morning we have reserved three minutes for rebuttal please assignable court my name is scott jagow i'm pleased to be here before you and it's a great intrinsic feeling to know that as a citizen of this great country we have access to the justice system and to the great courts of this country and i want to take a minute to thank you for your service in that regard and that branch of our government this case arises out of mr cassatt as trademark slogan welcome to the d mr castle by way of background as a musician a well versed one a lot qualified one one who has many credentials with many well known national artists a number of records t shirts hats all promoting what he loves which is the city of detroit it is what prompted him to trademark the slogan welcome welcome welcome to the d which is sometimes  for the city of detroit and it's his way of showing appreciation to all outsiders and all local detroiters of his appreciation for the city for its arts and in his way to welcome them to that part of the region the detroit visitors bureau and the detroit sports commission although much more organized and much more funded than he is practically do the same thing on a much larger scale there are lessons competitors of his the slogan in question here that mr castro brought a complaint against the defendants or the apple is in this case was quote welcome to the d d is about the only letter in that whole slogan that references any sort of geographic reference that is not the entire slogan because the entire slogan doesn't doesn't geographically describe anything it's more of agreeing to sell you tasia it's we accept you welcome the defendants the employees in this particular case were able to persuade the lower court judge that the judge in the court there should focus on the term d as opposed to the entire slogan when determining whether the use of that slogan was in a trademark way or a non trademark way whether it was descriptive geographically nature or not geographically descriptive and i'm hearing off of the  brief to some degree because i think there's no way i can eloquently say in the brief now what they articulated and more eloquently set forth in it over a period of time when i wrote it so i want to focus on these things in terms of what is the script of what is non descriptive geographically now the u s patent trademark office runs through a whole host of analyses and determining whether even grant trademark protection one of the ways in which the u using the trademark manual of examining procedures determines that is is to decide whether it's truly descriptive or not not only did they do so once twice but three times because mr c three separate marks three separate trademarks for that for that slogan but on all three instances there was never an objection there was never a denial there was never anything raised that would question whether it was truly descriptive or not in other words what i'm suggesting is that it has passed muster for not being geographically descriptive the fact that a letter within the entire slogan might have reference to a geographic location as in detroit doesn't the entire slogan that description and that's where the lower court here the lower court erred because what it decided was that and using hensley as its principal backbone for the decision is that we can't even get to the analysis of whether a particular trademark phrase was even infringed until and unless you show us in your complaint not after discovery not at trial not at  bench or a hearing but in your complaint that the slogan or the trademark work was used in a trademark way and so in the lower court what they did was they acted as the judge the jury the fact finder without the benefit of the all of the evidence because they made a decision simply on the facts established in the complaint but let me ask you what would cause that to the use of that phrase in a trademark way but to your way of thinking what would constitute a protected trademark use of that phrase what what the detroit visitors bureau in the detroit sports sports commission are doing are using the same exact slogan that he here proprietary rights and property in the same manner that he's using it competitively in commerce to derive a profit that is anti inconsistent with fair use in other words  trademark protected use especially given the geographic connotations phrase and what work or who had would be an example of a use that would be protected of that phrase by your client well according to the appellants rather err police we can never use our mark in a trademark protected i'm not asking you what their argument is i'm asking you what your argument is what worse an example an example would specific you're not telling you not being responsive to the question well there is there's a reason for that it's because i can't think of a a way to use the slogan unless it's in the trademarked way that's my point is it's very difficult for me i'm the exact opposite extreme of what they're going to try to say they're trying to say that we can never use it in a non trademark way i'm trying to say that every time you use it it's in a trademark way because you're using the actual slogan itself and you plastering as as as the first and top portion of your advertisement which only has that slogan and then you're too logos at the bottom which were the exhibits that were attached to our compl we filed it at a twelve b six motion to dismiss the facts that we've alleged to show that they've used it unfairly that they've used it in a non trade in a trademark way rather by by using it as a source identifier as opposed just you know geographically descriptive how they used it as a source because people who saw that slogan automatically reference mr casa because he's using he's been using it for over ten years in his business as a professional entertainer and his promotional materials in his radio show welcome to the dea in his song that is recorded people automatically phoned him and said congratulations i see you're slogans all over the city now that most of you know that must be a great feeling and he you know obviously there's been some confusion among the public which is somewhat normal but that's exactly what trademark infringement law is intended to guard against and to protect against it's to protect the owner of a copyright excuse me of a trademark to protect that person from third parties trying to usurp it to try to hijack it to try to make it there is by diluting  term deed is certainly been around a little bit longer but i think the term welcome to the d is a new term which michel i created in which my client has put the money and effort into promoting an her ties inc and he's been using the brand that's his brand everybody knows him when they buy his t shirts and his hats and his records that that's his brand for for now to be included on posters by third parties sort of not not just the next sort of an excerpt of it but the entire slogan itself is patently and blatantly a violation of the trademark infringement laws that the problem we have here is that the lower court didn't even go to part two of the analysis didn't even go past whether it was used in a trademark way or not it simply just made that decision without looking at the factors to determine whether it was used in a trademark way or that it did in look into whether there was good faith in its use  and whether it was used fairly which are two criteria to determine whether it was using a trademark or not trademark way not to use it in commerce against the competitor of yours who owns it is is is is wise in the face of using it in good faith mr castle and of course the court doesn't notice the lower court because we never had a chance to do anything past filing of the complaint it was a twelve b six motion the first responsibility didn't know that mr cost us media company had reached out to the visitors sports commission and gave them t shirts that clearly showed the mark welcome to the d and it clearly had a registered trademark symbol on it they all order t shirts with their sizes on them the people that set on the board of these  entities and third parties who are now the police they all knew of its existing the they all said that at the point at the moment we don't have any use for it but then alternately decided to use it nonetheless again those are all facts in evidence that show that things were done in bad faith we never got to that analysis now even if you accept hensley as being authoritative in this regard hensley stands apart from this case because mr henslee himself has no way to describe himself other than the use of his name so by virtue of using his name he can't be he can't be charged with infringing on a copyright that he gave to his former employer excuse me a trademark that he gave his former employer about a product he design use was not a trademark use that's an instance in that case which is distinguishable from this the detroit visitors bureau can say to itself welcome to detroit and welcome to our region walked into southeast michigan they have a whole host of adjectives at their disposal they don't have to use our slogan to do it they showed no need or the most use arsenal of the need or rather the the required use of our slogan anywhere in their analysis nor did the court delve into that it's one thing to say we have no other choice but to use it it's another thing to use it and say plainly and come to court and have the court dismissed your case on the basis that we weren't using it in a trademark way the question of whether it was using the trademark way or not a trademark way has been found to be a question of fact by two other circuits and it can't be that it would i see my time is up it can't be that it's a question of law at the initial stage of the pleading laws do not apply simply this is part of the likelihood of can fusion analysis that this type of case must undergo here you have a descriptive geographic greeting welcome to the dea we've cited t cases that nicknames etc are treated exactly the same for trademark purposes the geographical reference a welcome to the dea is effectively welcome to the detroit under the law the way the mark was used here was to the convention bureau used it as a greeting welcome to detroit and yet that is not a trademark way and what is the support for that number one just common sense judge clayton your question  is is a good indication of that we also had submitted some material showing welcome to the da and used before but just common sense this is something that you're allowed to take into account we've cited do you a case that says you can that's  but just out of curiosity why did why did you tell your client or question the validity of the registration or challenge the validity of registration so i don't know the exact answer if it could be they didn't know this was going on in two thousand and six could be any and the other reason relate that i don't actually know i don't know that they even knew he was trying to register it ten years ago what i can say and this goes to his argument that all look the patent office registered it that he's referring to what's called the the in contestability issue after certain number of years a trademark becomes incontestable that does not matter for what we are here for in order to prove a trademark infringement case whether or not it is in contestable he still must show the elements of trademark infringement which include it has to be used in a trademark way and we still have a fair use to fans though if if you were putting it on a head on a hat would he have a point i no i don't think so as long as it is a greeting welcome to detroit that is the non trademark that's a use in a non trademark way and when he trademark something as common descriptive however whatever lingo you want to put as that phrase he a risk that by and large he wouldn't be able to enforce the trademark against anyone using it as a greeting so as long as it's used as a descriptive greta you know how might it be used in a trademark way i i don't know if he could enforce it real real practically speaking in a trademark way but if somebody is using it as a greeting i don't know how else you use it i suppose if it gained secondary meaning for something that was unrelated like you look at like buick i don't even know what has meaning but it's now been so associated with one particular set of cars when you say the name buick it's associated with cars which normally would have nothing to do with each other so if welcome to the di was plastered on some semiconductors and it became well known maybe there'd be a secondary meaning for it ok welcome to the d s so affiliated now with the semi could not ever realistically and so do you believe that he uses it in a trademark way no i think if you look at his complaint and we highlighted this on page four of our brief in this court brief and i think he uses it as a greeting that's one of the points is that if you even look at the way he uses it he uses it as a descriptive creating and the courts including the u sentences from that case the u s supreme court says the lanham act adopts a similar lame leniency similar to the common law there being no indication that the statute was meant to deprive commercial speakers of the ordinary utility of descriptive words if any confusion results that is a risk the plaintiff accepted when it decided to identify its product with a mark that uses a well known descriptive phrase and the u s supreme court cites loads of cases supporting that that there are so heat by using this for if you had if you had the welcome to the shirt company that makes the best t shirts in michigan would that be a commercial trademark use i don't i don't think so as long as that on there is a greeting welcome to the d i can't think of a i cannot think of a way if it is literally on a signing a banner shirt that the average person seeing it unless they were maybe in some other had some other affiliation with some city not detroit that has nothing to it maybe if you want cleveland and it is sad to have somehow became famous there but no as long as it used as a greeting and it's descriptive and especially geographically descriptive he's going to have a very tough time in forcing that on anybody who uses it as agreed so i still other than my  semiconductor example i don't have a great answer how he can and i'm sure if i you know we thought about other products could be used or maybe you could come up with a way and most importantly for me the way we used it t detroit convention metro visitors bureau used it we used it as a greeting in a non trademark way that's what this this case is about and the in contestability point which is what the original question  was is if you look at the statute itself it does not matter if the mark becomes incontestable he still must show these other things and we still have a fair use defense and that's also yet still all the same analysis applied so that's that's a nice piece of information but it's not relevant for what we're actually here for today the other cases pens the way i want to talk about for a follows these k p u s supreme court case it has similar language and also the holder of a trademark cannot prevent others from using the words that form the trademark and its primary or descriptive sapps the original descriptive primary meaning is always available for use by others hensley didn't make up that rule it followed preexisting rules other courts have consistently held the same way  another very good example that is comparable is the trademark infringement case someone had brought it called and b h enterprises in the seventh circuit there a radio station used i love you more walk in that was it's something that was using on that station and there was no trademark infringement because as the court stated they're the owner of a registered mark may not appropriate to itself common english slang terms and thus prevent others from using such phrases in their descriptive sense the same and we could go through many more analyses and similar cases we've put them in our briefs and not going to do it here by making a which there's a statute fifteen u s c eleven fifteen before which independently has a reason to bar their claim hensley also dealt with that case hensley's from this court it's only from two thousand nine it's not long ago and want it says there one can use words in their primary or descriptive sense even if there is some consumer confusion because the trademark owner assumes that risk by trademarking  descriptive term or phrase you see this theme across the cases again hensley didn't come up with that used existing law in redo all that is another example twelve b six dismiss affirm on appeal for using a descriptive phrase in the non trademark way other cases we cited to you were twelve pieces of motions have been granted and are in our brief as well so for fair use we've covered the descriptive sense the way that you welcome to the d is used in the descriptive sense the other element for fair use defense is good faith and here it is the plaintiffs who actually under hensley and in re do all that for that matter  which is consistent must allege facts for much an inference of bad faith can't be drawn you can't just come in and say there's that faith you have to actually have some facts cases make very clear we've cited some i can the pac man case the n b a case car freshener there are many more cases but the point that even if somebody knows about a trademark that is not and then goes and does whatever it is they're being accused of doing that's based on the lack of any trademark infringement because the mark was not used in the trademark way the case should be dismissed the primary argument here is that from the appellant is hensley this court case from two thousand and nine should be overturned but it should not be first of all it's based on good logical commonsense it's based on u s supreme court law it's consistent with that law is consistent with other circuits and it is reasoned well and well supported it's also correct under the tuam plea and equal standards for a twelve b six motion the essential argument being made here is that you can never have a twelve b six motion granted in a trademark infringement case and that's just simply wrong under the u s supreme court standards there is no special exception exempting trademark cases from the twelve  year has these been followed by district courts in this circuit as well as outside of this circuit and there has been no problem following it and applying it and in several cases have granted twelve p six motions that grubbs did not have had it distinguished it but the parameters of how you do the analysis was followed so there's no reason to overturn hands like we can to anyway test for all of the other cow so if it doesn't pass muster under what we've already been talking about then all the other counts failed the only other item worth mentioning is there's a dilution claim it fails for the same reasons but it also fails because in order to bring a dilution claim your mark must be famous and you can't just allege my marcus famous famous types of marks are dupont kodak budweiser camel barbie dolls etc those are the cases that talk about what those are and making it conclusory allegation that my mark is famous which is what you hear isn't enough and twelve b six motions are granted  you know while it's not a requirement the record of the nature of a descriptive use strongly strongly suggests that the mark hughes cannot adequately describe the goods or services of the that are offered by the infringing party without the use of the mark we don't have that here they have a whole host of things at their disposal and i think i also alluded to the fact that they've used it many times to say welcome to detroit well they could have said welcome to detroit they did not have to use a trademarked mark to to to advertise that to make that point the point is that there are competing business with my client they're capitalizing on his trademark slogan that is reached uncontestable status to try to countless the same thing that is greeting people to the city of detroit welcoming them to the city of detroit again we have no problem with them doing that if they didn't use our mark we do have a problem with them using our market in order to effect to eat the same thing we're doing it's unfair competition if the court in the council brought up the case of  the supreme court case of keep the permanent make up in which in that court the holding was that if your going if the lower court's going to say that a use was in that the use of a mark was not in a trademark way you also have to further the analysis and make sure that the mark was used descriptively not as a mark fairly and in good faith we never got past anything other than it wasn't used trademark way we never got to those other elements about whether it was used fairly or not competitively or not we never got to the argument of whether we used was good used in good faith or not and we certainly didn't give credence or deference or except the pleaded facts in our complaint where we allege bad faith that it wasn't used fairly we certainly didn't accept them as true because if we did there would be no way that a motion for summary for for dismissal on it'll be six rounds could have been granted without a further analysis to ensure compliance with the keep the permanent make replace now in short i know you can't overturn another panel's decision and hensley but you can certainly you can certainly clarify it because the broad effect that it's had is that is that any time a litigant files a trademark infringement case it will end when someone brings up the hensley case if the judge at that point decides that it wasn't used in a trademark way unless and unless and until the judge further goes with the else's under the supreme court case that i just referenced a couple times the permanent makeup case where in this case it certainly never happened simply never happened  so for those reasons i ask you very strongly to consider the request we made in our brief and to overturn the district court's finding