right and then we say if the boys fail to follow it that is a reversible error or if we don't think it's necessarily right it's just a general a p a obligation to address  something that the relevant agency here the board previously did and say here is why we are either repudiating it or distinguishing it and it certainly did the latter right i think that's right here and i've searched for you know federal circuit doctrine on the but from what i remember reading and o m bread the idea is what we're trying to figure out is whether the opposer in that trademark opposition and i guess here would be the prior registrants for five steak whether they would be any further injured by the registration of this new mark compared to the earlier mark that you already have a registration or so and so then the question is ok if the inquiry has always been ok is there any colorable difference between what you had before i guess for five restaurant and now you have something called five steak house that you wan registration great but it seems like the question was well is it would there be any dealt of injury to the other registration and your that's five stay so i think you're closer although i think i would put it this way had opposed our application st john's would have a very strong morehouse defense and he would win on it because o t g could not claim any further injury because we already have five restaurant which is virtually identical to you know the board basically addressed that very inquiry ear and and disagreed and found that you know what you're trying to do with this new application for a trademark is is different enough from sense that they said ok you want to delete restaurant you want to say steak house five steak house and we see we have this other registration on our register called five state and so this is you've you've really migrated into a zone that's closer to five stake by moving away from five state house five restaurant and moving to trying to  so here's where they made their legally when it came right at the moment when you said that's when they made their legal error because the comparison between five restaurant and five takeout street happened in a vacuum they said five steakhouse moves closer to the mark that's the question the question is are five restaurant and five steak house substantially similar do they create the same commercial impression and the reason that's the test is because we have rights in our existing registration under you know one thousand and fifty two d the board is not supposed to allow anything examiner considered five restaurant it never it was never cited never came up it just never came up and the word cited at a guess was you know in patent land you cite a lot of things that you don't find to be a problem but you cite them anyway on the face of the patent so when you say it wasn't cited i couldn't tell whether that meant it wasn't viewed as a ground as a problem or was not problem here though are the inconsistent results from the the printer conference where in two thousand and nine preparing there was no likelihood of confusion between i've restaurant and five state house and the now in two thousand and sixteen all of the sudden there and i'm not really sure that the inquiry depends upon you know whether the examiner you know actually looked at it or not i mean the fact is it proceeded toward registration and if it was likely to cause confusion with five restaurant it shouldn't have but it did well i think what you're arguing is that the agency is being arbitrary and capricious by allowing the five stick mark and now refusing to allow your five state house mark but that's why i'm saying that requires the agency to consciously understand and believe that five stake when it had to decide whether to register it is not confusingly similar to five restaurant and if if they just never found five restaurant more unaware of it then you can't necessarily say that the agency is acting arbitrarily and capriciously in its decision making process of judging the relative confusion among all these different marks of the word five in it so it's true that i don't know what was in the head of the exam in two thousand and nine but i do know what the board did in two thousand and sixteen when it looked at the facts here and  looked at the fact that the two thousand one hundred astray she went through were going to this with an exam or sought or not and didn't give that any weight when it issued its decision in this case which it should have done i mean if you look at the strategic partners test that it said it would apply this case checks all the boxes and it should have proceeded toward registration based on that th factor that decision i do know we have a written opinion on and i know everything that went into that discussion that i think is arbitrary because it disregards what happened in two thousand and nine when the only meaningful difference here and it's again it is just be swapped over one generic term for another is that restaurant turned into steak house and so so the theory would would be that even if confusion is likely and i think it's hard to say that it's not on this history whatever reason whether a mistake was made in the examination or or for some other reason on this history you ought to be mark from registration of anything confusingly similar to it and i deciding no likelihood of confusion in two thousand and nine and then all of a sudden deciding there's a like there is a likelihood of confusion in two thousand and sixteen when we just want the all one's time reading trademarks published for a position so it was missed but more likely than not it certainly looks like you are on the part of the office and it does seem the public who are entitle to rely on it that's dilemma but then of course the other side is how about the rest of the public who will likely than not is that going to be able again allowed in two thousand and nine i stick to go through there was no likelihood of confusion then switching restaurant to steak house doesn't create a much confusion it's a generic component that should be given very very little weight in the you know as i mean it you know  thinking about the way the mark would be used and it's also highly visual which i think is very important it was also not given enough weight by the trademark office i mean the st john's mark is old and in very rushed brush  stroke lettering that st john's came up with on its own the generic is a much smaller font of the bottom whereas the mark is in a well looks like a standard font it has color as a component of it there's no design or other visual number one doesn't even if we do division one hundred and two continues to overemphasize the generics i mean if you just step back for a minute and think about it i mean what we have here is we have two marks they both say five of them are us and they both replace the letter f with the number five in the word five and we have one that has that unusual spelling of five with five states and then we have another one with that same unusual spelling with five steakhouse and we've also said that it's not unusual in fact it's fairly common to have the words of mark the predominant parts to analyze in the confusion that analysis over any kind of style a zation or design and here whatever design component there is i think we can say it on the left dominant side compared to the unusual spelling of the word five associated with steak or stakeouts so i don't see why we can say that the trademark board lacked substantial evidence when it found that these two marks are highly similar and so what's wrong in this particular instance for the trademark  to find that the unusual spelling of five associated with some version of the word state is is the dominant portion of the overall marks  because there was no likelihood of confusion in two thousand and nine and they both used to buy the same five thousand and nine and they do that and sixty one was for ready five restaurants true and the other one was for five states but if we're to if we're talking about now gee couldn't they have decided that the problem is one since my and the other one what are arguable mistakes in the register that doesn't mean that the trademark office is bound by those mistakes on the trade market register to continually make additional mistakes and th but they do i mean we have plenty of decisions from the board cited in our briefing the region staffing case random acts of kindness case the american sail training so she's in cases where they do in fact look at how they decided prior cases and say you know what  under the thirteen factor it would be inconsistent darn equitable for us to decide differently than we have before in prejudicial to this applicant and they have decided cases on that basis and should have done that here so i do think there's some contradiction there because the manual says our decisions are without ever going to revalue but there are decisions from the board where they do look at how they decided prior prior registration so i mean if you look at the region stephany's for example where the ets get had a register mark a different party filed a whole bunch of other applications that went through and they get reduced regions and then the original applicant its mark accident forgot to renew it and then they reapply and were refused on the basis of all those other ones that went through when their original registration was still left and the board said well wait a minute if there were no likelihood of confusion when all of those other ones issued when you had your original registration we can now say you're blocked my all those people who we let through while you had a registration and that would be you know there are bones and they decided no you actually do  again they're looking at the history of that party's marks and other marks being cited against it and even when you know they go through all the other factors and even when they have said gee there might be a likelihood of confusion here  to a previously registered mark in this case the five states mark and that's particularly true here rick that registration is more than five years old as well and it's no question that confusion is likely but there is a very large question about the prior marriage strange well what's your response to the things that we've been talking about yes your honor that i want to be clear st of all that under the strategic partners analysis that the board apply that the issue of substantial similarity is a question of fact there is not a legal error here there is not something that the board did that was really wrong in applying strategic partners and so my answer to that question is that the board considered strategic partners and considered whether the previous whether a palance previously registered five restaurant mark was substantially similar to eight newmark but for five i guess what i'm trying to understand about strategic partners is what is the substantive quality of the similarity that the trademark office and trademark board demands when it comes to a trademark applicant trying to piggyback on an earlier registration that it that it was so and so busy substantial similarity i mean to me that sounds kind of lives i mean if if someone were to ask me do i think five restaurant is confusingly similar with five steakhouse it's follow on a platform market so yeah they look pretty much the same to me they look confusingly similar to me they look like they would come from the same stores but what i'm guessing here is that the trademark board isn't thinking of it's coined the term substantial similarity in that particular way i mean to me i would expect that if you're going to allow us trademark apple in to piggyback on some version that it got registered earlier it would have to be a standard more like no colorable distinction between the two marks for you to say that you a no meaningful difference test and that is also the test that's incorporated into the trademark found appeal board and the one that was applied here so that the test is no meaningful difference that office hasn't had much opportunity to apply that in other cases so we don't have much directly appliance or teacher partners on that point but we do have analogies both in the tacking contacts and in the more house defense which you  referred to earlier and in both of those cases the standard is closer than it would be in say for a likelihood of confusion contact and so and i think that the o m case that you referenced earlier is a good example where this court said that a limp it kids was a different mark than a limpet even though the relevant portion of the market at issue was a limp so it is a tighter standard a more narrow standard the likelihood of confusion and what the board found here is a factual matter is that where you have the nd mark moving closer to the cited registration that is a meaningful difference that is something that the court the board have to consider when it is looking at whether or not the coexistence on the register the five restaurant mark and the five state mark is one that would tend to show that there is no likelihood of confusion because that ultimately is the relevant undercity to partners is there a factual evidence that suggests that there is actually no likelihood of confusion even though the other factors point to likelihood of confusion and it's the coexistence of more than five years that stand or is we just stuck with this you know it's not the end of the world so they can't use this particular modification of their earlier mark but you know one of the things that they could have done here is they could have sought consent to register that would have been additional fact that we don't have here so it sort of short of that i'm sorry elaborate what is not consent to register from it wouldn't have been an additional fact so  could have gone and asked the owner of five states will you consent to my doing this and and so the owner says no then then we don't have that is not of evidence but that is evidence that has been accepted by the office in the past as additional evidence i mean no evidence yes would be accepted if they had said sorry if the owner of the fi stake mark had consented to registration in the consent would say something like recognise that there is no likelihood of confusion between these two mark and that would have gone into the record that would have been additional evidence that the office would have considered in the unlikely that confusion but we don't have to answer interesting because it's a question because the likelihood of confusion standard this is and to protect the public not the trademark of it of course also the trademark owner but it's just to protect the public substantially dental marks in terms of the words yes your honor and the consent to registration that i was talking about is not something that the office would consider so alternately the office would consider that as part of the likelihood of computers it would not be found to accept that's right ron was five states and the cited registration against it was five stake and then the two parties came to the trademark office and said oh don't worry about a trademark office we're just going to we're going to carve up everything on our own and nationwide exclusive right to exclude right to enforce one of these days who knows they might somehow find some conflict well all right so is that the apparently was placed on the state i don't think that it was it's about a reliance on the mistake it's about a balance existing trademark registration that the office cannot in an ex parte context challenge because it is a valid trademark registration and you know to the extent that there was a concern about that registration as judge ken pointed out the applicant had both the op opportunity to oppose and the opportunity for five years to cancel out registration so there no likelihood of confusion between either of the st john's marks in the o t g mark the air was in two thousand and sixteen when they should have done what they said they were going to apply the strategic partners to and it's not just the case that they applied it and we don't like the outcome and so now we're appealing they said they would apply it but they ran they didn't actually play and they ran the wrong test all together they were supposed to do substantial similarity comparison between the two st john's marks they didn't do that they did a comparison between the applied former is that is that different from sensible on its face to say whether there's a meaningful difference might actually depend on what this intervening one is intervening mark looked like and and whether the new one is closer to the intervening white why would that not legitimately go into assessing the meeting fullness now of the difference between applied for and prior marks right up there of reference so i do think that runs the risk of doing consider the rights that the party has who fight for the neumark in their existing registration particularly incontestable registration about those rights in a vacuum it's not about those rights as compared to whatever the market that's being cited against it now and i he said so yourself john that if you look at the two st john's marks they look pretty much the same in that i think there's no doubt that they create the same commercial impressions switching from restaurant to steak house doesn't change the commercial pressure and you can look at th