[00:00:01] Speaker 03:
Good morning.

[00:00:03] Speaker 03:
The first argument this morning is in 171114 in the Eureka Restaurant Group.

[00:00:10] Speaker 03:
Mr. Leach.

[00:00:19] Speaker 02:
Good morning, and may it please the court.

[00:00:21] Speaker 02:
Brian Leach on behalf of the Eureka Restaurant Group, or ERG.

[00:00:26] Speaker 02:
The trademarks in this case look different, sound different.

[00:00:29] Speaker 02:
convey different commercial impressions to consumers, and share a common term that has been diluted by widespread third-party use in a crowded marketplace in which consumers are readily able to differentiate among various trademarks, even based upon minor distinctions.

[00:00:43] Speaker 02:
The trademark trial and appeal board in this case legally erred in holding that there was a likelihood of confusion between the marks in this case, Eureka Pizza and Eureka Discover American Craft.

[00:00:54] Speaker 02:
I'd like to start, if I might, by discussing the first DuPont factor,

[00:00:58] Speaker 02:
the dissimilarity of the marks.

[00:01:00] Speaker 02:
And in particular, the board's improper.

[00:01:01] Speaker 03:
Well, why don't you move?

[00:01:02] Speaker 03:
Can you move to factor two?

[00:01:04] Speaker 03:
Because that seems to be one that the board relied more heavily on.

[00:01:08] Speaker 03:
In other words, the marks are identical.

[00:01:10] Speaker 03:
The services are identical, right?

[00:01:13] Speaker 02:
The board did hold that the services were identical.

[00:01:15] Speaker 02:
That's correct.

[00:01:16] Speaker 02:
We dispute that holding for a number of reasons.

[00:01:20] Speaker 02:
Is the Supreme Court in the B&B hardware decision, footnote four of that decision pointed out, is an open question

[00:01:25] Speaker 02:
whether and how often the TTAB looks beyond the face of the application and the registration in evaluating the relatedness of the goods and services at issue.

[00:01:34] Speaker 02:
But even if the court were to disagree with us on that point and find that the services were similar or identical, we would still prevail on factor one and factor six, which are the dissimilarity of the trademarks as well as the dilution through third-party usage evidence.

[00:01:49] Speaker 04:
Isn't this case a little bit different than like DuPont, for example, or Four Seasons, where there was some sort of agreement, at least, between the parties that one would use the mark for this purpose, and the other would use the mark for that purpose?

[00:02:07] Speaker 04:
And when I say between the parties, I mean between the holder of the registered mark and the trademark applicant.

[00:02:14] Speaker 04:
Is there anything like that in this case?

[00:02:17] Speaker 02:
We don't have a consent agreement in this case, but I think we have the next best thing, which is the registrant's own statement in its prosecution history at 283 to 284 of the appendix.

[00:02:26] Speaker 02:
The registrant points out that its services are targeted towards the fast food consuming public.

[00:02:31] Speaker 04:
But its general description of its trademark is well beyond that, right?

[00:02:36] Speaker 04:
I mean, it just says for restaurant services.

[00:02:39] Speaker 02:
Our description says for restaurant services.

[00:02:41] Speaker 02:
And we tried to amend the identification of services in our application, and the board rejected that.

[00:02:46] Speaker 02:
And we even said that we would be willing to entertain other work with the board or the examiner to further amend.

[00:02:54] Speaker 02:
But I take your honor's point.

[00:02:57] Speaker 02:
There was a consent agreement in Four Seasons.

[00:02:59] Speaker 02:
It's notable that the consent agreement in that case did not have a geographical limitation on advertising for the mark.

[00:03:04] Speaker 02:
So to the extent there was a concern about consumer confusion,

[00:03:07] Speaker 02:
the applicant in that case, Four Seasons Biltmore, I believe, would have still been able to advertise its mark nationally.

[00:03:14] Speaker 02:
And I think the reason why these consent agreements have probative weight in the analysis is because they reflect the considered views of the parties who, this Court has said, are on the firing line of the marketplace.

[00:03:28] Speaker 02:
In this case, we have essentially the same type of evidence.

[00:03:30] Speaker 02:
We have the registrant's own statements distinguishing its mark from Eureka for Cheese.

[00:03:35] Speaker 02:
Now, to be sure, we don't have a state law breach of contract remedy between the parties.

[00:03:39] Speaker 04:
We don't have a statement from the registrant of the mark with regard to your mark, or whether they think there's confusion at all, which is something that I think those other cases reflect as something that's important when the TTAB is making its determination.

[00:03:56] Speaker 02:
Absolutely, Your Honor.

[00:03:57] Speaker 02:
We don't have that statement.

[00:03:58] Speaker 02:
But again, I think the registrant's statements from his prosecution history are the next best thing.

[00:04:03] Speaker 02:
And they reflect the fact that it didn't view its mark, Eureka Pizza, as being confusingly similar to the one-word mark Eureka for cheese.

[00:04:12] Speaker 02:
And so I think even that analysis would apply to this case with even greater force, where we had even more differences between the marks at issue.

[00:04:20] Speaker 02:
A one-word mark for Eureka for cheese is less different than the marks in this case, where you have the orange exclamation point.

[00:04:31] Speaker 02:
You have the imperative phrase that follows the term Eureka.

[00:04:33] Speaker 02:
for ERG's mark.

[00:04:36] Speaker 02:
And so the fact that we don't have a breach of contract remedy in the way that the consent agreements would have provided in those other cases isn't necessarily going to detract from the probative value of the registrant's statements in this case related to similar marks.

[00:04:50] Speaker 04:
What do we do with respect to the parts of the marks that are disclaimed?

[00:04:55] Speaker 04:
with respect to the registration.

[00:04:57] Speaker 04:
Are those compared at all?

[00:04:58] Speaker 04:
I mean, when you're doing that comparison that you're talking about, I think you're referring to things that are disclaimed, and I just don't know how to treat that.

[00:05:05] Speaker 02:
Yes, they are given appropriate weight.

[00:05:08] Speaker 02:
Now, they are not ignored, and that's part of the flaw in the board's analysis in this case, is the board looked at the disclaimed parts of the marks and said that because those are descriptive and disclaimed, they can't have source distinguishing function.

[00:05:20] Speaker 02:
And that's wrong as a matter of law.

[00:05:22] Speaker 02:
So as this court pointed out in Juice Generation and a number of other cases, simply because a part of the mark is descriptive or disclaimed, and particularly with the disclaimer issue, the public doesn't know that that part of the mark has been disclaimed.

[00:05:35] Speaker 02:
The public engages with the mark exactly the same way it would as if that term had been protectable under trademark law.

[00:05:43] Speaker 02:
the analysis still takes into consideration whether or not even the disclaimed portions of the mark.

[00:05:49] Speaker 02:
And to fail to do so, as we think the board did in this case, is an error of law.

[00:05:54] Speaker 02:
It runs afoul of the anti-dissection rule.

[00:05:56] Speaker 02:
And if I could walk the court through, I think, what the flaw in the board's analysis was in this case with the section, I think it would be helpful.

[00:06:02] Speaker 02:
So at A9, the board makes clear that it's really engaging in a dissection of the marks.

[00:06:08] Speaker 02:
It says the marks are not identical, but that they're similar in the sense that they are

[00:06:13] Speaker 02:
They begin with an identical term, eureka.

[00:06:17] Speaker 02:
The remainder of the board's analysis on that point really is devoted to explaining why eureka is the dominant feature of the mark and why the other features of the mark are peripheral and secondary.

[00:06:27] Speaker 02:
And this is a really key point at 9, 8, 9 through 11 where the board says, eureka pizza, the term pizza is descriptive and disclaimed and therefore it can't have a source distinguishing function.

[00:06:38] Speaker 02:
And it makes a similar conclusion as to the term American craft in ERG's mark.

[00:06:43] Speaker 02:
But that gets the analysis exactly backwards in this case.

[00:06:46] Speaker 02:
As this court held in Shen, this is very much a case like Shen, where in this case, pizza is descriptive.

[00:06:55] Speaker 02:
But it's precisely because it's descriptive that it has source distinguishing function, because it describes a product that is not in any way associated with ERG's mark.

[00:07:04] Speaker 01:
And conversely, ERG's mark, the American craft phrase, just- But that's the nature of the services issue, doesn't it?

[00:07:12] Speaker 01:
Eureka Pizza's mark is not registered as a pizza mark, it's measured, it's registered as restaurant services, and yours is attempting to be registered as restaurant services too.

[00:07:27] Speaker 01:
So the fact that there are two different kinds of restaurant services, I don't understand how that helps you.

[00:07:33] Speaker 01:
I mean, let's assume Eureka, I mean we have to assume Eureka Pizza is valid because it's registered.

[00:07:39] Speaker 01:
If somebody tried to come in and register

[00:07:42] Speaker 01:
Eureka Taco as a mark and said restaurant services, wouldn't there be a likelihood of confusion there?

[00:07:51] Speaker 02:
Well, I think the court has to engage in an analysis like it engaged in Coors, where it looked at evidence outside the application to determine whether or not the goods and services would have been related as the mark was used in commerce.

[00:08:04] Speaker 02:
And so in this case, I take your honor as well.

[00:08:06] Speaker 01:
Let's assume we don't know anything other than what's in the registrations, which is Eureka Pizza is registered as restaurant services, and Eureka Taco is attempting to be registered as restaurant services.

[00:08:21] Speaker 01:
Yes, sir.

[00:08:22] Speaker 01:
I mean, everything else is the same.

[00:08:24] Speaker 01:
They're very similar looking.

[00:08:26] Speaker 01:
You can throw in an exclamation mark if you want to and the Eureka Taco mark.

[00:08:30] Speaker 01:
I don't think that makes much difference.

[00:08:32] Speaker 01:
Isn't that the problem here is that

[00:08:34] Speaker 01:
you're both attempting to register a mark in restaurant services.

[00:08:39] Speaker 01:
And the key identifier is Eureka.

[00:08:43] Speaker 01:
The rest of this stuff is descriptive.

[00:08:45] Speaker 01:
And that causes confusion about whether Eureka restaurant group is owned or operated or is the same as Eureka Pizza or vice versa.

[00:08:56] Speaker 02:
I think it's true that if there is similarity in the services or identity between the services, there's a lower standard of similarity that would apply.

[00:09:03] Speaker 02:
And I think, Your Honor's point, I do want to note that, and I don't want to change the facts, Your Honor, it's hypothetical, but I do want to note that Eureka Pizza's mark is limited by the additional phrase featuring delivery, carryout, and catering services.

[00:09:16] Speaker 02:
But even again, taking Your Honor's point, that they're identical.

[00:09:20] Speaker 01:
Well, featuring, but not limited to.

[00:09:22] Speaker 02:
Well, is it?

[00:09:23] Speaker 01:
You know, I have, I'm a little curious as to why you're not concentrating on the description of the other mark, which is, I think, the generic text one.

[00:09:32] Speaker 01:
where the description is not restaurant services, it's what, supplier or food preparation or something like that?

[00:09:38] Speaker 01:
Which seems to me that may be of some significant difference to restaurant services.

[00:09:45] Speaker 02:
Well, the reason we're taking the board's analysis as it comes to us, and the board in this case really focused on the 242 mark, the literal description, and we don't take issue with the board's method of analysis on that point.

[00:09:56] Speaker 02:
I agree this would be a much different case and I think a much easier case if the court were just to analyze

[00:10:01] Speaker 02:
our stylized mark against the 867 stylized mark.

[00:10:05] Speaker 02:
But again, to go back to your honor's point, I think that there is, even conceding that they're identical services, this court has looked, when it's trying to evaluate whether or not the board has improperly dissected the marks, it looks to see whether or not the board is engaged in a proper contextual analysis of how the marks are actually used in commerce.

[00:10:25] Speaker 02:
And it did that in Chen.

[00:10:26] Speaker 02:
It did that even in a case like Hewlett-Packard, where

[00:10:29] Speaker 02:
Packard Technologies was held to be confusingly similar to Hewlett Packard.

[00:10:33] Speaker 02:
And the court said, well, technology is a different word.

[00:10:36] Speaker 02:
But there's still likely a confusion, because Hewlett Packard, we know that that's heavily involved in the technologies industry.

[00:10:43] Speaker 02:
But here, we know that ERG is not involved in the pizza delivery or catering industry.

[00:10:48] Speaker 02:
And so in terms of the way the marks are actually used in commerce, the descriptive features in this case can still have source distinguishing function.

[00:10:56] Speaker 02:
In looking at additionally, I think there was a flaw in the board's analysis as to commercial meaning, where the board essentially held that Eureka Discover American Craft would have geographic connotation, where there's really no evidence at all to support that.

[00:11:17] Speaker 02:
And conversely, that there would be the traditional classical meaning of the word Eureka, that that meaning would attach to Eureka Pizza.

[00:11:25] Speaker 02:
Now, even the registrant's own statements at 283 and 284 really belie that contention, where the registrant explains that consumers, when they engage with a eureka pizza mark, they're not going to decouple the two words.

[00:11:37] Speaker 02:
They're going to read them together, and the phonetic sort of symmetry between the words is going to enforce that connection.

[00:11:44] Speaker 02:
They're going to essentially say that this is not something that's conveying a sense of discovery about pizza, but that it conveys something else.

[00:11:53] Speaker 02:
And in this case,

[00:11:54] Speaker 02:
Our position is that would be the geographic connotation of Eureka Pisa as it relates to Eureka Springs, Arkansas.

[00:12:03] Speaker 03:
You're into your rebuttal.

[00:12:04] Speaker 03:
Do you want to sit down for a bit and let us hear from you?

[00:12:06] Speaker 02:
Thank you, Your Honor.

[00:12:07] Speaker 02:
Appreciate that.

[00:12:18] Speaker 03:
Good morning.

[00:12:19] Speaker 00:
Good morning.

[00:12:19] Speaker 00:
May it please the Court.

[00:12:22] Speaker 00:
engaged in exactly the correct analysis here.

[00:12:25] Speaker 00:
The board properly identified that the services were identical.

[00:12:29] Speaker 00:
It noted that because the services are identical, the degree of similarity between the marks need not be as close as it would be if the services were less closely related.

[00:12:38] Speaker 00:
And the board carefully analyzed the marks in their entirities.

[00:12:44] Speaker 03:
And did they try to amend their application here so that it would

[00:12:49] Speaker 03:
avoid anything dealing with pizza or fast food or so forth.

[00:12:54] Speaker 03:
Is there an effort to do that?

[00:12:56] Speaker 00:
Your Honor, there was a purported effort to amend, but the amendment was not a limiting amendment.

[00:13:04] Speaker 00:
It was to state including dine-in services.

[00:13:08] Speaker 00:
So an amendment that might have had some relevance here

[00:13:12] Speaker 00:
would have been amendment that excluded the specific services that are offered by the registrar.

[00:13:17] Speaker 03:
And that would, I mean, I know you can't speak here to resolving this case, but that would possibly have made a difference, correct?

[00:13:24] Speaker 00:
It certainly would have been a different question.

[00:13:26] Speaker 00:
The board reserved that question because it wasn't presented with that question.

[00:13:30] Speaker 00:
But it would have been an express limitation in the application that would have informed the board's analysis.

[00:13:37] Speaker 00:
And the board would not have concluded that the services in that instance were legally identical as it did here.

[00:13:42] Speaker 00:
But here, we have a non-limited ID in the application, and so the board correctly determined that the services were legally identical.

[00:13:51] Speaker 00:
I wanted to just address one point with respect to dissection, and this is the Shen manufacturing decision, because in that case, this court was concerned about this section.

[00:14:04] Speaker 00:
But what this court said was that Shen argues that there was error and

[00:14:08] Speaker 00:
over-emphasizing the words of putting on the in the phrase putting on the writs.

[00:14:14] Speaker 00:
And it said that Shen contends that putting on the has no significance aside from its use in conjunction with writs.

[00:14:22] Speaker 00:
As such, writs is the only relevant portion of the mark and therefore RHL's mark is identical to Shen's mark.

[00:14:29] Speaker 00:
So the argument there was that the board should have ignored language in

[00:14:35] Speaker 00:
the mark and treated the marks as identical.

[00:14:37] Speaker 00:
The board did not do that here.

[00:14:39] Speaker 00:
The board spent five pages of its decision examining the marks in their entirety and looking at the additional wording in both of the marks, examining their connotation and saying that while the marks do have some dissimilarities, as a whole, consumers are going to understand that there is some connection between the two marks.

[00:14:59] Speaker 04:
I wanted to ask you about the third party uses of Eureka.

[00:15:04] Speaker 04:
One of the arguments that is made here is that the board didn't properly assess the third party use.

[00:15:11] Speaker 04:
What is your response to that?

[00:15:12] Speaker 04:
I guess there were seven registrations, and the argument is that the TTAB distinguished those seven registrations just because they weren't directed to restaurant services.

[00:15:26] Speaker 04:
Do you agree with that characterization of the decision

[00:15:29] Speaker 00:
Well, I do agree that none of the registrations are directed to restaurant services, and I agree that that's the correct analysis, but the analysis... So if it's not directed to restaurant services, it shouldn't be considered at all, or that that's part of the analysis?

[00:15:46] Speaker 04:
You look at what it's directed to.

[00:15:49] Speaker 00:
Yeah, that's part of the analysis, right?

[00:15:51] Speaker 00:
So the question about third party, and this is discussed in Juice Generation, the question that the

[00:15:58] Speaker 00:
third-party registrations attempt to answer is whether the term is diluted in the relevant field, right?

[00:16:04] Speaker 00:
And so you have to assess whether those registrations go to the relevant field.

[00:16:08] Speaker 00:
And here what the board said was that none of the registrations go to restaurant services, right?

[00:16:13] Speaker 00:
So if anything, actually what the registration evidence does here is demonstrate that on the register, Eureka is unique to the registrant.

[00:16:23] Speaker 00:
It is a strong term as reflected by the lack of third-party registrations

[00:16:27] Speaker 00:
four restaurant services.

[00:16:29] Speaker 00:
The types of goods that were covered by the registrations were food items and... You're talking about the seven other registrations?

[00:16:38] Speaker 00:
The seven registrations, right?

[00:16:40] Speaker 00:
So the registration evidence here... Seeds.

[00:16:42] Speaker 00:
It's seeds and agricultural products, right?

[00:16:44] Speaker 00:
One of them was agricultural products.

[00:16:46] Speaker 00:
So the board didn't discount it.

[00:16:47] Speaker 00:
It just said that it didn't demonstrate weakness for the term Eureka on the register.

[00:16:54] Speaker 00:
And the board also considered the minimal common law

[00:16:58] Speaker 00:
evidence and just found that as a whole the third party Mark's evidence didn't demonstrate weakness of the term Eureka for restaurant services and so it found the factor neutral.

[00:17:08] Speaker 00:
It didn't weigh it in against the applicant.

[00:17:11] Speaker 00:
It just didn't find that it weighed in favor of registration.

[00:17:16] Speaker 00:
If the court has no further questions, sit down.

[00:17:19] Speaker 00:
Thank you.

[00:17:28] Speaker 02:
Thank you, Your Honor.

[00:17:28] Speaker 02:
Just a couple of points in rebuttal.

[00:17:31] Speaker 02:
The first point I want to address is the dissection analysis of the board.

[00:17:34] Speaker 02:
I would encourage the court to look at the board's decision in juice generation, which my friends on the other side cited in their brief.

[00:17:42] Speaker 02:
The analysis is remarkably similar in terms of the length and the depth of the analysis.

[00:17:45] Speaker 02:
In both cases, the board said, we're considering the mark in its entirety.

[00:17:49] Speaker 02:
We're looking at the different terms.

[00:17:51] Speaker 02:
But we're essentially saying that because we're descriptive or disclaimed, we're not going to afford then the same level of weight.

[00:17:56] Speaker 02:
This court held that that analysis was insufficient to show that the board had not engaged in proper dissection.

[00:18:01] Speaker 02:
I think the same analysis would apply in this case.

[00:18:03] Speaker 02:
I think the analysis is really, really remarkably similar.

[00:18:06] Speaker 02:
The second point that I want to make is that the third party registration evidence and the third party usage evidence in general, the board's limitation or this idea that the marks, the third party usage has to all be in, as they say today, the same relevant field or the same restaurant industry.

[00:18:24] Speaker 02:
is I think rejected both by juice generation, which it's not clear from that case that all of those marks were related to juice bar services or restaurant services.

[00:18:33] Speaker 02:
Some of them appeared to have been for food.

[00:18:35] Speaker 02:
But also in the Jack Wolfskin decision, where this court held that the paw print design that had been used on these various apparel items, it didn't matter that some of the third party uses were used for pet related goods or for school sports teams.

[00:18:51] Speaker 02:
even though the marks at issue were used for apparel clothing and for apparel companies and for sporting goods companies.

[00:18:57] Speaker 02:
So I think that in part of the reason why there's not that granular level of specificity required for third-party use evidence is because that's not how consumers engage with trademarks.

[00:19:06] Speaker 02:
They look at them holistically, as this court has pointed out, and they engage with what essentially would be the meaning of them and not whether or not this is the same exact field and whether or not that would make a difference in terms of being a source distinguishing or source indicating function.

[00:19:21] Speaker 02:
The court has no further questions.

[00:19:22] Speaker 03:
Thank you very much.