[00:00:01] Speaker 02:
Good morning, Your Honors.

[00:00:02] Speaker 02:
Kenneth Brooks on behalf of Appellant, VVV and Sons Edible Oils Limited.

[00:00:08] Speaker 03:
Counsel, I'll be honest with you.

[00:00:10] Speaker 03:
You have an uphill battle here, because it appears that the Ninth Circuit, prior Ninth Circuit decision specifically said that two of the marks that you are seeking to have addressed here, the 172 mark and the 000 mark, are out.

[00:00:29] Speaker 03:
How do you get around that determination by the prior appeal?

[00:00:34] Speaker 02:
Well, this is what I find perplexing.

[00:00:35] Speaker 02:
My arguments are based on statutory law, the Lanham Act.

[00:00:40] Speaker 02:
The opposition filed by the appellee is based on federal common law.

[00:00:45] Speaker 03:
Now, I've always thought- Court's already decided the issue.

[00:00:48] Speaker 03:
Does it matter whether it was on the statutory law or common law?

[00:00:52] Speaker 02:
It does when you consider the interpretation of the mandate, which is what this case is about.

[00:00:57] Speaker 02:
So Wendy, and what's interesting is all three marks stand or fall together.

[00:01:02] Speaker 03:
And that's not how it was presented on the prior appeal.

[00:01:07] Speaker 03:
And so that's the law of the case at this point.

[00:01:10] Speaker 03:
We can't rewrite the facts at this point, because the Ninth Circuit has previously considered this case.

[00:01:18] Speaker 03:
And only the 64 mark was presented at that point.

[00:01:24] Speaker 02:
The 654.

[00:01:24] Speaker 03:
654.

[00:01:26] Speaker 02:
Well, I attempted to present the arguments on the triple zero and the 172.

[00:01:30] Speaker 03:
But weren't those already waived at the district court level?

[00:01:38] Speaker 02:
Well, I didn't consider them waived.

[00:01:39] Speaker 02:
If you look at the interpretation and mandate, let me start by reiterating that it was all parties' position that all three marks stood or fell together.

[00:01:52] Speaker 03:
And you can look at the case record, and I'm looking at the declaration of a- If that was the party's position, why did the appeal go forward only on the 964 mark?

[00:02:03] Speaker 02:
No, the 654.

[00:02:04] Speaker 02:
I'm sorry, 654.

[00:02:07] Speaker 02:
Because there was a threat of sanctions.

[00:02:10] Speaker 02:
Rule 11 says you can't make frivolous arguments.

[00:02:13] Speaker 02:
And the law of the case, when that summary judgment motion arose, was that the 654 mark was out because of race judicata.

[00:02:22] Speaker 02:
Where is the threat of sanctions in the record?

[00:02:27] Speaker 02:
I mean, the .

[00:02:30] Speaker 03:
.

[00:02:30] Speaker 03:
.

[00:02:30] Speaker 03:
But I mean, you briefed it, but if we're in the record, can we go to see that the district court threaten you with sanctions?

[00:02:36] Speaker 02:
In the footnote of the judge's order, which is recited in here after I attempted to amend the complaint to include the cause of action for fraud, and the sanctions were actually filed, and I explained to the .

[00:02:54] Speaker 02:
.

[00:02:54] Speaker 02:
.

[00:02:54] Speaker 03:
But that was as to fraud.

[00:02:55] Speaker 03:
That wasn't as to the .

[00:02:57] Speaker 03:
.

[00:02:57] Speaker ?:
.

[00:02:57] Speaker 03:
validity of the marks.

[00:03:01] Speaker 02:
That was because at the time I kept arguing that race judicata didn't apply.

[00:03:06] Speaker 02:
So when you take that and you realize that all parties agreed that the three marks lived and died together, it would have been a violation of rule 11 to make those arguments again.

[00:03:17] Speaker 02:
And there was no way I was going to draw the ire of Judge Nunley.

[00:03:22] Speaker 01:
I'm a little fuzzy here.

[00:03:24] Speaker 01:
If you were losing on the 654 and they stood and fell together, why did you have to say no opposition?

[00:03:32] Speaker 01:
Why didn't you just say fine, rule against us, and we'll send it up to appeal?

[00:03:38] Speaker 02:
Because I thought I had to file it.

[00:03:39] Speaker 02:
Well, because I was conjured by the other party.

[00:03:42] Speaker 02:
You were what?

[00:03:43] Speaker 02:
Conjured.

[00:03:44] Speaker 02:
They kept threatening sanctions and sanctions.

[00:03:47] Speaker 02:
Well, but we're talking about the interpretation of the mandate now.

[00:03:52] Speaker 03:
The mandate, to me, is clear.

[00:03:54] Speaker 02:
If the 654 mark survives and the Pelley Defendant gets to keep control of the triple zero and the 172, we're now violating Lanham Act, which part of the Lanham Act, which makes clear to the Supreme Court, is to protect the public.

[00:04:14] Speaker 03:
But the district court said the 172 mark and the 000 mark are out.

[00:04:20] Speaker 02:
But there's been a change of law.

[00:04:21] Speaker 02:
I mean, the reason they were out, the whole argument that those were out, is because of the 654 and because of Marx.

[00:04:29] Speaker 03:
It wasn't.

[00:04:30] Speaker 03:
Not in the mandate.

[00:04:31] Speaker 03:
It wasn't because of the 654.

[00:04:33] Speaker 03:
No, in the mandate.

[00:04:34] Speaker 03:
Because the 654 survived.

[00:04:35] Speaker 02:
Right.

[00:04:37] Speaker 02:
So now there's a change of law, though, based upon the mandate.

[00:04:40] Speaker 02:
What's the change of law?

[00:04:41] Speaker 02:
The mandate.

[00:04:42] Speaker 02:
The race judicata.

[00:04:43] Speaker 01:
as applicable to the 654, no longer applied.

[00:05:07] Speaker 01:
As my understanding is, you're still proceeding.

[00:05:09] Speaker 01:
You may be winning on the 654 mark.

[00:05:12] Speaker 01:
I guess if you win something on that and they stand and fall together, are you just as well off?

[00:05:20] Speaker 01:
Or is there some reason that winning on 654 and not on the other two is really damaging to you?

[00:05:26] Speaker 02:
Well, it's damaging in the fact that

[00:05:29] Speaker 02:
One of them is identical.

[00:05:31] Speaker 02:
It's a word mark, and I believe it's 172.

[00:05:36] Speaker 02:
That's a word mark.

[00:05:38] Speaker 02:
The other one is a form mark.

[00:05:41] Speaker 02:
The dominant term on it is the word mark idiom, which is what the 654 mark is.

[00:05:48] Speaker 02:
We can't expand now into other products because the special form mark and the, yeah, both the marks deal with things other than the gingelly oil, which is sesame seed oil.

[00:06:02] Speaker 02:
And so the client, VVB, does make other goods.

[00:06:06] Speaker 02:
So now we can't expand without having to go to the director.

[00:06:10] Speaker 02:
I mean, there is an administrative proceeding that we could use that was the backup.

[00:06:16] Speaker 02:
and ask the director, hey, look, it's a matter of public policy, knock this out.

[00:06:19] Speaker 01:
However, in the end, you win on the merits, whatever the merits are, and I take it they're still going on in the district court.

[00:06:26] Speaker 02:
Yes, your honor.

[00:06:28] Speaker 01:
It says that your side is right and their side is wrong.

[00:06:32] Speaker 01:
Again, I have a little trouble seeing where the real harm is, but even so, isn't the issue that the Ninth Circuit, for right or for wrong,

[00:06:42] Speaker 01:
as Judge Rollinson said, very clearly said what it said.

[00:06:47] Speaker 01:
And for the district court to say, oh, let's resurrect these other two, wouldn't that have flown directly in the teeth of the mandate?

[00:06:57] Speaker 02:
I mean, if you look at the case law, it's quite clear that you can look beyond the words of the mandate.

[00:07:03] Speaker 02:
You have to look at what the mandate, the spirit of the mandate in the posture of the case.

[00:07:08] Speaker 02:
And the spirit of the mandate is, hey, look, the race judicata had nothing, cannot stop the adjudication of the 654 mark.

[00:07:18] Speaker 02:
And the other two marks are premised.

[00:07:20] Speaker 04:
What case says that we should look at the spirit of the mandate when the language of the mandate

[00:07:25] Speaker 04:
is clear, which it is here.

[00:07:29] Speaker 04:
I have to be frank that I don't understand why we're here.

[00:07:35] Speaker 04:
I don't understand.

[00:07:36] Speaker 04:
I don't understand these arguments.

[00:07:38] Speaker 02:
It's Firth v. United States, 554 F2D 990.

[00:07:40] Speaker 02:
And they're quoting other cases from the Ninth Circuit.

[00:07:45] Speaker 02:
Lindy Penn Company v. Big Penn Corp, 982 F2D 1400.

[00:07:50] Speaker 02:
And then another case, I mean, Sanford Fork.

[00:07:58] Speaker 03:
Did you want to save time for rebuttal counsel?

[00:08:00] Speaker 02:
Yes, Your Honor.

[00:08:01] Speaker 03:
All right.

[00:08:01] Speaker 03:
Thank you, Counsel.

[00:08:02] Speaker 02:
Thank you.

[00:08:13] Speaker 00:
Good morning.

[00:08:13] Speaker 00:
May it please the court, I'm Richard Mandel of Cowan, Leibowitz, and Lappman for the appellee, Menakshi Overseas.

[00:08:21] Speaker 00:
Your Honor, is the

[00:08:23] Speaker 00:
The mandate is absolutely clear here that the 000 mark and the 172 mark, that those claims against those marks were dismissed.

[00:08:37] Speaker 00:
And they were dismissed not because of any ruling on claim preclusion, but because the plaintiff didn't oppose a motion to dismiss in the district court.

[00:08:51] Speaker 00:
Basically conceded that the motion should be granted.

[00:08:54] Speaker 00:
And so what the Ninth Circuit said on appeal is it affirmed in part and it reversed in part as to the 654 market said the district court had gotten it wrong on application of claim

[00:09:09] Speaker 00:
And as to the other two marks, it very clearly said your contention that that was based on a mistaken application of claim preclusion is just not correct.

[00:09:21] Speaker 00:
That dismissal was based on your failure to oppose a second motion to dismiss.

[00:09:28] Speaker 00:
Now, Mr. Brooks says that he was under threat of sanctions, and that may be the case, but that's the same argument he made to the Ninth Circuit the first time.

[00:09:39] Speaker 00:
We've had this exact issue argued, briefed, and decided.

[00:09:45] Speaker 00:
It may not be the focal point of the first appeal, but it was certainly raised.

[00:09:50] Speaker 00:
And we cited, I believe it's page 23 to 24 of his opening brief in the Ninth Circuit the first time, made all these arguments saying, you know, we were under threat of sanction.

[00:10:01] Speaker 00:
We thought we were gonna be prejudiced in the district court.

[00:10:05] Speaker 00:
And so I had no choice basically but to not oppose.

[00:10:08] Speaker 00:
and as a result ended that argument by saying thus the dismissal of those as to those two marks was you know based on the erroneous claim preclusion argument and the Ninth Circuit said absolutely that is not correct so we've heard all this before and it's been ruled upon

[00:10:29] Speaker 00:
And under law of the case, there's really no reason to change it.

[00:10:33] Speaker 00:
There are only three grounds on which you can reach a different result this time around under the Ninth Circuit case law.

[00:10:40] Speaker 00:
New evidence, which is not present.

[00:10:44] Speaker 00:
A change in law, which does not exist, because the change in law he's talking about is the Ninth Circuit ruling itself.

[00:10:51] Speaker 00:
But there had already been a waiver before the Ninth Circuit ever reached this issue.

[00:10:56] Speaker 00:
There's no change in law in the claim preclusion decision by the Ninth Circuit didn't impact the waiver.

[00:11:02] Speaker 00:
And the last ground is if the decision was clearly erroneous and would work a manifest injustice.

[00:11:11] Speaker 00:
And that's clearly not the case because the decision is actually right.

[00:11:14] Speaker 00:
I mean, what the Ninth Circuit said

[00:11:16] Speaker 00:
is a non-opposition waived any challenge to the dismissal.

[00:11:21] Speaker 00:
Now, I understand what Mr. Brooks is saying.

[00:11:24] Speaker 00:
He felt like he was in a tough position.

[00:11:27] Speaker 00:
But I think he could have clearly just said to the district court,

[00:11:32] Speaker 00:
Look, we disagree with your ruling on the 654 mark, and we continue to believe that our ownership of the Iriam trademark gives us the right to go forward.

[00:11:44] Speaker 00:
We've made those arguments.

[00:11:45] Speaker 00:
We refer you to them.

[00:11:47] Speaker 00:
We stand by them and preserve them.

[00:11:48] Speaker 00:
But if the district court is going to stick with that decision, we have nothing else to add.

[00:11:54] Speaker 00:
And he would have reserved his position.

[00:11:57] Speaker 00:
He didn't do that.

[00:11:58] Speaker 00:
He put in an opposition, a non-opposition,

[00:12:02] Speaker 00:
that basically said, you know, we're very eager to get to the Ninth Circuit, we want to speed that up, and this is a complex area of the law, and therefore we don't oppose it.

[00:12:12] Speaker 00:
That's not the same thing.

[00:12:13] Speaker 01:
That's different from just saying, here are our arguments from before, please rule against us.

[00:12:19] Speaker 01:
Absolutely.

[00:12:19] Speaker 01:
And that happens in all sorts of litigation.

[00:12:22] Speaker 00:
Absolutely.

[00:12:23] Speaker 00:
And, you know, the law is clear.

[00:12:25] Speaker 00:
I mean, he may regret now his decision and he may feel it would have been better had I preserved my position, but that's not what he did.

[00:12:33] Speaker 00:
And litigants are stuck with the decisions that their counsel make.

[00:12:37] Speaker 00:
It was a tactical decision.

[00:12:39] Speaker 00:
Not to, you know, I understand, you know, it's easy in hindsight to say, oh, you know, I got it reversed and I wish I had all three marks.

[00:12:48] Speaker 00:
But, you know, the reality is that the Ninth Circuit reversed on a ground that wasn't even argued.

[00:12:53] Speaker 00:
If you look at footnote two of their decision the first time around,

[00:12:58] Speaker 00:
they said there was an exception to claim preclusion because of the difference in damages not being available in the TTAB.

[00:13:06] Speaker 00:
So even though the three elements of claim preclusion were met, and even though it was a default judgment, that would have all been enough, but because of that exception that there weren't damages available, it said that there's an exception and claim preclusion doesn't apply.

[00:13:22] Speaker 00:
That wasn't an obvious decision that that was gonna occur.

[00:13:26] Speaker 01:
Was the opposing counsel right about the effect of not being able to attack the other two?

[00:13:33] Speaker 01:
That is, if, I guess, your side loses game, set, and match on 654, are they really damaged by not being able to attack the other two?

[00:13:43] Speaker 00:
Well, I think there are differences.

[00:13:45] Speaker 00:
I mean, that's going to remain to be played out in the district court, but for example,

[00:13:50] Speaker 00:
The 172 mark is different goods.

[00:13:53] Speaker 00:
So I think the fact of the matter is it's been decided that we own the trademark for those goods.

[00:14:01] Speaker 00:
And even if those goods were close enough that under ordinary principles of trademark law, they would create a likelihood of confusion, they're sort of stuck with that.

[00:14:12] Speaker 00:
And the other mark is a slightly different mark.

[00:14:15] Speaker 00:
It's a design component that does include

[00:14:18] Speaker 00:
the word market, Hyam, but it has other design elements.

[00:14:22] Speaker 00:
And we would submit that it also includes products beyond sesame oil.

[00:14:28] Speaker 00:
And we would submit that under the decision that's been reached, that that's also been decided, basically, that as to that formative version of the mark on those goods, we have prevailed.

[00:14:40] Speaker 03:
But opposing counsel said that the parties agreed that all three of the marks rise and fall together.

[00:14:47] Speaker 03:
So if the 654 mark survives, then the other two survive.

[00:14:52] Speaker 03:
What's your response?

[00:14:54] Speaker 00:
I don't think that's correct.

[00:14:56] Speaker 03:
Did you all agree that they rise and fall together?

[00:14:59] Speaker 00:
I don't think we agreed in the sense of ever stipulating to that.

[00:15:03] Speaker 00:
I think the parties might have believed that under trademark law, that would be a common result, that it would be probable that the outcome would be the same for all three marks if we're looking at it just as a matter of substantive trademark law.

[00:15:18] Speaker 00:
But the reality is that this happens all the time.

[00:15:21] Speaker 00:
I mean, that plaintiff trademark owners settle cases and they may allow certain uses

[00:15:27] Speaker 00:
And after the fact, there may be actual confusion and they may want to rescind the contract.

[00:15:32] Speaker 00:
We don't generally let them do that.

[00:15:36] Speaker 00:
You know, the fact of the matter is it comes down to this.

[00:15:39] Speaker 00:
There was a motion to dismiss made as to the 172 and the 000 mark.

[00:15:46] Speaker 00:
And plaintiff should have known that by conceding that, he was essentially giving up on that.

[00:15:52] Speaker 00:
I mean, I think that was pretty obvious that if you put in a non-opposition to a motion to dismiss claims against those marks, you're basically

[00:16:00] Speaker 00:
accepting that you've lost on those marks and you know that was his decision and that plaintiff is stuck with the consequences of that even if they may not like that that was their decision and you know again to put it in context it was a tactical decision

[00:16:19] Speaker 00:
driven by two concerns, one in eagerness to get to the Ninth Circuit quickly on the 654 mark, as he actually said in the non opposition.

[00:16:29] Speaker 00:
And as he argued to the Ninth Circuit the first time,

[00:16:32] Speaker 00:
a desire to improve the posture of the case in the district court.

[00:16:36] Speaker 00:
He was concerned that the judge had been angry and maybe had said some things that were negative about some of his positions.

[00:16:45] Speaker 00:
And we've all been in that position where things are not going so great.

[00:16:49] Speaker 00:
You have some adverse rulings, and you have to make tactical decisions how to deal with that.

[00:16:53] Speaker 00:
And this is the tactical decision that he made, and he is stuck with the consequences of that, and so is his client.

[00:17:02] Speaker 00:
Unless the panel has any questions for me, I have nothing else to add.

[00:17:05] Speaker 03:
All right.

[00:17:06] Speaker 03:
It appears not.

[00:17:07] Speaker 03:
Thank you, counsel.

[00:17:08] Speaker 03:
Dr. Buttle.

[00:17:16] Speaker 02:
With respect to the stipulation, I draw the court's attention to volume 3, the excerpts, page 372, line 15, to page 373, line 6, and paragraph 9,

[00:17:30] Speaker 02:
of their attorney's declaration, which stated what we had just argued, that the marks live and die together.

[00:17:39] Speaker 02:
And that's paragraph 9 on page 377 of the excerpts.

[00:17:46] Speaker 02:
With respect to this being about the threat of sanctions, the fact remains

[00:17:51] Speaker 02:
The Lanham Act controls, unless Article 6, paragraph 2 doesn't apply, I really don't know.

[00:17:56] Speaker 02:
I thought common law had to yield to federal statutory law, federal common law.

[00:18:02] Speaker 03:
All the arguments based on the- Are you saying statutory law must yield to common law?

[00:18:07] Speaker 02:
No, no.

[00:18:08] Speaker 02:
Or vice versa?

[00:18:08] Speaker 02:
It sounds like what I'm hearing here is, hey, the Ninth Circuit decided that's it, and that's why-

[00:18:15] Speaker 02:
Well, except when I point out that if you interpret the mandate as opposing counsel states, then we're violating the Lanham Act.

[00:18:23] Speaker 01:
So I believe that the mandate- But you're saying the Ninth Circuit violates the Lanham Act.

[00:18:27] Speaker 01:
Well, if the mandate- So don't you go to higher authority to try to convince someone of that?

[00:18:33] Speaker 02:
Well, the reason the Ninth Circuit cited a case that was for the proposition that, hey,

[00:18:41] Speaker 02:
The district court never had a chance to rule on this because there was no opposition.

[00:18:46] Speaker 02:
And it's a may.

[00:18:47] Speaker 02:
It's not a shall, the case cited, in support of not addressing the 00 and 172 marks.

[00:18:54] Speaker 02:
So we're back in district court.

[00:18:56] Speaker 02:
Hey, district court, let's take a look at this mandate.

[00:18:58] Speaker 02:
And hey, here's the Lanham Act.

[00:19:00] Speaker 02:
You can't interpret the mandate to not allow the 000 and 172 back in.

[00:19:06] Speaker 02:
And that's because statutory law trumps

[00:19:10] Speaker 02:
Common law at least that's what I believe.

[00:19:13] Speaker 03:
All right.

[00:19:13] Speaker 02:
That's it.

[00:19:14] Speaker 02:
Thank you.

[00:19:14] Speaker 03:
Thank you to both counsel The case just argued is submitted for decision by the court that completes our calendar for the day and for the week.

[00:19:22] Speaker 04:
We are adjourned All rise This court for this session stands adjourned