please the court mark walters for the plaintiff appellant eat right foods the district court erred in this case by finding latches on summary judgment granting wholefoods motion for summary judgment and denying it writes cross motion for s latches involves a situation where the plaintiff sleeps on its rights waits for the perfect opportunity to sort of pounce and take advantage of detrimental reliance none of that is present here we don't have the unreasonable delay that you see in a typical latches case you also have the prejudice detrimental reliance you see in a typical latches case if we just set aside for a moment the party's dispute over actual awareness when that happened  and when it should have happened if you just look at the fact that this case involved a proceeding at the united states patent and trademark office for over a year prior to suit that started off with a cease and desist letter to whole foods as exclusive licensee mr walters what do we do with the fact your clients e mail to the council wholefoods with regard to her visit to the san francisco in i guess it was late february early march of two thousand and it seems to me that that's the toughest fact you've got and the district court seized on it in its assessment of when wright was put on notice of the potential trademark infringement right around or so i think if we look at that particular email you have to read it in the in the entire context and if you look at the very bottom part of that email miss douglas clifford the principal of the right says you should be on notice or you should know that eat right owns the trademark in class five on food products she submitted a sworn declaration saying that she noticed it on books and d v d s in the store in march  that she did not see it on any food products we actually don't know because the record is without any evidence about the use of the mark on food and that particular store the only evidence in the record about what happened on that day is from my client saying she didn't know but i thought i thought she was familiar doesn't she reference the and the campaign which as i understood the record was part and parcel of using right slogan saw in february march as i understand it the eat right campaign was a store wide campaign involving a number of different single ingredient foods but it also involved education to the store's customers in the form of maybe i don't know if they had videos or written material or whatever but this this as i understand it this was pretty prominently displayed throughout their their grocery store your honor so it was getting into the time frame of march of two thousand and ten all we know is that she is from her declaration testimony and the fact is is that she mistook that use that she saw she didn't know anything at that time about about the andy program she didn't know anything about what was going on with the food problem we interpret than her or her closing statement about now would be the perfect time to place a large order for cookies because your are not promotional material your honor is she food she testified that she was well aware of users of the market eat right on books and d v d s and she thought when she saw that it was being licensed by the american dietetic association someone else who she knew used this on nutritional books and d v d s now she thought they were using you trying to draw a distinction between material and food is that which you're absolutely right and the trademark law i don't understand her urging whole foods to order more cookie well that the trademark law requires us to look at the particular goods and services that the market is used on there's no conflict between the use of the market on books and d v d s unless there's going to create  my food vying to get you to acknowledges that by virtue of the fact that she applied it to ordering more food more cookies from eat right that she understood the program to deal with foods in a grocery store and that it wouldn't be just the right foods i i i what i'm struggling with here is that the question is did she know or or reasonably should have known had she made diligent inquiry while she was there that this trademark was being used throughout the story so you know i think your honor it's it doesn't really matter necessarily when if that was the actual time she knew or or when she should have known so you look at all times that are in here let's assume that the district court correctly drew the inference from her or her e mail that she knew how does that influence your argument that there was no unreasonable delay here to wh attack because last this is not a statute of limitations i think that's the principal thing that happened here in this case is the court applied it more like a three year statute of limitations if you look at that first e mail and ar washington statute right for trademark infringement i believe it's trade name or if i should it is the three years of limitation right but we don't have a statute of limitations when the point of no or with the exercise of reasonable diligence could the plaintiff have determined that there was a potential infringing conduct by whole foods but as a as an equitable equitable defense your honor we don't stop with that measuring the time period we have to consider all of th going stale witnesses documents being destroyed that's all in here and it's a bit different in the trademark context and here's why because trademark is about is about equitable principles you don't just have these two parties who are arguing over use of the mark you have the public that earns a right to assume and be not and not be confused to so we don't strictly apply statute of limitations in a trademark setting because you would that would sometimes lead to unfair and equitable results where the  public is left confused over who is selling what in and where it's coming from let me come at it this way the district court also seem to be influenced by the fact that one explanation for her delay in filing suit was that she was engaged in an attempt to get whole foods to acquire right in other words an acquisition and that that was the motivation at the same time you're trying to negotiate the sale of your business to whole foods you don't want to be suing them for trademark and well you know i think that that is there's some surface appeal to that argument but i think you have to look at strong motivation not to file well you know your honor she has now and at that point in time engaging in direct negotiations with whole foods is licensee and this is not just any licensee this is a licensee the whole foods described in its counterclaims as a capital affiliate meaning one entity at which whole foods exercise some control over so she  she is engaged in an adversarial proceeding at the u s trademark office she has wants to do business with with whole foods sure but having an amicable relationship and leaving your options open does that amount to waiver and acquiesce determination that your client has to accept that they weren't going to buy the market and what point is becoming reasonable for there not to be a lawsuit because there doesn't appear to be anything the record there suggested any point wolf who said you know we might be interested it seems like they've repeat court did not look at those at least in this order that we see that and if we look at perhaps like this second or third no in which you would still be within the three year time frame well your honor it's sort of i think we need to avoid putting ourselves  least reasonable acceptance would start this clock for the presumption as a rule a pseudo actually says so so i think i think that's why prejudice is so important here your honor this is a situation where there is no evidence of prejudice first of all we had we had an erroneous finding it wasn't harmless error that there was actual knowledge in two thousand and not that it spent millions of dollars on the campaign thousands of man hours developing and implementing its or why it took a month to unravel everything shut it down but there was no evidence yet of the any of that was that was connected to the absence of a lawsuit you sent demand letters and then whole foods said ok we'll will terminate this thing by the end of the year but it was never terminated that that was the problem ok and so we had to file suit to get that determination alternately and there was no monetary remedy and whole foods asked it right to seek a monetary gravity from nutritional excellence they were unable to  satisfy the monetary damages i think it's very important to look at your client at one point ask to fund its litigation against the other party nutritional nutritional excellence i'm not sure about that your hon think she did and i saw that in the record you know i know and i think your honor these are all sort of getting away from the key point that we need to find some prejudice here this is this is a situation where in two thousand and nine there was no use yet some an aggregated number was was relied on by the district court the district found that for prejudice to program started in early two thousand and ten that the program started in two thousand and ten but the court found it she saw at least some of these promotional materials in her visit to the san francisco store right right your honor but the court in finding prejudice just relied on a number that said from twenty two thousand and nine presumably all of two thousand  was in two thousand and nine versus the rest of the years ok i mean i'm assuming that it took months to get this thing ramped up right so but you're right whole foods did not break out the numbers for us right to know what they spent in two thousand and nine birds with they spent the after let me ask a different question sure i did not see anything in the record where your client suggested any kind of a standstill agreement to hold the running of any statutes of limitation a request made to do that there isn't a statute of limitations and that i think that's important she had she engaged outside trademark counsel as soon as she understood there was a potential threat to her brand this outside trademark council wrote to  so my question remains i think your answer is there was never a suggestion that the parties stand down to stop the running of the statute of limitation while they negotiated this acquisition there wasn't your honor and and i think that trademark owners are in a real tough position when it comes to enforcing their rights they can't and they practically to everybody at the same time if if you have a situation this is the critical fact that makes this case different from many of the cases relied on by wholefoods is that there was this lengthy trademark opposition where eat rights was prosecuting its claims in an adverse way to whole foods whole foods understood that there was this potential claimants thought it was threatened with litigation yeah there was this stuff in the background where she said hey why don't you try and buy our mark as a way to solve these claims but that that's her savvy negotiation and it's not necessarily maybe she should've stopped sooner but there's no prejudice as a result of that they all we all knew all along that this was it was an issue one more point your honor standard of review we have a bit of difference on the standard of review here this is a on factual findings where there's a dispute there's a dyno vo standard of review if you read their brief it reads like a a brief after a jury trial where you're trying to find evidence to support the finding critically there's a seventh amendment right to a claim for trademark infringement and this issue comes up were people want good morning and may please the court i'm steve morning for the appellee whole foods market chief judge martinez exercised sound discretion and applying the equitable doctrines of latches and acquiescence to the undisputed facts in this case he was his decision was correct and it certainly wasn't an abuse of discretion i felt saying are you suggesting that there can be no reasonable interpretation of the facts that would allow for the district court a just court defying that i was motivated by an attempt to resolve this case short of litigation as it relates to costs which would be inexcusable reason for the delay right if there's if there's a possibility of a reasonable interpretation the facts in that regard wouldn't be improper for the district court to make that type of determination at the at this stage that it did i think we need to distinguish between a reasonable interpretation of whether any facts are disputed and what the result of those undisputed facts are the application of latches based on the facts which are undisputed and when there is a dispute about the motivation there is a dispute right here about what was it writes motivation in terms  of trying to resolve the case or basically lol whole foods in some sense that it wasn't going to do anything i mean that's not a agreed upon fact right the disputes about the motivational aspect to eat right negotiations aren't there i think to the extent that you're talking about what was her state of mind there may be a dispute over whether she actually what she actually knew but we're not relying on what she actually knew we're relying on the fact that she said she went into whole foods she saw the mark and at the very least she should have known at that point that she had a cause of action all she would had to do was walk through the rest of the store and the judge found that she knew or should have known about whether or not again as counsel point out it's not a strict stache limitations there can be excuses excuses right or justification for delay so while we rely upon the analogous three year statute if if there was a finding that in fact there was reasonable delay right wouldn't that factor into a determination that the ruling in this case absolutely if the district court had in his discretion found that there delay was reasonable that would have been within his own discretion there's no question about that and i would not be standing here asking you to overturn that decision that's not what he found he exercised his discretion to the undisputed facts and found that she knew or should have known before the three year analogous tatchell limitations which as you know as you correctly noted it's not a strict statute of limitations and trademark cases but it's the only remedy that a defendant has when the plane of delays bring that in other equitable defenses like acquiescence which i'd also like to talk about a little bit here but isn't the determination about when she knew a separate factual information about the motivation for engaging in negotiations and not bringing the lawsuit those seem to be two separate factual findings are they not i don't believe her motivation and not bringing a lawsuit her internal motivation and i thought in terms of in terms of representative it right there has there's case law that says that if a party decides not to bring litigation because of determination about litigation costs in the context of bringing the lawsuit and tries resolving short of that that that could potentially be reasonable to laos justified correct though that yes those are all facts that a district court could consider in determining in making the determination  whether he or she believes the delay is reasonable the other thing i'd like to point out here is this is not a typical summary judgment case i'd also like to address the seventh amendment argument which i literally just heard for the first time appell waived any argument that they're entitled to get a jury trial on latches and acquiescence they affirmatively argued below that both defenses should be decided on summary judgment and they were entitled to trial on either i'd like to read just a short quote from their brief below both defenses are applied in the discretion of the trial court there is no right to a jury on either defense even if they involve underlying facts in dispute this court the district court can resolve the  judgment i mentioned i'd like to talk about acquiescence i think that latches has been covered very well in the briefs maybe before you move on to acquiescence you can just discuss prejudice a lot because i guess i'm stuck a little bit there in trying to understand maybe you need to just tell me what the standard is it that had she alerted you all i don't know let's say that in march of two thousand and ten that you guys wouldn't have done any you know you would have incurred any of the cost because it seems like probably you would have i can't imagine that you know some i don't know it seems like a small company and i don't think whole foods would have just rolled over for it yeah that's the guess what i'm saying i think that's a i think that's a fair statement i think we would have fought it delay the only way that an unreasonable delay is not going to cause prejudice is not going to constitute latches or acquiescence is really if there's a very minimal finding or no finding at all and prejudice here the fact that once she knew so once she knew or should have known that starts a period that we're going to determine whether the delay was unreasonable that was more than three years there's a strong presumption the delay was unreasonable so any actions that wholefoods took to either build the mark invest in the mark spend money on the campaign and most importantly for me is if we look at the whittaker case it talks about they subjected themselves to additional potential liability by continuing to use the mark while plaintiff waited to sue and that's exactly what happened here at the very least if she would have sued us sorry go ahead  try got the legal standard right in my own mind isn't it though that you've got to show that well had we been alerted sooner we would have done things differently and it seems like i don't believe that is the standard ok so i don't i don't think any of the cases stand for that i think the cases say you don't have to affirmatively prove that we would have stopped when you like immediately when you thought you had a claim that's why the cases don't say when you act as though by her not telling you if you would have done the same  that well that's the thing we never had a chance to decide whether to do the same damn thing anyway when we didn't hear at some point there was some indication their communication saying we think that there is an issue here and your client became a lawyer to that and that certainly wasn't at the end of the three year period right that was certainly at some point in the early part of the three years the first year at least i've actually other that's that that's a very good point i'd actually like to address that by and i'm not just moving in a mile and i promise but i think i think what really gets at that to answer that question is the acquiescence prong she was sending very mixed signals as you mentioned she kept saying you should buy my brand please buy my brand your investment in the ear i mark has helped my brand you should buy it you should buy my brand so you can take care of the nutritional excellence problem but at the same time as she was when she first started saying oh wow there might be a problem here she e mailed us and said it was not her intention to threaten whole foods she said it was a pleasure to supply whole foods who she called a mutual customer of her company a nutritional excellence there's the there's the fantastic to see e mail that judge solomon noted already she said she benefited from the huge investment made by whole foods in the marketing of the right she told us she wanted whole foods interest protected and even potentially enhanced these are sophisticated individuals who are lawyers it seems to me that you're saying your the market and are you saying they would be not foreseeable by your client that those overtures were not actually accepted that there wouldn't be a resort to litigation i think will foreseeable to your client gets gets really into the crux of what the issue here is which is the standard of review the appellate arguments are largely disagreements with the district court's analysis the not disagreements over any disputed facts and what we have is a clear delay exceeding the statue of limitations period we have a strong presumption and we have we have no reason to overturn the district court's sound discretion you know it's not it's not necessary to try to figure out what would whole foods have done or what was whole foods thinking that all of the actions and all of  the words that give rise to the acquiescence claim as well as the latches claim are from ms douglas clifford's own e mails and her own deposition testimony i'm a little bit concerned though  you wrench in the email where whole foods bristled at the concept that they might be drug into litigation at that point whole foods clearly knew they'd eat right was taking action before the patent office to challenge nutritional excellences infringement right well so what the whole food i will agree with part of that and i'll explain what i don't agree well let me finish the question ok so if that's true then why why wouldn't the company have thought geez we're engaged in this program with nutritional excellence to market all our foods through the n t right program if she's got a beef with nutritional excellence we could be in trouble here to the extent that there is an agreement that there's an infringement  sure and the answer to that is the part that i don't agree with the new you're in the premises are she challenged nutritional excellences new applications for they were intent to use trademark applications to register the market for very specific snack food products they did not challenge the rights existing registrations that covered the type of educational programs computer programs and online  that really were the heart of what we were doing with nutritional excellence i think it's also important to understand whole foods was not branding any products as eat right america products this was a program that said the right america there were  scores which stands for aggregate nutritional density index basically tells you how how healthy a food is on this one scale that i thought i saw right slow moto and not sure what you call brand name logo logo or thinking on an andy card that would have been posted right next to the food that's exactly right and in fact there are some can do you'll see pictures of containers of ball commons for example or that have an andy score on them and we were required under the license agreement that when we used andy's scores in that program the eat right america mark had to appear as well but what you're seeing there are that the distinction you're trying to draw as between promotional materials and food helps you much if the logo with being used on both but the point is that they didn't it the i'm not trying to make a distinction somehow we were not using the mark in connection with food the distinction i'm trying to make is that she in her opposition in the patent office against nutritional excellence she was not focused on the program she was focused on new intent to use applications for specific snack products that would have been branded as you write america's next product wasn't whole foods using the right slogan on food promotional materials and run into the first food item that she saw that was part of the n t program she would have seen any right slogan on the handy label which are absolutely are are ok and she would have seen signs hanging in the stores in the aisles promoting the program and in fact she admitted that by a little bit later on she knew that she was using the whole foods was using the mark on food and in fact before the three year deadline of december third  she wrote to nutritional excellence and said that they were supplying a mutual customer so she knew that our our affiliation was with nutritional excellence and not anybody else is there anything in record council that would support this idea  i don't think the it appeared in the record that we relied on that or focused on that and i think that again gets back to the point that it's not really about what whole foods you know what our mentality was in dealing with this i understand that it i burden of your arguments about sort of and i'm just one of the you raised this issue about this being significant and i wonder if there is anywhere in the record that indicates that your client also thought it was significant in terms of differences between what was being challenge or not the only reason i thought it was significant your much thank you your honor i'd like to address your question about two minutes on room oh ok thank you about prejudice in the standard that the case we believe that's on point there is internet special these the ninth circuit case does require some sort of caus connection between the absence of a lawsuit and the expenditures that says you can't just submit evidence of general expenditures during the time period of the infringement and say that's legal precious there needs you need to draw a line and there was no line it couldn't have been drawn in this case because whole foods had contracts fully agreed by august of two thousand and twelve to stop now they didn't completely stop we found out but they were under a contractual obligation that we had nothing to do with the stop so it's not a situation where you see in these typical latches cases where you look at the harm to the infringer they've built a business around something and now they have to stop using they had already agreed to stop so this is a case where you can there can be a finding of prejudice on that fact the research then between two thousand and two thousand well even if they're not desired and you're not saying there are no resources spent during that period i think it's probably highly unlikely there were no real resources expended during that that part of time but you as you know there's a significant startup expense to any new thing so the fact that they're disaggregated gives us no ability to take out that two thousand and nine on this idea about the store we don't know that there was any use on food products in that store this was march of two thousand and ten where when she sent that e mail and says she was in a whole foods store she says she didn't see any use on food products didn't think there was any use on food products which you know look right on her testimony was right i made a  does your honor because this is a they had this was a whole program about i don't know is the middle in france that i can draw from the fact that they put all the put the logo on the promotional materials that she and mitch i thought so so we're talking about what she saw she said she saw books and d s and promotional files but it makes no business sense for the food store to put out the promotional materials of their launching a major food campaign without assuming that they also posted these so th in a different way if you cross move for summary judgment you assume that there were not material facts that were in dispute right so what's wrong with the district court maybe making a perfectly plausible inference from facts that you can see if you will your honor the reason is here is we have a latches defense that is so intertwined with these factual findings and it is the way it was presented there are a lot more facts that  that bear on this idea that you ever make a statute of limitations ruling or a latches ruling without looking at the facts i mean it's inherently factual fact intensive legal conclusion is it not right your honor and i think that we are entitled to it to advocate in a way to say that you cannot read those facts to support latches and that's all we did but you would concede that the district court if the  i think i think the last the last point that i will will touch on is this idea that by sending or by by enforcing rights against nutritional excellence in administrative proceeding at the pad not trademark office that we didn't at the same time put wholefoods on notice that they were using a mark that was infringing our rights that's not a court is are some suggestion of that in the mail is there not i mean that's what caused the trademark infringement is that what i'm sorry you're either by me or i'm going to sue you for trademark infringement no it was here's a way to settle these claims and now that's a perfectly valid way of being infringing conda correct your honor now that's a perfectly valid way to negotiate a settlement of a claim would be for and it happens i tell you more often it's a difficult it's a difficult proposition though when you're trying to convince the putative defendant to buy your company i think it was morally if you if you want to sell it right branded food products we have the exclusive right to sell it right branded food products whole foods and if you really want to sell it right branded food products then you need to buy our rights that is a perfectly reasonable and legitimate offer and that's all that happened in this case your honor ok thank you very much i'll let you go over the good arguments on both sides thank you all very much cases stargate is submitted we'll take a ten minute recess