[00:00:56] Speaker 02:
The next argued case is number 191561, ICCS USA against the United States.

[00:01:05] Speaker 02:
Mr. Pollack.

[00:01:11] Speaker 04:
Good morning.

[00:01:12] Speaker 04:
May it please the court.

[00:01:12] Speaker 04:
My name is Elon Pollack.

[00:01:14] Speaker 04:
I represent ICCS, the appellant in this matter.

[00:01:18] Speaker 04:
This case, we believe that the court below should be reversed because of a

[00:01:24] Speaker 04:
finding a fact that's inconsistent with the facts of record.

[00:01:28] Speaker 04:
The case really stems, revolves around four different concepts, one of which is brand, one is model, one is product designation, and one is product.

[00:01:39] Speaker 04:
Beginning about page four of the court's opinion below, I believe is appendix page four, the court agrees with the parties that the product is the premium brand.

[00:01:52] Speaker 04:
About two pages later,

[00:01:53] Speaker 04:
the court morphs into a finding that the product is now a model as opposed to a brand.

[00:02:01] Speaker 04:
Now, model doesn't appear anywhere in the correlation sheet that's produced by an underwriter's laboratory, but yet that becomes the focus for the court's decision that this is a new product, a new model, and hence it required approval before it was imported.

[00:02:18] Speaker 04:
That's simply not the case.

[00:02:21] Speaker 04:
OJC, which is the

[00:02:22] Speaker 04:
which is the producer and supplier of the premium brand product applied for license with UL in 2001.

[00:02:31] Speaker 04:
And that license allowed them to bring in a product that they designated as the Mega One.

[00:02:39] Speaker 04:
The Mega One product is still the same product that's imported today.

[00:02:43] Speaker 04:
There's no change.

[00:02:44] Speaker 04:
It's the same product designation supplied by OJC.

[00:02:49] Speaker 04:
And since that time,

[00:02:51] Speaker 04:
The writer's laboratory has approved that application of its registered trademark to the canisters that were being imported.

[00:03:00] Speaker 04:
The only dispute really is whether the brand name supplied by the multiple listee under the original license changes anything.

[00:03:09] Speaker 04:
Our position has been all along that there's no change.

[00:03:13] Speaker 04:
It's still the Mega One canister.

[00:03:15] Speaker 04:
Nothing has changed at all.

[00:03:17] Speaker 04:
And because it's still the Mega One canister,

[00:03:20] Speaker 04:
the authorization to import this product with the UL listing on it meets all of UL's requirements, and that the statements that the government relies on from Underwriters Laboratory product brand manager are both misleading and a misrepresentation when she says at page 401 in the appendix that upon review of the UL records, the only authorized model on that date was butane gas canister model number US butane.

[00:03:49] Speaker 04:
On February 8, five new model nomenclatures were added to the private labeling for file MH61112, which included the model number premium.

[00:04:01] Speaker 04:
That's simply untrue.

[00:04:03] Speaker 04:
That's simply untrue.

[00:04:04] Speaker 04:
These are not new models.

[00:04:05] Speaker 04:
They're the exact same model that was used, the same product that was authorized by UL going back to 2001.

[00:04:15] Speaker 04:
Part of our appeal concerned the abuse of discretion by the court below not to allow us to conduct discovery.

[00:04:21] Speaker 04:
This is precisely the problem, is that we would like to have known what the basis for that statement is.

[00:04:28] Speaker 04:
Because in the absence of an explanation, it's just an empty statement with no contradiction whatsoever and not supported by the other underwriter laboratory's documentation.

[00:04:40] Speaker 04:
I want to point out to the court that the only

[00:04:45] Speaker 04:
Brands or the only I'm sorry the only model reference that they supply appears at pages 2000 but 201 through 205 When it talks about the product covered and describes the model as the mega one or the mega one you well each and every page of their reports dating from 2001 through 2016 say the same thing

[00:05:07] Speaker 04:
The only model is the Mega One, not any US butane, premium, or any of the other brands provided by the multiple listee.

[00:05:17] Speaker 04:
And on that basis.

[00:05:20] Speaker 02:
I couldn't tell.

[00:05:21] Speaker 02:
How did this arise with this question of counterfeit?

[00:05:25] Speaker 02:
Did UL complain?

[00:05:27] Speaker 04:
Actually, customs stopped the shipment.

[00:05:29] Speaker 02:
Yes, that's what you told me.

[00:05:31] Speaker 04:
They stopped the shipment and then released it.

[00:05:32] Speaker 02:
Well, was there a complainant, or was this?

[00:05:35] Speaker 04:
No, not at all.

[00:05:36] Speaker 04:
Customs stopped the shipment because UL's registration is listed, is recorded with US Customs.

[00:05:42] Speaker 02:
But did UL complain about the use of premium on its?

[00:05:46] Speaker 04:
No.

[00:05:46] Speaker 04:
No, this was provided by Customs.

[00:05:48] Speaker 04:
When they detain the goods, after five days, they notify UL and ask UL to confirm or deny whether this product is authorized.

[00:05:57] Speaker 02:
What did they do?

[00:05:58] Speaker 04:
They denied.

[00:05:58] Speaker 04:
They said it's not authorized.

[00:06:00] Speaker 02:
And the basis is- Because of the premium designation?

[00:06:04] Speaker 04:
Yes, ma'am.

[00:06:06] Speaker 04:
Exactly.

[00:06:07] Speaker 04:
And what we suggest in our papers is that either Emma Pierce, who was the responsible official at UL, was guessing, or she never looked at the record.

[00:06:17] Speaker 04:
Because the record is very clear that the product designation covered by the license is mega one.

[00:06:23] Speaker 04:
And that the multiple listies product designation

[00:06:26] Speaker 04:
has nothing to do with the underlying license that's been granted by UL.

[00:06:31] Speaker 04:
This is a trademark question.

[00:06:33] Speaker 04:
And the trademark rights were granted by UL to OJC to apply the UL mark to its Mega One product.

[00:06:40] Speaker 03:
Did the premium products that were brought into the country include the Mega One designation?

[00:06:46] Speaker 04:
Actually, it doesn't say that.

[00:06:47] Speaker 04:
It has the control number on it, which is 47VN.

[00:06:49] Speaker 03:
So I asked because it's my understanding

[00:06:55] Speaker 03:
that the subject merchandise only designated mega one was approved and certified by UL.

[00:07:02] Speaker 03:
So was it designated mega one?

[00:07:06] Speaker 04:
I'll answer that question this way.

[00:07:08] Speaker 04:
Not on the papers and not on the product.

[00:07:11] Speaker 04:
Because UL approved the control number of 47VN.

[00:07:17] Speaker 04:
Emma Pearson, page 401, says that it complies.

[00:07:21] Speaker 03:
But what you're asking for would create an unreasonable burden on customs.

[00:07:26] Speaker 03:
Because you're asking customs, even though all it has is a list of products that have been designated, and it was designated mega one that was approved, you're asking customs to somehow do its own actual comparison to ascertain whether there are any differences between the product being imported

[00:07:45] Speaker 03:
and the product which was approved, as opposed to simply relying on the designation either on the paperwork or on the product itself.

[00:07:53] Speaker 04:
That's exactly the point of the protest and the 30-day detention period that occurs after the goods come in.

[00:07:59] Speaker 04:
Remember, this merchandise was released to the importer.

[00:08:02] Speaker 04:
And it was only after customs issued the redelivery notice that the importer responded through its protest to say, this is an authorized product.

[00:08:11] Speaker 04:
Here are the license documents.

[00:08:13] Speaker 03:
Customs obligation to and shouldn't be to have to look at these two products beyond simply how they are designated to ascertain Whether they have any discrepant Characteristics and therefore aren't exactly the same and you seem to want to place that burden on customs Customs has a list of what has been approved by ul for designation and this what premium wasn't on the list because it doesn't have any mega one designation to it and

[00:08:42] Speaker 03:
And when Customs went to UL and said, hey, is this approved?

[00:08:46] Speaker 03:
Are we missing something?

[00:08:47] Speaker 03:
They said, no, it's not.

[00:08:49] Speaker 03:
So I just am baffled by how with those set of facts, you could think nonetheless something more or different was required of Customs.

[00:09:00] Speaker 04:
The point is that UL created the license with OJC.

[00:09:08] Speaker 03:
Emma Pierce states clearly that the labeling- Then maybe you have a clause of action against UL for the manner in which they responded, if you believe they were improper in their response.

[00:09:21] Speaker 03:
But I don't see how customs or the CIT erred, given that it

[00:09:27] Speaker 03:
did not have a designation, that the product did not have a mega one designation and you were on it, and UL responded that no, this is not authorized.

[00:09:35] Speaker 03:
So with those facts, I don't see why you're in this court arguing that customs error.

[00:09:39] Speaker 03:
If you want to argue that UL breached its license with you by stopping these goods at importation, then that's, you're free to do that, but that can't be part of this litigation.

[00:09:51] Speaker 04:
I disagree with you for the following reason.

[00:09:54] Speaker 04:
is that we're talking about two separate events.

[00:09:57] Speaker 04:
One is a claim that we have that ICCS or OJC may have against UL.

[00:10:02] Speaker 04:
But also, remember, the government sees the property and one part of the property and the other instances where they ordered it to be redelivered as the mark was counterfeit.

[00:10:11] Speaker 04:
And this is a trademark case, and the mark is not counterfeit because

[00:10:16] Speaker 04:
UL approved that product.

[00:10:19] Speaker 03:
So whether it's a certification mark case, to be precise.

[00:10:22] Speaker 04:
I beg your pardon?

[00:10:23] Speaker 03:
It's a certification mark case, to be precise.

[00:10:26] Speaker 04:
That's correct.

[00:10:27] Speaker 04:
And UL approved that certification for that mark.

[00:10:29] Speaker 04:
If you look at Emma Pierce's statement before.

[00:10:32] Speaker 03:
But yet they said they didn't.

[00:10:34] Speaker 03:
And there's nothing designating the product with the label of what was actually approved.

[00:10:40] Speaker 04:
But in fact, Emma Pierce says in her report on page 401,

[00:10:45] Speaker 04:
that the mark that appears on page 45 is accurate.

[00:10:52] Speaker 04:
She says that.

[00:10:53] Speaker 04:
This is one of the reasons why we were complaining about the lack of discovery, because on the one hand, she's saying that the label that appears in appendix 45 is approved.

[00:11:03] Speaker 03:
Not for the premium brand.

[00:11:05] Speaker 04:
But there's no brand listed.

[00:11:07] Speaker 04:
There's no brand listed here.

[00:11:10] Speaker 04:
This is a certification marked by UL.

[00:11:12] Speaker 04:
It doesn't say premium.

[00:11:13] Speaker 04:
It doesn't say mega.

[00:11:14] Speaker 04:
It doesn't say U.S.

[00:11:15] Speaker 04:
Butane.

[00:11:17] Speaker 04:
Those are designations by the multiple listee.

[00:11:20] Speaker 04:
It's not required to be there.

[00:11:22] Speaker 04:
This is what's required to be there.

[00:11:24] Speaker 04:
And UL confirmed that it's required to be there.

[00:11:26] Speaker 04:
You had an online.

[00:11:27] Speaker 04:
There's an online directory.

[00:11:29] Speaker 04:
Yeah, it's difficult to access it these days, I think, since this case came up.

[00:11:33] Speaker 00:
And the online directory didn't have the premium.

[00:11:36] Speaker 04:
Not at the time, but that's because it's the multiple listees designation.

[00:11:41] Speaker 04:
It's not the basic one.

[00:11:43] Speaker 00:
It wasn't on the multiple listees designation sheet either.

[00:11:52] Speaker 04:
But the point is that the authorization to use the mark comes from OJC's application and approval by UL.

[00:11:59] Speaker 04:
And that's there on the correlation sheet.

[00:12:03] Speaker 04:
It indicates it right there in the second column.

[00:12:05] Speaker 04:
There are four columns.

[00:12:06] Speaker 04:
The second column, it says that.

[00:12:08] Speaker 04:
Mega 1 is approved.

[00:12:10] Speaker 04:
And that's the same product, not the multiple list E designation.

[00:12:14] Speaker 00:
What the multiple list E designation was for US butane, right?

[00:12:20] Speaker 04:
That was at the time, yes.

[00:12:22] Speaker 00:
At the date of importation.

[00:12:23] Speaker 00:
And now it's US butane and premium.

[00:12:26] Speaker 00:
And others.

[00:12:28] Speaker 00:
Right, because UL finally got to review the premium.

[00:12:32] Speaker 04:
Actually, what happened was is that our client submitted an online application on day one, and the next day it was added.

[00:12:39] Speaker 04:
There's no additional certification.

[00:12:41] Speaker 04:
There's no additional testing.

[00:12:42] Speaker 04:
There's no nothing.

[00:12:43] Speaker 00:
They just simply added the names.

[00:12:44] Speaker 00:
Does that understand the trade court's position?

[00:12:48] Speaker 00:
They were saying, the trade court was saying that this is really more UL's domain that gets to decide which products, which brands get to have their UL certification mark.

[00:13:04] Speaker 00:
And so it's not up to the importer to decide.

[00:13:09] Speaker 00:
I want to use a different,

[00:13:15] Speaker 00:
brand name for this old product.

[00:13:19] Speaker 00:
And so now I'm just going to import it with a brand new brand name.

[00:13:23] Speaker 04:
Yeah, but I understand what the court was saying, but that's inaccurate because it only applies if there's a change in the product.

[00:13:31] Speaker 00:
There has to be.

[00:13:32] Speaker 00:
If you look at the language.

[00:13:33] Speaker 00:
Doesn't UL get to decide how to police?

[00:13:36] Speaker 00:
Well, let me finish.

[00:13:38] Speaker 00:
I'm sorry, sir.

[00:13:39] Speaker 00:
doesn't UL get the chance to police the usage of its own mark?

[00:13:45] Speaker 00:
I mean, if that's the concern here is that we can't, it can't tolerate allowing importers, licensees, whatever, from choosing to unilaterally elect to

[00:14:00] Speaker 00:
slap the UL mark on its products and decide for itself, oh, this is just a superficial difference between the previously approved usage of UL's mark by UL.

[00:14:15] Speaker 00:
And so therefore, I can just keep on going with using UL's mark on this additional line of products that I'm now importing.

[00:14:25] Speaker 04:
I think that's the concern.

[00:14:26] Speaker 04:
I understand what the court below said, and I understand your concern.

[00:14:31] Speaker 04:
But that language that the court cites only applies if there's an addition or deletion or revision to the product.

[00:14:38] Speaker 04:
And here, there's been no change to the product.

[00:14:40] Speaker 04:
That's why UL has an exception to its contract that says, if it's a change in the product designation,

[00:14:48] Speaker 04:
There's no requirement.

[00:14:49] Speaker 04:
In fact, you could import the product with no name on it.

[00:14:53] Speaker 04:
And it would be authorized.

[00:14:55] Speaker 04:
You don't have to have a name.

[00:14:57] Speaker 04:
How is Customs going to get through that?

[00:15:00] Speaker 04:
The point is they would go to UL and they would say, is this 47VN an authorized product?

[00:15:06] Speaker 04:
And they'd come back and say, yes, it's OJCs and it's for the Mega One.

[00:15:09] Speaker 04:
That's exactly the point, because the trademark rights come from the contract with OJC and with UL, not based on the multiple listees marketing tool.

[00:15:20] Speaker 04:
And that's really what this is about.

[00:15:22] Speaker 04:
When the court below, they mashed up all the terms.

[00:15:26] Speaker 04:
UL has specific terms for how to interpret their contracts.

[00:15:29] Speaker 04:
They have product, product designation, and multiple listees product designation.

[00:15:37] Speaker 02:
So is it correct that the only difference from what UL had seen before was putting premium on a container?

[00:15:44] Speaker 04:
That's correct.

[00:15:47] Speaker 04:
That's correct.

[00:15:47] Speaker 04:
That's the only difference.

[00:15:48] Speaker 04:
I've basically used up my time.

[00:15:50] Speaker 04:
I'd like to reserve a few minutes.

[00:15:52] Speaker 02:
We'll save you rebuttal.

[00:15:53] Speaker 02:
Thank you, Your Honor.

[00:16:04] Speaker 01:
Good morning, may it please the court.

[00:16:06] Speaker 01:
My name is Jamie Schuchman, and I represent the United States, the appellee in this case.

[00:16:12] Speaker 01:
This case is about a narrow issue, and that is whether ICCS was authorized to use UL's mark on the goods at issue at the time of importation.

[00:16:23] Speaker 01:
The trial court correctly interpreted the relevant.

[00:16:26] Speaker 02:
The UL's mark was on the container.

[00:16:30] Speaker 02:
The same question I just asked counsel.

[00:16:32] Speaker 02:
The only difference was that they also had the word premium on the container.

[00:16:38] Speaker 02:
Is that right?

[00:16:39] Speaker 01:
Your Honor, it's correct.

[00:16:40] Speaker 01:
I do.

[00:16:41] Speaker 01:
But what's critical here is that UL did not make the determination that the only difference was the existence of premium.

[00:16:49] Speaker 02:
But do they do that?

[00:16:50] Speaker 02:
The UL certifies the content.

[00:16:52] Speaker 02:
at least they say in their briefs, you could have all sorts of changes in the labeling of the container.

[00:16:59] Speaker 02:
You could have a different owner, you could have a different this or that as long as the content is as certified.

[00:17:06] Speaker 02:
I call something premium grade doesn't say that there's anything significant or doesn't.

[00:17:17] Speaker 01:
In this case it is not, Your Honor, but what's critical is that the contract states that UL must make that determination.

[00:17:24] Speaker 01:
Here it ultimately did.

[00:17:26] Speaker 01:
There wasn't a difference between the premium model and the underlying product, but in the next case there could be a difference.

[00:17:34] Speaker 01:
And what is important here is that that determination came after the time of importation.

[00:17:40] Speaker 01:
So at the time of importation,

[00:17:42] Speaker 01:
Customs didn't know.

[00:17:43] Speaker 01:
It wasn't clear if the premium brand was the same as the underlying basic product.

[00:17:49] Speaker 01:
And that is why the mark at issue was counterfeit.

[00:17:53] Speaker 02:
A counterfeit mark, which is defined in the Lanham Act, is a mark that is... How could it be counterfeit to put a premium to say this is quality stuff?

[00:18:02] Speaker 01:
It's counterfeit because it is spurious, which means that it is false.

[00:18:06] Speaker 01:
It falsely implies that UL has given its stamp of approval

[00:18:11] Speaker 01:
to the premium brand of product.

[00:18:13] Speaker 01:
UL ultimately did.

[00:18:14] Speaker 02:
Even though it's the same product, and it's a little bit of advertising puffery.

[00:18:21] Speaker 01:
Once again, the contracts state that it's for UL to determine what the premium product designation means.

[00:18:27] Speaker 00:
So the prior product that was expressly authorized by UL, what was the name of that product?

[00:18:36] Speaker 01:
What's important to understand here is that there is a product designation for the basic product.

[00:18:42] Speaker 01:
That is the product that was manufactured by OJC.

[00:18:45] Speaker 00:
So that's Mega One.

[00:18:46] Speaker 01:
That is Mega One.

[00:18:47] Speaker 01:
That is the product designation for the basic product.

[00:18:49] Speaker 00:
And there was something else called US Butane.

[00:18:51] Speaker 01:
Yes.

[00:18:52] Speaker 01:
So then there is a product designation for the importer.

[00:18:56] Speaker 01:
You can have different models that are used on the same basic product.

[00:19:02] Speaker 01:
So the basic product has never changed.

[00:19:04] Speaker 01:
We all agree to that.

[00:19:06] Speaker 01:
But the models change.

[00:19:08] Speaker 01:
And under the terms of the contract, ICCS has to make a request to UL each time it wants to use a different model.

[00:19:17] Speaker 01:
In this case, the goods at issue had a premium model on it.

[00:19:22] Speaker 00:
And when UL receives a request, it- I mean, when you say premium model, I mean, I'm just trying to understand what we're talking about.

[00:19:29] Speaker 00:
Customs?

[00:19:31] Speaker 00:
was used to seeing something that said U.S.

[00:19:34] Speaker 00:
butane.

[00:19:35] Speaker 00:
Correct.

[00:19:36] Speaker 00:
And then with this shipment of butane gas canisters, it didn't see U.S.

[00:19:45] Speaker 00:
butane there.

[00:19:46] Speaker 00:
It saw premium.

[00:19:49] Speaker 01:
Yes, Your Honor.

[00:19:50] Speaker 00:
Was that like a sticker that was slapped on the side of the canister or what was it that

[00:19:55] Speaker 00:
Customs sees, what does it look at when it sees U.S.

[00:19:58] Speaker 00:
Butane versus sees the word premium in this instance?

[00:20:03] Speaker 01:
It sees the imported product and along the side of the butane gas canister is a label that has the words premium and that was a label that Customs hadn't seen before.

[00:20:13] Speaker 00:
Did it say U.S.

[00:20:14] Speaker 00:
Butane premium?

[00:20:16] Speaker 01:
It did not.

[00:20:17] Speaker 01:
It said premium and then it had UL's certification mark, the UL in a circle.

[00:20:23] Speaker 00:
So the goods that swapped the words out exchanged US butane for premium?

[00:20:33] Speaker 01:
Yes.

[00:20:33] Speaker 01:
We now know that this was simply swapping the words out, that UL ultimately agreed that the premium model was the same basic product as the US butane model.

[00:20:46] Speaker 01:
But what is important in this case is we didn't know that at the time of importation,

[00:20:50] Speaker 01:
Customs didn't know that, and UL hadn't made that determination.

[00:20:54] Speaker 01:
So the use of the UL mark on the premium brands at the time of importation falsely implied that UL had already approved the use of its certification mark on the premium brands at issue.

[00:21:09] Speaker 01:
That false nature of the brand is what renders it spurious, and it's what renders it counterfeit under 15 USC 1127.

[00:21:21] Speaker 01:
And the relevant legal framework here authorizes customs to seize goods in order

[00:21:30] Speaker 01:
to enforce a trademark owner's rights, and that's exactly what it did in this case.

[00:21:34] Speaker 02:
Are importers told don't make any change on the outside of anything you import that UL has certified?

[00:21:44] Speaker 02:
I mean, this seems very mysterious here.

[00:21:47] Speaker 02:
There was an established business with people in charge of looking into the mechanics of coping with importation.

[00:21:58] Speaker 02:
and they decide that this is good, they're just going to have a little bit of advertising on the outside of their can.

[00:22:07] Speaker 02:
So they put on a premium sticker and all of a sudden they're counterfeiters and who knows what.

[00:22:12] Speaker 02:
It seems very mysterious and in terms of

[00:22:18] Speaker 02:
the obligation of customs in a circumstance such as this, as I suppose the question before us, but recalling?

[00:22:30] Speaker 02:
And I don't know what happens to the stuff that's been recalled.

[00:22:34] Speaker 02:
Is it re-exported or trashed or what?

[00:22:38] Speaker 01:
Well, in this case, the goods at issue were not seized because they had already entered the stream of commerce.

[00:22:42] Speaker 01:
So customs requested redelivery.

[00:22:45] Speaker 01:
And it was not able to seize the goods because they couldn't be re-delivered.

[00:22:49] Speaker 01:
But to return to Your Honor's previous point, UL doesn't consider the branding of these products merely puffery.

[00:22:59] Speaker 01:
It isn't mysterious how to handle this branding.

[00:23:01] Speaker 01:
It's laid out very clearly in the terms of the party's contracts.

[00:23:06] Speaker 01:
And that was what the trial court correctly analyzed here.

[00:23:10] Speaker 01:
The contracts require, and I'm referring to the service terms, which are

[00:23:15] Speaker 01:
appendix 264 that ICCS make a request in writing whenever it wants to add a different product designation in this case a different model to its multiple listing and ICCS has to have express authorization from UL every time it wants to use a different model.

[00:23:37] Speaker 01:
UL then is in the position of determining whether that model

[00:23:41] Speaker 03:
Comports with the basic product well, but your opponent's argument is this wasn't a different model This was the same model.

[00:23:50] Speaker 03:
Just had a different label on it.

[00:23:52] Speaker 03:
So is it?

[00:23:54] Speaker 03:
What what happens under those circumstances I?

[00:23:58] Speaker 01:
Disagree with that assertion ul in fact uses the word model we can look to the mark verification report Which is that appendix 401 where ul states that the premium brand was a different model?

[00:24:10] Speaker 01:
And that model was not approved at the time of importation.

[00:24:14] Speaker 01:
And if we look to the service terms.

[00:24:16] Speaker 03:
And so would your position be it's not for customs to try to go behind the mark holder to figure out whether or not it's really the same model with all the exact same features when it does have a different name branded on it, that customs is reasonable for customs to rely on UL answering those questions.

[00:24:37] Speaker 01:
Yes, your honor, it is reasonable, and customs here relied on the entry paperwork and the online certification directory.

[00:24:44] Speaker 01:
But it's also worth noting that customs gave UL not one, but two opportunities to confirm whether or not ICCS was authorized to use its mark on the goods at issue at the time of importation.

[00:24:57] Speaker 01:
The first time was after ICCS protested customs requests for redelivery.

[00:25:02] Speaker 01:
Prior to denying that protest,

[00:25:05] Speaker 01:
Customs reached out to the trademark owner as is contemplated in the relevant legal framework to ask whether or not the market issue with the mark at issue was counterfeit and at that time you all said Yes, it is and our authorization is not retroactive then once again in this litigation We actually asked the trial court for more time in answering ICCS's complaint

[00:25:31] Speaker 01:
to give ICCS another opportunity to go back to UL and ask if they would retroactively approve its use of UL's mark on the goods at issue at the time of importation.

[00:25:43] Speaker 01:
And UL said unequivocally it would not grant retroactive authorization.

[00:25:49] Speaker 01:
It has a strict zero tolerance policy to uphold its reputation and to uphold the integrity of its brand.

[00:25:58] Speaker 01:
And it stated on both occasions that

[00:26:00] Speaker 01:
It does not authorize any retroactive use of its mark.

[00:26:05] Speaker 01:
And that goes back to the point that I was making earlier.

[00:26:07] Speaker 01:
This is not merely puffery.

[00:26:10] Speaker 01:
This is not something that UL takes lightly.

[00:26:12] Speaker 01:
This is central to what UL does.

[00:26:15] Speaker 01:
When it puts its name, its certification mark on a product, that indicates that UL has certified and approved.

[00:26:23] Speaker 01:
But it was the same product.

[00:26:26] Speaker 02:
Yes.

[00:26:28] Speaker 02:
Isn't that significant?

[00:26:30] Speaker 02:
It was the same product.

[00:26:31] Speaker 02:
I could appreciate perhaps some agency saying, we're not going to retroactively authorize a different product.

[00:26:41] Speaker 02:
However different, it's the same product.

[00:26:43] Speaker 02:
All they did was put a sticker on the container.

[00:26:47] Speaker 01:
Your Honor is correct, but what is critical to this case is that we didn't know that.

[00:26:52] Speaker 01:
at the time of importation.

[00:26:54] Speaker 02:
They were told this is the same product.

[00:26:57] Speaker 02:
This is our standard butane disposable containers.

[00:27:02] Speaker 02:
We've just added premium.

[00:27:05] Speaker 01:
But the different marks is critical.

[00:27:08] Speaker 01:
That's critical to what UL does.

[00:27:10] Speaker 01:
That's why it maintains it online.

[00:27:12] Speaker 02:
Premium isn't a mark.

[00:27:13] Speaker 02:
It's a grade.

[00:27:14] Speaker 02:
It's not a mark.

[00:27:16] Speaker 01:
It's advertising.

[00:27:18] Speaker 01:
That mark represents more than advertising.

[00:27:21] Speaker 01:
Here, the use of UL's mark means that it has tested and certified the quality and accuracy of the product that is coming into the country.

[00:27:29] Speaker 01:
Here, butane gas canisters.

[00:27:32] Speaker 01:
And while it ultimately determined that the premium brand was consistent with the product that it had certified and tested,

[00:27:39] Speaker 01:
It hadn't made that determination at the time of importation.

[00:27:43] Speaker 02:
It's not a matter of consistent, it's the same.

[00:27:45] Speaker 02:
Everything that I could see in the briefs, there was the same product that they'd been importing all along.

[00:27:52] Speaker 01:
The parties agree that the underlying basic product was the same.

[00:27:59] Speaker 01:
But the entire purpose of the multiple listing agreement and the service terms that are at issue is to determine

[00:28:08] Speaker 01:
which brands, which models ICCS can use the UL certification mark on.

[00:28:13] Speaker 02:
It's not a different model.

[00:28:15] Speaker 02:
I don't have any problem with customs looking into something that seems to be different.

[00:28:21] Speaker 02:
But the penalty here imposed seems to me to be extraordinary.

[00:28:29] Speaker 01:
Your Honor, customs followed the legal requirements which here

[00:28:37] Speaker 01:
Ultimately, leave it to the trademark holder to determine the disposition of products that Customs determines bear a counterfeit mark.

[00:28:45] Speaker 01:
19 USC 1526E contemplates a multi-step process for determining what to do if Customs finds that goods bear a counterfeit mark.

[00:28:56] Speaker 01:
First, Customs seizes the good and then it reaches out to the trademark owner to see if the owner will consent to the release of these goods.

[00:29:05] Speaker 01:
That is the legal framework that we're operating in.

[00:29:08] Speaker 00:
I guess for the trade court to have gone the other way here, it would have had to essentially overturn what UL indicated when UL said that this is a false spurious usage of its own mark on these imported goods.

[00:29:28] Speaker 01:
Yes, Your Honor.

[00:29:29] Speaker 00:
And then, therefore, the trade court would have had to say, well, the trademark owner is telling me that it didn't authorize this usage of its trademark.

[00:29:40] Speaker 00:
But I disagree with the trademark owner's position on this alleged misuse of its own trademark.

[00:29:50] Speaker 01:
Yes, Your Honor.

[00:29:53] Speaker 01:
19 USC 1526e explicitly leaves it to the trademark owner to consent or not consent to whether goods bearing their mark come into the country.

[00:30:03] Speaker 01:
The trademark owner is the party that decides the scope of a licensee's right to use its marks.

[00:30:11] Speaker 01:
And here there is no dispute that at the time of importation, ICCS was not authorized to use UL's mark on the goods at issue.

[00:30:21] Speaker 01:
And as the trial court correctly

[00:30:23] Speaker 01:
determined while we can infer that in this case the premium brand was a superficial designation that the underlying product didn't differ, the contract terms that govern the relationship between ICCS and UL leave that determination to UL.

[00:30:41] Speaker 01:
And UL had not had the opportunity to make that determination prior to the time of importation.

[00:30:47] Speaker 01:
The use of their mark on the premium brands

[00:30:50] Speaker 01:
falsely implied that they had made that determination.

[00:30:53] Speaker 02:
Well, but all right, so let's look at the penalty.

[00:30:56] Speaker 02:
So they were asked to return the product, so they returned that which hadn't moved into commerce.

[00:31:02] Speaker 02:
Yes, Your Honor.

[00:31:03] Speaker 02:
And they were then charged a penalty for everything that they had legitimately moved out at the time that before customs changed its mind.

[00:31:15] Speaker 02:
Isn't that a curious, retroactive

[00:31:19] Speaker 02:
activity, that what they did, when even in accordance with what customs had said, nonetheless, in retrospect, now pay up.

[00:31:38] Speaker 01:
Your Honor, the damages in this case are because ICCS could not redeliver the goods at issue.

[00:31:44] Speaker 01:
And while it may be a harsh penalty,

[00:31:49] Speaker 01:
ICCS did not comply with the terms of the contract.

[00:31:53] Speaker 01:
UL stated very clearly in the contract that it must request in writing.

[00:31:58] Speaker 02:
But this activity took place before anybody had said that there was some flaw in the interaction with UL, whatever that was.

[00:32:09] Speaker 01:
Your Honor is correct, and that may go to whether or not there was harm in this case, but making that determination isn't necessary in order to determine that the goods at issue

[00:32:18] Speaker 01:
had a counterfeit mark at the time of importation.

[00:32:21] Speaker 02:
Nobody said it was found that it was counterfeit.

[00:32:27] Speaker 02:
They hadn't, as far as to try and understand UL's response, no, we're not going to test it again to make sure that it's the same product, which I assume they were told.

[00:32:40] Speaker 02:
I don't understand their reaction, but we have

[00:32:43] Speaker 02:
whatever they did.

[00:32:44] Speaker 02:
But now we look at customs response.

[00:32:49] Speaker 02:
And nobody ever said it was counterfeit.

[00:32:52] Speaker 02:
Nothing wrong.

[00:32:53] Speaker 02:
This is the same importer who had said he was importing.

[00:32:58] Speaker 02:
A premium brand was now added, I suppose, by sticker on the container.

[00:33:07] Speaker 02:
The counterfeit

[00:33:10] Speaker 02:
aspect would have been the use of UL, not premium.

[00:33:14] Speaker 02:
Isn't that right?

[00:33:15] Speaker 01:
The counterfeit aspect is that ICCS used UL's certification mark on a brand of product that it wasn't authorized to use it on.

[00:33:25] Speaker 03:
And to be clear about the facts, UL did call it a counterfeit mark, correct?

[00:33:30] Speaker 03:
Because they responded by saying, this is not authorized to have our mark.

[00:33:35] Speaker 03:
And that pretty much, I think, is the definition of what a counterfeit use would be.

[00:33:39] Speaker 01:
Exactly, Your Honor.

[00:33:40] Speaker 01:
UL said this at the time that Customs contacted them when it was looking into the protest prior to denying the protest.

[00:33:49] Speaker 01:
And UL said the exact same thing in this litigation

[00:33:52] Speaker 01:
when we gave ICCS time to once again reach out to UL and see if they would retroactively approve the use of its mark.

[00:34:02] Speaker 01:
It wouldn't be counterfeit for ICCS to use UL's certification mark on premium brand products today, but it was at the time of importation because it hadn't followed the steps for adding that brand to its multiple listing as is contemplated by the contracts at issue.

[00:34:21] Speaker 02:
OK.

[00:34:22] Speaker 02:
Anything else?

[00:34:24] Speaker 02:
Good.

[00:34:25] Speaker 02:
Thank you.

[00:34:26] Speaker 02:
Thank you, Your Honors.

[00:34:37] Speaker 02:
Mr. Poehler?

[00:34:39] Speaker 04:
Just a few points.

[00:34:40] Speaker 04:
First, I'd like to apologize for Judge Chen for interrupting you.

[00:34:43] Speaker 04:
It's not something I do every day.

[00:34:48] Speaker 04:
But the fact is, and I think

[00:34:50] Speaker 04:
Judge Newman, you focused in on this.

[00:34:53] Speaker 04:
The product remained the same.

[00:34:56] Speaker 04:
The label, the branding, is the only thing that's different.

[00:34:59] Speaker 04:
You will approve the product.

[00:35:01] Speaker 04:
In fact, the language that the government quoted right now says, use of names and marks.

[00:35:06] Speaker 04:
The master list services shall not result in the contracting party issuing a product safety certification or other authorization to use the mark apart from the basic product authorization.

[00:35:20] Speaker 04:
That's the same.

[00:35:21] Speaker 04:
It didn't change.

[00:35:23] Speaker 04:
It's still the Mega One brand.

[00:35:25] Speaker 04:
It's still the Mega One product that was approved, product designation, approved by UL back in 2001.

[00:35:31] Speaker 04:
Nothing changed.

[00:35:35] Speaker 04:
The government continues to state that these are different models.

[00:35:38] Speaker 04:
They're not different models.

[00:35:39] Speaker 04:
The word model doesn't even appear on the correlation sheet.

[00:35:43] Speaker 04:
There's no such designation as a model.

[00:35:46] Speaker 04:
There's a product designation by a multiple listee.

[00:35:49] Speaker 04:
There's a product designation by the original applicant.

[00:35:54] Speaker 04:
And then there's a general description of the product that's involved in the certification.

[00:36:01] Speaker 04:
The term model never shows up.

[00:36:03] Speaker 04:
The word brand never shows up.

[00:36:06] Speaker 04:
And there's nothing in the record to support the statement that this is a new model.

[00:36:11] Speaker 00:
Just to clarify, when

[00:36:13] Speaker 00:
In your prior imports, when they came in and customs looked at them, they would see the words U.S.

[00:36:21] Speaker 00:
Butane, right?

[00:36:24] Speaker 04:
I would be guessing to say that that was the name that was listed on the certification, on the original correlation sheet, yes.

[00:36:31] Speaker 00:
And then this time around, U.S.

[00:36:32] Speaker 00:
Butane wasn't there, but the word premium was there?

[00:36:35] Speaker 04:
Yeah, that's correct.

[00:36:37] Speaker 04:
That's the only difference.

[00:36:38] Speaker 04:
I think Judge Newman focused in on the problem.

[00:36:42] Speaker 00:
And are these words US-butane versus premium, are they used as basically the names of the product?

[00:36:49] Speaker 00:
No, it's advertising.

[00:36:51] Speaker 00:
Premium is an adjective.

[00:36:52] Speaker 00:
Well, maybe, but I'm just trying to understand the words mega one, US-butane, premium.

[00:36:59] Speaker 00:
How are these words being used?

[00:37:01] Speaker 00:
Are they being used as the names that you would refer to the underlying good?

[00:37:09] Speaker 00:
the underlying merchandise.

[00:37:11] Speaker 00:
Here's our Mega One canister.

[00:37:14] Speaker 00:
Here's our US Butane canister.

[00:37:16] Speaker 00:
Here's our premium canister.

[00:37:18] Speaker 04:
As far as I know, I don't think OJC ever used Mega One on its product.

[00:37:23] Speaker 04:
I don't know.

[00:37:24] Speaker 04:
But I think that originally, they indicated that they used US Butane.

[00:37:30] Speaker 04:
And as many of the people in the customs field know,

[00:37:33] Speaker 04:
If you put US on a product, it triggers different requirements under 19 USC 1304 that requires country of origin marking in the same size lettering.

[00:37:41] Speaker 04:
So there may have been a problem putting US on that canister.

[00:37:45] Speaker 04:
So to me, as a customs practitioner, I know that I would have recommended to the client to take the US off because it could trigger relabeling of every canister.

[00:37:55] Speaker 04:
So different problem.

[00:37:59] Speaker 04:
But there's something I'd like to point out.

[00:38:02] Speaker 04:
Council notes that ultimately, UL agreed that the product was authorized when they changed the correlation sheet the following day after the application was submitted.

[00:38:14] Speaker 03:
Oh, but they didn't agree it was authorized the day before.

[00:38:20] Speaker 04:
They added that brand to the multiple listies product designation the day after.

[00:38:27] Speaker 03:
They agreed it was authorized as of the day they approved it.

[00:38:31] Speaker 03:
But they explicitly indicated it was not authorized retroactively, which means they argued to Customs it was not authorized prior to their review.

[00:38:41] Speaker 04:
Well, Your Honor, I would disagree on the following basis.

[00:38:45] Speaker 04:
Two reasons.

[00:38:45] Speaker 04:
Number one, under the Customs Regulations 19 CFR 133, I think it's either 22 or 23, there's a savings provision that says after a redelivery or detention,

[00:38:58] Speaker 04:
If you obtain the approval of the trademark owner, then the goods are authorized to come in.

[00:39:04] Speaker 04:
UL added the name the day later, well within the 30-day period after the notice of redelivery was issued.

[00:39:11] Speaker 04:
So I would submit that that satisfies the requirement of 19 CFR 133, I wouldn't say 22 or 23.

[00:39:18] Speaker 03:
Is that cited in your briefs to us?

[00:39:22] Speaker 04:
I beg your pardon?

[00:39:23] Speaker 03:
Is that cited in your briefs?

[00:39:24] Speaker 04:
I don't think so.

[00:39:25] Speaker 03:
Yeah, I don't think that argument was made.

[00:39:26] Speaker 04:
But another point is that is, to paraphrase Judge Moore, trademark rights stem from use.

[00:39:35] Speaker 04:
By analogy, trademark rights here stem from the use by OJC of the UL logo on its original Mega One product.

[00:39:45] Speaker 04:
Nothing changed.

[00:39:47] Speaker 04:
And all the trademark rights, if you look at the actual labeling, it says UL listed.

[00:39:52] Speaker 04:
That's all it is, is the canister is UL listed.

[00:39:55] Speaker 04:
And it gives the control number that's supplied by UL.

[00:39:58] Speaker 04:
It's still the same.

[00:39:59] Speaker 04:
Nothing changed.

[00:40:03] Speaker 04:
To respond to what you said, Judge Newman, I don't think it's mysterious.

[00:40:09] Speaker 04:
UL wants to have a bright line rule.

[00:40:12] Speaker 04:
It's on a list or it's off the list.

[00:40:13] Speaker 04:
And that's all they want to look at.

[00:40:15] Speaker 04:
They don't want to look at any of the underlying terms and conditions

[00:40:19] Speaker 04:
But apparently Emma Pierce never looked at the underlying terms and conditions of her own contract, because as I just pointed out, OJC was authorized to put that mark on that product since 2001, and nothing changed.

[00:40:34] Speaker 04:
We request that the court reverse the decision of the court below.

[00:40:38] Speaker 04:
Thank you.

[00:40:39] Speaker 04:
Any other questions?

[00:40:41] Speaker 02:
No?

[00:40:42] Speaker 02:
OK.

[00:40:42] Speaker 02:
Thank you.

[00:40:42] Speaker 02:
Thank you both.

[00:40:43] Speaker 02:
The case is under submission.