meaningful remedy which effectively transferred ownership and control of the trademark from the owner to the infringer the district court committed reversible error when it left the injured mark holder without the remedy that  demand it did so despite the undeniable presence of what this court has called the most corrosive type of harm a mark holder can suffer a complete loss of control over one's good will and reputation denying a meaningful remedy is denying the right itself now here the court declined to provide an effective remedy for two reasons both of which constitute manifest errors of fact and law st the fact that  identify john fayed attractor companies use of the name in missouri and illinois back in one thousand nine hundred and four when it originally applied for the trademark well before that name came into use in wisconsin in the upper peninsula of michigan nd and probably more importantly the court found that faith was not harmed by the infringement in fact the court twice held that favorite benefit from the defendant's infringement in doing so the court applied the wrong legal standard to determine th disclaimer what's an acceptable remedy and then it compound at that error when it ordered relief so limited that it failed entirely to address the harm the defendants caused and ceded control of the mark to the products that are similar to those your client produces but those products are manufactured by a rd party and presumably  honor i think that that is just one aspect of many which show that the products at issue in this case from both favorite ink and j of teco are complimentary products so the verse of flex product w your honor is referring to is just one aspect of faking space innes which is a direct competitor with baby x or pac product but that's just one slice of the pie here because the reality is that there is so much actual confusion in this case in large part because these products are interrelated they are complimentary and this court and many other courts have held that where products are complimentary the likelihood of confusion is dramatically increase and that's exactly what we see in this case with the overwhelming amount of actual confusion that's present here i thoroughly understand that argument well if your honor is asking why the versatile x product is relevant to the issue of confusion and i'm excuse me i am ok so what i'm indicating is that  when the evidence at trial showed that when someone walks into a favorite rense business which is the rental arm of tito's caterpillar rental business there is an industry alliance with lincoln contractor supply and both of these businesses came together to offer products that aimed at precisely the same type of market that favorite and markets its own products to small time contractors people they don't pick up trucks so someone will walk into that business and see a competitive product to want to favorite games product but again that's just one tiny part of why these products are complimentary and why these products that the complimentary nature of them naturally leads to the finding of confusion that the jury clearly found in this case well i mean now you're saying a tiny part where as in the briefs it certainly seemed to me that you placed a lot of weight on that fact which you know i'm not sure is relevant yeah ok long were any of these issues about the use of the family name covered in the corporate transactions that created a freebie if you enter and split off from the other family operations yes there was a stock purchase agreement that was executed in one thousand nine hundred and seven with the transfer of favorite king stock to chafe a back one hundred percent of the stock and in those documents the intellectual property rights were specifically transferred as here i mean let me ask you what i think troubles me most about the case of the general rule after of a finding of infringement would of course involve the kind of injunctive relief that you're asking for but as i understand the law and the relatively authoritative teachings of professor mccarthy in this area when the mark is a family name or a personal name it's much more common to find relief in the form of much more limited compromise injunctions with disclaimers with notices to so that  people with the family name can use the family name well i think there's a couple of issues there your honor st of all this isn't just have family name common law trademark where you have families using the name and in the realm of their business this is a registered trademark that was registered by the the prep predecessor in interests of j of teco and transferred hook line and sinker to my client with fusing with full exclusive rights to use that name i would also draw the court's attention to the fact that john favorite tractor company which is the parent company of j p now has significantly changed their use of that name over time and expanded their use of that name in both product  lines and territory so once a trademark holder obtains the registered mark and even if there is and it up a possible or apparent senior user somewhere in the united boundaries of that senior user's ability to use the mark in commerce are solidified the iron curtain basically descends around i understand the general rule and i'm asking more specifically about personal motives which are relatively weak forms of marx well i think here the fact that this is a registered trademark is dispositive of the issue of the the validity of the market and the ability of my clients to have the exclusive use of it i don't think that the family name issue should drive the outcome here because this is a mark that was created in obtained in due course by the very same people that are now trying to take it back i thought to follow up on judge how my question to you because i have you know that the saying concern and given the common origin of these companies and the prior use of the fadec name by the john think tractor company why would it not at least be in the well within the district court discretion to reject an injunction precluding the defendant from using the  in this market because the lanham act requires the district court to remedy the harm and with the significant and pervasive amount of actual confusion that's present in this case that only began after john faber tractor company subsidiary j of teco began using the fi big name in favorites primary territory of wisconsin in the upper peninsula of michigan that was when that is when the infringement occurred that was the infringing action now the district court's acritical remedy requires that it remediate the harm and that it substantially reduce or address the issue of actual confusion i mean this court in many par the upper peninsula particularly given its history of sales market however limited they might have been i don't think in this case your honor because the reality is that the caterpillar business in wisconsin in the upper peninsula of michigan was dominated by the name fab call and there had been no indication until the very late months of two thousand and fourteen and into two thousand and fifteen that these two businesses would knew it that's how everybody knew it it wasn't until the mid two thousand when they started using the name favorite cat and that name we would argue is not actually the same continuing does not create the same continuing commercial impression between john taylor tractor company and favorite cat so i think those fundamental changes are would drove the confusion and drove the infringement in this case not some idea that j favor possibly predict that some fifteen years after her the merc was applied for that there would be a fundamental change in circumstances that would drive the depth and breath of confusion that was present in this case i think it's also important for this court to recognize that the district court heavily relied on the district courts position that the infringement in fact benefited my client there is no support in trademark law or anywhere else for the concept that a plaintiff can benefit by being the victim of trademark infringement and it's clear from the district court's opinion that that heavily influenced his position in ordering the limited by trying to by indicating that there was no harm to favor kinked by virtue of the infringement and by rejecting the idea that actual confusion is evidence that can and should substantiate harm by substantiating the loss of control that fe be kinked has suffered i think this the district court committed an error of both fact and law in this case there's actually far more actual confusion far more evidence of just please customers and of the same kinds of problematic effects that we see in trademark cases in this district where courts have ordered injunctions if the court looks at the international count club case for example where this court found not only that an injunction should issue but specifically rejected the idea of a disclaimer in the face of significant actual confusion and in the international kennel club case which is the one where the international kennel club of chicago sued to prevent a stuffed toy dog manufacturer from using the international kennel club name on it stuffed toy dog in that case there was far less actual confusion than there is instant case and what this court found is that a plaintiff's reputation should not be forever dependent on the reputation of the infringer moreover it's irrelevant really what the reputation of the is the quality of the goods is irrelevant this is because i so let's go back to the medicines and disclaimers i mean because i understand the point you're making about the limits of notices and  disclaimers and suit remedy but given that the plaintiffs in the defendant don't really sell the same products under the thing to name why wouldn't a remedy focused on  only evidence in the record about the effectiveness of the remedy ordered by the district court is that it doesn't work so we are to know that reaching out to vendors and customers and contacting them in writing over the phone in person at trying to educate j f chico's own employees about the differences between these two companies we already know that that remedy doesn't work the evidence in the record made that clear and we go back then to that the mandate that the district court's order actually remedy the harm at issue in this case in addition the specific this is the remedy at issue here isn't even really a true disclaimer this is more like an occasional noticed system because most of the time that the general public in the consuming public is going to come in contact with the fake name it's going to be by the benefit of j v you know because they are massively larger in size and favor king and spend millions more dollars  affiliating their products with our name but that most of the time because of the limits on the remedy that was issued the public is not going to see a disclaimer the public is not going to see anything is stopping what the jury in this case has already found is trademark infringement so from that point going forward they begin cause essentially lost all control all ownership and all benefit from its name and it registered mark and that again goes against the requirement that the remedy actually address the harm at issue in this case economic harm is not required lost sales is not that is present in this case and unlike many cases where injunctions are routinely ordered this case is unique in the amount and the wide variety of actual confusion that's present in the case pretty consistent from the time of july one thousand and fifteen when the name changed and through trial it had continued unabated at that point and that is despite the continued efforts of favorite games and some efforts by john favorite by john j of teco including the three by five index cards which the court ordered to be present by the phone of people answering the phone talking to the employees talking to the vendors in the customers all of that was do with your claims for damages and eleven measure apparently you were seeking profits re seeking all of the defendants profits your honor were you specific sorry can you repeat the question please were you seeking all of the defendant's profits and where did you get specific about the damaged theory that you were in amounts you were pursuing well what phoebe king did in terms of damages prior to summary judgment was what the lanham act required and that was to submit data of j of chico's profits and then j of chico then submitted a corollary expert report that effectively reduced what they thought was profits attributable to the use of the mark it never really was permitted to get any further than that because the damages issue was dismissed at the summary judgment stage and we believe that that was an inappropriate exercise of discretion on the part of the court and of course this court reviews that decision dismissed the ability to obtain defend its profits based upon an extremely narrow definition of unjust enrichment and that was really the only rationale the court offered on that point which is contrary to case law on this circuit which holds that in both the sands case and the rule of you ross case both of which indicate that the scope of rationale for obtaining defend its profits is not nearly so narrow as the district court indicated in this case the there are multiple rationality the district court was obviously very frustrated in its efforts to get you all to identify damages theories until fuel issues what what am i overlooking in the record timely and properly disclose all that was required including the amount of those profits and then also included a significant amount of evidence from which the court could infer other rationales for discarding defendants prophets including potential evidence of bad faith deterrence and the like all of which were summarily dismissed at the summary judgment stage without any development of the fact or of the facts that are associated with the potential for deterrence or the evidence of bad faith that was present in the record the stem you saw the additional time after a trial run for to develop damage your honor we did seek additional time after trial because on the rd day of trial the court indicated that it would be open to determining damages based upon a reasonable royalty that was not a damage theory that that if that the plaintiff had sought previously we had essentially sought the defendants profits remedy which was dismissed at summary judgment of course summary judgment wasn't issued until just a few weeks before trial so at that stage based upon the court's openness to looking at that issue we did request additional time to submit that evidence and the court denied that request on the theory it should have been developed earlier what was this record that way even though the court had just indicated two days earlier that it wanted to hear evidence on that point now from a practical perspective faking believe that it should have been provided additional time to give evidence on those damages in large part because there would have been no prejudice to either side or to the defendants in allowing that the court's order on this case was issued about fifteen months after trial so there would have been plenty of time to get oh go ahead you're on i apologize i just was was going to say that you know given the corporate history involved coupled with what the judge believed to be a lack of evidence that  sales by virtue of paphos that name change to the fabric cat i've had a difficult time seeing any our the air or at summary judgment in terms of defendant's profits well i think that the point is there is that the court's dismissal of defendant's profits in its decision was based entirely on the court's narrow interpretation of unjust enrichment as it applies to cases like this but the law of this circuit is not nearly that narrow the law of this circuit allows the recovery of defendants profits by plaintiffs in trademark cases in order to make infringement unprofitable for defendants in order to deter unlawful conduct and based upon the idea that unjust enrichment is not some narrow idea but the idea that a trademark is a property right and that the def issue it was present in the jury we believe that the jury got it wrong and the district court heard it not in motion for judgment as a matter of law but putting that aside the district court in an order  enjoys broad discretion in these kind of acquittal determinations and he did not abuse his discretion in entering this order and i'd like to start of the hospital issues if i may specially the prior use issue in the reverse order court's denial of our judgment as a matter of law on the prior use issuing the st reverse confusion issues or is in irreconcilable with this circuits controlling precedent or it is it opens up the issues that you had a full opportunity to weigh in on and finally it importantly too i think that the facts that underlie these two issues really heavily mark must one be adopted without knowledge of the registers registrants prior use and to that mark has to be continually used by the defendant or party in privity with a different from a date prior to the date that the registration was applied for here the facts show that both of those elements are clearly met the john faber tractor company has been in business for over one hundred years at this point it's celebrated its th anniversary of doing business nationwide and internationally in one thousand nine hundred and ninety three counsel i understand this and in your brief you went through in essence your case your affirmative case on this defense in great detail what i found frankly a little frustrating was that i didn't see in your opening brief in gauge went with the district court's rationale for denying j m o l and i'd like to think it would be most helpful if you could address those rationales i think do this court said that this is a totality of the circumstances that's it's not a market penetration test we look at all the all the different all the different items of evidence evidence of sales is not just ownership it goes had with the evidence and that you know you had the sales records st of all we had we had undisputed testimony sales from happened in wisconsin they happened when invoices that bear had of baby mark they were proposal sent to district court said well plaintiff at trial poked holes in that evidence in other words you know you had spreadsheets that show that i did my sales and it was a bill to address it was constant but you know on cross plains council poke some holes and whether or not they're at the ship to address was actually wisconsin it was somewhere else we pointed out in our briefing i believe that doesn't really matter because you have wisconsin based customer that was receiving an invoice and was doing was engaged in commercial activities with john tractor company and saw on the top the invoice the the favored mark so there was there was commercial use that mark regardless of where the machine was shipped for the jury thought there were some holes in that and the court thought that was that was effective too i feel like this is  trying to get into the music park ride where the the you know you have to be forty eight inches to ride the right and i come in and ask the guy can i ride the right and he says well i'll tell you this am over six feet tall well you're wearing shoes well above one way over this and this mark here but you know when it wears your where's your evidence from the doctor that shows that tell you that's that's the frustration i've had in this case is that the threshold that the circuit has announced for how what you must prior used offense is way below the evidence we had a trial in the geographic region second the page that appendix six of the district court's analysis he criticizes the fact that you know this this construction equipment they sell of these contractors in the pipeline business is sort of a niche market but but the but the court's opinion in s c johnson shows that you know the limited limited market that's not the relevant consideration we don't have to prove that joe blow off the street would have no use for a piece of heavy equipment would recognize the fake name of course that's not the market penetration in the general public is not the test so the i think the judge erred when he criticised our evidence for that on that basis and then i think most critically and i think this is what happened at trial and the judge made the same error on pages seven dollars and eight dollars of the appendix is that in closing argument in which we try to keep this evidence out we think it's completely irrelevant but they said that the appropriate segment of the m market in other words market penetration to ash should be measured by what the local caterpillar dealer was doing and hundreds of millions of dollars in sales and advertising and that that was the bar they said that's the appropriate segment of the of them are  adopted that rationale said yeah but compared to them we pale in comparison that of course not the test and the judge the district court judge in appendix seven dollars and eight dollars found that to be a persuasive argument and found that given the narrow niche markets in which john terry treasure company operated he agreed with with with that argument and that's just that's that's just the incorrect legal standard and there's i think manifest legal error that that this evidence which the judge found abund k the addition of somehow connected language i realize that that language comes from our stance case  connected language and to me seems awfully broad and somewhat vague isn't there a real danger that the jury's focus was diverted from the central issue of confusion yes your honor absolutely i believe that be the case we we recognize that the sands case somehow connected to we believe that we were related to the source of the products but regardless it could be the case that in certain circumstances the somehow connected to standard is appropriate but certainly when you're dealing with a case with these facts where you have members of the same family using the surname in different businesses a shared history where eleven of the parties came out of a corporate history related where they were the public knew that they were related somehow connected to language was particularly problematic and i think it it infected the jury's verdict that we can tell whether the jury thought the somehow connected was oh i saw facebook i wonder if they're connected to the favorites that run the other companies in fact one of the pieces of evidence they rely on is a linked in message where i believe it was  related so i thought agree with your honor that this is particularly problematic in this case i'd also like to address since we've we're talking about likely to confusion just generally the likely to confusion issue evidence that was featured at trial here because there was really no hint of folks thinking that the big bulldozers and heavy heavy machinery that my client sells were somehow sourced from plaintiff so the plaintiff early on abandoned rightly so i think the idea that a direct confuse and way to reverse confusion standards so we can we try to keep out the evidence again at trial of some of this two hundred some instances of wrong numbers  because it's it's not probative of the reverse confusion so in the reversed confusion scenario that they had to prove that they're likely to confusion is source and origin of their product and otherwise and on the words folks think that their products are somehow coming from my my client's business that evidence featured at trial and i won't go through all the factors because i think the critical factor here and it's pretty evident that the reason why we lost this issue at trial is because they had two hundred some instances of what they call actual confusion but these instances were vendors of my client customers of my client employees of my client mistakenly calling  thinking that they were trying their reaching my clients number so certainly there was no confusion this this has no probative value as to whether or not there was confusion as to the source origins of plaintiffs product these were folks looking to talk teco employee about a j f c coproduct or in some instances for example there was a one of my clients employees called trying to log in remotely you know to the to their website and trying to get the help desk of my client so these instances although certainly carried the day trial are simply not probative of the reverse confusion issue and nd i think more important as you know when you when you look at these cases and you're citing t confusion factors as they the marks aren't similar there's a famous cat mark and colors and you go through the whole thing you know no one's going to confuse a bulldozer in the coding ceiling then why in the world that when when actual confusing evidence is so rare the courts not that it's rare to find that why do we have two hundred some instances in this case and i would submit that's because it's not actual confusion these were situations of carelessness or it and this information age when in the age when you can pull the cell phone on your siri and she pulls something from somewhere and the phone rings at the wrong place or when you do a quick google search and it pops up with two numbers and somebody pokes on their phone and pokes through the what the st one that pops up would probably pull up a typewriter type in the address on the envelope typed the check and it would go you know it would go to the right place we would even be here but today there is the autofill functionality where not counts payable to starts typing favorite computer fill up fills up the check it goes into an envelope and goes out the door they don't even think twice about whether or not there's an affiliation to in the company so i think there's a lag between where technology is taken and the information age and the likely to get into the actual confusion type analysis there's a couple of cases that have addressed this one is the case in the six circuit that we cited and there's a dilute case from the ninety's in the th circuit that we cited and they clearly distinguish a situation where you're dealing with green bay wisconsin and they would google the wrong address and they got favorite kings address in madison wisconsin and sent the package to madison was going to win when they became cancers the phone and says you reach very big can i help you they're looking for they did the bites like spray foam chemical type stuff from faking it from us they rent free big rents they rent the lives she she had you know for like three different transactions symptom checks the right place and one time  so in her mind when you put the two together in her mind there is this corporate history where favorite drink used to be a serious that in her mind that's there one of the same so this is confusion that sourced from this prior corporate history she thought it was feel with regard to the wreaked of late requests to reopen them damages discovery in order for them to get an expert to apply it on a royalty i think it's important it's that the court brought this up as you know the court to his credit was being very deferential in not wanting to to stop them from getting any kind of monetary room ration but they never presented him with a plan b so when when he district court judge i'm just responding oh i'm sorry the court said i didn't mean to mislead you there was some basis for it meaning the rip the royalty i would consider it but then he goes on and says in every case i've ever had plaintiffs came with proof of liability and damage damages which was your obligation so i don't know on what basis i would reopen damages so that there's there's really no basis in the record for when they had an opportunity to pursue pursue profits and as a fallback position have couple of aspects of the district court's decision one is this emphasis on the theory that your clients use of the favorite mame benefits the pla f which i find hard to reconcile with what trademark law i know second thing that concerns me takes the why ability finding as a  given take the injunction the narrow injunction with notices and disclaimers as sufficient why should there be a time limit on that injunction sure taking the st question to the district court although it mentioned the fact that he thought it was bennett that benefited faking it's clear that that's not what drove his decision we look at appendix sixteen  let's look at a place for you to agree with me that that's difficult to find a trademark yes i believe that this that's true this case a little unique and i'll get to that a minute and that there were there was some residual past where they benefited from association  betray mark they were aware of the risk that was the main reason he goes on to add a little color about the benefit but the main reason was you what you went into this and you chose the favorite surname knowing full well that there was another business out there j fake the president of faking used to work for john favre treasure company was aware of the sales nationwide worked himself on pipeline stuff that went to wisconsin was well aware of the fact that there was a use in wisconsin of a big name that's undisputed evidence so that's that was the primary driver he threw in the color of the benefit and then the nd factor that the court says it says the nd the court consider this at the next nd the court considers the nature of the harm at issue here as well as the relation between the over the injunction so those are the two things he weighed the equities here i don't think it was a driving factor the the fact that he thought there was a benefit here but he could be found that they consciously world where of the risk and accepted it by going forward and set the  mistakes hadn't been effective that i don't think it's true that i think the record was that when when folks like lisa parks or others learned that these other two separate companies using the fake surname that they didn't get calls that the testimony was they didn't never get a call back so i think it is effective as far as the type of the sunset provision i think once folks in the madison area recognize that there's two separate companies that have that have some presence of course there were of mistakes the fact that someone continues to make the same mistake that never been there was a handful but the fact that they continue to make the same mistake isn't probative of a trademark confusion where there are attributing the source of one part products to another it's attributed to we're moving way too fast these days and everything information and misinformation is everyone's fingertips but that's not what the lanham act was  i want to start by addressing the court's concern that was raised previously about the use of a family name now the cases are typically requires that the infringer use the full family name and that's what happened for the vast majority of the time that john cave attractor company was in existence used to get a tractor company and it used to primarily and its main business areas necessary in the illinois here we have the infringing part doing the exact opposite which is shortening the name into use well after the trademark owner registered in use the mark and i think this ties in neatly with the way the actual confusion evidence proliferated in this case which was clearly and distinctly after july one two thousand and fifteen when the name faded cat came into use in wisconsin in the upper peninsula of michigan so i think it's important to draw those distinctions when we're talking about the use of a family name now in terms of the remedying of the harm and whether or not the efforts at the previous efforts during the pendency of the litigation and how that comports with the court order and that the jury that the court has to remediate the harm i think that the evidence is clear that you know and if you look at the record this is record number three hundred and sixty nine pages fifty seven through sixty one this was the cross questioned it became apparent that his efforts to reach out to these vendors for absolutely no fruit in terms of the actual confusion now looking at someone like and then wrote tribe which is a joint customer there's consistent testimony that they continuously contacted favorite inc for contacted david kink mistakenly and they specifically said that they assumed that we were all the same and requested that we affirm it if we try harder to address what they can perceive to be this continuing confusion now these accounts payable in these checks and all of these things that  talking about i think the argument that's important understand here is that the the damage in terms of loss of control and the issues we remedy  draw a direct line with the with the harm that's caused by those kinds of confusion so miss parks of unlimited decorating faded continuously billed her for an invoice that she thought she paid we have customers that are calling us because jay if he isn't paying their bills and they're assuming that we are connected that we are the same entity and that kind of reputational damage that kind of effect on goodwill i problem that the district court is obligated to remediate with once there's a verdict in the favor of the plaintiff as there was in this case now the benefit issue you know i appreciate mr vander take the position that this is color but the reality is that the court mentioned this not once but twice and further tried to support that statement by saying that there was overwhelming evidence that the that there was a benefit to favorite and by virtue of the infringement there's no citation to the record for that statement because of course the only evidence in the record is that it was harmful and that the disclaimer and the notice provisions of the court order were not effective and remediating that harm i also want to draw the court's attention briefly to some of the key is senses of confusion here that show why the attempt to educate j a teco employees or members of the public about who these companies are simply doesn't work he wants to see the fave excuse wants to see the people of the bed liners and everyone it was looking at him like they have no idea what he's talking about there are there is documentary evidence of calls coming in to actually controlling whether or not all of these calls coming the day of teco from bad liners or similar products are actually making it a favorite kink this is the harm that's being done this is the harm that the court was required to remediate in its order after favored prevailed on the trademark infringement claim front of the jury and you better believe that if a big thank sold flowers for a living and someone called tiko asking for flowers they wouldn't be routed to the parts department that's because these are