A district court should not have applied the doctrine of claims preclusion in the primary dispute over the mark IDHAYAM, based on a prior TTAB proceeding, but the mark owner waived its claims as to two other trademarks.

Infringement claims by V.V.V. & Sons Edible Oils (“VVV”) over a competing company’s use of the mark IDHAYAM for sesame oil were improperly dismissed by a federal district court on grounds of claims preclusion, the U.S. Court of Appeals in San Francisco has held. Because the Trademark Trial and Appeal Board, in its adjudication of an opposition proceeding between the same parties, had no power to decide VVV’s claims of infringement, dilution, and unfair competition, or to grant injunctive relief or damages, it would be unfair to preclude VVV from litigating these claims. The appellate court reversed the district court with respect to that claim and remanded for further proceedings. However, as to two other marks also featuring the word IDHAYAM, VVV failed to file an opposition to the defending company’s motion to dismiss and therefore waived its claims (V.V.V. & Sons Edible Oils Ltd. v. Meenakshi Overseas, LLC, December 27, 2019, Nelson, R.).

Case date: 27 December 2019
Case number: No. 18-16071
Court: United States Court of Appeals, Ninth Circuit

A full summary of this case has been published on Kluwer IP Law.


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