incorrect and we asked this court to reverse it for two reasons first as a preliminary matter the rights asserted in this complaint a row several years after the ink dried on the order in the fire litigation and second  because the issue of priority of use in this litigation was not identical to the issue previously litigated because a different standard application in both courts to my first point in this litigation we are certain rights that began in two thousand twelve when the scrap mark was registered to clarify we are not related getting infringement that occurred prior to that time nor attempted to revive the common law claims that were just phones in that action however in order to establish ownership rights in the registered trademark scratch it is true that silverstein must have used that mark in commerce prior to fox using it when it released ice age film which brings me to my second point although the courts in the prior litigation had not found that silverstein had not used the mark in commerce we are not precluded in this action from establishing requisite use issues must be identical to preclude an action and although minor variation apply significantly different standards they decide different issues tell me what the difference really is between the second circuit standard and the ninth circuit standard as you understand it the difference of how the second circuit applied the standard in the prior litigation is that they focused on the use being grounded in the sale of goods bearing the mark specifically in this case with a prior litigation the court determined that because silverstein had not sold any product or good sparing the scrap mark in commerce she could not establish priority of use here in the ninth circuit the court has adopted a totality of circumstances test which balances several factors to determine and give credence to pre sales activity such as marketing and promotions which can establish use even if no actual sale of goods ever occurred we're going to thank you neither court considered in the prior litigation the weight of such pre sales activity when analyzing use rather the courts reiterated i n that action that advertising and marketing could not establish use alone and as this court expressed in the riordan case in two thousand and twelve it's rule is very different because it reflects a movement away from the bygone approach of requiring that goods require that use required goods being sold bearing the mark notably the market presence of the pre sales activity played in the complaint need not out signed out of her competitor fox in order to establish priorit understand your argument about the different standards in the second circuit and the ninth circuit but i am not understanding is what factually is different what would infringe mean are you alleging now that wasn't involved second circuit case the rights in this actions are really specifically and only to the registered trademark right that arose as soon as the scrap markers registered on this supplemental registering magistracy makes no difference to infringement thank you for your honor to clarify and perhaps i'm not saying this clearly we're only looking at infringement better curd in two thousand and twelve to the current the wedding bridgeman is that there was that involved in a second sort case since the second circuit case the ice age series has grown exponentially and year after year there are different t v series movies films that have come out all kinds of media that fox has been able to implement into the market after two thousand and hospice afic label of there was a movie just exclusively involving the character scratch using the market mark scratch as well so there  use a derivative of that right they are derivative of the right but i don't believe that their scrap mark is registered on the prince about principle register we at least have registration on the supplemental which gives us some rights i mean granted the opportunity to prove secondary use to show that the mark was valid she has not been given that opportunity to prove secondary use in this action and if we reverse back to the district court we intend to plead intent to prove that from our complaint going back to b b hardware here we have significantly more than just minor variations among a couple factors in the factor tests and both courts we are talking about applying the standard on different sides of factor i'm on one side in the prior litigation there was no factor tossed nor any analysis that would permit pre sales activity alone to establish use on the other side we have this circuit's totality of circumstances test which does permit fills activity to establish ships the district court in this action never analyze the circuits totality of circumstances test in determining whether or not the standard applied in both forms were the same in the court summarily concluded that because both claims in both actions require a finding of us commerce that the issues were the same and the standards were identical this fight or irrespective of how the courts applied the standard no matter how great the difference and that's the reason why the district court erred in its ruling and it should be reverse question the parties are the same in both cases right that's correct the only new party in this action is the l l c silverstein silver and silverstein which obtain licensing rights and we're talking about the same object here their ownership of same as the supreme court has said before and also reiterated in b and b hardware now the difference here is that we are we're looking at new rights that again have established in two thousand and twelve and we're not trying to relive again old claims that died in the past we're again old issues and here in this circumstance the standards are not just somewhat dissimilar they're greatly different and as being the hardware the opinion recognizes that the circuit court lower court in that case had sound reasoning to initially deny or issue preclusion because there were differences in the factor test in b and b hardware though the supreme court noted that when there's only minor variations of the test then it would not escape issue preclusion here there are significant differences such that the courts in both forms would be deciding different issues i see that my time is the last i'd like to reserve the rest of my time for but for in less of any other question thank you  true they did not your honor it would be useful to start with what the district court actually said and i quote there can be no confusion as to the source of a product if there is no product silberstein distributed items emblazoned with discraft logo but her a valid purpose in doing so was to generate interest in scrat not to differentiate or identify the origin of the goods which were merely vehicles for the logo what they what they held or honor was that she had used it and she had used it in various ways but she hadn't used it as a trademark she'd made ornamental use that's very consistent with what the trademark what the u patent trademark office ultimately did or registration on the supplemental register is not the same as the principle register it does not create the same rights and in fact when ms so bursting filed her statement of use the u s patent trademark office said we reject your application on the grounds that your use is not a trademark use it's an ornamental use she argued about that and that was ultimately  sustained by the trademark examiner which is why this application was amended to the supplemental register the so there's there's a fundamental difference between saying there wasn't use and there's not trademark use you can sell lots of t shirts with an image on it but if the patent office or the court views that as an ornamental use and not a trademark use then you don't have sufficient use in order to establish trademark rights and that's exactly what happened and pertinent to an established business or trade in connection with which the markets implied and then they their decision turns on the fact that she never actually sold scrat products as a course  so how can you say that they're not requiring a sale so what they're saying your honor is that she wasn't making trademark use there's the record is that it was clear at the district court in the southern district of new york that there had been products again that's what the district court said she advertise scratchie promoted scratches that they can potential as a potential for selling scrap it's and i think it's really pretty clear from other second circuit cases th conclusion as to which is the correct test that even that being said it seems like there's a little bit of form shopping going on and maybe trying to do but it's an apple and that's then how we got not to let this happen but i don't think you can not let it happen by saying there's not just separate cells so let's assume there's two separate and i think that makes this easier if there are two separate test we're still talking about two separate test for the same standard where there's use in commerce under the lanham act the issue about having a registration if it was a principal register registration is saying we have a different claim it's not saying the issue wasn't decided your honor asked the question the allegations are that that the movie ice age and the merchandising and licensing started in two thousand and two in order to establish priority in this case they have to leapfrog back behind the priority that exists as of two thousand and two they can't go back in time and leapfrog to that and that's their problem is they can establish priority as a matter of law that's again what the  it after this underlying litigation in the in the in the second circuit concluded fox moved to dismiss the use based applications that had been made in the trademark trial and appeal board affirmed on the grounds of issue preclusion it said her applications when filed when she filed on the principle register were void because she could not establish use as of the time they were filed so the even if the registration were to issue subsequently because they can't overcome the priority of the use from two thousand and two there's no way to go back in time for them to leapfrog that s because we have to assume what they say is true those are in paragraphs i believe forty eight and fifty of the key point they are that since two thousand and two boxes you scrap in commerce to identify themselves as the source of merchandise and then paragraph fifty describes in two thousand and two using it in films movie t v and licensed merchandise goods so based on the allegations in the complaint that's the description ahead the question your honor gets to about there being an issue here is this is an issue for collusion most frequently arises if we're talking about a state court finding and whether under a different standard applies in federal court as an administrative body does that apply to your decision here we're talking about the same issues by the same parties against the same parties within the same legal system it's not a question of whether the that the second circuit decision is wrong the circuit second circuit decision could be wrong but that's not a basis for this court to say that issue burke luzhin doesn't hol so again even assuming the tests are different and i don't necessarily agree with that your honor but the next issue is this issue of the supplemental register and i've mentioned it that ms silverstein filed issue of material fact that in the federal case the parties here to litigate the issue of applicants allege trademark use or the court's final decision on the merits held that applicant and not use the mark furthermore the court examined applicants record in evidence of use of the time the applicant filed the involved application therefore applicant is barred by collateral stoppel from asserting use of scrat at the time she filed her application in addition when that application to churches again that trademark the trademark office rejects it on the basis that her views she submits a specimen a statement of use and they if they when she did that they rejected it on the basis that it wasn't a trademark use that was ornamental that's how it ends up do we can we go beyond that other than to say that that was an error if we find that there is no cause for the stop because of the different tests and so your honor if there is a difference in tests it still doesn't mean that there wasn't an issue decided under that standard so the standard is isn't there what the federal the lanham act is their use in commerce that's the standard section eleven twenty seven that's what you mean if the ninth circuit says you can't use in commerce or after the that second circuit made its decision imagine instead of waiting ten years that that the plaintiffs walked into the central test of california and filed a new complaint and they said are alleging that this is infringing our rights and and somebody said what then the second circuit just decided that they said well you have a different standard here you would have the same standard but you have a different test it would apply so i am coming here i am forum shopping because i like your rule better now again plaintiff chose to file the lawsuit in new york but but under the theory that the law is different and therefore there is not collateral issue preclusion that lawsuit could have been filed the next day and in the central district of california and the higher basis for issue preclusion in collateral stoppel is the argument that you don't want to having consistent decisions once the issues finally decide it but the southern district made its decision the second circuit affirmed on that issue even if a different test is applied and this isn't just for this case it would be every case where there's a split in circuits the party that had a decision they didn't like would pick up and move to another circuit i  to two fold your honor first they don't have new claims because they don't have any substantive rights created by that rage supplemental register registration second with their rights whatever rights were created by their registration in two thousand and twelve never can  leapfrog the use of ice age in the merchandising licensing that happened in two thousand and two so fox is going to have priority they can't they can establish priority use on the basis of any contact that has occurred since in the second circuit requires actual sales and makes sense that was the industrial resin revolution the creation of widgets you had to sell your widgets to establish you were in the ninth circuit or marketplace of ideas creative people hollywood silicon valley that's we and so i think the court has got that right there are just two distinct standards here but does it really make a difference if the underlying trademark issues are unchanged to me to do what is it what again it was an easy decision for the lower court to make it's easy to look at this on a face value on a superficial level and say same party says the same facts your forum shopping which i'll address momentarily to get out of here don't you i mean if we to will because we're saying that the rights that we are asserting in this litigation start in two thousand and twelve at the time of supplemental registry and what here's why that's important there's been a lot of talk over the last ten minutes and through the briefing about this leap have filed a case on violation of her statutory her registered trademark right they didn't exist so this isn't splitting positive as even exists now if there she never had priority of use they absolute the exists now  and the reason why they exist now and again we've not suggested that it's a principal registry it's a supplemental registry but it's something and she has to do what she's doing today to fight for those rights otherwise she will lose them on the supplemental registry so she has every violation of her registered trademark rights and that's exactly why we're here and so i think fundamentally to it to address this notion of of form shopping i think it's important to note that reversing the district ultimately was able to receive supplemental registry and those in fox's opposition was dismissed with prejudice that's that says something that's significant there was this wasn't her losing one day and then coming into the ninth circuit the next day i know there's a very important part of that story that was that was missed by counsel for fox which is the seven or ten year odyssey in front of the where ultimately missile burstein prevailed and so i think at the end of the day your honors i don't know how familiar the court is with the ice age character scrat the squirrel rat but i'll leave you with this metaphor and simply say that the ice age character has an acorn ok and throughout the story someone is always trying to someone or something is trying to take his acorn i think it's an apt metaphor here ten years ago miss overstaying had a common law equine she misplaced it scratched sometimes tends to do fox ran up and picked argument the ninth circuit and second circuit apply the quote using commerce unquote standard differently as unavailing ephedra law provides a single standard parties cannot escape preclusion simply by litigating a new and tribunals that apply commerce issue is identical respond to that i would simply say that the court's order the district court's order was completely devoid it was unburdened by any analysis of this factorial multi factori test that this circuit applies the court simply took the easy route seem parties same players same facts get out of here the order reads as much it's completely devoid of any analysis of her pre sale activities and of all of the