intentional theft copying and use of another's trademark and placing that trademark on identical good sent out in the commerce we urge this court to answer that question the negative that the lanham act would never condone such intentional actions the district court committed clear air when it condoned on the as intentional theft of its own client's trademark and put that mark out into the well let me ask you that because that seems like it sort of revolves on the confusion determination yes right and so you know i always looked next to this is summary judgment was it a trial and then ok we have a trial here so we have someone that heard all the evidence and went to the factors and then you both have you have conflicting experts and there was an expert that was called by the other side that came just some conclusion that i don't know it was something in the ninety's ninety percent tiles as to that how they did their business and  and so if he relied on their expert and found their expert more credible than the expert that you put forth how do i find clear air on that what's your best argument for that to point your honor and i believe you're talking about the survey evidence done by their expert mr callan first we challenge that survey that it should first be inadmissible because it was hearsay the surveys were not disclosed to us so you're right the court relied heavily upon those surveys which should never have been admitted mid in the court the court did admit the surveys on the ground of present sense impression but that's not what the surveys were asking present sense impression is when in a trade mark arena you're shown t different persons for example and you ask where do you think this person comes from who makes it and somebody gives that answer that's a present sense impression here surveys were sent out asking people to give their knowledge not their present sense impression to what they know in the furniture industry and when you're doing that and you want to rely on the residual hearsay exception you have to disclose the name and address of the declarant because that would allow us to meet that evidence we'd be able to go talk to those people tell us why you don't know or you do know of stone creek and the district court committed an abuse of discretion in admitting that it but your honor so i don't even know if you need to get there because the court relied on that survey evidence for geographical separation and kind of said you know the survey evidence on geographical separation it's going to overcome all the sleep factors that we don't need to pay attention to factors cuz of this geographical distance here's the problem an intentional copying of another's mark that's the distinguishing factor between a lot of cases that rely on geographical distances opposing counsel oh excuse me on the up you're hearing clear errors so and i know that's the factor in how there isn't it does seems to be undisputed that it's the same mark yes you're on a cell that seems to be and that's a really important factor you're shown that if it seems to me almost have to get me to a matter of law yes your honor and they misapplied the sleep crap factors so when we look to the matter of law right i urge this court to follow the burb brookfield decision we're brookfield announcement of an important point it says when you have virtually similar marks here we have identical that they took it from a clown car car our person their client and you put it on identical goods confusion is going to follow as a matter of course that's also the op this is a matter of law though i think it should be as a matter of law what is that the law well is if that if that's only the if that factor is satisfied which here it is shown or does that mean give me a case that says you don't still have to look at the other factors i know what's really important factor well  at the other factors and let me ask you about the other factors so it seemed to me that the court may have misapplied as a matter of law the question of the strength of the mark because the court didn't look at all as i understand it maybe the other side can point me to it to really what we normally look at in strength of the law as to whether is it generic is it descriptive is it suggestive is it fanciful an arbitrary to the court make any determination on that yes the court found that the market was strong in the arizona market but not in the bon ton area but that's not a question of the nature of the mark that's a geographic determination correctly your honor this mark was arbitrary and fanciful the strongest of all marks entitle to the full protection of the lanham act now when you have that you don't need to get secondary meaning in the markets you just have this one mark and it's given the full protection but the court set that aside and we don't know the weight that the court gave the strength of the marks because it's not in the decision they just said well strong in arizona not here but it is a fanciful mark and you are correct judge mckeown that it isn't understood district court that he discounted willfulness because they said look we weren't really trying to trade on you we just needed a mark so we kind of pulled this one out of  at is that then comes down to a question of a how does one define willfulness under the sleek laugh factors and appreciate your comments on yes your honor and if i make at seek a little bit of clarification so so the intent factor that you're correct the core aired again in saying stone creek omni did not intend to trade off your name there for the intent factor we assume the court weighed in favor of omnia but now if you look at the intent factor both the sleep craft case and the brookfield case both make clear that when one person knowingly adopts someone else's mark the intent factor weighs in favor of the plaintiff so now we've got the intent factor some similarity of the marks strength of the marks the proximity of the goods all weighing in favor of stone creek for key elements of the sleep craft factor which shows the district courts err in saying that those factors did not weigh in favor of stone creek now we go on to evidence about jewel confusion once again the district court said there was no evidence of actual confusion the district court erred in this respect its own order cited several instances of actual can confusion by consumers the court seems to be under the impression that confusion can only result when a purchaser purchases a product thinking it was manufactured by someone else this circuit has repeatedly stated that there are other forms of confusion those forms of confusion cited in the order show customers in the bon ton area contacting stone creek saying hey i saw your product in a sponsor store i want to inquire about additional products you have it in this form or this form and the one form of confusion by mr john boffa that's the one that got stone creek paul someone took our mark what's going on here mr botha call stone creek luckily when that phone call came in the president of stone creek was nearby and took the call and he asked him well what's going on here mr bob just as a bought a couch of yours in chicago area he says will let you see the warranty card mr bob ascends stone creek the warranty card and on that warranty card is the identical trademark another instance of actual confusion where this gentleman is seeking to get warranty repair information thinking stone creek was the manufacture of the couch he bought in the bon ton area now those instances of actual confusion when winstone creek learned of it they sent an e mail to the vice president obama are you guys using our mark on product the vice president responded yes we are and the important part of that e mail when the vice president responded was i understand in this day of the internet of internet shopping and surfing that this can be a nuisance for your company if you recognize the power of the internet and bringing the bon ton area and arizona together the president of stone creek then did a search on google which is put into the record stone creek furniture stone creek arizona appeared first on that search result and third ton selling the infringing stone creek product and this again goes into the marketing channels that are used to another sleep craft back to the core era where there was no common sleep craft excuse me no common marketing  we see that the power of the internet not only led consumers to stone creek but lead stone creek to find out where the product was being sold by doing research on the internet they had convergent marking channels on the internet which this circuit has held makes confusion more likely so the marking channel's strength of the mark evidence of actual confusion similarity of the marks and intent all weigh heavily in favor of stone creek and the district court erred in concluding it didn't touch upon the geographical location because the district court did say well it doesn't matter the way the sleep traffickers ways because of geographical distances that factor should be set aside given the intentional infringing conduct by omnia if we look at the brennan decision and council says please adopt the brennan decision the brennan decision of the second circuit says in the absence of actual confusion or bad fa geographical distance is a factor here we have bad faith use of our mark they took it and they ran to a different circuit or a different area of the country to use it and wanted to act like no big deal also  of competition competition is not the test as tillamook pointed out the test is confirmed not even confusion it's likelihood of confusion and as tillamook pointed out despite geographical distances if we know somebody is using our mark and it's likely to cause confusion stone creek have an obligation to file suit to protect its mark or to face the latches defense and not be able to ever bring it and that's what they did here to protect their mark also regarding geographical distances the court ignored that stone creek had over six hundred thousand dollars worth the cells in the bomb time trading territory now stone creek has over two hundred million dollars and sells bearing the stone creek mar because of that great amount of cells that they have accomplished bearing that mark the district court discounted six hundred thousand dollars in cells within the bond trading territory but still acknowledged it so what did you determine that you are not going to profits your honor we determine that as we're getting ready for trial actually once we've got an expert done we decided at that time it would be too hard to prove so we supplemented our disclosures to however you never asked your expert to make calculations in light of that how did the district court abuses to discretion i mean that well i think that your honor briefly touch upon it is the standard of section hundred twenty seven is that we vexatiously multiply these proceedings and once we disclose our expert and at that time indicated or didn't update that we're seeking our own profits you know what the circuit allows us to proceed under that  the plain language of section one seventy one one one seven indicates that congress intended to condition monetary awards for section forty three c but not section forty three a on a showing of willfulness so the district  address the nine hundred ninety amendments to the lanham act fifty six hope wrote appeals are brought by the defendant who in the lower court was found to be a willful infringer therefore the question never rose of the standard willfulness or whether the nine ninety nine amendments abrogated the circuits prior position so fifty six hope they were never asked to and if you look at fifty six hope wrote i think it helps into identifying what the willfulness standard is because in that case willfulness was found because the defendant received a phone call saying you do not have the right to use the bob marley image and they used it anyway says the fifty six hope wrote echoing when depend found it will deliberate fault misleading fraudulent all the similar acts of omni in this case your honor the like to reserve the remaining time for but only if you have any questions at this time you may r good good morning honors in may it please the court my name is dan de carlo and i'm here with my colleague in the lewis and we represent the defendant and the apple e in this case mia the omni is use of the stone creek trademark your honour's cause absolutely no consequence to either party my client did not gain anything in the plaintiff did not lose anything with regard to my colleagues are my adversaries comments about sleep craft indicated or that the court did not consider the sleep craft factors to the contrary the court went through a very detailed analysis after a four day bench trial on each and every sle each and every sleek craft factor this court for at least four decades has indicated time and time again in assessing trademark infringement cases that it is a flexible doctrine these are not factors which are to be applied ask you about some of the determinations one has to do with the strength of the mark do you have any case where when the strength of the mark isn't arbitrary or fanciful that somehow the geography weighs in as opposed to a suggested mark your honor the issue of strength and to address the court's specific question about a case i apologize i do not have a case at my fingertips i've been practicing trademark law for twenty years i can explain the concept though  i can almost see the blurb from mccarthy in my in my mind's eye strength of the mark goes to the ability of the consumer to associate a mark with a particular source for the scale of mar suggestive mark is deemed to be stronger why because apple compare apples when applied with computer doesn't assist doesn't describe a computer so it's a stronger mark but what it ultimately goes to is how is the consumer able to recognize the mark so it is possible for in this case it was a stablished that a mark may be strong in phoenix arizona but the consumers in the bon ton trading territory which is what was at issue had absolutely no knowledge of that m so in my little community in signal hill there's of there's a very famous restaurant right down the corner from me everybody in town knows it but nobody in new york knows what that restaurant in restaurant is so that restaurant has a strong presence of strong mark in signal hill california and given the case where this strength if you're looking at channels of distribution then of course you you look at some of the geographic issues and channels of distribution whether it's internet or whether you look at physical presence but i don't understand the strength of the mark to be grounded in a physical geography it's basically it has nothing to do with furniture it's it's arbitrary it's an arbitrary mark fanciful mark under the trademark hierarchy but then if you go to well is there any actual consumer confusion when you have a consumer who says what and we're looking at source not looking at competition you agree with that we're looking at what is the source of the goods i don't agree with ok tell me light in this was  in the comments about the issue with brookfield and independent it is not an accurate statement under this court's precedent to say that same mark on the same goods equals likelihood of confusion no i don't think the cases say that as a matter he acknowledged that brookfield which which mr benson cited to specifically notes this concept and i'll just read it so out your honor it's not true that this is what brookfield says if on the other hand brookfield in west coast did not compete to any extent whatsoever the likelihood of confusion would probably be remote that was in a case where the marks with a cent so here we have a situation march where the same goods are the same the district court concluded after four days of testimony there's absolutely no competition here we have the consumers who need to be tested for likelihood of confusion shopping within a two hundred mile radius or within a radius of a furniture of furniture galleries in the midwest in these cars the bomb total we can produce the bomb on trading territory but how do you explain them these e mails in these phone calls about people calling in contacting very simple the arizona and saying so where is our warranty first of all your honor the district court concluded that was not actual confusion and in fact why isn't that actual confusion the case of cone versus pet smart that's a ninth circuit case your honor to anyone at third professor mccarthy also talks about it in his treatise inquiries are not the same as actual confusion actual confusion requires that the consumer actually knew who in this instance the plaintiff was the situation is the the consumers are at a bond time retail store they see that they see the furniture for whatever reason they leave they punch it up on the internet and they're directed and find the plaintiffs site that's not actual confusion that's inquiry evidence and what's critical to understand in this case your honor because everybody has websites and we cannot and this court has said and other courts have said the mere fact that you have a website doesn't mean you do business everywhere in the world less we would have no marketing channels because everybody know it is everywhere except into the neighborhood six hundred thousand dollars a business out there your honor over i know one mom over twenty years and over two hundred million dollars in sales they claim although that ever it was not at all clear in the record that they did one hundred fifty transactions hundred fifty transactions over twenty years in the bond trading territory but the evidence of trial also showed they never delivered any product out of state so it was there was no explanation a trial as to how on the one hand they could say we never deliver products out of state yet we made sales to these entities i read that testimony and maybe you can help me i thought what they were saying when i read the testimony was say i believe the testimony from the plaintiff was these are addresses that we put in our database all we know is somebody comes either either we deliver it locally or someone comes and picks it up now we introduce that what about the testimony where they say get a shipper and then we use a shipper and then we ship then i i thought i read that and i believe the plane it is a clean volume two of the excerpts of record i believe that's accurate iran or somebody comes up and somebody comes and picks up the goods a ship or comes here except the goods but that there wasn't testimony that in those hundred fifty instances those goods were shipped across the country that a two thousand dollar couch was shipped across the country we tried to find out that evidence but we the plaintiff wouldn't give us access to their customer list so we were thwarted because we're scratching our heads saying this doesn't make any sense who who's going to do this and in fact i believe if i'm remembering correctly there was evidence presented a trial that arizona of course is a heavy snow blower state so we've all lot of people with billing addresses in the east who may be using their residence address for purchasing the items in phoenix arizona with you i think in question i'm talking a little difficulty seen why sanctions were awarded in this case starting with the first sanction order how can stow creek willfulness argument be frivolous if our circuit model jury instructions specifically state that we have yet to determine whether the amended statute requires willfulness the there is to sanction or is your honor the first sanction order was a result of a summary a second summary judgment motion that the plaintiff filed on a duplicative a duplicate of issue so there was a round of some region ment's plaintiffs move for infringement the court said there's a tribal tribal issue play to file a second summary judgment asking the court for a finding of willful infringement and the district court said we already had a summary judgment on the issue of infringement that's a triable issue so the court found that bringing the second motion on summary judgment asking the court to adjudicate infringement which the court had already said was a tr issue was a one nine hundred twenty seven violation the second sanction order resulted from what your honor picked up earlier on which was the repeated representations that they were not going to be seeking damages i believe nine times in rule twenty six disclosures they identified that they were going to be seeking damages in the deposition of their expert which i do recall taking i asked them specifically what are you here to opine on he said it was on our client's profits and i said well did anybody ask you to compute damages the plaintiff lost profits no one ever said no one has ever asked me to do that so up to that point we had hired our own expert had our expert consider the issue of damages at some expense and we took depositions of third parties trying to defend against what ultimately ended up being a phantom damage claim and the district court found a post trial that that was a sanctionable event and i would indicate in both of those situations your honor the court did not is abuse its discretion on the sanction question  getting back to the likelihood of confusing question mr benson mentioned that you cannot steal a trademark the the lanham act doesn't approve the stealing of trademarks your honor i think of a misconception of this case from day one is that trademarks are somehow tangible assets or that you do not steal trademarks trademarks or intangible assets which only represent source so you can infringe your trademark and as this court has said time and time again that infringement analysis testing the the perception of the likely consumer and that is what the whole likelihood of confusion sleep raftery analysis is is all about are my adversary the the opponent had to prove a trial than an appreciable number of rel relevant consumers are likely to be confused as to the source of ami is good we submitted substantial evidence of trial your honor that there was absolute your honour's that there was absolutely no recognition of the consumers in the relevant geographic region which is the bond on trading territory that they had any recognition of the plaintiff that's what our survey expert was all about that was dr kaun and dr cowen survey was soley related to consumer recognition this court has determined time and time again that the issue of whether a survey and a survey expert should be admitted is up to the sound discretion of the district court which will only be disturbed for abuse of discretion there is nothing in the record that suggests that dr cowen's methodology was improper or that the results of his survey work were i is when you adopt your mark is not intent intent does require some kind of effort to coattail to believe that you're going to profit to trade on the good will of your adversary the district court who heard the facts in this case was in a was in the best position to determine whether or not my client when choosing this mark had an intent to trade on the good will of the plaintiff and the test but we have that's where you go back to brookfield and they base you know it seems to me a pretty thin argument to say yeah we know it's your mark and we don't really mean to harm you we just like it so we're going to take it that can't be the law which is why we brookfield talks about intent means if you adopt  mark knowingly either actual or constructive knowledge that it's somebody else's mark isn't that what we have here no your honor what we have here is absolutely and i would disagree with your honor's  premise i could take a trip to naples florida and i can see an ice cream store there that's got a really cool name that i really think is neat you know i wish i could come up with a right now but i just really like the name i come back to my my little house and signal hell california and i start an ice cream shop and i use the same name i'm not willfully infringing anybody's trademark i may not be real usually i'm not even infringing no no but that's that's a different question a willful infringement is different from  confusion factors still requires your honor that the that the defendant accused of infringing had some desire to want to trade on the value of that mark and the value of the mark is not because i think the mark is a cool sounding name the value in the trademark is in its ability for the consumers to recognize that mark with a particular source of goods so my adoption and single helka signal california of an ice cream store with the same name of an ice cream store naples california is not an intent to trade on that goodwill because there is no goodwill in the area where i'm adopting an ice cream store so the court heard the testimony of mr saul for you know my client about that issue and concluded that basically what he did was he chose the name for expediency and again it didn't harm our adversaries at all and it didn't help my client at all had that name not been chosen some other name would have been chosen but they chose th name in the same name in the same field they did and it ended up having zero impact on either party my client at another it's a question of damages no it goes to intent because my client knew at the time that he adopted the mark that it was going to have no impact he's been in the furniture business as he testified his entire adult life he and he had was very familiar with the plaintiff he knew they were a local phoenix company he knew that the market was going to be used in a geographic region where the two would never mix these this this furniture market which was critical to the court the district court's decision is a very localized market yes people use their websites and internet to advertise but with regards to furniture you're people still very much go to their local furniture store to buy big ticket furniture items most people are not buying five thousand dollar couches on the internet so the court that was a significant driving factor in the briefly your honor on the t v rose doctrine if for some reason this court were to find that the district court erred in its application of asleep craft factors on infringement the court in a summary judgment motion the district court in  judgment motion that we filed found that the t v rose doctrine didn't did not apply and i would ask the court to look at that because the doctrine says that if a junior user that would have been our client adopts a mark in a remote area and in good faith that there is no infringement and this relates to common law marks and our mind the court that at the time that this dispute began the plaintiffs mark was a common law mark it was not registered until two not addressed that question some courts have said good faith is destroyed which is what our district court ultimately relied upon if there's any knowledge at all other courts say that the knowledge has to be of an inimitable intent and what i and both of those cases in talk in applying common law the common law t rose doctrine talk about good faith in this concept of an inimitable intent this kind of concept i was just talking about trading on good will so this court did the district court did not adopt that good faith definition instead said you had knowledge he rose destroyed if the court for some reason were to disturb the district courts infringement finding that i would say i would request that a alternative bas our client to prevail would also be the doctor and then finally your honor on the remedies if this court were to say reverse the case again the plaintiff has already acknowledged that they're not seeking any damages the discords me question is only relevant if the court were to find willfulness under the big pen standard and the fifty six hope road standard which the district court was again in a great position to review and i  this this court would have to find that he committed clear error in those factual in those factual findings with regard to the one nine hundred ninety nine amendment the nine hundred ninety men meant was dealing with the dilution section of the lanham act that's forty three c that is not the trademark section it was amended to require that a willful violation of dilution is what's required in order to get remedies and as the federal circuit recently held in a twenty six thousand case romantic fast looking at any other questions thank you very much for your time i ask you for a kind of a bottom line question if that is trick or reverse with respect the likelihood of confusion and infringement and if there were a likelihood of confusion and if the other side is not saved by t rows but you need still need a willfulness word or does that leave you well i think that's why we have this court on summary judgment to reverse the  district court's position the district court took a very very narrow view that wilfulness requires an intent to trade off the goodwill and name of another and i think that's what we have here because they took the name one with substantial goodwill two hundred million dollars and used it and if you look at cases throughout our circuit and discourse throughout our circuit it supports that specifically there is a california case that says you need to exercise due care before you to use a mark and if you don't that's a signal of willful do you think that's a question of law right yes i do draw i do because we know they didn't ask corporate counsel and i think this is important  and he said all i know the furniture business and despite testimony that you could put furniture in a basket he said nope it's a local regional area well when we first call me out on it he they said hey we understand the surfing florida or suing a company in florida for putting them on you name on its website after using the stone creek mark in two thousand and eight he sued another company for putting me on the name and so he knew that goes to the willfulness of his actions and if you look at the california case and there's even a federal circuit case that if you're in this position and you know and you don't use reasonable care that's a sign of infringement of willfulness the facts aren't heavily in dispute on what they did they took the clients mark and they used it and they want to ask this court to approve a road map for future part trademark pirates take any mark you want no matter how successful in the area or go to a different jurisdiction and start using it and it's ok that's their position i strongly disagree with counsel's representation that he can steal a mark of an ice cream shop in florida and start using that exact same business in california because because of the intent because he knows what's going on and he knows the intent freedom he admitted and it's in the court's order he never asked don't creek if you could use the mark he never research where stone creek did business he never said research the geographical so scope of stone creek and despite having trademark council never asked council is it ok if i use this mark he never did any of that that goes to willfulness and if you look at fifty six hope road it is forceful labels a deliberate falls misleading and fraudulent and your honor the heroes case hasn't been appealed the decision of the lower court that is has not been appealed and so we've asked this court to set that aside but even if the court got it right they adopted the majority decision that if you know if someone else is mark