[00:00:00] Speaker 03:
is Stratus Networks versus UBTA UBET Communications, 2019-13-51.

[00:00:48] Speaker 03:
Mr. Jones, we're ready when you are.

[00:01:19] Speaker 01:
Good morning, Your Honors.

[00:01:20] Speaker 01:
May it please the Court.

[00:01:23] Speaker 01:
One of the fundamental errors committed by the board below was the finding that there was likelihood of confusion between the Stratus Networks mark and UBTA's Strata Networks mark, based primarily on, in the board's words, that the marks differed by only a syllable.

[00:01:46] Speaker 01:
There are many examples by this board and the TTAB in which marks differing by a syllable, nevertheless, create very different commercial impressions.

[00:02:01] Speaker 01:
And this case is similar.

[00:02:04] Speaker 01:
These are two different words with different meanings and commercial impressions.

[00:02:11] Speaker 03:
Well, most of the word

[00:02:14] Speaker 03:
The words are the same, stratus and strata.

[00:02:20] Speaker 03:
The board found that they're similar in appearance, sound, connotation, and commercial impression.

[00:02:28] Speaker 03:
The surfaces are legally equivalent and move in the same trade channels.

[00:02:34] Speaker 03:
And third-party uses are different and weak.

[00:02:40] Speaker 03:
Those are a lot of factors.

[00:02:42] Speaker 03:
Sure.

[00:02:43] Speaker 03:
Facts.

[00:02:45] Speaker 01:
So first, Your Honor, I think the words are similar perhaps in appearance, but the connotations are not.

[00:02:54] Speaker 01:
They are different words with different meanings.

[00:02:56] Speaker 01:
Stratus is a type of cloud, and strata are layers of rocks in the ground.

[00:03:04] Speaker 03:
You mean clouds and rocks are worlds apart.

[00:03:06] Speaker 01:
Exactly, Your Honor.

[00:03:07] Speaker 01:
I mean, there couldn't be any more difference.

[00:03:09] Speaker 01:
Sky and Earth.

[00:03:10] Speaker 01:
And so the connotations, we just feel that is wrong.

[00:03:15] Speaker 01:
And so that's...

[00:03:19] Speaker 01:
That's to that point.

[00:03:20] Speaker 01:
And UBTA admits that they chose the Strata name to convey the rock-solid foundation of their business and their tie to technology.

[00:03:33] Speaker 01:
Stratus is, you know, and it's even, you know, gone further in the design element of the mark, which has clouds in it.

[00:03:43] Speaker 01:
So, again, we think that's a fundamental... Isn't the Strata also a substrate?

[00:03:50] Speaker 01:
Yes.

[00:03:51] Speaker 01:
I believe so.

[00:03:52] Speaker 01:
I'm having to do with rocks.

[00:03:55] Speaker 01:
A substrate.

[00:03:56] Speaker 01:
I would agree with that.

[00:03:58] Speaker 02:
And when you're dealing with clouds and you're dealing with a stratus, a particular type of cloud, aren't you talking about levels of the clouds?

[00:04:09] Speaker 01:
I think the key element is you're dealing with clouds versus rocks.

[00:04:13] Speaker 01:
As far as the commercial impression, I think ordinary consumers are going to say, look, one is dealing with clouds, one's dealing with rocks.

[00:04:23] Speaker 01:
And again, UBTA chose that name to convey rocks, rock solid, foundational, things of that nature.

[00:04:31] Speaker 03:
If stratus refers to clouds, what's the plural, strata?

[00:04:37] Speaker 03:
So it's the same word.

[00:04:39] Speaker 01:
I don't believe so, Your Honor.

[00:04:42] Speaker 01:
So the plural of stratum is the singular of strata, but I don't, honestly, I believe the stratus

[00:04:55] Speaker 01:
the plural of stratus would be the same.

[00:04:58] Speaker 01:
I don't think it has a different plural.

[00:04:59] Speaker 04:
I think the problem for me is even if I were agree with your argument as to meaning, similarity of the marks encapsulates sight, sound, and meaning.

[00:05:10] Speaker 04:
It's all three.

[00:05:11] Speaker 04:
And the marks look remarkably similar, and they sound remarkably similar.

[00:05:17] Speaker 04:
So even if you're right that they have a different meaning, this is a question of fact that I review for a substantial evidence standard.

[00:05:24] Speaker 04:
And I don't see how, honestly, given the similarity of the words themselves in both sight and sound, that I could overturn a fact finding as not supported by substantial evidence, because both of those things are substantial evidence.

[00:05:39] Speaker 04:
You're really focusing on a point that is actually very good for you, but it's not enough

[00:05:46] Speaker 04:
to overcome a substantial evidence burden when the other two portions of the similarity analysis still favor the board's decision?

[00:06:02] Speaker 01:
importance in this case to overturn substantial evidence because, again, with likelihood of confusion, we're not looking at whether a consumer is going to kind of momentarily mix up the words.

[00:06:15] Speaker 01:
So I meant to say strata, so I said strata.

[00:06:17] Speaker 01:
They're looking at is there actually going to be a likelihood of confusion as to source or origin for

[00:06:24] Speaker 01:
for these two words.

[00:06:26] Speaker 01:
And when you have different words with different commercial impressions, the board didn't make a finding as to what consumers... That's exactly it.

[00:06:35] Speaker 04:
The commercial impressions are based on three things.

[00:06:38] Speaker 04:
The visual similarity of the marks, the sound of the mark,

[00:06:44] Speaker 04:
the meaning and and you I'll let you argue however you want but I I'm having trouble imagining that I could overturn the board even if I agree with everything you just said.

[00:06:56] Speaker 02:
Council in your response to that also address the fact that both of the marks have the word networks under them so if there's any momentary

[00:07:07] Speaker 02:
confusion and then there's enlightenment somehow as to the dissimilarity of the march.

[00:07:13] Speaker 02:
Isn't the word networks that's under each of the words, isn't that meaningful as well?

[00:07:20] Speaker 01:
So I think that again we would say that the meaning aspect and then the fact that there was no finding about consumer impression about

[00:07:31] Speaker 01:
I think the meaning trumps the sight and sound aspect of the word in this.

[00:07:37] Speaker 01:
And that's what has happened in cases finding surf and surge are different, even though they're very close, obviously, in sight and meaning, or by and been.

[00:07:51] Speaker 01:
Those are different words.

[00:07:52] Speaker 01:
And as far as the networks element of the mark, those are generic elements and there's lots of cases saying that generic elements aren't given much weight in the analysis.

[00:08:06] Speaker 01:
Sure.

[00:08:07] Speaker 01:
So I'd say, again, there's cases that we cite that say that that's a pretty generic element in marks, too.

[00:08:13] Speaker 01:
I mean, lots of logos have circles in them.

[00:08:16] Speaker 03:
There are many... You've made some good arguments, and maybe the best that can be made, but your real problem is the standard of review.

[00:08:24] Speaker 03:
The board made fact findings and we owe deference to those fact findings.

[00:08:29] Speaker 03:
They found most of them are in favor of likelihood of confusion or neutral.

[00:08:35] Speaker 03:
And are there any that are in favor of no likelihood of confusion?

[00:08:40] Speaker 01:
Sure, so I think we could go to the customer sophistication point.

[00:08:50] Speaker 01:
Now, the board basically held that that was either neutral or slightly in our favor there.

[00:08:55] Speaker 01:
But there was a lot of evidence that showed that the customers are very sophisticated.

[00:09:02] Speaker 01:
In the case of Stratis, they're IT professionals.

[00:09:05] Speaker 01:
They contract for over $100,000 worth of services.

[00:09:08] Speaker 01:
It's a very long process.

[00:09:11] Speaker 02:
It's a very long, you know, sales process, which differs from UBTA, which is a lot more like a traditional... Did you submit evidence on both sides to show that what the amounts they charged for their services, correct?

[00:09:26] Speaker 02:
I mean, you do have something in there.

[00:09:28] Speaker 02:
I think it was $165,000.

[00:09:30] Speaker 02:
contract for that, but yet that was just a figure put out there, and there was no evidence to back that up or to show that the other companies are charging similar prices.

[00:09:42] Speaker 01:
No, well, there was a declaration, I believe, was from Stratis to support the $135,000, I think, number.

[00:09:50] Speaker 01:
So there was evidence to support that.

[00:09:53] Speaker 01:
And the other side did present evidence that there

[00:09:59] Speaker 01:
you know their customers you know provide i think a hundred dollars a month for uh... you know the consumer side and businesses thousand dollars a month uh... and we've we've shown cases that you know that support the idea that uh... customers exercise a great deal of care and deciding

[00:10:18] Speaker 01:
you know, who their internet provider is going to be, or things of that nature.

[00:10:23] Speaker 01:
The board didn't make any findings on the customer sophistication point.

[00:10:30] Speaker 01:
They basically just cited the fact that sophisticated customers aren't immune from confusion.

[00:10:37] Speaker 01:
And while that is true, there's lots of evidence here that was submitted.

[00:10:46] Speaker 01:
I think that helps to offset any other factor.

[00:10:51] Speaker 01:
There's many cases from this court that say that that factor can be dispositive.

[00:10:57] Speaker 01:
and and that makes sense and even if you have a momentary mix-up in the cement in the look and look of the names all things being equal if you're going to spend a hundred plus thousand dollars on something and even if you're a consumer that's going to you know pay a hundred or a thousand dollars a month on services that's going to undo a lot of of of potential confusion and in this case the book the board didn't make

[00:11:24] Speaker 01:
really any finding there.

[00:11:26] Speaker 01:
And so I think in the weighing of the factors, which this court does obviously de novo, I think that that would be a basis for overturning the board as well, just the fact that they did not properly consider that point.

[00:11:47] Speaker 01:
The board also erred, we believe, in

[00:11:55] Speaker 01:
in their method of analysis for the comparison of the goods and services.

[00:12:03] Speaker 01:
It was based primarily on a comparison of telephone services, cellular telephone services, telephone services in UBTA's registration with voice over internet protocol.

[00:12:18] Speaker 01:
pretty much all the other, there's many many services listed between both that weren't really addressed at all.

[00:12:26] Speaker 01:
And I think the fundamental error here was that there was a comparison between the goods themselves and not consumer perception of those goods.

[00:12:36] Speaker 01:
And so the board basically said okay voice over internet protocol is a voice service, telephone services are voice communications.

[00:12:46] Speaker 02:
devoted an entire page to its planning for consumer sophistication.

[00:12:52] Speaker 02:
It didn't just avoid it or give it a slight note.

[00:12:57] Speaker 02:
There's a full page of its reasoning.

[00:13:00] Speaker 01:
My understanding was that the customer sophistication, what was argued was that, or what the board provided was that customers aren't immune from confusion and that does not offset the other factors that they found.

[00:13:16] Speaker 01:
And again, they didn't actually address the evidence that was provided.

[00:13:22] Speaker 01:
And then we feel the weighing of that with the other factors we think that should be dispositive in this factor, the fact that the customer sophistication was as strong as it was in this case.

[00:13:34] Speaker 03:
Counsel, you're entering your rebuttal time.

[00:13:35] Speaker 03:
You can continue or save it.

[00:13:37] Speaker 01:
I'll save the rest of my time for rebuttal.

[00:13:39] Speaker 01:
Thank you, Your Honor.

[00:13:41] Speaker 03:
Mr. Barlow.

[00:13:48] Speaker 00:
Thank you, Your Honors, and may it please the Court, Matthew Barlow appearing on behalf of the Appellee.

[00:13:54] Speaker 00:
I think it's important to remember at the outset, counsel vaguely alluded to it, but our standard of view today is substantial evidence, meaning would a reasonable fact finder viewing the evidence before it come to this conclusion?

[00:14:11] Speaker 00:
And if it's reasonable to come to that conclusion, even if another conclusion could be reached, this Court must sustain the Board's order.

[00:14:18] Speaker 00:
And the Trademark Toronto Pill Board reached a correct conclusion that the Stratus Networks Mark, as described in its application, is likely to cause confusion with the Strata Networks Mark, as described in its registration, the comparison that must be made before the Trademark Toronto Pill Board.

[00:14:36] Speaker 00:
They're not concerned with real-world uses.

[00:14:38] Speaker 00:
They're concerned with what happens in the registration as compared to what's described in the application.

[00:14:43] Speaker 04:
The likelihood of confusion itself is a question of law.

[00:14:46] Speaker 04:
We reviewed de novo.

[00:14:47] Speaker 00:
Certainly.

[00:14:47] Speaker 04:
That's not a question of fact review.

[00:14:49] Speaker 00:
Right.

[00:14:49] Speaker 00:
The overall conclusion of how they weighed the factors all together is a question of law that's renewed de novo.

[00:14:58] Speaker 00:
But the individual analysis of those factors, if they're supported by substantial evidence, must be affirmed.

[00:15:05] Speaker 00:
If we look at the analysis the board made, they first looked at the similarity of the marks.

[00:15:14] Speaker 00:
In here, the board reasonably compared the marks and reasonably considered the dictionary definitions submitted by the parties, and then the board reasonably found that

[00:15:22] Speaker 00:
these marks are far more similar than they are dissimilar in sight, sound, and commercial impression, and that any difference in the meaning, quoting the board, does not significantly diminish the strong similarities in appearance and sound, with the result that the marks convey overall commercial impressions that are more similar than dissimilar.

[00:15:40] Speaker 04:
I understand completely your argument on similarity of the marks.

[00:15:45] Speaker 04:
Would you mind talking about the customer sophistication?

[00:15:48] Speaker 04:
Opposing counsel talked a bit about that, and the board didn't seem to make an express finding related to that.

[00:15:56] Speaker 00:
Right, so I'm happy to address that, Your Honor.

[00:16:00] Speaker 00:
The board held

[00:16:01] Speaker 00:
And I quote from them again, even if we accept in considering the fourth DuPont factor, applicants assertion that the involved services may be the subjects of sophisticated purchases, even careful purchases are likely to be confused by similar marks used in connection with services that are in part legally identical.

[00:16:19] Speaker 00:
That's the board's holding.

[00:16:21] Speaker 00:
Now, they reviewed the evidence submitted by the applicant regarding that, which was the naked testimony of a CEO accompanied by a spreadsheet that

[00:16:31] Speaker 00:
provided no information whatsoever, other than it had some numbers that were not tied to any purchase or service.

[00:16:40] Speaker 00:
And a controlling case that this court can follow is Cunningham v. Laser Golf Court, 222 F.

[00:16:45] Speaker 00:
3rd, 943, a 2000 Federal Circuit case.

[00:16:48] Speaker 00:
There, this court looked at a board decision.

[00:16:51] Speaker 00:
The board was confronted with the mark laser swing for golf training aids, as opposed to laser for golf clubs.

[00:17:00] Speaker 00:
And there, the board found that the marks are very similar, the services are identical, and then it didn't even address consumer sophistication.

[00:17:11] Speaker 00:
They just said it doesn't matter because the marks are so similar and the services are legally identical.

[00:17:17] Speaker 00:
And this court, reviewing that, said any error by the board not specifically considering the sophistication of golfers was harmless.

[00:17:24] Speaker 04:
But that was a specific case.

[00:17:27] Speaker 00:
Right.

[00:17:28] Speaker 04:
In light of the specific facts there.

[00:17:30] Speaker 04:
Exactly.

[00:17:31] Speaker 04:
The similarity in strength.

[00:17:32] Speaker 04:
I mean, that case does not stand for the proposition that any time the board finds similarity of marks and similarity of goods that they don't have to address sophistication or that it should be ignored in a way.

[00:17:46] Speaker 00:
And I think you're correct.

[00:17:48] Speaker 00:
And there in Cunningham, they determined that the alleged sophistication was outweighed because of the strong similarity of the marks and the legal identicality of the services.

[00:17:58] Speaker 04:
You're also talking about golf clubs.

[00:18:01] Speaker 04:
Their evidence alleges that the average consumer contract

[00:18:07] Speaker 04:
Will I breach confidentiality if I say the amount?

[00:18:10] Speaker 04:
I'll just say it's over $100,000.

[00:18:12] Speaker 04:
I know the amount, but I just don't want to tread on anything that might be confidential.

[00:18:16] Speaker 04:
So their average consumer contract is quite high.

[00:18:20] Speaker 04:
I mean, look, my husband buys golf clubs.

[00:18:22] Speaker 04:
He has not yet come home with a club like that.

[00:18:24] Speaker 04:
So maybe the sophistication of someone purchasing a $100,000 system is going to be quite a bit higher, and they're going to exercise more care in making sure they don't buy the wrong one accidentally than someone purchasing a golf club.

[00:18:42] Speaker 00:
That may be, Your Honor.

[00:18:44] Speaker 00:
But at the same time, when the cases are legion, that if the marks are highly similar and the services are identical,

[00:18:54] Speaker 00:
then customer sophistication is, if weighed, it's weighed less.

[00:18:59] Speaker 00:
And that's what this board did here.

[00:19:00] Speaker 00:
They said there's evidence, alleged evidence of actual, of consumer sophistication.

[00:19:07] Speaker 00:
And so we're going to weigh it neutral or maybe slightly in favor of UBTA, or of applicant, weighing slightly in favor of no likelihood of confusion.

[00:19:15] Speaker 00:
That's the one factor they have in their favor.

[00:19:18] Speaker 03:
Council, when I look at these mocks,

[00:19:20] Speaker 03:
They look different to me.

[00:19:22] Speaker 03:
Of course, I'm reviewing someone else's decision to which I owe deference, not making my own of an issue or decision.

[00:19:31] Speaker 03:
But they're in different colors.

[00:19:34] Speaker 03:
The UBTA mark is small capitals.

[00:19:42] Speaker 03:
The SNI is sort of stylized with a different color, with a big S.

[00:19:50] Speaker 00:
So, Your Honor, at the outset we can discount the color because the registered mark doesn't claim a particular color.

[00:20:00] Speaker 00:
The registered mark has no color claim and thus is capable of embodying any color whatsoever.

[00:20:06] Speaker 00:
And so the fact that one is blue is of no moment to this Court because the registration covers whatever color wants to be present.

[00:20:14] Speaker 00:
And if you look at those marks together, as the Board did,

[00:20:18] Speaker 00:
They found, and the substantial evidence supports, as they looked at these marks together, that both consist of a first term, strata versus stratus, that only differs by a syllable is even strong.

[00:20:32] Speaker 00:
One letter at the end of a syllable is the only difference there.

[00:20:36] Speaker 00:
Networks underneath the strata are stratus, which is exactly identical, and a circular globe off to the left of both of those words, with criss-crossing lines that

[00:20:47] Speaker 00:
The board referred to that as similar designs incorporating the letter S preceding the wording.

[00:20:52] Speaker 00:
They looked at those and found they were highly similar.

[00:20:55] Speaker 00:
then they'd look to the sound comparison.

[00:20:57] Speaker 00:
Stratus networks versus Strata networks.

[00:21:00] Speaker 00:
At the outset of this case, it was confusing even to us, and we represent one of the parties to keep track of.

[00:21:05] Speaker 04:
I understand that you're marching through this in a very methodical way.

[00:21:10] Speaker 04:
You're doing a great job in that regard.

[00:21:12] Speaker 04:
But I guess for me, I look at Stratus and Strata, and I look at these two marks personally, just my 10,000 foot level as an appellate court judge.

[00:21:22] Speaker 04:
I wouldn't be confused by them.

[00:21:25] Speaker 04:
Certainly not if I was buying a $100,000 product.

[00:21:28] Speaker 04:
Now, if I sent my kids to the supermarket to get something, for sure they would come home randomly with either one of these things.

[00:21:36] Speaker 04:
But I wouldn't send my kids to buy something that costs $100,000.

[00:21:39] Speaker 04:
So I do think the sophistication matters even when you have similar marks, which is what you have here.

[00:21:47] Speaker 04:
You don't have identical marks.

[00:21:48] Speaker 04:
You have similar marks.

[00:21:50] Speaker 00:
Well, and we agree, they're not identical.

[00:21:53] Speaker 00:
They are highly similar.

[00:21:54] Speaker 00:
They look very similar.

[00:21:55] Speaker 00:
They sound very similar.

[00:21:56] Speaker 00:
And oftentimes, the court will find that similarity of the marks and similarity of the services are the most important factors when weighing this.

[00:22:05] Speaker 04:
I understand that many times courts find that, but it definitely depends on the type of product at issue.

[00:22:11] Speaker 04:
I mean, if I'm buying a car, and it's the biggest purchase I've ever made in my life, and I'm putting a lot of money down on this car, I couldn't be a lot more careful than if I'm going to the store and picking up some Kool-Aid or something, right?

[00:22:27] Speaker 04:
I mean, of course, it's natural.

[00:22:28] Speaker 04:
The sophistication is going to matter more in cases where it's a much more expensive product that's being sold.

[00:22:38] Speaker 04:
when the consumers are much more sophisticated and careful in their purchasing.

[00:22:43] Speaker 04:
It's got to be a sliding scale.

[00:22:45] Speaker 00:
I think that's a fair point, but Council would have you say all the other factors that weigh in UBTA's favor and all of the other factors weigh in UBTA's favor are somehow all controverted by the fact that there's some alleged consumer sophistication, which is a naked allegation without any support.

[00:23:05] Speaker 04:
And the board then decided, well, even if we assume that's... That's the weighing part that we have to do.

[00:23:11] Speaker 00:
Correct.

[00:23:11] Speaker 04:
That's the legal part.

[00:23:12] Speaker 04:
See, that's why I don't buy into his argument that any of the fact findings the board made are wrong.

[00:23:18] Speaker 04:
I don't see it.

[00:23:19] Speaker 04:
I don't see a single wrong fact finding.

[00:23:21] Speaker 04:
But I do see some weighing that needs to take place.

[00:23:25] Speaker 04:
And I do wish the board had done a better job of articulating something more specific on the sophistication.

[00:23:31] Speaker 04:
Since they didn't, what I'm left with is really I need to accept what they argued about sophistication kind of as true and then resolve this.

[00:23:41] Speaker 04:
I don't really know how else to treat the board opinion since they didn't make a specific fact finding otherwise.

[00:23:46] Speaker 00:
Well, let's address that then, Your Honor.

[00:23:48] Speaker 00:
The case lies.

[00:23:50] Speaker 00:
really clear on this fact, that when you have a scale of consumer sophistication and UBGA put in evidence, and it's referenced in our brief, it was before the board, that their customers range from the cell phone purchaser

[00:24:05] Speaker 00:
that's spending a little bit of money, all the way to the same business customers, the client that applicant is referring to, that spend upwards of $10,000 or more per month for UVTA services.

[00:24:17] Speaker 00:
That when you're confronted with the sliding scale of purchasers, you have to take the least sophisticated purchaser of those services.

[00:24:25] Speaker 00:
You can't just automatically jump to the highest level and assume they're the only ones that are gonna encounter the mark.

[00:24:31] Speaker 04:
Why wouldn't you take the average level of sophistication?

[00:24:34] Speaker 04:
I'm not sure I understand why your logic about, I can't take the highest, I have to take the lowest makes sense.

[00:24:40] Speaker 00:
Well, that would be writing some new law that this court is not... Yeah, but there's nothing that supports what you're saying.

[00:24:49] Speaker 04:
There's no case that says you must accept the least sophisticated consumer.

[00:24:54] Speaker 00:
I believe that's incorrect, Your Honor.

[00:24:56] Speaker 00:
Well, I don't have one right in front of me today, but I'm happy to give you whatever references you would like.

[00:25:04] Speaker 00:
But here today, to get hung up on consumer sophistication in light of the substantial other evidence, in light of every other fact in weighing in favor of UBTA, would seem to contravene the prevailing case law and the standard of this Court.

[00:25:24] Speaker 00:
I want to address really quick the comparison of the services that counsel alluded to.

[00:25:31] Speaker 00:
And frankly, counsel is wrong in the fact that he's saying that the board only considered UBTA's telephone services in regards to the voice over IP services and ignored every other service listed in their application.

[00:25:47] Speaker 00:
The paragraph that he's referring to in the appendix in the board's order

[00:25:54] Speaker 00:
In there, the board looks at electronic and digital transmission of voice telecommunications, switched and dedicated voice communications, analog and digital voice communications, transmission of voice communications by various means, transmission of audio conference calls, and voice over IP services, and looks at all those services and said all these services provide the same function as telephone services.

[00:26:18] Speaker 00:
in the registrations, i.e.

[00:26:20] Speaker 00:
voice communication.

[00:26:21] Speaker 00:
Thus, as identified, these services, referring back to all the services, are legally equivalent to telephone services.

[00:26:29] Speaker 00:
The board looked at all the services and found that the majority of them all related to the services offered by UBTA.

[00:26:35] Speaker 00:
UBTA put in evidence in the declaration of Mr. Rasmussen that all but one of the

[00:26:41] Speaker 00:
one of the services listed in applicants for application were legally identical to UBTA services.

[00:26:49] Speaker 04:
Your argument, if I understand it right, is that there are overlapping services, right?

[00:26:54] Speaker 00:
Not just overlapping, but identical.

[00:26:58] Speaker 04:
Well, it's not a complete identity between the services that they seek to cover and the services that your registered mark covers.

[00:27:07] Speaker 00:
In the perspective of

[00:27:09] Speaker 00:
You have a broad category of services as opposed to a smaller subset of those same services.

[00:27:15] Speaker 00:
Telephone services is a very broad category of services.

[00:27:19] Speaker 00:
And all of these different communication services fall within the subset or are subsets to those telephone services.

[00:27:30] Speaker 00:
And let me circle back, Your Honor, to answer your question, Judge Moore.

[00:27:36] Speaker 00:
regarding if there's case law that supports our sophistication of the customer's analysis.

[00:27:42] Speaker 00:
Stone Lion Capital Partners is a federal circuit case.

[00:27:45] Speaker 00:
Also Ford Motor Co.

[00:27:46] Speaker 00:
v Summit Motor Products Inc., a third circuit case.

[00:27:50] Speaker 00:
Both of them state that when a

[00:27:52] Speaker 00:
when the relevant consumer sophistication varies, the relevant level of sophistication is that of the least sophisticated consumers for the services recited in the application of registration, not the actual consumers of the parties.

[00:28:07] Speaker 00:
Now here, and this is very important, there is no restriction whatsoever in the registrations, restricting it to classes of customers or to channels of trade.

[00:28:19] Speaker 00:
And there's no restriction whatsoever in the application.

[00:28:23] Speaker 00:
Because there's no restriction, the law is clear and that there is no then need to look at channels of trade or even the consumer sophistication, these classes of customers, because they're all presumed to be the same.

[00:28:38] Speaker 00:
Absent a restriction, they're all presumed to be the same.

[00:28:42] Speaker 00:
And for these reasons, Your Honours, we submit that the board's order should be affirmed.

[00:28:46] Speaker 00:
Thank you.

[00:28:47] Speaker 03:
Thank you, Council.

[00:28:49] Speaker 03:
Mr. Jones has some huddle time.

[00:28:58] Speaker 01:
Your Honor, related points.

[00:29:01] Speaker 01:
So the laser golf case, which was discussed about the customer sophistication, again, those were with identical golf clubs.

[00:29:14] Speaker 01:
They're both dealing with golf clubs.

[00:29:15] Speaker 01:
And Judge Moore alluded to it.

[00:29:19] Speaker 01:
These aren't identical services.

[00:29:21] Speaker 01:
And it was an error for the board to find as such.

[00:29:25] Speaker 03:
But they overlap, don't they?

[00:29:27] Speaker 01:
There may be some overlap, certainly, Your Honor.

[00:29:28] Speaker 01:
But that's a very important difference.

[00:29:31] Speaker 01:
Because if they're not identical, if the services or the goods are not identical, then you do not have the presumption that they travel in the same channels of trade, for example.

[00:29:41] Speaker 01:
And so that factor weighed against the board.

[00:29:43] Speaker 03:
But the board made a fact finding accordingly, didn't they?

[00:29:46] Speaker 01:
They made a fact finding that they were identical.

[00:29:48] Speaker 01:
And then the trade channels, they said, we presume they travel in the same channels of trade based on the fact that they're identical.

[00:29:56] Speaker 01:
If they're not identical, then that presumption should not apply.

[00:29:59] Speaker 04:
Some of them are identical.

[00:30:00] Speaker 04:
And when you're trying to access the likelihood of confusion, if you cover t-shirts, mugs, and posters, and they have a mark only to posters,

[00:30:14] Speaker 04:
It doesn't matter that you're seeking a mark on these other categories.

[00:30:18] Speaker 04:
If you're identical in one of the categories, then the board is meant to and should properly focus on whether there'd be a likelihood of confusion in selling the one thing in which you're identical on.

[00:30:31] Speaker 04:
And so I don't see a problem in the presumption of trade channels.

[00:30:35] Speaker 04:
If you overlap, that means for at least some of the goods and services for each claiming the mark applies to are identical.

[00:30:42] Speaker 01:
if they overlap in that they're related, but not identical.

[00:30:46] Speaker 01:
And they're not identical in this case.

[00:30:48] Speaker 01:
Voice over internet protocol is not identical to telephone services.

[00:30:51] Speaker 01:
The UBTA's own evidence submitted showed that they provided a dictionary definition where voice over internet protocol is a low cost alternative to telephone services.

[00:31:01] Speaker 01:
And there's no discussion at all about the consumer impression of it.

[00:31:05] Speaker 01:
The fundamental error here is that the board's comparing the services themselves.

[00:31:11] Speaker 01:
There's no, you're supposed to compare what a consumer is going to think.

[00:31:16] Speaker 01:
And a consumer, so evidence of that would be, hey, here's a bunch of businesses that provide VoIP services and traditional telephone services.

[00:31:26] Speaker 01:
Or here's registrations that encompass both things.

[00:31:30] Speaker 01:
That was not provided here.

[00:31:33] Speaker 01:
And so that was a fundamental error in that factor in which we don't think substantial evidence supports that.

[00:31:38] Speaker 01:
and then we would ask you to reverse the board.

[00:31:41] Speaker 01:
Thank you, Councilman.

[00:31:42] Speaker 03:
We'll take the case under advisement.