issues in our appeal the specific jurisdiction and then general jurisdiction and finally turn to the actual controversy issue for declaratory judgment all right as the district court correctly found in this case this case this dispute is about much more than trademark office proceedings it's a declaratory judgment case about whether dell fix has the right to use its trademark and its name and virtually all of the conduct giving rise to this dispute by the defendant occurred in california right here in san francisco including demands that dell fix it change its corporate name despite that the district court examined the personal jurisdiction issue as if dell fix had been out of state the whole time and then looked to see whether its conduct had been aimed at the state ignoring the fact that it was here all along and this misapplies the standard for specific personal jurisdiction in two really important respects first it ignores the rule that for specific jurisdiction the time for assessing contacts with the state is the time of the suit related conduct not the time of the lawsuit and that's under steele versus united states and second it ignores the traditional and fundamental importance of conduct occurring in the state the focused first and foremost foremost in looking at personal jurisdiction is whether there was in state conduct giving rise to that claim and the supreme court recently reinforced this point in bristol myers squibb which both parties submitted in the notice of supplemental authorities in that case the supreme court reiterated that specific personal jurisdiction requires an affiliation between the form and the underlying controversy principly and activity or occurrence that takes place in the form state so the principle the main concern the first thing we look at is in state conduct and that supreme court case reinforces this circuit's test in bancroft and masters in looking at minimum contacts where the first thing the first prong is whether the defendant has performed some act or consummated some transaction within the form or otherwise purposefully availed itself of the privileges of conducting activities in the form so which probably you rely upon this is the first  those occurred in california through california lawyers they were the decision makers at dell fix i made embarcadero work here communicating through lawyers who were here in the form no one was in virginia asserting these claims the people who made the decisions were here the representatives met in california not anywhere else these positions taken that give rise to this dispute all occurred here they were in california specifically when they told dell fix that if it wasn't willing to change its corporate name this dispute was not going to be resolved and that the current product marketing needed to change that occurred in california but the cases say the fact that there were negotiations in the state doesn't necessarily confer personal jurisdiction i think the cases look at  whether at the weight of the conduct so there are cases that note that a single meeting can be significant including the xilinx case from the federal circuit coupled with correspondence sen but and those are cases that look at whether someone is outside of the form when they're deciding to raise the claim here they were here they were asserting rights owned here the trademark that they were asserting that they were ostensibly seeking to protect was owned by a company located in california license to them in california and a demand that delph exchanges name also a fax or as a potential to affect its california customers and its relationship with its california customers a trademark is a designation of good will and reputation with one's customers and dell fix itself of course was here the demands were demands and threats were made to dell fix which was here now that's not enough under walden anymore but it's not irrelevant and the case that wasn't in our briefs but we sent in filled out the form to cite to it as axiom foods which was a ninth circuit case from last month apologize for not catching it earlier but that noted that in individual ised targeting is not enough on its own but it remains relevant even after walden so so what do you have after the case the thing with individual targeting is not enough what is the something more that you have the fact that there was california council is that him or that you have so the california council were taking instructions presumably in rent representing the interests of decision makers the company they were representing was here the people were here and i thought they had moved to texas not at the time not for years of these demands so when they when they took the position that we had to change our name to resolve this dispute they were here and in may of two thousand and fifteen when  we've finally said look we'll just withdraw our registrations we can let the trademark office thing go if you'll just agree that we can use our name and they said no that was in may twenty fifteen they didn't move out of california until october at what jurisdiction and this is the united states versus steel case from the ninth circuit we look at the time of the suit related conduct not the time of the lawsuit and that's if you think about the policy reasons for that we're asking whether a party engaging in the conduct at the time would expect to be sued somewhere else here when they're deciding let's go after these guys trademark let's enforce our rights let's tell them they have to change their name all that happened all that all the actions they took to raise the delphic happened here it wasn't until shortly before the lawsuit that they moved and the only conduct that happened there is that they didn't dispel the impression that their earlier conduct in california had conveyed  counsel i could ask you some questions about general jurisdiction sure i think you just said that first pacific jurisdiction at the time of the suit is not the test it's when the act occurred which makes sense if i'm a california citizen and i go to las vegas and i punch someone sorry  i go to las vegas and punch somebody and then i come back to california i could still be sued in nevada even though i had no contacts of the maybe that punch you said though in general jurisdiction it at the time of the suit and i want to to press you on that because it seems to me that for general jurisdiction it could exist even before the time of the suit if for example of apple did some really bad thing in california then they quickly shifted all their business to ireland i think california was still probably have general jurisdiction even if they moved everything to ireland the next day and then the lawsuit was filed is there a case that says i'm wrong about that because i because you've stuck to a time of suit i looked in your briefs and you didn't argue before then so maybe i'm missing something here so i haven't found a case definitively saying that only time of suit is relevant for general jurisdiction the case on in seems to look at that as the standard but i think your honor raises a very good point which is you know fundamentally we're concerned with due process and you know is it a due process process violation for a company to be sued in a place that was its home and its headquarters for decades when most of the conduct given rise to the suit i heard during that time i don't think it would be but i want to be i also want to be clear that i'm not advocating for a hybrid or sliding scale specific personal jurisdiction where that's absolutely not ok after person mars but i think you're on a raises a good point on and you don't know of any authority that says definitively that my question is wrong jurisdiction the you know the question is whether the affiliations with the state are such that it can the party can be essentially at home deemed to be essentially at home in the form state  traditionally that's the place of incorporation or place a principal place of business but where a company designates its principal place of business is not necessarily dispositive a court can look at what the real contacts are and the supreme court and dime are recognized that in this case there was evidence that although officially in some while in some official respects embarcadero had moved other evidence show that they hadn't and it's not surprising when a company gets acquired not everything necessarily happens immediately and we found a lot of evidence marketing web pages customer facing contracts things indicating that they were headquartered here or based here  there were disputes about how many employees there were we had evidence showing that a lot of important employees here they submitted affidavits disputing that so if the court district court holds that's a way to resolve that but didn't request an evidentiary hearing and so we have this record and under ninth circuit authority where there is a dispute between the parties over statements contain an affidavit this is under schwarzenegger those disputes are resolved in the plaintiff's favor so i think we win on general jurisdiction too there was a dispute in the record and with extensive evidence including judicial admissions that austin was not their location at the time i'd like to turn briefly to declaratory judgment jurisdiction we think the district court reached the right result but applied the wrong standard the district court held that the supreme court's met immune standard the all the circumstances actual controversy test did not apply because this circuit had never applied it in the trademark context and so the district court applied a reasonable apprehension of litigation test but nothing in metamucil was limited to the patent context and when the supreme court rejected the reasonable apprehension test as being too rigid the supreme court was citing to non patent cases including insurance cases so the all the circumstances test and the rejection of the reason test is the law of the land for declaratory judgment under this standard we clearly have an actual controversy here and in fact i think even under the more rigid reasonable apprehension test we would have it embarcadero repeatedly insisted on changes to the actual use of the mark and they they now try to characterize this is all being somehow about trademark office proceedings the trademark office has no jurisdiction over his name or how it markets its products in commerce and the record shows that when it was proposing changes to the trademark registration embarcadero responded well if you're only making proposals about the application language i don't know how that helps with the real world market situation they admit in their brief that a fair reading of the evidence demonstrated that insisted on restrictions on use of the mark this wasn't only about future or abstract hypotheticals they pointed to the current product they said as to the current product it would take major changes in the way the product is marketed and significant limitations on use there's a real dispute here the fact that they didn't use the word infringement or say we're going to sue you isn't the test specific particularly when there is no reasonable apprehension required but even before there's no magic words test we look at all the circumstances and finally the duration of the dispute doesn't mean that the case is not ripe other courts have found jurisdiction exists after years of dispute the circuit and roads for years she's broke pons was three years the sure foot case we sided from the tenth circuit with six years so you know still today faced with a choice i can either change its name to reduce this risk or it can and in doing so give up very valuable rights or can risk future liabilities down the road as this circuit recognized in  have please the court my name is neal greenstein and i'm counsel for embarcadero technologies i would like to reserve two minutes for rebuttal on the cross claim a very important  issue a very important contacts that needs to be understood here is the key differences between what the trademark trial and appeal board can do and what the courts can do when you look at the current goods and services of what somebody is or what somebody is doing those current goods and services whether or not there is an infringement that's something that a court can look at to the extent that somebody is seeking a trademark registration which is for broader than what its current goods and services are it would be an advisory opinion for the courts to get into that issue let me give you sort of a physical example of some of the differences in dark fix here they have a product which let's say the way they market it what the product is the customers that they market to a very elite set of customers six figure cost for these products may fit right on that bench over there where is their trademark application actually encompasses this whole court room it wouldn't be proper for the court to render an advisory opinion as to all of these expanded goods and services manners of marketing sophistication of customers yet the trademark tone appeal would in fact doesn't gaijin that because it looks at certain categories of products and once that registration issues and the registration ultimately becomes incontestable then dell fixing come in and it encompasses whole courtroom even though embarcadero may actually already have half of this court room taken up take a look for example at the wells fargo case that we side of the wells fargo b stagecoach where it acknowledges that the t d had the rulings have substance to the effect on hypothetical future rights also a discussion settlement discussions that you have in conjunction with the trademark on appeal board typically and this is in the record it typically involves the manner in which people are going to use a trademark because the trademark registration typically encompass certain categories it's rare if ever that a trademark registration will say oh you can only sell this if it exceeds the six figures or perhaps you look at a piece of software people used to talk about oh we're only go for mainframes well what's a mainframe you know that's a historic concept so typically when you have somebody who's going to get a registration who's going to get affirmative rights in the future for hypothetical products  if there's some kind of interface between these companies then it's very common for people to negotiate for and reach a resolution where there are restrictions on where somebody is going to expand that's exactly what we have here what the issue here embarcadero has never made infringement allegations against dell fix the allegations that are here even if you look at the notice of opposition it the with respect to the specific goods listed in the registration again the notice of opposition is in the record that's here moreover if you look at the hogs in heroes foundation case that we cited a discussion in settlement of future uses doesn't rise to the level of a substantial controversy so you know the ninth circuit also specifically recognizes that when you're using a trademark you need to consider what the trade channels are what the customers are for example the accurate case that we've cited ninth circuit said the marketing channels and sophistication of perspective consumers are especially relevant in determining whether any confusion in the marketplace is like due to a rise and defend its adoption of accurate citing alpha industries taking into account sophistication of consumers and channels of trade in assessing like that of confusion in trade market in a trade name challenge so those kinds of discussions the manner in which somebody is going to use it the types of customers that they're going to sell it to if one company is is at a very high end selling only to  more a broader base to a less sophisticated consumer then that is certainly an appropriate discussion which is not an infringement discussion but is an appropriate discussion to make sure that there isn't an expansion by dell fix here to come in and step on the rights of embarcadero rights that have been out there for decades in fact if you look in the record and it's in our brief as well  in the settlement discussions and obviously settlement discussions are very rarely before the court because of the privilege but in this case they're under the roads case the settlement discussions are something that were appropriate to bring to the court  and the settlement discussions the settlement e mails obviously don't go through every single point that one would go through in an informal e mail that you would go through in a more detailed cease and desist letter for example but in the context of these discussions the e mail from martin green stein to fix martin greenstein of the council for embarcadero so embarcadero does not see a way to resolve this without a change in the dell fix corporate name it very tight agreement against future expansion of the functionality and features the product in a very substantial restriction and a limitation on how this product is described and marketed to customers the comments at the meeting in our subsequent exchanges make it clear that they'll fix is not prepared to do those things so we should continue the opposition there's no threat of any kind of litigation there's no threat there what there is is unless we make sure that with respect to any future products that these products are try to terminate the proceeding with by a withdrawal and they asked in exchange for an unlimited covenant not to sue not just a limited covenant not to sue with respect to their existing products but eric ball in his declaration at two e r s zero seven nine specifically commented about how they were seeking an unlimited covenant not to sue from embarcadero it was only a very limited covenant not to sue limited to the products the trade channels this is just occasion of what's out there something that we have not suit about either here or in europe even though the last the opposition in europe we didn't sue about any of that of what they have so they're expanding things here and they're actually trying to go and have the court look at something more than what's in the registration that's an important point here because the federal circuit in the case that we have cited here in that case the board case the trademark town appeal board had looked at the specific products that were listed in the registration and refused to consider the actual products of the parties the part the in the litigant in that case was very upset and said no you really need to look at what the products are in that case so they appealed to the court of appeals for the federal circuit what happened the lawyer got sanctioned for saying you need to look at the actual products not what's in the application counsel me i turn your attention to the personal jurisdiction matter for a moment sure do you agree with the poll think counsel that when determining the specific person the jurisdiction that the court looks to the underline acts that comprise the cause of action as at the time at that time as opposed to the time of the f of the complaint do you agree with that well your honor i think you need to look at it with respect to the time of filing the complaint but you certainly look at the acts that were undertaken by the parties prior to that time now in that regard what i would so if we look at the acts that were taken prior to the time of the thousand of the complaint can those acts in them sales establish  personal jurisdiction well here they do not because that but as a matter of the theoretically they could establish a specific person jurisdictions that correct they could establish pacific personal jurisdiction if somebody were in a car accident in california and they are from nevada sure that could establish personal jurisdiction but here we have so we have a tb proceeding this is in virginia the action that was taken was in virginia when you're looking at a declaratory judgment action we're looking at enforcement of trade mark writes we're not looking at somebody going after somebody who isn't french it's not that we're turning around and saying hey there's an effect in the marketplace here because somebody filed this in the minds of delphic so in fact what dell fix did is they filed a trademark application to try to expand their rights that's the issue that we have we didn't have a problem with their existing rights that trademark application trying to expand the rights we merely filed in opposition to that application even if we were one hundred percent successful in the opposition which we feel we will be that dell fix is not going to be precluded from continuing to s products other than the fact that the proceeding is public and none of its customers would ever hear about it we are simply talking about an opposition that was filed in virginia in or and this is in response to dell fixes attempt in its filing in virginia to get nationwide rights we were simply talking about that proceeding and whether or not they can get the additional rights that from our registration to future unknown products and  thought we did address the bancroft case but you could be correct on that the bancroft case  domain name would be automatically shut down and less there was some action taken by the domain name holder first i would point out that i think the bancroft case is a separate apart from the fact that it is distinguishable and i will go into that some more but i'd also  to look at with bancroft is that is much more like a calder b jones or a keaton versus hustler that is in calder v jones you had a publication where there were a whole bunch of people in the state seeing that publication and this is an important distinction in the walden case because it needs to affect the state not just a particular person similarly in the hustler the keaton hustler case that was a publication that affected people not just the  owner there but it affected a whole bunch of people in the state it was in essence published there similarly in the bancroft case what happened is that there was the potential shutting down of the domain name that's something that would have had to do tremendous effect in the state there so in that sense those are very different from challenging somebody who's merely trying to get an expansion of their rights by filing a trademark application in virginia so with that i see that i am out of time here because of the reservation and i will turn this over thank you thank you rebuttal on the direct appeal proceeding directed only at virginia is just not borne out by the record because we look at declaratory judgment through the reasonable perceptions of the plaintiffs when you look at communications saying you have to change your current products and you have to change your name to resolve this dispute it's reasonable to infer that there is a dispute with our current product those communications happened here not in virginia they weren't about virginia the trademark office has no authority over our current use understanding the scope of the case determines what the suit related conduct is but you know i would i would cite back to cheeseburger pons there you had a letter declaring an intent to file opposition proceedings no actual proceedings underway and because it relied on likelihood of confusion that was enough to create an actual controversy about use in commerce because the plaintiff in that case actually used the mark here we had a challenge at the trademark office not just to an application a cancellation proceeding to strip away a trademark registration that we own that covers our existing goods and services and much more demands that we change her name and under the circumstances that clearly creates an  actual controversy that is not hypothetical it's not an advisory opinion it's a real dispute and it happened here and i think you counsel think you know every bottle in the clo yes you're on to just one comment here counsel talked about the trademark registration and the attempt to cancel that in the stripping away of rights again that trademark registration was for broader goods than what they were actually using the mark on at the time that we were going through this whole process it was a registration that was too broad if we go back to the trademark office which we anticipate that at some point we will be if there's no resolution then yes we believe that registration should properly be cancelled will del fixed be prohibited from filing a narrower registration for that mark  that's not going to be a race judicata there may be other issues we don't know but they certainly can seek it for different goods and services what we're looking at here and what the trademark trying to appeal board will be looking at is the list of goods and services in the application and in the registration if the court doesn't have any further questions i'm completed here thank you piers not thank you counsel thank you to both counsel for your helpful arguments in this case the case just argued if that made a poor decision by