[00:00:00] Speaker 03:
Mr. Lenz, please proceed.

[00:00:33] Speaker 02:
Good morning, Your Honors.

[00:00:34] Speaker 02:
May it please the Court, Eric Lenz on behalf of the Appellant Guild Mortgage Company.

[00:00:39] Speaker 02:
As we believe that the Board made several errors in its analysis of the DuPont factors when it concluded that there was a likelihood of confusion between Guild's proposed mark, Guild Mortgage Company, and the Register's prior mark, Guild Investment Management.

[00:00:54] Speaker 02:
I'd like to address my comments to the DuPont factors of the

[00:00:59] Speaker 02:
the similarity of the marks, the services, and the trade channels, and customer classes.

[00:01:04] Speaker 02:
With regard to the similarity of the marks, we believe that the board didn't consider the marks in their entirety, and they placed too much emphasis on the fact that the mark shared that common word, Guild.

[00:01:13] Speaker 02:
And the board made at least two mistakes, we believe, in doing that.

[00:01:16] Speaker 02:
First, the board failed to take into consideration the evidence that we introduced as to the weakness of the registrant's mark, because it was based upon the surname of the registrant's founder, Monty Guild.

[00:01:29] Speaker 02:
We introduced evidence to show that the registrant heavily promotes the connection between Monte Guild and its mark, because Monte Guild is an expert in global investing.

[00:01:38] Speaker 02:
And when a consumer invests money with the registrant, he or she gives Mr. Guild full discretionary authority to invest the money as he sees fit.

[00:01:49] Speaker 02:
Thus, the intent, the evidence shows that the intent of the Guild element in registrant's mark is to promote the connection between Monte Guild and

[00:01:59] Speaker 02:
the registrant's mark.

[00:02:02] Speaker 03:
Okay, can I ask you a question?

[00:02:05] Speaker 03:
Each individual DuPont factor, like, for example, similarity of the marks.

[00:02:14] Speaker 03:
That's a fact question, right?

[00:02:16] Speaker 03:
Each individual one.

[00:02:17] Speaker 03:
So if the PTO finds the mark similar, that's a fact question.

[00:02:19] Speaker 03:
I have to review it for substantial evidence.

[00:02:22] Speaker 02:
Well, the determination by the PTO that

[00:02:26] Speaker 02:
that the marks are confusingly similar is a question of law.

[00:02:30] Speaker 03:
I'm not trying to fight you, just answer my question.

[00:02:35] Speaker 03:
Isn't it true, because I mean the answer is yes, isn't it true that whether or not marks are similar under the Dupont factor is a question of fact for substantial evidence?

[00:02:44] Speaker 02:
Yes.

[00:02:45] Speaker 03:
Okay.

[00:02:46] Speaker 03:
But the overall weighing of the 13 factors which determines likelihood of confusion is a question of law that I get to do de novo, correct?

[00:02:55] Speaker 03:
So even if the PTO says two marks are similar, and I don't want to overturn fact findings because, you know, the record has evidence for it, I can decide how much weight that gets as part of the legal question, because I'm the one doing the weighing of those 13 factors, can't I?

[00:03:10] Speaker 03:
Yes, Your Honor.

[00:03:10] Speaker 03:
So in many cases that I have found, it seems when we affirm a likelihood of confusion analysis, it is because either there are identical marks, not similar,

[00:03:23] Speaker 03:
and similar channels of trade and similar types of goods.

[00:03:27] Speaker 03:
Or there are similar marks, not identical, but yet identical channels of trade or identical goods.

[00:03:33] Speaker 03:
Here it's like similar, similar, similar, which has to be overall weighed less under a de novo review, doesn't it, than if one of them had been identical as opposed to similar, right?

[00:03:47] Speaker 02:
I think I follow you, Your Honor.

[00:03:49] Speaker 03:
I think it's fair that you didn't follow me.

[00:03:52] Speaker 03:
So I guess what I'm trying to say is that in this case, unlike many others that I've seen in this job, everything seems at best similar, but nothing is identical the way it has been in many other cases.

[00:04:06] Speaker 03:
None of the factors, one through three, it seemed to me way very strongly

[00:04:11] Speaker 03:
in favor of a likelihood of confusion, they meet maybe the bare minimum threshold that they need to be upheld on appeal, but that none of them weigh strongly as they have in other cases.

[00:04:21] Speaker 02:
Correct.

[00:04:21] Speaker 02:
I agree that the identity of the marks is similar.

[00:04:24] Speaker 02:
I disagree that the services are similar.

[00:04:29] Speaker 02:
I think they're totally dissimilar.

[00:04:31] Speaker 03:
And I also disagree... Well, but the thing is, even if they were similar, didn't the board expressly find that there's a high level of sophistication in the consumers?

[00:04:38] Speaker 03:
You're talking about

[00:04:39] Speaker 03:
people getting mortgages and people financially investing in this case, and I realize this is not part of the articulation of goods, people with over a million dollars of net worth investing, I realize that's not part of the description in the trademark, but the board found, as a matter of fact, that yes, these are very sophisticated individuals, and under that analysis, they'd be less likely to be confused, wouldn't they?

[00:05:02] Speaker 02:
That was our one highlight, yes, Your Honor.

[00:05:04] Speaker 01:
Did the board actually say that the consumers would be

[00:05:08] Speaker 02:
I don't believe the board's decision said that, but the board said that that factor as to consumer sophistication weighed in favor of not finding a likelihood of confusion.

[00:05:21] Speaker 02:
That's how the board came down on that.

[00:05:24] Speaker 02:
And my analysis of that element as to the overlap of consumer classes, which I believe is related,

[00:05:33] Speaker 02:
And it's something that the board never really considered, because what the board did is the board concluded based upon the fact that it concluded that the services were similar.

[00:05:43] Speaker 02:
It then presumed that the trade channels were similar.

[00:05:48] Speaker 02:
And it presumed that the customer classes were similar without actually analyzing the evidence regarding the trade channels and the customer classes.

[00:05:54] Speaker 01:
And if you look at the cut.

[00:05:55] Speaker 01:
Isn't our case law pretty clear, whether it's the recent Detroit Athletic Company case,

[00:06:02] Speaker 01:
or Viterra or Stone Lion Capital.

[00:06:05] Speaker 01:
I mean, all these cases say that if there are no restrictions identified in the application or in the registration, then you presume all ordinary trade channels and all ordinary consumers.

[00:06:18] Speaker 01:
And it's not relevant to look at what the actual customers are for the registrant or the applicant.

[00:06:27] Speaker 01:
Isn't that what the case law says?

[00:06:29] Speaker 02:
I don't believe that that's what Stone Lion says, Your Honor.

[00:06:33] Speaker 01:
I believe that... Okay.

[00:06:42] Speaker 01:
Well then, what is your conception of the law when there are no restrictions identified in the registrants' registration or the applicant's application when it comes to...

[00:06:57] Speaker 02:
I take that back, Your Honor.

[00:07:02] Speaker 02:
You're correct.

[00:07:02] Speaker 02:
There are cases, Viterra might be one of them, that says that when they're not restricted in the application registration that you can presume that they move in the same ordinary classes in which these same services move.

[00:07:19] Speaker 02:
Right?

[00:07:20] Speaker 01:
Right.

[00:07:20] Speaker 01:
But that's the road.

[00:07:21] Speaker 01:
And then there's evidence here.

[00:07:24] Speaker 01:
that there are many third-party registrations of many companies that do offer both of these services that not only the applicant services on mortgage banking but also the registrant service on investment advisory services.

[00:07:41] Speaker 01:
And then isn't the case law pretty clear that when you have evidence like that, that that is evidence that supports the idea that not only are these similar services but also that they're

[00:07:54] Speaker 01:
It's evidence that a consumer in the ordinary trade channels would expect that a company would offer both of the services.

[00:08:03] Speaker 02:
That is the law, but I disagree with that finding that there's similar services.

[00:08:06] Speaker 03:
Wait, you said that's the law.

[00:08:07] Speaker 03:
Did the board in this case find that a consumer would expect, as Judge Chen said?

[00:08:13] Speaker 03:
went a lot further than the board did.

[00:08:15] Speaker 03:
The consumer would expect these to be offered from the same provider or did the board simply acknowledge that there were providers that offered both?

[00:08:23] Speaker 03:
What was the board's finding on this?

[00:08:25] Speaker 02:
Well, I believe the board concluded that the services were related because you have, they're closely related, because you have these third parties that seem to offer both mortgage banking services and

[00:08:43] Speaker 02:
sort of general financial advisory services.

[00:08:47] Speaker 02:
And where I disagree with the board's finding in that regard is that they didn't really look at what the services were as identified in the registration and the application.

[00:08:56] Speaker 02:
They went to this third party evidence with these banks that sort of generally say, oh, well, these are investment, you know, financial services.

[00:09:06] Speaker 02:
And, you know, if you look at the services that are provided by the registrant, they're really specific and they're very narrow.

[00:09:12] Speaker 02:
And so I don't think that discretionary investment advisory services, and if you look at who their customers are, they're... No, but you can't look at who their customers are.

[00:09:22] Speaker 03:
That's not part of it.

[00:09:23] Speaker 03:
So discretion, their customers in particular, as opposed to anyone who would be offering discretionary, what is it called?

[00:09:30] Speaker 03:
Discretionary advisory services, which means... So why aren't banks who offer financial services, along with mortgage, brokerage,

[00:09:39] Speaker 03:
Why aren't they offering discretionary financial services?

[00:09:43] Speaker 02:
There's no evidence that they did.

[00:09:44] Speaker 02:
And that's part of the problem is I think that what the board did is they looked at this general evidence of what banks do and that they provide some sort of discretionary or some sort of investment advisory services and mortgage banking.

[00:09:56] Speaker 02:
And they concluded, oh, well, these banks do the same thing that the applicant and the registrant do.

[00:10:02] Speaker 02:
Well, while the mortgage half of that equation might be true,

[00:10:06] Speaker 02:
I don't think there was any evidence presented that the investment management half of that equation is true.

[00:10:14] Speaker 02:
And I think that was a mistake.

[00:10:16] Speaker 03:
I guess I don't understand because Judge Shen has, this argument I don't totally understand because Judge Shen made a point which is that you have to accept what the registrant says is the class of goods or services that Mark's going to cover.

[00:10:30] Speaker 03:
And I'm not sure how I understand discretionary financial advising services.

[00:10:34] Speaker 03:
I'm probably not saying what it is right.

[00:10:36] Speaker 03:
I don't know that I understand how it differs from what the evidence shows the banks were offering.

[00:10:46] Speaker 02:
Well, again, there is no evidence as to what the banks were offering.

[00:10:49] Speaker 02:
And that's part of the problem.

[00:10:50] Speaker 02:
But discretionary investment advisory services are those types of services where you basically give field investment management your investment.

[00:10:59] Speaker 02:
and then you walk away from it.

[00:11:01] Speaker 02:
And they don't ask you, would you like to make this trade?

[00:11:04] Speaker 02:
Would you like to invest in these investments?

[00:11:06] Speaker 02:
Would you like to?

[00:11:07] Speaker 02:
They just take care of it.

[00:11:10] Speaker 01:
Look, I'm getting confused now.

[00:11:13] Speaker 01:
Guild investment management, the services identified in their registration is investment advisory services.

[00:11:24] Speaker 01:
And then we have multiple banks

[00:11:27] Speaker 01:
third-party registrants where among their listed services is quote-unquote investment advisory services, end quote, right?

[00:11:38] Speaker 01:
Is that correct?

[00:11:39] Speaker 01:
Financial services, yes.

[00:11:40] Speaker 02:
Okay.

[00:11:41] Speaker 01:
And then those same banks also provide something called mortgage banking services.

[00:11:47] Speaker 02:
Yes.

[00:11:48] Speaker 01:
Which is the exact quote of the services that your applicant is providing under the mark.

[00:11:57] Speaker 01:
Gild Mortgage Bank.

[00:11:59] Speaker 02:
Gild Mortgage Company, yes your honor.

[00:12:01] Speaker 02:
Mortgage Company.

[00:12:02] Speaker 01:
So I guess why under the case law isn't that enough to demonstrate that in fact we have third party registrants that are providing both services that are being offered by the two companies involved in this case.

[00:12:22] Speaker 02:
Well, because the services, the evidence shows that the services that are provided by Guild Investment Management are really a unique niche brand of services and they're not general banking services.

[00:12:35] Speaker 01:
It's not identified in Guild Investment Management's registration, right?

[00:12:40] Speaker 01:
It didn't go deeper into what they meant when they said investment advisory services under International Class 36.

[00:12:47] Speaker 01:
Correct.

[00:12:49] Speaker 03:
Okay, you're in your rebuttal time.

[00:12:51] Speaker 03:
I'm sorry, did you have anything else you wanted to say to answer Judge Jen's question?

[00:12:55] Speaker 03:
Okay, do you want to save the rest and let's hear from the closing counsel?

[00:12:58] Speaker 03:
I will, Your Honor.

[00:13:09] Speaker 00:
Good morning.

[00:13:10] Speaker 00:
May it please the Court?

[00:13:11] Speaker 00:
I just wanted to answer a question that I think Judge Moore was directing to Appellants' Council.

[00:13:18] Speaker 00:
Even when the findings are that the mark is similar, the goods are similar, trade channels are similar, customers are similar, that still all supports a likelihood of confusion.

[00:13:27] Speaker 03:
There's no... Well, of course it supports it, but it's not as strong a case as if there had been any one of those have been identical, is all I'm saying.

[00:13:34] Speaker 03:
Right, exactly.

[00:13:34] Speaker 03:
I have to do the weighing, de novo.

[00:13:36] Speaker 00:
Yes.

[00:13:37] Speaker 03:
And so while the board may have made a finding that there's similar marks,

[00:13:42] Speaker 03:
You know, they're similar and then they're similar.

[00:13:44] Speaker 03:
You know what I'm saying here?

[00:13:45] Speaker 03:
There's degrees of similarity.

[00:13:47] Speaker 03:
The board didn't say these are virtually identical.

[00:13:49] Speaker 03:
They're highly exact.

[00:13:51] Speaker 03:
They found they're similar.

[00:13:52] Speaker 03:
So I have to then weigh that.

[00:13:54] Speaker 03:
Because didn't the board also find that the fourth factor, the sophistication of the consumers, weighed against the likelihood of confusion?

[00:14:01] Speaker 00:
Slightly against is what they found.

[00:14:03] Speaker 03:
But that's not for them to decide, because that's the weighing.

[00:14:07] Speaker 03:
And isn't that the part I do?

[00:14:08] Speaker 03:
I mean, it is for them to decide in the first instance.

[00:14:10] Speaker 03:
But don't I review that de novo?

[00:14:12] Speaker 00:
You don't review their finding that the sophistication would weigh slightly against the likelihood of confusion.

[00:14:21] Speaker 00:
Wait, wait, I don't get to weigh the factors?

[00:14:23] Speaker 03:
I don't get to weigh the factors to know about?

[00:14:24] Speaker 00:
You get to weigh that finding against the other findings that they've made.

[00:14:29] Speaker 00:
The marks are similar, the goods are similar, classes of customers are similar, that sort of thing.

[00:14:33] Speaker 00:
and then you can reweigh what they have found specifically, but that was a specific finding with respect to sophistication.

[00:14:40] Speaker 03:
Their finding is that sophistication weighs in favor of the applicant, correct?

[00:14:47] Speaker 00:
Slightly, as well.

[00:14:48] Speaker 03:
Yes, but that's the weighing, and that's what I do de novo, so I don't think I understand.

[00:14:52] Speaker 00:
I would respectfully disagree with the fact that you would have the opportunity to reweigh de novo a finding on a particular

[00:15:01] Speaker 03:
How much weight to give to each of the factors in the overall analysis is not something you think I get to do de novo as part of the likelihood of confusion analysis?

[00:15:09] Speaker 00:
I think maybe the way I could explain it best is to say what you get to do de novo as the court is to look at the finding that the marks are similar, look at the finding that the goods are similar, look at the finding that the channels of trade and classes of customers are similar, and look at the finding that the

[00:15:28] Speaker 00:
sophistication of the customers weighs slightly against those factors.

[00:15:32] Speaker 03:
I don't think I agree with you.

[00:15:35] Speaker 03:
It was a matter of law.

[00:15:36] Speaker 03:
Can you point me to any case that says that I don't get to weigh the factors or that if the board says this weighs slightly as compared to this which weighs more heavily that I don't review that de novo?

[00:15:47] Speaker 03:
Are you aware of any case support for that proposition?

[00:15:50] Speaker 03:
Because that seems to me to be part of the weighing of the factors which is what's done de novo.

[00:15:55] Speaker 03:
So are you familiar with any cases?

[00:15:56] Speaker 00:
Off the top of my head, I don't think I have something that... Well then let's not worry about that.

[00:15:59] Speaker 03:
I have another question for you.

[00:16:00] Speaker 01:
What if the question was that the board found that the marks were highly similar?

[00:16:06] Speaker 01:
Would we then get to review the question of whether if the marks are highly similar at De Novo or would we have to look at that as a fact question that the board found not only that the marks are similar but that they are highly similar?

[00:16:23] Speaker 00:
Yeah, that particular, that's almost exactly the same thing as what I was saying to Judge Moore.

[00:16:28] Speaker 00:
That is something that I think the court would have to review for substantial evidence.

[00:16:32] Speaker 03:
Except I agree with you.

[00:16:33] Speaker 03:
The court reviewed that for substantial evidence, and I actually agree with Judge Chen as well on that.

[00:16:37] Speaker 03:
But the problem for me is that they didn't find that the consumers were a little bit sophisticated.

[00:16:42] Speaker 03:
They found that sophistication weighed in favor of them.

[00:16:46] Speaker 03:
If they had made a specific fact finding about sophistication,

[00:16:51] Speaker 03:
then I would agree that would be a question of fact that I would give deference to.

[00:16:55] Speaker 03:
But they didn't make a fact, the way you're referring to it is not a fact finding about sophistication.

[00:16:59] Speaker 03:
It's about a fact finding about how much weight to give sophistication in the overall analysis.

[00:17:04] Speaker 03:
And that is the legal question.

[00:17:06] Speaker 00:
Maybe what I can best do is to say that what you've got for the appellant's goods are mortgage banking services.

[00:17:14] Speaker 00:
And that's a very broad type of service.

[00:17:16] Speaker 00:
And as they say in their brief, I believe, it takes all sorts of customers.

[00:17:20] Speaker 00:
Anyone who wants a house is going to be looking for mortgage banking services.

[00:17:24] Speaker 00:
So they encompass both sophisticated people, presumably, and unsophisticated people, and an entire range in between those two poles.

[00:17:33] Speaker 00:
And to think that discretionary, what he calls discretionary investment advisory services,

[00:17:42] Speaker 00:
only comprises sophisticated investors is his presumption based on evidence that really can't be let into this sort of ex parte proceeding.

[00:17:52] Speaker 00:
So you have to look at the registration as well, which just says investment advisory services.

[00:17:58] Speaker 00:
And that's almost as broad as the class of customers for mortgage banking services, because so many people do investment services.

[00:18:07] Speaker 00:
So I think what you're looking at

[00:18:11] Speaker 00:
to try to get to the point where you're saying these are really sophisticated investors really isn't supported by the record.

[00:18:17] Speaker 03:
No, the fact finding is consumers may exercise a certain degree of care in investing money.

[00:18:22] Speaker 03:
Right.

[00:18:23] Speaker 03:
And that was the fact finding under the fourth factor which has to do with sophistication of purchasing.

[00:18:28] Speaker 03:
Right.

[00:18:29] Speaker 03:
So that's the fact finding.

[00:18:30] Speaker 03:
So then didn't they also argue repeatedly below that

[00:18:38] Speaker 03:
there is a very long time of contemporaneous use with no evidence of any actual confusion.

[00:18:46] Speaker 00:
They did make that argument.

[00:18:47] Speaker 03:
And that's factor number eight, the length of time and the conditions under which there has been concurrent use without evidence of actual confusion.

[00:18:54] Speaker 00:
Correct.

[00:18:55] Speaker 03:
And they made the argument to the board in particular on appendix page 420 that the examiner seems to have ignored

[00:19:02] Speaker 03:
this argument and their evidence about it because the examiner made no reference to it.

[00:19:06] Speaker 03:
Is that a fair characterization of page 420?

[00:19:09] Speaker 00:
I don't know what's on 420, but I'm happy to look at it.

[00:19:12] Speaker 03:
You can feel free to get it if you want.

[00:19:14] Speaker 03:
I mean, I'm just telling you what they said about or what was stated about whether or not the examiner erred in failing to consider this evidence.

[00:19:32] Speaker 00:
Oh, this is the page of their brief where they made the argument.

[00:19:34] Speaker 00:
I agree they made the argument.

[00:19:35] Speaker 03:
That's all I'm saying.

[00:19:36] Speaker 03:
They made the argument.

[00:19:37] Speaker 03:
So where did the board discuss DuPont factor number eight, in particular the length of time and the conditions under which there's been concurrent use with no evidence of actual confusion?

[00:19:50] Speaker 00:
They didn't expressly say, you know, we acknowledge that this argument was made.

[00:19:54] Speaker 00:
What they did say at the outset of their opinion was they looked at what they thought were the most relevant DuPont factors.

[00:19:59] Speaker 00:
This was on appendix three.

[00:20:01] Speaker 00:
And then they said,

[00:20:02] Speaker 00:
And those other ones that we don't address, we find those to be neutral.

[00:20:06] Speaker 03:
Where did they say that?

[00:20:07] Speaker 03:
The ones we don't address.

[00:20:08] Speaker 03:
Appendix 3, I believe.

[00:20:09] Speaker 03:
We find to be neutral.

[00:20:13] Speaker 00:
Right before the heading, the dissimilarity, dissimilarity of Morse, that preceding sentence.

[00:20:20] Speaker 03:
Appendix 3?

[00:20:21] Speaker 00:
Yes.

[00:20:25] Speaker 03:
No?

[00:20:25] Speaker 03:
Wait, wait, wait.

[00:20:26] Speaker 03:
We consider the DuPont factors for which there were arguments and evidence.

[00:20:30] Speaker 03:
But you just admitted, and we pointed to page 420, they made arguments about factor number 8, actual confusion.

[00:20:37] Speaker 03:
And then they say, the others we consider to be neutral.

[00:20:42] Speaker 03:
So when it says the others, aren't they contrasting it with the arguments and evidence that were made?

[00:20:46] Speaker 00:
I can't speak for the board.

[00:20:48] Speaker 00:
Clearly, they didn't address it expressly.

[00:20:50] Speaker 00:
Wait.

[00:20:50] Speaker 03:
Wait.

[00:20:50] Speaker 03:
Are you telling me that you read this sentence

[00:20:54] Speaker 03:
as when they say the others, as including all other arguments and evidence they actually made but we don't address herein.

[00:21:04] Speaker 03:
I'm sorry, I don't quite... You just told me that the board said, we're going to discuss these big factors, and we're not going to discuss the other factors that they may have argued or made, but we find them all to be neutral.

[00:21:16] Speaker 03:
Isn't that what you said to me?

[00:21:18] Speaker 00:
No, this doesn't say that.

[00:21:19] Speaker 00:
This says... No, it sure doesn't.

[00:21:21] Speaker 00:
Yeah.

[00:21:22] Speaker 00:
Exactly.

[00:21:23] Speaker 00:
The point is that they don't...

[00:21:24] Speaker 03:
The board says, we consider the DuPont factors for which there were arguments and evidence.

[00:21:28] Speaker 03:
So where is it that the board considered the arguments and evidence that were presented on DuPont factor eight?

[00:21:33] Speaker 03:
Because they presented it repeatedly, and they even made the argument to the board, the examiner is overlooking all of this evidence.

[00:21:40] Speaker 00:
They did not make that argument.

[00:21:42] Speaker 00:
They did not make that finding.

[00:21:43] Speaker 00:
They did not address it specifically in the thing.

[00:21:47] Speaker 00:
But they did not have to, as we pointed out.

[00:21:48] Speaker 03:
Let's pretend you're an appellate judge for a second.

[00:21:50] Speaker 03:
And let's pretend that an argument is made to an examiner.

[00:21:54] Speaker 03:
repeatedly.

[00:21:55] Speaker 03:
And the examiner issues an opinion that doesn't address that argument.

[00:21:58] Speaker 03:
And then let's pretend they then say one of their chief complaints to the board, one of their chief complaints in their brief to the board is, we've presented important evidence on no evidence of actual confusion despite long-time concurrent contemporary use.

[00:22:14] Speaker 03:
And they expressly say, and we submit that the examiner erred in failing to consider this evidence on page 420.

[00:22:21] Speaker 03:
And then the board.

[00:22:24] Speaker 03:
Likewise, doesn't address that argument or evidence anywhere in its opinion.

[00:22:28] Speaker 03:
Of course, that doesn't feel like a good job of appellate judging.

[00:22:31] Speaker 00:
Even in that hypothetical... That's not a hypothetical.

[00:22:34] Speaker 03:
That's actually what happened in this case.

[00:22:35] Speaker 00:
Well, I think the... I believe that the examining attorney did in fact address the lack of actual confusion and said that in an ex parte proceeding, you don't need to get into that because the other side is not here to give their view on actual confusion.

[00:22:51] Speaker 00:
Now, there are ways that they could have given

[00:22:53] Speaker 00:
There are ways that the appellant could have gotten into the actual confusion argument.

[00:22:58] Speaker 00:
Number one, it could have brought a, if it wanted to limit it to... So wait, time out for a second.

[00:23:02] Speaker 03:
There are two elements dealing with actual confusion in the Dupont factors, aren't there?

[00:23:07] Speaker 00:
Length of actual time and instances of actual confusion.

[00:23:11] Speaker 03:
No.

[00:23:12] Speaker 03:
Factor number seven, I'll read it to you because I've got the opinion in front of me.

[00:23:14] Speaker 03:
The nature and extent of any actual confusion.

[00:23:18] Speaker 03:
Factor number eight, the length of time during and conditions under which there has been concurrent use without evidence of actual confusion.

[00:23:24] Speaker 03:
Right.

[00:23:25] Speaker 03:
Okay.

[00:23:25] Speaker 03:
So which of those two is it your position the examiner thought about and addressed?

[00:23:31] Speaker 00:
Let me point it out to your honor.

[00:23:43] Speaker 03:
I don't know.

[00:23:44] Speaker 03:
I mean, for me, let me just tell you, an administrative agency has an obligation under the APA to address the arguments that were presented and raised in its resolution.

[00:23:54] Speaker 03:
That is an APA requirement.

[00:23:57] Speaker 03:
And if they made an argument to the examiner, and then they made it to the board, and they complained it wasn't addressed, don't we have an APA violation?

[00:24:04] Speaker 00:
No.

[00:24:06] Speaker 03:
Why not?

[00:24:06] Speaker 00:
Because this court has said very clearly, in the Marriott case from 1975,

[00:24:11] Speaker 00:
that evidence that there has been no confusion by the applicant in an ex parte proceeding is irrelevant.

[00:24:18] Speaker 03:
No, that's not what we said.

[00:24:19] Speaker 03:
We said generally irrelevant.

[00:24:21] Speaker 03:
But the reason we said generally irrelevant in that case is because that's factor number seven as opposed to factor number eight.

[00:24:27] Speaker 03:
There's two different factors.

[00:24:29] Speaker 03:
And both the examiner was addressing factor seven and that opinion was addressing factor seven.

[00:24:35] Speaker 03:
Neither of them were addressing factor eight

[00:24:37] Speaker 03:
And if there really are two different factors, and one of which goes to all this factual nature of the length of time and conditions under which there's been no concurrent use, why in the world would we say the next parte proceeding, that's not available for consideration?

[00:24:52] Speaker 00:
Because the registrant is not here to give facts that it has about whether or not there should be or would be or likely be or is actual confusion.

[00:25:02] Speaker 00:
You need the other party here to be able to give their story

[00:25:07] Speaker 00:
and give the facts that they are aware of in order to adjudicate.

[00:25:11] Speaker 03:
Maybe there's a little bit of confusion, because these factors were articulated, were they not, in the in Ray E. I. DuPont case?

[00:25:18] Speaker 00:
Right.

[00:25:19] Speaker 03:
Which is a CCPA case, an ex parte case, correct?

[00:25:22] Speaker 00:
That's correct.

[00:25:23] Speaker 03:
And nothing in that ex parte case suggested that we're going to list 13 factors to be considered, presumably in the context of this case, because courts don't usually do a lot of dicta.

[00:25:35] Speaker 03:
These are the 14 factors, but you're telling me that there are 13 factors that we have concluded two of them are completely irrelevant as opposed to, at times, irrelevant.

[00:25:45] Speaker 03:
And in fact, that was only factor seven.

[00:25:47] Speaker 03:
That factor eight does not have to be considered by the board at all, even when evidence is presented?

[00:25:54] Speaker 00:
Is that what you're telling me?

[00:25:56] Speaker 00:
DuPont is a case in which, I believe it was Judge Rich, was trying to collect all of the likelihood of confusion factors

[00:26:03] Speaker 00:
that would apply both in ex parte and inter partes cases.

[00:26:07] Speaker 00:
And DuPont does apply in inter parte cases.

[00:26:10] Speaker 00:
You have to take into account that this is an ex parte proceeding in order to filter that broad and entirely.

[00:26:20] Speaker 03:
Do you agree that the board did not address

[00:26:26] Speaker 03:
Factor 8, length of time during the conditions under which there has been concurrent use without any evidence of actual confusion.

[00:26:33] Speaker 00:
Yes, they did not address that.

[00:26:34] Speaker 03:
They did not address that.

[00:26:35] Speaker 00:
Right, and they did not have to, Your Honor.

[00:26:37] Speaker 03:
And you believe, do you agree, that if I were to think they did have to address it, that it would be an APA violation for them not to have done so.

[00:26:45] Speaker 03:
If I think that is a factor that is not legally irrelevant to the decision that they've rendered, that they did have an obligation to the APA to address it.

[00:26:55] Speaker 00:
If that is what this court believed, it may well be that.

[00:26:59] Speaker 00:
But I think that would be counter to a lot of case law in ex parte cases that has been rendered by this court that says that the likelihood of the actual confusion evidence, which includes how long it's been going on, is simply not relevant unless you have the registrant here to give their facts that they are aware of on that particular thing.

[00:27:23] Speaker 00:
And he could have gone to the registrant and said,

[00:27:25] Speaker 00:
I'd like to get a consent from you.

[00:27:26] Speaker 00:
I don't think there's going to be a likelihood of confusion here.

[00:27:29] Speaker 00:
You're in this business.

[00:27:30] Speaker 00:
We're in the other business.

[00:27:32] Speaker 00:
Let's write down in parcel for the court exactly what we think we can do here.

[00:27:37] Speaker 00:
That was not done.

[00:27:38] Speaker 00:
That was open to them.

[00:27:39] Speaker 01:
They could have brought, for example... For me, the funny thing is I understand what we've said in cases like majestic drilling and that was repeated in Detroit Athletic, which is

[00:27:50] Speaker 01:
in a ex-party proceeding when we have uncorroborated self-serving testimony from the applicant that he or she is not aware of an actual confusion that's given little weight in the overall confusion analysis.

[00:28:04] Speaker 01:
And so we've said that multiple times.

[00:28:07] Speaker 01:
But at least in those instances, the trademark board actually played with that factor a little bit and discussed it and then ultimately did not find when it did the overall

[00:28:20] Speaker 01:
ultimate analysis that that along with any other factors was persuasive enough to find no likelihood of confusion.

[00:28:28] Speaker 01:
Here in this instance, even though we may all know that as a matter of law in these certain kinds of ex parte contexts, this kind of uncorroborated testimony is giving little weight, we still have to ask ourselves, shouldn't the board be the one that tells us why, in this particular instance,

[00:28:49] Speaker 01:
they did in fact consider this factor, this evidence, and yet ultimately, even with the addition of that factor and factor four or five, whichever one it is, it's not enough to overcome the finding of determination of likelihood of confusion in view of similarity of marks, services, and trade channels.

[00:29:10] Speaker 00:
That would be ideal if they were to actually do that in their opinions and specifically state that they had looked at that particular factor, which wasn't done here.

[00:29:19] Speaker 00:
But they did, in fact, say that they looked at all the other factors and considered them to be neutral, which is something I stated at the outset.

[00:29:25] Speaker 00:
I don't think they were trying to specifically say, we're ignoring this actual confusion evidence altogether.

[00:29:32] Speaker 00:
I think that they, in a way that maybe wasn't the best worded, were saying, we've looked at the other stuff and it's just neutral.

[00:29:38] Speaker 01:
I saw another statement in Detroit Athletic where this court has said the trademark board doesn't need

[00:29:47] Speaker 01:
to always discuss every component factor.

[00:29:49] Speaker 01:
It can just focus on the dispositive factors.

[00:29:52] Speaker 01:
What do you think we meant by that, if ordinarily you would expect that if certain arguments are made to a tribunal, that the tribunal has a responsibility to confront those arguments and address them somehow?

[00:30:10] Speaker 01:
In the face of this statement, where apparently we have law that says you don't always have to consider every single

[00:30:17] Speaker 00:
I think that that basically, you know, justifies what the board did here.

[00:30:24] Speaker 00:
They looked at the factors that they thought that the appellant raised that were the most substantial, addressed those, and then made its determination.

[00:30:32] Speaker 03:
And do you think that's true even where the appellant made only three arguments and that its second argument, which it spent most of its briefing on below, was that the examiner failed to address all of our evidence related to factor number eight?

[00:30:44] Speaker 03:
You really think that under those circumstances, the APA is satisfied when the board and I read the opinion as absolutely neglecting to recognize the argument was even made and have incorporated or addressed it wherein.

[00:30:58] Speaker 03:
The two sentences that you point me to leave me only, the only reasonable reading of those that I can see is that they misunderstood that that argument was somehow raised and the evidence was presented.

[00:31:07] Speaker 03:
It doesn't fall into the others.

[00:31:09] Speaker 03:
You can respectfully disagree that's not relevant to me because I can read.

[00:31:14] Speaker 03:
So even under those circumstances, you think there is no APA obligation to address the argument made when only three were made.

[00:31:22] Speaker 03:
And this one was highlighted.

[00:31:23] Speaker 03:
And the particular argument was the examiner is failing to address this evidence that we think is important.

[00:31:29] Speaker 00:
I would not say that that, in the context of all of the overall case law that we've discussed here that guides the board and the examining attorney, that no, that wouldn't be an APA violation.

[00:31:42] Speaker 00:
I did want to discuss it.

[00:31:43] Speaker 03:
Let's hear from opposing counsel.

[00:31:44] Speaker 03:
We're way beyond our time.

[00:31:46] Speaker 03:
We only have a few minutes of rebuttal.

[00:31:47] Speaker 03:
He went over by three minutes, so we'll give you a little extra leeway if you need it.

[00:31:51] Speaker 03:
But hopefully, you don't have to take it all.

[00:31:56] Speaker 02:
Thank you, Your Honors.

[00:31:58] Speaker 02:
I'd like to cycle back to the earlier part of our discussion.

[00:32:02] Speaker 01:
Would you say the no lack of actual confusion argument was one of the spotlights of your brief to the board below?

[00:32:10] Speaker 02:
I think it was something that we strongly argued.

[00:32:13] Speaker 01:
Did you say it was one of the top three arguments you made?

[00:32:17] Speaker 01:
I don't know if it was one of the... I'm just looking at it now.

[00:32:22] Speaker 01:
I see it carried in the back of your brief.

[00:32:25] Speaker 01:
It was certainly... The sentence at the back of your brief, along with other factors, but, I mean, it looks like you were all about trade channels for pages and then services for pages and then similarity of marks for pages.

[00:32:39] Speaker 02:
Well, we did certainly make the argument.

[00:32:41] Speaker 03:
Just to be clear, it's on page three of your brief, right?

[00:32:44] Speaker 03:
Judge Chin's buried at the back thing.

[00:32:46] Speaker 03:
I'm not sure what that means, because the brief appears to be 24 pages long.

[00:32:51] Speaker 03:
So it's on page three of your brief.

[00:32:53] Speaker 03:
Is it not page 420 of the appendix?

[00:33:10] Speaker 01:
You've got to look all the way to the bottom.

[00:33:12] Speaker 03:
Oh, yeah.

[00:33:12] Speaker 03:
It's true.

[00:33:13] Speaker 03:
It's at the bottom.

[00:33:13] Speaker 01:
Yes.

[00:33:14] Speaker 03:
Of 24.

[00:33:15] Speaker 03:
Judge Chen is absolutely right.

[00:33:17] Speaker 01:
Yes.

[00:33:17] Speaker 01:
There are about four or five words down there that talk about a lack of actual confusion.

[00:33:24] Speaker 02:
Yes, Your Honor.

[00:33:25] Speaker 02:
And I mean, we did make that argument because, of course, my client's been in business for almost 60 years.

[00:33:31] Speaker 02:
And we've operated concurrently with the registrant for almost 50 years.

[00:33:37] Speaker 02:
Both of our companies

[00:33:40] Speaker 02:
uh... originated in southern california so i mean it is an argument that that is there and that we made uh... we we did focus on the similarity of the marks uh... primarily and i believe that this court also can determine whether or not substantial evidence supported the findings that the marks were similar and i think that what the board did in this case was it failed to consider our evidence of the weakness of the registrant's mark and you know in doing that

[00:34:10] Speaker 02:
you know I in doing that you know I believe that the the board put too much emphasis on this common word guild that's used in both marks and they didn't consider the weakness of guild and so what happened is they simply dismissed the descriptive elements of the marks and I think that was that was a mistake that the board made and I have a hard time reconciling that with this court's decision in juice generation where this court held that the board didn't adequately assess the weakness of the marks

[00:34:38] Speaker 02:
And it found that the board's analysis was inadequate because it didn't show any consideration of how the marks may convey a different meaning to the consuming public.

[00:34:47] Speaker 02:
And I think that's a similar situation that we have here because of the connection of Guild Investment Management's mark with Monty Guild.

[00:34:55] Speaker 02:
I mean, that presents a totally different commercial impression to customers than, for example.

[00:35:02] Speaker 01:
I know that's your primary argument for why

[00:35:07] Speaker 01:
The word guild and guild investment is weak, but it doesn't follow for me why a consumer seeing guild investment and then guild mortgage banking would think, oh, well, because it's Monty Guild, therefore it's a weak mark.

[00:35:29] Speaker 01:
Why wouldn't that same consumer think Monty's now doing mortgage banking?

[00:35:36] Speaker 02:
Well, because the law is that marks based on surname are inherently weak.

[00:35:43] Speaker 02:
And so for that reason, the registrant's mark should be determined to be weak.

[00:35:50] Speaker 01:
In addition, can you point me to a case that says when it comes to a 2D confusion analysis, if the registrant's mark is a surname or the dominant term is a surname, then it should be

[00:36:05] Speaker 01:
seen as something weak or particularly weak that doesn't, therefore, sufficiently suggest confusion?

[00:36:15] Speaker 02:
Well, yes.

[00:36:16] Speaker 02:
And because the mark is weak, it's entitled to a limited scope of protection.

[00:36:20] Speaker 02:
The main case that we cite is the Amstar case, but there are several others that we've cited in our brief as well.

[00:36:26] Speaker 02:
So yes, I mean, that is a holding.

[00:36:30] Speaker 02:
And what the board did was they said-

[00:36:32] Speaker 01:
Did you seek a coexistence agreement in this case?

[00:36:39] Speaker 02:
We didn't, Your Honor, at this point.

[00:36:43] Speaker 03:
Is there any reason why you didn't submit it?

[00:36:46] Speaker 02:
No.

[00:36:48] Speaker 02:
We didn't reach out to Guild Investment Management.

[00:36:53] Speaker 03:
Okay, I think that we're out of time.

[00:36:55] Speaker 03:
I thank both counsels for their argument.

[00:36:57] Speaker 03:
The case is taken under advisement.

[00:36:59] Speaker 03:
That concludes our proceedings.

[00:37:00] Speaker 03:
Thank you.

[00:37:02] Speaker 01:
All rise.

[00:37:04] Speaker 01:
The Honorable Court is adjourned from tomorrow morning to the clock AM.

[00:37:17] Speaker ?:
Nice to meet you.

[00:37:22] Speaker ?:
That's it.

[00:37:25] Speaker ?:
Hi, nice to meet you.

[00:37:31] Speaker ?:
I'll wait for you here.

[00:37:44] Speaker 02:
It's always frustrating with subjects.

[00:37:50] Speaker 03:
You gotta be prepared for that.