is welcome to the bar and thank you for your exceptional work this year and we hope to so used to there at the podium some time soon based on inherent distinctiveness the decision to deny that registration was not supported by substantial evidence indeed the t t p ignored significant evidence throughout the case throughout the record documenting why there was an appropriate reason to i correct no your honor that's not correct the reason that's not correct is because the register recitation of the of the of the existing registration and of the current application are not identical and the trademark problem appeal board the examining this application is filed little differences are in the services the difference in the services is one for live entertainment and the existing registration is not covering live entertainment and that was the basis in which the trademark examining attorney agreed but basically would take it basically what you are seeking to do here is to a man and the earlier registration to place it on a different ground as  before the claim of cause that maybe i don't you are not aware of there being any other such cases as well but i would submit that the difference between a registration limited by section two f and a registration that is not so limited is a significant substantial difference and does not make them identical registrations but significant in a new prince receive because it's easier to prove infringement if you've got a mark it's inherently distinct correct which would be the same reason why a supplemental registration and a principal registration also are not considered duplicative because one would be easier to enforce in a litigation context than the other and the rights which flow from them are different and so forth since the rights which the application was never a refusal a final refusal we submitted we argued to the examining attorney that the mark was inherently descriptive and in the upturn it it we submitted to have evidence and specifically requested we man did which given the fact that there was a pending litigation on this registration was obviously not tenable position or they suggested filing a new application for the same art and seek to have a registered as an inherently descript apparently extent that this was deemed to be a duplicate registration or application asking the director to leave thoughts of that burden because that is not statutory requirement that is a requirement of the trademark office which ministry of convenience and the director's office collets up and said that they had colleagues damning attorney and examining attorney has it cited to accept our amended to add the words nature of like entertainment and that way they would not need to reach the question of whether or not we understand why isn't that enough that's not enough your honor for several reasons first of all the playboy bunny costume is a bunny costume it is not custom collar never seen a bunny with a bow tie or no but your honor the predominant portion the custom collars are de minimus portion of that mark it creates a to completely different commercial impression when you have a bare chested man wearing just cuts in collars to having a bunny who happens we wear in cuffs and cops it also is totally different goods and services the playboy bunny is a waitress there is no evidence in the record that a playboy bunny does strip tease and there's also no evidence in the record to support that providing male entertainment entertainment for men is the same target audience as providing so actually i think on that part that part you are not being entirely fair to the evidence of the record i think that the evidence record suggested that playboy bunnies and burlesque dancing and those sorts of things were while may be targeted at men were things that were witnessed by both or enjoyed by both men and women i guess at the time that they were you want to look at the record to reflect but the but the but the fact that there may be some overlap does not address the fact that the that the atmosphere and the intent of the woman attending the chippendales performance is completely different than what they would be experiencing when they went to a playboy club and that their experience and what they would pay attention to w visual cues would be entirely different and that is that is fundamentally in the record we see constant repetition including in articles presented by the trademark attorney that women and men's clubs are totally different in atmosphere a who are your honor when someone would attend when someone attended the chippendale shell they did not see an individual performer wearing the cuffs and collars they saw the entire group of performers wearing the cuts and collars which makes it entirely different that when some strippers would come out wearing cowboys or indian outfits everyone in the group is wearing this every the bartenders are wearing this the wait staff is wearing wait wait i think and if there is i thought there was not evidence in the record that  capillary your honor that's what the majority said but as the dissent notes there is in fact evidence to that effect and i would direct a rare honor to the two pages three twenty three three twenty four and three thirty was that first of all this was a unique design i'm confused as that is that statement correct i thought that the whole notion of inherent to stick to this is that you if you had a unique more that it was assumed that would serve as a source identifier you don't have to worry about whether the customers would actually view it as well i think i think your honor if i think that if a consumer recognizes that this is a designation of the particular group he doesn't need to identify which group it is on but in order to get a registration you don't have to come in and show that consumers would identify this is a chippendale's market secondary meaning it's clear that you don't have to have secondary meaning other that's correct because of and here the reason why this was perceived as a unique identifier was because it was used by the entire group was on promotional materials it was also unique in the sense that it was it was not a symbol that it heretofore been used or recognizable in any context and therefore the buck unit but the bunnies your honor did not have it standing alone it was part of the entire costume like the tuxedo but removing the garment so that all that's left is that is the skeleton was it significant because it provided a space for the woman to put her own fantasy and her own context to into the mark and that's what was in the biting and that's what made th understand the point of the seabrooke test to be that if if something is not a unique identifier if it's common in the business that someone should be able to appropriate it or purposes of registration is that is that what the seabrooke test is designed to together have seen protests is designed to yes run it's designed to make sure that people do not use server common symbols and private competitors just as you would be able to register something that was descript penguin shaped tell shaker which he said would not be inherently distinctive but under the zebra test it would be unique would be unusual and it would therefore fall within the ambit possibly of seabrooke as being inherently distinctive and i think that's why the supreme court did not accept the wal mart the seabrooke test for trying to use that as a way of applying it because it's not a workable tests and the evidence in this case indicates how untenable that position has been by virtue of the inconsistent ways which the playboy bunny  honor i believe that the fact that the supreme court issued wal mart frees you from the precedent because the supreme court is best precedent over this court and a panel of this is the first panel to hear a case in which that issue is raised if it that the supreme court has changed the state of the law is empowered and in fighting directed under the law to actually revisit the issue and make its own decision it will let's put that aside for a moment let's assume that we have to apply the seabrook to yes russian is you know how generic as the does the thing have to be how common is a have to be in that's what you're really or about and and you're saying that as a matter of law this is a common mark even though a flashlight is a common design when used outside of tire repair and therefore it was inspired by the flashlight but that did not mean that the mark was not inherently descriptive a similar situation happened  involving the use of an ice cream cone design with respect to baby plants the fact that they were there arguably as i don't believe the record actually supports this is the dissent says it's a slender reed to rely on one statement in the record  discuss before the panel raised it in their opinion but i don't believe but i believe that even if you accept that panel's finding on this issue that inspiration does not have anything to do with whether or not a mark is inherently descriptive and here the record  as to the fact that this was a strong visual cue that is the result of a consumer focus group performed in two thousand and two there is replete with examples of non lawyers non trademark experts referring to this mark as a trademark and recognizing it as a symbol of the company and then decision to that we have produced competent at that expert testimony a great length providing three distinct social this is an interesting case but it's really not a complicated one there is substantial evidence the seabrook test we'll be getting is the idea that it's to prevent people from appropriating common works that is that what the purpose of the seabrooke test is well that's the purpose why we don't register terms or trade dress that are not inherently distinctive if it's descriptive we require that they have to show that the public i didn't understand that that was or other than someone with a stake of less when you don't have to prove that the public would identify the particular mark with a particular source it's a it's presumed right that's the whole point of it here that's not inherently distinctive that's product design it serves a source it serves a purpose other than just words identification and why because it makes the product more appealing well they didn't think about it to they took products outside inherent distinctiveness i mean that's that's what the case is about right that but the question is what do what are we trying to get at with the seabrooke test the we're saying it's not fair for somebody to appropriate something which is a common mark in the business is that what is that what the what the purpose of it is i think that's probably the underlying policy but it's trying to answer the question if it's new or unusual if it's something different unexpected well then consumers are going to be more predisposed to think of it as a source identifier then if it's something that they're used to seeing in that field is it just a mere refinements of existing or an imitation or dress that they're used to seeing as ornamentation or dress and that's exactly what we have here the one thing that's common to adult entertainment be it by males for females females for males regardless of the gender of the audience it's stripping it's costumes it's taking on have lower arm with that i do think that  there's a serious question about because of the playboy bunny symbol which was how many well known as judge moore points up but you to your theory that even apart from the playboy bunny the fact that costumes are used belt entertainment somehow means that no cost and can be inherently distinctive that that seems like a stretch our position isn't that no custom could be inherently distinctive but you'd have to have something more than just the vestige of a different costumes are used in adult entertainment somebody so that because different costumes are used no cost and we inherently distinctive that's him and i know that the difference is what's expected and what's not you walk into a bank you don't expect to see a bare chested man wearing cuts in color that's out of place that's unusual that's not expected there's no common expectation you're going to walk into a bank and see that so that does cause you to think oh wait that's different but when you walk into an adult entertainment theater just like any other theater performance you expect to see costumes of some kind and we can't do this inquiry in the abstract you've got to look at what the services are what the relevant marketplace is what the context is we agree with the parent there and seabrooke doesn't say you divorce this from the context it says what's the expectation of the consumers in that marketplace is a commonplace or is it unique or unusual and here it's commonplace for the you know we have over a century of evidence from early days of burlesque to modern times that show in the context of adult entertainment you wear costumes and stripping you take them inherently distinctive under that theory that you pesos restaurant decor wouldn't be inherently distinctive because restaurants commonly have different kinds of decor i mean i just don't understand how far that would  can i ask you a question it's very related yes the with the people will suggest that the bunny costume itself is not inherently distinctive when used even though it might have been used for stripping yes it's actually that old like to strike is trying to understand is actually saying no questions i mean if a male stripper walked in with a giant fuzzy giraffe costume or something i wouldn't expect that right i would not expect the giraffe to drop his clothing i mean or take off and cast him i mean it just seems to me that o might be going too far and perhaps customs like this you're right about maybe but really absurd custody is just like the absurdity of walking into a bank and seeing a bare chested man the absurdity of going to a strip bar and seeing you know a giant giraffe costume and why wouldn't that be something that could be inherently this and i think it could be and that that gets to the point that i really wanted to make is you have to look at what we have here these elements that you're not saying my reality that's what i thought you were going with judged like i thought you were you were saying all costumes because people expect costumes and stripping environments all costumes none of them could ever be inherently distant i am not saying that none is the board so i don't think the board was saying that it wouldn't be an album reasons that came pretty close to saying if they were saying that and if we want to go that way that's not unreasonable the supreme court's guidance in trademark cases it's of the same more we are not aware of a case like that you know i am aware of instances where true registrations would be permitted for the same mark where prosecution in the other registration on the way you could do that is to cancel the registration ask for it to go back to examination but here they say they didn't get the chance to make this argument and the office exercised its discretion to let them do changed the identification of services and made the argument that this basis is different and that makes these two different and we do agree that there is a difference and not the rights that you get between an incontestable registration under to us and one that doesn't have that you have notation but there is a difference in what you can do with that registration absent at the office of the two have notation does add some burden when you go to enforce it directly on the strength of the market factor so there is some difference there to have that you have notation or not on the rich and the face of the registration and we exercise her discretion and let them make that that argument here now i'd like to go back to the point about are we trying to say all costumes would never be inherently distinctive and there it's very rare that you have absolutes in trademark law and so i'm i'm not saying that that conclusion and what just the general expectation whatever that's on the burlesque or there's evidence that burlesque dancers wore all types of different customs including formal wear and with no evidence that they were steers book which we point to to explain why she couldn't have been saying what they say she was saying that no one before had ever done this she kept her declaration very carefully to say no one targeted to female audiences specifically but she has an example in her book of a woman wearing a little more than a cups and collar so she couldn't have been saying across the board no one had ever done her right and that that's true but even now that week you know there is pay attention to that and i'm not i'm not asking you to and i'm wasn't in the example that why is this then within seabrooke white why is the fact that there are other costumes used in adult entertainment sufficient to render this not inherently distinctive seabrooke doesn't tell you that you have to have this exact design used to have it be common or unusual or not unusual that's never the test you can be the first and only one to use a word mark that doesn't mean that you're protected or you can be that just as here it even if we assume they are the first no we want to use it cups and color that does not mean source identifications or significance it's not the law understanding your question is it similar enough you're talking about it doesn't have to be the exact same thing but i mean if so i would think the argument would be the cups and comp are similar enough to other sorts of topics that people would  were they so they didn't have to reach they did reject the contention that it was they did reject yes and they accepted the alternative to f argument but in a decision in this case that was the and say ok we now have some better evidence of it but they didn't put it on my right they they did not and again this is very unique at the time the  distinctiveness and the applicant also indicated it was willing to have the exam eternity consider the register ability under section two s then the exam internee would do that and that's what happened in the prior registration the as to what it's doing and give them the option to either appeal the underlying refusal of non distinctiveness or drop that and accept the two f and that meant if it's not clear that the applicant is clearly agreeing to an amendment under section two of the examinator now have to contact them and they can go to the file that says the applicant agreed or they want to maintain the underlying refusal so that they can appeal it to the board and i think that's really the only reason why we're here it's we you know the examining attorney the office exercise discretion to allow them to make this argument not inherently distinctive with that was a reasonable predicate it's not inherently distinctive and here the modern evidence in the burlesque evidence establishes that because remember we're determining register ability at the time they come in for the application and here we have this unique again unique circumstance where they waited over well twenty five years for this application to come in and there's it's the evidence is clouded by all their evidence acquired to think that this year no one paid so huge that it was  the examining attorney says no it isn't and i have a distinct recourse no at that point as i understand it the the applicant has to come in and they're in the best position to do so with evidence as to inherent distinctiveness in pacer tech merely arguing that the design patents were actually in the marketplace without putting in evidence to show that wasn't enough and at that point  the examining attorney considers that evidence and either agrees or disagrees that it shows them here distinctiveness that's what happened here and it went up to the board the board considered all the evidence didn't find their evidence probative their evidence that they're referring a little bit of the reverse situation here where this is not a case where there's any evidence that it's become generic or lost trademark significance the evidence shows it has acquired trademark significance but it doesn't show that immediately whenever you look at it and we were meant to look at it as of today and the modern evidence shows that it is extremely common in the delta entertainment industry and particularly and for male strippers to dine in various costumes carry over to restaurants have decor so any decor must be inherently are not not inherently distinctive now that's naturally certain decor is inherently distinctive it's got to be the right combination of elements we don't have the right combination of elements here now i would like to just address a couple of other points but i think that your your could never be inherently distinctive in the g b said the examining internees argument because drink cans commonly have designs covering their entire service and the designs covering the entire surface of a drink can is a mere refinement of that practice and they evidence to overcome that because the evidence we showed was the context of a group of dancers all wearing the same costumes it was in a costume it was a uniform and just as the dallas cheerleaders all restaurant or in the marble man having been found to be a distant parent lee distinctive trademark even though it's just the cowboy there are those cases show that when the consumer has an expectation because it's out of the ordinary and seen men dressed with nothing but cups and coat bow ties is out of the ordinary and seeing all of the people there doing that and even if it wasn't the bartenders in the waitstaff was certainly all of the performers which isn't different experience of what happened in burlesque with individual dancers came up and did different things and individual dancer doing something is not the same as a group and the group experience is what we tell the consumer this is something that means chippendales it just doesn't mean a