00:20:34] Speaker 04:
The only way you can do that is by replicating a U, because you're going to have it along the edge of the door, and that's going to be the base of the channel.

[00:20:42] Speaker 04:
And then the two parallel projections are running away from it, and that's a U. Is it your position that the U and the H shape are identical?

[00:20:49] Speaker 04:
Yes.

[00:20:50] Speaker 04:
And I think they would concede that as well, because they've called it an H shape in some of their materials, and they've called it an I-beam shape in some of their materials.

[00:21:00] Speaker 04:
But basically they are all, if you look at what they've been selling, it's all the same thing.

[00:21:04] Speaker 04:
It just depends on whether you're looking at a cross section and the parts that actually stick into the door to secure it there, or whether or not you're looking at it horizontally or vertically, it's either an I or an H. Or if you're just looking at the part that you see, it's a U. It's all the same thing.

[00:21:20] Speaker 00:
Isn't it true that we have said that the availability of alternative designs is a factor that would at least cut against

[00:21:29] Speaker 00:
A conclusion of functionality?

[00:21:31] Speaker 04:
Yes, you have said that, but that's been qualified by what the Supreme Court said in 2001 in traffic.

[00:21:38] Speaker 04:
And so when you have a situation like we have here, where the patents claim the U shape, and in the specifications they also talk about the benefits of the U shape or the H shape, and then you have advertisements talking about the shape of what they're using.

[00:21:53] Speaker 04:
When you have that kind of evidence,

[00:21:55] Speaker 04:
It's no answer to say, but people can use other shapes, because once you've shown through that evidence, patents and advertisements, that it is functional, saying that people can use something else functional does not erase the fact that it is functional.

[00:22:11] Speaker 04:
So I'll give you a case where alternatives are very important, and that would be the case from the CCPA in Honeywell.

[00:22:19] Speaker 04:
That was a case where there were no patents, and there were no ads talking about the circular design for the thermostat cover.

[00:22:25] Speaker 04:
and so in that case that's where you would logically go to determine if this thing is functional to look at what alternatives are out there and when the court saw that the only shapes people were using were round shapes from that evidence alone they determined well there must be some competitive need for that and therefore that is functional but where you have this other more direct evidence in ads and patents you don't need to do that.

[00:22:49] Speaker 00:
Should we be concerned about the fact that the board

[00:22:52] Speaker 00:
didn't address or at least said it didn't need to address the last two of the Morton Norwich factors?

[00:22:58] Speaker 04:
No, it didn't need to address them.

[00:23:00] Speaker 04:
What precedent do you have for that?

[00:23:02] Speaker 04:
I'm sorry, Your Honor?

[00:23:03] Speaker 04:
What precedent do you have for their ability to ignore those factors?

[00:23:08] Speaker 04:
Essentially, this case, this court in the value engineering case, it was talking about what the Supreme Court had held in traffic.

[00:23:17] Speaker 04:
And it said very clearly that, and I'm quoting now, once a product feature is found functional based on other considerations, there is no need to consider the availability of alternative designs.

[00:23:29] Speaker 04:
And then this court later in Becton Dickinson essentially confirmed that concept.

[00:23:36] Speaker 03:
Well, the fourth Morton-Norwich factor.

[00:23:39] Speaker 04:
Right.

[00:23:39] Speaker 04:
And that's whether or not there's a cost benefit to it.

[00:23:43] Speaker 04:
That one is something, there are two ways you can prove functionality.

[00:23:47] Speaker 04:
One is that the product works better because it's in that shape, and the other is because it's maybe cheaper to make or it's cheaper for people to buy.

[00:23:54] Speaker 04:
And so if you've proved it's functional in a case like this because it works better, then the other thing just falls away.

[00:24:00] Speaker 04:
It doesn't matter if it costs more even to make because it works better.

[00:24:04] Speaker 04:
That's the way you prove functionality there.

[00:24:05] Speaker 04:
It's kind of an alternative way of proving it.

[00:24:08] Speaker 04:
And we would also say that

[00:24:09] Speaker 04:
Even if you did look at that.

[00:24:11] Speaker 00:
Or wouldn't it be an alternative way of disproving it?

[00:24:14] Speaker 00:
I mean, that's the problem is that there's supposed to be four factors.

[00:24:17] Speaker 00:
And we have said that at least the last factor doesn't necessarily control if the other three strongly support a functionality determination.

[00:24:26] Speaker 00:
But the notion that where you've got an alternative way to look at it that we shouldn't have to look at it does seem a little odd.

[00:24:34] Speaker 04:
Are you talking about the alternatives?

[00:24:36] Speaker 00:
Yeah.

[00:24:37] Speaker 04:
No, the cost.

[00:24:38] Speaker 04:
The cost benefit.

[00:24:39] Speaker 04:
Well, you know, the Yeltsin declaration does say that there's no manufacturing advantage.

[00:24:44] Speaker 04:
That's the specific wording that they use.

[00:24:46] Speaker 04:
That's the only evidence on this point.

[00:24:49] Speaker 04:
But he doesn't deny what they say in their advertisements, which is that there are shipping benefits, because you can ship it cheaper, because it lies flat because there's no extending hardware from it.

[00:25:00] Speaker 04:
It's a very flat door.

[00:25:01] Speaker 04:
There are installation benefits.

[00:25:03] Speaker 04:
These are all cost benefits to both, I don't know, it depends, I guess, on who's paying for the shipping.

[00:25:08] Speaker 04:
But the installation benefit would be a cost benefit to the buyer.

[00:25:13] Speaker 04:
So there's actually evidence in the record in their own advertisements that say that there are cost benefits to this thing.

[00:25:21] Speaker 04:
The other thing I would say is that even if there are cost benefits to it, and maybe there are some other ones that don't cost as much or maybe cost about the same, that doesn't matter.

[00:25:33] Speaker 04:
Because what they're saying in their advertisements is there are cost benefits to this one.

[00:25:37] Speaker 04:
And so it's kind of in the ballpark.

[00:25:39] Speaker 04:
And what Bose said, which is, and I'll quote from at 772 Fed 2nd at 873, is that even if other designs were more cost effective, and this is the quote, quote part, that this design is within the category of a superior design in this respect.

[00:25:57] Speaker 04:
So it doesn't need to be the only one or the best one, or that there's some other one that's better.

[00:26:04] Speaker 04:
As long as it's in the ballpark in terms of cost,

[00:26:07] Speaker 04:
then that means it has a cost benefit.

[00:26:12] Speaker 04:
If there are no further questions, I'll yield back my time to the court.

[00:26:15] Speaker 02:
Okay.

[00:26:16] Speaker 02:
Thank you, Mr. Casagrande.

[00:26:17] Speaker 01:
Thank you.

[00:26:25] Speaker 01:
Your Honor, just a couple of points in final rebuttal.

[00:26:29] Speaker 01:
One of the questions that Council for the Director started to ask and answer but didn't complete

[00:26:36] Speaker 01:
but I think it was very important, is what Total Door would have to do to obtain a trademark with respect to a more specific shape.

[00:26:45] Speaker 01:
I submit that there's nothing that Total Door could have done to obtain a trademark on a more specific shape.

[00:26:53] Speaker 01:
And I would direct the court to appendix 348.

[00:26:56] Speaker 01:
There, the argument was made that, quote, the level of detail shown in the drawing of the mark was never questioned during prosecution.

[00:27:06] Speaker 01:
We're not seeking a trademark on all channels and we've made that clear.

[00:27:10] Speaker 02:
But if somebody, if you got this trademark and if somebody went out and adopted some of the designs that were shown in the patent, they'd be infringing that trademark, right?

[00:27:27] Speaker 01:
The answer with respect to the three,

[00:27:32] Speaker 01:
that we've discussed.

[00:27:33] Speaker 02:
There are designs shown in the patents that would infringe the trademark that you're seeking.

[00:27:40] Speaker 01:
The answer is no with respect to the A45 patent.

[00:27:43] Speaker 01:
The answer is no with respect to the other two patents that were discussed.

[00:27:47] Speaker 01:
There is one drawing that shows the trademark design, but there's no description of the functionality of that design.

[00:27:55] Speaker 00:
But you said that the patents were broad enough to cover any shaped champ.

[00:28:01] Speaker 01:
That's certainly true.

[00:28:03] Speaker 01:
And so those patents are now expired, and that's that.

[00:28:09] Speaker 02:
But if the answer is that when there is a patent on the future... The problem is, of course, it looks as though the risk here is that by allowing trademark or something like that, you'd be extending the patent monopoly beyond the years that it was originally designed for.

[00:28:25] Speaker 01:
Well, that's why we're looking at a very specific type of channel.

[00:28:29] Speaker 01:
And there's another risk, if I can just conclude,

[00:28:31] Speaker 01:
The other risk is that a patent becomes a death sentence for trade dress and that American manufacturers have to decide, are they going to seek patent protection on something and use in their drawings the actual device that they are manufacturing so that they can explain the functionality of it?

[00:28:56] Speaker 01:
Or are they going to seek trade dress protection on the non-functional aspects like this shape

[00:29:01] Speaker 01:
of the trademark.

[00:29:02] Speaker 03:
Did your client ever claim infringement on those patents?

[00:29:08] Speaker 01:
I'm not aware that they did, but I could be wrong about that.

[00:29:12] Speaker 01:
I'm not aware of any circumstances.

[00:29:14] Speaker 01:
And I won't ask you about the shapes.

[00:29:17] Speaker 01:
Your Honor, in conclusion, Total Door, other manufacturers, shouldn't have to make that choice between patents and trademarks.

[00:29:25] Speaker 01:
There's two different things here.

[00:29:27] Speaker 01:
There's a functional channel, and there's a non-functional shape.

[00:29:30] Speaker 02:
I think we're out of time.

[00:29:32] Speaker 02:
Thank you very much.

[00:29:32] Speaker 02:
Thank you.