V.V.V. & Sons Edible Oils v. Meenakshi Overseas, No. 18-16071 (9th Cir. 2019)
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VVV appealed the district court's dismiss of its trademark claims based on three marks and the denial of leave to amend its complaint. The Ninth Circuit assumed, without deciding, that the district court correctly applied the elements of claim preclusion to this case, but found that an exception to claim preclusion applied.
The panel explained that an interparty proceeding before the TTAB is a limited proceeding involving registration of a trademark, and the TTAB has no authority to determine the right to use, or the broader questions of infringement, unfair competition, damages or injunctive relief. In this case, TTAB had no power to decide VVV's claims of infringement, dilution, and unfair competition or to grant either injunctive relief or damages. Therefore, the panel held that it would be unfair to preclude VVV from litigating these claims and seeking relief when barriers existed that prevented it from doing so in the first action. The panel reversed and remanded for the district court to consider, in the first instance, whether issue preclusion applied. The panel also reversed the denial of leave to amend the complaint, and affirmed the dismissal of plaintiff's claims as to the second and third marks.
Court Description: Trademark / Claim Preclusion The panel affirmed in part and reversed in part the district court’s dismissal of an action seeking damages and injunctive relief for unfair competition, trademark dilution, and trademark infringement as to three marks registered for use with sesame seed oil. Plaintiff had petitioned for cancellation of the marks before the Trademark Trial and Appeal Board (“TTAB”). TTAB dismissed the petition as to the first mark based on claim preclusion and allowed claims against the other two marks to proceed. The district court dismissed plaintiffs’ claims as to the first mark based on claim preclusion and granted defendant’s unopposed motion to dismiss the remaining claims. Reversing as to the first mark, the panel held that an exception to claim preclusion applied because an interparty proceeding before the TTAB is a limited proceeding involving registration of a trademark, and TTAB had no power to decide plaintiff’s claims of infringement, dilution, and unfair competition or to grant either injunctive relief or damages. The panel left it to the district court to consider, in the first instance, whether issue preclusion applied. The panel also reversed the district court’s denial of leave to amend the complaint to add a fraud claim as to the first mark. V.V.V. & SONS EDIBLE OILS V. MEENAKSHI OVERSEAS 3 Affirming the dismissal of plaintiff’s claims as to the second and third marks, the panel held that plaintiff’s non- opposition to defendant’s motion to dismiss waived any challenge to the dismissal.
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