reserve five minutes for a bottle if i might please and if i step back a little right senator trademark in the united states are based on use of the market that is the most fundamental principle of u s trademark law it always been the public policy of the united states is to favor the use of markets the public policy disfavors the warehousing or hoarding of markets because that is anti competitive it deprives competitors of the use of the marks and more importantly it deprives the marketplace of the marks now since the advent of the lanham act in the late forty's abandonment has been  defined term in our statute unlike some of the other statutes that have been discussed k this morning this one is clear one prong of it says that if you discontinue which was the one nine hundred eighty eight trademark law revision act tightened up the definition of used it i added that the use has to be a bona fide used in the ordinary course this language ordinary course of trade is flexible and congress intended for it to be flexible because what's the ordinary course of pride for one business is not the ordinary course of trade for another now let's step back and look at what happened on november three nineteen ninety nine home that day albertson's change the name of all of the lucky supermarkets to albertsons it had a massive advertising campaign to educate its customers that the new name was albertsons ar i don't think the  like the removal from the back offices of the one walkie and the throwing the signs in the trash those things altogether are the circumstances under which in dave because that would have just invited competitors to come in and compete with them under that mark i'm sure they hoped that no one would and they're not to be faulted for that but short of making a public announcement in the district court found that there was no public announcement of abandonment and we don't dispute that they didn't say we're abandoning the mark but short of that what more could they have done to indicate their intent not to resume use of the mark it's well it is i read the district attorney and that doesn't seem to be the burden of your problem the district court did not make finding any determinations of truth finding just took and decide what he thinks it might come out like that but in doing so he sort of took that there may be some problems with abandonment but the main issue here he had with your case was that there wasn't a proof clearly proven intent to invent it and it looks like to me that you did pretty well in the district court until you got down to the question of  the intent and that was where he thought that he needed to give the primary injunction if you were going to have trouble at the trial final trial and proving that so it seems to me what i need to discretion in making this determination having in mind that he set the standard as it must be clearly proven that the district court erred in ways number one where the circumstances are such that the intent not to resume can be inferred along november three nineteen ninety nine it error to look beyond that as the district court for and then tenth that happened later the district court said albertson's formed an intent as early as two thousand  to resume use our position is that's not relevant to what happened on november three nights a ninety nine under the clear language of the statute constituted abandonment you got three years of no news that allows you to get home free regardless of intent within that three year period there was evidence that the district judge thought might be useful at the time of the final trial of this case difficult in many circumstances to prove a bad so it shifts the burden to the party to the to them are called or it it is not it does not me that if you discontinue use with an intent not to resume as of that moment that you haven't abandoned the mark carefully considered it is the federal circuit and they found it to be for ponderous of the evidence and that's been followed by the fourth and the seventh circuit in passing they have apparently considered it  albertson says that well that federal circuit case relates to the cancellation of the registration in this case grocery outlet has filed a declaratory judgment action of no right i think i think probably both parties had requested the jury in the case and i think that was there was it was it is to be a jury trial let me go back to the in our circuit that i have found that allows us to do that as a matter of fact it's to the contrary strictly proved is not a mere burden of persuasion so why isn't the district court right when it says when it wreaks a tax but stringent have the strict burden of proof strictly proved why aren't those all synonymous with what we've been talking about strictly proved we would submit your honor that this is an open issue in the ninth circuit the federal circuit when they looked at some of the i call it loose language of the courts but on this strictly the burden of persuasion just tipping the scales well it certainly sounds different and preponderance of the evidence i grant you that i just don't think that should be i think that is loose language that the courts are for all around and really haven't taken the time to define it yeah and we have a second layer here because we're planetary injunction career the district court does not state facts is not required to have a statement of facts makes what he thinks it might come out and then we treat it with abuse of discretion so we have two layers that we're talking about here which we won't have when you have your adjudication which i assume you're marching towards in a district court now well the district court action is on hold pending this appeal because always not right we need we need guidance from this court on two issues really only what the standard of review of the standard of proof is is it is it proponents of the evidence or is it something else and we also need they got us from this court on whether it's appropriate to look beyond the november three like hundred ninety nine date that turns the whole situation i was head because we've told counsel we've told lawyers that we don't want to do that that this is just a way station we're not going to give you advice nice with an intermediate appeal on some issues to make the case tried better well we're going to say is is it fair to have an injunction pending appeal is it fair to do that that's all we want to decide and we've made that so clear in our cases and i still am puzzled when when a court wants to stand it up or counsel want to bring it up because we've made it clear that these determinations simply are are not  adjudications on the law we're going to wait we have the full record before us so it is just puzzling to me that in this case the district court if the district if there's just a course idea to do it or whether counsel it one of the key issues obviously on the appeal is the standard of proof and abandonment is a form of involuntary forfeiture i think that's where strictly comes from it's a disfavor defense under the trademark law any form of forfeiture is disfavored under the law and that's essentially what abandonment is is a form of involuntary forfeiture in this case we have grocery outlet that is essentially trying to  market that has no rights to that it never had any rights to it it doesn't have any rights to now albertsons is the trademark owner it has been the trademark owner for sixty five plus years  nelson there's that wasn't a band of men at that point i mean just because there was advertising relating to the changing of the existing stores and that's all it was albert's and simply decided to change the lucky stores that existed as of one nine hundred ninety nine two lucky that's it they never made an express abandonment they never said they were no longer going to use the mark they never said that the more was being a limited as in the highland potato chip case they never said that the mark was being abandoned as in this court's california suit or products case all they did was simply change those existing lucky stores to albertsons and as the evidence showed and this was a very very well developed uniquely developed record plenary injunction record because there was three months of expedited discovery where numerous depositions were taken documents were exchanged in a rocket's wor before him when he made this decision i mean there were in addition to the affidavit a lot of documentary exhibits that were submitted and that evidence clearly showed and judge white's found as a factual matter that's not clearly  conclusion he didn't make a finding of fact well he says you are on earth that he says the very beginning and are finding in fact the following factual findings are not meant to be binding but rather represent those facts this court finds probable that the parties can prove a trial he specifically said he's not making a finding of fact which is proper under a clemency injunction correct your honor except that what he did was he obviously weighed the evidence that he had before him  read how it will probably come out but that's different from when credibility put more live witnesses and it's different from making findings of fact i think i think the cases got really confuse by considering him making factual it just strikes me that that has much very little to do with whether or not we affirm or not affirm the district court and i think we have to have it in context that the district court now is talking probabilities and not findings i understand judge wallace ok i think the issue though is he didn't  his discretion in terms of the evidence that was submitted he was at least able to render a probability that albertsons did not discontinue use of the mark in november nine hundred ninety died with the intent not to re why that correctives well what's the base of that or is it that well i think rightly or wrongly judgment unit comes from the future in nature whether it's statutory and i raise that is he does discuss you're right he doesn't he doesn't except for remembering the subversive riya case out of the federal circuit and he tries to distinguish it on the grounds for which it should be distinguished which is that yes it came out of the federal circuit but it wasn't dealing with the stripping of someone's property rights it was simply dealing with the registration issue whether or not a registration ought to be cancelled but even if a registration is cancelled that doesn't eliminate common law rights and that's what aband does is abandonment under the statute eliminates common law rights i mean it's basically your property is gone so this averse arena case was simply looking at an administrative decision from the united states patent and trademark  office on a cancellation proceeding it wasn't looking at a stripping of property rights and that's a very important distinction that's laid out in the dollar mattress case and if you look carefully the seven circuits robo decision preceded  so it didn't follow the federal circuit it preceded it and there's no analysis whatsoever the role of court simply says that we're going to adopt a preponderance of the evidence standard period and so does the fourth circuit in the emergency one case again no one else was whatsoever and so the but the district courts including some in the circuit cash processing services ema sheens which is an unpublished decision but still both of those courts based on this circuits and this court decision a prudential and in other other cases saying that it's a strictly prove standard decided that it was clearly something more than a preponderance of the evidence and concluded i think based on other certain other courts are they come to the same conclusion that it a clear and convincing now whether it's something in between i don't know but i think i think clearly and i would submit that respectfully that it is something more than a preponderance of the evidence with us here that it's more than ever well let me just going to just one issue would be i don't think it's incorrect standard i think it should be clear and convincing but if i would say i'm not sure whether the court would have to reverse or not and would i guess the question would be whether there was enough in the in the court order that would otherwise allow this court to a comment i don't know the answer to that question as to whether you would have to reverse in the court does point out judge white as as judge wallace indicated that they found it to be a stringent heavier strict burden of proof now if you found that it was a strict burden of proof and that's more than a preponderance it simply has to be strict i would think the judge white would be for the court could affirm because judge white seems to have followed that standard that it's a stricter heavy burden of proof i mean that's what he says in his w there on those circumstances i think this court would not have to reverse but it's it's i would submit that if the court looks at the district court decisions that have analyzed this and i know they're not binding on this court that would urge the court to adopt the clear and convincing standard because that does appear to be in terms of the relative standards that would appear to be the one that would make the most sense here  there was no express of the end in of them are the question was is he raised it is whether the mark was abandoned as of november one thousand nine hundred ninety we would submit there's two reasons why that can't be the case one is under electro source we continue albertsons stores lucky slash albertson's stores just as it had been prior to the name change in those stores it was bonafide commercial use and then grocery outlets never contended otherwise because they can't win these products were on store shelves sold to the public and obviously they were they were targeting consumers they were already familiar with the with the lucky mark and they sold almost eighty million products in two thousand and it dropped off after that as the inventory was depleted but that's no language used in that case applies directly here because and we argued this to the district court that if you look at section a level twenty seven it simply says that the market needs to be placed on goods that are transported or sold in commerce that's what the definition of bona for for a firm and see if we took a protective cross appeal on that issue because if you find if you get rid of the november ninety nine discontinued use date and you go to when we made our last bona fide sale of lucky product which appears to be sometime in two thousand and five as a matter of law you cannot have abandonment because there's evidence of an intent to resume use of the mark prior to two thousand and five so there was no discontinued use with the intent not to resume use or he he has some doubt about the sell off the merchandise as being use because he indicates there's no use in commerce that's just selling off stock that you know one so if it looks like that you may have a burden on that issue when this goes back for trial as of now i don't think he thinks you have it i mean well and that may well be the case judge wallace but but the point is i think under electress worse many again  language in that case is very it's awful force with with the circumstances of our case and there's very good language in the case to suggest that to meet that standard of bona fide commercial use is simply you simply follow the statute as long as you place the goods that were transported and sold in commerce you satisfy the elements of the statute that would work if that were true then if you had twenty years worth of lucky goods in the back warehouse you're using the mark for twenty years even though you do nothing else that right as long as it's only five commercial use is that is that it yes that's right eunice stone and you'd have the mark used for twenty years that's correct as long as it was bona fide you were doing it merely to reserve rights on the mark on pride means what you're selling it for cash you know you're selling you're making a good faith commercial use of the market in commerce you're selling or you sell you know you're in your stores just as you would any grocery product and you're probably unlucky that's correct that has the lucky m case i mean there's kind of a fine line there i mean the courts have to be cognizant of efforts made merely to reserve rights in the mark as opposed to bona fide commercial use of the market use of the mark in commerce under section eleven twenty seven that's what the carter wallace case that's what electro source says and so the courts have to look for that but there's been no contention in this case that any of the product we sold was was feigned or that it was you know designed merely to preserve rights in the market we were simply selling inventory but other electoral source that's were actually was a white going on i mean the company almost almost immediately after in two thousand began looking at they did a residual goodwill study to find out what was a good use digital goodwill left in the market and there were a whole host of studies done thereafter and plans formulated to to figure out a way to resume use of the mark on store fronts now keep in mind we're still selling the product with the lucky name on it but in addition to that the company is is actively involved in efforts to determine how how it's going to use the mark on store fronts and it really wasn't a question that if it was more a question of when it was going to happen and those studies began almost immediately after  explains a company's not going to get rid of a mark or abandon a mark that has that kind of residual goodwill in it it goes to the intent and remember the statute doesn't say that we have to prove that we discontinued use with the intent to re thereafter and relatively shortly thereafter within the three year period at the present a period that there was evidence and strong evidence that albertsons intended to resume use of the mark on store fronts i remember again we were taking the position we were still using it on products i would direct the court's attention to page thirty eight of the transcript of the proceedings of june thirty in which judge the district court discusses the burden of proof issue now mr serina case was only a case of of cancelling a registration in this case grocery aisle has a declaratory judgment of non infringement it also has a request that the court cancel the registrations of lucky both on the grounds of abandonment the abandonment statute is exactly the same every word is the same now  we to have one burden of proof on proving abandonment to cancel the registration and another burden of proof to prove abandonment i mean that's i think on its face that's ridiculous the the survey story a case of the federal circuit looked at the abandonment statute and said preponderance of the evidence is the correct and there's i don't think there's any reason for this circuit to create a circuit  it's conceivable with something like aluminum foil that could last forever if they have a big inventory of that at a smaller store where the customers prefer reynolds wrap or something they could have lucky aluminum foil on the shelves forever and they make one sale every two years is that that couldn't be what congress intended when they wrote the abandonment statute and it couldn't be what congress intended when i tightened up the definition of us circumstances ordinary course of curried for mr mallett selling backpacks out of his garage to shops is i can't imagine a more night and day situation then exists here with albertson's of forty billion dollars company with two thousand stores able to do its business with all those resources what's the ordinary course of pride for sins is not the ordinary course of tried for mr mallock the district court was correct and it's finding that the burn off of the inventory under all the circumstances of this case was