appealed that's right that's the end of philosophy and we're not here to decide that houdini's mark wine country gift baskets is generic we're not here to decide that it is descriptive what we're here is on a pulmonary injunction to discuss aside whether or not there's a fair chance that they can prove those things and we're not striking their mark today and i think that's very important to understand the question is did the district court apply the proper standard because here it did not use the the sort of the primary preliminary injunction task is that the four pronged test with a likelihood of success on the merits in fact a found that there there wasn't and i apologise for paraphrasing you see we've got to stick with what happened ok so we're looking at the alternative test which is the balance of hardships tipping wrongly in the favor of the  plaintiff and a fair chance of success or serious questions interpreted by the case law as a fair chance of success on the merits  with respect to the fair chance whodini has to show each protectable element of a trademark have to show that the mark is not generic here because we raised a challenge to it and because it's not a registered trademark and that's the filipino yellow pages case the purported mark there was filipino yellow pages here the purported mark is one country gift baskets and there is no real in a descriptive or generic sense it first adopted original eventually on its trademark and its alleged trademark second is it in search engine searches when the description the defendants provided of their product comes up with age it uses one country if they ask it's in a list of products doesn't use one country gift baskets as a trade mark the third i'm sorry the second is that the media and third parties use the trade mark were alleged trademark in a generic sense we have an article on how to buy wine country gift baskets it does not attribute one country gift baskets to the plaintiff whodini it uses it in a generic sense there are some the our news wires we submitted for products that sutter home had that were called one country gift basket s third if you if you there's no evidence of any going out and forcing it's more other than a specific case but in filipino obviously they brought a case to enforce it there's no evidence of houdini over seventeen years of sufficient to find a fair chance of success and that one is in the sense of whether or not the evidence is evidence that's a question of law in the sense of whether or not this evidence is enough there's deference to the trial court paper unusual case when you have products of one company you know the product website photographs yes and we've removed all those they've everything at the defendants really think they're reasonably blatant reasonable break in copying and yes i don't take away from that with what the business that the part that i represent their own citizens now bought the business in the form it was in it had a number of the main names shortly after purchasing the business we were advised by whodini that there were items on the website that were copies and we took those off here that i think it's important and some extent your question your honor shows me that we may be looked at here somewhat like a cyber pirate and we're not we have a number of domain names we have  i'm not sure the exact number but there are list in our papers there are more than many more than five and they all use one country or one country gift basket or gift basket they are all directed to improve search engine response and the way they do that is by using these names in the domain name searchers and in the ninth circuit's own case law in the brookfield case searchers of the will often use domain names that they think may result in finding the particular goods as well as domain names that may result in finding a particular company we have adopted the strategy of trying to find the particular goods that injunction to you it starts us from using this particular domain name one country gift basket dot com which stops a portion of our business where people would be looking for wine country if basket if that the meaning cannot show up higher in the rankings and that's one way that we get seen on the internet now we can present in the district court said we didn't have very good evidence of the harm to us but there is harm and i think if we look at the harm to the defendant to the plaintiffs who dini that's all based on their confusion evidence and their confusion evidence is triple hearsay it is there for all calls placed to houdini's sales representatives or call center then there is a supervisor of those call cent employees and then there is a manager and then there's there's just a mcguire on top of that is there any prohibition against using this kind of evidence in this context bushing it's using triple hearsay here or not no there is no specific prohibition on that that's correct but the problem here is if we're having it if we have a test and we want to show fair chance of success and we're giving this injunction because there's a lot of damage i think we have to have some clear evidence of what the damages and triple hearsay we don't have numbers of how many calls were made we have evidence that there were ten million catalogs sent out but we don't have evidence of how many people made these calls it could have been three people we don't have evidence even more important is we don't have evidence that these callers were confused by our particular domain name if you take success without even any weight of that evidence and damage on the harm to the defendants to this particular domain name that we use that link is missing and when you look at also their evidence of likelihood of confusion because i think that's the other place where the action is in this case their evidence is they've used for seventeen years and and that they sent out a lot of catalogs truckloads or train loads of catalogs over time but there no evidence of exclusive use in fact the district court noted that there were evidence of another user with providers as well as many other users a company in canada that's on the internet with the same domain name as the we really get the case we try to put the maybe evidence that these callers were not confuse we would go into depositions to see whether these callers were confused by our a name or by something else  hurts us by not being able to use this domain name in our business i can't put a dollar amount on it but there's a few players haven't put a amount dollar they're the ones that are supposed to show the harm and they haven't put a dollar amount on that harm they haven't put i the mount on their cells when we get to secondary evidence and they haven't put it out and i'm now on their catalogs with respect to one country gift basket used as a trademark on the cover if you send so they sent that ten million this is just a question you know this this was entered i guess i may tenth two thousand and five and you've been damaged by not being able to use this instead you got a trial coming up why wouldn't you just not appeal and go immediately to lost almost a year appealing it when you could have the trial may be over with by now what you might be right next time around and i think just think of it differently but here and i say just it we had the right to appeal we thought it would instead of let's go up and mucking around with the notoriously slow ninth circuit well we also thought of we also thought that the the case would move forward and i guess we haven't really pushed it but because that was in part because we thought this appeal might be lastly with respect to secondary evidence it's so saying the cells normally the classic secondary evidence are cells in dollars and advertising in dollars and we don't have that here we have some hinting that they're going to come up with some good evidence later on but there isn't any specific evidence and i don't think you can find a fair chance of success unless you've got some showing that they exclusively use the mark and without the dollar  amounts and without evidence that they've been stopping others from using the marks when you have other people that use very similar in the same vein and then that's not a fair chance of success and i think that that's the only reasonable conclusion here is there's not a fair chance of success rather than looking at us as being a junior user and not having that much damage to us i think we've got to have both sides of the equation  cheese basket the same way to improve our rankings on the searches but google searches the yahoo searches because when a customer or a potential customer searches on those words if those are in your domain name that improves your chances i also did a yahoo search right transposed the wording instead of going one hundred gift baskets i did country yes and that search came out with one hundred gift baskets in a lot of the hips and that shows the descriptive sense of the words now here way to us that evidence can't overcome the fair use here to likelihood of confusion or the district court's finding out the balance of the hardships shifting strongly in my client's favor they appealed with regard to protect ability of the market so first issue is did we show because it was our burden to show that it was not generic the district court clearly understood the nature of the products that we sell we attach to the complaint or exhibit showing our baskets and some of the products at the hearing which was in february last year i gave the court a copy of the valentine's day catalog they saw all the types of products and who art is correct there are a variety of products in there it can be stopped products like perfume that can be a whole variety of food products some of the baskets but much less than one we went into a little discussion of that and i said that if you do find it's generic then we're done here but the court understood that it wasn't generic and if there was any question about the court's finding he said and this is on  six of the supplemental appendix that's the supplemental penates which i submit is the transcript from the hearing it's telling that the after apple and didn't include the transcript on page six the district era injunction that is appealed from in this case that's page two twenty five in the record appendix the policeman or injunction what ian joining them from and the way he phrased it i wrote it initially as submitted but he edited the water that i submitted and what was enjoying was from a using the trademark wine country gift basket or any more confusingly similar they are to including but not limited to wine country get baskets in any advertising website or any other purpose and then the district court wrote and it's in his handwriting anything about generic he talks about descriptive and maybe when he says are descriptive he thereby saying they're not generic that's right you're right that's what your point here yes if he had found that they were likelihood of success on the merits and then there's a presumption of irreparable harm he didn't find in find it not find that appeared so you move further along the spectrum and what he did find was that we had proven that there was a likelihood of consumers associate the market with approach our product with the producer the degree of advertising the length of use of the mark and whether the uses been exclusive the district court crown we've done a lot of advertising that favors us is that you've used it for seventeen years that favors you this record says the other two factors and you don't win on exclusivity because there is evidence of this and he also said and i didn't pick up on it that we didn't prevail at convince him on the other factor but he didn't name the other fact i've looked at it since that whether consumers associate the market with the producer are evidence of actual confusion demonstrates that consumers do view this market as designating us laurie a step well you know they didn't have a whole lot of you evidence of actual confusion this is the policeman or injunction in most cases you're very lucky to get any instances of actual confusion and certainly not at the beginning of the case what happened in this case they block the the evidence was that they bought this domain name in november of two thousand and four they start using it it's the christmas season the heavy season all of a sudden we start getting telephone calls saying you know the product doesn't work the way it did last year i don't like it or where's our product we raised serious issues with regard to this and combine that with a lot finding of likely of confusion and the balance of hardships you met your burden and district court to amend the pleadings because we now have three federal rightest ratios for wine country relating to gift baskets the patent all at pan a trademark office found that there was a distinctive mark with its registered under lasting impressions doesn't affect the substance of how this district how the circuit views fair use what lasting impressions decision was sa was that consumer confusion is paramount here and there's a balancing between in trademark law between protecting consumers from confusion and letting the people use then the burden shifts to the defendant to show that it was a fair use well i submit is the way that this circuit has dealt with these issues before is the proper trademark owner proves a likely of confusion and if you prove substantial and substantial means different things depending on the stage of things actual confusion that's the end of the story if this actual confusion out there consumers being confused it means they are looking at this remark as these t a trademark that's the real test you can have all the lawyers talk you want but if consumers are confused they are viewed it as a trademark and if it's a trademark by statute it's not a fair use the statute is a fair use the existence of some confusion may not undercut minutes i submit they are talking about the possibility of likelihood of confusion you haven't proven that consumers really view it as a trademark but when you have actual confusion that changes the equation in this particular case it doesn't matter though you know if you get pat with proving a likely of confusion they have an appeal that steps first step did they use this term in a purely descriptive way and it couldn't have been described equally as well in a different way second step is did they only use so much of the trademark necessary to describe the goods and the third is what did they do to provoke prevent confusion examining those three do they or is there another way of describing the record or a lot of them they submitted a declaration in the record about all these those are generic wine and cheese gift basket you know what's in their wine basket you know what's in their wine country gift basket you don't know what's in it they use it for another purpose that's part of the ring did they use only so much of our mark to describe what's in there the second test now they could have said wine gift basket and we won't have had a problem if they want to tell people they had wine in their athirst that did thank you anything to avoid confusion absolutely not what they did is they bought a website a domain name in november of two thousand and four we didn't know about them till we got found at the instance of actual confusion start coming in we contacted them in late december and moved on it during that time period they make they pretend we didn't know who put those photographs up there but what they didn't know and had to have know people were ordering goods off their website that they weren't offering for sale because they weren't available anymore they were pictures from costco from  before somebody put them on their website they were getting orders for it and that can't be a fair use they were using it at the very least as a bait and switch which although not part of th of this case is the basis for our unfair competition quite and some their use just can't be fair not under these circumstances they adopted the mark with full knowledge of you know we've all many of us have gone to a d r and you come in with different clients and you say they're not even talking to each other and you've been surprised with wonderful success so i can't say that it would not be helpful i just want to address a couple of things with regard to the supreme court lasting impression case the supreme court said that fair use is an affirmative defense it's not a it's not a factor or something that sort of factored in the likelihood of confusion or goes away if you find a likelihood of confusion it's an affirmative defense that's a separate issue if you were to win on  he there should be no i mean josh isn't it correct that would be correct yes now if they later came forward with a lot of evidence more specific evidence of confusion at trial that may or may not win on that issue  my experience what i can't speak to for sure on the central districts trial time but my experience has been eighteen to twenty months how about this picture you know you when you found out that it was  tends to cut against fair use it seems to me is that correct or issue i don't think it's determinative here especially since we took it off we took these things off and we had we've just taken over the business and i can't tell you i'd have to search your record but i can tell you if there was evidence that the prior owner you can't tell if money is the color or the taste but that mark was purported mark was on enforceable and the shredded wheat case seventeen years of exclusive use but that was found generic