Legal Case Summary

. But moving to the first and most important issue, what is happening here is a legal comparison between the marks. It requires an assessment of the legal effect of the earlier mark compared against the later mark. It is not a factual comparison as to whether or not the marks would have the likelihood to confuse the jury, or even simply if consumers would think that they are, in fact, the same kind of consumer impression. Rather, the test, as every court has formulated it, is whether or not the two marks are, in fact, legal equivalents. And I think that the other. So, under your view, a district court is finding their reviewed in the Court of Appeals denovo? Yes, Your Honor. If this is a question of why I think that finding of law would be reviewed denovo. Now, factual determinations that could be made subsidiary to that. But in this case, the key issue would be reviewed denovo. Yes, Your Honor. So, isn't the key issue the commercial impression of, and meaning how these marks were used and the commercial impression? You know, I don't think that's the ultimate inquiry. That's one of the factors that will be considered, but that ultimately what the court must evaluate is whether or not they have the same legal effect. And I think an example might highlight this distinction. In the blueberry, if it at page five, the first example we give is the example of the American mobile phone paging. On the left side is the earlier mark, American mobile phone. On the right side is a mark that the company used three years later, American mobile phone paging. Now, if this were put to a jury and the sole question were, do these two marks seem to have the same consumer impression? I think many juries would say that they do, because the two marks use the same kind of font. They have the same star, they have the same stripes. I think a jury would likely think that these are from the same company and give off the same impression. However, the T-Tab, the trademark trial and appeal board, viewing this as a question of law, denied tacking in this case, and the Federal Circuit affirmed. I think that's the right answer and the right result. And the reasoning behind that is what happened in between these two marks

. In between these two marks, the competitor arrived on the scene using the mark American paging. And the determination was made that American paging and American mobile phone are different marks. So the second in time, the American paging folks had the right to use that mark. But if tacking were allowed in this case, the effect would be a few years after the fact to squeeze out the American paging company, even though they couldn't have known at the time that the American mobile phone was later going to try to register and then use the mark American mobile phone paging. So I think this all goes to show that if this is put to the jury, it's going to be a very different kind of result. And the inquiry can't simply be, if a jury goes. I'm sorry, I lost you a little bit. Why is it going to be a very different type of result? Well, you know, my submission is that a jury looking at these two marks, if instructed, just do they have the same consumer impression? At least many juries would find that they do. What the jury is not asking is whether or not they have the same legal effect in the marketplace. Yeah, the jury going to be instructed in any way on what you just told us was the reason. And we should view those as differently. I don't think it would, Your Honor. I think the jury, when this is put as a factual question, as happened here, the jury has simply asked, do these have the same consumer impression? The government's position and the response position in this case is that's simply the sole inquiry. So they have to be. Wouldn't there be evidence or instruction on, you know, consumer impression? You have to take into account what happened between these two marks? Well, I suppose Your Honor, that an opponent's attacking could try to introduce evidence to that effect. But the inquiry would not be looking to the legal effect between the two marks. So there's no evidence. It seems to me that it's rather critical to the contrast you draw. I mean, what you're saying is the jury might get it right or the jury might get it wrong. And by the way, I'd say, well, the Federal Circuit may be got it right or the Federal Circuit got it wrong. But in terms of what the factual issues are going to be and those would include what's happening between the two marks, it seems to me that jury's got information just the way the Federal Circuit. I don't see the difference between the two other than you think the one result is right and the other one

. Well, I think the nature of the inquiry, if it's put to court, is different than just saying, do these marks look alike? The nature of the inquiry is what is the legal effect of the earlier mark in the market place? Well, it doesn't seem to me the question for the jury is whether they look alike, but whether they create the same commercial impression. And it seems to me the instructions to the jury would say these are the two marks. Now, what you want to know is that after the first mark, there was a competitor who came into commerce called American Paging. And then the mark was changed from American mobile phone to American mobile phone Paging. Do you think that that second mark creates a different commercial impression than the first one? And I think a jury would say, heck yes. Well, you're on it. I think what a jury is not doing in that circumstances. It's not taking the perspective evaluation of the earlier mark against the later mark, configuring out just how much of a difference of a change there was. Well, but suppose that an important part of the case was that when the American Paging came along for a few years, everybody in the United States knew that. The first mark, not many people knew about, that seems to me would be critical to the attacking inquiry and that the consumers knowledge, the consumers' expertise in knowing how consumers behave, how consumers think is a messy value. Well, there are a few things about that, Your Honor. I think first off, that the attacking inquiry is not going to look just at these sole particular marks that happen to exist, but a court is going to take a broader perspective and to think about what are the whole range of marks that would be preempted by the earlier and the later to figure out if what's happening, if this kind of attacking is reasonable in the circumstance. But I think there's an additional reason to think that this should be better viewed as a question of law because similar to as the court held in Markman, this would have starry decisives effects such that when a court makes a determination as to attacking, that would have application in future cases involving those same kinds of marks. If it's viewed as a question of law, one could get different results using the same marks across different cases. And I think this is the kind of if it's viewed as a question of fact. You get, Your Honor, my apologies. If it's viewed as a question of fact, one could have different results. Any facts that you think a jury could determine here or should determine in this kind of case, in the attacking case? No, Your Honor, I think the whole inquiry should appropriately be submitted to a judge. If a judge thought that there were particular things that would be useful as advisory questions, I think it could be submitted, but I think in the usual case, a judge would make. How is the judge supposed to know that what a consumer's impression would be? Well, you know, I generally just to figure it out. Some evidence would have to be presented to him or her, right? It's possible, but I think that's similar to what how a judge in the context of claim construction would understand what one skilled in the art would to be. They would look at the relevant considerations

. They would put themselves into that frame of mind, and then they would make the appropriate determination based on all of the relevant factors. And in making that determination. I thought that the Court said, if we're trying to type these things, claim construction, this construction of a written instrument, that's the kind of thing that judges do all the time. But to determine whether there is, whether the magic word, same, continuing to commercial impression, two consumers, then the one that's better equipped to make that determination of people who are consumers, not jurors. Well, you're on, I think my response to that is that our fundamental contention is that inquiry, just what the impression of consumers is not the decisive or ultimate determination here. The ultimate determination. But there was every one but statement of it is folks that language, even then the Federal Circuit, the Federal Circuit, the Federal Circuit, has an additional factor which is the all-invisual appearance. Do the two marks have the same all-invisual appearance? And what I think that shows is that the courts are not looking at this as a factual factor. Well, all-invisual appearance shouldn't that also all-invisual to whom? To the people. People like to buy these products, not to the judge. Well, you know, I think what both of these factors are showing is that these are proxy ways that courts are looking to determine if we can view these same, these two marks as legally equivalent such that we can use this legal fiction of tacking that provides a very valuable benefit to the proponent of tacking that they can effectively go back in time and alter their marks after the point. And so this is a constructive use theory as the Ninth Circuit, in particular identified. In that kind of determination, whether or not that legal benefit would flow, I think it's the kind of thing that is appropriately put to a court because it's going to turn on a judgment not just of these marks, but what the relevant policy considerations are in the case, balancing the interest between the rights of the individual trademark owner to modernize or polish up their mark, as against everyone else in the marketplace who has an interest in not having marks expanded unduly years after the fact in a way that was entirely unpredictable. But as I understand your brief, you say, no, the test really isn't same continuing commercial impression to consumers. You're saying it's the scope of the scope of the old and the new, and you can't use tacking to expand what the old would have meant. But if the answer to that is that the question can't, if you're saying that the old one was the first use, then whatever the scope of the old one is, is it, and you can't add to it because of what you did later? I think that's right, Your Honor. I think what I point is that whenever a mark has changed, there might be some minor alteration and a court must make the determination is to the amount that the preemptive scope have changed. Is it material, is it substantial, or is it the kind of small modernization that the tacking doctrine is designed to permit such that the mark owner can make these small alterations? And that's what's ultimately the legal judgment. A court must look to see how much of a change has been made in the later mark. Understand that both, how much of a change there is, how close the change in those factors are to the, to the earlier mark and then consider how that applies in that particular circumstance. I would say, what I would say, all they have to know is, what was the scope of the original mark, the one that counts, the later change, can't expand what was the original. So that seems to answer

. What you say, you seem to say, this same continuous, more so that's not it. It's what is the scope of the old mark and what is the scope of the new mark? Yes, sir. And if the answer is that the new mark can't go beyond the scope of the old, that's the end of that inquiry. Well, I think that's right, Your Honor. That is our position. I think that's a determination, though, that only a court can judge what the legal scope of those two marks are, because that requires a prospective assessment as to the range of marks. But what I was trying to suggest is you would never get to what the second mark scope is because what the scope of the first one is determined. Well, and I think as we put in your honor, the scopes have to be virtually identical. We recognize that there could be some difference in change because whenever a mark is changed, there will be some daylight between the two. We recognize that that is inherent in tacking, that there will always be some change, some degree of squeeze out. So the judgment determination is how much of a change, how much of a squeeze out is permissible in one case such that the two marks can be viewed as legally the same mark to allow the tacking doctrine to operate. As another example, just to point to that, I think might come at this the opposite way, this in the red brief at page 50, there's the example that the respondents provide of DNJ master clean. And this is an example where tacking was, in fact, allowed. And that context, the original mark was the mark service master. The second in time, competitor came on the scene using the mark master clean. The third in time, then the service master altered their mark, to service master clean, and used that mark to exclude the intervening competitor, the master clean competitor. And the court permitted tacking, again, viewing this as a question of law. The reason it allowed tacking, in that particular case, was it sought to understand how close the later mark, the master clean mark, this intervening mark, was to the rights that the trademark owner had in its original mark of service master. And it made a judgment finding that it was reasonably foreseeable that service master would adopt the mark service master clean, and thus there was nothing unfair in the marketplace to excluding master clean, that the implications of tacking, in that case, were, in fact, appropriate. And I think this further shows the kind of legal determination and reasoning that it turns on the interest of all the market participants that is uniquely situated to the role that a court can play. What is it that you think a jury could not be instructed on in addressing that same consideration? What I think a jury would not be able to do the way that a court can is a jury cannot understand what the legal significance of service master compared to the legal significance of master clean. And what I mean by legal significance is what is the whole range of marks out there that each of those marks exclude, and then making the comparison to figure out just how much of a change has occurred in the marketplace, and then of that change, how close is that to the original mark, such that could it have been known or foreseeable to the party who came in second on the scene, that their mark would maybe later have been foreclosed from the marketplace

. That's the kind of complex determination that is not put to a jury when tacking is viewed as a question of fact, and I don't think is the kind of complex determination that requires these prospective judgments that we typically think is, as soon as not the kind of historical application of law to fact that would be in the infringement context or in the other circumstances where we would think that a jury would be appropriately suited to resolve the question. Additionally, though, we think that the pragmatic considerations bear heavily on this point. As I said earlier, the starry deciseness implications of treating this as a consistent question of law is similar, I think, to what the court held in Markman. Additionally, though, treating this as a- You think consistency appears in the judicial opinions that have treated this as a question of law? I think what is the judge does he get cases and look at what other cases have said is tackable and what is tackable? Yes, Your Honor. In virtually every case, and certainly every case that is true, this is a question of law. Courts will point to the three or five or ten most analogous examples and say, this is the extent of the change that's been permitted, and this is the extent of change that's not been permitted. And I do think this is one of those sorts of rules where it really gains content through the examples, through the past examples, illustrate just how narrow this doctrine is. But I guess that the starry deciseness point is minimized, though, if you appreciate the fact that these marks are each one as sort of a sui generous. I mean, I don't know what presidential value I can get from looking at, you know, the dolphin changes on page 50. The fact that there is a case about the lock tight corporation behind. I mean, I'm sure some are similar, but it seems to me that each one is significantly different. So I don't know the significance of the starry deciseness in this context. Well, I think it's significant in two ways. The first way is it's significant for the actual mark that is before the court. So if a authoritative court makes that determination, that would control in future cases involving those same kinds of marks. And when you have repeat litigants who often are having to protect their trademark, it's the kind of circumstance where having consistency from case to case even when they are going after a different infringer or a different market competitor, I think it's important. So it's similar. Even the ones you point us to do not impress me as establishing any kind of look on page 50, dolphin to dolphin. And the second dolphin is stylized in cursive writing, right? And that is upheld as tackable. Then on the next page on 51, the second one from the bottom, it's the opposite progression. Turbo in cursive goes to turbo in capital letters and that is not permitted. I cannot for the life of me decide why the one should be permitted and the other should not be permitted

. Well, I think one and I much rather blame it on the jury than on a court. I think what happens in this presentation, one thing I point the court to is that in 1999, the American mobile phone case that we began discussing set forth just how narrow this tacking doctrine is. And the cases that have followed have huge very closely to the narrowness of this doctrine. I think the presentation here is a bit, gives a different impression because it takes cases that were prior to the American mobile phone era when tacking was used in a far more broad array of circumstances. I think when you look to the post 1989 cases, you find incredible consistency that tacking is denied and all but the most extraordinary case where the marks truly are effectively identical and have the same legal continuing impressions. So I do think if you look to some early cases, you see different results, but looking to the modern era of cases, there's far more consistency. And further to the extent that any sort of predictability can be established by treating these marks as having legal authoritative effect in creating that kind of predictability to the marketplace, I think is better than the alternative of leaving it to simply a case by case jury by jury determination. The next point I'd like to make is this has always historically been treated as a question of law for a court. We've taken, we've looked back in every tacking case from the early history, goes back to the early part of the 1900s, up to the modern era, viewed this as solely a question for a court. And there was never any particular role for a jury in making these determined. The problem there for you, which is, although soldier cases were at a time when equity and law were separated, and there were no rights to jury trials in equity. So, one set distinction was done away with, you don't have the plethora of cases that you? Not all the cases, that's correct, Your Honor. But some of the cases were decided as damages cases and were decided at law and did not involve any jury determination. And you don't know how many of those cases the parties agreed to have been struck? Well, that's right, Your Honor. We do not know. But even the cases that did proceed as equity actions, there was never any view that this was the kind of factual determination that a court was taking substantial amounts of evidence on. Instead, the courts effectively compared the earlier mark to the later mark. They sometimes looked at precedent. They consulted the relevant policy considerations. And then they made a judgment. So, even though it may have proceeded in equity, and I agree, it doesn't shed dispositive light on it, the kind of analysis in the courts. Well, I doubt very much those in those earlier cases that lawyers were thinking of consumer reports and pictures and videos and all the other things they presented today, I agree with you

. So, the cases were simple by their nature back then. But, Your Honor, in court, the courts that today consider this a question of law apply that same kind of analysis. They look to the marks. They look to the relevant precedent and the guidance that can be drawn from those cases. And then they make a determination taking all the relevant considerations into account. So, I do think that same kind of mode of analysis that was used historically is still used today in the Sixth Circuit and the Federal Circuit and the courts that view this as a question of law. So, that consistent historical approach at least, I think adds some, lighter add some depth to our contention that this is appropriately viewed as a question of law. As we alternatively argue, there are also, I think, reasons to think that this is a doctrine that has equitable underpinnings that this is meant to establish fairness for the trademark law. It's similar to unclean hands and latches that also pervade trademark law. And if this is viewed also as an equitable question, it certainly would be an issue that goes to the judge and not the jury. I'll reserve my time for a moment. Thank you, Council. Mr. Van Nenbach. Thank you, Mr. Chief Justice, and may it please the Court. The issue of trademark tacking should be treated as a question of fact for two principal reasons. First, the applicable standard examines whether two marks convey the same commercial impression. Not judicial impression, commercial impression to be viewed from the perspective of the relevant consumer. A jury with its collective consumer inside is always going to provide a better proxy. Why don't you deal with the example that the chief Justice presented of the American packing company, or that was discussed earlier? What would the jury do with that knowledge? One critical consideration in the American mobile phone paging case is that in that case, the two marks that were sought to be tacked were, in fact, used on very different products. And that's the type of extrinsic evidence that should be considered by a jury in determining whether there is truly a continuum

. I'll take that a step further. In the Van Nenchrodde case, in the Federal Circuit, which is the first circuit to deem it a question of law, a critical consideration there was that the third-in-time mark had effectively purchased a first-in-time mark in order to try and leapfrog a second-in-time mark. In reality, in that case, the two marks that were sought to be tacked were used by two different parties on two different sets of products. To allow tacking that case would be illegal fiction, clearly. There's no continuum. Although the Court there decided to treat tacking as an issue of law, it could have treated as an issue of fact and still decided the issue because it's one of these outlier cases. And it can be taken away from the jury, you're saying, if no jury could possibly find tacking appropriate, the Court could issue judgment as a matter of law. Sotomayor, thank you. Absolutely, Justice Scalia. The judge can always set the out-of-bounds of what is permitted under the tacking doctrine. I also agree with your honor that if you look at the case law dealing with tacking and by and large all of these cases that were cited in the papers were decided by judges due to procedural posture of the case, there's a great amount of inconsistency. And it highlights the fact that seeking a body of precedent in this case is completely impracticable. Predictability in tacking law is not achievable, but we should aim for is reliability. I wish you would need some predictability for a judge to disallow a jury verdict as a matter of law, right? Yes, that's correct. I mean, you got to admit there's some predictability. There's always some predictability. But it's very challenging still in tacking cases. Well, you emphasized that the consumer perspective is what's important, but there are other aspects of tacking as well that seem more suited to a court than to a jury. Well, the critical test again is commercial impression, which is a consumer standard. The other point is that it involves a great amount of extrinsic evidence, which is evidence-based, which should go to the jury. This case provides a perfect example of why marketplace context and extrinsic evidence is so critical, because in this case, the jury found priority on the basis of a 1994 advertisement, not just upon a single phrase, Hana Overseas Korean Club, but upon an advertisement that contained the Mark Hana bank seven times in the Korean language. So it could be viewed as a very simple priority case

. The jury heard evidence that this advertisement was published in Korean language publications, that the relevant consumers of both parties were by and large Korean Americans who both spoke and read the Korean language, who viewed this ad as being a Hana bank ad. It's no different from a bank for say, sorry, an advertisement for say, Wells Fargo home loans simply because it advertises that product doesn't mean consumers won't view this as an ad for Wells Fargo. If we write this opinion, we have to have in the back of our minds what effect it will have on likelihood of confusion, the likelihood of confusion issue is there some way that we should treat this as quite discreet from that. Just Kennedy, the likelihood of confusion issue is not part of the question presented. I recognize that. As a practical matter, I think that the elephant in the room or something like that, well, I don't know what. Quite possible. Metaphor. Well, if you look at the circuits that have adopt attacking as a matter of law, they've only done so. This is the Federal Circuit and the Six Circuit, because they also treat likelihood of confusion as a matter of law. And picking up on that reasoning from Van Dynchrode, every other circuit that has looked at it has also fallen in locks that with how they treat likelihood of confusion. The majority of 10 circuits obviously treat likelihood of confusion as a factual matter, again, because it hinges very heavily on consumer impression. All circuits send likelihood of confusion to the jury for the termination. The individual likelihood of confusion factors are treated as issues of fact. One of those factors is a comparison of the two marks just as you have attacking. And that comparison is also always treated as an issue of fact. The question for me. The question for me is that the question really is what was the scope of the original law and the labor one? Yes, Justice Ginsburg. The preemptive scope argument is one that did not arise until the reply papers. It's inconsistent in our view with the applicable standard, the commercial impression standard, because the petitioner here is promoting a prospective analysis of the preemptive scope of the marks, which is in contrast with the retrospective analysis we have attacking, where we essentially look at two priority dates which have already occurred. It's a rearview test. So the entirely inconsistent furthermore, the scope issue is one that's already embodied in the likelihood of confusion test, because there essentially compare two marks for their respective preemptive scope, and that is by and large a task for the jury as well. So the the the the novel preemptive scope argument rings hollow. The issue presented here is a decidedly narrow one. Should this be an issue of fact or one of law? It is a similar issue that was presented to this court in the Mark Marken case, but it's quite distinct in the sense that Marken dealt with the issue of patent claim construction. And as you're out of noted, that essentially involves the construction of a legal instrument. It's a highly sophisticated analysis. And in that case, the court opined that it was appropriate to take this issue away from the jury because it was something that the judge simply did better. It was too sophisticated because a nuanced interpretation of language and a patent claim could have a quite dramatic impact on the scope of the patent. Here in contrast, we're talking about consumer impression. It's a relatively simple inquiry and a body of jurors, what it's collective insight, is going to provide a better perspective than a single judge sitting in relative isolation. The not about obviousness in patent law. That's that I take it is also a legal issue. Obviously, this is a factual issue, as I understand. And also the issue of the ultimate issue infringement where we are to compare a patent device against an accused device is ultimately a factual issue for the jury, just as it is in trademark law where we compare two marks for potential infringement. Generally speaking, comparative analysis is often treated as a factual issue, whether it be a comparison of handwriting samples, et cetera. Petitioner also argued that there is a fairness element to the attacking analysis and go so far as to suggest that this is inequitable defense. This is not an equitable defense. This is something that goes to the affirmative elements of the plaintiffs case, those elements being priority and likely of confusion. Tacking is just one means of defeating the priority component. So, the sense that simply because there is a fairness component, there's not turn this into an equitable defense. Equitable defense is a rise once the plaintiff has established its affirmative case and effectively excuse the defendant's conduct. Here again, we don't get to the point of considering defenses like you would have latches, unclean hands, et cetera. In this case, I should note there were findings specifically of latches and unclean hands

. So the the the the novel preemptive scope argument rings hollow. The issue presented here is a decidedly narrow one. Should this be an issue of fact or one of law? It is a similar issue that was presented to this court in the Mark Marken case, but it's quite distinct in the sense that Marken dealt with the issue of patent claim construction. And as you're out of noted, that essentially involves the construction of a legal instrument. It's a highly sophisticated analysis. And in that case, the court opined that it was appropriate to take this issue away from the jury because it was something that the judge simply did better. It was too sophisticated because a nuanced interpretation of language and a patent claim could have a quite dramatic impact on the scope of the patent. Here in contrast, we're talking about consumer impression. It's a relatively simple inquiry and a body of jurors, what it's collective insight, is going to provide a better perspective than a single judge sitting in relative isolation. The not about obviousness in patent law. That's that I take it is also a legal issue. Obviously, this is a factual issue, as I understand. And also the issue of the ultimate issue infringement where we are to compare a patent device against an accused device is ultimately a factual issue for the jury, just as it is in trademark law where we compare two marks for potential infringement. Generally speaking, comparative analysis is often treated as a factual issue, whether it be a comparison of handwriting samples, et cetera. Petitioner also argued that there is a fairness element to the attacking analysis and go so far as to suggest that this is inequitable defense. This is not an equitable defense. This is something that goes to the affirmative elements of the plaintiffs case, those elements being priority and likely of confusion. Tacking is just one means of defeating the priority component. So, the sense that simply because there is a fairness component, there's not turn this into an equitable defense. Equitable defense is a rise once the plaintiff has established its affirmative case and effectively excuse the defendant's conduct. Here again, we don't get to the point of considering defenses like you would have latches, unclean hands, et cetera. In this case, I should note there were findings specifically of latches and unclean hands. And the judge appropriately took an advisory verdict from the jury. Ultimately, when the case was appealed to the nine circuit court of appeals, the court only commented on the attacking component of the defense judgment. So the latches and unclean hands components are in play as well. Are there any of the features that your friend says have to go to the court that you think could not be addressed in jury instructions? I think certainly all of these elements could be addressed in jury instructions. In this case, it was the petitioner who proposed the instruction. The proposed instructions did not even make reference incidentally of the legal equivalent standard that they're now promoting. It only mentioned the commercial impression standard and the judge issued instruction which was near identical to the one sought by the petitioner. In certain cases, in some of these outlier cases, a judge could certainly instruct a jury to consider things relating to, say, foreign equivalents. Whereas here, we have a mark that was used in a different language. It could instruct the jury to consider specifically the relevant group of consumers. To a large extent, those types of instructions already embodied in the likely of confusion instructions. Would you repeat what you said about the other defenses latches and what else? Latches and unclean hands. And those are still available on remand. Potentially so, yes, they've not been ruled on by the Ninth Circuit. If the court has no further questions, I'll simply point out that both the intellectual, sorry, the international trademark association and the American Intellectual Property Law Association, as well as Professor McCarthy and his treatise on trademarks, agree with us wholeheartedly that this should be an issue of fact and I would ask that the court simply affirm the judgment below. Thank you, counsel. Mr. Harrington. Thank you, Mr. Chief Justice, and may it please the court. I'd like to start by responding to petitioner's argument that the attacking inquiry is a legal inquiry only. Now, every court that has considered attacking has agreed that the standard for attacking is whether two marks create the same commercial impression

. And the judge appropriately took an advisory verdict from the jury. Ultimately, when the case was appealed to the nine circuit court of appeals, the court only commented on the attacking component of the defense judgment. So the latches and unclean hands components are in play as well. Are there any of the features that your friend says have to go to the court that you think could not be addressed in jury instructions? I think certainly all of these elements could be addressed in jury instructions. In this case, it was the petitioner who proposed the instruction. The proposed instructions did not even make reference incidentally of the legal equivalent standard that they're now promoting. It only mentioned the commercial impression standard and the judge issued instruction which was near identical to the one sought by the petitioner. In certain cases, in some of these outlier cases, a judge could certainly instruct a jury to consider things relating to, say, foreign equivalents. Whereas here, we have a mark that was used in a different language. It could instruct the jury to consider specifically the relevant group of consumers. To a large extent, those types of instructions already embodied in the likely of confusion instructions. Would you repeat what you said about the other defenses latches and what else? Latches and unclean hands. And those are still available on remand. Potentially so, yes, they've not been ruled on by the Ninth Circuit. If the court has no further questions, I'll simply point out that both the intellectual, sorry, the international trademark association and the American Intellectual Property Law Association, as well as Professor McCarthy and his treatise on trademarks, agree with us wholeheartedly that this should be an issue of fact and I would ask that the court simply affirm the judgment below. Thank you, counsel. Mr. Harrington. Thank you, Mr. Chief Justice, and may it please the court. I'd like to start by responding to petitioner's argument that the attacking inquiry is a legal inquiry only. Now, every court that has considered attacking has agreed that the standard for attacking is whether two marks create the same commercial impression. And in fact, in the district court, in this case, that was the jury instruction that the petitioner requested exactly that instruction and that was the instruction that was given. There was no argument on appeal to the court of appeals that the jury was improperly instructed. It wasn't until this court grant insertions that petitioner has changed its tune. Initially, a petitioner said, I know that the test for attacking isn't the commercial impression test. The test is whether two marks are legally equivalent. Then in the reply, it shifted gears again and said, oh, no, now the test is whether two marks have the same preemptive scope. Excuse me. But if you ask the decision maker to tell you whether two marks are legally equivalent or whether two marks have the same preemptive scope, the decision maker, even if that person was a judge, couldn't tell you the answer to that unless the judge knew what it means for two marks to be legally equivalent or for two marks to have the same preemptive scope. And the answer to both of those questions is that the marks have to have the same commercial impression. And if they have the same commercial impression, you can tack them. And then what we say about that is that they are legally equivalent. But that's just a label that we attach to two marks that we know can be tacked because they have the same commercial impression. That's not the test for inquiring whether you can actually tack two marks. You're saying essentially that legally equivalent just means equivalent for the purpose of deciding this legal question. That's right. But that doesn't tell you what question you need to ask to find out if they are legally equivalent. And same thing for preemptive scope, if you said, well, what's the preemptive scope of a mark? Well, you figure that out by looking at its commercial impression. And so the legal equivalents and preemptive scope labels are just, they just describe things about marks that can be tacked, but they don't tell you whether two marks can be tacked. There are things that you know after you know. And I'm a little confused about that because there is a plethora of quotations from the case law that tacking should be a limited thing and not expansive in his scope point. And how do you communicate that to the jury? Because by nature, the evidence to jury is going to see is the change product. And the question in terms of are they going to be confused by it? They're not because they're going to know it's the same manufacturer

. And in fact, in the district court, in this case, that was the jury instruction that the petitioner requested exactly that instruction and that was the instruction that was given. There was no argument on appeal to the court of appeals that the jury was improperly instructed. It wasn't until this court grant insertions that petitioner has changed its tune. Initially, a petitioner said, I know that the test for attacking isn't the commercial impression test. The test is whether two marks are legally equivalent. Then in the reply, it shifted gears again and said, oh, no, now the test is whether two marks have the same preemptive scope. Excuse me. But if you ask the decision maker to tell you whether two marks are legally equivalent or whether two marks have the same preemptive scope, the decision maker, even if that person was a judge, couldn't tell you the answer to that unless the judge knew what it means for two marks to be legally equivalent or for two marks to have the same preemptive scope. And the answer to both of those questions is that the marks have to have the same commercial impression. And if they have the same commercial impression, you can tack them. And then what we say about that is that they are legally equivalent. But that's just a label that we attach to two marks that we know can be tacked because they have the same commercial impression. That's not the test for inquiring whether you can actually tack two marks. You're saying essentially that legally equivalent just means equivalent for the purpose of deciding this legal question. That's right. But that doesn't tell you what question you need to ask to find out if they are legally equivalent. And same thing for preemptive scope, if you said, well, what's the preemptive scope of a mark? Well, you figure that out by looking at its commercial impression. And so the legal equivalents and preemptive scope labels are just, they just describe things about marks that can be tacked, but they don't tell you whether two marks can be tacked. There are things that you know after you know. And I'm a little confused about that because there is a plethora of quotations from the case law that tacking should be a limited thing and not expansive in his scope point. And how do you communicate that to the jury? Because by nature, the evidence to jury is going to see is the change product. And the question in terms of are they going to be confused by it? They're not because they're going to know it's the same manufacturer. Right. Well, I think it's important to keep separate the tacking question and the likelihood of confusion question. Tacking goes to priority, which is sort of one element of an infringement suit. Likelihood of confusion is a different element. Tacking is a constructive youth doctrine that's about priority. And so when juries are comparing two marks for the purposes of determining whether they should be tacked, those are a different pair of marks than they're comparing whether determining whether there's that because- And that almost suggests to me that a lot of these older cases were decided wrong. Unless the jury knows about how limited this is. And certainly, certainly the jury will know that because they will be instructed about when tacking is appropriate. And in this case, repetition is a request. The jury was instructed that the marks should be allowed to be tacked only if they create the same continuing commercial impression. I think the word same signals the narrowness of the doctrine. And certainly if a party were concerned that that standard tacking instruction were not sufficient, a party could ask for a more stringent type of instruction. That didn't happen in this case. What's like this, does the judges in setting the boundaries by deciding the question either on some regurgiment or as judgment as a matter of law? That my thought was that a judge would not let the bounds of the doctrine were decided by the judge when he used the question to the jury. That's right. I mean, a judge in these cases plays the same important roles that a judge plays in every civil jury trial, which is to say that the judge decides the legal roles and instructs the jury on that. And then the judge also will decide merits determinations if the evidence that's presented could only lead to one reasonable conclusion about those determinations. And so when a judge decides a tacking issue on some regurgiment or motion to dismiss, the judge is setting the outer bounds of the tacking doctrine. And just the same way it does in any other issue that comes up in a civil trial that would be tried to a jury. And we don't just count that. I mean, the judge plays a very important role. But ultimately, the question whether two marks give the same continuing commercial impression is a question that must be answered from the perspective of the ordinary consumer of the relevant goods

. Right. Well, I think it's important to keep separate the tacking question and the likelihood of confusion question. Tacking goes to priority, which is sort of one element of an infringement suit. Likelihood of confusion is a different element. Tacking is a constructive youth doctrine that's about priority. And so when juries are comparing two marks for the purposes of determining whether they should be tacked, those are a different pair of marks than they're comparing whether determining whether there's that because- And that almost suggests to me that a lot of these older cases were decided wrong. Unless the jury knows about how limited this is. And certainly, certainly the jury will know that because they will be instructed about when tacking is appropriate. And in this case, repetition is a request. The jury was instructed that the marks should be allowed to be tacked only if they create the same continuing commercial impression. I think the word same signals the narrowness of the doctrine. And certainly if a party were concerned that that standard tacking instruction were not sufficient, a party could ask for a more stringent type of instruction. That didn't happen in this case. What's like this, does the judges in setting the boundaries by deciding the question either on some regurgiment or as judgment as a matter of law? That my thought was that a judge would not let the bounds of the doctrine were decided by the judge when he used the question to the jury. That's right. I mean, a judge in these cases plays the same important roles that a judge plays in every civil jury trial, which is to say that the judge decides the legal roles and instructs the jury on that. And then the judge also will decide merits determinations if the evidence that's presented could only lead to one reasonable conclusion about those determinations. And so when a judge decides a tacking issue on some regurgiment or motion to dismiss, the judge is setting the outer bounds of the tacking doctrine. And just the same way it does in any other issue that comes up in a civil trial that would be tried to a jury. And we don't just count that. I mean, the judge plays a very important role. But ultimately, the question whether two marks give the same continuing commercial impression is a question that must be answered from the perspective of the ordinary consumer of the relevant goods. That is really essentially a factual question. And it's certainly true that a judge could decide that question as, in fact, judges do in bench trials and in suits for injunctive relief and on motions for summary and judgment. But the question isn't, when you have a jury in panel, the question isn't whether a judge could decide the question. The question is, could the jury also decide the question? Is there something about this question that a judge is really well equipped to answer and a jury is really ill-equipped to answer? That was a situation of Markman. That's really an outlier situation, excuse me, and that doesn't come up here because here, again, the focus is really on the consumer impression. And what's a jury? A jury is a collection of ordinary consumers. And so in some ways, a jury is actually better equipped to answer that question than a judge might. I assume the same would be true of likelihood of confusion if that's the argument, right? That the jury serves as a focus group in the same way for that question. Yes, and I think, Petiton Amir has spoken when he suggested that, Mr. Schussner's counsel, when he suggested that there's a circuit split on whether likelihood of confusion is a question for a jury or a question for a judge. I'm not aware of any circuit that has held this a question for a judge only. There's a circuit split on whether it's a question of law or a question of fact, and that affects how you review it on appeal. But as far as I know, every circuit treats it as a question for the jury. And one important element of the likelihood of confusion analysis in every circuit is a comparison of the similarity of two marks. Petiton Amir has conceded that a jury can make that comparison. That's a different, again, you're comparing different marks there than you are in tacking. And it's a different degree of similarity you're looking for. But it's not different in kind that kind of analysis. And there's no reason that I can think of why a jury would be well equipped to answer that question, but not equipped to answer the consumer impression comparison question in the tacking. I'll check it out in my notes. I thought that there was a split on a likelihood of confusion as you on the point where that goes to the judge of the jury. Not as far as I can tell

. That is really essentially a factual question. And it's certainly true that a judge could decide that question as, in fact, judges do in bench trials and in suits for injunctive relief and on motions for summary and judgment. But the question isn't, when you have a jury in panel, the question isn't whether a judge could decide the question. The question is, could the jury also decide the question? Is there something about this question that a judge is really well equipped to answer and a jury is really ill-equipped to answer? That was a situation of Markman. That's really an outlier situation, excuse me, and that doesn't come up here because here, again, the focus is really on the consumer impression. And what's a jury? A jury is a collection of ordinary consumers. And so in some ways, a jury is actually better equipped to answer that question than a judge might. I assume the same would be true of likelihood of confusion if that's the argument, right? That the jury serves as a focus group in the same way for that question. Yes, and I think, Petiton Amir has spoken when he suggested that, Mr. Schussner's counsel, when he suggested that there's a circuit split on whether likelihood of confusion is a question for a jury or a question for a judge. I'm not aware of any circuit that has held this a question for a judge only. There's a circuit split on whether it's a question of law or a question of fact, and that affects how you review it on appeal. But as far as I know, every circuit treats it as a question for the jury. And one important element of the likelihood of confusion analysis in every circuit is a comparison of the similarity of two marks. Petiton Amir has conceded that a jury can make that comparison. That's a different, again, you're comparing different marks there than you are in tacking. And it's a different degree of similarity you're looking for. But it's not different in kind that kind of analysis. And there's no reason that I can think of why a jury would be well equipped to answer that question, but not equipped to answer the consumer impression comparison question in the tacking. I'll check it out in my notes. I thought that there was a split on a likelihood of confusion as you on the point where that goes to the judge of the jury. Not as far as I can tell. There's a split on whether it's a question of law or a question of fact. And in fact, that's also the circuit split as to tacking. But in the second circuit, for example, they have held that likelihood of confusion is a question of law. But they are reviewed jury determinations on likelihood of confusion. They just review them without giving them much deference to the jury's ultimate determination. Those issues are decided by juries in the circuits that have held that it's a question of law. Which I admit doesn't make a lot of sense, and we think isn't necessarily the right way to do it. But if I could just say a word about Petiton's reliance on this. If I look confused by the answer, I am. I'll check it. So the circuit split as on law versus fact, not judge versus jury for likelihood of confusion. Signing is those courts that think it's an issue of law. They still give it to a jury, but then ignore what the jury says. Some version of that. It's more complicated than that. I don't want to, because that's not the issue here. I don't want to waste the court's time, but it's some odd version of that. If I could just say a word about Petiton's reliance on history, Petiton identifies a number of cases in which judges, you know, going way back in which judges have decided attacking questions. But none of those cases are cases where a jury was in paneled to decide the infringement issue. Those are all cases that were decided at summary judgment or motion to dismiss, that were tried as bench trials, or that were suits for injunctive relief. And so the treatment of attacking in those cases tells us nothing about what we should do when a jury is actually in paneled. And as far as I know, Petiton has not identified, and I'm not aware of a single case from any period of time in which a jury was in paneled to decide an infringement issue, and the judge took the issue away from the jury

. There's a split on whether it's a question of law or a question of fact. And in fact, that's also the circuit split as to tacking. But in the second circuit, for example, they have held that likelihood of confusion is a question of law. But they are reviewed jury determinations on likelihood of confusion. They just review them without giving them much deference to the jury's ultimate determination. Those issues are decided by juries in the circuits that have held that it's a question of law. Which I admit doesn't make a lot of sense, and we think isn't necessarily the right way to do it. But if I could just say a word about Petiton's reliance on this. If I look confused by the answer, I am. I'll check it. So the circuit split as on law versus fact, not judge versus jury for likelihood of confusion. Signing is those courts that think it's an issue of law. They still give it to a jury, but then ignore what the jury says. Some version of that. It's more complicated than that. I don't want to, because that's not the issue here. I don't want to waste the court's time, but it's some odd version of that. If I could just say a word about Petiton's reliance on history, Petiton identifies a number of cases in which judges, you know, going way back in which judges have decided attacking questions. But none of those cases are cases where a jury was in paneled to decide the infringement issue. Those are all cases that were decided at summary judgment or motion to dismiss, that were tried as bench trials, or that were suits for injunctive relief. And so the treatment of attacking in those cases tells us nothing about what we should do when a jury is actually in paneled. And as far as I know, Petiton has not identified, and I'm not aware of a single case from any period of time in which a jury was in paneled to decide an infringement issue, and the judge took the issue away from the jury. There just isn't such an example. And that's because generally when you have civil trials and you have a jury in paneled, these questions of ultimate determinations of factual issues, and even when they go to the ultimate legal determinations, they're decided by juries who are properly instructed. Now, I'd say that there's a lot of over-tuned and Petiton's argument that we're worried about juries getting it wrong, and there's an argument that the jury got it wrong in this case. But I think that shouldn't drive your decision about whether juries or judges should decide this issue. Because juries, just like judges, can get things wrong all the time, and we have mechanisms in place to correct erroneous jury verdicts. You can argue that the jury was improperly instructed. That wasn't an argument that's ever been made in this case. Or you can argue that there wasn't sufficient evidence to support the jury's verdict. That was the argument that Petiton are made on appeal to the Ninth Circuit. The argument was rejected, and Petiton has not asked this court to review that determination. So however you feel about whether the jury got it right or wrong in this case, that shouldn't tell you what whether the jury should or shouldn't have had the right to answer the question. We think it's clearly a fact-based question, and it should go to the jury. Just one last point, if I could. The petitioner has basically asserted that you should only really look at the two marks themselves, and that will almost always tell you what you need to do, and we look at precedent, you just look at those two marks. And as the justices have suggested, it's just looking at how other marks in the past have been treated, doesn't always tell you the full story. And even in the American mobile phone case, one of those is just positive considerations in that case was not just looking at the marks and how they looked and what the words were, and it wasn't just the fact that there was an intervening mark that was similar. They looked, the court looked at, or the T-Tab, and then the Federal Circuit approved it, looked at how the two different marks had been used in the yellow pages, and whether they had been used to advertise the same kind of products or different kind of products. And that just shows that tacking is a very context-specific inquiry. You need to look at how the marks are used in advertising the respect to the products, and how the consumers actually perceive those marks. And of course, if a company is in a position where it's contemplating amending its mark, and it wants to have some sort of certainty about whether that will be allowed, it can go to its consumers and do consumer surveys and say, do you think if we change it this way, would you still have the same consumer impression? In other words, gather the evidence that it would have introduced a trial if tacking came up at trial. Also, in this, I guess this can be the last point, if there are no questions. But a mark owner can seek to amend its mark with the PTO

. There just isn't such an example. And that's because generally when you have civil trials and you have a jury in paneled, these questions of ultimate determinations of factual issues, and even when they go to the ultimate legal determinations, they're decided by juries who are properly instructed. Now, I'd say that there's a lot of over-tuned and Petiton's argument that we're worried about juries getting it wrong, and there's an argument that the jury got it wrong in this case. But I think that shouldn't drive your decision about whether juries or judges should decide this issue. Because juries, just like judges, can get things wrong all the time, and we have mechanisms in place to correct erroneous jury verdicts. You can argue that the jury was improperly instructed. That wasn't an argument that's ever been made in this case. Or you can argue that there wasn't sufficient evidence to support the jury's verdict. That was the argument that Petiton are made on appeal to the Ninth Circuit. The argument was rejected, and Petiton has not asked this court to review that determination. So however you feel about whether the jury got it right or wrong in this case, that shouldn't tell you what whether the jury should or shouldn't have had the right to answer the question. We think it's clearly a fact-based question, and it should go to the jury. Just one last point, if I could. The petitioner has basically asserted that you should only really look at the two marks themselves, and that will almost always tell you what you need to do, and we look at precedent, you just look at those two marks. And as the justices have suggested, it's just looking at how other marks in the past have been treated, doesn't always tell you the full story. And even in the American mobile phone case, one of those is just positive considerations in that case was not just looking at the marks and how they looked and what the words were, and it wasn't just the fact that there was an intervening mark that was similar. They looked, the court looked at, or the T-Tab, and then the Federal Circuit approved it, looked at how the two different marks had been used in the yellow pages, and whether they had been used to advertise the same kind of products or different kind of products. And that just shows that tacking is a very context-specific inquiry. You need to look at how the marks are used in advertising the respect to the products, and how the consumers actually perceive those marks. And of course, if a company is in a position where it's contemplating amending its mark, and it wants to have some sort of certainty about whether that will be allowed, it can go to its consumers and do consumer surveys and say, do you think if we change it this way, would you still have the same consumer impression? In other words, gather the evidence that it would have introduced a trial if tacking came up at trial. Also, in this, I guess this can be the last point, if there are no questions. But a mark owner can seek to amend its mark with the PTO. Thank you, Councilor. Mr. Hughes, you have six minutes left. Thank you, Your Honor. Three brief points. Our fundamental submission is that there is more going on here than simply the consumer impression test. I think there's a reason that this is called the legal equivalence test, and not simply just consumer impression. And that's because what's happening here is a deeper legal judgment that corresponds to the legal fiction that is tacking. And I think what's deeper about this is just informing a jury that the question is, do these two marks have the same consumer impression? Is going to not just lead to a different result, but a very different kind of test, than if a court looks at these past examples to truly understand how narrow tacking is. I think if one just reads what the standard of continuing consumer impression, and then you look to the past cases, there is some confusion to how these cases have come out. But these cases show just how narrow the doctrine must be. Those cases are what give the vibrance and the bite to the doctrine. Let us assume that commercial impression is a jury question. That we were to hold that. What would be the legal standard that a judge should apply in coming to legal conclusion? What is the legal conclusion? The judge is going to use the consumer impression, if that were factual, to understand what the preemptive scope of the first mark and the preemptive scope of the second mark. So as you suggested, that could be factual determining what those are. But what the legal aspect of that is is asking how much of a change in the preemptive scope from the first mark to the second mark has there been. And then is that? You can get that out in your blue brief. I know that's your yellow brief. This everything is wrong up until now. It's a legal question. Preemptive scope of the old mark and of the new mark that's spelled out very clearly in the library

. Thank you, Councilor. Mr. Hughes, you have six minutes left. Thank you, Your Honor. Three brief points. Our fundamental submission is that there is more going on here than simply the consumer impression test. I think there's a reason that this is called the legal equivalence test, and not simply just consumer impression. And that's because what's happening here is a deeper legal judgment that corresponds to the legal fiction that is tacking. And I think what's deeper about this is just informing a jury that the question is, do these two marks have the same consumer impression? Is going to not just lead to a different result, but a very different kind of test, than if a court looks at these past examples to truly understand how narrow tacking is. I think if one just reads what the standard of continuing consumer impression, and then you look to the past cases, there is some confusion to how these cases have come out. But these cases show just how narrow the doctrine must be. Those cases are what give the vibrance and the bite to the doctrine. Let us assume that commercial impression is a jury question. That we were to hold that. What would be the legal standard that a judge should apply in coming to legal conclusion? What is the legal conclusion? The judge is going to use the consumer impression, if that were factual, to understand what the preemptive scope of the first mark and the preemptive scope of the second mark. So as you suggested, that could be factual determining what those are. But what the legal aspect of that is is asking how much of a change in the preemptive scope from the first mark to the second mark has there been. And then is that? You can get that out in your blue brief. I know that's your yellow brief. This everything is wrong up until now. It's a legal question. Preemptive scope of the old mark and of the new mark that's spelled out very clearly in the library. But I didn't see it in the blue brief. Well, I'd point to a couple places. In page 19 of our blue brief, for example, we made the argument that if, quoting here, if a new mark creates a different right of exclusion than the original, tacking is not allowed. That was our controlling framework from the opening brief. And throughout our opening brief, we explained that the limitation that's essential on tacking is the competition or the rights of the third parties. Every court that has explained that there's an outer bound on when tacking can be allowed, has explained that that outer bound derives from the anti-competitive effects that would result from retroactively years later, expanding the initial trademark rights. So that was, I think, the theme of our opening brief and that continued through into the yellow brief. The second point I'd like to make is that this is, in fact, a truly, a traditionally created doctrine. And where this is a digitally created doctrine that is getting at a legal fiction, I think this is precisely the kind of circumstance where this legal test that we discussed must have a legal aspect or legal component that is put to the judge. So back to the question, what happens at that second stage in terms of what's the legal aspect of the test? The court will assess how much of a change has been made in the mark. And then it has to compare that against the original mark to see, was that reasonable? Was that foreseeable? Did people in the marketplace, could they have predicted that this kind of change was coming? That's the sort of legal determination that a court is going to be making that turns on its assessment of the interaction and the effect of the two marks. My final point is just a one that's related particularly to this case. A respond that made the contention that they had used Hana Bank in Korean in their initial advertising and suggested that that would be a basis for priority. As we explained in the yellow brief, though, no court of appeals has ever adopted the notion of foreign language equivalents into the concept of trademark tacking. And as we demonstrated, I think that the effects of that would be quite severe because it would create a circumstance where any current mark holder would be in jeopardy if there was unknown to them a confusionally similar usage of that kind of mark in a foreign language which they would not have the ability to access. So while it's certainly true that foreign language equivalents can and should and is a doctrine that permits an affirmative trademark infringement claim, that is not what we have here. It's not a doctrine that can be used to years after the fact expand the scope of a trademark. Thank you. Hello. With respect to the foreign. The foreign, the use or reliance on the foreign use of Hana Bank. Yeah, we did object to the use of foreign language equivalents

. The Ninth Circuit specifically did not reach that issue. It stated in a footnote that because it was relying on the broader use of tacking, tacking between Hana Bank to Hana Overseas Korean Club, it didn't have to consider whether it could use foreign language equivalents. We certainly objected that that was an impermissible use. We think if the court were to reach that, it should certainly hold that that is not permissible use of foreign language equivalents because the effects of it would be really quite substantial. Thank you, Council. Case is submitted