fact that the trademark mastermind is inherently distinctive specifically it is a suggestive mark and not a descriptive mark in the class of goods and services in which rules are registered namely live musical performances and musical recordings the question of whether a mark is suggestive or descriptive is a very difficult one to answer there is in many cases over this luckily we have a case right here from the one circuit law holdovers varitek that provides guidance and should be controlling in this case to answer this question is the trademark suggestive or is it descriptive even district court judge lou noted in his order on the motion for summary judgment or appealing that a determination of whether a market suggestive or descriptive is not as clear or objective as one would think so the already and very very shy case instructs us that the best authority to listen to on whether a mark is suggestive or descriptive is the united states patent and trademark office they have the experience and the knowledge necessary to make this determination and we feel that the united states patent trademark office evidence was not given the proper weight judge lou in making his decision on summary judgment the united states plan trademark office a registration from them alone is sometimes enough to show that a mark is distinctive it's a presumption isn't that it is a presumption it's  presumption and in order to rebut the presumption you need a preponderance of the evidence and we feel that the evidence was not given the proper weight we also feel strongly that the evidence should have been reviewed by a jury and not some rarely ev buy a judge and had the entire trademark registration cancelled completely in what we feel is a draconian measure when a more limited measure could have been taken aside from having a jury review all the facts and evidence that were submitted especially the facts and the evidence that was submitted by the defendants which we feel strongly a jury should have had the chance to review when they say that that's because in your view there was a material question of fact yes we're going to whether it was distinctive  definitely we feel the evidence that was used in order to make the determination that it was that the judge ruled that it was descriptive and not suggestive we feel that all that evidence shows shoals of tribal issues of material  left with with the imagination yes yes i'm left with and i don't want to speak for my colleagues but a mastermind i'm supposed to get to wrap this up this is a hard sell for me and he just does not spring to mind i think of a board game in all honesty i agree and in fact the board game was an issue during the trademark registration process the application that my client filed he's been using this trademark since one thousand nine hundred ninety filed an application for a decision two thousand and five it wasn't registered till two thousand and thirteen most of that time was spent dealing with the board game registrants and sold the the registration of apple it may be generational yeah that's what i think i believe that anyone left with the dictionary yes so the dictionary is one of the main pieces of evidence and used to be evaluated by a jury we believe the dictionary definition the defendant submitted it was one out of many dictionaries and it happened to be the only one that we were able to find that had a sample use of  mastermind in the musical connotation the dictionary definitions that we submitted to a multiple none of them even mention music but it was that one definition that the judge latched onto and we feel that a jury needs to decide which of these dictionary definition should be controll dictionary definition defendant submitted happened to have one sample usage of master mind which was in reference to music all the other uses you know as a criminal mastermind political mastermind those are the types of samples all the other dictionary definitions and even the oxford that is the one of the samples the oxford dictionary had was a musical sample that material question of the fact that the dictionaries didn't all agree i believe that it is and i believe that a jury needs to decide if that one sample from the one dictionary is enough evidence to tilt the scales here towards this trademark being considered descriptive which we feel it's not even close to being descriptive so that's one factor that dictionaries another major factor the magination test from rudolph versus real serious anger and then there is the real deal collection vs west seventh case that says that other competitors in that industry need to use the term will also be evidence to show that a mark  descriptive we also obviously feel that competitors don't need to use this term in live musical performances and audio recordings but that gets us to the second major piece of evidence that defendants relied on and the judge cited to in his decision that was the my space of events so the defendants found a bunch of pages on my space that included the word mastermind this evidence needs to properly be scrutinized by a jury to review the authenticity of this  of this evidence and the relevance of this evidence there was i believe dozens of pages that included mastermind but some of them are completely irrelevant some of them are old pages and the longer exist i don't know how many of the those i would argue maybe only  t one or two of them are relevant to this case at all in terms of being a source identifying usage of mastermind which is another big problem most of the evidence submitted by defendants shows mastermind using lyrics or other non source identifying ways not it uses a exists my client was not policing it for trademark infringement had he been he would have sent cease and desist letters to the old my space page owners that were using mastermind as a trademark just as he did to other potential infringers that he was made aware of such as the defendants we also sent a cease and desist letter to so we feel that just like in the iti brown drug versus coke care products case that says the determination of what category a trademark falls and descriptive or  arbitrary it's a it's a factual question for the jury which is what the holding in that case said there are tribal issues of material fact here we feel that my client is entitle to a jury trial as a lot of the evidence is very factual  another another element i want to touch upon is we need to look at examples from the past of the us patent trademark office of how they've treated the mastermind trademark as i mentioned before they're the best authority to look to there were five previous trip mastermind applications for trademark registrations having to do with music in the same class as my my client was registered in not many of them were reviewed by different examiners in great detail and many rejections were brought up in all these applications some for descriptive mis of other terms used in the application such as mastermind productions the required a disclaimer productions because the script of not one of those applications including my client's application ever once brought up an issue that the her master mind is descriptive the first time this issue's ever been brought up is by defendants in this case who found a way to shoehorn the descriptive label onto this mark by showing this evidence that i believe a jury needs  to review as i mentioned my client is an independent artist with limited resources to try this case i believe that the ruling from the judge is a terrible ruling for all independent artists that have limited resources that spend the time and money to hire an attorney to get a trademark registration that they believe is the right way to conduct their business and to protect themselves only later to find out that that protection wasn't worth much when a judge cancels the entire i just ration which we feel was a drastic measure to take he could have limited the class descriptions he made he could cancel one of the classes instead he found somehow that it was a mastermind was descriptive not just for one of the classes like musical performances but also somehow descriptive of musical recordings as well which is even more difficult to do it's a descriptive of two separate classes one of the other examples i want to look at is other cases that have determined is a mark suggestive or is a descriptive some of the most famous cases that shoe scholz suggestive marks or the mark wet ones for more moist towelettes it seems descriptive to me but that was found to be suggestive white out for corrective fluid seems descriptive that was even found to be suggested yeah i mean this is a fun case in terms of it's like a game like the masterminding trying to figure out what's a just of what's a descriptive unfortunately it's not a game to my client was an independent artist which had his trademark cancelled years of his work into trying to produce records has been destroyed by the reverse confusion caused by defendants you know might my client has is his career is basically ended as a musical artist because of this case he's had to refocus from his art to this case and it's been years now that this has been pending but moving on some other examples of suggestive marks extend your beauty for a fake eyelashes sounds obvious to me eyelashes want to be extended it has to do with beauty but that case the court held in that case that if you look at the dictionary definitions of extend and beauty it doesn't mention eyelashes this is the standard that they've the a set for finding his descriptive so none of these are found to be descriptive they're also just of but then suddenly master mind for musical recordings and live in their team is somehow descriptive i mean common sense needs a prevailing here that just doesn't make any sense to me some examples from cases where descriptive marks are found is bank of america for a bank now that's you know that to me that sounds even generic even more than descriptive but that was found to be descriptive i have staples for office supplies kentucky fried chicken for for chicken haul they in for a whole tells these are extremely obvious of what the products the goods and services being offered on there are these marks are and these are marks that are considered descriptive finding mastermind descriptive for musical performances it just doesn't make any sense to me and the slim evidence that was relied upon i know the defendants called it an refuted evidence that they submitted but it was all refuted we refuted every piece of evidence they submitted in our separate statement but we never really got the full i believe a jury needs to have a chance to review all that evidence and all those facts to see how relevant is all this information  all the evidence they submitted and how how and is it is it is is it evidence that's true in a real we never got a chance to attack the evidence in front of a jury they need to come to us and yes i'm going to reserve time for a bottle thank you thank you federal trademark the law does not countenance monopoly over a descriptive term such as mastermind that does not acquire secondary meaning and i think the record that is before us does not demonstrate that the plaintiff an appellant submitted evidence that established that this was a suggested mark wasn't merely the dictionary definition that the court relied on granting summary judgment in cancelling the market was also the myriad of uses of the term master mind as exhibited in the record i asked yes you me for interrupting you  mentioned the dictionary test and i don't think i've ever seen where these cases didn't start with the dictionary test and then moves on to that was entirely typical yeah and then you just mentioned sort of what i think of as the the the third prong the court look to whether this was in  use but what about the middle what about the imagination yes that's one that i think we use most often and that's the one i really struggle with here it's not just i'm limited to my own experience although you know consumers would have a consumer survey here which we would very frequently i think it is a term that is particularly within the the rap industry is used as a lot of tory term even the case that council cites the court to talks about the need for the consumer within the context of those goods to identify the usage of that name associated with those goods and the but i'm just trying to you're ahead of me let's make sure you are indeed focusing on that as your strongest argument as opposed to the imagination is that right well i think the strongest argument is just that the term itself is distinctive i think the court raises a question about the imagination test and i think that the corollary of that really is the the mental leap test as it's also characterizing one does not find a mental leap in looking at the word mastermind and there's no evidence to show that a consumer within the context of the rob john of music would make a mental leap to associate that term with this artist is goods that are in the marketplace that because there because the term is used frequently in that genre is that your argument i think it's twofold i think it's the term itself the mastermind if you look at the dictionary definition any one of them that's  before the court i think it's also the widespread use which i don't think was contested with any material facts i don't understand how the dictionary definitions other than the oxford help you well i think the  i think that that was just one of the grounds that the court relied upon i think additionally the court as you just said dictionaries are all helps your argument well i see  them i do i do think that the obviously they oxford dictionary some of the dictionaries have different definitions but i think that the fact that this artist has used it as we noted as a signature and not as a source identifier which is essential for trademark law this is not something that he was able to tie to his music and his goods as a source identifier and i think by virtue of doing that when you have a name like mastermind that is not associated with the goods but is used almost as a signature if you will and there's no material evidence submitted otherwise i think that that suffices to establish that the court had a valid basis for determining distinctiveness in this  context none of that answers the particular nothing to do with dictionaries but that's fine while the dictionary if you're right some dictionary definitions are better than others but i don't think that escapes only one that uses music as an example and honor i think that what you would have is a definition that is still descriptive this is a rapper who's using the term in a water tory sense in order to describe his skill set not in order hearing that the leak the question is whether we leap to the product well to i think i think that he claims he's using it as a noun if we look to his reply brief page eleven in particular  they referenced several uses of the term mastermind and you know i think this is a good example of and it gets into some some grammar issues here but you know  quote from their brief in the replies is quoting page eleven there are examples included quote the masterminds g the mastermind from chicago the brooklyn mastermind legendary mastermind d j miles the music mastermind goes on to say all of these provided examples clearly use the term mastermind as an adjective well that's just flat wrong each of those are used as a noun and that's just basic right graham test is i agree with you s argument in principle ie i think the court has issued a ruling that is on solid footing with respect to this being a distinctive mark and that's not the end of the analysis they have to then establish secondary meaning and there's a complete absence of any showing of secondary meaning i just get for disruptive market yes and if we look at the entrepreneur media first smith case i think that's really controlling here and that's a case that this court issued back in two thousand and two and there we had evidence a market that was much stronger where e m i had published for many years and it much expense a magazine with the title entrepreneur which was merely reflective of the publication and the audience and consumers that would be reading that publication and i think that case talks about marks that are descriptive and that's a good example of a descriptive mark for which one has to establish secondary meaning and you can find a wide or fair degree of latitude with respect to dictionary definitions of entrepreneur but i think still you need to establish that there is secondary meaning and there was no discussion from the appellant's about the lack of contestable market after so many years a mark can become incontestable this is not one of them this is a rebuttable presumption and i think that the dictionary definition along with all of the usage out there and the lack of any  material facts to contest that people are using it in this laudatory descriptive nature including some of the examples that i've just given underscore that this is a this descriptive mark and not a suggestive one one doesn't make the mental leap or the imagination doesn't go from hearing the term mastermind and then suddenly thinking boy that really sparks my imagination to think you know where you think we're given direction about the quantum of evidence it takes to overcome the presumption here i think the the courts standard of a statement of the law within the order itself suffices under rule fifty six for purposes of the analysis and and i think that's i thought the if that's a yes a joint effort i just in case you want to call there's not a single case i think there are ever the court cites to a number of cases for that basic principle but there's no detailed discussion of that concept and so i think that that really takes us to the lack of any contest of any material facts by the appellant with respect to establishing that there is any secondary meaning for what is a  descriptive mark the lack of such evidence the lack of any argument of such evidence i think concedes that the district court was correct so i think that limits us to trying to understand  appellee can on this record a stablished that it's mark is suggestive which does not require secondary meaning and again that comes back to the lack of any ability to use one's imagination to establish that these goods are in fact associated with the term mastermind and i think that because the record is lacking in that regard with respect to the evidence that was proffered by the plaintiff i think that the district court was grounded in its ability to establish the lack of any material or genuine issue of dispute in issuing its ruling and i think it's a sound decision for that reason map and answer any additional questions thank you thank you for allowing me a reply i'll be pretty brief i just want to touch on some of the points that were raised first of all defendants continue to bring up secondary meaning we've never once brought up that we can establish secondary meaning it's a very difficult expensive thing to to prove i know his client can prove secondary meaning because he's a big rich successful rap artist my client is not he does have a rap career in his own way but he's not at the level where any secondary meaning can be established unfortunately we've never once even tried to argue that so second i'm glad you brought the entrepreneur vs smith case because in that case they say that a summary judgment is disfavored in these types of trademark cases and we think that that should be controlling and we should listen to that and it also says in that case that it asks does this mark need to be used by other competitors because if it does then that's one piece of evidence to show that it may be descriptive and we believe that that question is a factual brief says that self lot of tori terms which is what he's claiming mastermind is for my client they're generally suggestive and this is what the court ruled in the estee lauder versus the gap case and  then moving to my fourth point that defendant's counsel mention that the evidence relied on showed a myriad of uses of mastermind in music and in rap and we agree on most of those uses are in lyrics any word in the english language you google these days you know you're in lyrics you're going to come with thousands of hits of course your we're only trying to focus on mastermind as used as a source identifying trademark not as not in lyrics and  not adjective and finally i just want to reiterate that the for the imagination test we do believe the decimals important test here and you definitely need some imagination to get from mastermind to figuring out that it's live music performances and or musical recordings in order to figure out what what it is that's being that's being offered by by the plane if you're consul can't this case be reduced to a single sentence mastermind as the script