term cost but here as a mark in the us for advertising services and there was no substantial effects of any claim to use with any us and users lower court erred in finding that view every show had common law rights for advertising services because they were not sufficiently separate from the subject and they were merely incidental to the sale of those goods the court also erred in relying on testimony from an inadmissible document compilation district court committed legal error and as a result this court should issue a reversal to the extent it found facts after a trial you have to establish not only that it was error but that it was clearly erroneous to the extent he made a mistake of law of course that's a different thing sure and as the court  the court made clear the that the error here or as we make clear in our brief the error was that any testimony relied upon from a purely it in miscible document can't be used to ultimately make the findings that were here there's a there's a review of the the legal error here not just the issue of whether or not there was a finding of fact th e the court went out of its way to try to deal with that issue and raised raised what was well to the extent the witness had personal and independent knowledge of what was contained in a written document the fact that the document was struck as hearsay would not yield the conclusion that the independent testimony based on personal recollection would be struck as well so you have to establish that the witness was not able to testify from personal independent recollection about the matter it's not enough to simply say the document didn't come in as hearsay agreed and in this case that this scenario you just laid out was present that the witness did not have independent recollection instead mr bowler when questioning the witness it was explicitly asked by the court do you want to admit this and his answer was no i'd like to authenticate the document and then read through tab after tab and had the witness identify specific numbers there was no indication in the record that there wasn't a belief our understanding that oh as a result this was my independent recollection of of sales numbers or traffic web traffic numbers or anything instead it was and testified that it was over four million he didn't give the precise number in that but didn't he testify that he had personal knowledge outside this part yes based upon looking at the spreadsheet so so while the witness was certainly someone who could potentially have that information available in this situation the court explicitly relied on those numbers themselves and the court relied upon the testimony that was elicited from that you had a question is if you know ok so so when when faced with putting that in its own little side pocket the larger concern is even assuming that there was potentially some admissible  evidence or testimony about some use it comes back to the heart of is there use is there use of a trademark from a foreign website from a foreign entity in the a common law trademark in the u s when you're talking about advertising services so this is not simply the sale of a good because there was what do we used the term and whether or not a in film works versus drago to separate us why are we using the other circuits to us when we use our own to us because when you're looking at the advertising services concept it's a very narrow specific issue and then combine that with the substantial effects test because you're dealing with a foreign entity trying to claim us rights we can use our own to us to reach that determination to reach that issue we think that the the the in re advertising is more instructive and more on point with dealing with an eye common law advertising services claim because in this situation there is there is a claim that there was use by merely having three different types of use they claim they're relying on three different types of use one was the preferred product placement another is the google banner displays and lastly the marketplace sellers think the federal i think that the the federal circuit and re advertising is is more appropriate for this type of facts an area the the question before the court was it was always about use it was never about anything other then there was no use and without use the the foreign entity can't try to reclaim or claim any rights from the us ownership of this domain it's about whether or not that foreign entity can step in and declare and and prove use and substantial effects of such use there was testimony that some individual companies purchased advertising services from the ever a right they use the google but but they also had some testimony that some individual companies purchased their advertising services right that assumes that you were deciding that there was an actual advertising service purchased which we don't believe is the case ok let me rephrase my question there was testimony that companies to run their banner ad on their platform right to put a preferred product placement again i'm not talking the i know the preferred product placement or but the banner ads came in two forms there was the google banner ads but there were also individual companies that they specifically contracted with individually right so there are three scenarios and definitions might really help us here me instruct and even if the court is so inclined on tab one thousand is is maybe what you're talking about but i think if you want to look and talk about what can the the high product placement versions are when you look at any major web site and it's got beautiful looking and plays saying oh here's this product that's not an advertisement even if that company paid for preferred placement because just like if you walked into publi were put at issue were done through google and google is completely and totally separate and as a result view of a radio has zero control and without control there is no right to a trademark trademark rights demand control now there was testimony that they were they have their control is that they can execute well of course they can exclude certain things everyone who will make sure that everyone has the ability to make sure that there's not pornography ads on their website if they're  a type of business that doesn't want that or to exclude a competitor for instance but an exclusion does not therefore create advertising rights where that whereby they exert control over such advertising rights and then the third understood it from your brief and really more so on the reply that in order to establish their ownership or prior use they have to show substantial effects in the united states yes but isn't a substantial effects language that you're citing doesn't that come from the steel versus bill of a case that is talking about the jurisdictional test not the ownership test and aren't they different no i don't think they're different yes it is a jurisdictional question but that jurisdiction question is observed in the question of whether or not there are rights to begin with so are there rights in the us that they're claiming and the only way to make that analysis and walking down that path of do you have a trademark do you have rights is that trademark in use and what is the substantial effect of that use and it and the case law that that is cited to even even within the circuit looks to whether or not there was a jurisdictional question and that's an argument  briefing as well this is just purely jurisdictional no it's more than jurisdictional it goes to the heart of we have to determine whether you can exert the lanham act in the united states can a foreign entity get to claim rights them and it and the only way to do that is to determine if there was a substantial effect within the united states elementary of the the steel vs bull of a watch is about exercising jurisdiction over infringement occurring in a foreign country here the infringement occurs in the united states by minnesota company tha the service is being offered qualified as use for advertising services then yes certainly the us government and the courts can regulate foreign commerce in that way under the lanham act that's not the question which then leads to the question by judge howard yes that's why the substantial effects test matters here in order to determine that merely the existence is not enough so for instance in the eleventh circuit hard rock case payments to s companies from the foreign entity still had no substantial effect the eleventh circuit case makes that makes that look at and so so the it it has to be the larger look it has to be the deeper as judge wilson noted there's also use in commerce and what is enough to establish ownership rights and i meant to address those in that order unless there's any other  way that you'd like me to your honor but i don't think that is with respect to the first issue insurers to jurisdictional use in commerce i don't think there's any serious debate in the apple and hasn't to answer why it doesn't believe our advertising sermon services or classic commerce with a foreign nation that falls under article one section forty forty five of the lanham accepts out section fifteen u s c eleven twenty seven defines what is that constitutes jurisdictional use in commerce of a mark and it  essentially sets out as mccarthy's and i think the court an international bank or part of the fourth circuit noted a two part test in the first inquiry is for jurisdictional uses that the mark must be used either in the sale or advertising of a service and secondly the service must be rendered in commerce this court in planetary motion which was cited by listings the banner ads in the marketplace seller program are clearly are clearly fall into the sale of the use of a mark in the sale of advertising of a service the district court also found that we have an inherently distinctive mark that is fansub fall or arbitrary which is it doesn't need to be shown to be distinctive it is distinctive at the time of the registration and there was a reregistration of the disputed domain name by direct neech not only after the white vote decision in two thousand and fifteen used how is the preferred product placement really any different than when i get a publix and they have diet coke right in front waiting for me as opposed to diet pepsi it's a good question and your honor the i think it's the of situation that would involve an advertising service our business is operating an appliance store distributing the products of third parties under their brand names with a preferred directory listing mr oath on vila testified i think it was a docket one twenty nine maybe around page forty forty one he said there are three different negotiations three separate different negotiations with that product reseller first we negotiate the volume of product we want to purchase from a supplier and the price secondly we negotiate we look at whether we sell more product than we order and if we did that we negotiate a discount third separate in above that over and above that is a separate transaction where we have a limited number of spaces on the website that we offer to preferred clients who want their product placed preferentially kind of above and set apart from the ordinary product and in return for that placement we their get a payment from that retailer that supplier or we get a discount so it is a separate service it's a separate business it's a most profitable business as mr oath on testified it's even more profitable than the rendered and we have not only documentary or oral testimony from oath on vila to the rendering but we actually had there were a number of screenshots for the preferred placement ads with various us companies in we had also screen shots showing the rendering of the banner advertising services in and there was circuit that said that the use of a  mark i said that a rendering a rendering is an element of a sale and therefore showing the mark as we did on those web sites screen captures after ten into there with the actual rending are of our service is a use of the mark is in is an association with them are now the second way the use and commerce is used in this touches back to where i think judge wilson cited crystal and planetary motion in that is addresses just what does it take in this  circuit to establish ownership rights of a mark and the court starts out with the going back to just the textual language of section forty five that's  eleven twenty seven and the service mark is just any word or symbol or name used by a person you should have already had that in your brief that's the eleventh circuit standard if we prepare an opinion in this eleventh circuit standard in the district court the federal circuit and so did direct neech in our free trial that we're plainly bound by our case law are we not you are and to the extent there may be any difference between how the federal circuit comes at the question of use in commerce and how we come at that question we are bound by controlling precedent in this circuit i take test set out in crystal and planetary motion you this court looks there it needs to be adoption prior adoption and is step one and step two there is a distinctive services here although sales is not necessary this court in planetary motion said that to warrant protection the use of a mark need not have been gained widespread public recognized take it you would agree that use of the market in association with the of or a hose retail business would not satisfy the use in commerce requirement so you have to look elsewhere to find it right your honor if i could just ask you to rephrase this the first part of your question i you do not dispute that the use of the mark in association with the radio was retail business would common law service mark in connection with the advertising services which it claims to have provided to certain u s companies right that's what you have to look to correct or right look to him and tell me how that meets your standard under planetary etc so we supplied both oral testimony and documentary evidence  testified that we use the mark in connection with their advertising services and when when pressed on whether customers of advertising services transact with cost us by he  space is testimony was repeatedly yes i asked him that with respect to black and decker i asked him that with respect to microsoft at sun dock at one thirty nine at pages one fourteen line twenty five to page one fifteen line ten in addition to that there was trial testimony with respect to preferred placements that to us suppliers negotiate a directly with  he there was also testimony the same with respect to banner advertising is judge howard notice and i think client used to general motors example for banner advertising and that was also the case with the market place ads the those ads were rendered on the costs by he a website in and edition to his testimony there was evidence that the services were actually rendered that is that the search in that is those that is evidence that the service mark is being used in association with the sales of the services itself re crusoe case which the district court cited in its order for the proposition that evidence like are showing use of a mark in the rendering of a service is evidence that the market is used to identify the service and testified about general motors but he testified it sort of about it sort of more hypothetically he was saying it was explaining how he had might negotiate with a particular entity to put the ads directly the banner ads directly on their website so he says it could be that general motors approaches us that way where in the record is there specific evidence of a particular entity contracting directly or negotiating directly with  time on the one issue i've not addressed that was raised in the opening statements was about the court declining to strike the testimony in addition to the record cites that the plaintiff relied on mister as judge howard notice said he had independent knowledge outside that document and when we came back to referencing to a document that there were one million united states is that hers in two thousand and fourteen one point five million visitors from the united states in two thousand and fifteen and in two thousand evidence here showing that causes but here mark is displayed prominently during the rendering of the advertising services no i think there's there's almost none and the reason is because that premise is the concept on the top of every ve words for mccarthy are helpful those services that are commonly incidental to the production of or sale of goods do not constitute services sufficient to justify the registration of a mark they are expected or routine from the d expected a routine that they're going to sell their goods this is not and has never been advertising it is merely i take it you do not disagree that the question of whether a market has been used to identify a particular type of service is a question of fact that we review only for clear error yes except in this situation there was a failure to apply the correct however the reverse would also need to be true and in a similar situation where via over asia was seeking to enforce its rights against a us entity would have a difficult time getting held into court thank you much thank you both for your efforts