last case to be argued this morning is 14-1497 this is our post international limited but then they have a cross appeal. Oh that's right okay so thank you
. May I please the court? I would like to start with the following scenario when you receive a letter for another hard copy document you would stop to consider how did that document get to my desk you would think of that on express you think of UPS you know you have to think of a post-full service and maybe some other companies you receive an electronic message and email or some other type electronic transmittal and you stop to think of how that how that document that electronic document came to my computer screen or other device
. Microsoft think of Google and AOL and maybe Yahoo and a bunch of other companies what you wouldn't think of is a postal service
. That in our view is the essence of this case
. Is there any context or situation where the commercial transmission of an electronic message would come from the postal service? The answer that is no and there's no evidence that the answer that is anything other than no then there's no likelihood of confusion, no possible confusion
. In fact I mean you're identified services you know invokes the postal services service of registered mail
. Correct I mean the whole point of you're using the term registered email is to demonstrate that what you're doing is an extension of what the postal what the post office has been doing for over 150 years
. Not an extension of what they're doing providing but that's how consumers look at anything when you add the little e in front of some pre-existing service
. It's understanding I mean this is kind of common sense that what you've done is taken a brick and mortar service and moved it into cyberspace right and and now we've had registered mail going on for a long time and now you have registered email
. Correct and if the postal service were in that space in any manner it's not just the cyber world it's the electronic message transmission world because that's what the application also says
. After look at the specific terms of the application and the analogy I would give you know the kind of revolution that we're talking about from hard copy to electronic message transmission at the turn of the 19th to 20th century. Horse and buggy to automobile
. Horse and buggy to automobile. Huge revolution I think somewhat analogous if I were the Ford Motor Company and I wanted to compete with the horse delivery services and I said I can provide the same level of service, same quality in an entirely different way
. Huge revolution I think somewhat analogous if I were the Ford Motor Company and I wanted to compete with the horse delivery services and I said I can provide the same level of service, same quality in an entirely different way. That's and I take a term let's say their their their product was called at the pony delivery service and if I changed it to a pony a for automotive and no one had any reason to believe that it was the same company because they were horse it's not machines that's not infringement it's not likely to be
. That's and I take a term let's say their their their product was called at the pony delivery service and if I changed it to a pony a for automotive and no one had any reason to believe that it was the same company because they were horse it's not machines that's not infringement it's not likely to be. But it seems to me the questionable part of the questionable premise to your example is the no one would have any reason to believe it's the same
. But it seems to me the questionable part of the questionable premise to your example is the no one would have any reason to believe it's the same. If for example I had the the buggy service and it was Bryson's and it was really well known all around the country that Bryson's buggy is better than everybody else's buggy and you came along and decided to start a an automobile service to do the same kind of delivery and you call that the a Bryson
. If for example I had the the buggy service and it was Bryson's and it was really well known all around the country that Bryson's buggy is better than everybody else's buggy and you came along and decided to start a an automobile service to do the same kind of delivery and you call that the a Bryson. People are going to assume that this is either licensed buyer somehow affiliated with Bryson at least there's a chance of that under the circumstances and that's where you have likelihood of confusion that's the problem I think that you have in this case that people may be wrong in thinking that the postal service is now into this or some up blessing this but that's an assumption that will flow from the use of the term registered mail to me that's the problem in that I see with your case
. People are going to assume that this is either licensed buyer somehow affiliated with Bryson at least there's a chance of that under the circumstances and that's where you have likelihood of confusion that's the problem I think that you have in this case that people may be wrong in thinking that the postal service is now into this or some up blessing this but that's an assumption that will flow from the use of the term registered mail to me that's the problem in that I see with your case. Well but the only evidence of potential confusion in this context is that there is an A and what I mean by that is first of all the Postal Services forbidden legally forbidden from entering into that space from doing that but if you ask a thousand people on the street you were somewhere other than Washington where you'd find a hundred lawyers out of that thousand if you ask a thousand people on the street is the Postal Service forbidden by law from engaging in electronic communication services I'm guessing you wouldn't find three would know the answer but if you ask the same thousand people this Postal Service provide the commercial delivery electronic messages you I don't think you'd find a single person who'd say yes except the person that had looked at your website and said yeah I think so because I saw e-registered mail but registered email not e-registered mail it's registered email and that is a difference because adding the e to mail is transformative it's not and and it's not even like all the other the e-registered why did you use the term registered email you could have done something like secure email or our post email well I like that I think why did you go with registered email because the public knows that registered mail provides security but this is in the electronic world you get to know some kind of proof of delivery you have to receipt correct a physical document from the post office that's what you get and you have to do everything physically to get that they don't send those by email the final step in the process if you want to send a registered email and get that proof of delivery by email you have to physically take yourself to the post office you have to deliver to a postal service employee physical documents if you have to physically pay yeah to physically fill out the form postal service has to physically transport the document they have to get the various registration signatures physically and only then will they transmit an email to you saying it's been delivered so no one who uses registered mail would be confused no one who uses the our post service would be confused because if you use the our post service you know you're not contracting with a post office so you've got this hypothetical consumer who might have seen registering something that says registered email why would that person think it's the post office it's not accompanied with other in-disha of the post office it doesn't have that stylized needle doesn't say the postal service or USPS anywhere it doesn't have the shade of blue that we all associate every mail truck and every mailbox and the letter carriers all have that same shade of blue so it doesn't have any indisha of being with the postal service the whole point of the postal service argument is because there's this one letter difference consumers are likely to be confused and that one letter difference is enormous because it changes the word mail to email and changing the word mail to email not only is it a recognized word you look in the dictionaries and you'll find email all the other e-words e file e-book e-fares etc etc except in slang dictionaries you won't find those words there you will find email it is a word a separate word and it points away from the post-it service so anyone who sees the word email whether it says a registered or any other term that might be similar to the postal service is not going to be confused and we're touching on the first of the DePont factors that the word found the second one similarity of services the board ignored the application which requires them to consider the application itself which says delivery of messages by electronic transmission the service of the pet's email but you know this is registered email and this is more about the transmission of mail electronically in a secure way with proof of delivery right transmission of mail electronics so I mean that's why I think the trademark board was trying to say the purpose of your service and the post office is registered mail services ultimately pretty similar because it's all about transporting some kind of message or document with security and proof of delivery yes but that all ignores the application which also limits it to electronic message transmission which the postal service doesn't do if if you want to send an email to someone no matter what kinds of bells and whistles you want to put on it you're not going to go to usps
. Well but the only evidence of potential confusion in this context is that there is an A and what I mean by that is first of all the Postal Services forbidden legally forbidden from entering into that space from doing that but if you ask a thousand people on the street you were somewhere other than Washington where you'd find a hundred lawyers out of that thousand if you ask a thousand people on the street is the Postal Service forbidden by law from engaging in electronic communication services I'm guessing you wouldn't find three would know the answer but if you ask the same thousand people this Postal Service provide the commercial delivery electronic messages you I don't think you'd find a single person who'd say yes except the person that had looked at your website and said yeah I think so because I saw e-registered mail but registered email not e-registered mail it's registered email and that is a difference because adding the e to mail is transformative it's not and and it's not even like all the other the e-registered why did you use the term registered email you could have done something like secure email or our post email well I like that I think why did you go with registered email because the public knows that registered mail provides security but this is in the electronic world you get to know some kind of proof of delivery you have to receipt correct a physical document from the post office that's what you get and you have to do everything physically to get that they don't send those by email the final step in the process if you want to send a registered email and get that proof of delivery by email you have to physically take yourself to the post office you have to deliver to a postal service employee physical documents if you have to physically pay yeah to physically fill out the form postal service has to physically transport the document they have to get the various registration signatures physically and only then will they transmit an email to you saying it's been delivered so no one who uses registered mail would be confused no one who uses the our post service would be confused because if you use the our post service you know you're not contracting with a post office so you've got this hypothetical consumer who might have seen registering something that says registered email why would that person think it's the post office it's not accompanied with other in-disha of the post office it doesn't have that stylized needle doesn't say the postal service or USPS anywhere it doesn't have the shade of blue that we all associate every mail truck and every mailbox and the letter carriers all have that same shade of blue so it doesn't have any indisha of being with the postal service the whole point of the postal service argument is because there's this one letter difference consumers are likely to be confused and that one letter difference is enormous because it changes the word mail to email and changing the word mail to email not only is it a recognized word you look in the dictionaries and you'll find email all the other e-words e file e-book e-fares etc etc except in slang dictionaries you won't find those words there you will find email it is a word a separate word and it points away from the post-it service so anyone who sees the word email whether it says a registered or any other term that might be similar to the postal service is not going to be confused and we're touching on the first of the DePont factors that the word found the second one similarity of services the board ignored the application which requires them to consider the application itself which says delivery of messages by electronic transmission the service of the pet's email but you know this is registered email and this is more about the transmission of mail electronically in a secure way with proof of delivery right transmission of mail electronics so I mean that's why I think the trademark board was trying to say the purpose of your service and the post office is registered mail services ultimately pretty similar because it's all about transporting some kind of message or document with security and proof of delivery yes but that all ignores the application which also limits it to electronic message transmission which the postal service doesn't do if if you want to send an email to someone no matter what kinds of bells and whistles you want to put on it you're not going to go to usps.com in order to do that that's the distinction you're not going to go to a postal service site you're not going to think there's any way you can transmit an electronic message using the postal service that's the I mean that's obviously the heart of our argument the distinction between mail and email between brick and mortar world and the electronic world is a serious one and the fact that we haven't even gotten a third party registration some boards were lines of third party registrations but the fact that other companies might have registered marks for in both hard copy and physical and electronic fields doesn't prove that they're in commercial use doesn't prove that those products that anyone knows about those products this courts precedent on third party registration evidence for purposes of likelihood of confusion seems to me uniform and against what the board did what the board said was well it shows that these kinds of services could in theory emanate from the same source and the your end year rebuttal do you want to save the remainder of it you keep going if you like yes I will say the remainder okay thank you all right here from Mars Marsy okay thank you you've reserved three minutes so you're going to talk about 2D confusion and descriptive this right yes okay and I reserved only as to the crop right our post-contentions before this court both in their briefs and as you heard this morning rest entirely on the idea that there is an impermeable wall of separation between electronic communication and hard copy communication such that a reasonable consumer would never be confused and in one sense our post is right no one is ever going to confuse an email for a hard copy piece of mail but that is not the fundamental inquiry under the Lantern Act regarding likelihood of confusion the Lantern Act is not concerned with confusion of goods it's concerned with confusion of source and so the question is can two different goods maybe even really different goods be perceived by the consumers and their overall commercial impression as they encounter them in the market as emanating from the same brand and we know in answer to Judge Chen's question about why did our post pick this the reason that it was picking this name the reason it wanted registered email rather than secured email or our post email was because it wanted to trade on the public trust of the postal service brand and to do so not by calling it US p
.com in order to do that that's the distinction you're not going to go to a postal service site you're not going to think there's any way you can transmit an electronic message using the postal service that's the I mean that's obviously the heart of our argument the distinction between mail and email between brick and mortar world and the electronic world is a serious one and the fact that we haven't even gotten a third party registration some boards were lines of third party registrations but the fact that other companies might have registered marks for in both hard copy and physical and electronic fields doesn't prove that they're in commercial use doesn't prove that those products that anyone knows about those products this courts precedent on third party registration evidence for purposes of likelihood of confusion seems to me uniform and against what the board did what the board said was well it shows that these kinds of services could in theory emanate from the same source and the your end year rebuttal do you want to save the remainder of it you keep going if you like yes I will say the remainder okay thank you all right here from Mars Marsy okay thank you you've reserved three minutes so you're going to talk about 2D confusion and descriptive this right yes okay and I reserved only as to the crop right our post-contentions before this court both in their briefs and as you heard this morning rest entirely on the idea that there is an impermeable wall of separation between electronic communication and hard copy communication such that a reasonable consumer would never be confused and in one sense our post is right no one is ever going to confuse an email for a hard copy piece of mail but that is not the fundamental inquiry under the Lantern Act regarding likelihood of confusion the Lantern Act is not concerned with confusion of goods it's concerned with confusion of source and so the question is can two different goods maybe even really different goods be perceived by the consumers and their overall commercial impression as they encounter them in the market as emanating from the same brand and we know in answer to Judge Chen's question about why did our post pick this the reason that it was picking this name the reason it wanted registered email rather than secured email or our post email was because it wanted to trade on the public trust of the postal service brand and to do so not by calling it US p.s email but by calling it registered email because our post thought the word register in the public mind meant postal service I trust the postal service it's secure that's the quintessential example of source concession and that's the factual findings that the board made and really this is the case about factual findings of the board because the board looked at exactly the same information and argument that you've been hearing about today and the board said we think the market is for transmitting secure messages that people have a choice between doing it electronically doing it in hard copy maybe doing it in both and that this is all actually directed at the same market and so we're going to make a factual finding of likelihood and confusion based on the evidence that these are is not identical than at least overlapping market and of course under this is substantial evidence standard if any reasonable person could reach that conclusion from the evidence and it is to be a certain you explain the usage of the third-party registrations in this case apparently you know we have case law that says you're not supposed to rely on those third-party registrations for prove actual use and yet you were citing something else that says well maybe they can't be used for actual use but they can feel somehow be used to be probative to prove something that's different than actual use but I guess what I'm trying to say is I'm a little confused on how the law works do you explain it to me and the law is not quite as black and white as third-party registrations are never usable there are multiple cases in which the board and this court have looked at evidence of what third parties do in the same market to tell us something about how consumers perceive good right what they're actually doing in commerce what those third parties are actually doing not always what they're actually doing in commerce the tectronics case is an interesting one in this regard the text it's tectronics versus dactronics and the issue was what does that suffix mean does that like eat us means the virtual version of brick and mortar the case was about whether adding tronic or tronics at the end of a word indicates this is the electronic version of something and in that case this court's predecessor said that third-party registrations provide some evidence that the common understanding of those suffixes is electronic they looked at a bunch of registrations that use the same suffix for electronic products and they analogized it to looking at a dictionary it's important to recognize though that there is not only evidence in this record of third-party registrations being in those markets there is evidence of the postal service doing things that relate to the market for electronic message transmission in in fact exactly the same way our post does you heard this morning that the postal service you've never think you were getting email from the postal service because the postal service doesn't send email our post doesn't send email either our post big product advantage and you'll find this in the record appendix volume 1 at page 420 is that it provides an add-on that adds on to anybody's email account so you can have a Yahoo account you can have an AOL account you can sign up with our post and get them to essentially postmark your message on its way through cyberspace so that you can get a receipt and party in the other and can tell it wasn't altered well the postal service electronic postmark service can be used in exactly the same way so we have that record evidence not a third-party registrations that the postal service operates in this manner there's also a newspaper article in the record about UPS offering an email product that is actual usage it's a computer world newspaper article I think so the third-party registrations are relevant they're relevant for a fairly limited purpose of showing that 30 some odd other people don't think these are two markets because they tried to register something to use it in both markets it's a small factor it's not the only evidence supporting the conclusions that these are it's not the same that at least overlocking we regard to the cross appeal I'm happy to discuss the same factor if the court would like to do so the importance there of course is that it's just an additional factor in supportive and firm and but it would like to be there not really a appropriate cross appeal right because we had an appropriate cross appeal we didn't want to be accused of waving anything so we tried to be careful about explaining that was the only reason we were cross-pilling it the actual cross appeal issue is is with regard to the registered receipt and return receipt marks and that's the descriptiveness issue in that regard what our post-registered you that there was a likelihood of confusion with those marks too what and why didn't you if you didn't my understanding is that both parties agree that just the word return receipt are not sufficiently are descriptive and not trademark so we are trying to assert that they were trying to assert that they've trademarked it just by adding punctuation around the initial R and that has two problems one is the case law and here I'm thinking vanilla gorilla and lighthouse that say just adding punctuation doesn't take something descriptive and make it distinctive and there are other problem of course is that the punctuation they picked is in random it is the punctuation that is one of the couple of ways in which you can use their service and so that the functionality case law that says someone is knowledgeable about your service will immediately see that and think of that as distinctive of the functionality of your service and it's certainly it's even part of their patent that that's actually one of the ways in which you are going to serve but there are multiple ways that you could invoke that service if you were another provider I mean you're you're not being foreclosed right from from any considerable portion of the market by virtue of their mark and foot in terms of its functionality certainly really it's the role of punctuation and making a otherwise descriptive mark distinctive that's so much more important I suppose Yahoo would still object if somebody came up with Yahoo question mark is goes to Yahoo exclamation point but I would think at some point punctuation starts to make a mark distinctive and it could be just you know a parentheses maybe not a comma here at hyphen here like you couldn't say Coca-Cola is trademark registered for the hyphen but if you wrote Coca-Cola with no hyphen that'd be fine but still it does seem to be extreme to say that all punctuation is irrelevant and what this court has said in Danila Gorillas really the best case present is that punctuation that doesn't really change how we perceive or would speak the market meaningful so vanilla gorilla is the three-inch car wheel rim case you know this decorative rims that people put on their cards and what they tried to register was a mark for three-zero apostrophe which the court looked at and said somebody's going to look at that and say three-o's or 30's both of which are ways to refer to the 30-inch car wheel rims with which you intend to use this just the punctuation that doesn't change the way that we would pronounce it is not sufficient to reach the level of the system
. The TTAB here said this is kind of an unusual use of the parentheses I guess unconventional right we're now outside the convention now we're putting alerts the reader that there's something different going on here maybe if that a typo or is that intentional or intentional what's going on there. And the hard part with that analysis is three-zero apostrophe S is not the way that we write 30's but we would speak it that way so it doesn't that doesn't square with the vanilla gorilla analysis of that mark and then you run right into functionality which is the only thing that that distinctive punctuation does it's not sensible punctuation it's functional punctuation and the functionality case law says if someone who's familiar with your product would immediately have called to mind the functionality of your product by the mark then that doesn't solve your need for distinctness. I have about they could have the functionality that would be performed they could set it up so that the functionality would be performed by for example asterisk R asterisk and you'd have I guess the same objection if in fact that was their mark and that was their function yes but I guess the point is that a registration of this particular mark or a turn received with the R surrounded by parentheses it wouldn't exclude someone else from doing from doing something like return receipt with a I don't know parentheses around the T at the end of receipt or preclude the postal service from continuing to use the term registered receipt and return receipt without any punctuation as it has done for right 100 plus because they've disclamed those words right they've they've disclamed the term receipt registered receipt and so it all really for them the protection boiled down to the that first R with the parentheses rather and the Nilla Gorilla 30s case and the lighthouse case which is Caesar dressing under the mark Caesar Caesar tell us that just adding that punctuation is insufficient to meet the standard for registration ability I'm running very close to the amount of time I have reserved I'm happy to answer additional questions okay thank you let's hear from Ben's V thank you very briefly on the descriptor this the our post got a trademark for perennar closed print this is a branding issue and they're consciously branding their products with that mark as part of the the brand that takes it out of the merely descriptive this category and the functionality they could you explain the what is disclaimer me I think I understand it but I just want to understand your understanding of what happens when what is the trademark applicant giving up and what is the public yet when a trademark applicant does a disclaimer what the trademark applicant gives up is the right to claim that anything other than the exact formulation as shown in the application is what they're claiming to be protectable so if someone else some consumer with not consumer competitor was using return receipt exclamation point you wouldn't be would you be able to go after someone like that with your return receipt registration with the parentheses around the art I don't think so but if they did perennar closed print return receipt and added the exclamation point perhaps we would because then you get into how distinctive it is and how much it does the exclamation point how you know how significant that would be so without the prints absolutely yes what bothers me about this disclaimer practices could someone get a registration for the word Disneyland with the deeds surrounded by parentheses and then disclaimed Disneyland and say now I want to get a you know to sell sneakers I mean does that make sense? Yeah and I'm sure the Walter's new company would be here before he would say to law that would they win? You know it may well depend on what the products are the someone like a Disney is sort of everywhere because one of the issues is where the old party the the the analog to the postal service what business are they in is it's something they can move into if it's you know the the Lexus Lexus case the car and the legal services and I don't remember which one was first the one through the other and the ultimate conclusion was because the one couldn't there's no plausible basis by which the former owner would be moving into the business of the new owner no one would be confused as part of our argument here unlikely of confusion postal service you know council mentioned there's some news article about usps in an email type of service yes before 2006 it could have and it made all sorts of efforts to go into that business and the presidential commission issued this report in 2003 and one of the quotes we quoted was no one knows because then at that point postal service had made all these efforts they called them dubious forays and said no one knows the postal service is even in this business we're trying to be in this business and that's talk in argue a significant reason why no one would think that something that has email in the word in the name whether it's registered or they have a certified email they have other email I mean they have certified mail they have other products that in first-class mail if you sell something that's called first-class email is anyone going to be confused that that's the postal service point is the email is transformative it changes it's not just saying it's the electronic version but it's the version that the postal service doesn't give you that's the point and that's why there's no likelihood of confusion very weird time yeah no you can say a couple of times okay on third-party registrations the tech-tronic case isn't anything like this case and what the board did what the board did here is say these 30-party registration shows I'm sorry I meant you had anything really quick to say about the cross-taping it's in our brief okay thank you thank you just one point and that is a set forth that lengthen our brief we disagree with mr mr. Benzny's characterization of what the postal service is and isn't allowed to do in the electronic relevant and so does you just talk about the cross-taping oh I'm sorry I thought he was saying that was relevant to your arguments on the cross-taping that's the only reason I'm mentioning it if it's not relevant to the cross-taping I will rest on my briefing on that point and I have nothing further okay thank you the case is submitte