remember what those items are you put together a list and on that list you have such things as eggs milk bread oranges coffee oh and one more thing don't forget to pick up a layout thing a layout now most people listening to that list will understand what i've listed but layout sticks out it's different what is a layout well what is a layout app know the martin seem to stick out as much the marker honor is layout it's not layout app i agree that it could be you could take a lot of marks that would be generic if additional words are added to him to not become generic when you leave out that word and also don't you have to consider the context in which the word is used nor would say in the case of a generic mark that's the exception the market self says what it is if you take into account the context that gets into a suggestive mark and that's what we believe that this market is we for it falls into the suggestive category that once you know what the product is once you know the context in which it is used so we can't consider that it's an app it is that's your argument that we cannot consider that this is an application no i would not go so far as to say you can't consent that's the context that it is the context but the thing is layout it is an amp but layout and amp are not synonymous and when you say there's lash like nap when i got to apps and my phone that's called flashlight well this isn't necessarily mean that it well that gets into another question flashlight for what kind of app it depends on what the app does now if shines a bright light at something and helps me see last night i couldn't find  light switch on the lamp by the bed so i turned on my flashlight app to find it it turns on a light but if your client sap helps people lay out photos that's one of several things that it does it again if you have the fly but it's a  people are going to find it looking as for layout add just like i found a flashlight looking for a flashlight app i'm not sure i understand that this term has any distinction other than describing what it does which which is the point i think the district court made it all really dat term does this describe what it does so what's your strongest argument the strongest argument is that a an average person looking at this would not know what layout is looking at an average person looking at what exactly what appears on the we have that appears and i call on the icon that's just as low and it wouldn't know what it was simply by looking at the icon looking at the icon what it does another example you could do looking at the word you're telling me that someone using a smart if i use the way that person be interested in buying your client's app i don't know it depends if the not all trademarks have to be descriptive in fact the best trademarks have absolutely no description if i go to a computer store and i see apple is that going to tell me anything about the product i'm going to need to find out more so people don't look to the apps to be descriptive well prayed martis this doesn't do apple i agree and that's your client's sat does do layout  doesn't highlight any of those things that in just encourages people to find the layout app exact is what even your client called it what everybody seems to call it and i will respect your honor i think you're making the point for me but they don't not describing all those other features you're trying to tell me that your client's app contains or trying to describe your client's app distinctly from anybody else's app that accomplishes similar tasks and that is why the trademark does not describe what the product clients trademark does describe it so it's not a good trademark just by your definition you know with all due respect your honor i thought you said that it doesn't describe editing it doesn't describe other things but your client's name layout doesn't automatically cause somebody to say oh wow that's an apple i pad this is a layout do all those other things that it's just not the same kind of creature all that gets into the question of secondary meaning which  the court knows we never got to because the district court said this is generic and in the case of a generic trademark regardless of how much secondary meaning exists you simply do not have rights now we had the case proceeded we had evidence that there is secondary meaning but the the what makes this case the reason we're here is once the district court said the mark is generic not merely descriptive not suggestive once the court said the mark is generic it's game over doesn't matter how much secondary meaning we have it doesn't matter how famous the market is if it's generic you simply cannot get protection and we are that is the issue that we have up here on appeal now there may be very many other reasons why mr swanson doesn't have rights in the layout mark but we're not there yet we were shot down on the ground that this mark is generic and that is what we say is the fundamental error made by the district court below layout is not one of those words that people know it's not it's not breads not apple it's not vague i would suggest respectfully that that means that it's not generic generic marks are the whole purpose of protecting error of voiding trademark protection for generic marks is we don't want to restrict people from using the english language to describe everyday items you don't want to say i want to go to the store and the fact that layout has other meanings make the use in this context any less generic i mean if it's generic for this use that is what it does is lay out photographs  pattern how does the fact that layout may mean something else such as laying on a beach make the first use of the term any less you nary because because this is the first time that we've used this mark first time we're aware of the word layout being used for an app district court at the hearing on the bill somebody was the first app called flashlight that didn't make it any less generic well do we know for a fact that it was that anybody tried to give the trademark on that and again going back to that hypothetical if  try to get a trademark on that army to your client register for a trademark so it's just he used it and now he's trying to lay claim to it but my point first doesn't mean it's unique it depends on whether the word is being used to describe the actual product and we respectfully submit that our client was the first to use layout for a mobile application not the first one to use layout for arranging photographs and so forth we have to look at what the product is the product is not a series of photographs it's not a tool that's used by newspapers to edit pages and move photographs around it is an app it is a piece of software is not a layout if you just say layout in the in the context another example of a you can come up with when i was young a model railroads were popular and kids used to talk about oh that's really neat layout you have meaning how the tracks were arranged layout was used in that sense had nothing to do with photographs now if i came up with a magazine devoted to model railroad and i call that layout would you say that's a generic mark a magazine that's devoted to model railroading that uses the word layout which admittedly is used in model railroading to describe an arrangement of tracks if you use that as a magazine would you say that's generic or would you say well that's kind of clever i sort of see the connection you know once i understand the context of it layout sort of makes sense for this magazine i submit we fall into the same category here and that's an example of layout that's got nothing to do with photographs it's got nothing to do with putting together  pages in a newspaper and in that sense when you look at what mr swansons app actually is it's an app that goes on an i phone and it enables you to edit photographs you can make them bigger you can make them smaller you can crop and you can add  captions to and among other things you can put this one here you can put that one there if you focus solely on the arranging the photographs and you ignore everything else that it does that's what the district court says that i because arranging photographs is used in the publishing sense publishers call that layout that means that the app itself is a layout and calling the app layout is generic argument obviously i'm biased but our extending the concept of generic far beyond its normal bounds and the district court erred in that sense and i think that by saying that the market generic and not letting the case proceed forward to develop a secondary morning your honor smith please the court my name is christopher verus and i'm here on behalf of instagram what's before the court on review today's an appeal from a final judgment that the mark layout as used by this appellant is generic and he doesn't use it in connection with groceries or magazines or model trains he uses it for a mobile application that he described as being all about laying out photos in a grid formation a layout and he has no trademark registrations so in the district he didn't say it was all about council and you have a very strong argument but in fairness he didn't think was all about one of his arguments is that it does other things that's for in the briefing your honor he did argue that the the app does other things one of the statements in the record by the appellant himself in an e mail that he sent about want to argue this point you don't need to act very well your honor it is an app that is for the purpose of creating layouts he has no trademark registration therefore in the district court he had the burden of proving that he has trademark rights and more specifically he had the burden of proving that the term layout is not in fact generic and the district courts conclusions of law here are reviewed including the standard that the district court applied its conclusions of facts findings of fact are reviewed for clear error the the district court applied identified and applied the correct standard for generic miss in this circuit and the standard for generic mishear the substantive standard is whether the term identifies the type of product as opposed to the source counsel didn't the district court attest that we normally don't use i don't we usually ask what are you and who are you and the district court at it what do you do right when it goes to function and that's not the general test so what about that that is true the rhetorical questions to who are you what are you questions those are not the substantive standard device to apply the standard and when you're talking about concrete objects right a desk or a chair well of those are not the tests why would you add what are you doing to the mix because the substantive standard is does the mark does the alleged mark identify the type of product with a concrete object of a very literal construction what are you you're a desk you're a chair when you're dealing with a service or when you're dealing with a kind of a computer program a type of computer program that performs a function picking a name that simply identifies that function identifies type not source you could have and there are in fact a ten twelve endless number of computer programs that perform the same function so when you pick a name that identifies that function you're identifying type and that was what the district court understood and that was her discussion about the what do you do test she wasn't changing the substantive standard she was putting that rhetorical inquiry into context because when you deal with a computer program that performs a function a name that simply tells you what the function is tells you what type of computer program you're dealing with and that is generic under the law as well if you said what am i i'm an app that arranges photos what would so much as she said when you put the inquiry into this context what are you a layout app that would have been that would've been an appropriate thing for the district court to say i don't think she made any substantive change by saying if you also ask what do you do i create layouts that that also goes to the underlying substantive issue of type i don't think it was a substantive change in the test as the test she said in the contents of applications for mobile devices whose identity of nature is inseparable from the function or functions the performs that test for identifying generic product names may be more productively conceived asked the question what do you do so she's praised it in terms of a test she has but the substantive standard is what matters here and that she did not change right type of a name that identifies the type in this context as used by this appellant identifies the type of product so counsel what language in the district court decision are you relying upon dan to support your argument that the district court  relied upon the appropriate analysis tell me the language that you are relying upon in the district court decision your honor she cited and quoted the page are you on the record in the order in motion for preliminary injunction is that word is yes and tell me the specific language that you are relying upon to support your argument that the district court actually relied on the function t where the district court starting at about nine fourteen quotes the standard for generic mis set up by this court in the advertised dot com case that to determine whether a term is generic the court looks to whether consumers understand the word to refer only to a particular producer's goods source that's my program now or whether the consumer understands the words to refer to the goods themselves the problem with that is the next paragraph  t to distinguish applications from mobile devices from our basic standard that we've set so how do you reconcile those two so what the district court was doing there i think and the reason that  shouldn't be any trouble affirming the judgment is that she was putting that the inquiry into the context of mobile applications again computer software that performs a function so this analysis doesn't take place in a vacuum but the question before the district court was when consumers in the market place and counter an app called layout when they're in the apple store or the google store or the amazon store when they come across an app called layout what do they understand it to be do they and are they going to understand that to be an identifier of source or an identifier of type and the evidence before the district court was overwhelming that in this unique marketplace a name that identifies function is used to identify t and so you look at this like it would be if if it were called cut and paste exactly i think it's very important in this context this can be a verb i agree i absolutely agree  computer software exists to perform a function it exists to do something in that particular platform yes and in that particular context and what was what's unique about this case and the evidence that was before the district court is that this is a uniquely crowded marketplace and we had dr kirshner submitted his expert report where he talked about the fact that just in the apple store which is one of several stores you can get these in two thousand and fifteen there were twice as many mobile applications as words in the unabridged dictionary and one of the things that is such a uniquely crowded marketplace does is it causes developers in order to get noticed right to use generic function names how do you get noticed in a marketplace that crowded you name your app based on the terms that consumers are going to use when they're searching for something to do function access that doesn't make it distinctive in the sense of being noticed it makes them possible for the consumer to sort right how to find something at least in the gross category exactly and that's that is why people use these generic function names so that when  consumer types in best layout app which consumers in this case did that was in the search evidence submitted by the appellant if you have the name layout you're going to pop up right it helps you to be seen to show up in the search results the other thing dr kirshner explained i just can i just forgive me for interrupting council but it helps you to be seen but just to finish this thought about sorting it helps you to be seen along with a whole bunch of other guys who are called laya exactly yes so you're not really being distinctive yet the consumer is going to have to drill down right to sort those but at least they're in the right category exactly yes you're in the right category you show up along with a bunch of others called layout now the business calculation that people like the  well is that when people search for a layout they're going to get a bunch of results called layout and we had that in the record that there were several other apps that use layout in the first word first two words then the way that consumers sort and identify source and this is what dr kurt talked about is they look at other information they look at the publisher name they look at the graphical icon because that might be distinctive but the first cut sorry the first sort is generic i think that's your argument exactly yes and there and so consumers understand this they're primed to see the name and think ok this is the group of apps that do layouts the crime to see the name what name i'm sorry you said the prime to see the name and i thought we're just talking at a generic name so now you're wobbly in this part of the argument on the test what's your response to that respectfully and i think that that's the law as to the exact opposite all of this analysis must take place in context the because the question is how do consumers perceive the name you can't do that analysis in a vacuum write the word lay out hanging out there in a vacuum is not how consumers come across this they're in a mobile app store oftentimes looking at photos for ta graffiti related mobile applications that's how they when they encounter layout and whether they're going to be confused or not depends entirely on the context of kelso what case most strongly support your argument that context matters in the analysis i think the retail services case from the fourth circuit that is obviously not binding here but it was a very similar context where it was a website called freebies dot com and there are a lot of other websites that offered freebies and used variations of freebies and it was a declaratory judgment ok so the defendant in that case but the alleged market owner argued that there are website was not a freebie they didn't give away freebies and the fourth circuit looked at that they called it a razor thin distinction and rejected it pointing out that even though the defendants do not directly distribute free products or for their business nonetheless revolves around freebies in the generic sense of the counsel is your reliance on the fourth circuit case a concession that there is no ninth circuit case that says context matters in s the case do you want to some yes writers i think the the go back to the standard of review here that the district court identified the correct standard she applied the correct standard the appellant had the burden of proof and when you look at the evidence that was part of the record he submitted no evidence to support to satisfy his burden that consumers perceive this functional word as anything other than generic opposed that you had overwhelming evidence including his own use of the word the layout you say what do you do then this starts getting into the question of well i'd lay out and start becoming a little bit ambiguous but i think that was a radical change that was adopted by the district court i don't think is just a s test that the district court adopted here obviously if that's something that's going to be a new test in the ninth circuit that should come from this court and not from the district court with respect to the issue of context your honor i don't i didn't mean to say the context is absolutely an important in in determining these things and i think that our example that i've always been using about an apple whether it's generic or not generic depends on the context if we're talking about fruit obviously it's generic if we're talking about  computers it is not generic to bring this into our case here to say what what is a context the context is a mobile app it's not moving photographs around it's not a visual collection of photographs it's a app so if you just say layout in connection with an app does that really tell you or does it tell you so specifically what it is that there's no question what it does as i said the layout for that referred to catching a reason to beach somewhere that i can think