*1 Inc., Plaintiff-Appellee, Grocery Outlet III sympathetic swayed by the Perhaps Inc.; Com- American Stores Albertson’s case, majority has
facts LLC; Lucky Stores, Inc.; Amer- pany, retroactivity doctrine our stretched LLC, Company, Defen- ican Stores beyond the bounds context criminal alien dants-Appellants. I that Her- agree precedent. our set certainly situation de Anderson’s nandez 06-16380, 06-16448. Nos. whether But one wonders sympathetic. Appeals, United States Court eager to so majority would have been Ninth Circuit. on less heart- jurisprudence rewrite I share the And while wrenching facts. Feb. 2007. Argued and Submitted join opin- I cannot majority’s sympathy, 9, 2007. Filed Aug. expense of relief at the grants ion that conflicts majority opinion settled law. ret- restricting the holdings prior
with our immi- criminal
roactivity analysis exchange quid quo pro context to the
grant reasonable plea bargains where
inherent ma- can shown. Because
reliance inadequate reasoning relies on
jority’s necessary reliance to establish
grounds
interest, respectfully dissent.7 INC., OUTLET
GROCERY
Plaintiff-Appellant, INC.; Stores
ALBERTSON’S American Inc.; Lucky Stores, LLC;
Company, LLC, Company, De-
American Stores
fendants-Appellees. objective or sub- an alien show de whether must Hernandez I do not Because reliance jective sufficient reliance. has established a Anderson interest, question of I would reach
Peter Craigie, Drake, W. Kristen E. Clow, Craigie, McCarthy Francisco, & San CA, Pirkey, and Louis T. High- J. Susan tower, Barber, Pirkey LLP, Austin, TX, for the plaintiff-appellant. Weikert,
Robert A. Colby Veronica Dev- itt, Chatowski, A. John Marlene J. Williams; Priest, LLP, Thelen Reid & San Francisco, CA, for the defendants-appel- lees. WALLACE,
Before: J. CLIFFORD NELSON, D.W. and M. MARGARET McKEOWN, Judges. Circuit PER Opinion; CURIAM Concurrence by WALLACE; Concurrence Judge McKEOWN PER CURIAM. Outlet,
Grocery Inc. (“Grocery”) appeals from a preliminary injunction granted in Albertson’s, favor of (“Albertson’s”), one of competitors its grocery retail industry. The concluded, district court stage the proceedings, that Albert- son’s legal was the owner of the LUCKY mark grocery for retail prod- services and rejected ucts Grocery’s claim that Al- bertson’s abandoned the LUCKY through publicly advertised announce- ment that LUCKY stores were converted to Albertson’s stores after a company merger in late 1999. a preliminary injunc
We review tion for abuse of discretion. Stuhlbarg not to resume such use” and “intent D. Brush & v. John Sales Co. Int’l Cir.2001). LLC v. Brandess- use.” Electro We Inc., 240 F.3d Kalt-Aetna de novo and legal issues underlying review 1127). (citing 15 U.S.C. fact for clear error. findings of Brookfield *3 Commc’ns, Corp., Entm’t Inc. v. W. Coast Grocery dispute does not the district Cir.1999). (9th legal finding that Albertson’s is the court’s of various federal and state trade- owner may be injunction preliminary A of the mark registrations LUCKY where the in a trademark case granted grocery services and associated with retail “(1) a demonstrates either moving party dispute it that Gro- products. Nor does success on the probable of combination mark for retail cery’s use of the LUCKY irreparable of possibility and the merits likely con- grocery services was to cause (2) ques of serious injury or the existence Thus, confusion. the district court’s sumer the merits and going tions likely to that Albertson’s was conclusion in sharply hardships tips [its] balance of infringement on its trademark succeed Sardie, 755 Corp. v. Rest. favor.” Sardi’s necessarily claim turned on whether Gro- Cir.1985) (9th 719, in (emphases F.2d cery likely prove was its abandonment repre two formulations original). “These defense. scale in which sliding on a points sent two parties disagree as harm irreparable degree required applicable to the the standard of of success de probability increases as abandonment, Grocery waived defense Records, Nap A & M creases.” adopting the challenge point by on this its 1004, ster, in convincing standard its brief clear and 2001) marks and citation omit (quotation light court. In of the ing the district ted). “the They separate tests but are findings and this conces district court’s single a continuum.” Los outer reaches of sion, we need not resolve the burden Nat’l Comm’n v. Angeles Mem’l Coliseum proof issue. League, 634 Football analysis court’s is care The district Cir.1980) and citation (quotation marks thorough. findings pre are ful and omitted). noted, and, the district court liminary reg a infringement of To establish con binding.” not meant to be We “are trademark, the trademark holder istered not abuse that the court did clude district (1) a it the owner of must show that is concluding that Albert- its discretion (2) mark, valid, that the protectable strong likelihood of demonstrated a son’s confusingly using alleged infringer on the merits of its trademark prevailing 1114(1); § similar mark. 15 U.S.C. possibility and the infringement claim at 1046. Abandon Brookfield, 174 F.3d pre of a injury in the absence irreparable infringe a claim of injunction. ment is a defense to Nor did it abuse liminary Grocery concluding that did trademark. registered ment of a discretion abandonment, 1115(b)(2). its defense of Act not establish § The Lanham U.S.C. evi offered sufficient where Albertson’s a trademark ways two provides for to resume use of the of its intent dence (1) abandoned, namely, through may reasonably fore mark within LUCKY nonuse, becoming generic. the mark period the short during future seeable abandon § 1127. To show See 15 U.S.C. alleged nonuse. See nonuse, aban party claiming at 935. Electro both the trademark donment must AFFIRMED. of trademark “discontinuance owner’s WALLACE, Judge, policy). ap- This was also the standard Senior Circuit See, plied to abandonment of trademarks. concurring: e.g., Stringer, 265 Mich. Saunders resolving opinion with our (1933); Julian v. Hoo- 251 N.W. on appeal, separately but write the bur sier Drill 78 Ind. that un den-of-proof issue. We have held (Ind.1881) curiam) (Hoosier (per at *3 der the Lanham 60 Stat. Drill). (1946), §§ U.S.C. the burden cases, however, equally disparate pre- proving abandonment is “strict.” Pruden required Lanham Act courts clear and con Corp. Ins. Am. v. Fin. tial Co. Gibraltar vincing evidence establish forfeiture. (9th Cir.1982). Cal., *4 See, e.g., Hammer v. Min. & Garfield that We have also indicated this strict Co., 291, 301, 548, Mill. 130 9 U.S. S.Ct. 32 equivalent “high” one. burden is to (1889) (mine); L.Ed. 964 C.C. Co. v. Unit Co., K. Edwin Williams & Edwin States, 820, ed 147 F.2d Co.-East, 1053, K. Williams & 1945) (canned oysters); Carrington v. (9th Cir.1976), Foods, citing 1059 Am. Crandall, 525, 1009, 65 Idaho 147 P.2d Flake, Inc., 619, v. 625 Golden (1944) (real property); 1011 v. Gir Hoff (5th Cir.1963) (holding that defendant 56, 100, Corp., dler 104 88 P.2d 102 Colo. proof’ failed to meet the of strict “burden (1939) (en banc) lease) (gas (requiring abandonment). required to show “clear, evidence); unequivocal and decisive” statements, Judge Despite these Bros., 593, Lane v. Amis 171 Okla. 43 P.2d repeats argument McKeown the incorrect 73, (homestead); Dwyer 75 v. Ill. recently in she made Electro LLC Co., 616, 837, 190 Minn. 252 Oil N.W. 838 v. Brandess-Kalt-Aetna 458 (1934) contract); (rights Supervi under a 931, Cir.2006), n. 2 that 935 Montreuil, sor Pub. Accounts v. 157 So. proof burden abandonment cases is a 783, (La.App.1934) (cigarettes 784 and a True, question circuit. unanswered our truck). expressly at one court And least applying we are more to accustomed required convincing clear and evidence of convincing and “pre- “clear evidence” and Mathy abandonment of a trademark. See ponderance the evidence” standards. Co., Republic App. v. 35 Metalware D.C. merely But because Prudential and 151, 20792, (D.C.Cir.1910); at *3 an forgotten Williams invoke unfamiliar or Drill, 408, see also Hoosier 78 Ind. 1881 standard does not mean that the burden- 6748, (requiring at *3 “clear un WL and of-proof that issue is unresolved or we evidence”). mistakable disregard those cases. proof Strict was no different than clear view, my meeting evidence,
In a strict burden convincing they and and were requires proof by convincing clear and Unsurprisingly, evi- same burden. when Appeals the Court of of New York re dence. Before the enactment of the Lan- quired proof’ “strict of trademark aban required proof ham courts often strict donment, Corp. see Neva-Wet Am. v. See, to establish a forfeiture. e.g., Em- 163, Processing Corp., Never Wet 277 NY. Horton, 657, press Theatre F. Co. v. 266 (1938), 13 N.E.2d it relied on lease); (rights under a Mathy and Drill. Hoosier Packages United States Four Cut (D.C.N.Y.1917) Diamonds, 247 F. imagine why It is not difficult to there (diamonds); Hartford, Aetna Ins. Co. simultaneously equivalent were two stan- Robinson, Conn. v. Ind. 10 N.E.2d proof dards of under the common law. (rights underlying insurance Statutes or contracts a forfei- required while common See C.C. “strictly” construed. were ture abandon,” Mathy, of “intent Co., proof at Cartos Hartford Co., not mean 169 S.E. at *3. But that does Indem. Va. Acc. & WL (1933). language adjusted used the burden The same the Lanham that construction the rule of the defense. required describe “higher describe the event, require come to and have Prudential also Williams preponder- mere than a degree proof follow our conclusion. I would different corollary” of that was the “natural ance” cases. rule. C.C.
that McKEOWN, Judge, concurring: Circuit McKeown presume, I will appeal of review on Given the standard idly does, Prudential and Williams as to the stan Grocery’s and concession “high that a proof’ or required “strict abandonment, I concur in for that our I have no doubt dard be met. burden” opinion. write per under the court’s curiam that abandonment meant court my ques on a express clear view separately Act must be shown Lanham only plau- This is circuit. convincing evidence. unanswered tion “[ajbandon high of strict previously translation have held sible we *5 burden, trademark, offers no in the nature being and McKeown of a ment forfeiture, strictly proved,” must other. be of Company Amer Insurance Prudential that 15 Judge McKeown with Corporation v. Gibraltar Financial ica the bur says nothing § 1127 about U.S.C. (9th 1150, 1156 Cir. California, 694 F.2d mistakenly concludes proof, but she den of “[bjecause 1982), finding a that and of the evidence preponderance the that a essen [of tradename] control insufficient The one. was the “traditional” standard forfeiture, person a who tially works a clear and convinc standard was traditional a must meet insufficient control asserts (or proof), and there strict evidence ing Edwin K. Williams proof,” burden of high that indicating nothing in the Lanham Act v. Edwin K. Williams & Co.- & Chap See relaxed this burden. Congress (9th Cir.1976), East, 542 F.2d (9th Robbins, 924 pell meaning of on the have not elaborated we Cir.1996) (“We fairly presume Elec “high burden.” See proof’ or “strict the common-law is aware of Congress v. Brandess-Kalt-Aetna LLC tro legis which it background against (9th Inc., n. 2 935 ”). .... lates Cir.2006) the (reserving issue of stan the correctly observes also Judge McKeown trademark abandonm proof to show dard under the defense the abandonment ent).1 one un- than the Act is different Lanham view, language of 15 U.S.C. my the The Lanham common law. the der an elevated stan- support not § 11272 does ... to resume proof of “intent not requires convincing.” The stat- and of “clear of aban- dard presumption a permits and use” beyond the impose burden does not 15 U.S.C. ute in certain see donment Flake, Inc., F.2d analysis K. Williams & 1. The brief Edwin 1963)). "high" burden does not address what Co. only to on refers requires and the case relied be "abandoned” A mark shall deemed proof abandonment "strict” burden following occurs: if either of the See 542 circuit. undefined otherwise discontinued been When its use has Foods, (citing Inc. v. Golden Am. F.2d use. Intent to resume such with intent not preponderance traditional of the simply evidence from proof of A nonuse. chal- standard civil lenger matters. Nor had only nonuse is there evidence that in Congress but also that the former user tended to raise the bar to clear and con intended to abandon the mark. Howev- evidence,3 vincing argued er, by Albert- respect rights with Act, son’s. federal courts of appeals that Lanham proof of abandonment was have considered the issue are in accord facilitated the creation of the ... consistently applied and have prepon statutory presumption. derance of the evidence standard in the Tobacco, Ltd., Imperial Assignee Impe- trademark abandonment context. Group Morris, rial Philip PLC v. One, Emergency FireEagle, Am. (Fed.Cir.1990) F.2d (appeal Ltd., (ap from trademark cancellation proceeding preponderance plying of the evidence stan TTAB) (citations omitted). Thus, before dard); Co., Inc., Roulo v. Russ Berrie & the Federal Circuit cautioned that “state- Cir.1989) (same); opinions ments from under the common Centroamericana, Cerveceria S.A. v. Cer law of abandonment concerning the nature India, Inc., veceria 1023-24 of the element of intent and who had (Fed.Cir.1989) (same, in appeal from burden of applied cannot be indis- trademark proceeding cancellation before criminately to an abandonment case under Board). Trademark Trial Appeal the Lanham Act.” Id. the vacu- These cases are predicated on the statuto um in our circuit respect square to a ry language of Lanham not on the holding on the in abandon- common law or judicially-created hy some cases cause litigants some
brid standard. judges to fall back pre-Lanham on statute, we are bound by the addressing the Lanham the changes Act’s not common law.4 from the common law with respect to the abandonment, the Federal Circuit noted that
[a]t common law there was similar no
presumption of abandonment aof mark may not to resume be inferred circum- from be pro- burdensome for defendant and stances. years Nonuse for 3 demonstrating consecutive vides two aids for intent not to prima (1) shall be facie evidence of abandon- use: resume intent inferred from circumstances, ment. "Use” aof mark means the bona pre- a rebuttable fide sumption use of such ordinary mark made in the of abandonment arises after three trade, course of merely years and not made consecutive of nonuse. Media, right § reserve a ain mark. see Cumulus Inc. v. Clear Communications, When course of conduct Channel the own- er, (11th Cir.2002). including acts of omission well With as ac- commission, statute, knowledgment expressed causes mark to become the doI generic presume goods name that Congress for or services on intended to raise or in connection which it used without specifying significance otherwise to lose its intention to do so. as a mark. Purchaser motivation shall not be a test for concurrence, separate 4. In his Judge Wallace determining para- abandonment under this argues that the burden is clear and graph. evidence, convincing relying on a case decid- 15 U.S.C. 1127. years ed than more before the Lanham Rather, recognizes proving statute Mathy Republic Act. See Metalware No. subjective intent of a App.D.C. holder trademark *3at America, STATES
UNITED
Plaintiff-Appellee, AUKAI, Defendant- Kuualoha
Daniel
Appellant.
No. 04-10226. Appeals,
United States Court
Ninth Circuit. En and Submitted
Argued 21, 2007.
Banc March 10, 2007. Aug.
Filed *7 An 'in- its use.... to resume have intent (D.C.Cir.1910). inapposite, how- no case That requires trademark owner ever, to resume' under common tent as it was decided “intent to aban- use regime requiring resume plans have to commercial Act, id., don,” the Lanham than see rather not to abandon' Stopping at an 'intent mark. requires proof "intent not to resume which protecting a mark owner's tolerates of abandon- permits presumption use” plans resume use neither commercial nor years of nonuse. after three consecutive per- is not a license use. Such commercial Corp. also Exxon see Act.”) (emphasis add- by the Lanham mitted Exploration Humble ed). other do the non-trademark Nor (“There ais difference adoption of the Lanham before also decided relinquish intent not abandon between light on the shed in that an owner use intent resume the statute. but wish to abandon