claims in the book and the board before the board or precluded by issue preclusion arising out of a district court litigation that we had with abercrombie in the northern district it's our contention that there were no issues that on the jury made findings on the likelihood of confusion and infringement case we did not appeal those that ruling the jury's verdict stood and judgment was answered on that claim then that's certainly after the reversal so then we came back to the district court we voluntarily dismissed because rule had gone out of business they had started using the trademark abercrombie started using the trademark on a different line of products and we tried to expand  the two thousand nine frenchmen judgement which became final because you didn't appeal right and then we have a two thousand and eleven lucian judgment which was a judgment on the merits in the sense that every dismissal with prejudice is a judgment on now i want to put aside the issues preclusion questions for for a moment and focus just on the claim preclusion ok as i read the board decision the board decision said under this this court's decision jet and the file one decision may or for sheer the infringement judgment or a non infringement judgment i guess as it was doesn't generate claim preclusion i didn't see that the board addressed whether the two thousand and eleven lucian judgments the one after you return from the ninth circuit generates clean preclusion i'm going to assume it doesn't generate issue preclusion because a dismissal without prejudice actually decides nothing talk to me about that claim preclusion question based on the dilution judgment after he returned from the night's certainly around i from my perspective it's resolved jet both dilution and infringement are not actually resolved by jet right because in jet and mayor the only earlier judgement was a non infringement judgments and that's that's perfectly fair you're all i'm saying is that the reasoning of jet in the district court under a different standard than is going to be resolved in the what way is that i understand that on infringement likely that of confusion has a lot to do with the channels in which the goods are market  lot of cases i could give you some citations that likened the particular moment talking about dilution here between two competing products that essentially say that the association that is involved there can be resolved if there's a likelihood of confusion in favor of the senior market and also no broader than that if there is no confusion there is this association that creates blurring so that the dilution test this association requires the same sort of abstraction at the board level determining registry billeted that will assume that the goods are moving through all channels of distribution that they're being exposed to all was making of it mark on the rule line but other uses that it could be making would that have been a nazi could you have ended the the we did not take the second question first and the answer is we could not work the dilution just like trademark infringement and the district court is going to require that we have to act actually use in commerce and say that our actual use and commerce of our market in that commercial context is likely to create dilution that there is this association it will be dark there is no opportunity in the district court for us to argue that there would have that there's this abstraction that the jury needs to consider that just before the peel was decided mccafferty was argued so so your position is that all of those intended uses that are now listed before the board that all of those things are intended use it that were not actually used as at the time of the california action yes the only use that was involved at the time of the california action was the rule use and one type of store one website at a certain price point and and fancy sell underwear it's used on a few products or a shirt that they have been plans for this trademark and if they launch in a different way we would reserve the right to try to attack that at the time right or limiting our challenge to their application and their and their registration do you read anything about step back when congress changed the statute in two thousand and six it changed the list of factors and one that it removed made express reference to channels of commers and it substituted other things about to include an intent to create an association and whether it was actual association is there anything significant about congress having removed the express reference to the channels of congress is on its face that might suggest that it's a mark to mark comparison  rather than one that depends on how the defendant is specifically using them or your honor i don't think there is any significance to it the night circumcision in our case speaks to the fact that the fact in the past is a not exclusive live it's not exhaustive anything that's pertinent can be introduced to determine whether there is or whether there is not a likelihood that that are trademark would be blurred by the use there and certainly in the in the trial court they argued that the limited use that they were making was unlikely to have any real impact on customers that we're familiar with arm are because the it was only being sold one store and a certain set of consumers so i believe that the that the basic test for dilution remains the same which is that it's an association that arises out of the similarity  that causes a blurring and then there are a list of factors that were given and as we know from the levi strauss for sauerkraut the decision in the night circuit we're supposed to make sure that all of those relevant factors and any other this abstraction needs to be determined that the the goods are going to move everywhere from both parties and as i say there are a number of cases that talk about when you're talking about direct head to head competitors i'll just i will reserve thank you this is that after eighteen months and after the parties expended nearly three million dollars in attorney's fees for that i'm sorry but that there was no resolution in the california litigation of likelihood of confusion for all the possible uses that you might make of them are under your registration only on the infringement side as to the rules right up no i don't think that's correct your honor and here's why because if you look at the at the complaint what the allegations were what they were court and the jury so in the complaint one of the requests for relief was they asked that the p t for an excuse me that the trial court direct the p t o to refuse registration to trademark but the arrow of logical implication does not go the other way it does run because the goods at issue there are the exact same goods that are issue here so there were there was one category of talking about it wasn't just one category of genes if you if you look in the end this is in the judge white's findings of fact and conclusions of law he references that there is the the applications the trademark applications and he does trial judge didn't let them expand the litigation to include the new products in chile products on grounds that that they were unrelated to the claims that were asserted that would be unduly expanding the litigation what judge white found your honor persuaded that i don't find the vice arguments persuasive arguments that we're we're opposed to the court is this is now a brand new use this is a new use in commerce on new goods that we're going to need to expand litigation  rule products are at issue that that the channels of commerce relating to the royal products were at issue that the way those real products were advertised that they who they were advertised to that all of those things were as they always are relevant to the likelihood of confusion and you're telling us now that at that doesn't matter that you're actually litigating a much broader plane you're on what we were litigating was over the the use of the rule design with respect to the goods that were at issue the goods issue in the registration it's it's the exact same car you're using other than the jelly had which will put aside from it were you using that design on anything other than a rule product at the time you know they were they were all rule branded products how could they be even soon as a nonexistent product but it's the same types of goods that were listed in the application it was skirts jeans shorts the registration proceedings whether opposition or cancellation we have to judgments here and one of them is this that whooshing judgment that came after the case returned from the ninth circuit on the assumption that jet and  don't squarely hold whether there's a claim preclusion on the basis of a dilution judgment why does their logic not extend to eliminate or prevent cl preclusion because it makes no more sense to insist that levi strauss have tried to present evidence on dilution as to the full range of your possible use of this mark than it would for them to present evidence as to the likelihood of confusion for the whole range of possible light yet not a nonexistent your honor if i understand your question let me let me answer this  again at trial the issue was the use of the rules did you design and on those kind of your or your products that were set forth in the in the application and that was the issue for dilution as well as infringement that that was the same issue that was yes that was  purposes of of the dilution decision as well yes that's correct but the reason why we believe that the judge's decision bars this claim as well  is judge white the findings were not overturned by the ninth circuit and i think that's an important point the ninth circuit said no you need to go back there's been the case but but when that judgment on dilution is overturned none of the findings at that point becomes necessary to support that judgment which is an element of issue preclusion there were still findings right but the find another one could none of them could possibly be necessary to support the only surviving judgment there is a dead lucian which is the conte state your honor as we read the court's decision the ninth circuit said you need to go back and reconsider the the facts that were presented at trial under the  that that we know interpreted to mean that you look at the ninth circuit didn't say we find all of these findings the fact to be appropriate and go back and take all the funny the fact none of which we have any problem with and apply a new legal standard to it that's not what they said that's what you believe they said but that's not what they said they they created the entirety of the judgment and said reassess the case in light of the appropriate legal standard and then what happened is before judge white made a determination before he could make a determination revise decided to dismiss the before he will stop using the product right stop using the the mark on the prop the mark was still i think it's important to point out that all of the authority that levi strauss relies on for purposes of issue preclusion here none of it deals with the situation that we have here where a litigant starts at the p t o opposes particular mark there suspends that proceeding in favor of federal court litigation it asked the federal court to make a determination that the registration should issue and then ultimately when they lose a trial they go right back to the p t o if i may and maybe this is unique i would have no way of of knowing that myself but but it seems as i understand the relevant law here a perfectly natural thing to do when the p t o proceeding is about expended a substantial amount of time and money and lost and dismissed your case with prejudice you go back to the p t o and take a second bite of yap we didn't different forums different standard different different issues i mean it happens all the time and it does i mean these are these are we have a parallel proceeding in all kinds of circumstance yes you're on a plane so proceedings depending on how you look at it  again our position would be that given the circumstances of this particular case the relief that was requested what was litigated the trial the jury determination ultimately judge white making these findings although the ninth circuit did did reverse the longer in full force and effect then i would i would have to concede that i think i think for purposes of issue preclusion here it depends on there being an identity of the issues that were already decided at the trial court judge white and by the jury well the jury's determination related only to infringement correct the reason why they had the advisory but again that i think that would rise and fall with the dilution claim and if we think the ninth circuit brief as i understood it you wanted us to take that and by jury finding the dilution layman reading into that infringement finding and they that that's why they made their decision but what we can't really second guess what a what a jury did when in the black box verdict and we know i don't say i don't think so your honor but of course the jury ultimately found no infringement which necessarily required them to look at the similarity of the marks and they that were similar enough according to the verdict in order for there to be infringement here so just in closing again we think that if there is a case where collateral estoppel should apply it should be this one issues were raised by stress with respect to the registrations at trial the relief was