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

[00:00:08] Speaker 03:
May it please the Court.

[00:00:09] Speaker 03:
I am Marina Cunningham of McCormick, Balding, and Huber, representing appellant and applicant, Bed Elf LLC.

[00:00:18] Speaker 03:
It is our position that the Board made a number of errors in ruling for the opposer.

[00:00:24] Speaker 03:
The first error is that the Board never analyzed the goods

[00:00:29] Speaker 03:
in class nine that are listed on the base of the opposers registration for flex pulse with respect to applicants marked for flex.

[00:00:42] Speaker 03:
Moreover, the board relied on common law uses that were never pled in this case.

[00:00:52] Speaker 03:
Second, the board erred in inadequately considering weakness of the marks based on

[00:00:59] Speaker 03:
third-party registrations and uses that are nearly identical to those of the opposer.

[00:01:07] Speaker 03:
And third, the board essentially shifted the burden of proof to the applicant from the opposer since the opposer really presented no evidence of either actual confusion or likelihood of confusion based on their registrations.

[00:01:25] Speaker 03:
So first,

[00:01:26] Speaker 03:
The board never analyzed the goods for class nine for opposers mark flex plus versus applicants mark flex.

[00:01:36] Speaker 03:
Specifically flex pulse is registered for computer software for use in supply chain management.

[00:01:45] Speaker 03:
Whereas flex mark was applied for GPS apparatus.

[00:01:51] Speaker 03:
apparatus as in technical equipment or machinery used for a particular purpose.

[00:02:00] Speaker 03:
There's absolutely no overlap in the goods.

[00:02:05] Speaker 03:
And flex pulses registration simply does not cover flexes applied for goods.

[00:02:13] Speaker 00:
So you heard the discussion in the last case, right?

[00:02:16] Speaker 00:
I did.

[00:02:17] Speaker 00:
Is the record here the same in respect

[00:02:20] Speaker 00:
to the use of flex by the opposer in having occurred after identical marks or identical goods?

[00:02:32] Speaker 03:
I'm sorry, I didn't catch the last part.

[00:02:34] Speaker 00:
Is the record the same here with respect to the earlier registrations for the flex mark for identical goods?

[00:02:45] Speaker 03:
Yes, it is.

[00:02:45] Speaker 03:
It's very similar.

[00:02:48] Speaker 03:
We have very

[00:02:50] Speaker 03:
I'm not sure what registrations they have but they're in our case the board said that for nearly identical registrations Does not show any sign of weakness Conceptual weakness they say that on page It's page 29 of the board's opinion so eight zero zero twenty nine

[00:03:19] Speaker 03:
No evidence of any conceptual weakness.

[00:03:26] Speaker 02:
You talking about appendix twenty-nine?

[00:03:32] Speaker 02:
I'm sorry?

[00:03:33] Speaker 02:
Appendix page twenty-nine?

[00:03:35] Speaker 03:
Yeah, zero zero twenty-nine.

[00:03:37] Speaker 02:
Twenty-nine.

[00:03:41] Speaker 03:
Whereas, for example, UPS mark that well predates the opposer is specifically for computer software used for logistics management.

[00:03:53] Speaker 03:
So nearly identical goods for the flex mark.

[00:03:59] Speaker 03:
But in our case, the goods were never considered on the face of the registration.

[00:04:07] Speaker 03:
What the board did, they relied on a declaration from their former employee, Mr. Bjorn Kilburn, who stated that he remembers that in 2018, they manufactured a GPS apparatus for a third party company called Geotab.

[00:04:31] Speaker 03:
That was the board based its opinion on.

[00:04:34] Speaker 03:
First of all, it's common law rights that were never pled in this case, so should not have been admitted.

[00:04:41] Speaker 03:
Secondly, even if they did manufacture a GPS product for somebody else, it should be properly classified as services and certainly not goods.

[00:04:53] Speaker 03:
And they do have registration for services, manufacturing for others,

[00:04:58] Speaker 03:
and engineering services for others.

[00:05:00] Speaker 03:
That's properly classified.

[00:05:02] Speaker 03:
That does not entitle them.

[00:05:04] Speaker 03:
They would not be able to get a registration for apparatus when they're manufacturing it for a third party.

[00:05:11] Speaker 03:
Additionally, they did it in 2018.

[00:05:17] Speaker 03:
There's absolutely no evidence of continued use.

[00:05:23] Speaker 03:
They would not have been able to get a registration for it.

[00:05:26] Speaker 03:
and they certainly don't have a registration for it.

[00:05:30] Speaker 03:
The only goods they have is for Flex Plus, not Flex, and only for computer software for use in supply chain management.

[00:05:41] Speaker 03:
And the board never analyzed the goods in this case.

[00:05:47] Speaker 03:
They also ruled it to be a strong mark, which we don't believe, and they did not require any

[00:05:57] Speaker 03:
Substantial evidence to show likelihood of confusion.

[00:06:00] Speaker 03:
There's no actual confusion So it is our position that the board made number of errors But the biggest one is that they never analyzed the goods and they admitted Common law Use that was never played in this case and would not even entitled them to a registration the bottom line is

[00:06:27] Speaker 03:
They don't have a registration.

[00:06:29] Speaker 03:
They can't rely on common law use, because it was never pledged.

[00:06:35] Speaker 03:
And the mark is weak, because there are many uses and registrations that are identical to them, even though it may not rise to the level of 100 uses.

[00:06:51] Speaker 03:
But the board never examined the probative

[00:06:55] Speaker 03:
Quality of those registrations, which are identical to them which weakens their mark There are a lot of other areas that I could go on but You know board summarily

[00:07:19] Speaker 03:
dismissed many of our arguments.

[00:07:22] Speaker 01:
They didn't find the fact that... I'll ask the same question I did in the last case.

[00:07:26] Speaker 01:
If the board erred with respect to its analysis of channels of trade, wasn't that harmless there?

[00:07:34] Speaker 01:
They're completely different channels of trade.

[00:07:36] Speaker 01:
Well, it ultimately does review customers' services and goods.

[00:07:41] Speaker 03:
Completely different channels.

[00:07:44] Speaker 03:
The opposing markets and cells

[00:07:46] Speaker 03:
to huge corporations like Johnson & Johnson, Abbott, and Ford.

[00:07:52] Speaker 03:
They sell software for managing their supply chain management and logistics to those huge corporations.

[00:08:02] Speaker 01:
Well, the board held that the goods may be encountered by the same consumers, namely purchasers seeking computer software, mobile apps in the field, chain management, logistics, and it goes on and says,

[00:08:16] Speaker 01:
Why isn't that an inadequate review of the channels of trade?

[00:08:23] Speaker 03:
Well, again, we believe the board is incorrect.

[00:08:26] Speaker 03:
Our applicant's goods is a standalone piece of equipment that is specifically sold to GIS

[00:08:37] Speaker 03:
geographic information systems professionals.

[00:08:41] Speaker 03:
So there's a highly knowledgeable professionals who use it for GIS purposes, for surveyors.

[00:08:51] Speaker 03:
they're individuals or groups of individuals who make surveys of land.

[00:09:00] Speaker 03:
Whereas the opposers market, again, admitted by them, is Abbott, Johnson & Johnson, huge corporations who make, whose purchasing departments, purchasing agents, make

[00:09:16] Speaker 03:
Educated decision which system they purchased.

[00:09:20] Speaker 03:
There's a huge computer software systems that they purchase so absolutely different channels of trade very sophisticated even if it was closer that the buyers need the

[00:09:34] Speaker 02:
The market is composed of very sophisticated people.

[00:09:38] Speaker 02:
Very sophisticated.

[00:09:39] Speaker 02:
It wouldn't be like a normal consumer.

[00:09:41] Speaker 03:
There's no advertising.

[00:09:42] Speaker 03:
There's a completely different set of advertising, completely different channels of trade, completely different consumer, and a very sophisticated consumer.

[00:09:53] Speaker 01:
The board did make findings of fact with respect to the issues you're bringing up, correct?

[00:09:58] Speaker 03:
Yes.

[00:09:59] Speaker 01:
Okay.

[00:09:59] Speaker 01:
And this is substantial evidence.

[00:10:01] Speaker 01:
As long as we determine that those decisions are supported by substantial evidence, then you lose on this argument.

[00:10:11] Speaker 03:
Well, we did provide the evidence that who our consumers are, who we market to.

[00:10:18] Speaker 03:
And it's just different markets.

[00:10:22] Speaker 03:
And it's inexplicable why the board decided that they are the same.

[00:10:26] Speaker 03:
Look I think the question is well could the consumers of Opposers use a GPS device.

[00:10:43] Speaker 03:
Well, yeah GPS device or it was there everywhere But the bottom line is their registration does not they don't sell GPS apparatus And they don't have a registration for it

[00:10:56] Speaker 03:
And it's at different marks, different goods, and completely different channels of trade.

[00:11:07] Speaker 00:
OK, you want to save the rest of your time for the model?

[00:11:10] Speaker 00:
Yes, I reserve five minutes.

[00:11:17] Speaker 04:
Thank you.

[00:11:20] Speaker 04:
Good morning, and may it please the court?

[00:11:22] Speaker 04:
As this court has held, varying weights may be assigned to each DuPont factor, depending on the evidence presented in the record.

[00:11:30] Speaker 04:
And here, the board assessed the various factors based on which evidence was presented, finding that two of the larger factors, the similarity of the marks and the similarity of the goods and services, weighed in favor of confusion, and finding that the mark was not so conceptually weak that it merited being considered a weaker mark.

[00:11:49] Speaker 00:
So are we dealing with a key situation here where your client came along and was either the third or the fourth registrant for the flux mark for identical goods and now is trying to prevent a fourth or fifth registration for allegedly similar goods?

[00:12:13] Speaker 04:
No, Your Honor.

[00:12:14] Speaker 04:
Based on the record, so the records are actually not the same.

[00:12:17] Speaker 04:
The third-party use of registration evidence in the Bad Elf case is not the same evidence that is in the Spurion case.

[00:12:24] Speaker 04:
The Bad Elf case has significantly less evidence.

[00:12:28] Speaker 04:
And there are only four registrations of the four third-party registrations.

[00:12:33] Speaker 04:
Two of them are flexed, and only one of those flexed registrations came prior to our flex mark.

[00:12:39] Speaker 04:
And it was the USPS registration.

[00:12:43] Speaker 00:
flex marks right there for goods.

[00:12:45] Speaker 04:
if you include ours, are not for identical goods.

[00:12:48] Speaker 04:
They are for the flex one that was first in time, the UPS one, that is for logistics and management-related computer software goods.

[00:12:57] Speaker 04:
The second flex registration, which came after a mark, was registered in 2017, and that's for advanced transportation controller for managing a variety of intelligent transportation systems, including traffic signal control integration with connected or automated vehicles.

[00:13:15] Speaker 04:
So we chose not to oppose that mark in this case.

[00:13:18] Speaker 04:
But in this case, the applicant's mark, Bad Elf's mark, is flex.

[00:13:23] Speaker 04:
There are no additional words.

[00:13:25] Speaker 04:
We have two registrations for flex and flex stylize, as well as for flex pulse.

[00:13:33] Speaker 04:
Turning to the goods and services.

[00:13:37] Speaker 04:
There is evidence in the record in the form of admissions that FADELP's GPS apparatus and receivers are used for the same purpose and function as Flexus software and that they're used to track mobile assets and that they're used generally in the field of telematics.

[00:13:54] Speaker 00:
In the record... Is it appropriate to do that kind of analysis or do you have to compare the registration?

[00:14:06] Speaker 04:
You do have to compare the registrations and they applied for GPS apparatus and GPS receivers in class nine with no limitations to channels of trade, no limitations to their.

[00:14:16] Speaker 00:
And your registration was not for that, right?

[00:14:19] Speaker 04:
It is not for GPS apparatus, but we put in evidence in the record that there are coexisting third, there are third party registrations that cover their goods and our services under one mark.

[00:14:35] Speaker 04:
So that shows that there is a likely.

[00:14:39] Speaker 00:
Correct.

[00:14:41] Speaker 04:
And they also admitted on admissions 23, 25, 26 and 27 which are in the appendix 193 and 194.

[00:14:52] Speaker 04:
They admit to that they offer GPS positioning apparatus and GPS receivers that are used to record the location of assets which is related to

[00:15:03] Speaker 04:
what logistics services do.

[00:15:05] Speaker 04:
They admitted that their GPS apparatus and GPS receivers may be used by consumers in the field of supply chain management and logistics.

[00:15:13] Speaker 04:
They also admitted that their GPS apparatus and GPS receivers may be used by consumers in the field of tracking and telematics and they finally admitted that their consumers can use these to track mobile assets.

[00:15:27] Speaker 04:
These are all admissions they put into their record that their goods could be used for the same function as our services.

[00:15:34] Speaker 04:
And because their goods can be used for the same purpose, they're related.

[00:15:37] Speaker 04:
And with respect to the services, the class 39 GPS navigational services that the application covered, the board found that those are complementary to our flex goods and services because they can be used together.

[00:15:51] Speaker 04:
Turning to

[00:15:59] Speaker 04:
The commercial strength factor here the board found that while there was some commercial weakness that this wasn't enough to demonstrate that flexes marks are entitled to

[00:16:11] Speaker 04:
Weaker scope of protection and they found that the marks are still inherently distinctive all of flex's marks are registered on the principal register without any claim of acquired distinctiveness And there is nothing put forward in the evidence that flex was weak in terms of dictionary definition or anything with respect to conceptual weakness and

[00:16:32] Speaker 04:
And finally, the marks are identical with respect to the two flex registrations, and they're highly similar with respect to the flex and flex pulse registration.

[00:16:40] Speaker 04:
And with respect to the channels of trade, again, there are no limitations in the application.

[00:16:47] Speaker 04:
That would suggest that their goods and services are limited to, as opposing council has said, the GIS industry.

[00:16:56] Speaker 04:
There is nothing in the record to say that

[00:16:58] Speaker 04:
Their application was very broad that it could go to any other consumers.

[00:17:04] Speaker 04:
So simply not sufficient to say, well, they're being used this way.

[00:17:08] Speaker 04:
And they do have a registration for BadLFlex, which was not opposed.

[00:17:13] Speaker 04:
And that is the mark they're using in commerce.

[00:17:15] Speaker 04:
So to any extent that they're claiming that there wasn't any evidence of actual confusion, there can't be actual confusion because they're not using the mark flex on its own.

[00:17:23] Speaker 04:
They're using BadLFlex, which we did not oppose.

[00:17:31] Speaker 04:
And just to address the conversations that went on earlier with Jack Wolfskin and Juice Generation.

[00:17:38] Speaker 04:
In Jack Wolfskin, the market issue was a paw print.

[00:17:41] Speaker 04:
So they looked for evidence of similar paw prints.

[00:17:45] Speaker 04:
And there were 14 uses and registrations.

[00:17:47] Speaker 04:
And this court found that that was probative of weakness.

[00:17:50] Speaker 04:
With Juice Generation, there were 26 uses and registrations incorporating the three-word phrase, peace and love.

[00:17:56] Speaker 04:
And it was and juice in that case.

[00:17:58] Speaker 04:
and they found that was probative.

[00:18:00] Speaker 04:
There is a TTAB case that found 10 uses of the mark, smoking hot, coupled with the dictionary definition to be probative that the mark was weak.

[00:18:09] Speaker 04:
There's another TTAB case, TPI Holdings, that said 67 third party registrations and numerous uses of traitor dash other words, formative marks, was sufficient to show weakness.

[00:18:22] Speaker 04:
This court in IM symbolic found that where the conflicting marks are identical, which is the case here,

[00:18:28] Speaker 04:
Evidence of the coexistence of cited registrations of two marks that are identical, which is also the case here, was not sufficient to say that the mark is so weak that it is entitled to a weaker scope of protection.

[00:18:40] Speaker 04:
And finally, there's another case that found that four third-party registrations and no third-party uses was not enough.

[00:18:48] Speaker 04:
And the board did consider all of the third-party uses and registrations in the record and they did find that there was some commercial weakness just that didn't rise to the level to claim that the mark is not entitled to not allowing an identical mark to register on the register.

[00:19:09] Speaker 04:
That was actually a Federal Circuit case.

[00:19:11] Speaker 04:
I am symbolic.

[00:19:12] Speaker 04:
It was the Will.i.am case.

[00:19:15] Speaker 00:
Is that cited in your blade?

[00:19:17] Speaker 04:
I believe it might be.

[00:19:20] Speaker 04:
This is a USPQ citation.

[00:19:23] Speaker 04:
I'm not sure that's going to help you.

[00:19:28] Speaker 04:
I actually think the board decision might cite to it, too.

[00:19:44] Speaker 04:
No, they say to Jews.

[00:19:53] Speaker 04:
Sure, it's 120.

[00:19:56] Speaker 04:
It is 866 F dot 3D.

[00:20:02] Speaker 00:
I'm sorry, say that again.

[00:20:04] Speaker 04:
Sorry, 866 F dot 3D.

[00:20:07] Speaker 04:
1315.

[00:20:07] Speaker 00:
And they were identical model?

[00:20:14] Speaker 00:
They were identical marks.

[00:20:15] Speaker 00:
For identical goods?

[00:20:22] Speaker 04:
I think they were for the same mark for the same or similar goods.

[00:20:27] Speaker 04:
And they just said that fell short of ubiquitous.

[00:20:30] Speaker 04:
And this court found that it fell short of ubiquitous or considerable use.

[00:20:34] Speaker 04:
That was present in Jack Wolff's skin and juice generation.

[00:20:37] Speaker 00:
But the case is not cited in your brief.

[00:20:40] Speaker 00:
And you're going to rely on it in the following.

[00:20:41] Speaker 00:
You should tell closing counsel about that.

[00:20:44] Speaker 00:
I could see if it's in my brain.

[00:21:11] Speaker 04:
I did not say to that case in the brief, but I was just trying to show you ways, since we were discussing this earlier, about circumstances where this court and the TTAB has found that there was enough for ubiquitous use.

[00:21:27] Speaker 00:
OK, but the point still holds.

[00:21:29] Speaker 00:
We should tell opposing counsel that we have additional authority.

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

[00:21:42] Speaker 04:
And then with respect to the marks, they conceded that flex and flex were the same.

[00:21:49] Speaker 04:
And the board analyzed flex's flex pulse mark in its entirety and found that the dominant word was flex, which is the only word an applicant's mark in that.

[00:22:00] Speaker 04:
Due to the propensity of consumers to potentially shorten words from time to time, they could believe that there was an association with Bad Elf's flex mark with flex's flex pulse mark.

[00:22:13] Speaker 04:
If there are no further questions, I would just like to briefly conclude that substantial evidence supports the board's decision that confusion is likely, and this court should affirm.

[00:22:23] Speaker 00:
OK.

[00:22:25] Speaker 00:
Thank you, Ms.

[00:22:26] Speaker 00:
Fersky.

[00:22:27] Speaker 00:
Ms.

[00:22:27] Speaker 00:
Cunningham, you have two minutes.

[00:22:37] Speaker 00:
Are you familiar with the case that she just reported to?

[00:22:39] Speaker 03:
I'm sorry?

[00:22:40] Speaker 00:
Are you familiar with the case she just mentioned?

[00:22:43] Speaker 03:
no I'm not we cited to many melts it's a TTAB case that we cited in our brief that states that the probative value of other registration is critical and it depends on what kind of marks they are so it's not only just the quantitative number it's really qualitative issue and we cited to that case

[00:23:11] Speaker 03:
In terms of the flex versus flex pulse, the flex marks that they've asserted against us do not have any registration for goods.

[00:23:21] Speaker 03:
They're only for services.

[00:23:23] Speaker 03:
The only mark asserted against our goods is the flex pulse mark with the goods for computer software for use in supply chain management.

[00:23:34] Speaker 03:
Saying that the goods are the same and perform the same function is just, it's not feasible.

[00:23:43] Speaker 03:
And as far as the third party registrations that they have cited that include both GPS apparatus and the services that somewhat related to their services,

[00:23:56] Speaker 03:
That's a non-starter.

[00:23:57] Speaker 03:
There are many conglomerates that make a lot of different things.

[00:24:01] Speaker 03:
For example, General Electric used to make jet engines, stoves, refrigerators.

[00:24:09] Speaker 03:
Other companies don't.

[00:24:11] Speaker 03:
Crack & Whitney only makes jet engines.

[00:24:14] Speaker 03:
So they're different companies.

[00:24:15] Speaker 03:
Some companies make everything, and some companies don't.

[00:24:19] Speaker 03:
They don't make the product.

[00:24:23] Speaker 03:
They don't have a registration to the product.

[00:24:26] Speaker 03:
different channels of trade and they're not going to the same consumers so there should be so other than showing a third-party registrations that include both goods and services it in our opinion is not sufficient evidence to show likelihood of confusion between our mark flex and their flex pulse

[00:24:54] Speaker 03:
that is registered only for computer software for a very specific use for a very weak mark.

[00:25:12] Speaker 03:
I guess that's, I can go on but if you have any questions.

[00:25:19] Speaker 00:
Thank you.

[00:25:20] Speaker 00:
Thank you very much.