V.V.V. & Sons Edible Oils v. Meenakshi Overseas, No. 18-16071 (9th Cir. 2019)Annotate this Case
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.