a i'd like to reserve half my time for rebuttal all right if you'll watch your time no also try to help you ok thank you to trademark resides in the mind of the public and it protects goodwill that has been earned in the marketplace a trademark cannot exist until it has been applied to a product that has been sold to consumers or associated with services that have been congress amended the lanham act among other reasons to provide certainty predictability harmony and fairness when establishing trademark rights by filing an intent to use application land to l c took advantage of the procedure that congress had provided in order to ensure the outcome that congress had has the burden of making it clear showing that it is entitle to the extraordinary remedy of a preliminary injunction and i do not understand how telegram might have made that showing on this motion considering the text structure or history purpose administrative interpretation and legislative intent behind the defined term use in commerce in act particularly considering the legislative intent behind the trademark law revision act of one nine hundred eighty eight well one of the things that sort of weaves in and out of the briefing by both parties of course is the issue of priority and there seemed to be some implication in some of your briefing where you seem to indicate that your client had used this great mark  before your opponents here before the telegram messenger do you take that position that land has used the graham mark in commerce before telegraph landed certainly used it in public before you use the word on the website at least i am not taking the position on this appeal that land me to use in commerce ok within i just wanted to clarify so you're not claiming that land to may to use in commerce not within the statutory definition no and and but we made the public use a public facing us and that's an important distinction because consumers  saw our use you know on on our website and that's what we intended you claim that you saw the just putting it on your website is in commerce so no you're out of no so understand it is that these contracts without the ability yet to deliver the services are not yet a use in commerce that's correct your honor we don't believe they've made a use in commerce and we certainly don't believe they  to use in commerce prior to our application filing date and the reason is because they hadn't applied the mark to a product or or rendered a service but there's a substantial amount of money that was gained by your position just it seems to me that there's rather striking that the mark was what was published by people all across the world the mark was put on the market for say only got huge returns  because that's fundraising what they're doing is they're raising money in order to offer a crypto currency at some point in the future and it's clear from the text of the defined term use in commerce that these services must and that's why i say that court supposed to look at the totality of the circumstances correct keeping in mind the statutory text the latest case on that he is reading commerce from the ninth circuit and before that there's chance  and and all we are going to decide here is is whether or not the just you coach should be overturned by saying that he thinks that the other side's got a better chance of winning than he thinks there's more reasonable but your adversary is going to win in the final rounds of the case than you are going up will first of all the standard of review here you know in our view and it seems injunction yet is far different from our standard review when we have the actual case before us fair enough your honor we we think we've presented legal issues  construction let's start with the standard of review because standard of review for us is abuse of discretion on a preliminary injunction although i recognize that if there is legal infirmities then that might per se be an abus discretion but then that gets more complicated when you fall back and the further question on serious issues if there's even serious legal issues you may well be able to pass the  threshold on preliminary injunction so with those standards which we are looking at how do you get over that standard to reverse the district or vision out of the second circuit which we cited there's also a case of the d c circuit which is on point that's famed genes cited in our reply warner vision says in effect is to enjoin a and to use applicant under these circumstances would vitiate the purpose of the statute in order to perfect its rights my client needs to make it a use in commerce and if it if my client is enjoined which it currently is it can't make a use and congress can't perfect its rights and this it vitiates the purpose behind the intent to use provisions in the lanham act and i think warner vision makes that clear and fame jeans case does as well and with that i'll reserve the balance of my time good morning may it please the court john newcombe for the appellee telegram with me today as my colleague david lamb whatever is useful to the court in our briefing probably came from mr lamb i'd like to start by addressing a few comments from law is also clear that a prior use in commerce of the disputed mark trumps a leader in time i t you application the i to you as a placeholder it would not displace or disturb preexisting common law rights in the market which is exactly what we are alleging and what judge pryor made detailed fact findings of in this case the second well so take it is the point you just made the district court conclusion plainly and that was based upon the orders you took that's all there is i think that's mostly right if i may i would tweak that just a little bit your honor and going back to judge make humans comment about the standard of review we know from the herd's heard read decision from two thousand and thirteen which i think her honor authored the standard of review here is an abuse of discretion it is limited and deferential that is the language of this court when we are reviewing judge briars underlined decision there is a do novo review about the legal framework used by the district court we don't dispute that there is also however a review of the underlying fact findings those are reviewed for clear error that is a deferential standard of review now on this appeal lanta has presented it to this court as involving numerous questions of law and i understand that position it's a savvy appellant approach to this court however that most of those arguments can be disposed of with a proper appreciation for the fact findings made by judge pryor and your honor i am trying to be responsive to your question here is what i mean by that judge prior did not just look at the purchase agreement activity that my client engaged in although to be clear that evidence is massive we have eight hundred fifty million dollars of executed transactions money received vested subscription rights  the many persons or how many records or how many orders were so i believe the record evidence suggests the following for the initial tranche of eight hundred fifty million dollars in sales made my my client all of which well it's it's just a little more than that your honor i don't think so but the move would more than a so going back to judge buyers fact findings he didn't just find that we had made eight hundred fifty million dollars in sales to eighty one organizations or people including folks in delaware california colorado illinois and new jersey that has allegedly one order that would go through there there was additional ongoing commercial activity after the i c u filing date which is relevant to the ongoing commercial use of the mark well the theft of the filing  that's right although some of the case law suggests that small sales which can be an issue only used to peg a priority date can be credited if they are followed by ongoing growing commercial activity i i wouldn't call in eight hundred fifty million dollars ledger a small sale but there are in the case law considerations of post an initial priority date activity beyond that your honor judge buyer also made fact findings that we had engaged in extensive development in current commercialization activity his honor cited that with pin sites in his decision he also noted that lanta had a not attempted to undermine or challenge that evidence and be a deuced no such evidence for their own part he also cited to including again with pin sites numerous trade publications identifying telegram its crypto currency and the gram mark in particular he furthermore a fact finding that my client had developed brand recognition in the gram mark and again we're in the position where the appellant is asking this court for the novo review of legal issues and they are telling this court that for example in every instance you must have a wide public association between the market in the service i think respectfully that's wrong on the law and we can get there if we need to but as an initial matter so as i understand it you say well they waive ality test and then they say well we didn't actually waive that i mean if there is insufficient sales then in the should have been the test applied by the district court but the district court didn't apply the totality of circumstances test so why should we send it back and let the district court apply that i wrestled with that question but your honor it goes right to the heart of this appeal and there are a number of reasons why this court should not send it back on that basis first of all this argument was never presented to judge bryer judge by or never even had an opportunity to consider it and make a ruling on it now it is true that both parties addressed the totality test before judge pryor for example on supplemental record pages thirty five through thirty seven you can see lantus opposition brief to judge prior on pages one through fourteen you can see in our reply brief before judge pryor that we also addressed the totality test so both parties addressed the totality test before judge bryer however neither party took the position that it was required in every instance that argument made prominently to this court including with a citation to the riordan case was never made to judge prior in fact the riordan case wasn't even cited by anybody to judge prior that's why we see in his honour's opinion he basically says look the parties have two disputes one where there are actual sales to establish or us commerce and number two in the alternative should i look at the totality test and he made a pretty express and in the context of the briefing papers before him perfectly sensible decision that he didn't even have to get to the totality test so that th back to if the nature of the sales which seem a points that are in effect confidential private sales if the nature of the sales is not enough to get you past the finish line does that figure in it would your honor but but for two things number first i would just again supplement judge to shimon is recitation of the relevant facts that it's not just the execution of the purchase agreements it's the other fact findings of judge bryer surrounding the negotiation execution of those agreements the public press the brand recognition the extensive development commercialization efforts and that's that's before the court in the opening pages of the record evidence it's judge writer's opinion second even if this appellant had given judge bryer an opportunity to rule on this issue which they didn't it still shouldn't be sent back on that basis for a number of reasons first the law does not support the idea that the totality of circumstances test should be applied in every case if you look at the send goku works decision from the ninth circuit in one thousand nine hundred six if you look at the shield versus auto production decision from southern district of california in two thousand and fourteen later affirmed by this court the the first inquiry is whether you can show use in commerce through actual sales that is consistent with the statutory language and also common sense to use a mark in commerce if you're using your honor well how you define sale and you know i knew the trademark and we have defined sale and we've supported it with case law authorities in our briefing as the passing of title in this case our position and judge briars fact finding was that we made sales of subscription rights to grams now if we know there's no no delivery of the going well there's so let me take this in two stages your honor first but that's true isn't it i mean it's happened to a delivery of the goods i mean well the position that's to be that until there's a require transportation delivery of the goods you know the question here would be what are the services in question and if all we had done was execute the purchase agreements that would be one fact pattern we don't have that here what we have here is a couple of things first the parties executed the purchase agreements second under the terms of those purchase agreements the purchasers then in fact wired money to my client third under the terms of the purchase agreement once they wired that eight hundred fifty million dollars they then had a vested subscription rights to gra cryptocurrency coins it is and i don't mean to be dancing around this your honor is absolutely the case that at the relevant time period my client did not deliver the cryptocurrency coins to the purchasers but judge bryer found supported by the purchase agreements at issue was that the services rendered was the transfer of title if you will to subscription rights to the token so it's an odd thing where you can say well you've transferred these rights to in this case i guess it's classified as a service let's you deliver these rights to something that doesn't exist well the subscription rights exist you understand yes but let me give you another example let's say that it's not yet legal to sell marijuana in california so we'll go back in time but you have a client that is selling rights subscription  rights so if it does ever become legal they can cash in on their subscription rights to your vested interests whether it's actual delivery of a product or investment in a field or whatever so is that kind of pre sale activity is that enough for trademark usage when you have a product and then in this case marijuana which is not let legal and it's not on the market well i'm not sure this goes right to the heart of your honor's question but my my my my first response is we've got a legality question and we have a condition precedent issue with the fact pattern just presented to me neither of which are the case here i would look when we get to the issue of whether orders anough are alone judge murray grr fine in the one nine hundred seventy s in the southern district of new york issued the washington mint decision he made a finding that one party had received orders for a bunch of commemorative plates in january of i think one nine hundred seventy two he then made a finding that the rival user shipped its plates first and it did so in march of one nine hundred seventy two looking at those facts he then said i find the party that received orders for goods in january that was a cognize about use which beat the actual shipment or sale judged ashima as i think would be consistent with your line i don't  see how we're getting the ball down the field very far with this argument all we have to decide at this point is whether the disc you judge abused just scratches we cannot we cannot at this point we're not supposed to at this point  make the ultimate decision and i fear that some someplace along the line we got off the track judge the district judge actually stayed the proceedings instead of going ahead with the trial the purpose of a pulmonary injunction is just to hold the time up so you can try the case and not have any change i think just to judge may be wrong in this position of taking it gran stay to wait here we have to say because all we have to determine is whether there's an abuse of discretion did either party move for that stay or did he do that sue us ponty if my memory is accurate your honor that was again don't do that don't wait for us because we may well have a different view of it you should move the case forward and he chose not to fall of that which we've outlined in cases before and so far as it is you understand judge  extending this litigation for costs because we're not following through the way that was posted deal with glimmering junction i'm not being critical of you the northern district of california has been doing this for some time we've had two cases in the last year in which we've told them not to do it and we expect there should be an exception but that has not been briefed or argued here that has not and honestly your honor hearing your comments is the first i've considered the issue i think the good news for the parties and for the both courts is if and when this returns to the district court the parties i think i can accurately say both parties have suggested or me taking the position that this case is not going to require a whole lot of discovery land to already move for s judgment we've just moved for summary judgment even before fact discovery began so i can only say if if or when we do return to the district court i believe that it would be reasonable to anticipate an accelerated trial schedule that would be fine and  may even get us you would have to the first part of your your discussion with this today ok thank you thank you i think you've exceeded your time we've given you a fair amount of extra time thank you very much thank you to the court your honors i just want to report address a few points that were raised by mr newcome in addition to any questions you may have first of all i don't believe the record shows that there were eighty one  a small number but once you start getting up there ten twenty thirty so i don't think that we had a i don't think it's a material difference i just want to correct it it's second of all telegram did not raise the moving papers it was lantos raised that test in opposition for the simple reason that it was you know it's a test in this circuit  and i felt like the the district court ought to be apprised of that task and then telegram addressed it in reply what i you know what i don't want to hear is i don't want to have to brief another motion for preliminary injunction if they go back to the district court and decide that they want to bring in other motion for preliminary injunction raising the tast they didn't raise the first time around that you know this it's there's always a is comfort among the counsel in the court when a standard wasn't raised and yet is a standard that might apply on the other hand and the question is did he in fact apply it implicitly even when he said he wasn't because he was going through all of the circumstances that he thought might be appropriate ok so do you think he in fact implicitly apply that because he goes beyond just yeah he says he doesn't he could go be a doesn't need to go beyond the the sales but he then does well he you know i'm not sure honestly reading reading the order his foot know where he says he's not applying that task but then he clearly goes the case goes back and just for a hypothetical purposes the court is affirmed for now in the lower injunction but then you still have your summary judgment and trial different to fit in if you go to to bring some of the prior precedent into harmony with this with the text the statute and that's the most recent authority on this subject i think riordan would be the case to look to so i'm asking you if you go back the first thing  issues of fact did you argue totality of circumstances there we did raise that argument yes in opposition to the motion for a preliminary injunction and i know i'm talking now and some rage i doubt if we filed a single brief on both issues ok  that a trademark must identify and distinguish the marks services in the public mind and so many this is the case that gives rise to that language that has then been cited in all of the subsequent ninth circuit opinions on this subject including new west including chants including brookfield including riordan and washington mint also cites to mend as i you know i think the parties have a fundamental disagreement on what washington meant means i also don't think it matters because ninth circuit precedent is controlling here and it's quite clear also as you know on the point of transferring money your side has said they wired money they receive money for these orders i don't think that makes any difference or should make any difference at all again because a trademark resides in mind of the public and signifies goodwill that has been earned in the marketplace so you know a wire transfer from one party to another no matter no matter the amount cannot create trademark rights in the mind of the public or goodwill within the marketplace yes this written case  is a bit of a difficulty for me because in the huge footnote that the left in the case they talk about a movement away we don't move away we change the law by going in bank and  statute the text of the statute i think is quite clear and it derives from the common law and the common law requires again application of a mark to a product or sociate of mark with the service and the but we do have that we have the service explore this but i for one being somewhat curious that we usually over rule cases that we don't agree with we don't move away each panel deciding what they would like to do this or so maybe you can help stra briefing the case of telegram messenger visas lanta is submitted