946 F.3d 542
9th Cir.2019Background
- V.V.V. & Sons Edible Oils (VVV), an Indian company, has used the mark "IDHAYAM" for sesame/cooking oil since the 1980s.
- In 2009 Meenakshi Overseas applied to register the mark now called the '654 registration; VVV opposed before the TTAB but abandoned its opposition and the TTAB entered judgment against VVV, giving Meenakshi registration rights.
- Meenakshi later obtained two additional IDHAYAM registrations ('172 and '000). VVV's subsequent U.S. registration attempts were denied for likelihood of confusion.
- VVV filed a TTAB petition to cancel all three Meenakshi marks; the TTAB dismissed the petition as to '654 with prejudice (claim preclusion) but allowed challenges to '172 and '000 to proceed; a Federal Circuit appeal was dismissed for lack of jurisdiction.
- VVV filed a district-court suit asserting infringement, dilution, and unfair competition as to all three marks; the district court dismissed claims as to '654 based on claim preclusion, denied leave to amend, and later dismissed the '172 and '000 claims after VVV did not oppose a motion to dismiss.
- On appeal the Ninth Circuit reversed the dismissal and denial of leave to amend as to the '654 mark (finding a Restatement exception to claim preclusion), affirmed the dismissal of claims as to '172 and '000 (waiver), and remanded for consideration of issue preclusion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether claim preclusion bars VVV's federal claims about the '654 mark | TTAB lacked jurisdiction to adjudicate infringement/damages, so claim preclusion is unfair | TTAB judgment precludes relitigation of same claims | Reversed: exception to claim preclusion applies because TTAB's limited jurisdiction prevented VVV from seeking certain remedies/theories in the TTAB action |
| Whether denial of leave to amend to add fraud claim re '654 was proper | Amendment is necessary and not futile | Amendment would be futile because claim preclusion bars the fraud claim | Reversed: because claim preclusion does not bar the '654 claims, amendment was not futile |
| Whether dismissal of claims as to '172 and '000 was erroneous | Dismissal rested on the district court's claim-preclusion error | VVV failed to oppose the later motion to dismiss; dismissal proper | Affirmed: VVV's non-opposition waived challenge to dismissal |
| Whether TTAB issue preclusion applies to specific issues | VVV: TTAB couldn't resolve infringement/damages; limited preclusive effect | Meenakshi: TTAB findings may preclude identical issues in district court | Not decided on appeal: remanded to district court to determine issue preclusion in the first instance |
Key Cases Cited
- Tahoe-Sierra Pres. Council, Inc. v. Tahoe Reg'l Planning Agency, 322 F.3d 1064 (9th Cir. 2003) (elements of res judicata/claim preclusion)
- Harris v. Cty. of Orange, 682 F.3d 1126 (9th Cir. 2012) (recognizing Restatement exception where remedy/theory unavailable in first action)
- Marrese v. Am. Academy of Orthopedic Surgeons, 470 U.S. 373 (U.S. 1985) (res judicata principles and exceptions)
- Person's Co. v. Christman, 900 F.2d 1565 (Fed. Cir. 1990) (TTAB cannot adjudicate use/infringement/unfair competition)
- Rhoades v. Avon Prods., Inc., 504 F.3d 1151 (9th Cir. 2007) (TTAB lacks power to award injunctive relief or damages)
- B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (U.S. 2015) (issue preclusion principles apply between TTAB and courts when same issue is litigated)
- ProShipLine Inc. v. Aspen Infrastructures Ltd., 609 F.3d 960 (9th Cir. 2010) (when first forum's jurisdictional rules preclude a claim, claim-preclusion elements may not be satisfied)