FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

V.V.V. & SONS EDIBLE OILS 

LIMITED, a Public Limited Company,

Plaintiff-Appellant,

v.

MEENAKSHI OVERSEAS, LLC, a New 

Jersey Limited Liability Company,

Defendant-Appellee.

No. 18-16071

D.C. No.

2:14-cv-02961-

TLN-CKD

OPINION

Appeal from the United States District Court

for the Eastern District of California

Troy L. Nunley, District Judge, Presiding

Argued and Submitted December 4, 2019

San Francisco, California

Filed December 27, 2019

Before: Eugene E. Siler,* Jay S. Bybee,

and Ryan D. Nelson, Circuit Judges.

Opinion by Judge R. Nelson

* The Honorable Eugene E. Siler, United States Circuit Judge for the 

U.S. Court of Appeals for the Sixth Circuit, sitting by designation.
2 V.V.V. & SONS EDIBLE OILS V. MEENAKSHI OVERSEAS

SUMMARY**

Trademark / Claim Preclusion

The panel affirmed in part and reversed in part the 

district court’s dismissal of an action seeking damages and 

injunctive relief for unfair competition, trademark dilution, 

and trademark infringement as to three marks registered for 

use with sesame seed oil.

Plaintiff had petitioned for cancellation of the marks 

before the Trademark Trial and Appeal Board (“TTAB”). 

TTAB dismissed the petition as to the first mark based on 

claim preclusion and allowed claims against the other two 

marks to proceed. The district court dismissed plaintiffs’ 

claims as to the first mark based on claim preclusion and 

granted defendant’s unopposed motion to dismiss the 

remaining claims.

Reversing as to the first mark, the panel held that an 

exception to claim preclusion applied because an interparty 

proceeding before the TTAB is a limited proceeding 

involving registration of a trademark, and TTAB had no 

power to decide plaintiff’s claims of infringement, dilution, 

and unfair competition or to grant either injunctive relief or 

damages. The panel left it to the district court to consider, 

in the first instance, whether issue preclusion applied. The 

panel also reversed the district court’s denial of leave to 

amend the complaint to add a fraud claim as to the first mark. 

** This summary constitutes no part of the opinion of the court. It 

has been prepared by court staff for the convenience of the reader.
V.V.V. & SONS EDIBLE OILS V. MEENAKSHI OVERSEAS 3

Affirming the dismissal of plaintiff’s claims as to the 

second and third marks, the panel held that plaintiff’s nonopposition to defendant’s motion to dismiss waived any 

challenge to the dismissal.

COUNSEL

Kenneth C. Brooks (argued), Law Office of Kenneth C. 

Brooks, Rocklin, California, for Plaintiff-Appellant.

John M. Rannells (argued), Jason Lee DeFrancesco, and PeiLun Chang, Baker & Rannells PA, Somerville, New Jersey,

for Defendant-Appellee.

OPINION

R. NELSON, Circuit Judge:

Plaintiff V.V.V. & Sons Edible Oils (“VVV”) appeals 

the dismissal of its trademark claims based on three marks 

and the denial of leave to amend its Complaint. Because we 

disagree that the Trademark Trial and Appeal Board 

(“TTAB”) judgment should be given claim preclusive effect, 

we reverse the district court’s dismissal of VVV’s claims as 

to the first mark, as well as the denial of leave to amend. 

However, we affirm the district court’s dismissal of claims 

regarding the other two marks.

I

VVV is an Indian company that sells Indian food 

products in several countries, including the United States. 
4 V.V.V. & SONS EDIBLE OILS V. MEENAKSHI OVERSEAS

VVV alleges that it has used the mark “IDHAYAM”—an 

Indian word for heart—to market sesame oil since the 1980s.

In 2009, the owner of New Jersey-based Meenakshi 

Overseas, LLC filed a trademark application with the United 

States Patent and Trademark Office to register the mark 

IDHAYAM—now called mark ‘654—for use with sesame 

oil. VVV opposed that application before the TTAB. By 

late 2010, VVV had abandoned its Opposition by failing to 

respond to the TTAB’s order to show cause, so the TTAB 

entered judgment against VVV and dismissed its Opposition 

with prejudice. Meenakshi’s owner then received full rights 

to mark ‘654 and assigned them to Meenakshi.

Following this initial dispute, Meenakshi applied for two 

additional marks featuring the word IDHAYAM—now 

called the ‘172 and ‘000 marks. It was awarded registration 

without any opposition from VVV. Shortly thereafter, VVV 

applied to register the mark IDHAYAM for use with edible 

oils, but the TTAB denied the application due to likelihood 

of confusion with the Meenakshi marks. Almost two years 

later, VVV filed another application to register the mark 

IDHAYAM for use with cooking oils. That application was

denied due to likelihood of confusion with the Meenakshi 

marks as well.

VVV then filed a Petition for Cancellation of all three of 

Meenakshi’s marks before the TTAB. The TTAB dismissed 

the Petition as to mark ‘654 with prejudice, based on claim 

preclusion, and allowed claims against the other two marks 

to proceed. VVV appealed the partial dismissal to the 

Federal Circuit, but the Federal Circuit dismissed the appeal 
V.V.V. & SONS EDIBLE OILS V. MEENAKSHI OVERSEAS 5

for lack of appellate jurisdiction. The TTAB then stayed the 

action pending resolution of this case.1

At the same time VVV filed its Petition, it filed this case, 

seeking damages and injunctive relief for unfair competition, 

trademark dilution, and trademark infringement as to all 

three of Meenakshi’s marks—‘654, ‘172, and ‘000. The 

factual allegations supporting these claims are nearly 

identical to the allegations in the 2009 Opposition.

The district court dismissed the claims only as to the 

‘654 mark, solely based on claim preclusion. The district 

court found an identity of claims largely because VVV relied 

on facts and theories in its Complaint that were in its 

Opposition or were otherwise available at the time of the 

TTAB proceedings. After the claims as to the ‘654 mark 

were dismissed, VVV moved to amend its Complaint to add 

a claim that the ‘654 mark was invalid due to fraud. But the 

district court denied the motion, holding that amendment 

would be “frivolous” because claim preclusion would bar 

that claim as well.

Meenakshi then moved to dismiss the claims as to the 

remaining two marks—‘172 and ‘000. VVV did not oppose 

the motion “due to the complexity of the area of law and the 

desire to have the Ninth Circuit Court of Appeals . . . review 

the case as soon as possible.” Based on this non-opposition, 

1 A related case brought by importers and distributors of VVV’s 

products against Meenakshi is currently pending before the Third 

Circuit. In that case, the district court reached the same conclusion as 

the district court here. Sai Ram Imports Inc. v. Meenakshi Overseas LLC, 

No. 17-11872, 2018 WL 2045996 (D.N.J. May 1, 2018). The appeal was 

then stayed pending resolution of this appeal. No. 18-2052, Dkt. 10 

(3d Cir. Oct. 1, 2018).
6 V.V.V. & SONS EDIBLE OILS V. MEENAKSHI OVERSEAS

the district court granted the motion and entered judgment. 

This appeal followed.

II

“We review de novo a district court’s dismissal based on 

res judicata.” Stewart v. U.S. Bancorp., 297 F.3d 953, 956 

(9th Cir. 2002). “Denial of a motion to amend pleadings is 

reviewed for an abuse of discretion.” Branch Banking and 

Tr. Co. v. D.M.S.I., LLC, 871 F.3d 751, 760 (9th Cir. 2017).

III

First, we address whether claim preclusion applies. “Res 

judicata”—otherwise known as claim preclusion—“is 

applicable whenever there is (1) an identity of claims, (2) a 

final judgment on the merits, and (3) privity between 

parties.” Tahoe-Sierra Pres. Council, Inc. v. Tahoe Reg’l 

Planning Agency, 322 F.3d 1064, 1077 (9th Cir. 2003) 

(internal quotation marks omitted). Here, the district court 

held that because these elements were met, claim preclusion 

barred VVV from asserting any claims based on the 

‘654 mark. We assume, without deciding, that the district 

court correctly applied the elements of claim preclusion to 

this case. But we find that an exception to claim preclusion 

applies.

Under the Restatement (Second) of Judgments, an 

exception to claim preclusion applies if “[t]he plaintiff was 

unable to rely on a certain theory of the case or to seek a 

certain remedy or form of relief in the first action because of 

the limitations on the subject matter jurisdiction of the 

courts” and “the plaintiff desires in the second action to rely 

on that theory or to seek that remedy or form of relief.” 

Restatement (Second) of Judgments § 26(1)(c). This 

exception recognizes that the general rules of claim 
V.V.V. & SONS EDIBLE OILS V. MEENAKSHI OVERSEAS 7

preclusion are “predicated on the assumption” that “no 

formal barriers” prevented a litigant from presenting all of 

his “theories of recovery or demands for relief” in the court 

“in which the first judgment was rendered.” Id., cmt. c. If 

“formal barriers in fact existed and were operative against 

[the] plaintiff in the first action,” however, “it is unfair to 

preclude” a litigant from bringing a second action relying on 

new theories or seeking new relief and the general rule does 

not apply. Id.; see also Restatement (Second) of Judgments 

§ 25, cmt. e.

We have relied on and cited this exception, Harris v. Cty. 

of Orange, 682 F.3d 1126, 1133–34 (9th Cir. 2012); 

Feminist Women’s Health Ctr. v. Codispoti, 63 F.3d 863, 

869 (9th Cir. 1995), as has the Supreme Court, Marrese v. 

Am. Academy of Orthopedic Surgeons, 470 U.S. 373, 382 

(1985). In Harris, for example, a retirement association for 

county employees challenged a county’s decisions about its 

retirement plan. 682 F.3d at 1129–30. In the suit, which 

resulted in a judgment in favor of the county, the retirement 

association sought injunctive relief, but not damages, due to 

rules surrounding associational standing. Id. Later, county

employees affected by the county’s decisions brought a 

similar suit, this time seeking damages. Id. at 1130–31. The 

district court dismissed the suit based on the claim preclusive 

effect of the judgment against the retirement association. Id.

at 1131. We reversed. Id. at 1133–34. Citing Restatement 

(Second) of Judgments § 26(1)(c), we held that claim 

preclusion did not bar the county employees from seeking 

damages in the second action because “a damages remedy 

was unavailable in the first action.” Id. at 1133; see also 

Codispoti, 63 F.3d at 869 (noting that “[a]n exception to the 

general rule of claim preclusion exists where the plaintiff 

was unable to rely on a certain theory of the case or to seek 

a certain remedy” in the first action “because of limitations 
8 V.V.V. & SONS EDIBLE OILS V. MEENAKSHI OVERSEAS

on the subject matter jurisdiction of the courts”) (internal 

quotation marks omitted).

The same rationale applies here, with greater force. An 

interparty proceeding before the TTAB is a limited 

proceeding involving registration of a trademark. 15 U.S.C. 

§ 1067(a) (TTAB “determine[s] and decide[s] the respective 

rights of [trademark] registration”). As the TTAB Manual 

of Procedure states, “[t]he Board is empowered to determine 

only the right to register.” TBMP, § 102.01 (2019). Indeed, 

“[t]he Board is not authorized to determine the right to use, 

nor may it decide broader questions of infringement or unfair 

competition.” Id.; see also, e.g., Person’s Co., Ltd. v. 

Christman, 900 F.2d 1565, 1570–71 (Fed. Cir. 1990) (“It is 

well settled that the Trademark Trial and Appeal Board 

cannot adjudicate unfair competition issues in a cancellation 

or opposition proceeding.”); General Mills Inc. v. Fage 

Dairy Processing Indus. SA, 100 U.S.P.Q.2d 1584, 1591 

(TTAB 2011) (“The Board has no authority to determine the 

right to use, or the broader questions of infringement, unfair 

competition, damages or injunctive relief.”). This means the 

TTAB had no power to decide VVV’s claims of 

infringement, dilution, and unfair competition or to “grant

. . . either injunctive [relief] or damages.” Rhoades v. Avon 

Prods., Inc., 504 F.3d 1151, 1158 (9th Cir. 2007). As a 

result, it would be unfair to preclude VVV from litigating 

these claims and seeking relief when barriers existed that 

prevented it from doing so in the first action. Restatement 

(Second) of Judgments § 26(1)(c); Harris, 682 F.3d 

at 1133.2

2 VVV did not raise this argument below. But “[i]n our discretion, 

we may consider an issue not raised below if the issue is purely one of 

law, does not affect or rely upon the factual record developed by the 
V.V.V. & SONS EDIBLE OILS V. MEENAKSHI OVERSEAS 9

Because an exception to claim preclusion applies here, 

we reverse the district court’s order dismissing VVV’s 

claims as to the ‘654 mark.3 This does not mean, however, 

that parties who litigate trademark registration before the 

TTAB will always get the proverbial second bite at the apple 

if they subsequently file their claims in federal court. Any 

such concern is resolved by issue preclusion, which the 

Supreme Court recently recognized as applicable to TTAB 

proceedings. B & B Hardware, Inc. v. Hargis Indus., Inc., 

575 U.S. 138, 158–60 (2015). To the extent a party before 

the TTAB litigates an issue that also arises in infringement 

proceedings before a federal district court, issue preclusion 

would bar relitigation. Id. at 148 (“[W]here a single issue is 

before a court and an administrative agency, preclusion . . .

often applies.”).

parties, and will not prejudice the party against whom it is raised.” Janes 

v. Wal-Mart Stores, Inc., 279 F.3d 883, 888 n.4 (9th Cir. 2002). We 

exercise that discretion here. Whether the TTAB had jurisdiction to 

entertain VVV’s claims such that Restatement (Second) of Judgments 

§ 26(1)(c) applies is a pure question of law. Cf. Robi v. Five Platters, 

Inc., 838 F.2d 318, 321 (9th Cir. 1988). And Meenakshi is not 

prejudiced. In its Opening Brief, VVV argued, without any reliance on 

the factual record, that applying claim preclusion was not fair because 

the TTAB lacked jurisdiction to entertain VVV’s claims. Meenakshi 

then had an adequate opportunity to respond to that argument in its 

Answering Brief. See Zhang v. Am. Gem Seafoods, Inc., 339 F.3d 1020, 

1035 (9th Cir. 2003).

3 In ProShipLine Inc. v. Aspen Infrastructures Ltd., 609 F.3d 960 

(9th Cir. 2010), we held that a second claim did not arise out of the same 

transactional nucleus of facts—meaning that the elements of claim 

preclusion were not satisfied—because the second claim could not have 

been brought in the first action due to the first court’s jurisdictional rules. 

Id. at 968. Here, we hold that an exception to claim preclusion applies 

rather than that an element of the claim-preclusion test is not met. Our 

holding in ProShipLine, however, supports the outcome here.
10 V.V.V. & SONS EDIBLE OILS V. MEENAKSHI OVERSEAS

Whether issue preclusion applies here presents a more 

difficult question that neither the parties nor the district court 

addressed. We therefore leave it to the district court to 

consider, in the first instance, whether VVV should be 

precluded from litigating certain issues because of the TTAB 

judgment.

IV

We next turn to the district court’s denial of leave to 

amend the Complaint. “A district court acts within its 

discretion to deny leave to amend when amendment would 

be futile . . . .” Chappel v. Lab. Corp. of Am., 232 F.3d 719, 

725–26 (9th Cir. 2000). Here, VVV sought leave to amend 

its Complaint to add a fraud claim as to the ‘654 mark. The 

district court denied VVV’s request, holding, in essence, that 

amendment would be futile because any claim based on 

fraud as to the ‘654 mark would be barred by claim 

preclusion as well.

Because claim preclusion does not bar VVV’s claims as 

to the ‘654 mark, it likewise does not bar VVV’s proposed 

fraud claim as to the ‘654 mark. We therefore reverse the 

district court’s denial of VVV’s motion to amend its 

Complaint.

V

Finally, we address the dismissal of VVV’s claims as to 

the ‘000 and ‘172 marks. VVV argues that dismissal of these 

claims was error because the dismissal was “premised upon” 

the district court’s erroneous claim preclusion ruling. That 

is not correct. The district court initially denied Meenakshi’s 

motion to dismiss these claims, holding that they were not

barred by claim preclusion. The district court then granted a 
V.V.V. & SONS EDIBLE OILS V. MEENAKSHI OVERSEAS 11

separate motion to dismiss the claims because VVV 

explicitly did not oppose it.

VVV’s non-opposition to the later motion to dismiss 

waived any challenge to the dismissal of its claims based on 

the ‘000 and ‘172 marks. “In order to preserve an issue for 

appeal, a party must make known to the court any objection 

to the court’s action.” Mendoza v. Block, 27 F.3d 1357, 1360 

(9th Cir. 1994). VVV made no such objection. We therefore 

affirm the district court’s order dismissing VVV’s claims as 

to the ‘000 and ‘172 marks. Jenkins v. Cty. of Riverside, 

398 F.3d 1093, 1095 n.4 (9th Cir. 2005) (claims can be 

abandoned if their dismissal is unopposed).

AFFIRMED in part REVERSED in part.