[00:00:00] Speaker 04:
We have six cases on the calendar this morning.

[00:00:04] Speaker 04:
Two of them are being submitted on the brief, so therefore will not be argued.

[00:00:09] Speaker 04:
The first is N. Ray Eric Coletti, 2023, 1539, Mr. Silmar.

[00:00:18] Speaker 02:
May it please the court, John Sommer for Appellant Eric Bernetti.

[00:00:22] Speaker 02:
It's been a while since this case was briefed, so I have a few points I'd like to make initially.

[00:00:27] Speaker 02:
First, I think this would be a good case to instruct the bar and the government not to be citing the Trademark Manual of Examining Procedure for Substantive Law.

[00:00:37] Speaker 02:
And I'll just point out that then-Circuit Judge Gorsuch discussed that in Ellen Canto versus Hatch Chile, 825, Fed 3rd, 1161.

[00:00:48] Speaker 02:
Second, there's a related case that makes almost the exact same arguments in the briefs that has some interesting differences.

[00:00:56] Speaker 02:
In Ray Federal Bar Foundation, the case number is 241071.

[00:01:04] Speaker 02:
Third, as of today, there are 2,270 registrations that include the F word, but of course not Eric Brunetti.

[00:01:14] Speaker 01:
Okay, but you argue there's no such thing as a failure to function rejection, and you argue that that's not what they did here.

[00:01:21] Speaker 01:
And it seems to me that we have a couple of cases in our court, and the Supreme Court in the Qualitex case recognized there is a such a thing as a failure to function rejection, and that's what they purported to do here.

[00:01:37] Speaker 01:
What's the problem?

[00:01:39] Speaker 02:
Well, and by the way, I'd like to sort of deal, well, I guess a good point is this.

[00:01:44] Speaker 02:
I'd like to approach this from a presumption point of view.

[00:01:47] Speaker 02:
The Congress enacted what presumptions are in the landmark and what aren't.

[00:01:51] Speaker 02:
Here, the trademark office has created two presumptions.

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First, if there's any use

[00:01:56] Speaker 02:
Anywhere on unrelated goods and services, it doesn't have to even be that.

[00:02:00] Speaker 02:
It can be a tweet, a blog.

[00:02:02] Speaker 02:
It is widely used.

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The second presumption is if it's widely used, the public cannot perceive it as a trademark.

[00:02:10] Speaker 02:
So if you look at the decision below, and by the way, those presumptions aren't, the only way to overcome that is if you're famous, as in the in Ray Lizo case,

[00:02:23] Speaker 02:
Or if you have a survey.

[00:02:24] Speaker 02:
And there's a Law Review article in Trademark Reporter in 2024, 114 Trademark Reporter 649, called Phantom Rules.

[00:02:34] Speaker 02:
And so the only way if this is raised, because it's always going to apply if it's raised, is if you spend $100,000.

[00:02:40] Speaker 02:
You didn't have to spend $100,000 to get a MARC register.

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And in the case of an intent-to-use application as it is, you can't file a survey at all because you have no use.

[00:02:51] Speaker 02:
So the presumption is irrefutable.

[00:02:53] Speaker 02:
So the trademark has created presumption.

[00:02:55] Speaker 02:
Because what it's gone from is that the informational refusal originally was general information about the goods or services.

[00:03:05] Speaker 02:
take twice a day, I drive safely, which has gone to then a common phrase used in advertising, which now has gone to the consumer is accustomed to seeing used in everyday speech in a variety of sources, which is a completely new thing.

[00:03:23] Speaker 02:
But this is being refused not because it's informational, because everyone agrees it's not informational as to the goods and services applied for.

[00:03:30] Speaker 02:
It's being refused because it's an informational sentiment.

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It's a feeling.

[00:03:36] Speaker 02:
And there's no law I've ever heard of that says that.

[00:03:39] Speaker 02:
Now, I grant that you can always, you know, I think Professor Roberts' article is very good.

[00:03:44] Speaker 02:
You know, you have the spectrum distinctiveness, and you have the extent you're using as trademark heels.

[00:03:51] Speaker 02:
And if it's not being used as a trademark.

[00:03:53] Speaker 02:
But see, here, the trademark office, that's the critical invention in 2017.

[00:03:58] Speaker 02:
Before that, you could file a new specimen.

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But in 2017, they say, once we decide that this applies, you can't file a new specimen.

[00:04:08] Speaker 02:
And then I guess the final initial point I'd just like to make is about evidence waivers.

[00:04:13] Speaker 03:
They're arguing, does the, yeah?

[00:04:16] Speaker 03:
Under 45 of the Trademark Act,

[00:04:20] Speaker 03:
Is the evidence required to show an intent to use different from a trademark that you're – that's already in use?

[00:04:33] Speaker 03:
We're using an application for use, correct?

[00:04:36] Speaker 02:
Yeah.

[00:04:37] Speaker 02:
Well, it's an intent-to-use application.

[00:04:39] Speaker 02:
Okay.

[00:04:40] Speaker 02:
So we don't have – but we do have, actually, in this case, unlike many intent-to-use applications – This is – Brunetti actually is using FUCT.

[00:04:49] Speaker 02:
And so he's now filing for an intent to use for FUCK.

[00:04:53] Speaker 02:
And, you know, the whole reason we got up to the Supreme Court in the first place is the Trademark Office says they're equivalent.

[00:04:59] Speaker 02:
And now they say they're not equivalent because the Supreme Court says we have the law you want.

[00:05:03] Speaker 03:
But the Trademark Office... This is, we're talking about an application for intent to use in your case, correct?

[00:05:11] Speaker 03:
Yes.

[00:05:12] Speaker 03:
Is evidentiary standard different?

[00:05:15] Speaker 03:
for an application for intent to use than, say, an application for a trade for a product that's used already in use?

[00:05:23] Speaker 02:
No, no.

[00:05:24] Speaker 02:
Well, there's no difference.

[00:05:26] Speaker 02:
I mean, yes.

[00:05:27] Speaker 02:
He only has to say that he has a good faith in intent to use.

[00:05:30] Speaker 02:
The answer is no, if I get the question correctly.

[00:05:34] Speaker 02:
For intent to use, you don't have to have any evidence to use.

[00:05:38] Speaker 02:
But in this case, he actually has evidence of how he will be using it.

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which is normally just the intent to use.

[00:05:45] Speaker 03:
But is there a different consumer perception application?

[00:05:50] Speaker 02:
No.

[00:05:51] Speaker 02:
No, the test should be the same.

[00:05:53] Speaker 04:
Well, it can't be consumer perception if it hasn't been used yet.

[00:05:59] Speaker 02:
Well, that's my whole point, is the trademark has created these two presumptions, and for an intent to use application, it's irreparable.

[00:06:09] Speaker 02:
And my point, I think, is that almost all trademarks, if the test is what the PTO says it is, virtually all trademarks are refused.

[00:06:18] Speaker 02:
Because if you do a Google search, it would be very difficult to find any word that's not used at least four times, or even a dozen times.

[00:06:29] Speaker 02:
And so all trademark applications, almost, will be refused if the Trademark Office decides to raise it.

[00:06:36] Speaker 02:
And of course, that's sort of a subsidiary problem.

[00:06:38] Speaker 02:
Sometimes they raise it, and sometimes they don't.

[00:06:40] Speaker 02:
They only seem to want to raise it if it's something that they refused, that the Supreme Court told them they couldn't refuse.

[00:06:46] Speaker 02:
But if virtually all trademarks are refused,

[00:06:49] Speaker 02:
then that gets back to Sir Karl Popper.

[00:06:52] Speaker 02:
If it's always true, then it can't ever be disproven.

[00:06:56] Speaker 02:
Then it can't be a valid doctrine.

[00:06:59] Speaker 02:
But this is a completely new doctrine that this is where Anna Long-Gilson's article is so useful.

[00:07:07] Speaker 02:
She says that this trademark office has completely lost

[00:07:11] Speaker 02:
context because up until before 2017, a trademark was generic or refused based on the goods and services applied for.

[00:07:21] Speaker 02:
The theory starting in 2017 is that we can find poor uses anywhere in a blog, a tweet, then it can be refused.

[00:07:29] Speaker 02:
And see, the thing that I think the trademark office has forgotten is

[00:07:33] Speaker 02:
This doctrine now can be used in a party's proceedings.

[00:07:37] Speaker 02:
So if you want to cancel that registration, I want to cancel Apple.

[00:07:40] Speaker 02:
I show Apple is widely used.

[00:07:42] Speaker 02:
It is widely used.

[00:07:43] Speaker 02:
And so therefore, this doctrine applies.

[00:07:47] Speaker 02:
So I think I've said what I want to say.

[00:07:50] Speaker 02:
I've asked the government.

[00:07:52] Speaker 02:
I've given the government some questions I'd like them to answer.

[00:07:55] Speaker 02:
And I'd be happy to reserve my time until we get some answers.

[00:07:59] Speaker 04:
We will serve it for you.

[00:08:00] Speaker 02:
Thank you.

[00:08:07] Speaker 04:
Mr. Hinshawood.

[00:08:09] Speaker 00:
Good morning, Your Honors.

[00:08:09] Speaker 00:
And may it please the court, Brad Hinshawood.

[00:08:13] Speaker 00:
A proposed mark is only registrable if it serves to identify and distinguish the source of goods or services.

[00:08:17] Speaker 01:
Let me tell you what my problem is.

[00:08:19] Speaker 01:
I mean, yes, failure to function is a ground for rejection.

[00:08:22] Speaker 01:
And we've established that in a couple of cases.

[00:08:25] Speaker 01:
The Supreme Court recognized it in Qualitex.

[00:08:28] Speaker 01:
What I'm concerned about is I'm not sure that I understand what the PTO's scope determination is for failure to function.

[00:08:41] Speaker 01:
Yes, it includes, you know, commonly used phrases, things like that, but what's the rule?

[00:08:48] Speaker 01:
I mean, I find it difficult to parse the decision here, and I don't think

[00:08:55] Speaker 01:
that it's really an answer to say, oh, well, each mark is judged on its own merits and we don't look to establish consistency in PTO practice.

[00:09:07] Speaker 01:
But what is the rule that's being applied here for rejecting this application?

[00:09:13] Speaker 00:
This is fundamentally about the basic question of whether or not when consumers perceive this proposed mark in the marketplace They will think or it could be you know could be able to think.

[00:09:24] Speaker 00:
Oh, that's a Brunetti, right?

[00:09:26] Speaker 01:
It's identifying the source of good What about things like Apple and Shell what you know does seem to have the same problem

[00:09:37] Speaker 00:
No, Your Honor, for a couple of reasons.

[00:09:39] Speaker 00:
One is the board here looks not only at the fact that the term is widely used, but there's much more texture to that than just saying the word is frequently used, which I think is how my colleague understands it.

[00:09:51] Speaker 00:
It's not just the word is frequently used.

[00:09:52] Speaker 00:
It's that it's frequently used to convey a particular message to people perceiving it, people viewing it.

[00:10:00] Speaker 00:
That's why it's on show.

[00:10:01] Speaker 01:
Why is this different from apple and shell?

[00:10:05] Speaker 00:
Those are entirely arbitrary as to the particular goods for which they are registered here the marketplace as the board explained is full of goods of the same type and related types to the goods that Brunetti has applied for here that have this proposed mark displayed as a As to convey a message right so it's part of its prior use is the thing that distinguishes this I

[00:10:28] Speaker 00:
It's not prior use.

[00:10:29] Speaker 00:
Again, it's an inquiry into consumer perception.

[00:10:31] Speaker 00:
How will consumers understand this proposed mark?

[00:10:34] Speaker 01:
I don't understand what you're saying.

[00:10:36] Speaker 01:
What's the difference between this mark and Shell and Apple, for example?

[00:10:42] Speaker 01:
What's the difference?

[00:10:44] Speaker 01:
Yes, maybe those marks have now acquired secondary meaning.

[00:10:48] Speaker 01:
Everybody knows that Apple and Shell are trademarks.

[00:10:51] Speaker 01:
That's fine.

[00:10:52] Speaker 01:
But at the inception, when the mark is being registered, there's no, wouldn't presumably be any consumer perception.

[00:11:01] Speaker 01:
Why are those different from this one?

[00:11:04] Speaker 01:
I'm having trouble here.

[00:11:06] Speaker 00:
When someone before, when Apple was initially trademarked,

[00:11:09] Speaker 00:
saw a picture of an apple with a bite out of it on the side of a computer.

[00:11:13] Speaker 00:
I don't think anyone thought, or would have thought, could have reasonably been thought to understand that was conveying some sort of message about apples, about diet, about food, about anything.

[00:11:23] Speaker 00:
It's in that sense not conveying any message at all except

[00:11:28] Speaker 00:
to function as, you know, identifying, okay, well that must be the logo of the company that made that computer, that made that product.

[00:11:34] Speaker 01:
So the idea was that it was being used in a way that the public perceived it as a trademark already?

[00:11:40] Speaker 00:
Not just used, but also, again, that there's not this sort of competing universe of things in the same classes of goods, in the same types of goods, conveying a message about, you know,

[00:11:54] Speaker 00:
the way this particular... I don't understand what you're saying.

[00:11:58] Speaker 01:
I really don't.

[00:12:00] Speaker 03:
So how can Brunetti show that the consumer would proceed when there's an intent to use the application?

[00:12:12] Speaker 00:
No, I think the standard is the same as across all applications in so far as what you have to show is that consumers would or are capable of perceiving the market source identifying.

[00:12:22] Speaker 00:
And in this particular instance, it may be more difficult to do.

[00:12:25] Speaker 03:
In the evidence that's shown, how do you show what a consumer would perceive if the actual goods not out in the marketplace?

[00:12:33] Speaker 00:
Well, yeah, I think you don't have the same concerns often where there's not sort of a marketplace that's awash in goods.

[00:12:41] Speaker 00:
in exactly the same classes or related classes, related products.

[00:12:44] Speaker 00:
I would think the opposite.

[00:12:44] Speaker 03:
It's often the case that a trademark that's being considered or a mark that's being considered can exist in a variety of different classifications, like here, handbags, shoes, coats, jewelry, et cetera.

[00:13:01] Speaker 03:
So what type of evidence is Mr. Brunetti supposed to present?

[00:13:04] Speaker 03:
to show intent to use.

[00:13:07] Speaker 03:
How do you show consumer perception at that point?

[00:13:10] Speaker 00:
Look, I think it would probably be difficult, given the nature of this particular proposed mark in the classes for which he has applied for it, to demonstrate that consumers are going to understand it as a trade mark.

[00:13:24] Speaker 04:
not that this word has been out there in association with all sorts of emotions and uses.

[00:13:36] Speaker 04:
In that respect, it has not been associated with particular goods, and therefore the intent to use now cannot be either, because the word has already been out there.

[00:13:51] Speaker 00:
I think that's the basic intuition.

[00:13:53] Speaker 00:
Of course, the more that a particular proposed mark or word or phrase is used.

[00:13:58] Speaker 01:
So prior use for the same kind of goods makes it a failure to function?

[00:14:02] Speaker 00:
It's certainly focused on the particular goods in the application.

[00:14:05] Speaker 00:
Absolutely.

[00:14:06] Speaker 01:
I don't want to... I think my colleague is... If you answer my question yes or no, is it because of the prior use for the same kind of goods that makes it a failure to function as a trademark?

[00:14:17] Speaker 00:
Yeah, I don't want to endorse necessarily prior use as a technical term, but certainly the fact that it's widespread, and the board here would get too... What do you mean not a technical term?

[00:14:26] Speaker 01:
I'm asking you a simple question.

[00:14:27] Speaker 01:
What's the answer to it?

[00:14:30] Speaker 01:
Is it because there's prior use for the same class of goods that it doesn't function?

[00:14:34] Speaker 01:
as a trademark.

[00:14:35] Speaker 01:
Is that the key here?

[00:14:37] Speaker 01:
That's certainly relevant.

[00:14:38] Speaker 00:
Yes.

[00:14:39] Speaker 00:
I mean, that's one part of the evidence that the board looked at.

[00:14:41] Speaker 00:
What's the other part?

[00:14:45] Speaker 00:
So the board broke its analysis into two parts.

[00:14:47] Speaker 00:
It said, look, the exam attorney here has amassed considerable evidence

[00:14:50] Speaker 00:
that consumers understand this proposed mark when they see it as sort of all-purpose intensifier.

[00:14:56] Speaker 00:
They see it in a variety of contexts.

[00:14:58] Speaker 00:
They use it in a variety of ways.

[00:15:00] Speaker 00:
And they're going to understand it as conveying a message when they normally see it.

[00:15:03] Speaker 00:
And then second, it looked at the record evidence the examining attorney had amassed to show that, in fact, there is extensive use of this exact proposed mark on goods

[00:15:14] Speaker 00:
identical to or similar to the goods in these applications, not some other, you know, goods that have nothing to do with what's going on here, but in this specific context, the market is full of these and, you know, that is more than sufficient as a matter of substantial evidence review to demonstrate that there was a

[00:15:31] Speaker 01:
It's not a question of substantial.

[00:15:33] Speaker 01:
It's a question of whether there's a coherent definition of failure to function.

[00:15:38] Speaker 01:
And I understand what you're saying, that there's evidence of the same class of goods bought against Mark previously and that that suggests a failure to function as a treatment.

[00:15:50] Speaker 01:
I understand that argument, but I don't understand the rest of what you're saying.

[00:15:55] Speaker 01:
As to somehow this word is different from shell or apple if you if you take away the prior use situation What's what counter again?

[00:16:05] Speaker 01:
I think it goes to the types of goods for which it's being used and the types of messages that are being made you're trying to mush this up so that There's no coherent rule

[00:16:16] Speaker 01:
Part of our job is to apply coherent rules to similar facts.

[00:16:21] Speaker 01:
And you know, that's a basic part of administrative law, which is binding on the PTO as well as every other agency.

[00:16:29] Speaker 01:
You have to have a coherent articulation of what the rule is so we can understand how to apply it in one case after another.

[00:16:39] Speaker 01:
And I'm trying to pin you down as to what it is that the PTO is doing here.

[00:16:44] Speaker 01:
I understand the prior use argument.

[00:16:47] Speaker 01:
I understand that.

[00:16:47] Speaker 01:
That makes sense.

[00:16:48] Speaker 01:
I just don't understand what else.

[00:16:51] Speaker 01:
You seem to say there's something else here.

[00:16:53] Speaker 01:
And I'm not seeing what the something else is, other than it's a common word and use that could mean all sorts of different things.

[00:17:02] Speaker 01:
That's true of a lot of different words.

[00:17:04] Speaker 01:
It's not limited to this one.

[00:17:07] Speaker 00:
It's a little bit more than just it's a common word.

[00:17:10] Speaker 00:
I think that's the way that my colleague has tried to portray it.

[00:17:13] Speaker 00:
But the board explained it's not just that it's a common word.

[00:17:16] Speaker 00:
It's the way that word is used.

[00:17:17] Speaker 00:
And it's the way that word is used in the context of the goods and services at issue here.

[00:17:21] Speaker 00:
So I think certainly to the extent you.

[00:17:25] Speaker 03:
When is that determination made that it's a common word?

[00:17:29] Speaker 03:
Is a failure to function test a threshold determination that's made?

[00:17:36] Speaker 00:
Well, the very definition of a trademark or service mark is that it has to function to distinguish these goods and services from others.

[00:17:44] Speaker 03:
So you're telling me that in every case, in every application, you will apply the failure to function test?

[00:17:52] Speaker 00:
I mean, certainly no trademark should be registered unless it meets that standard.

[00:17:57] Speaker 00:
Whether or not it's explicitly applied in every case, I couldn't say, in part because there are going to be instances where you don't have these concerns.

[00:18:03] Speaker 03:
So these issues aren't raised in the way they obviously are here.

[00:18:06] Speaker 03:
But the F-U-C-K, is it already registered?

[00:18:11] Speaker 00:
So my colleague just pointed to different examples of other registrations that use that term in conjunction with others, for example.

[00:18:17] Speaker 03:
There are examples, yes, right?

[00:18:18] Speaker 00:
There are some, but again.

[00:18:20] Speaker 03:
Excuse me.

[00:18:21] Speaker 03:
And was a failure to function test applied to those registrations?

[00:18:25] Speaker 00:
I haven't reviewed every record for those registrations, but I would just say with that word and with others, if you go and look at some of the registrations my colleague pointed to, for example.

[00:18:35] Speaker 03:
In review, does it make a difference?

[00:18:37] Speaker 00:
So, do they matter?

[00:18:39] Speaker 00:
Can I give you one example?

[00:18:40] Speaker 00:
So, F-cancer was one example that my colleague pointed to that the PTO has registered.

[00:18:45] Speaker 00:
The C and the K are made to look like the cancer awareness ribbon, right?

[00:18:50] Speaker 00:
So, it's a stylized mark.

[00:18:51] Speaker 00:
It's not just the words and standard characters, which is what he's requested here.

[00:18:55] Speaker 01:
How about the snow globes example?

[00:18:56] Speaker 00:
right now i haven't reviewed the full record for that uh... you know again but the fact that you and and he looks to be able to do this process we don't have to uh... articulate a coherent will trust me and certainly those are not decisions of the board and so i want to if you look at the board's decisions the board has been consistent in the way it's applied this doctrine for years even predating twenty seventeen drive safely fragile for stickers not for other things you drive safely for cars not necessarily for other things uh... you know the fact that the

[00:19:25] Speaker 01:
I understand that the board has been rejecting slogans like that.

[00:19:29] Speaker 01:
We've affirmed that, and that is understandable and makes sense.

[00:19:34] Speaker 01:
This is not a slogan like that.

[00:19:37] Speaker 01:
It's a word that it's in common use, and it may be rejected because of prior use by others, which makes it failure to function.

[00:19:48] Speaker 01:
But you're arguing for something more than that.

[00:19:50] Speaker 01:
And I'm, like Judge Raina, I'm having trouble knowing what that is, what the standard is.

[00:19:57] Speaker 01:
I mean, this is the whole, the essence of administrative law.

[00:20:00] Speaker 01:
You've got to be able to articulate understandable rules.

[00:20:05] Speaker 00:
I mean, I think the fact that it's a word in common use, as you point out, makes it even more troubling to think that someone could trademark it and take it out of use for other people.

[00:20:15] Speaker 00:
have claims of infringement for that use.

[00:20:17] Speaker 00:
That's a point this court made in its decision in GEO.

[00:20:20] Speaker 00:
And I think that's an illustration of why it's important for the PTO to police these lines and protect those interests of other people who want to be able to use this proposed mark in ways that might get them.

[00:20:33] Speaker 03:
The problem I'm having is that it just seems to me that this whole process is open for a situation where people that

[00:20:44] Speaker 03:
The PTO can say, look, here's this word.

[00:20:48] Speaker 03:
I think it's scandalous.

[00:20:51] Speaker 03:
I don't want this to be registered.

[00:20:55] Speaker 03:
And guess what?

[00:20:57] Speaker 03:
It doesn't function.

[00:20:59] Speaker 03:
And it seems to me that the failure to function test, the way it's been applied in this case, it's self-defeating.

[00:21:07] Speaker 03:
You can defeat anything you want.

[00:21:09] Speaker 03:
You can let Apple go by and let these other terms go by, but you won't let FUCK go by because it's scandalous.

[00:21:19] Speaker 00:
First of all, I think Apple is fundamentally distinguishable on multiple axes from something like this, where again, we're looking again at the context of specific goods and services identified in the application.

[00:21:31] Speaker 00:
If this was F-U-C-K for computers, we might be having a different conversation.

[00:21:35] Speaker 00:
I think we'd be having a very different conversation.

[00:21:37] Speaker 00:
You're saying there are no rules.

[00:21:39] Speaker 01:
You're just saying there are no rules.

[00:21:41] Speaker 01:
Each case is judged on its own facts.

[00:21:45] Speaker 01:
There's no requirement of consistency.

[00:21:48] Speaker 00:
No, I'm certainly not suggesting there's no requirement of consistency.

[00:21:51] Speaker 00:
I'm certainly not suggesting that the PTO can just make it up as they go along.

[00:21:54] Speaker 00:
But this is ultimately an evidence-based inquiry.

[00:21:57] Speaker 00:
Consumer perception and consumer understanding is an evidence-based inquiry at bottom.

[00:22:01] Speaker 00:
And that's the same reason why this court in GEO and Vox Populi looked at it.

[00:22:05] Speaker 03:
Do we have to show a nexus between the proposed mark and the evidence?

[00:22:11] Speaker 03:
Has there got to be a nexus?

[00:22:13] Speaker 03:
The answer is yes.

[00:22:14] Speaker 03:
There's got to be some form of a nexus.

[00:22:17] Speaker 03:
How do you have nexus in an application for intended use?

[00:22:22] Speaker 03:
When the good has not been out in the marketplace, how do you judge consumer perception in that situation?

[00:22:30] Speaker 00:
You're looking at whether when consumers see this they're going to understand it as potentially identifying.

[00:22:35] Speaker 00:
The goods are not out of the marketplace yet.

[00:22:37] Speaker 00:
It's certainly going to be more difficult in this context to take a word in common use and remove it from others' ability to use it at that point when it's already, again we have a marketplace that is full of exactly these kinds of products and we're trying to trademark a proposed mark that is widely used by

[00:22:54] Speaker 00:
people in the marketplace by consumers across a variety of context as sort of an all-purpose intensifier.

[00:23:00] Speaker 00:
And that is not the kind of thing that ordinarily gets removed from sort of public use by someone claiming exclusive rights through a trademark.

[00:23:08] Speaker 01:
And in the Supreme Court's decision in politics, there's a suggestion that something that fails to function as a trademark can be registered if it's acquired secondary meaning.

[00:23:19] Speaker 01:
Would that be true of the F word, too?

[00:23:22] Speaker 01:
There's no claim of secondary matters in this year.

[00:23:25] Speaker 01:
Hypothetical question.

[00:23:27] Speaker 01:
Please answer it.

[00:23:28] Speaker 01:
Supreme Court and Qualitech said that color, which fails to function as a trademark generally, can function as a trademark if it's acquired secondary meaning.

[00:23:38] Speaker 01:
Would the same thing be true of the F word?

[00:23:41] Speaker 01:
If it became associated with their particular goods, an acquired secondary meaning, would it then become registrable?

[00:23:48] Speaker 00:
So certainly if Brunetti could come back in the future and demonstrate by evidence that now consumers do understand this as my product when they see

[00:23:57] Speaker 00:
the F load on a phone case, then that would be a different inquiry, and it may well be registrable in that context, but that's plainly not the case here.

[00:24:06] Speaker 00:
There is zero evidence that consumers would perceive the mark in that way.

[00:24:12] Speaker 04:
Thank you, Councilman.

[00:24:14] Speaker 04:
Mr. Scheiner, we're on the same considerable time.

[00:24:17] Speaker 04:
You've got it.

[00:24:18] Speaker 02:
Yes, thank you.

[00:24:19] Speaker 02:
I'd like to address some of the things my friend said here.

[00:24:23] Speaker 02:
First, he's arguing that a message can't be a trademark.

[00:24:25] Speaker 02:
The Supreme Court made that absolutely clear, that a message can be a trademark.

[00:24:29] Speaker 02:
Trademarks do have that.

[00:24:31] Speaker 02:
Second of all, love.

[00:24:33] Speaker 02:
Hello, mom.

[00:24:34] Speaker 02:
Those are all powerful trademarks.

[00:24:35] Speaker 02:
Love is registered by the United Way, Cartier.

[00:24:38] Speaker 02:
But of course, you know, brandy is different than that.

[00:24:41] Speaker 02:
But those words, how do you distinguish love from this word?

[00:24:44] Speaker 02:
There is no way to distinguish them logically.

[00:24:47] Speaker 02:
Second, it was represented that the record's full of evidence that the F word is widely used when they apply for goods.

[00:24:55] Speaker 02:
As pointed out in my appendix A, there's no evidence except for a little bit of irrelevant evidence as to 14.

[00:25:02] Speaker 03:
You can submit any evidence, correct?

[00:25:04] Speaker 03:
No.

[00:25:04] Speaker 02:
Well, I submitted no evidence of consumer perception.

[00:25:08] Speaker 02:
That's correct.

[00:25:09] Speaker 02:
But I did submit evidence that Bernetti was going to use this mark in the same way as he uses the FUCT mark that is on neck labels.

[00:25:18] Speaker 02:
So that's a trademark view.

[00:25:20] Speaker 02:
Because I think your point that the trademark office, I think, has just undercut its case because its position is that no specimen

[00:25:30] Speaker 02:
can be submitted once this failure function objection has been raised, which is the novel thing that got invented in 2017.

[00:25:37] Speaker 02:
But now we're saying, well, maybe you can.

[00:25:41] Speaker 02:
But the record has no evidence as to the use of this term in any class other than 14.

[00:25:47] Speaker 02:
So it's just sunglasses in nine, retail sources in 35.

[00:25:51] Speaker 02:
One point I do want to make is the bill has been wrong about using fake evidence, or created evidence, or whatever you want to call what the government's using here.

[00:26:02] Speaker 02:
And if the government can use that, that means parties and any party proceedings can start using that.

[00:26:09] Speaker 02:
And that means, of course, perjury is not a crime anymore.

[00:26:12] Speaker 02:
So I think that's a bell that needs to be definitely taken care of.

[00:26:15] Speaker 02:
You cannot use fake evidence.

[00:26:17] Speaker 02:
The PTA won't let parties use fake evidence, but apparently it can.

[00:26:22] Speaker 02:
And I'd like to sort of go even broader, because all the cases the PTO cites, well, it has no Article III case that supports the doctrine that widely used on unrelated goods and services is a ground to refuse.

[00:26:37] Speaker 02:
Now, I agree that if it's generic, or you're not using it as a trademark, or if it's generic or descriptive, that those things don't apply here.

[00:26:46] Speaker 02:
And so this principle that if it's widely used in unrelated goods and services, and I find it absolutely amazing to say a tweet, a blog, because if that in fact is the case, you know, a disgruntled employee can destroy any trademark by just writing a few blogs.

[00:27:02] Speaker 02:
All the cases they cite are TTAV cases.

[00:27:07] Speaker 02:
And they're all misread, because if you look at the record in the cases, it's all specimens that are not trademark use large in the front instead of the neck label.

[00:27:16] Speaker 02:
And the only one exception to that is DC1 retailer, which all the evidence shows that it's big use in the front, which is not a trademark use, except there are two little neck labels.

[00:27:27] Speaker 02:
And that's the whole need that this doctrine is based on, is DC-1 retailer.

[00:27:33] Speaker 02:
And that was the default case.

[00:27:35] Speaker 02:
And it's a TTAD.

[00:27:36] Speaker 02:
There's no Article III core.

[00:27:38] Speaker 02:
And my daughter is a US Marine.

[00:27:40] Speaker 02:
And I know the US Marine Corps would be amazed to discover that EGLECREST stands for what the government argues is that once a Marine, always a Marine can't be registered.

[00:27:51] Speaker 02:
The Marine Corps has five registrations for that.

[00:27:54] Speaker 02:
Are there any questions?

[00:27:57] Speaker 04:
Thank you, Mr. Simon.

[00:27:59] Speaker 04:
The case is submitted.