NOT FOR PUBLICATION FILED
UNITED STATES COURT OF APPEALS JUN 2 2022
MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS
FOR THE NINTH CIRCUIT
CHEMEON SURFACE TECHNOLOGY No. 21-15561
LLC, a Nevada Limited Liability Company,
D.C. No. 3:15-cv-00294-CLB
Plaintiff-Appellant,
v. MEMORANDUM*
METALAST INTERNATIONAL, INC.; et
al.,
Defendants-Appellees,
DEAN MEILING; MADYLON MEILING,
Defendants-counter-
claimants-Appellants,
and
MARC HARRIS; MHA GROUP,
Defendants.
Appeal from the United States District Court
for the District of Nevada
Carla Baldwin, Magistrate Judge, Presiding
Argued and Submitted May 11, 2022
San Francisco, California
*
This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
Before: W. FLETCHER and BUMATAY, Circuit Judges, and KANE,** District
Judge.
Chemeon Surface Technology LLC (“Chemeon”) raises numerous claims on
appeal from the district court’s judgment in favor of Defendants-Appellees (David
Semas).1 We have jurisdiction under 28 U.S.C. § 1291 and we affirm in part and
vacate and remand in part.
1. We affirm the district court’s judgment in favor of the breach of contract
counterclaim. We review the district court’s interpretation of the contract de novo.
Rittman v. Amazon.com, Inc., 971 F.3d 904, 909 (9th Cir. 2020). The Settlement
Agreement between the parties prohibited Chemeon from using “the name Metalast
in any fashion or manner whatsoever.” The district court found that Chemeon’s use
of “formerly Metalast” on purchase orders, invoices, advertising materials, and on
technical and safety data sheets violated the Agreement. The district court properly
applied the terms of the Agreement, which clearly provides that Chemeon may not
use the name “Metalast” in any “manner whatsoever.”2 Thus, by using “formerly
**
The Honorable Yvette Kane, United States District Judge for the
Middle District of Pennsylvania, sitting by designation.
1
Because both parties refer to Defendants-Appellees as “David Semas” in
their briefing, we do so as well.
2
We reject Chemeon’s argument that the district court was bound under the
law of the case doctrine. The district court was not bound by a prior analysis of the
Agreement because it retained the discretion to interpret the Agreement in reaching
judgment on Semas’s counterclaim. See City of L.A., Harbor Div. v. Santa Monica
Baykeeper, 254 F.3d 882, 888 (9th Cir. 2001) (explaining that the law of the case
2
Metalast” in its commercial documents, Chemeon breached the express terms of the
Agreement.3 We therefore affirm the district court’s grant of judgment on Semas’s
breach of contract counterclaim.4
2. The district court did not abuse its discretion in excluding Chemeon’s
affirmative defense evidence. See Clare v. Clare, 982 F.3d 1199, 1201 (9th Cir.
2020). Chemeon argues that its evidence with respect to fair use, unclean hands, and
fraudulent acquisition of the disputed trademarks were all improperly excluded by
the district court. But importantly, Chemeon’s evidence supported affirmative
defenses for a trademark action, not the breach of contract claim at issue. Thus, the
district court did not err in excluding Chemeon’s trademark evidence.
Chemeon’s remaining argument is that the district court abused its discretion
by excluding the introduction of an Occupational Safety and Health Administration
(“OSHA”) litigation brief which allegedly shows that former business names can be
required in safety sheets. But the brief was not properly offered into evidence.
Additionally, Chemeon failed to establish that the OSHA brief even represented the
doctrine “is discretionary, not mandatory and is in no way a limit on a court’s power”
(simplified)).
3
Even under the analysis of Kassbaum v. Steppenwolf Productions, Inc., 236
F.3d 487 (9th Cir. 2000), the district court properly held that Chemeon exceeded the
scope of any implied use by using “Metalast” in multiple commercial documents—
going well beyond a mere historical reference. See id. at 492.
4
Given that we affirm the grant of judgment on the breach of contract
counterclaim, we also affirm the district court’s injunction preventing Chemeon
from using the name “Metalast” in commerce.
3
agency’s official interpretation of its safety requirements. Thus, the district court
did not abuse its discretion in excluding the brief.
3. We affirm the district court’s denial of judgment on Chemeon’s trademark
infringement claims. To determine whether Chemeon’s product marks are
distinctive and thus protectable, we “consider whether the mark owner has engaged
in a constant pattern or effort to use the product mark in a manner separate and
distinct from the house mark.” Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 757
(9th Cir. 2006) (simplified). Here, the district court found that the terms “TCP-HF”
and “AA-200” were never used to sell products without the preceding name
“Metalast.” Chemeon fails to show that the district court’s factual finding is clearly
erroneous. As a result, because Chemeon did not sell its products using “TCP-HF”
or “AA-200” and did not otherwise engage in a “pattern” of distinctive usage, the
district court properly denied judgment on Chemeon’s trademark infringement
claims.
4. The district court did not abuse its discretion in denying Chemeon’s claim
for attorney fees under the Lanham Act. See SunEarth, Inc. v. Sun Earth Solar
Power Co., 839 F.3d 1179, 1181 (9th Cir. 2016) (en banc) (per curiam). The district
court properly analyzed Chemeon’s attorney fees claim under the totality of the
circumstances approach set out in Octane Fitness, LLC v. ICON Health & Fitness,
572 U.S. 545, 554 (2014). In doing so, the district court specifically looked to
4
Semas’s conduct and found that the voluntarily dismissed claims were neither
frivolous nor otherwise exceptional. Chemeon cannot point to any evidence
compelling an award of attorney fees and so the district court did not abuse its
discretion in denying fees.
5. The district court erred at summary judgment by dismissing Chemeon’s
trademark cancellation claim solely on the fact that Chemeon did not have an interest
in its “own mark.” In reaching its decision, the district court cited Star-Kist Foods,
Inc. v. P.J. Rhodes & Co., 735 F.2d 346 (9th Cir. 1984). The district court reasoned
that Star-Kist requires a trademark cancellation petitioner to have an interest in his
“own mark” to establish standing. Assuming Star-Kist applies here,5 that case did
not create a bright-line rule that a trademark cancellation petitioner must have an
interest in his “own mark” to establish standing. Rather, Star-Kist explained that the
standing analysis turns on whether “the cancellation petitioner [can] plead and prove
facts showing a ‘real interest’ in the proceeding in order to establish standing.” Id.
at 349 (simplified). And the Star-Kist court made clear that the “[i]nterest assertions
will vary with the facts surrounding each cancellation dispute” thus requiring a
“case-by-case” analysis. Id. On remand, the district court must determine whether
Chemeon’s other asserted interests are sufficient to pursue a trademark cancellation
5
We note that the Supreme Court’s decision in Lexmark International, Inc.
v. Static Control Components, Inc., 572 U.S. 118 (2014), arguably provides the
proper basis for analyzing this trademark cancellation claim.
5
claim.
AFFIRMED IN PART, VACATED AND REMANDED IN PART.
6