first with respect to o b c's counter claims the district court never really considered obese sees trademark counter claims o b sees trademark counter claims arose from the contention that in starting in two thousand and nine excelled expanded from selling jackets and coats in to selling t shirts and sweat shirts and hats and that by doing that in two thousand and nine that infringed o b sees trademark in road for t shirts sweatshirts that dated back to one nine hundred eighty nine now the district court properly found that obesity in this was on summary judgment undisputed found that obesity was the prior user of the trademark row on t shirts sold throughout the united states that it had sold those t shirts continuously since one thousand nine hundred eighty nine in a wide variety of different mediums retail stores grocery stores retail superstores third party websites it believe in the parties agreed there was not a likelihood of confusion on into selling t shirts in two thousand and nine and also those t shirts and there is evidence of this in the record had rode on the outside of them unlike the jackets the light high and leather jackets which had rowed you know almost always on the inside of the leather jackets and these t shirts and sweatshirts that they started selling in two thousand and nine were  same customers we had that an expert testimony and that is younger male customers so the district court and excel doesn't challenge us on appeal the district court correctly found that obesity had prior nationwide use of roe on t shirts slashed white shirts in this wide variety of retail channels but then the district court found and this is this  first party to use the rogue trademark on clothing in clothing and department stores clothing and that that ruling is wrong clearly erroneous and wrong legally for at least two reasons first of all there's no evidence in the record of what of defining what a clothing and department store is their own expert defendants i mean  could not define what a clothing store was and even with respect to department stores below in the summary judgment papers excelled argued that if a if a business sells be here that is not a department evidence in the record even if there were is there any justification offer saying that one's priority in a trademark doesn't apply if one has been that one has exercised the prior trademark that's exactly right type of merchant through a third type of merchant but not through another type you're exactly right and that's the second point or sold them at golf clubs precisely or that doesn't give you or your adversary who is junior the right to him to become prior by starting to sell before you the district court seem to think that simply because they feel they sold first of this clothing in department store channel which we don't think there's any evidence in the record as to what that is even if that's true it's irrelevant because it doesn't watchers and hats let me suggest to you and their way that the district court seemed to distinguish the products here and that may pertain more to the your adversary's claim than to your counter claim but i still think there are two related per se you were in the beer market and as part of promoting beer where the you you know advertised on magazines or whatever you advertise by having certain promotional clothing items and th are really a player in the clothing market well why don't you tell me why you think that way of looking at that at this one is not warranted well i mean first of all all of our clothing  sell that has robe on it is meant to promote our brewery business and the mere fact that that's what we intend to do with it does not somehow limit our trademark rights in any way the suggest is that and i'm not saying that the court would sell fine but the suggestion is that they were using it in a clothing market that was unrelated to the promotion of beer and that somehow they were permitted to do that that your trademark didn't go into the clothing without promotion area tell tell me why you're right we don't agree with that absolutely well the reason why that's wrong is there's undisputed there's evidence in the record that shows that when they expanded the parties agreed there was no likelihood of confusion if we sold on t shirts and they sold on jackets that they were selling on leather jackets that there was a likelihood confusion when they sold into t shirts we have evidence from our expert which the district court never considered that those t shirts were being marketed in nordstrom to ours to younger male consumers of who is also our target our audience and that our target audience was going into nordstrom's and the speaker coming into contact it's a phenomenon recognized in the law in the trademark cases several that we cited from the district court known as cross shopping in other words the people who were going into the retail stores and seeing our product we're also going into nordstrom's when they started selling t shirts and seeing their product and it caused a likelihood of confusion but i wasn't being clear i thought the district court thought that when you saw your t shirts your ultimate goal was to get consumers to buy your beer when they were selling t shirts that were jackets or whatever they want their goal was to get consumers to buy clothing i think that's why that i mean the court speaks about it as channels of commerce but i'm wondering whether it's really different markets that the court thought you will were acting in if it made that finding i don't know what you did i don't think it's clear it is that it's completely a distinction without a difference i mean for example i mean mcdonald's sells i'm sure there's mcdonald's t shirts and hats and stuff like that in items like that i mean the fact that mcdonald's isn't in the clothing market so to speak doesn't mean that someone else excelled or anyone else or o could start selling they start selling you know as a clothing line mc donalds it has no there's no basis in the trademark law when yours t shirts are sold in these big stores are they sold next to find them only if they if they ask for where do i go to find beer i'm not sure there's evidence on the rug in the record of that but we would submit that that it's that there is no evidence in the record that  still not relevant to our claim of whether when they expanded into t shirts they infringed our trademark law again the district court never considered that issue so you were selling close to three quarters of a million dollars  tissues yes two thousand and ten correct and throughout the united states and the district court just and then the other error that the district court made on our counter claims is that it said well even if you do have rights in object in two thousand and five when we first found out but the evidence is undisputed we did the shot in two thousand and five even if you did i mean at a certain point in the district court rights and all they need to show then is likelihood of confusion which doesn't seem to be disputed europe no it is your honor your honor we are not our cowardly lot of confusion is disputed you just said it's likelihood of confusion is dispute it we don't think and there was actually a settlement agreement in place that there is no likelihood of confusion between our use on t shirts and their use on jackets and coats those agreements are routinely upheld including by to our counter claims the district court never considered the our argument on t shirts and sweaters we're not trying to enjoying them let me make this crystal clear we're not trying to enjoin them from selling jackets coats and skirts we're not trying to do that we're simply saying when they expanded into doing what we're doing in two thousand and nine that's the same thing we've got the identical goods we've been selling throughout the nation since since  and that caused the likelihood of confusion in the district court simply held our mark was invalid because they used it in a certain this alleged trade channel before we did but that's clearly erroneous as a matter of law because  their counter claims with great care he looked at the issue of priority with great care and he correctly observed that the question of first use is not dispositive in this case trademark rights are not granted in gross the owner of a trademark has the right to prevent other people from making confusingly similar uses of similar marks but oregon brewing admitted to the patent and trademark office in two thousand and seven that it was only selling in a limited trade channel it was not in big resale stores it sold its products primarily in its own brewpubs and its own website to compliment and promote its brewing and beverage business the allegation that judge daniels didn't consider their co false he found that there was no genuine issues of fact as to who had prior rights in the clothing channel's our client is a clothing business it's been in the clothing business since point is and this is what the patent and trademark office recognized is if you've got rights in clothing somebody else can come in to your market and start selling a different type of clothing that's going to cause a likelihood of confusion that's what the patent and trademark office told them when they tried to register their mark for clothing without a limitation but that seems to me to say that you had no right to start selling any clothing at all when you when they already had rights and clothing and you started selling your jacket is that they're not they're not asking you do not sell your jackets and and and and and and skirts or whatever that you came into clothing after they did eleven years after they did your honor they were merely selling clothing in a different market that market by their own admission was separate and distinct from the market in which our client was operating we obtained a read we filed our application in two thousand we have been on the public record as owning registrations for oh an unlimited trade channel since that time i'm going to be at this argument because what they were selling was clothing they were selling it for promotional purposes to promote their beer and they were selling it usually in stores that also sold their beer but having put their mark on clothing the natural assumption would be that if this became of a very popular item of clothing that they would start selling it in more more outlets so i'm not sure why they don't have the priority right to use ro for clothing they don't have it your honor because they only sold a den limited market and tell that would be the natural expansion and they let me hold the right to that but as judge daniel's whole held they didn't have the right to expand into a market that we had already developed he didn't invalidate their mark he merely held them to the representation they made to the trademark office that their rights were limited to a narrow market to a narrow channel of trace whether you were entitle to go into that separate area the what would have been the expansion market that would have been a net the natural expansion for them is that the no no that's not a stand that has to be address that's not correct your honor because we began selling in two thousand that was seventeen years ago we have stablished rights in the market seventeen years ago we built on an awareness of our mark in the market over this great period of time and they never made any attempt to go into th market today the public sees row going to clothing store or department store they think of us not them they're a small craft brewer they are not seeking as i understand it they are not seeking to stop you from selling the jackets and the skirts or whatever that you've been selling starting in two thousand in department stores and other high and outlines with that's not what their complaint said your honor but the main point of this and this is been i heard them today and they're pretty well stuck with what they say here are that's their life and you can go that's their position but judge daniels found that they that we established rights in the clothing a department store market before we did before they did they this whole thing about us expanding into t shirts is a sham in this special in this written and this is it to shirts with rogue before two thousand and nine we sold other shirts and i know that i respect fully submit to your honor that is not a valid distinction we said we established rights in shirts in this settlement agreement which you can find  in the appendix at one ninety three they specifically agreed in paragraph two point one zero point zero b c here by consents to the use of rogue for clothing in the us by excel but limited to jackets coats shirts and skirts isn't the rule that forbids what you're doing right now isn't there a rule that forbids using a party's settlement terms as against them on the merits of the issue well you got to this is a completed agreement it's not negotiations this is an agreement that they relied on in their arguments there they're telling the court today that we somehow violated their rights by expanding to t shirts in two thousand and nine when in fact in two thousand and seven they said you're free to use shirts we don't care he didn't place without limitation shirts it doesn't say you can't use t shirts it doesn't say your shirts have to be a letter they consented to shirts and the reason they did this is because they were in a different market they weren't trying to sell rogue clothing and the general clothing market they were only interested in selling it on their beer the p t o told them that if they went into our markets there would be confusion that's why they amended their trademark registration to include that limitation common law rights in a market which is what we're talking about and at the border of likelihood of confusion the mere fact that they were the first to use a mark on shirts in a limited market segment doesn't give them rights everywhere their rights ended where the likelihood of confusion lines stood and in two thousand and seven confusion when two people are selling t shirts that's a ro likelihood well of course there is your honor but who sprite who has the prior rights as judge daniels or directly wow started first that isn't the issue your honor it isn't who started first who started in the clothing industry first that's the issue they recognized that we had priority in that channel in two thousand and seven when they amended their their application they told the p t o there would be no confusion between us and them because they were in a narrow chait trade channel judge daniels didn't take away any rights from them he merely restricted them to the rights they defined for themselves in two thousand and seven and now what they're trying to do is they're coming they want to come into a market that excelled has developed where they don't know anything about rugby or they only see a line of clothing  a court of appeals or supreme court case the case of thore for the proposition that one who has priority selling an item in commerce but selling it in a particular type of  store loses the loses that priority and cannot exercise it against someone else who sells exactly the same item but in different stores well yes is there any of his or he case that case with a cracker barrel and craft craft sells cracker barrel cheese cracker barrel restaurant sell cheese in there and their restaurants when they try to expand into the market that kraft already occupied the court found there would be confusion it's it's black letter law that writes in a market are limited to particular lines  wear this and buy whatever they like because excel as stablished rights and clothing store in a clothing store market first but they waited twelve years to object we have  incontestable registrations they're not selling t shirts though and i want to take you back to your representation to us that the green mint had he had your adversary agreeing to your selling shirts i'm looking at a one seventy five the consentual registration and if i'm reading it correctly it consents to your selling jackets coats and skirts s k i r ts and my use we're still agreement you're referring to i'm referring to the settlement agreement was was executed at the same time you're looking at age a one ninety two and a one ninety three the agreement you're looking at referred only to registration that agreement was done to help them get a registry i understand that agreement require your client to to to make a certain filing and and honor what have you got the provision you say and when you ask if you could tell me where in the settlement agreement you say they consented to your selling shirts without qualification paragraph two point one it's on page one ninety all right that does reference shirts but the previous paragraph at on page a more ninety two says that the shirts you deal in are sweatshirts and not see your own tries letter roman c award letter c rattner on page aim one ninety two that's talking about the fact that excelled obtained by assignment from another company  trademark application for footwear and clothing and the clothing next year right but that that was another mark there was another application that was assigned to excel why what you're saying makes no case no no your honor the patent office recognized that our client as the prior filer had an unlimited right these people as the second comer coming in five years after we had already applied and after we had already obtained registrations they were trying to register the same arc rogue for shirts that we had already registered the trademark registration gives you prime a likelihood of confusion boundary they agreed then that that boundary didn't extend to what excel was trying to register they agreed that excel could use shirts and they didn't object and when the p t o told them that an agreement that merely divides the clothing products between two separate parties isn't enough to avoid confusion they agreed they recognized that they didn't have common law rights that extended into our trade channels at that time that their rights were only limited to the ones in which they were selling the product and you know it may be that there are some people who are familiar with their beer who recognized rogue as a trademark for products that promote beer but promotional products are entirely different category than what you find in a clothing store people go to clothing stores to find products that they can wear in public and at our client has for years sold a whole line of these products they sold jackets coats shirts from day one and for them to say that merely because we expanded our several things your honour's a first of all the cases that my friend cited with respect to claiming that it's the trademark laws it's the first to use a specific channel of trade that that in commerce controls we were the first to use in commerce by over a decade by more than two decades what right did they what they did what they did get them to be the first to register it got them nothing and in fact your honor as we cited in our case in our brief the fact that they're true in the united states trademark of rights arises from supreme court cases going back over one hundred years trademark rights arise from the first use of the mark in commerce on the goods the district court here felt it was undisputed we were the first user of the market on t shirts throughout the united states by two decades and yet the district court then in joined us as a senior user from selling the exact same t shirt we've been selling for over twenty years and said by doing that it that we willfully infringed and awarded attorneys fees for it now that the cases they cite it's one make this really clear saw an injunction against the defendant in each one of those cases based in a in a more live in a narrow trade channel and the court held for the plaintiff in those cases those cases have nothing to do about prior use the prior use or defense you know those cases don't even say the defendant in those cases didn't even argue prior cases had nothing to do with what the prior use or defense or how you establish trademark rights are you saying that all of those cases the prevailing party was the prior use of the first use the prevailing party was the first use or and this is another i didn't have a chance to say this in the opening part but to me which really stunning is that not only did the district court grant them summary judgment on our counter claims the district court granted them summary judgment on their trademark claims against us for selling t shirts the same t shirt the exact same t shirts we've been selling since one nine hundred eighty nine continuously he said by us selling those in north sherm's five thousand dollars worth of north strums that we will fully it violated their trust but  concession that excelled has protected rights and selling coats and jackets in departments or is that means they have protected right they have now you are going you know they only have protected jackets and coats or skirts or whatever are so bearing the label row for the name row and you know two departments over t shirts are sold bearing the name roe isn't there going to be a likelihood of confusion as to origin i don't think your honor we didn't think so the parties entered into it it's the consumers that have to have to think so let me ask you when you sell them and nordstrom is the socio you want consumers to have your beer mark say what it's what one road and it's road going to star which has been used since well but you know in some of these trademark cases there compromise reached you don't want to you don't want to put the word beer on your mark your most of the time it does have a reference to be here almost all the time i don't have a little record of it almost all the time it does but if you're on the district court we proved that we satisfied each of the elements of the prior use defense and that's underway tack and that's under the s c johnson case and section one one one five of the lanham act the district court rejected that and said well because you are  you you did have rights and all these trade channels but then there's this other trade channel that's undefined that you went into that somehow means that you don't get the benefit of the prior years of defense there's not one case your honour's if you look at both the district court's opinion this is a very important district court's opinion and the cases they cited this is gallo craft and sara lee none of those cases are prior user cases there is no case other than this case judge daniels where the senior user of a trademark on the goods that he found himself nationwide on t shirts isn't joined by the junior user on the same goods as the scope of the injunction in this case so the scope of the injunction in this case which also raises several which we feel is that we're prohibited from selling in clothing and department stores again totally undefined and beer exactly exactly your honor and actually this is what's really amazing is that below in the summary judgment they took the position that well if a store sells beer that means it's not a department store if that's what they said what is the impact if any injunction on online sales so that's the other thing i mean they're saying what's the answer we can't do it we can't sell online other than in our own our own website which we've been record divides it or not nordstrom's doesn't sell beer now so so the point though is that you don't want them selling any t shirts when whether referencing beer or not is that right but if they have a mark that has been developed for jackets and t shirts and skirts and all that you saying they are absolutely precluded from the t shirt market even though you're only selling your t shirts so that consumers will associate it with your beer product yes it's our contention in the district court never reached this issue because he found our mark quote unquote invalid ok the district court never reached the likelihood of confusion issue on our counterpoints and our counter claims again we're not trying to stop them from selling jackets coats or skirts we're simply saying when they expanded into selling t shirts sweatshirts the same things we've been selling throughout the country since one thousand nine hundred eighty nine that's when it cause the likelihood of confusion even if we're not in nordstrom's even if where all these places which the district court found we were in it in two thousand and nine were saying when it did that that cause a likely to confusion the district court never reached that issue because it said our mark is invalid based on this rock clearly erroneous view of the law on trade channels seems to be pretty inescapable that if you have two shooters if you have two different issues being sold with rogue as the trademark that's going to cause confusion i would think that in michael's or they where do i find road t shirts right but again your honor the district court never reached that issue and the other thing i just i just appreciate you indulging me on this but this is really important the district court found that my client by selling five thousand dollars worth of rope t shirts the same t shirts that have been selling continuously throughout the united states and since one thousand nine hundred nine by selling five thousand dollars worth of those t shirts in north shrooms that it will committed willful trademark infringement and it awarded to turning speeches against my client not only did fees they're trying to get one point six million dollars from my clients by just because we did that there's no evidence of willfulness we never told the p t o we can't