                     FOR PUBLICATION

   UNITED STATES COURT OF APPEALS
        FOR THE NINTH CIRCUIT


 V.V.V. & SONS EDIBLE OILS                          No. 18-16071
 LIMITED, a Public Limited Company,
                  Plaintiff-Appellant,                D.C. No.
                                                   2:14-cv-02961-
                      v.                             TLN-CKD

 MEENAKSHI OVERSEAS, LLC, a New
 Jersey Limited Liability Company,                    OPINION
                 Defendant-Appellee.

         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 non-
opposition 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 Pei-
Lun 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.
