Legal Case Summary

.S. Company can't ensure the same risks can they? Indeed they have and there's record evidence which What's the evidence that they insured the same? For example in the appendix at pages 212-213 And 562 to 564 there's testimonial and documentary evidence about a mr. Switzerland Mr. Switzerland owns a yacht A for a certain period of time he insured that yacht through applicants insurance division This was before they changed the name of the insurance division to first Niagara Later mr

. Switzerland showed that very same yacht through a poser Because the yacht moved from From the Canadian side to the US side no no no the the the mr. Switzerland was a resident of the United States the entire time He also had property in Canada he had property in both areas of both insurance policies covered the navigation of that boat Through both Canadian waters US waters it's aside from that one example is there any other one? Yes, indeed Your Honor, there's also evidence of life insurance policies that were issued to us residents mr. Hoskins Was one and mr. Walkins walker rather was another so there are certainly Is certainly other evidence of these sorts of actual examples that that's it Those three example well, you're on it

. There's a more important reason why this But that the answer is yes does the only three examples I can call the mine in the record right now That is true Is there any evidence in the record that you're going to ever used in the mark in connection with the offering of financial and recent services? uh, the certainly there is letterhead. There's correspondence Up between with which time I mean there's one example of a newity policy right only one I could find right right And this is a person that presented me they've had some insurance dealings and and got the annuity Is there any evidence in a record that when that one annuity was sold that the customer was presented with the trademark? Uh, I believe this testimonial evidence I have where I don't have a record so I can see any evidence in the record that you're pointed ever Actually used the mark in connection with its alleged banking I don't see any evidence that you've ever done. You're leasing Right that that is correct never done. He's correct although, but you're not providing us services

. Why are you worried? Well Your honor as a preliminary matter, but perhaps the most important point here is that the applications that issue And that is the test when we're examining the applicant services and the likelihood of confusion Are not geographically limited Those applications cover any sort of insurance services. They would cover providing insurance brokerage and counseling services With respect to Canadian Properties in fact Mr. Hoffman in the United States You don't supply any services in the United States. Why are you worried? Judge Rader with all the respect I disagreed we do supply Services that are take that are received in the United States

. These US resident customers Whether it's through phone whether it's through facts or email We provide ongoing We the major point is that the United States says and can come to your client if they want to And your client can provide them with services and in fact they do you simply cannot come across the border yourself your client And all the issues there are certain complicated Insurance regulations that govern the manner particularly that the initial contact gets made However with respect to the ongoing services renewals consultation with changes to policies Helping with processing claims Much of that occurs directly with US customers while they are in the US. This is Parodimatic international trade where the services are being rendered in a combination of Canada because the client you wouldn't you wouldn't be here today Unless we had found that you had made a sufficient showing before that the mark was used in the United States That's correct your honor, but if I could just briefly return to the point About the question of geographic separation as I mentioned before the applications and that's what we have to be looking at are not limited geographically The head of their insurance division of applicants insurance We have here then we is a decision by the board that is based primarily on The lack of relatedness between banking and leasing services and insurance right? That's correct your honor and that's the only way it's Yeah, and that's a factual issue right? Oh, that is correct. Okay, and I've read the cases that you cite you suggest there's some sort of automatic presumption of Relatedness between insurance and bank services. I don't read the cases the same that what's the actual evidence in this record of relatedness You're on it

. It's just these internal emails that you rely on no, you're on it not not at all We we cited to a large number of documents directly from applicants own files. Well, that's what I'm talking about Okay, well these were not emails your honor these were LCC filing okay, okay, these were representations. I misspoke. I'm sorry

. I described them as emails I'm talking about these documents. Yes, I've looked at those documents They don't seem to me to suggest that in general that consumers assume that somebody who's offering banking services will offer insurance Services as well or the other way around Well, your honor again. I would have they suggest that this particular organization wants to offer both of those services It suggests that they want to change the name from savings bank because then people would assume that they don't offer those services, but there isn't any suggestion in there that the population in general Assumes that a bank would offer insurance services are that insurance company will offer banking services I would respectfully disagree a number of those documents show me one show me your best one. Okay I Well as one example there was a 10k filing That we cited where they discussed the fact that their banking division Has direct faces direct competition from insurance companies um But that doesn't say that Consumers assume that banks offer insurance services

. It's just saying that in their individual case Well, but in their in their documents they mentioned a specifically mentioned marketing research They had done that indicated first of all that the consumers were desirous of Obtaining these services from from the same company and specifically that the first Niagara market self tested resonated with these very market research customers Uh, so I would argue that that is evidence. I mean the question here is consumer expectation this market research that they did They show me where where I Know that we cited specifically to the document that mentioned the market research Um, the pinpoint site was escaping me at the moment. I'm quite confident it's in the briefs It's helpful it become prepared then but yes, it's not sort of a peripheral issue I apologize the particular market. I didn't anticipate that the particular market research language itself Um was going to be a focal point Well, if you can't find it, maybe you can do it on the reply

. I appreciate that you're um but again returning to this point about the uh ability of the applicant to provide services Geographically distinct, you know related to Canadian insurance the head of their insurance division testified At the very same pages that applicant sites for the proposition that they don't offer those services He did discuss ways in which they could offer those services and so again I think that the the focus has to be on whether the application could cover Insurance on Canadian properties I Would also note that um the uh to the extent that applicant is uh alleges that the board didn't consider this 12th factor of the extent of potential confusion As a preliminary matter the board did consider that issue they considered in conjunction with the actual confusion factor The board did find that there was actual confusion and merely minimized the impact Because of this allegation that the services were geographically distinct As I've already spoken about the fact is they're not Geographically distinct both the customer base is Both companies do business across border The evidence of actual confusion you're talking about now is that the emails Yes, that is correct. That's where they two had email addresses that were virtually the same That's correct and so the like when I knew I was trying to reach Uh or trying to reach First night in the United States. I actually typed in the hyphen or something and I got somebody else Uh, that that is correct. There was one example of it They knew who they were trying to reach and there was no business loss was there There was no business loss but uh in situations like this where you have a senior user who is a small business And a larger user comes in after the fact There's a separate type of commercial harm where the senior user It will lose the ability to control the reputation and the secondary meeting associated with the mark So Diverted sales are not the only type of commercial harm that's recognized By the Lantern Act and certainly the consumer confusion itself is a significant harm I just like briefly if I could to point you I found the uh Page of at least one example of this question and answer relating to the market research in the appendix page a 1189 uh, this was a Question and answer is a document that is used to respond in various contexts for the reason for changing the mark um In the last question and answer sequence at the bottom of the page what is branding and how does changing our brand fit into the long-term goals uh, the last full paragraph on the page refers to extensive market research revealing that customers in the commercial market Do not equate a savings bank with offering a full array of services that small and medium businesses need Similar consumers of all type do not consider the savings bank So they are talking here about the issue with the savings bank But it then goes on to to note that these sorts of consumers do recognize first Niagara as representing this sort of full service combination Of services so that would be one example of market research that was not But that market research shows that as a general proposition the public does not associate banking with leasing or or insurance Uh, banks if they're bank if they're only represented as local savings banks But then there are there's all these other categories of banks including the banking but it's a perception that your client would like to change by being able to have you know mark the result of the service Certainly existing lay of a land it is suggested to me that this thing you just pointed to me struck me like a counted against you and not for you Well, I would suggest that as long as there are some banking services that are associated there's no again There's no limitation in the applicant's applications to banking services for local It just doesn't say that consumers assume that banks offer insurance or that insurance companies offer banking services Well, your honor

. I would suggest that if you look at the totality of these documents They say that the very purpose for this rebranding was to capitalize on that customer perception That was the very reason and when you measure the confusion the snapshot before your client changes the world The world what you're showing us here is what the world was thinking when your client decided that it wanted to somehow change thinking Was that the ordinary bloke doesn't associate With the savings bank handing over the savings bank Right that's what that's what this research proved But I think the research also proves that it will associate a bank with these other services as long as it's not characterized as a local savings bank No, I think what it shows is that you can Convince consumers that you can offer both things if you change your name It doesn't show that consumers will assume that you offer both things if you change your name I will again, I suppose I would just have to respectfully disagree disagree I think that the totality the evidence points in the direction that was the very purpose for the name change Uh, I see that I'm down to very much fact learned. Thank you. We'll You consumed your rebuttal time, but we'll restore it and If you could give Mr. Pearlman an additional three minutes should he need to use them? And our time will be almost May please the court Your honors I represent first Niagara United States the first issue I'd like to go to if I could as the issue that we've all been discussing and that is the relatedness of Banking and leasing to insurance the trademark trial and appeal billboard address that issue and they found that there was insufficient evidence In the record to show relatedness between those services. I think judge Dyke's question really focuses on on what's important here And that is that it's not enough to show that a single business might offer both banking and insurance the test really is Do consumers believe that If a insurance company has a particular name and some bank has a particular name that the services then Eminate from the same entity that's what this court decided in the in rate course having conceded that distinction Then you have no complaint with the board's entire Outcome right you don't feel that you have any particular right To use the marks with respect to insurance services. We do your honor and we have cross appeal down that the reason for our cross knowledge the distinction Why doesn't that distinction? Cut against you pretty heavily when you wish to move into the Insurance coverage for this particular mark sure The reason for that is that in the insurance area There is a geographic separation here There the 12th Dupont factor is is there a real likely hoodie in the in the real world that they're being confusion And the electric design case this court said that we're not concerned with mere theoretical possibilities We're interested in commercial same geographic separation exists for banking services as for insurance services Why do you feel like there's some different effect that it has in the insurance area? I don't think that the geographic difference has a different effect in the insurance area I think it should be given the same effect that it was given in the banking and leasing area I think the mistake that the TTAB made here Is when they were looking at the factor of channels of trade and customers What they did is they said we have to assume that all channels of trade are available because there's no limitation in my clients Applications the case that they cited in making that decision Was a case where the opposer had a registration? That's not the case here in this case the opposer does not have a registration So you have to look at how the opposer actually uses the mark for insurance And that approach is within the explicit wording of the second Dupont factor Which says the similarity or dissimilarity and nature of the goods or services has described in the application of registration Or in connection with which a Mark is exactly the same For purposes of insurance and you're plenty of conceded that And the example of the fellow with the boat. I mean there's there's direct overlap of the service right for a Diminimist number of customers in that case of the yacht the yacht went to a it went to a It was based in Canada and so it was moved But the TTAB explicitly found it's a finding of fast. Yes There's not a whole lot of talk about this you know relatedness confusion issue even on insurance from which customer we worried about being confused Well In for example if you if you're a client in Niagara Falls United States starts advertising on the television and whatnot first Niagara for insurance services Right The folks over on the other side of the falls in Canada are going to see that advertising are they going to get confused? Because they've been inundated with advertising on their side of the fence by first Niagara Canada with exactly the same mark Well, there's absolutely nothing in the record to indicate that anybody in Canada has been confused by any advertising from my client the TTAB characterized that type of advertising as spill over advertising and yeah, but it's real It happens anywhere Sure, but there's nothing in the record to indicate that is it that anybody is confused the people who are in Canada Who see that advertising? The first Niagara Company and the test is likelihood of confusion right? That's right And the board here found there was a likelihood of confusion with regard to insurance services They did and they based that on the fact that there was no limitation in channels of trade But when they talked about advertising The TTAB minimized the effect that advertising would have and said the spill over was minimal Between the countries and that's the type of thing that's expected before Insurance is a little a little different in the sense that people could own property in both places and wish to ensure it in both places and therefore Have some reason to do business with insurance companies both in Canada and the United States and therefore there could be Confusion right? Well, it is true that You know as your honor says somebody can own property in both countries But mostly how first Niagara Canada works and this is at page 186 of the record they work through sophisticated brokers There was a question asked it Mr

. I think judge Dyke's question really focuses on on what's important here And that is that it's not enough to show that a single business might offer both banking and insurance the test really is Do consumers believe that If a insurance company has a particular name and some bank has a particular name that the services then Eminate from the same entity that's what this court decided in the in rate course having conceded that distinction Then you have no complaint with the board's entire Outcome right you don't feel that you have any particular right To use the marks with respect to insurance services. We do your honor and we have cross appeal down that the reason for our cross knowledge the distinction Why doesn't that distinction? Cut against you pretty heavily when you wish to move into the Insurance coverage for this particular mark sure The reason for that is that in the insurance area There is a geographic separation here There the 12th Dupont factor is is there a real likely hoodie in the in the real world that they're being confusion And the electric design case this court said that we're not concerned with mere theoretical possibilities We're interested in commercial same geographic separation exists for banking services as for insurance services Why do you feel like there's some different effect that it has in the insurance area? I don't think that the geographic difference has a different effect in the insurance area I think it should be given the same effect that it was given in the banking and leasing area I think the mistake that the TTAB made here Is when they were looking at the factor of channels of trade and customers What they did is they said we have to assume that all channels of trade are available because there's no limitation in my clients Applications the case that they cited in making that decision Was a case where the opposer had a registration? That's not the case here in this case the opposer does not have a registration So you have to look at how the opposer actually uses the mark for insurance And that approach is within the explicit wording of the second Dupont factor Which says the similarity or dissimilarity and nature of the goods or services has described in the application of registration Or in connection with which a Mark is exactly the same For purposes of insurance and you're plenty of conceded that And the example of the fellow with the boat. I mean there's there's direct overlap of the service right for a Diminimist number of customers in that case of the yacht the yacht went to a it went to a It was based in Canada and so it was moved But the TTAB explicitly found it's a finding of fast. Yes There's not a whole lot of talk about this you know relatedness confusion issue even on insurance from which customer we worried about being confused Well In for example if you if you're a client in Niagara Falls United States starts advertising on the television and whatnot first Niagara for insurance services Right The folks over on the other side of the falls in Canada are going to see that advertising are they going to get confused? Because they've been inundated with advertising on their side of the fence by first Niagara Canada with exactly the same mark Well, there's absolutely nothing in the record to indicate that anybody in Canada has been confused by any advertising from my client the TTAB characterized that type of advertising as spill over advertising and yeah, but it's real It happens anywhere Sure, but there's nothing in the record to indicate that is it that anybody is confused the people who are in Canada Who see that advertising? The first Niagara Company and the test is likelihood of confusion right? That's right And the board here found there was a likelihood of confusion with regard to insurance services They did and they based that on the fact that there was no limitation in channels of trade But when they talked about advertising The TTAB minimized the effect that advertising would have and said the spill over was minimal Between the countries and that's the type of thing that's expected before Insurance is a little a little different in the sense that people could own property in both places and wish to ensure it in both places and therefore Have some reason to do business with insurance companies both in Canada and the United States and therefore there could be Confusion right? Well, it is true that You know as your honor says somebody can own property in both countries But mostly how first Niagara Canada works and this is at page 186 of the record they work through sophisticated brokers There was a question asked it Mr. Mavis deposition he's a principle of first Niagara Canada Well, do you deal directly with people and at page 1886 of the record he says well That's really not done. It's done through brokers sophisticated broke what what case Ours if we have where there's an identical mark or substantially identical mark And the same type of business That the board should be reversed. I found it like a confusion I can't cite a case to you and I think the difference is that in this case we have a Canadian licensed insurance company and a US licensed insurance broker of brokers on both sides I don't think that situation arises in any existing case It's not likely that a broker in the United States is going to be confused about which country to go to to refer business for a Canadian cottage And there's really no likelihood that there's going to be confusion if somebody going to first Niagara Canada and asking for insurance to me I'm the United States. I'm not going to have a confusion going to happen later on if the decision stands because your clients can be able to To use It's mark on Call it banking services and have spill over advertising you'll be able to argue we're a full service bank You don't have to you can even say we're a full service bank it offers insurance He will be using the mark with respect to insurance that addles spill over into Canada and the Canadian folks will be running their ads on television saying we sell insurance What's the customer supposed to think who provides what services well If both the president has in the case of sport and way in essence because of the geographic overlap the border issue Well, the TTAB found is a finding of fact that the geographic scope of these services is not overlapping That's a page 829 of the record to take factual finding But it was suppose that's true I mean you can still have likely to the confusion even if there is absolutely zero Competition between the two companies right? You could have confusion, but in this case they're between businesses that are in different countries It's not the same as if you had a business in Pennsylvania and a business in in New York and there was confusion within the United States Here you have because of the highly regulated nature of insurance and the TTAB pointed to the highly regulated nature of insurance Here you have a situation where We can't perform their services

. Mavis deposition he's a principle of first Niagara Canada Well, do you deal directly with people and at page 1886 of the record he says well That's really not done. It's done through brokers sophisticated broke what what case Ours if we have where there's an identical mark or substantially identical mark And the same type of business That the board should be reversed. I found it like a confusion I can't cite a case to you and I think the difference is that in this case we have a Canadian licensed insurance company and a US licensed insurance broker of brokers on both sides I don't think that situation arises in any existing case It's not likely that a broker in the United States is going to be confused about which country to go to to refer business for a Canadian cottage And there's really no likelihood that there's going to be confusion if somebody going to first Niagara Canada and asking for insurance to me I'm the United States. I'm not going to have a confusion going to happen later on if the decision stands because your clients can be able to To use It's mark on Call it banking services and have spill over advertising you'll be able to argue we're a full service bank You don't have to you can even say we're a full service bank it offers insurance He will be using the mark with respect to insurance that addles spill over into Canada and the Canadian folks will be running their ads on television saying we sell insurance What's the customer supposed to think who provides what services well If both the president has in the case of sport and way in essence because of the geographic overlap the border issue Well, the TTAB found is a finding of fact that the geographic scope of these services is not overlapping That's a page 829 of the record to take factual finding But it was suppose that's true I mean you can still have likely to the confusion even if there is absolutely zero Competition between the two companies right? You could have confusion, but in this case they're between businesses that are in different countries It's not the same as if you had a business in Pennsylvania and a business in in New York and there was confusion within the United States Here you have because of the highly regulated nature of insurance and the TTAB pointed to the highly regulated nature of insurance Here you have a situation where We can't perform their services. They can't perform our service. It's a point is the The fact that they're barred from competing with each other doesn't solve the confusion problem likely to the confusion problem Because there are cases in which there was no actual competition for customers and yet Weve held that there can be a likelihood of confusion under those circumstances So you keep emphasizing the Diminimous nature of the competition, but that doesn't answer the whole question It is true that that does not dispose of the issue per se but as the TTAB found The lock and this is a quote from the TTAB this lack of commercial injury or opportunity for such as not Dispositive per se which is exactly what I'm saying, but it's a significant factor in this highly regulated Industry so what you do is you go to the 12th to contactor which says You know what is the likelihood of confusion is it Diminimous or is it substantial and real and in this case The TTAB all of their factual findings on insurance and on banking found that the Rillius is very little I think the term of the TTAB was extremely limited potential for any commercial confusion And I think the only reason the TTAB found in favor of first Niagara Canada and the insurance issue is they misunderstood The channels of trade and thought that they had to look at all channels of trade Whereas in this case since the apposer does not have a registration under the second dupe factor You have to look at how they actually use the mark and how they actually use the mark is a self Canadian brokerage services That's a different service from what first Niagara United States Is selling I would like to raise one issue about reverse confusion because mr. Fakler had had raised that That was an issue that was not argued or raised By first Niagara Canada in front of the TTAB They didn't raise it in front of the TTAB the first time they didn't discuss it before this court when they were up here Last time they didn't discuss it with the TTAB when it was remanded and it's raised for the first time on appeal here This court in the Hoover case Declined specifically in that case to Address an issue when it hadn't been brief when evidence hadn't been admitted It just had not been addressed by the TTAB Simply because first Niagara Canada changes counsel between the last appeal and this appeal Does not mean that they should be able to come up with a whole new set of arguments that the administrative agency never had an opportunity to look at So reverse confusion should not be considered we've addressed in our brief on the merits Why we don't think for first confusion exists here, but it's an entirely new issue raised and And it should not be raised for the first time If I can I would like to go back to banking just for a moment Again on the relatedness issue your honors had asked questions about what the record evidence was The record evidence here is there is no bit of evidence anywhere in the record That despite the fact that first Niagara Canada has used the first Niagara name since 1984 They've made no move to go into banking. They've made no move

. They can't perform our service. It's a point is the The fact that they're barred from competing with each other doesn't solve the confusion problem likely to the confusion problem Because there are cases in which there was no actual competition for customers and yet Weve held that there can be a likelihood of confusion under those circumstances So you keep emphasizing the Diminimous nature of the competition, but that doesn't answer the whole question It is true that that does not dispose of the issue per se but as the TTAB found The lock and this is a quote from the TTAB this lack of commercial injury or opportunity for such as not Dispositive per se which is exactly what I'm saying, but it's a significant factor in this highly regulated Industry so what you do is you go to the 12th to contactor which says You know what is the likelihood of confusion is it Diminimous or is it substantial and real and in this case The TTAB all of their factual findings on insurance and on banking found that the Rillius is very little I think the term of the TTAB was extremely limited potential for any commercial confusion And I think the only reason the TTAB found in favor of first Niagara Canada and the insurance issue is they misunderstood The channels of trade and thought that they had to look at all channels of trade Whereas in this case since the apposer does not have a registration under the second dupe factor You have to look at how they actually use the mark and how they actually use the mark is a self Canadian brokerage services That's a different service from what first Niagara United States Is selling I would like to raise one issue about reverse confusion because mr. Fakler had had raised that That was an issue that was not argued or raised By first Niagara Canada in front of the TTAB They didn't raise it in front of the TTAB the first time they didn't discuss it before this court when they were up here Last time they didn't discuss it with the TTAB when it was remanded and it's raised for the first time on appeal here This court in the Hoover case Declined specifically in that case to Address an issue when it hadn't been brief when evidence hadn't been admitted It just had not been addressed by the TTAB Simply because first Niagara Canada changes counsel between the last appeal and this appeal Does not mean that they should be able to come up with a whole new set of arguments that the administrative agency never had an opportunity to look at So reverse confusion should not be considered we've addressed in our brief on the merits Why we don't think for first confusion exists here, but it's an entirely new issue raised and And it should not be raised for the first time If I can I would like to go back to banking just for a moment Again on the relatedness issue your honors had asked questions about what the record evidence was The record evidence here is there is no bit of evidence anywhere in the record That despite the fact that first Niagara Canada has used the first Niagara name since 1984 They've made no move to go into banking. They've made no move. They admit they Art in leasing of any type at all and they've made no move to do that Mr. Maves testified at page a 245 of the record don't they have a right to protect the integrity of their mark Even if there's not a exact correlation with their services Well, I guess that would depend on on what exact Where relation means here the TTAB found that there was really no relatedness between the banking and leasing and the insurance on the other hand And the facts bear that out that there's financial services. I mean there's a a large umbrella that could sweep them both in I don't think so if we look at the particular facts here relating to financial services They have no electronic banking and that's what first Niagara U.S

. They admit they Art in leasing of any type at all and they've made no move to do that Mr. Maves testified at page a 245 of the record don't they have a right to protect the integrity of their mark Even if there's not a exact correlation with their services Well, I guess that would depend on on what exact Where relation means here the TTAB found that there was really no relatedness between the banking and leasing and the insurance on the other hand And the facts bear that out that there's financial services. I mean there's a a large umbrella that could sweep them both in I don't think so if we look at the particular facts here relating to financial services They have no electronic banking and that's what first Niagara U.S.'s application was for that's it page a 245 of the record They're not licensed to provide banking services in any country They mentioned in annuity they sold one annuity. There's one annuity in the record. That's a page a 181 that was an annuity that was sold to a Mrs. Kutterbach who's from Canada Absolutely no evidence that there is any annuity of any type sold to anybody in the United States Doesn't mr

.'s application was for that's it page a 245 of the record They're not licensed to provide banking services in any country They mentioned in annuity they sold one annuity. There's one annuity in the record. That's a page a 181 that was an annuity that was sold to a Mrs. Kutterbach who's from Canada Absolutely no evidence that there is any annuity of any type sold to anybody in the United States Doesn't mr. Fackler have a point a small company Could easily get kind of swept aside by a large company who takes their mark and with its superior Advertising capability kind of swamps the market with That mark being used in a different context suddenly their use of the mark is completely eroded That's the reverse confusion argument That's the one that's being raised for the first time on this appeal We've cited cases in our brief we've addressed reverse confusion Insighted professor McCarthy and the checkpoint case out of the third circuit And what the checkpoint case and professor McCarthy say is that there is not Reverse confusion where the services are not competitive and I think certainly as to banking and leasing the services are not in any way competitive I don't think they're competitive for insurance because of the different regulatory schemes that the two clients Operate under second the respective markets are separated. We have that here except for a couple of examples of US Citizens who have property or some kind of nexus to a Canadian Insurable interest and finally that the advertising is directed at different types of purchasers Here's what the TTAB said about that third factor in advertising They said that first an agrocanitis Quote advertising is directed at Canadian purchasers and there's only minimal spill over in the New York Of its advertising on a single Canadian radio station And they also said that because of the very likelihood of insured or very nature of insurance brokerage services It's unlikely that a US resident who hears advertising For their services or vice versa would inadvertently go to the wrong country because they're a Canadian insurance broker Where US insurance broker the services are separated? They're not related and For that reason we would ask that this court affirm the TTAB's finding as to banking and leasing applications That was 12 out of the 15 classes in the Six applications and reverse as to insurance because using the paradigm that this court set out in elect electronic design in that case There really is no likelihood of confusion and actually to get back to the generators question about Can't there be confusion even in the absence of competitive products In the electronic design case more of a form of harm akin to delusion into Some erosion of the value of the mark right of course in this case first an agrocanada has admitted that its marks not famous So the normal delusion principles don't apply it's why I said akin to delusion sure But in the electronic design case this court said that the confusion you're looking for is purchasing Confusion confusion by purchasers is a TTAB found the Chances or the opportunity for that type of confusion is in the words of the TTAB quote Extremely limited for that reason then we ask affirmance on the banking and leasing decisions reversal on the insurance decision Hey Thank you for all my Mr. Backler You have your three minutes of rebuttal time Thank you Respect to the reverse confusion issue First of all I would point out I think that You know Many if not most of the arguments raised by applicant were not briefed in the trial briefs below I think it's safe to say in candid to the court Which ones in particular since you're doing a 10 for a tag here Well, you want to I don't want to I'll retract me as true that you didn't raise this issue the Reverse confusion below right your honor. It was not expressly argued as such separately from forward confusion That is true under under what guys was it argued? Well, I would I would I would say that the the best we could say about it is that the facts that we're being this Present the classic case of reverse confusion

. Fackler have a point a small company Could easily get kind of swept aside by a large company who takes their mark and with its superior Advertising capability kind of swamps the market with That mark being used in a different context suddenly their use of the mark is completely eroded That's the reverse confusion argument That's the one that's being raised for the first time on this appeal We've cited cases in our brief we've addressed reverse confusion Insighted professor McCarthy and the checkpoint case out of the third circuit And what the checkpoint case and professor McCarthy say is that there is not Reverse confusion where the services are not competitive and I think certainly as to banking and leasing the services are not in any way competitive I don't think they're competitive for insurance because of the different regulatory schemes that the two clients Operate under second the respective markets are separated. We have that here except for a couple of examples of US Citizens who have property or some kind of nexus to a Canadian Insurable interest and finally that the advertising is directed at different types of purchasers Here's what the TTAB said about that third factor in advertising They said that first an agrocanitis Quote advertising is directed at Canadian purchasers and there's only minimal spill over in the New York Of its advertising on a single Canadian radio station And they also said that because of the very likelihood of insured or very nature of insurance brokerage services It's unlikely that a US resident who hears advertising For their services or vice versa would inadvertently go to the wrong country because they're a Canadian insurance broker Where US insurance broker the services are separated? They're not related and For that reason we would ask that this court affirm the TTAB's finding as to banking and leasing applications That was 12 out of the 15 classes in the Six applications and reverse as to insurance because using the paradigm that this court set out in elect electronic design in that case There really is no likelihood of confusion and actually to get back to the generators question about Can't there be confusion even in the absence of competitive products In the electronic design case more of a form of harm akin to delusion into Some erosion of the value of the mark right of course in this case first an agrocanada has admitted that its marks not famous So the normal delusion principles don't apply it's why I said akin to delusion sure But in the electronic design case this court said that the confusion you're looking for is purchasing Confusion confusion by purchasers is a TTAB found the Chances or the opportunity for that type of confusion is in the words of the TTAB quote Extremely limited for that reason then we ask affirmance on the banking and leasing decisions reversal on the insurance decision Hey Thank you for all my Mr. Backler You have your three minutes of rebuttal time Thank you Respect to the reverse confusion issue First of all I would point out I think that You know Many if not most of the arguments raised by applicant were not briefed in the trial briefs below I think it's safe to say in candid to the court Which ones in particular since you're doing a 10 for a tag here Well, you want to I don't want to I'll retract me as true that you didn't raise this issue the Reverse confusion below right your honor. It was not expressly argued as such separately from forward confusion That is true under under what guys was it argued? Well, I would I would I would say that the the best we could say about it is that the facts that we're being this Present the classic case of reverse confusion. We're sure that that happens all the time the facts present in arguments Somebody could make and lawyer says I'm not gonna make that All of these to waver Well, I would say though your honor in this instance Though and do you have any specific example of your adversary here presenting arguments to this court can work present below You made that challenge just a moment ago I can't and really was not my purpose to get far down a tip for tat with the with the with the limited time that I have You'll take that one back. I will take that one back to the purposes of the the rebuttal But what I would your client gonna do When this larger entity starts advertising all around Niagara Falls and well-known the they're a full service financial institution Providing full-ranging services including insurance of all the hurt kinds Your honor that indeed has been happening during this time And that is the reason not so long as they don't actually slap there in the First Niagara mark on the insurance service. They they're gonna be able to make talk that talk right? It all depends. I would say that you know, and again, this is in a right to use context not in a right to register context I believe your question But certainly to the extent they use the umbrella mark of first-night ever financial group in connection with insurance services I don't think that they're allowed to do that Is the case pending right? Indeed you're on there is a case pending indeed you're on there's a case pending But with respect to reverse confusion which has been fully briefed at least at the appellate level We did argue it from our opening brief on and the other side has had the opportunity to respond um Emory shallow oil is the case this is a federal circuit case

. We're sure that that happens all the time the facts present in arguments Somebody could make and lawyer says I'm not gonna make that All of these to waver Well, I would say though your honor in this instance Though and do you have any specific example of your adversary here presenting arguments to this court can work present below You made that challenge just a moment ago I can't and really was not my purpose to get far down a tip for tat with the with the with the limited time that I have You'll take that one back. I will take that one back to the purposes of the the rebuttal But what I would your client gonna do When this larger entity starts advertising all around Niagara Falls and well-known the they're a full service financial institution Providing full-ranging services including insurance of all the hurt kinds Your honor that indeed has been happening during this time And that is the reason not so long as they don't actually slap there in the First Niagara mark on the insurance service. They they're gonna be able to make talk that talk right? It all depends. I would say that you know, and again, this is in a right to use context not in a right to register context I believe your question But certainly to the extent they use the umbrella mark of first-night ever financial group in connection with insurance services I don't think that they're allowed to do that Is the case pending right? Indeed you're on there is a case pending indeed you're on there's a case pending But with respect to reverse confusion which has been fully briefed at least at the appellate level We did argue it from our opening brief on and the other side has had the opportunity to respond um Emory shallow oil is the case this is a federal circuit case. It is not only is it a case involving This very type of harm and it describes the danger to a smaller company in having its goodwill and ability to control Secondary meaning taken away It's a federal circuit case or unlike the checkpoint case and it also specifically notes that where that non competitive even non competitive And even goods or services that are not intrinsically related Can still cause likelihood of confusion particularly where the marks are identical as they are in this case And there's some in the last episode should and up-susur be allowed to mount an opposition Against a mark this proposed for a particular use when the opposer has never engaged in that line of work and never has no made no showing that they proposed to Let's assume for purposes of argument that this is leasing Okay, that's not let's assume for purpose of our own a year client and never sold an annuity Never ever mentioned to anybody that they were providing any other than pure insurance services. Yes Well, I think what's what's wrong with a presidential ruling of this court this has such a person lack standing to oppose The mark someone seeking for other use something where they're using it because I think that runs directly consular to this Shell oil case Which specifically says and it sites to a board the K2 decision K2 decision before the board You had goods that were skis and cigarettes and there was a likelihood of confusion found Shell oil approved of that rationale Particularly in a reverse confusion setting where you have a smaller Senior user because that is precisely the harm the harm is different than saying they might expand into that area the harm is that People are they're going to lose control of the distinctiveness of that it's true as judge Raider mentioned It's almost akin to dilution Although it is different and it's recognized in shell oil specifically even when goods are not found to be related So or competitive so check point I would argue is an opposite it's in its in the wrong circuit and shell oil is directly runs directly contrary to that Thank you mr. Backlar. Thank you our final case this morning is fortunate versus planet

. It is not only is it a case involving This very type of harm and it describes the danger to a smaller company in having its goodwill and ability to control Secondary meaning taken away It's a federal circuit case or unlike the checkpoint case and it also specifically notes that where that non competitive even non competitive And even goods or services that are not intrinsically related Can still cause likelihood of confusion particularly where the marks are identical as they are in this case And there's some in the last episode should and up-susur be allowed to mount an opposition Against a mark this proposed for a particular use when the opposer has never engaged in that line of work and never has no made no showing that they proposed to Let's assume for purposes of argument that this is leasing Okay, that's not let's assume for purpose of our own a year client and never sold an annuity Never ever mentioned to anybody that they were providing any other than pure insurance services. Yes Well, I think what's what's wrong with a presidential ruling of this court this has such a person lack standing to oppose The mark someone seeking for other use something where they're using it because I think that runs directly consular to this Shell oil case Which specifically says and it sites to a board the K2 decision K2 decision before the board You had goods that were skis and cigarettes and there was a likelihood of confusion found Shell oil approved of that rationale Particularly in a reverse confusion setting where you have a smaller Senior user because that is precisely the harm the harm is different than saying they might expand into that area the harm is that People are they're going to lose control of the distinctiveness of that it's true as judge Raider mentioned It's almost akin to dilution Although it is different and it's recognized in shell oil specifically even when goods are not found to be related So or competitive so check point I would argue is an opposite it's in its in the wrong circuit and shell oil is directly runs directly contrary to that Thank you mr. Backlar. Thank you our final case this morning is fortunate versus planet

Factler I'm with the firm of Moses and Singer and I'm here today representing first night agra insurance brokers Who was the opposer in the proceeding below? First night agra insurance is a small family on your hope is to be able to establish The rights to the mark with respect to banking and leasing services That's what you're trying to gain right. I would clarify that in your honor I believe that we're saying that the applicant is not entitled to register that identical mark for either insurance services or the related banking and leasing services Why? Well, because we have been using the mark for a significantly longer than they have and As the board found but but that isn't the test the test is whether there's going to be some confusion some harm some market harm and When you have complete geographic separation and there's no chance for Any overlapping business. How can there be any worry that there's a going to be an economic harm here? Your honor. I'm glad to brought that up. There are a couple of answers to that question First of all the notion of complete geographic Stinktiveness is simply Counterfactual It's not supported by the record evidence As a preliminary matter as the board they can the Canadian Company and U.S. Company can't ensure the same risks can they? Indeed they have and there's record evidence which What's the evidence that they insured the same? For example in the appendix at pages 212-213 And 562 to 564 there's testimonial and documentary evidence about a mr. Switzerland Mr. Switzerland owns a yacht A for a certain period of time he insured that yacht through applicants insurance division This was before they changed the name of the insurance division to first Niagara Later mr. Switzerland showed that very same yacht through a poser Because the yacht moved from From the Canadian side to the US side no no no the the the mr. Switzerland was a resident of the United States the entire time He also had property in Canada he had property in both areas of both insurance policies covered the navigation of that boat Through both Canadian waters US waters it's aside from that one example is there any other one? Yes, indeed Your Honor, there's also evidence of life insurance policies that were issued to us residents mr. Hoskins Was one and mr. Walkins walker rather was another so there are certainly Is certainly other evidence of these sorts of actual examples that that's it Those three example well, you're on it. There's a more important reason why this But that the answer is yes does the only three examples I can call the mine in the record right now That is true Is there any evidence in the record that you're going to ever used in the mark in connection with the offering of financial and recent services? uh, the certainly there is letterhead. There's correspondence Up between with which time I mean there's one example of a newity policy right only one I could find right right And this is a person that presented me they've had some insurance dealings and and got the annuity Is there any evidence in a record that when that one annuity was sold that the customer was presented with the trademark? Uh, I believe this testimonial evidence I have where I don't have a record so I can see any evidence in the record that you're pointed ever Actually used the mark in connection with its alleged banking I don't see any evidence that you've ever done. You're leasing Right that that is correct never done. He's correct although, but you're not providing us services. Why are you worried? Well Your honor as a preliminary matter, but perhaps the most important point here is that the applications that issue And that is the test when we're examining the applicant services and the likelihood of confusion Are not geographically limited Those applications cover any sort of insurance services. They would cover providing insurance brokerage and counseling services With respect to Canadian Properties in fact Mr. Hoffman in the United States You don't supply any services in the United States. Why are you worried? Judge Rader with all the respect I disagreed we do supply Services that are take that are received in the United States. These US resident customers Whether it's through phone whether it's through facts or email We provide ongoing We the major point is that the United States says and can come to your client if they want to And your client can provide them with services and in fact they do you simply cannot come across the border yourself your client And all the issues there are certain complicated Insurance regulations that govern the manner particularly that the initial contact gets made However with respect to the ongoing services renewals consultation with changes to policies Helping with processing claims Much of that occurs directly with US customers while they are in the US. This is Parodimatic international trade where the services are being rendered in a combination of Canada because the client you wouldn't you wouldn't be here today Unless we had found that you had made a sufficient showing before that the mark was used in the United States That's correct your honor, but if I could just briefly return to the point About the question of geographic separation as I mentioned before the applications and that's what we have to be looking at are not limited geographically The head of their insurance division of applicants insurance We have here then we is a decision by the board that is based primarily on The lack of relatedness between banking and leasing services and insurance right? That's correct your honor and that's the only way it's Yeah, and that's a factual issue right? Oh, that is correct. Okay, and I've read the cases that you cite you suggest there's some sort of automatic presumption of Relatedness between insurance and bank services. I don't read the cases the same that what's the actual evidence in this record of relatedness You're on it. It's just these internal emails that you rely on no, you're on it not not at all We we cited to a large number of documents directly from applicants own files. Well, that's what I'm talking about Okay, well these were not emails your honor these were LCC filing okay, okay, these were representations. I misspoke. I'm sorry. I described them as emails I'm talking about these documents. Yes, I've looked at those documents They don't seem to me to suggest that in general that consumers assume that somebody who's offering banking services will offer insurance Services as well or the other way around Well, your honor again. I would have they suggest that this particular organization wants to offer both of those services It suggests that they want to change the name from savings bank because then people would assume that they don't offer those services, but there isn't any suggestion in there that the population in general Assumes that a bank would offer insurance services are that insurance company will offer banking services I would respectfully disagree a number of those documents show me one show me your best one. Okay I Well as one example there was a 10k filing That we cited where they discussed the fact that their banking division Has direct faces direct competition from insurance companies um But that doesn't say that Consumers assume that banks offer insurance services. It's just saying that in their individual case Well, but in their in their documents they mentioned a specifically mentioned marketing research They had done that indicated first of all that the consumers were desirous of Obtaining these services from from the same company and specifically that the first Niagara market self tested resonated with these very market research customers Uh, so I would argue that that is evidence. I mean the question here is consumer expectation this market research that they did They show me where where I Know that we cited specifically to the document that mentioned the market research Um, the pinpoint site was escaping me at the moment. I'm quite confident it's in the briefs It's helpful it become prepared then but yes, it's not sort of a peripheral issue I apologize the particular market. I didn't anticipate that the particular market research language itself Um was going to be a focal point Well, if you can't find it, maybe you can do it on the reply. I appreciate that you're um but again returning to this point about the uh ability of the applicant to provide services Geographically distinct, you know related to Canadian insurance the head of their insurance division testified At the very same pages that applicant sites for the proposition that they don't offer those services He did discuss ways in which they could offer those services and so again I think that the the focus has to be on whether the application could cover Insurance on Canadian properties I Would also note that um the uh to the extent that applicant is uh alleges that the board didn't consider this 12th factor of the extent of potential confusion As a preliminary matter the board did consider that issue they considered in conjunction with the actual confusion factor The board did find that there was actual confusion and merely minimized the impact Because of this allegation that the services were geographically distinct As I've already spoken about the fact is they're not Geographically distinct both the customer base is Both companies do business across border The evidence of actual confusion you're talking about now is that the emails Yes, that is correct. That's where they two had email addresses that were virtually the same That's correct and so the like when I knew I was trying to reach Uh or trying to reach First night in the United States. I actually typed in the hyphen or something and I got somebody else Uh, that that is correct. There was one example of it They knew who they were trying to reach and there was no business loss was there There was no business loss but uh in situations like this where you have a senior user who is a small business And a larger user comes in after the fact There's a separate type of commercial harm where the senior user It will lose the ability to control the reputation and the secondary meeting associated with the mark So Diverted sales are not the only type of commercial harm that's recognized By the Lantern Act and certainly the consumer confusion itself is a significant harm I just like briefly if I could to point you I found the uh Page of at least one example of this question and answer relating to the market research in the appendix page a 1189 uh, this was a Question and answer is a document that is used to respond in various contexts for the reason for changing the mark um In the last question and answer sequence at the bottom of the page what is branding and how does changing our brand fit into the long-term goals uh, the last full paragraph on the page refers to extensive market research revealing that customers in the commercial market Do not equate a savings bank with offering a full array of services that small and medium businesses need Similar consumers of all type do not consider the savings bank So they are talking here about the issue with the savings bank But it then goes on to to note that these sorts of consumers do recognize first Niagara as representing this sort of full service combination Of services so that would be one example of market research that was not But that market research shows that as a general proposition the public does not associate banking with leasing or or insurance Uh, banks if they're bank if they're only represented as local savings banks But then there are there's all these other categories of banks including the banking but it's a perception that your client would like to change by being able to have you know mark the result of the service Certainly existing lay of a land it is suggested to me that this thing you just pointed to me struck me like a counted against you and not for you Well, I would suggest that as long as there are some banking services that are associated there's no again There's no limitation in the applicant's applications to banking services for local It just doesn't say that consumers assume that banks offer insurance or that insurance companies offer banking services Well, your honor. I would suggest that if you look at the totality of these documents They say that the very purpose for this rebranding was to capitalize on that customer perception That was the very reason and when you measure the confusion the snapshot before your client changes the world The world what you're showing us here is what the world was thinking when your client decided that it wanted to somehow change thinking Was that the ordinary bloke doesn't associate With the savings bank handing over the savings bank Right that's what that's what this research proved But I think the research also proves that it will associate a bank with these other services as long as it's not characterized as a local savings bank No, I think what it shows is that you can Convince consumers that you can offer both things if you change your name It doesn't show that consumers will assume that you offer both things if you change your name I will again, I suppose I would just have to respectfully disagree disagree I think that the totality the evidence points in the direction that was the very purpose for the name change Uh, I see that I'm down to very much fact learned. Thank you. We'll You consumed your rebuttal time, but we'll restore it and If you could give Mr. Pearlman an additional three minutes should he need to use them? And our time will be almost May please the court Your honors I represent first Niagara United States the first issue I'd like to go to if I could as the issue that we've all been discussing and that is the relatedness of Banking and leasing to insurance the trademark trial and appeal billboard address that issue and they found that there was insufficient evidence In the record to show relatedness between those services. I think judge Dyke's question really focuses on on what's important here And that is that it's not enough to show that a single business might offer both banking and insurance the test really is Do consumers believe that If a insurance company has a particular name and some bank has a particular name that the services then Eminate from the same entity that's what this court decided in the in rate course having conceded that distinction Then you have no complaint with the board's entire Outcome right you don't feel that you have any particular right To use the marks with respect to insurance services. We do your honor and we have cross appeal down that the reason for our cross knowledge the distinction Why doesn't that distinction? Cut against you pretty heavily when you wish to move into the Insurance coverage for this particular mark sure The reason for that is that in the insurance area There is a geographic separation here There the 12th Dupont factor is is there a real likely hoodie in the in the real world that they're being confusion And the electric design case this court said that we're not concerned with mere theoretical possibilities We're interested in commercial same geographic separation exists for banking services as for insurance services Why do you feel like there's some different effect that it has in the insurance area? I don't think that the geographic difference has a different effect in the insurance area I think it should be given the same effect that it was given in the banking and leasing area I think the mistake that the TTAB made here Is when they were looking at the factor of channels of trade and customers What they did is they said we have to assume that all channels of trade are available because there's no limitation in my clients Applications the case that they cited in making that decision Was a case where the opposer had a registration? That's not the case here in this case the opposer does not have a registration So you have to look at how the opposer actually uses the mark for insurance And that approach is within the explicit wording of the second Dupont factor Which says the similarity or dissimilarity and nature of the goods or services has described in the application of registration Or in connection with which a Mark is exactly the same For purposes of insurance and you're plenty of conceded that And the example of the fellow with the boat. I mean there's there's direct overlap of the service right for a Diminimist number of customers in that case of the yacht the yacht went to a it went to a It was based in Canada and so it was moved But the TTAB explicitly found it's a finding of fast. Yes There's not a whole lot of talk about this you know relatedness confusion issue even on insurance from which customer we worried about being confused Well In for example if you if you're a client in Niagara Falls United States starts advertising on the television and whatnot first Niagara for insurance services Right The folks over on the other side of the falls in Canada are going to see that advertising are they going to get confused? Because they've been inundated with advertising on their side of the fence by first Niagara Canada with exactly the same mark Well, there's absolutely nothing in the record to indicate that anybody in Canada has been confused by any advertising from my client the TTAB characterized that type of advertising as spill over advertising and yeah, but it's real It happens anywhere Sure, but there's nothing in the record to indicate that is it that anybody is confused the people who are in Canada Who see that advertising? The first Niagara Company and the test is likelihood of confusion right? That's right And the board here found there was a likelihood of confusion with regard to insurance services They did and they based that on the fact that there was no limitation in channels of trade But when they talked about advertising The TTAB minimized the effect that advertising would have and said the spill over was minimal Between the countries and that's the type of thing that's expected before Insurance is a little a little different in the sense that people could own property in both places and wish to ensure it in both places and therefore Have some reason to do business with insurance companies both in Canada and the United States and therefore there could be Confusion right? Well, it is true that You know as your honor says somebody can own property in both countries But mostly how first Niagara Canada works and this is at page 186 of the record they work through sophisticated brokers There was a question asked it Mr. Mavis deposition he's a principle of first Niagara Canada Well, do you deal directly with people and at page 1886 of the record he says well That's really not done. It's done through brokers sophisticated broke what what case Ours if we have where there's an identical mark or substantially identical mark And the same type of business That the board should be reversed. I found it like a confusion I can't cite a case to you and I think the difference is that in this case we have a Canadian licensed insurance company and a US licensed insurance broker of brokers on both sides I don't think that situation arises in any existing case It's not likely that a broker in the United States is going to be confused about which country to go to to refer business for a Canadian cottage And there's really no likelihood that there's going to be confusion if somebody going to first Niagara Canada and asking for insurance to me I'm the United States. I'm not going to have a confusion going to happen later on if the decision stands because your clients can be able to To use It's mark on Call it banking services and have spill over advertising you'll be able to argue we're a full service bank You don't have to you can even say we're a full service bank it offers insurance He will be using the mark with respect to insurance that addles spill over into Canada and the Canadian folks will be running their ads on television saying we sell insurance What's the customer supposed to think who provides what services well If both the president has in the case of sport and way in essence because of the geographic overlap the border issue Well, the TTAB found is a finding of fact that the geographic scope of these services is not overlapping That's a page 829 of the record to take factual finding But it was suppose that's true I mean you can still have likely to the confusion even if there is absolutely zero Competition between the two companies right? You could have confusion, but in this case they're between businesses that are in different countries It's not the same as if you had a business in Pennsylvania and a business in in New York and there was confusion within the United States Here you have because of the highly regulated nature of insurance and the TTAB pointed to the highly regulated nature of insurance Here you have a situation where We can't perform their services. They can't perform our service. It's a point is the The fact that they're barred from competing with each other doesn't solve the confusion problem likely to the confusion problem Because there are cases in which there was no actual competition for customers and yet Weve held that there can be a likelihood of confusion under those circumstances So you keep emphasizing the Diminimous nature of the competition, but that doesn't answer the whole question It is true that that does not dispose of the issue per se but as the TTAB found The lock and this is a quote from the TTAB this lack of commercial injury or opportunity for such as not Dispositive per se which is exactly what I'm saying, but it's a significant factor in this highly regulated Industry so what you do is you go to the 12th to contactor which says You know what is the likelihood of confusion is it Diminimous or is it substantial and real and in this case The TTAB all of their factual findings on insurance and on banking found that the Rillius is very little I think the term of the TTAB was extremely limited potential for any commercial confusion And I think the only reason the TTAB found in favor of first Niagara Canada and the insurance issue is they misunderstood The channels of trade and thought that they had to look at all channels of trade Whereas in this case since the apposer does not have a registration under the second dupe factor You have to look at how they actually use the mark and how they actually use the mark is a self Canadian brokerage services That's a different service from what first Niagara United States Is selling I would like to raise one issue about reverse confusion because mr. Fakler had had raised that That was an issue that was not argued or raised By first Niagara Canada in front of the TTAB They didn't raise it in front of the TTAB the first time they didn't discuss it before this court when they were up here Last time they didn't discuss it with the TTAB when it was remanded and it's raised for the first time on appeal here This court in the Hoover case Declined specifically in that case to Address an issue when it hadn't been brief when evidence hadn't been admitted It just had not been addressed by the TTAB Simply because first Niagara Canada changes counsel between the last appeal and this appeal Does not mean that they should be able to come up with a whole new set of arguments that the administrative agency never had an opportunity to look at So reverse confusion should not be considered we've addressed in our brief on the merits Why we don't think for first confusion exists here, but it's an entirely new issue raised and And it should not be raised for the first time If I can I would like to go back to banking just for a moment Again on the relatedness issue your honors had asked questions about what the record evidence was The record evidence here is there is no bit of evidence anywhere in the record That despite the fact that first Niagara Canada has used the first Niagara name since 1984 They've made no move to go into banking. They've made no move. They admit they Art in leasing of any type at all and they've made no move to do that Mr. Maves testified at page a 245 of the record don't they have a right to protect the integrity of their mark Even if there's not a exact correlation with their services Well, I guess that would depend on on what exact Where relation means here the TTAB found that there was really no relatedness between the banking and leasing and the insurance on the other hand And the facts bear that out that there's financial services. I mean there's a a large umbrella that could sweep them both in I don't think so if we look at the particular facts here relating to financial services They have no electronic banking and that's what first Niagara U.S.'s application was for that's it page a 245 of the record They're not licensed to provide banking services in any country They mentioned in annuity they sold one annuity. There's one annuity in the record. That's a page a 181 that was an annuity that was sold to a Mrs. Kutterbach who's from Canada Absolutely no evidence that there is any annuity of any type sold to anybody in the United States Doesn't mr. Fackler have a point a small company Could easily get kind of swept aside by a large company who takes their mark and with its superior Advertising capability kind of swamps the market with That mark being used in a different context suddenly their use of the mark is completely eroded That's the reverse confusion argument That's the one that's being raised for the first time on this appeal We've cited cases in our brief we've addressed reverse confusion Insighted professor McCarthy and the checkpoint case out of the third circuit And what the checkpoint case and professor McCarthy say is that there is not Reverse confusion where the services are not competitive and I think certainly as to banking and leasing the services are not in any way competitive I don't think they're competitive for insurance because of the different regulatory schemes that the two clients Operate under second the respective markets are separated. We have that here except for a couple of examples of US Citizens who have property or some kind of nexus to a Canadian Insurable interest and finally that the advertising is directed at different types of purchasers Here's what the TTAB said about that third factor in advertising They said that first an agrocanitis Quote advertising is directed at Canadian purchasers and there's only minimal spill over in the New York Of its advertising on a single Canadian radio station And they also said that because of the very likelihood of insured or very nature of insurance brokerage services It's unlikely that a US resident who hears advertising For their services or vice versa would inadvertently go to the wrong country because they're a Canadian insurance broker Where US insurance broker the services are separated? They're not related and For that reason we would ask that this court affirm the TTAB's finding as to banking and leasing applications That was 12 out of the 15 classes in the Six applications and reverse as to insurance because using the paradigm that this court set out in elect electronic design in that case There really is no likelihood of confusion and actually to get back to the generators question about Can't there be confusion even in the absence of competitive products In the electronic design case more of a form of harm akin to delusion into Some erosion of the value of the mark right of course in this case first an agrocanada has admitted that its marks not famous So the normal delusion principles don't apply it's why I said akin to delusion sure But in the electronic design case this court said that the confusion you're looking for is purchasing Confusion confusion by purchasers is a TTAB found the Chances or the opportunity for that type of confusion is in the words of the TTAB quote Extremely limited for that reason then we ask affirmance on the banking and leasing decisions reversal on the insurance decision Hey Thank you for all my Mr. Backler You have your three minutes of rebuttal time Thank you Respect to the reverse confusion issue First of all I would point out I think that You know Many if not most of the arguments raised by applicant were not briefed in the trial briefs below I think it's safe to say in candid to the court Which ones in particular since you're doing a 10 for a tag here Well, you want to I don't want to I'll retract me as true that you didn't raise this issue the Reverse confusion below right your honor. It was not expressly argued as such separately from forward confusion That is true under under what guys was it argued? Well, I would I would I would say that the the best we could say about it is that the facts that we're being this Present the classic case of reverse confusion. We're sure that that happens all the time the facts present in arguments Somebody could make and lawyer says I'm not gonna make that All of these to waver Well, I would say though your honor in this instance Though and do you have any specific example of your adversary here presenting arguments to this court can work present below You made that challenge just a moment ago I can't and really was not my purpose to get far down a tip for tat with the with the with the limited time that I have You'll take that one back. I will take that one back to the purposes of the the rebuttal But what I would your client gonna do When this larger entity starts advertising all around Niagara Falls and well-known the they're a full service financial institution Providing full-ranging services including insurance of all the hurt kinds Your honor that indeed has been happening during this time And that is the reason not so long as they don't actually slap there in the First Niagara mark on the insurance service. They they're gonna be able to make talk that talk right? It all depends. I would say that you know, and again, this is in a right to use context not in a right to register context I believe your question But certainly to the extent they use the umbrella mark of first-night ever financial group in connection with insurance services I don't think that they're allowed to do that Is the case pending right? Indeed you're on there is a case pending indeed you're on there's a case pending But with respect to reverse confusion which has been fully briefed at least at the appellate level We did argue it from our opening brief on and the other side has had the opportunity to respond um Emory shallow oil is the case this is a federal circuit case. It is not only is it a case involving This very type of harm and it describes the danger to a smaller company in having its goodwill and ability to control Secondary meaning taken away It's a federal circuit case or unlike the checkpoint case and it also specifically notes that where that non competitive even non competitive And even goods or services that are not intrinsically related Can still cause likelihood of confusion particularly where the marks are identical as they are in this case And there's some in the last episode should and up-susur be allowed to mount an opposition Against a mark this proposed for a particular use when the opposer has never engaged in that line of work and never has no made no showing that they proposed to Let's assume for purposes of argument that this is leasing Okay, that's not let's assume for purpose of our own a year client and never sold an annuity Never ever mentioned to anybody that they were providing any other than pure insurance services. Yes Well, I think what's what's wrong with a presidential ruling of this court this has such a person lack standing to oppose The mark someone seeking for other use something where they're using it because I think that runs directly consular to this Shell oil case Which specifically says and it sites to a board the K2 decision K2 decision before the board You had goods that were skis and cigarettes and there was a likelihood of confusion found Shell oil approved of that rationale Particularly in a reverse confusion setting where you have a smaller Senior user because that is precisely the harm the harm is different than saying they might expand into that area the harm is that People are they're going to lose control of the distinctiveness of that it's true as judge Raider mentioned It's almost akin to dilution Although it is different and it's recognized in shell oil specifically even when goods are not found to be related So or competitive so check point I would argue is an opposite it's in its in the wrong circuit and shell oil is directly runs directly contrary to that Thank you mr. Backlar. Thank you our final case this morning is fortunate versus plane