fact we're on with the form of moses and summer and i'm here today representing first niagara insurance brokers tom who was the opposer in the proceeding below first niagara insurance is a small family on here your hope is to be able that identical mark for either insurance services or the related banking and leasing services well because we have been using the market for a significantly longer than th and as the board found but but that isn't the test the test is whether there's going to be some confusion some harm some market harm and when you have complete geographic separation and there's no chance for any overlapping business how can there be any worry that there's a going to be an economic harm here your honor i'm glad you brought that up there are a couple of answers to that question first of all the four there is testimonial and documentary evidence about a mr switzer mr switzer owns a yacht for a certain period of time he insured that yacht through applicant's insurance division this was before they changed the name of the insurance division for a switzer is a resident united states the entire time you also have property in canada you have property in both areas of bath insurance policies cover the navigation of that boat through both canadian matters u s borders aside from that one letterhead there is correspondence between which i don't think there's one example of the new any policy right only one i could find right right and this is a person that presuming they have had some insurance dealings and and got the annuity is there actually use the mark in connection with its alleged banking l c a any evidence if you've ever done a lease or not that is correct never heard of the law is correct although but you're not providing us services why are you worried w matter of perhaps the most important point here is that the applications that issue and that is the task when we're examining the applicant services and the likelihood of confusion are not geographically limited  those applications cover any sort of insurance services that would cover providing insurance brokerage and counseling services with respect to canadian properties in fact mr hofmann in the united states you don't supply any services in the united states why are you worried judge read it without the respect i disagree we do supply services that heartache that are received in the united states these u s resident custom they do you simply cannot come across the more yourself your client and all of them assume there are certain complicated insurance regulations that govern the manner particular that the initial contact gets met however with respect to the ongoing services services will offer short services as well or the other way around well you are got i would have a way suggest that this particular organization wants to offer both of those services and suggest that they want to change the need from savings bank because then people would assume that they don't offer those services but there isn't any suggestion there that the population in general assumes that a bank would offer insurance services or that insurance company will offer banking services i respectfully disagree on a number of those documents show me one show me your best one so well as one example there was a ten k filing that we cited where they discussed the fact that their banking division director faces direct competition from insurance companies but that doesn't say that consumers assume that banks are for insurance services that's just saying that their individual taste but in their in their documents they mentioned specifically mentioned marketing research they had done that indicated first of all that the consumers were desirous of obtaining their services from from the same company and specifically that the first nagra market self test it resonated with these very market research  so i would argue that that is evidence i mean the question here is consumer expectation this market research they don't show me where where  related to canadian insurance the head of their insurance division testified at the very same pages that insights for the proposition that they don't offer those services he didn't discuss ways in which they could offer and so again i think that the  focus has to be on whether the application would cover insurance on canadian propert considered it in conjunction with the actual confusion factor the board did find that there was actual confusion and merely minimize the impact because of this allegation that the services were geographically distinct  i've already spoken about the fact is they're not graphically distinct both the customer base is both companies do business cross border evidence american you're here talking about now is that the e mails yes that is correct somebody that is correct there was one example of it and they knew they were trying to reach and there was no business no loss was there there was no business lost in situations like this where you have a senior user who is a small business and a large user comes in after the fact there  a separate type of commercial harm where these senior user will lose the ability to control their reputation and the secondary meaning associated with them are so diverted seance are not the moment of commercial harm that's recognized by the lan not this was a question an answer is a document that is used to respond in various contexts for the reason for changing  mark in the last question an answer sequence at the bottom of the page what is branding and how does changing your brand fit into long term goals the last four paragraphs on the page were first to extensive market research revealing that customers  commercial market not equate to seven's backed with off from the full array of services that small and medium businesses need similar consumers of that type do not consider the savings bank so they are talking here about the issue of the savings bank but it then goes on to know that these sorts of consumers and do all recognize first niagara as representing this sort of full service combination of services so that would be one example of market research that is like madame are you sure of that as a general proposition the public does not associate banking with leasing or or insure banks if their bank if there are only represented as local savings backs but then there are there's all these other categories of banks assume the banks offer insurance or that insurance companies offer banking services when you are i would suggest that if you look at the totality of these documents they say that the very purpose for this rebranding was to capitalize on that customer will restore it and if you could give mr perlman an additional three minutes should he need to use them in our time would be almost it please the court your honor to represent first niagara united states the first issue i'd like to go to if i could if the issue that we've been discussing and that is the relatedness of banking and leasing to insurance the trademark pravin appear billboard addressed that issue and they found that there was insufficient evidence in the record to show relatedness between those services i think judge types question really focuses on and what's important here and that is that it's not enough to show that a single business might offer anything and insurance the test really it is to consumers believe that  distinction then you have no complaint with the board's entire outcome right you don't feel that you have any particular right to use the marks with respect to insurance services we do your honor and we have crossed appealed on that the reason for our possibly all knowledge the distinction why doesn't that distinction cut against you pretty heavily when you wish to move into the insurance coverage for this particular m for that is that in the insurance area there is a geographic separation here there are the twelve dupont factor is there is there a real likelihood in the in the real world there being confusion in the electric design case this court said that we're not we're not concerned with mere theoretical possibilities we're interested in commercial  exists for banking services and it's for insurance services why do you feel like there's some different effect that it has in the insurance area i don't think that the  geographic difference has a different of back in the insurance area i think it should be given the same fact that it was given in the banking and leasing area i think the mistake that the p t a be made here is when they were looking at the factor of channels of tra and customers what they did is they said we have to assume that all the channels of trade are valuable because there is no limitation in my clients applications the case that they cited it and making that decision was a case where the opposer had a registration that's not the case here in this case the opposer does not have a registration so you have to look at how the opposer actually uses the mark for insurance and that approach is within the explicit wording of the second factor which says the similarity with that the similarity and nature of the goods or services as described in the being for example if you're calling in niagara falls united states urge advertising on the television and what not first night or for insurance services right the folks over on the other side of the falls in canada but there's nothing in the record to indicate that is that anybody is confused the people who are in canada who say that advertising the first niagara company and the test is likely in a convertible right that's right on the border here found was a likelihood of confusion with regard to insurance shelves they did and they base that on the fact that there is no limitation in channels of trade but when they talk about advertising that it be minimized the effect that advertising would add and said the spillover w minimal between the countries and that's the type of thing that is expected to put insurances will look a little different in the sense that people could own property in both places and wish to insure it in both places and therefore have some reason to do business with insurance companies both in canada and the united states and therefore there could be confusion right well it i says somebody can own property in both countries but mostly how first niagara canada works and this is the eight one hundred six of the record they work for sophisticated brokers there is a question asked that  case to you and i think the difference is that in this case we have it canadian and licensed insurance company and us licensed insurance broker a broker is on both sides i don't think that situation arises in any existing case it's not likely that a broker in the united states is going to be confused about which country to go to to refer business for canadian outage and there's really no likelihood that there's going to be confusion of somebody going to  don't suppose that's true i mean you can still have likelihood of confusion even if there is absolutely zero competition between the two companies right you could have confusion but in this case they're between businesses that are in different countries it's not the same as if you had a business and national bank in a business and in new york and there was confusion within the united states here you had because of the highly regulated nature of insurance and the teach it pointed to the highly regulated nature of insurance here you have a situation where we can't perform their services they can't perform artist but that's the point is that the fact that they're bore from competing with each other doesn't solve the confusion problem a likelihood confusion problem because there were or are cases in which there was no actual competition for customers and yet we've held that there can be a likelihood confusion on the circumstances you keep emphasizing the minimus nature of the competition but that doesn't answer the whole question it was true that that does not dispose of the issue per se but has the t t t found a lack and this is a quote from the v this lack of commercial injury or opportunity for such is not dispositive per se which is exactly what i'm saying but it's a significant factor in this highly regulated industry so what you do is you go to the twelfth upon factor which says you know what's the likelihood of confusion is it de minimus where is that substantial and real and in this case the t t p will there factual findings on insurance and on banking found that there really is is very little i think the term of the t t was extremely limited and to all for any commercial confusion and i think the only reason the teaching be found in favor of first niagara canada and the insurance issue is they  misunderstood the channels of trade and thought that they had a look at all the channels of trade whereas in this case since the opposer does not have a registration and the second to pop factor you have to look at how they actually use the mark and how they actually not argued were raised by first niagara canada in front of the t t a bit they didn't raise it in front of the t t to be the first time they didn't discuss it before this court when they were up here last time they didn't discuss it with  evidence hadn't been admitted and it just had not been addressed by that he's simply because first mag canada changes counsel between the last appeal and this appeal does not mean that they should be able to come up with a whole new set of arguments that the administrative agency never had an opportunity to look at so reversed confusion should not be considered we've addressed in our brief on the merits why we don't think reverse confusion exists here but in a totally new issue ra in leasing of any type at all and they've made no move to do that mr mapes testified at page eight twenty eight to forty five of the record don't they have a right to protect the integrity of their mark even if there's not an insect correlation with their services well i guess that would depend on large umbrella that could sweep them both in i don't think so if we look at the particular facts here relating to financial services they have no electronic banking and that's what first had the us application easily get kind of swept aside by a large company who takes their mark and with its superior advertising katie capability kind of swamps the market with that mark being used in a different context suddenly their use of the markets completely eroded that the reverse confusion argument that's the one that's being raised for the first time on this appeal with s addressed perverse confusion and cited professor mccarthy and the checkpoint case out of the third circuit and what the checkpoint case and professor mccarthy say is that there is not reverse confusion where the services are not competitive and i think i think certainly as to banking and leasing the services are not many way competitive i don't think they're competitive for internal because of the different regulatory schemes that the two clients operate under second the respective markets are separated we have that here except for a couple of examples of us citizens who have property or some kind of nexus to a canadian intro bill interest and finally that the advertising is directed at different types of purchasers there's what the t about that their backer and advertising they said that first agra canada's quote advertising is directed at canadian purchasers and there's only minimal spillover into new york of its advertising on a single canadian radio station and they also said that because of the very let me hood of insurer privilege or of insurance brokerage services it's unlikely that a u s resident who has advertising for their services or vice versa wouldn't personally go to the wrong country because to banking and leasing applications that was twelve out of the fifteen asses in the six applications and reverse those two insurance because using the paradigm that this court set out intellect alec chronic design in that case there really is no likelihood of confusion and actually to get back to that writer's question about can't there be confusion even in the  purchasing just confusion confusion by purchasers there's a teaching to be found out the chances or the opportunity for that type of confusion is in the words of the t v it be quote extremely limited for that reason  immigration well is the case that this is a federal circuit case it is not only is it the case and involved in this very type of harm and it describes the danger to a smaller company and having its goodwill and ability to control secondary meaning taken away it's a federal circuit are like the checkpoint and it also specifically nuts that we are that noncompetitive even noncompetitive and even goods or services that are not proposal or particular use in the imposer is never engaged in that line of work and never has no she made no showing that they proposed to let's assume for purposes of argument that this is at leas to decision for the board you had goods that were skins and cigarettes and there was a likelihood of confusion and shared well approved of that rationale particularly in an adverse confusion setting where you have a smaller senior user because that is