[00:00:04] Speaker 01:
Good morning, Your Honors, and may it please the Court, Gregory Keenan, appearing on behalf of Appellants, the Ramirez's.

[00:00:12] Speaker 01:
I'd like to reserve three minutes, if I may.

[00:00:15] Speaker 01:
Below, the district court dismissed plaintiffs' various federal and state trademark claims based on lackeys.

[00:00:22] Speaker 01:
Respectfully, that was error, and it was error for several independent reasons.

[00:00:27] Speaker 01:
First, it was error because plaintiffs' trade dilution claims.

[00:00:31] Speaker 01:
have a congressionally imposed statute of limitations.

[00:00:35] Speaker 01:
And as such, the Supreme Court's rationale from Petrella and SCA hygiene, we would argue, prohibited the use of lackeys to completely bar the trade dilution claim.

[00:00:46] Speaker 01:
In both Petrella and SCA hygiene, the Supreme Court explained that lackeys cannot be invoked to bar legal relief in the face of a statute of limitations enacted by Congress.

[00:00:59] Speaker 01:
Our briefing pointed the court to 28 USC, Section 1658A, which applies uniquely to the federal trademark dilution claims as opposed to the general infringement claims.

[00:01:12] Speaker 01:
Section 1658A imposes a catch-all statute of limitations of four years.

[00:01:19] Speaker 01:
And so our initial argument is that the rationale from the Supreme Court's Petrella and SCA hygiene

[00:01:26] Speaker 04:
I guess I'm confused about one thing.

[00:01:30] Speaker 04:
Could you just clarify something?

[00:01:31] Speaker 04:
What happened to the 2011 lawsuit?

[00:01:37] Speaker 01:
Yes, the 2011 lawsuit was voluntarily dismissed by the parties without prejudice.

[00:01:43] Speaker 04:
So you all knew that this was happening since then, right?

[00:01:47] Speaker 01:
That's right.

[00:01:47] Speaker 01:
Yes, Your Honor.

[00:01:48] Speaker 04:
And so why, you know, what is there, why should this case not be barred?

[00:01:55] Speaker 01:
Two reasons.

[00:01:55] Speaker 01:
So first of all, there are two independent reasons why lackeys is just precluded as a matter of law, at least for barring the entire action.

[00:02:04] Speaker 01:
So the first is the Petrella and SCA hygiene.

[00:02:07] Speaker 01:
The second is the deliberate pirate exception.

[00:02:11] Speaker 04:
And just... So as part of the dismissal, there wasn't some agreement of, you know, there was nothing.

[00:02:18] Speaker 04:
There was no indication.

[00:02:19] Speaker 04:
Was it a handshake type of thing?

[00:02:20] Speaker 04:
Well, how did it happen?

[00:02:21] Speaker 01:
There was no indication that the parties wouldn't pursue actions against each other moving forward.

[00:02:27] Speaker 01:
And also, there's a new factual predicate that emerged later.

[00:02:30] Speaker 01:
So Defendant Navarro did try to register in 2016, after that lawsuit was dismissed, his Los Cominantes HN mark, which created a new factual.

[00:02:42] Speaker 02:
Counsel, I'm glad you brought that up.

[00:02:43] Speaker 02:
Did your clients know about those attempts in 2016?

[00:02:49] Speaker 02:
When did they become aware of the fact that Navarro tried to register the trademark?

[00:02:55] Speaker 01:
I'm not sure that they knew when he registered.

[00:02:59] Speaker 01:
Defendant Navarro was informed by the trademark office that the mark was confusingly similar to plaintiff's mark.

[00:03:07] Speaker 01:
What the record does indicate is that plaintiffs became aware that there were increased uses by Navarro.

[00:03:13] Speaker 01:
The second and third trademark registrations, the ones surrounding specifically Los Cominantes HN, provided a new basis for taking a particular concern with- And what years were those?

[00:03:27] Speaker 01:
It was the 2016 one, and then the second one was in 2018.

[00:03:33] Speaker 02:
Okay, and so I understand that they had knowledge, 2016 and 2018, but this lawsuit wasn't brought until 2020, correct?

[00:03:42] Speaker 01:
That is correct, Your Honor.

[00:03:43] Speaker 02:
And it's my understanding as well that there were two other cases before, the Sotelo, I'll just call it the Sotelo case in 2013 and the Martinez case in 2017.

[00:03:51] Speaker 02:
Yes, Your Honor.

[00:03:53] Speaker 02:
Who was the biggest infringer of those three, Navarro, Sotelo, and Martinez?

[00:03:59] Speaker 01:
I think they were all equally.

[00:04:02] Speaker 01:
big or concerning infringers.

[00:04:04] Speaker 01:
The reason, pragmatically, I think it made sense to go for the other two first, perhaps, is one that was trying to go after, I guess, the promotional angle of clubs in particular, as opposed to the performer.

[00:04:15] Speaker 01:
And then, of course, the two subsequent attempts to register the mark by defendant Navarro in 2016 and 2018.

[00:04:21] Speaker 01:
It was just becoming a problem that wasn't going away.

[00:04:26] Speaker 02:
When did it become a problem then?

[00:04:28] Speaker 02:
Because you had a lawsuit in 2011, and then that was dismissed, and we don't understand why.

[00:04:33] Speaker 02:
So did it stop being a problem at some point after 2011 and then started to be a problem again?

[00:04:39] Speaker 02:
And if so, when?

[00:04:41] Speaker 01:
The record is not clear, but I do think that there is a dish of that.

[00:04:45] Speaker 04:
Oh, the record's not clear, but you have your client.

[00:04:47] Speaker 04:
So why don't you tell us?

[00:04:49] Speaker 01:
I'm sorry, could you repeat the question again?

[00:04:51] Speaker 04:
Why don't you tell us?

[00:04:53] Speaker 04:
I mean, that question never came up.

[00:04:55] Speaker 01:
The attorney who represented the Ramirezes passed away.

[00:04:59] Speaker 01:
So the attorney who made the decisions is deceased.

[00:05:03] Speaker 04:
But I'd just like to say- And your clients never knew?

[00:05:05] Speaker 04:
It was dismissed without their knowledge?

[00:05:08] Speaker 01:
No, of course it was with their knowledge.

[00:05:11] Speaker 04:
And they just didn't understand why?

[00:05:14] Speaker 04:
It was dismissed?

[00:05:17] Speaker 01:
I'm sure that they do understand why it was dismissed.

[00:05:20] Speaker 04:
And you just don't know why?

[00:05:21] Speaker 04:
You yourself don't know why?

[00:05:23] Speaker 01:
I personally as an appellate counsel looking at the record with a deceased attorney don't know the precise reason.

[00:05:30] Speaker 02:
So counsel, the reason stated in the record at the statement of a disputed facts paragraph 11 is that Steve Eyre dismissed the suit because the attorneys did not like the judge.

[00:05:41] Speaker 02:
That doesn't really make sense to us though.

[00:05:43] Speaker 01:
Didn't make sense to me either.

[00:05:45] Speaker 02:
you didn't reach out to your clients and say, what, any background on this?

[00:05:49] Speaker 02:
I'm just confused because you bring a suit in 2011, you wait nine years.

[00:05:56] Speaker 02:
So was there a change after the dismissal and then, I mean, at what point, was it to 2016 where you said, oh, they're infringing again?

[00:06:07] Speaker 01:
Sure, I would say that the subsequent registrations and the fact that our clients received

[00:06:14] Speaker 01:
It was in the record, it says that there was a concern that there was Los Cominantes performing in Atlanta during the time period that defendant Navarro is performing in Georgia and Atlanta.

[00:06:23] Speaker 01:
So between 2019 and 2021, defendant Navarro is performing in Atlanta using the Los Cominantes mark and our clients are getting questions asking if this is the real Los Cominantes.

[00:06:36] Speaker 01:
So it was becoming an increasing concern based on people reaching out to them and then also just the attempts at registering

[00:06:42] Speaker 02:
And I apologize, what year did you say that was, that the concerns started increasing?

[00:06:46] Speaker 01:
So the registrations were 2016 and 2018.

[00:06:49] Speaker 01:
The performances in Atlanta specifically, those came in 2019 and 2021 was the period that defendants were performing there.

[00:06:56] Speaker 02:
So the five years between 2011 and 2016, no concerns?

[00:07:02] Speaker 01:
I mean, of course, that's why we have a lackeys question before us.

[00:07:04] Speaker 01:
But our argument is that regardless of whether or not there's a lackeys question, one, under Petrella and SCA, the effect of that is to prohibit the district court from at least as to the trade dilution claims being able to dismiss it entirely.

[00:07:17] Speaker 01:
And the second would be that a deliberate pirate exception to lackeys should have precluded lackeys as a matter of law under this court's Danjak decision.

[00:07:28] Speaker 01:
And there's at least three bases for the deliberate pirate exception here.

[00:07:32] Speaker 01:
One, of course, is that the USPTO is telling defendants repeatedly this mark is confusing.

[00:07:39] Speaker 01:
The second is that they have a past business relationship with plaintiffs.

[00:07:43] Speaker 01:
And leading treatises have pointed out that when former business partners go their own ways, that a person who then takes a identical or confusingly similar mark with them has the knowledge that

[00:07:57] Speaker 01:
that they're infringing on that mark.

[00:07:59] Speaker 01:
So this isn't a case of someone lying in wait and someone being unsuspectingly swept up, as in the Six Seconds or the Six Circuits in Alpac decision.

[00:08:06] Speaker 01:
There, the defendant, and this is a case relied on by the district court and defendant, in Alpac, the defendant conducted a search, couldn't find any conflicting marks.

[00:08:15] Speaker 01:
The USPTO told them, there is a conflicting mark and we can't register you.

[00:08:19] Speaker 01:
the Nalpak defendants stopped producing the goods, sold the remaining inventory, and wound down.

[00:08:25] Speaker 01:
It wasn't a case of continuing use.

[00:08:28] Speaker 01:
By contrast, district courts within this circuit will point out that if the USPTO tells you that there is a conflicting mark, that continuing to use it is indicia of deliberate use that should preclude lackies as a matter of law.

[00:08:43] Speaker 00:
So I guess you're talking about confusion.

[00:08:47] Speaker 00:
I'm trying to figure out how you've made a strong likelihood of confusion when I believe the only evidence, and I wanted to give you a chance to talk about this, the only evidence of confusion you have put forward are two uncorroborated statements.

[00:09:07] Speaker 01:
Well, there's also that the marks themselves are inherently confusing, because they're essentially identical, as the USPTO pointed out.

[00:09:15] Speaker 00:
So that's what you're resting on for confusion, is the marks and the two uncorroborated statements.

[00:09:20] Speaker 00:
Is there anything else?

[00:09:21] Speaker 01:
Yes.

[00:09:21] Speaker 01:
There's also those uncorroborated statements.

[00:09:26] Speaker 01:
If you look at it in the totality of the record, there's also the performances in Atlanta.

[00:09:31] Speaker 01:
So essentially, the USPTO says,

[00:09:34] Speaker 01:
You can't have this mark, because if you use this mark, it's going to confuse people.

[00:09:38] Speaker 01:
There are statements of people being confused across the country, and they line up perfectly with defendants' performances in Atlanta between the 2019 and the 2021 period.

[00:09:50] Speaker 01:
And additionally, there's just what we would argue are just bright-lined legal bars on either, A, the applicability of lachis here,

[00:09:58] Speaker 01:
Or two, at the very least, the ability to use lackeys to entirely get rid of the claim, both because of the patella-type concerns surrounding the dilution, but also that it's very rare to apply lackeys to preclude prospective injunctive relief.

[00:10:18] Speaker 00:
I guess, what is your best Ninth Circuit case showing that latches can only operate

[00:10:25] Speaker 00:
as a limitation on remedies and not on the injunctive relief.

[00:10:31] Speaker 01:
Sure.

[00:10:31] Speaker 01:
It would be the Danjak case and then going further back, the Stork case from 1945, which was clarified by both.

[00:10:40] Speaker 00:
But the Stork case predates all of the, I think, the three cases that you cite or that is cited.

[00:10:50] Speaker 00:
the court has held to the contrary and also seems like in stork was discussed in prudential when this court determined that laches could bar injunctive relief.

[00:11:01] Speaker 00:
So I'm just trying to square your arguments with our cases.

[00:11:06] Speaker 01:
Yeah, I think there's two responses on that.

[00:11:08] Speaker 01:
So the first is that Prudential, and this is a Dan Jack case that clarifies it, Prudential essentially said that the Supreme Court had a case from the late 19th century, and this court's Stark case imposed a bright line rule.

[00:11:20] Speaker 01:
That wasn't a bright line rule in every instance, but in cases of deliberate infringement, it remained one.

[00:11:26] Speaker 01:
So that was how Dan Jack explained what Prudential clarified about Stark.

[00:11:29] Speaker 00:
Well, I thought Prudential held that the statements made in Stark restaurant

[00:11:34] Speaker 00:
that latches could not bar injunctive constituted dicta, and that the prudential panel's interpretation should control here.

[00:11:45] Speaker 01:
But then Dan Jack subsequently said that prudential applied to us, the Bright-Lighton rule applied to a very specific subset, which would be deliberate infringing cases or wolf or pirate cases.

[00:11:57] Speaker 01:
And as a separate matter, it also said that, generally speaking,

[00:12:01] Speaker 01:
That general rule is still good.

[00:12:03] Speaker 01:
There are some exceptions to it It's not an absolute bright line, but typically it shouldn't bar perspective injunctive relief Council what's the appropriate statute limitations in this case?

[00:12:14] Speaker 02:
That would be four years and when does that four years start?

[00:12:20] Speaker 01:
The four years would start from So we'd go back from when the case was filed to 2016 and all the ongoing

[00:12:28] Speaker 01:
Infringements, including the ones that were at the time perspective, there were some bookings that were lined up through 2022.

[00:12:35] Speaker 01:
The case was held in 2020.

[00:12:38] Speaker 01:
It would be live claims.

[00:12:42] Speaker 00:
It seems like you want to focus on the catch-all provision.

[00:12:47] Speaker 00:
understand that argument because I think even if we concluded that you were correct that the catch-all statute of limitation applies, even though I think the Ninth Circuit has declined to apply that,

[00:13:03] Speaker 00:
How would that help your case, given that the complaint was filed after the limitations period would have expired?

[00:13:16] Speaker 00:
How does that help you?

[00:13:18] Speaker 01:
I don't think the limitations period would have expired, right?

[00:13:21] Speaker 01:
So the complaint is asking for relief regarding ongoing infringements and including injunctive relief for prospective infringements?

[00:13:33] Speaker 01:
So there are a lot of claims.

[00:13:37] Speaker 03:
Did you raise this argument at the district court level?

[00:13:41] Speaker 01:
That specific one regarding the dilution claim was not raised at the district court.

[00:13:44] Speaker 01:
However, one appellant there, Epileze, did not argue waiver.

[00:13:48] Speaker 01:
And I think that's because it's not really the type of issue that would be appropriate for waiver.

[00:13:52] Speaker 01:
There's a statute codified by Congress in two Supreme Court cases that explain the

[00:13:58] Speaker 01:
legal relevance of that codified statute of limitations for the application of lackeys.

[00:14:05] Speaker 00:
Did you want to reserve?

[00:14:07] Speaker 01:
Yes, please.

[00:14:07] Speaker 01:
Thank you very much.

[00:14:17] Speaker 05:
Good morning, Your Honors, and may it please the Court.

[00:14:19] Speaker 05:
My name is Larry Zerner.

[00:14:21] Speaker 05:
I represent Martin Navarro.

[00:14:22] Speaker 05:
Mr. Navarro has been performing as Los Cominantes HN.

[00:14:28] Speaker 05:
Since 2011, as you know, they filed a lawsuit against him.

[00:14:33] Speaker 05:
In 2011, that lawsuit was dismissed.

[00:14:36] Speaker 05:
He has continued to perform.

[00:14:37] Speaker 02:
Counsel, do you know why that 2011 lawsuit was dismissed?

[00:14:44] Speaker 02:
Were you counseled there or no?

[00:14:46] Speaker 05:
I was not counseled at the time.

[00:14:47] Speaker 05:
I have my theories.

[00:14:48] Speaker 05:
The one thing that may be was that Manny Real was the judge.

[00:14:56] Speaker 05:
And you know who he was?

[00:15:00] Speaker 05:
So that's all I got.

[00:15:02] Speaker 05:
I wasn't there.

[00:15:05] Speaker 05:
But since then, it appeared that they had sort of a live and let live relationship.

[00:15:11] Speaker 05:
The Ramirez's were off suing the other people using Los Cominantes' name.

[00:15:18] Speaker 05:
My client was, those people were using Los Cominantes, not with any additional moniker.

[00:15:24] Speaker 04:
My client was trying.

[00:15:25] Speaker 04:
They're very similar.

[00:15:27] Speaker 04:
In fact, they sound identical.

[00:15:29] Speaker 05:
Well, Los Comunantes, but he used the HN for Humberto Navarro, his dad, to separate himself.

[00:15:36] Speaker 05:
And I think he did separate himself, because in the 10 years more that they were operating together,

[00:15:48] Speaker 05:
Plaintiffs were unable to produce any evidence that anyone had confused Mr. Navarro's band and the Ramirez band.

[00:15:56] Speaker 05:
There was no evidence that Atlanta band was my client's band.

[00:16:02] Speaker 00:
Let me ask, because that goes into the unclean hands argument that's being raised.

[00:16:08] Speaker 00:
And I guess I wanted to hear from you.

[00:16:10] Speaker 00:
why the doctrine of unclean hands should not apply to your client.

[00:16:15] Speaker 00:
Give, for example, that Martin played Los Caminantes songs.

[00:16:21] Speaker 00:
He continued to use the name Los Caminantes after the USPTO rejected his trademark application for being confusingly similar to appellants, and he knew the existence of

[00:16:35] Speaker 00:
of Appellant's Mark when he formed his band.

[00:16:39] Speaker 00:
Can you respond to that?

[00:16:40] Speaker 05:
He was not, well, okay, so let's look at the timeline.

[00:16:43] Speaker 05:
At the time when he started using the band, there was a previous trademark, the earlier trademark that was owned, co-owned by Augusto Ramirez and Humberto Navarro, his father.

[00:16:54] Speaker 05:
That was, so when he started using it, he believed?

[00:16:59] Speaker 04:
Well, but when he passed away, I think everyone got their share, correct?

[00:17:04] Speaker 05:
When you say, no, no, no, what happened was, at that point, he passed away, and then Martin began performing as Los Comunantes HN.

[00:17:14] Speaker 05:
Los Comunantes was still performing.

[00:17:16] Speaker 04:
Right, but the estate got what was due to them based upon that earlier, Mark, correct?

[00:17:21] Speaker 05:
No, that's not what happened.

[00:17:24] Speaker 05:
That's not what happened.

[00:17:29] Speaker 05:
Martin was performing and they sued him, is what happened.

[00:17:35] Speaker 05:
But Martin believed that because his dad co-owned that trademark, that right had descended to him.

[00:17:43] Speaker 05:
Where did he get that belief from?

[00:17:45] Speaker 05:
He's not a lawyer.

[00:17:47] Speaker 05:
But that's what he believed.

[00:17:49] Speaker 05:
He was not trying.

[00:17:50] Speaker 05:
So he believed he had, like, but he believed he had.

[00:17:52] Speaker 05:
Well, counsel, we all have beliefs about many things.

[00:17:54] Speaker 05:
I understand.

[00:17:55] Speaker 05:
I mean.

[00:17:56] Speaker 05:
No, I'm not saying it was a, but that's what he believed.

[00:17:59] Speaker 05:
He had to, he was not trying, he believed that he owned it.

[00:18:03] Speaker 05:
He believed he owed it to the co-own the trademark and could use it.

[00:18:06] Speaker 05:
Then that trademark expired in 2012.

[00:18:11] Speaker 05:
Then in 2013, this new trademark was registered by Augusto Ramirez and his two sons.

[00:18:21] Speaker 05:
That's the mark that was going on.

[00:18:23] Speaker 05:
When this mark that they're suing on was registered, Martin had been operating under Los Combinantes HN for almost two years.

[00:18:36] Speaker 05:
And they had sued him and dismissed it, and he kept going.

[00:18:40] Speaker 05:
So he's not trying to confuse people.

[00:18:44] Speaker 05:
One of the things that is a little I've learned about the advertising.

[00:18:48] Speaker 04:
So I guess when the 2011 case was dismissed, did he think, I'm free to go here, they're fine with me continuing?

[00:18:56] Speaker 04:
Was that his belief?

[00:18:58] Speaker 04:
Yeah.

[00:18:58] Speaker 04:
That was his understanding?

[00:18:59] Speaker 04:
Yeah, yeah.

[00:19:00] Speaker 02:
OK.

[00:19:01] Speaker 02:
So why did he try to register the trademark in 2016?

[00:19:04] Speaker 05:
Well, he was trying to register the HN trade part of it.

[00:19:08] Speaker 05:
He wanted to protect that.

[00:19:09] Speaker 05:
He wasn't going to stop.

[00:19:11] Speaker 05:
But he wasn't going to use it.

[00:19:12] Speaker 05:
And he never, ever tried or even thought about trying to stop them from using Los Comanantes.

[00:19:18] Speaker 05:
He was just trying to protect his mark.

[00:19:20] Speaker 02:
OK.

[00:19:20] Speaker 02:
And when he was unsuccessful because they were found to be confusing, did that make him pause and say, ooh, there might be an issue here?

[00:19:28] Speaker 05:
No, he didn't think about it.

[00:19:30] Speaker 05:
He'd already at that point been using it for five years and they hadn't sued him or even objected.

[00:19:36] Speaker 05:
There were no further objections at that point.

[00:19:39] Speaker 02:
What is your understanding of when it was the first time that the plaint or the appellants contacted Mr. Navarro again?

[00:19:48] Speaker 02:
After the 2011 lawsuits dismissed, he continues to work on Los Caminantes HN or under Los Caminantes HN.

[00:19:56] Speaker 02:
When was he first contacted by the appellant saying, hey, this is our name.

[00:20:02] Speaker 02:
Why are you using it?

[00:20:03] Speaker 05:
I don't believe there's anything in the record other than the complaint itself.

[00:20:07] Speaker 05:
There is a relationship between the bands over the royalties to the music, because obviously they're both, Martin's dad is on their albums and he's entitled to royalties.

[00:20:20] Speaker 05:
And so there was interaction with another lawyer, Dorothy Richardson.

[00:20:26] Speaker 05:
And so they were talking, but there's nothing in the record that

[00:20:31] Speaker 05:
that they said, stop using, stop performing, or anything like that.

[00:20:35] Speaker 05:
But they were talking about the royalty.

[00:20:37] Speaker 05:
They had royalty disputes, and they still have a royalty dispute.

[00:20:39] Speaker 02:
I guess what I'm trying to figure out, counsel, is what triggered this lawsuit then?

[00:20:43] Speaker 02:
If your client had been using the mark since 2011, there was a lawsuit.

[00:20:47] Speaker 02:
It was dismissed.

[00:20:48] Speaker 02:
So then he thought, hey, I'm free to use it.

[00:20:51] Speaker 02:
He went and tried to register in 2016.

[00:20:54] Speaker 02:
He was unsuccessful because it was too close to the Los Caminantes trademark.

[00:20:58] Speaker 02:
So then what triggered the lawsuit?

[00:21:01] Speaker 05:
Nothing on my client's part, what had happened, obviously, this is COVID, when the lawsuit was filed, nobody's making any money.

[00:21:10] Speaker 05:
And that may have been the thing that caused them to, because no one was performing, so no one was making any money.

[00:21:19] Speaker 02:
And your client was aware of the other lawsuits, correct?

[00:21:23] Speaker 02:
The one against Sotelo and Martinez?

[00:21:26] Speaker 05:
The record is later he found out.

[00:21:29] Speaker 05:
He did not know at the time.

[00:21:30] Speaker 05:
They didn't tell him, oh, I'm suing these other people.

[00:21:35] Speaker 05:
These other people had performed with the band at some points.

[00:21:43] Speaker 05:
They were other musicians.

[00:21:44] Speaker 04:
Oh, go ahead.

[00:21:45] Speaker 02:
Oh, real quick.

[00:21:47] Speaker 02:
Yeah, they're not just other people, because I believe it was Martinez that wasn't he... Yeah, Vicente Martinez in the 2017 case, wasn't he one of the singers in Navarro's band?

[00:21:57] Speaker 02:
I believe so, yes.

[00:21:58] Speaker 02:
I mean, they have a relationship.

[00:21:59] Speaker 02:
It's not far-fetched to think that Martinez could call him up and say, hey, I'm getting sued.

[00:22:04] Speaker 02:
I'm not... You don't need to speculate as to that, but I'm just interested to know what your client knew and when he knew it.

[00:22:12] Speaker 05:
I don't think he knew anything.

[00:22:14] Speaker 04:
On the trademark dilution claim, I mean, counsel just said that there's a four-year statute of limitations, and I understand how he gets there.

[00:22:25] Speaker 04:
Can you explain why that's correct or not?

[00:22:28] Speaker 05:
Your Honor, I mean, it's a very original argument.

[00:22:32] Speaker 04:
We couldn't find any case that... Well, Congress passed a law in 1990 saying that claims brought pursuant to a later enacted federal statute will have a four-year statute of limitations.

[00:22:42] Speaker 04:
And that's 28 U.S.C.

[00:22:45] Speaker 04:
1658.

[00:22:47] Speaker 04:
The federal statute giving rise to a claim for trademark dilution was enacted in 1996.

[00:22:51] Speaker 04:
So, setting aside the Latchez claims,

[00:22:54] Speaker 04:
without you for a moment, do you agree that the section 1658 establishes a four-year statute of limitations?

[00:23:02] Speaker 05:
It just doesn't square with what we know about trademark law, which the Congress has always known that we're going to put the slatches in because the issues are really equitable and there's a lot of issues and a lot of rules, a lot of tests, a lot of parts

[00:23:19] Speaker 05:
in deciding whether these things are infringing, whether we're going to apply latches, how much money is spent, how much confusion there is.

[00:23:26] Speaker 05:
And to say, OK, for infringement, we have this latches rule, and you can apply that.

[00:23:32] Speaker 05:
But for dilution, you can sue whenever you want, as long as there's still some use within the four-year period.

[00:23:39] Speaker 05:
Even though you've known about it for 20 years, you can now bring it when, arguably, dilution is less

[00:23:47] Speaker 05:
is worse than infringement.

[00:23:49] Speaker 05:
If someone is selling knockoff Nikes, that's worse than if they're diluting the Nike brand, I would argue.

[00:23:55] Speaker 05:
And to say that the Congress intended that the infringement, you can say you can use latches, but dilution, you can't.

[00:24:06] Speaker 05:
It just doesn't square what it is, but even if we do go there and you say, okay, there is dilution, dilution applies to famous marks, there's no evidence in the record that this was a famous mark.

[00:24:17] Speaker 05:
They're a very talented band, Los Caminantes, but I don't think anyone would say they are of the renown that you would need to get to that level.

[00:24:27] Speaker 04:
Well, some of us have been listening to Los Caminantes for quite some time.

[00:24:31] Speaker 04:
Sure.

[00:24:32] Speaker 05:
I echo that.

[00:24:33] Speaker 05:
I was wondering if any of you knew of the band.

[00:24:36] Speaker 04:
My sister's favorite band growing up.

[00:24:40] Speaker 04:
And so I'm very familiar with Los Caminantes, and I'm very familiar with your clients as well.

[00:24:48] Speaker 05:
But at the end of the day, the issue is

[00:24:53] Speaker 05:
Prejudice and harm, that's the issue for latches.

[00:24:57] Speaker 05:
The prejudice to my client would be devastating.

[00:25:00] Speaker 05:
He has built up this business 13 years.

[00:25:02] Speaker 05:
This is his livelihood.

[00:25:04] Speaker 04:
Well, but you can see why they'd be upset that you're diluting their property.

[00:25:12] Speaker 05:
I could see why they're upset, but yet they were unable to present any evidence of even a dollar in loss to them.

[00:25:21] Speaker 05:
They will not lose a dollar.

[00:25:22] Speaker 05:
If you deny their appeal, and we keep going at the status quo, they're not losing business.

[00:25:30] Speaker 05:
Bands are different than shoes and watches.

[00:25:34] Speaker 05:
You're there.

[00:25:35] Speaker 05:
Someone's going to see a certain person on a certain day.

[00:25:38] Speaker 05:
It's a set time, and you're going to be there.

[00:25:41] Speaker 05:
And you're only there at the wrong 52 weekends in a year.

[00:25:45] Speaker 05:
You've got to be in a certain city.

[00:25:46] Speaker 05:
That's where you are.

[00:25:47] Speaker 05:
It's not an unlimited product like that.

[00:25:51] Speaker 05:
Um, my client would be very harmed.

[00:25:53] Speaker 05:
They waited and waited.

[00:25:55] Speaker 05:
He built up this business and to allow them to, to now take it away from them.

[00:26:01] Speaker 05:
That's what latches is supposed to prevent.

[00:26:06] Speaker 05:
There's no more questions.

[00:26:12] Speaker 05:
Thank you.

[00:26:25] Speaker 01:
I'd like to just start quickly with the defendant's belief that he somehow inherited the Cominates HN trademark.

[00:26:31] Speaker 01:
It's worth noting that his father didn't use a memorial to himself, the Cominates HN.

[00:26:36] Speaker 01:
So why he thought he inherited that mark is a little confusing.

[00:26:39] Speaker 01:
And certainly, when the USPTO told him twice that it was confusing and rejected, he should have been disabused of that notion.

[00:26:46] Speaker 01:
But he just kept using it, consequences be darned.

[00:26:49] Speaker 01:
And that's just kind of important.

[00:26:52] Speaker 04:
But to his last point, you all waited forever.

[00:26:56] Speaker 01:
Yes, I'll just point to the two Brightline legal rules that restrain the effects of latches, and then also highlight that he's continuing to use it.

[00:27:06] Speaker 01:
And also, I just want to highlight that defendant Navarro did testify.

[00:27:09] Speaker 01:
He was aware of the suit with Juan Navarro, that Juan Navarro was actively promoting and had been for a number of years his business.

[00:27:17] Speaker 01:
We had close business relationships set for ER 731.

[00:27:20] Speaker 01:
And he knew that they had been enjoined for using the Cominades mark.

[00:27:24] Speaker 01:
So doesn't that cut both ways though counsel because then doesn't he think well, they're not coming after me So they must agree that I'm allowed to use Los Caminantes comma HN I Don't think so if you look at the fact that the USPTO is rejecting it There's the Nalpec case is a great study in contrast where that's not a continuing use case you're just not allowed to keep when you know people are being sued and the USPTO is rejecting you and

[00:27:48] Speaker 01:
You have a former business relationship.

[00:27:50] Speaker 01:
You can't just keep using the mark and then cry latches.

[00:27:52] Speaker 02:
And I think that's why it's so important for us to understand why this case was dismissed in the first place.

[00:27:57] Speaker 02:
Was there some sort of, as my colleague here said, a handshake agreement?

[00:28:02] Speaker 02:
We don't understand if this is such a big deal, why the wait?

[00:28:06] Speaker 01:
What we know from the record is that the attorneys, and it appears both attorneys, didn't like the judge.

[00:28:11] Speaker 01:
It's a very cryptic remark.

[00:28:12] Speaker 01:
I don't know what it means.

[00:28:14] Speaker 01:
The attorney who represented our family passed away.

[00:28:17] Speaker 01:
We don't know, but it doesn't change the fact that there are bright-line legal parameters on what lackeys, when it can apply, and the effect.

[00:28:24] Speaker 01:
And I would just say, someone who continues to use a mark after the USPTO is repeatedly rejecting them, look at the Nalpec case.

[00:28:33] Speaker 01:
And it's a study in contrast of that's just not the type of case where it's a deliberate pirate exception to lackeys.

[00:28:38] Speaker 01:
And then we have the Petrella and SCA argument as to the dilution.

[00:28:45] Speaker 00:
Anything else?

[00:28:46] Speaker 01:
No, Your Honors, thank you very much for your time today.

[00:28:48] Speaker 00:
Thank you both for your oral argument presentations here today.

[00:28:52] Speaker 00:
The case of Agustin Ramirez versus Martin Navarro is submitted.