women's clothing it's a small in the scheme of the apparel industry a relatively small company despite the expense invest a lot of time and effort to try and defend itself in this litigation to have its day before the jury the district court rob client of its rights for jury trial when it decided a number of issues including one major issue before the trial even began and then a number of issues on quicksilver's motion for judgment as a matter of law we believe that the judgment should be reversed for several reasons one because the district court erred in granting quicksilver's will fifty a motion at the end of the defense case that i put on a trial on a variety of issues including trademark priority and the issue of chances affirmative defenses to because some of the evidence we believed was so overwhelmingly in my client's favor that the court should have granted our own rule fifty a motion in kim's disfavor and finally assuming that the district court was correct on the merits the terms of the actual injunction that issued and that quicksilver tried to sneak in at the last minute after the trial court had already ruled are unreasonable and stifle my client's ability to compete fairly in the business market it's important to remember that the standard review that applies here on a motion for judgment of as a matter of law is to novo so if this court finds that there is a basis in its opinion for the questions to have gone to the jury then it should reverse and remand the case for retrial let's take a look at the very first issue which is tapping this is a very important issue because the whole chronology of this case deals with whether or not quicksilver and its quicksilver roxy composite mark predates my client's roxy where mark and then also has some relationship to quicksilver standalone roxy mark let me take a look at some of the other or some of the exhibits that were introduced into evidence that the very visual case was important for the court understand original designer of the whole juniors line still williams died is that she never was going to use roxy by itself when the line was introduced because no one would have known who roxy was at the time the company was trading upon the great bank and people start hearing of are absolutely your honor we don't dispute that and in fact we believe in when that happen is about ninety ninety five or one thousand nine hundred sixty when the company first began doing mass consumer advertising by taking out ads in seventeen magazine on a variety of the clear and i think both sides agree that for a product mart to have some trademark value it has to be independently significant from the house mark in this case quicksilver and the evidence was very clear from witnesses on both sides both at the time this was introduced no one knew who roxy was and they used the quicksilver brand to take advantage of the notoriety of quicksilver so that people knew the product was coming from quicksilver not from roxy i think the district court even though they fonts are different it's still a composite marked mainly because at the time you could not prove that rocks even if it's in red in a different separated from the question over had any independent trademark significance from the quiksilver it was not being marketed as only a roxy line all of the attempts to sell it were quicksilver rock scene there's a number of documents in the record in which quiksilver itself referred to the label as quote quicksilver roxy unquote and so therefore particular the testimony of ms da that this in her mind was the quicksilver roxy composite mark i think that at least created a jury question for the jury to determine whether or not this was a composite mark or whether or not it was an attempt to men's line and it's using walk see in a composite manner the key question your honour's is that there are two different trademark registrations that quicksilver has one for a quicksilver roxy phrase and another for just roxy by itself both in the same product class for clothing one of the questions which was never answered at trial and which should have gone to the jury is if these are not the quicksilver razzi composite mark what so because there was other uses of roxy floating out there and it believed they had a better chance of getting through the pen and trademark office if it registered quiksilver roxy the composite mark for the ever expression of  from mr make night the c e o of quicksilver in which he acknowledged the reason they didn't register the marks earlier is they were just testing the waters to see if the wa seeming was going to take hold and only once they felt that it took hold and that's when they started ma hundred five or one thousand nine hundred sixty that it was independently significant from a trademark perspective there's also testimony from randy hill that was presented at trial and he was brought into the company to help run the woman's line from another woman swimmer company he joined in fall of one thousand nine hundred three well after my client entered the market with its roxy wear name and she said he was the one who made the decision to treat roxy as a standalone brand based upon that and the considerable of testimony from this dot we believe it was a clear error for the district court to rule certainly before trial even started and after the completion of evidence that these two marks are equivalent for testing purposes honor which leads to another issue which is what standard of proof is quicksilver held to because it is now trying to go back earlier in time than the date in which it stated in its trademark that what hitchens it wants to prove first use in  january first and january fifteenth and in the case of rocky they certainly first right end of january so i don't see where they do have to square behind their registration well your honor we think we may need to at least do actual use of quicksilver roxy and that's one of the questions that came up a trial which is well what is the use give us a sample of when you first use the quicksilver razzi mark and they are claiming that these uses i have shown you particularly to hang tags  are not arguing yes i do your honor and that's because the cases in which we cited do not move limits the higher standard proof to instances in which the defendant in this case my client ken starr is trying to prove a first you state can win if they only prove that it happened on january second that's true it happened on december thirtieth we do agree with that your honor let me turn to another question which is would you mind there i do have to another area that i'm particularly concerned about and i'm worried that you can't interrupt your organizational flow but i'm concerned about whether roxy is inherently distinctive or whether you had any evidence that rocks it was inherently distinctive in the light of lying and what that evidence would be how you who selected the name if you have to prove that it's primarily a personal name in the eyes of the consuming public that's what the other side says that's true your honor all of the case of the lane capital management a little different that that was so our names and the reason there's a distinction is that a lot and there's was no dispute at trial in a weapon is introduced that people view roxy as some other meaning other than being a name and other meanings that there are other uses  theaters yes your honor that is correct this is the evidence i was thinking how do you distinguish lane and the like well your honor i think that even though there are other uses of roxy lane only dealt with the situation surnames were words are terms that have other meaning in the english language and so i don't think it really bears on the question of the first name that's used here roxy in one that might be used in some other fashions or cont irrespective of that we believe that there was sufficient evidence introduced to send this issue to the jury when danny kwok was the person who selected the name he admitted that's a female name there was evidence that the daughters of the sea and australian founder of quicksilver were named roxy and it was promoted by quicksilver as being their names outlined history which is in our supplemental excerpts of record at eighty two states that roxy was the name of the daughters we introduced the promotional video tape from is saying that the reason the name was chosen was it was a tribute to the two roxy's his daughter and the other roxy daughter and this happened herself testify that it was her nickname for a number of years and so we believe there was sufficient evidence introduced at trial to show that this was  question i think your honor that can be a question of fact that ultimately the question of what classification the market is also may be a legal question but the evidence that leads up to that determination is a factual question because there was evidence that this was a name we believe that the court should have required kim stuff to provide evidence that it's rocks the market acquired secondary meaning and the key point and that's correct your honor if it's not inherently distinctive then you need to prove secondary me on these defenses your honor i won't take up too much time we believe that we sifted introduce sufficient evidence to send the injunction paragraph six g it's an injunction essentially a copyright issue that was not brought into the complaint it's never played or alleged in the case and we think that exceeded the court's authorization that should be reviewed to novo the rest of the injunction terms should be reviewed for abuse of discretion the main issue is paragraph six d it limits came sort of placing the roxy where label that it uses only on the interior of its clothing it's very common in the apparel industry to have hang well i can't sell you because i'm enjoying from even attaching a hang tag that says rock to their roster whereby roxanne have never to my clothing or exactly what the owner of a trademark should do it displayed it on the product prominently it imprinted on the product it used to paint tags it had posters signage it promoted its mark it made it a here and there's really three alternative grounds and they were alternative grounds for the district court's ruling first that roxy was used as a standalone separate and apart from quicksilver comes this first use which admittedly was at least no earlier than mid january of ninety two and perhaps later it was i disputed and this is supplemental excerpts of the record number seventy one and a picture different font different style are oh i don't look at one cheap you look at both i'm ok but even if you look at both your honor you're not seeing quicksilver roxy and it's not a composite mark and this williams didn't say it wasn't even if she did that doesn't i knew people have to pair it with quick for it to have any significance why wouldn't that raise a question of fact because the question is how it was use not so much what was in one person's mind as to what their was your honor and in addition her testimony wasn't as characterized by canst i have it here it's an excerpt of record seventy nine at page sixteen thirty two first she's asked about pacific order now what they say your honor is that the focus in determining whether there's independent trademark significance is how the you the words are used and whether the second word roxie which is what we're talking about whether that has independent trademark significance to the word in this case quicksilver that was the second ground for the district court again the first ground was they used rox yes your honor and chance to have the burden to introduce legally sufficient evidence that would support a finding that it overcame the presumption that quicksilver first used roxy before cancer to first use roxy and in light of the un contradicted abbott and that quicksilver used roxy as a standalone before camps the first used roxy where then there would be no basis f why can't a jury decide that question whether they're whether they are in fact independent or whether a customer reads them together one thing you're either with respect to the this was the poster that was used in the it's part of the mix of the way these products were small the issue on the tag has been called the balling one is whether roxy is used on that hang tag has independent trademark wasn't used until after she left and she left in ninety two that attempt to post so you agree that there's a disputed fact about that poster about one poster but we're not relying upon that poster at all and it's not one of the posters i have a here it's that it's a separate issue and not something that we're relying on to show that there was first use before it comes to first use so again the key here is separate and distinct in terms of how it's displayed the manner it's display the significance attached to it displayed at the trade shows it was given to the retailers who displayed it in the stores so it qualifies under the land the act is a use of the market in connection with the sale of these products here it's  used the roxy name in a number of different respects prior to kim's this first use sometimes it used to be for quicksilver sometimes it used to after sometimes it used to the sly it did it in a way to make a happened and that's what complicates the matter is that quicksilver is somewhere marking there all the time there raises the question then and there's no question but that quicksilver did that just like levis when it came out with doctors use the levi's house name just why cadillac when it came out with the escalated used cadillac escalate for some period of time just like apple when it came out with pod used apple i pod for some period of time but what gave the line significance in those examples and in our case was rusty was the name that differentiated what this product actually was that nothing happen evidence is there were newspaper articles in the orange county register and otherwise that talked about roxy prior against this first use that's supplemental excerpts of record ten and twenty nine there's magazines that reference roxy by quicksilver that's excerpt of record something like sort of record seventeen and eighteen and other words the evidence what gave this line its meaning was not the word quicksilver granted the word quicksilver demonstrated to the world that quicksilver was behind the brand and that there was therefore reliability etc et no evidence to the contrary that would support a different finding than that there was independent trademark significance and therefore it was not an issue for the jury in other words or still has to be disputed issues of fact there has to be factual matter in dispute to make it a jury question in any case on any issue just saying it's a question of fact doesn't make it so there has to be evidence interviews that would support a contrary finding and there was no evidence introduced that would support a contrary finding there was no evidence submitted by chance to survey evidence or otherwise there was no evidence of what consumers daughter didn't think that this wasn't independent the testimony from the retail side from laurie kisan or who i was just turning that page as you're asking a question because there is a valid trademark registration and the only challenge the chems to make to the validity of the registration is fraud and there's no sign said that he wasn't aware of any mark that that we had superior rights that would be likely when used in connection with the goods of such other person to cause confusion that's the representation if it can be relevant certainly help one advertisers but it's not essential to a finding that there is independent significance because there's other ways one can promote its mark life posters and tags the types of advertisements the editorial advertisements the grain and the other magazines rolling stone serving magazine all of which predated campuses but on the name to get back to jazz welcomes question  present legally sufficient evidence to overcome the presumption and the and by that they have to show that it's a primarily person it's perceived by consumers to primarily be a personal name against offered no evidence to that effect of record thirteen forty five what mr kwok said was not we picked the roxy because it was the girl's name it was you know first i wanted to pick a guy's name like sam or george but you know it was a reverent teenagers like irreverent thing but roxy to me felt real like gosh it sounds like a girl but when i go to the roxy theatre i was like is it a girl's name or is it roxy like rock n roll or what is it has different images roxy is not just a personal name it's not just and have a meaning your honor does it's not as if you look in the dictionary has to have an impression and and there was no evidence that people with you roxie primarily as a personal name for the roxy line by quicksilver or don't think they would get there even under that circumstance your honor but here since roxy is not just a personal name it's it has other impressions that had been used historically and therefore they had to present some evidence to show that it was primarily viewed by consumers as a personal name which which they didn't do they didn't offer any evidence along those lines at all so because of that you don't even have to get to tacking again tacking was an alternative ground for the core if roxy's uses the standalone or if it's used as a product mark before camps the first used then that would be sufficient to justify the court making the ruling that it did under rule fifty did here was not to try to stifle not to allow a large company to stifle smaller quicksilver was small when it started roxy roxy was small quicksilver invested millions and millions of dollars to make this mark into what it is what the district court did  its final judgment it allows chance to continue to use its mark in its present and current fashion everything that the district court said comes to can't do camps the has never done it's never used its market as a brand name it's never imprinted on the fabric it's never used it in a way that was visible other than on the interior label for the five years before trial you could only see it by turning the label over you could only see roxy where by looking at the label on the shirt and turning it over to see it that's the only way you could do it himself always use an identifier you know there mark was always roxy whereby rocks or roxy whereby roxanne have their or roxy whereby rocks with these think happy characters they kept changing their mark over the years and now they're criticizing question over for doing that as well the point is that what the district court did is say look at quiksilver should be allowed to continue to use its mark we're going to like a chance to do what it's been doing because quiksilver you waited too long to stop them and that was fine too we never argued otherwise we didn't argue with trial the chance to should be enjoined from doing what they were doing we said that's fine they should be we agree with that but the district court did it is going through the latches factors said look if i let chance to license to kmart or license the wal mart or turn this into a brand there is going to be significant injunctions provision that says you can't make knock offs and on out it wasn't based on trade routes and it wasn't based on copyright it was based on trademark the district court's concern was that if  a product or made a product that was confusingly similar in the form of a knockoff it would create trademark confusion on the thorny points an injunction and a provision junction prohibiting not under a tree market theory i can't point your honor to any authority what i would say though is that the scope of the injunction was a question for the courts discretion and the standard on review is abuse of discretion in the issue is whether there was any reasonable basis and i would submit that that the district court had a reasonable basis for imposing that restriction as well as the others in that  create a knock off using the roxy where mark that would create a high likelihood of consumer confusion over the mark that wasn't part of the complaint that wasn't part of the proof how  trial in terms of what camps there was doing and not doing evidence was and was crystal clear a trial they weren't doing these other things at all but it was briefed me when we were going through the issue of what the form a judgment should look like both parties submitted the much arguing that there's a copyright violation but that there was an issue of trademark confusion i think just as i recall made the same arguments in their opposition to the form of judgment and they make now thank you counsel thank you very much council showed you i think there's a clear fact question that should have been decided by the jury about whether or not that was a composite use of the quicksilver roxy mark or roxy quicksilver whatever the composite mark was or whether or not that was a standalone mark there was conflicting testimony on that and this da testified that she designed those products she's the one who created them and her testimony was that it was a use of a composite mark take for example if you've got someone who has a phrase as a mark like chanel number five for example and you make a t shirt or some type of clothing and you put the shoe now on one part of the clothing in the number five on another part of the clothing or you take a designer name like tommy hilfiger and you take the tommy on one part of the clothing and you put the healthier another part of the clothing on opposite sides of the teacher does that create some separate standalone use of the mark in most cases it would be the composite mark that is used by that company and we think that's no different here where the quicksilver roxie yes they're separated on the short but that they both appear on the short and this dark testified as to her intent on having them both appear on the shore to be the composite mark the very least that was a jury question to decide  the accorded asked that was counsel about whether there was any authority requiring that the composite mark must be used in a certain order and there isn't such authority to pose in textron cases do not address that question now it's case where there is a really couldn't decide which the composite mark was sometimes it used roxy quiksilver sometimes it is quite severe roxy and ultimately only registered quiksilver roxy and today it doesn't appear that it uses the phrase with roxy first roxy quite silver  happening all the time such as levi's dockers catalyze cadillac escalator and the second term the new products being introduced has been trademark significance that is true at a certain point in time when there's been sufficient exposure advertising and impressions in the consumer mind to affiliate the i pod for example with apple so that i pod becomes the identifier of the source of origin but when it's first introduced it's hard to say that that's the case and that's the same situation here with quicksilver roxy or roxy quicksilver when first introduced the testimony showed that the identifier of the source of the product was quicksilver that's the whole reason the quicksilver company used quicksilver with ro all the witnesses and they did that and so roxy when first introduced could not have been the identifier of the source of origin which is the whole point of trademark law identifying the source of product and certainly it could not have again that significan quiksilver we completely disagree in fact the evidence showed from testimony from quicksilver's witness this as well as miss dodd that the whole reason there was a composite mark is what because quicksilver is what gave meaning to the phrase not arguing that it is the first user and it used its roxy where mark before quicksilver introduced roxy as the stand alone mark and therefore that is another method of attack against the prey mark registration at the bottom line  we believe there is a clear jury question here in fact there are multiple jury questions there was conflicting evidence between the testimony it all comes down to quicksilver witnesses against ms dodd the very person who designed in created all of these products the hang hag's that we've seen today she testified as to her intent her intent is highly relevant and should have been something that the jury should have considered for those reasons we believe that the judgment should be reversed