navigating trademark oppositions and cancellation ...media.straffordpub.com/.../presentation.pdf ·...

Navigating Trademark Oppositions and

Cancellation Proceedings at the TTAB Strategies for Opposing Applications, Cancelling Registrations and Responding to These Proceedings

Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

The audio portion of the conference may be accessed via the telephone or by using your computer's

speakers. Please refer to the instructions emailed to registrants for additional information. If you

have any questions, please contact Customer Service at 1-800-926-7926 ext. 10.

WEDNESDAY, AUGUST 13, 2014

Presenting a live 90-minute webinar with interactive Q&A

Stephen R. Baird, Shareholder, Winthrop & Weinstine, Minneapolis

Jonathan Hudis, Partner, Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

Linda K. McLeod, Partner, Kelly IP, Washington, D.C.

Sound Quality

If you are listening via your computer speakers, please note that the quality

of your sound will vary depending on the speed and quality of your internet

connection.

If the sound quality is not satisfactory, you may listen via the phone: dial

1-866-570-7602 and enter your PIN when prompted. Otherwise, please

send us a chat or e-mail [email protected] immediately so we can

address the problem.

If you dialed in and have any difficulties during the call, press *0 for assistance.

Viewing Quality

To maximize your screen, press the F11 key on your keyboard. To exit full screen,

press the F11 key again.

FOR LIVE EVENT ONLY

For CLE purposes, please let us know how many people are listening at your

location by completing each of the following steps:

• In the chat box, type (1) your company name and (2) the number of

attendees at your location

• Click the SEND button beside the box

If you have purchased Strafford CLE processing services, you must confirm your

participation by completing and submitting an Official Record of Attendance (CLE

Form).

You may obtain your CLE form by going to the program page and selecting the

appropriate form in the PROGRAM MATERIALS box at the top right corner.

If you'd like to purchase CLE credit processing, it is available for a fee. For

additional information about CLE credit processing, go to our website or call us at

1-800-926-7926 ext. 35.

FOR LIVE EVENT ONLY

If you have not printed the conference materials for this program, please

complete the following steps:

• Click on the ^ symbol next to “Conference Materials” in the middle of the left-

hand column on your screen.

• Click on the tab labeled “Handouts” that appears, and there you will see a

PDF of the slides for today's program.

• Double click on the PDF and a separate page will open.

• Print the slides by clicking on the printer icon.

FOR LIVE EVENT ONLY

Types of Proceedings

• Opposition/Cancellation

– Prevent issuance/cancel registration

– Filed by persons who believe they would be damaged by registration

– Oppose/Cancel registration in whole or in part

– Geographic limitations only in concurrent use proceedings

6

9

EOT & Opposition Complaint Timing

Extension of Time to Oppose

• Identify potential opposer with reasonable certainty

• Opposition filed in name of person granted EOT

• Opposition in different name accepted only if:

– Misidentified through mistake

– Filed by person in privity with person granted EOT

-Rule 2.102(b)

10

Time for Filing Cancellation Complaint

• Cancellation

– At any time, in case of:

Any ground in Section 14(3) or (5) and

Section 18 (e.g., abandonment, genericness,

fraud, Section 18)

Supplemental Register

12

Time for Filing Cancellation Complaint

• Cancellation

– In all other cases, within 5 years from date of

registration:

5-years counted from date of registration

Petition filed on 5th anniversary of registration is not

limited as to grounds

Strang Corp. v. Stouffer Corp., 16 USPQ2d 1309 (TTAB

1990).

Filing date of petition is date of receipt in the PTO of

the petition with the required fee

13

15

Any person who believes he is or will be damaged

by registration, i.e., one who has "real interest" in

the proceeding and a "reasonable" basis for his

belief of damage.

Ritchie v. Simpson, 50 USPQ2d 1023 (Fed. Cir. 1999)

Grounds – Likelihood of Confusion

Pleading Factors:

1. Priority:

• Prior Use of Mark

• Ownership of valid and subsisting registration for

pleaded mark

- King Candy Co., Inc. v. Eunice King's Kitchen, (CCPA 1974)

2. Defendant's mark, as applied to its goods and

services, so resembles plaintiffs mark or trade

name as to be likely to cause confusion, mistake,

or deception

17

Pleaded Registration Issues

• 37 C.F.R. § 2.122(d)(1): Plaintiff’s pleaded registration(s) received in evidence and made of record if:

− Original or photocopy of registration prepared and issued by Office submitted with complaint

− Photocopy of registration attached to complaint insufficient

−Sterling Jewelers Inc. v. Romance & Co. (TTAB 2014)

− TSDR and assignment records showing current status and title attached to complaint

− Entering registration numbers in ESTTA alone insufficient

−Melwani v. Allegiance Corp., 97 USPQ2d 1537 (TTAB 2010)

• Defendant makes admissions in Answer

-Cutino v. Nightlife Media, Inc., (Fed. Cir. 8/7/14)

Grounds – Likelihood of Confusion

– [O]ur likelihood of confusion determination is

confined to the identifications of goods and

services set forth in the opposed applications

and the goods in the pleaded registration, as

well as those goods on which opposer has

established prior common law use.”

- Embarcadero Tech, Inc. v. Rstudio, Inc. (TTAB 2013)

19

Grounds – Section 18 Restrictions

“In such proceedings the Director may refuse to

register the opposed mark, may cancel the

registration, in whole or in part, may modify the

application or registration by limiting the goods

or services specified therein, may otherwise

restrict or rectify with respect to the register the

registration of a registered mark…”

-See Milliken (TTAB 1996)

Grounds – Section 18 Restrictions

22

Embarcadero Tech v. Rstudio, (TTAB 2013)

Grounds - Deceptiveness 2(a)

24

“(a) consists of or comprises…

matter which may…falsely suggest a

connection with persons living or

dead, institutions….”

25

Grounds – False Suggestion of Connection 2(a)

• Pleading Factors

1. Defendant's mark is the same or a close approximation of

plaintiff's previously used name or identity

2. Defendant’s mark would be recognized as such

3. Plaintiff is not connected with the activities performed by

the defendant under the mark

4. Plaintiff's name or identity is of sufficient fame or

reputation that when the defendant's mark is used on

the goods or services, a connection with the plaintiff

would be presumed.

Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985)

26

Grounds – False Suggestion of Connection 2(a)

• Association pour la Defense et la Promotion de l’œuvre de Marc Chagall Dite Comite Marc Chagall, 82 USPQ2d 1838 (TTAB 2007)

27

Grounds–False Suggestion of Connection 2(a)

Standing – Genericness & Descriptiveness Claims

29

Grounds – Mere Descriptiveness 2(e)(1)

– A mark is merely descriptive if it describes an

ingredient, quality, characteristic, function,

purpose, use, feature, etc. of the goods or

services in connection with which it is used.

– Lack of Acquired Distinctiveness

In re Abcor Development Corp., 200 USPQ 215 (CCPA 1978)

30

Grounds – Genericness Section 14(3)

• Primary Significance Test for whether term is generic:

(1) What is the genus (class or category) of goods or

services at issue

(2) Is the term at issue... understood by the

relevant public primarily to refer to that genus of

goods or services

- In re American Fertility Society, (Fed. Cir. 1999)

31

Grounds – Non-Use/Abandonment § 45

• ShutEmDown Sports, Inc. v. Lacy, 102

USPQ2d 1036 (TTAB 2012)

35

• Applicant must have requisite bona fide intent

to use mark in commerce as of the filing date of

application

• What is a “bona fide intent”?

– Not merely to reserve a mark

– Objective evidence of bona fide/good faith intent

to use mark

– Evidence of on-going effort to make use of mark

in commerce

37

Grounds – Lack of Bona Fide Intent

“…the absence of any documentary evidence on the part of an applicant regarding such intent is sufficient to prove that the applicant lacks a bona fide intention to use its mark in commerce”

-Commodore Elecs. v. CBM Kabushiki Kaisha (TTAB 1993)

38



– L’Oreal S.A. v. Marcon, 102 USPQ2d 1434 (TTAB 2012) (TTAB

sustains opposition against Marcon’s applied-for mark L’OREAL

PARIS for “aloe vera drinks” on the grounds of likelihood of

confusion and lack of bona fide intent to use).

39

Research in Motion Ltd. v. Defining Presence Marketing Group, Inc., 102 USPQ2d 1187 (TTAB 2012)

Grounds – Dilution by Blurring

Three elements of dilution-blurring: (1) Whether the plaintiff’s mark is famous (2) Whether the plaintiff’s mark became famous

before the defendant’s first-use date or filing date (3) Whether the applied-for mark is likely to blur the

distinctiveness of opposer’s famous mark

Research in Motion Ltd. v. Defining Presence Marketing Group, Inc.


Six non-exhaustive factors Section 43(c)(2)(B) (i) Degree of similarity between the marks (ii)Degree of distinctiveness of the famous mark (iii)Extent of plaintiff’s substantially exclusive use of mark (iv)Degree of recognition of the famous mark (v)Intent to create an association with the famous mark (vi)Any actual association between the marks




BLACKBERRY is famous mark Continuous use since 1999 Billions in sales Millions of customers Extensive advertising Unsolicited media attention Ranked among famous brands Household name Important tool “Technology revolution”



BLACKBERRY and CRACKBERRY are similar marks

Goods and Services are related and overlapping

Channels of Trade and Customers are the same


• Section 43(c)(2)(B) of the TDRA :

“[D]ilution by blurring is an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.”

46


Void ab Initio – Sections 1(a) & 45

48

Void ab Initio – Sections 1(a) & 45

49

– “[A] trademark is obtained fraudulently under the

Lanham Act only if the applicant or registrant

knowingly makes a false, material

representation with the intent to deceive the PTO.”

In re Bose, 91 U.S.P.Q.2d 1938 (Fed. Cir. 2009).

51

Grounds - Fraud

• Elements must be pleaded with particularity.

1) Knowingly

2) False statement

3) Material fact

4) Intent to deceive PTO

– Asian & Western Classics B.V. v. Selkow, 92 USPQ2d 1478 (TTAB 2009)

52

Grounds - Fraud

Service of Complaint Issues

• No Service, despite “proof of service”

– Springfield Inc. v. XD, 86 USPQ2d 1063 (TTAB 2008)

• Service, but no “proof of service”

– Schott AG v. L’Wren Scott, 88 USPQ2d 1862 (TTAB

2008)

• Address errors; assignments overlooked

– Ameriprise Financial, Inc. v. Thrivent Financial for

Lutherans, Opp. No. 91181329 (TTAB July 29, 2008)

Service of Complaint Issues

• Service on applicant in opposition, instead of

attorney of record

– Walkaway Canada Inc. v. You Walk Away, LLC,

Opposition. No. 91186426 (TTAB Apr. 29, 2009)

– Chocoladefabriken Lindt & Sprungli AG v. Flores, 91

USPQ2d 1698 (TTAB 2009)

• Service on attorney who filed application, in

cancellation

© 2014 Winthrop & Weinstine, P.A. www.winthrop.com

Navigating Trademark Oppositions and Cancellation

Proceedings at the Trademark Trial and Appeal Board:

The Discovery Process

August 13, 2014

Stephen R. Baird

[email protected]

mailto:[email protected]

© 2012 Winthrop & Weinstine, P.A. www.winthrop.com © 2014 Winthrop & Weinstine, P.A. www.winthrop.com 58

Why Engage in Discovery?

• Ascertain the facts underlying adversary’s case

• Position for settlement

• Position for summary judgment

• Position to add claims/counterclaims

• Position to simplify issues, agree to stipulations

• Consult Chapter 400, TBMP (Official Guide to TTAB Practice)

• June 2014 Edition of TBMP online at USPTO.gov


Mandatory Discovery/Settlement

Conference - - TBMP 401

• Applicable for proceedings commenced after November 1, 2007

• Consult 37 CFR §§1.120(a)(1) & (2) and Fed. R. Civ. P. 26(f)(2)

• Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759 (TTAB 2009) (mere discussion of settlement does not substitute for full discovery conference of subjects set forth in Fed. R. Civ. P. 26 and Board’s institution order)

• Must take place no later than the opening of the discovery period

• Obligation to participate stayed if default, Rule 12 Motion filed, or counterclaims filed

• Board unlikely to extend deadline for discovery conference after answer is filed

• Consider requesting the participation of a Board professional


Initial Disclosures - - TBMP 401

• Cannot seek discovery until after serving initial disclosures

• Cannot move for summary judgment before initial disclosures made

• Not intended to substitute for all discovery

• Intended to allow for prompt routine disclosure of names of potential witnesses and basic information about documents that may be used to support a claim or defense

• Other party’s failure to comply doesn’t stay or suspend your deadline

• Failure to comply may lead to motion to compel and sanctions

• Governed by 37 CFR §2.120(a)(2) & (3) and Fed. R. Civ. P. 26(a)(1)


Scope of Discovery - - TBMP 402

• Non-privileged matter relevant to any party’s claim or defense

• Relevant information need not be admissible if reasonably calculated to lead to the discovery of admissible evidence

• Not limited to discovery of matters specifically raised in pleadings

• Having said that, parties may not engage in “fishing expeditions”

• Right to discovery not unlimited, use common sense

• Increasing focus on proportionality and whether extensive electronically stored information is necessary and justified

• Keep in mind the limited jurisdiction of the Board – right to register

• Consult Fed. R. Civ. P. 26(b)(1) and (2)


Timing of Discovery - - TBMP 403

• Opening of discovery period coincides with discovery conference deadline – scheduled to last 180 days (consented extensions are liberally granted)

• Parties may agree to changes, but Board must approve them

• Written discovery may be served concurrently with Initial Disclosures

• Discovery depositions must be noticed and taken during the discovery period (unless parties stipulate otherwise or Board orders)

• Written discovery may be served up to last day of discovery period

• Mere delay in initiating discovery does not constitute good cause for unconsented extension of discovery period


Discovery Depositions - - TBMP 404

• Generally may be taken by any party, of any adverse party or any relevant non-party (must notice and take before close of discovery)

• Parties should attempt to schedule depositions by agreement instead of deposing party unilaterally setting a deposition date

• Must provide reasonable notice in writing (reasonableness depends on circumstances)

• Need Board’s permission if proposed deposition would result in more than total of ten depositions

• Deposition of party residing outside U.S. must be taken on written questions

• Board will not order deposition of natural person residing outside country to come to U.S. for deposition

• Consult Fed. R. Civ. P. 30(b) (1) & (6)


Interrogatories - - TBMP 405

• May serve interrogatories on party up to last day of discovery period,

even though responses not due until after close of discovery period

• Limited to seventy-five interrogatories, including subparts, absent stipulation allowing more, or motion showing good cause

• On counting subparts toward limit of seventy-five, see TBMP 405.03(d)

• General objection on ground of excessive number is appropriate response, not proper to answer what you consider to be first seventy-five and object to rest

• Although Motion to Compel can be a proper response to general objection, the Board prefers to see parties work out agreement on revised set to avoid motion practice

• Responses due with any objections, thirty days after date of service, signed by party, officer or agent


Document Requests - - TBMP 406

• Subpoena duces tecum appropriate for non-party witnesses

• For document requests of a party, see Fed. R. Civ. P. 34(a) & 26(b)

• No obligation to locate documents not in possession, custody or control

• Party may not mislead its adversary by stating it will produce documents then fail to do so claiming the documents aren’t in possession or control

• Party is not under obligation to create or prepare documents that do not already exist

• Parties are expected to discuss format for ESI production during mandatory discovery conference

• Documents produced in electronically stored form not kept in ordinary course of business must be organized and labeled to correspond to the categories in each request

• Objections and responses due thirty days from service of requests


Requests for Admission - - TBMP 407

• Appropriate subject matter involves requests to admit the truth of

any matters within the scope of Rule 26(b)(1) relating to facts, the application of law to fact, opinions about either, and the genuineness of any described documents

• Consult Fed. R. Civ. P. 36(a) and 26(b)(1)

• Very helpful in identifying those facts that are not in dispute, narrowing issues for trial

• Also may facilitate introduction into evidence documents produced by adversary in response to request for production of documents

• Like document requests, there is no limit on the number of requested admissions

• Unanswered admission requests deemed admitted by operation of law unless failure to timely respond due to excusable neglect or unless Board grants motion to withdraw or amend admissions


Duty to Cooperate, Search Records, and

Supplement Responses - - TBMP 408

• Board expects parties and their counsel to cooperate and looks with extreme

disfavor on those who do not

• Each party and counsel has a duty to make good faith effort to satisfy discovery needs of adversary, and to only seek proper and relevant discovery

• Adversary’s non-compliance with obligations does not excuse compliance of other party

• Moving party must make good faith effort to resolve discovery dispute before Motion to Compel

• Duty exists to thoroughly search records for all information properly sought in discovery request

• Duty exists to supplement or correct discovery disclosure or responses in timely manner

• Delaying too long risks the preclusion sanction in Fed. R. Civ. P. 37(c)(1)


Attacking and Compelling Discovery - -

TBMP 410

• Burden is on party seeking the information to establish why relevant

• Parties must articulate objections to written discovery with particularity

• Failure to timely respond to discovery requests may lead to waiver of right to object to the discovery requests on their merits

• Failure to serve initial disclosures constitutes proper ground for objection to discovery requests

• When requests for discovery constitutes clear harassment, motion for protective order may be needed, if the parties are unable to resolve disagreement


Remedies for Failure to Provide

Disclosures/Discovery - - TBMP 411

• Motion to compel initial disclosures or expert testimony disclosures

must be filed prior to the close of the discovery period, and must precede motion for sanctions

• Motion for sanctions against non-cooperating party who fails to participate in discovery conference need not be preceded by motion to compel

• Possible sanctions include:

– Striking all or part of the pleadings of disobedient party

– Refusing to allow disobedient party to support or oppose claims or defenses

– Drawing adverse inferences against uncooperative party

– Prohibiting disobedient party from introducing designated matters in evidence

– Entering judgment against disobedient party

• No contempt, no award of expenses, no attorney’s fees


Protective Orders - - TBMP 412

• Board’s standard protective order is automatically in place unless

and until Board approves stipulation or motion proposing alternative

• Three tiers of protection to shield confidential and sensitive information from public access under standard protective order:

– Confidential (parties and their attorneys have access)

– Highly Confidential (parties and their attorneys have access)

– Trade Secret/Commercially Sensitive (outside counsel has access)

• Burden falls on party seeking to designate information as protected

• If party fails to designate, the confidentiality is deemed waived

• Designating party has duty to make meaningful effort to designate only that information warranting the designated level of protection


Telephone and Pretrial Conferences - -

TBMP 413

• Board open to resolving discovery-related motions by telephone conference 37 CFR § 1.120(i)(1)

– Motion to Compel

– Motion to Quash

– Motion for Protective Orders

• Allows for expedient resolution of disputes and encourages greater cooperation amongst parties

• Although rarely utilized, the Board can order the parties to meet in person at the Board’s office to resolve complex disputes over disclosures and discovery for a pretrial conference


Frequently Asked Discovery Guideline

Questions - - TBMP 414

• Is identification of discovery documents (as opposed to their substance) privileged or confidential? Answer: NO, must identify them

• Are the classes of customers for a party’s involved goods or services discoverable? Answer: YES, but the names of customers (including dealers) are confidential and not discoverable, even under protective order (unless first use or abandonment at issue)

• Are trademark search reports discoverable? Answer: YES, but the comments or opinions of attorneys relating thereto are privileged and not discoverable (unless privilege is waived)

• Are a party’s plans for expansion discoverable? Answer: YES, under protective order

• Are names and addresses of a party’s officers discoverable? Answer: YES, but if large number exists, need only provide identification of those most knowledgeable of the party’s involved activities


Thank You!

Stephen R. Baird Chair, Intellectual Property

and Trademark Brand Management

Winthrop & Weinstine, P.A. (612) 604-6585

[email protected] www.DuetsBlog.com

mailto:[email protected]


WHAT WE WILL COVER

What to do Before Trial.

Making Fruits of Discovery of Record.

Making Non-Discovery Materials of Record.

The Trial Deposition.

Experts.

Accelerated Case Resolution.

75


WHAT TO DO BEFORE TRIAL

What were Your Pleaded Grounds for Opposition/Cancellation?

What were Your Pleaded Denials/Defenses? – Did Evidence Obtained During Discovery Suggest a

New Ground/Defense?

– Do you need to Amend Your Pleadings?

– Chapman, B. A., Tips from the TTAB: Amending Pleadings: The Right Stuff, 81 TMR 201 (INTA 1991).

Did the Board issue any Useful Discovery Orders during the Discovery Period?

76


Do your Initial Disclosures need Amending? – Fed. R. Civ. P. 26(a)(1)(A)(i) and (ii); 26(e). – Trademark Rules 2.120(a)(1) and (3).

Do your Discovery Responses need Amending? – Fed. R. Civ. P. 26(e), 33, 34, 36. – Trademark Rules 2.120(d)(1), (d)(2) and (h).

Preclusion. – Great Seats, Inc. v. Great Seats, Ltd., 1000 USPQ2d

1323 (TTAB Sept. 21, 2011). – Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239

(TTAB 2012).


77


Pre-Trial Disclosures Fed. R. Civ. P. 26(a)(3).

Trademark Rules 2.121(a) and (e).

Witness(es).

– Name, Tel. No., Address.

– Relationship to the Offering Party, Job Title/Occupation.

– Summary or List of Testimony Topics.

– Summary or List of Materials Used as Testimony Exhibits.

Neither Notice of Reliance Documents nor Use of an Adverse Party’s Discovery Deposition Transcript Need be Disclosed. TBMP § 702.01.

Adequacy of Pretrial Disclosures.

Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370 (TTAB 2011) (discussion of requirements).

Jules Jurgensen/Rhapsody, Inc. v. Baumberger, 91 USPQ2d 1443 (TTAB 2009) (options on motion to strike testimony for inadequate disclosures).


78


Stipulations – Many of the Board’s Technical Requirements can be By-Passed by the Parties’ Written Agreement, filed with and approved by the Board.

– Stipulation to Certain Facts.

– Stipulation to Manner of Introducing Evidence (Documents or Testimony).

– Stipulation to Admissibility of Certain Evidence.

Stipulations should be Considered well before the Opening of Testimony.

– See Ballet Tech Foundation Inc. v. Joyce Theater Foundation Inc., 89 USPQ2d 1262 (TTAB 2008).


79


MAKING THE FRUITS OF

DISCOVERY OF RECORD What is a “Notice of Reliance” ?

– Essentially, it is a transmittal cover sheet type pleading that serves to tell the Board and the adverse party that offering party intends to “rely” on certain self-authenticating types of documentary materials, where introduction by way of a deposition is unnecessary.

– See further explanation at TBMP § 704.02.

– Live Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953 (TTAB 2008)(listing limited categories of materials that may be submitted under Notice of Reliance).

Examples: Interrogatory Answers, Admissions, Discovery Deposition Transcripts and Exhibits.

Examples: Status-and-title copy of party’s registration, official records and printed publications pursuant to Trademark Rule 2.122(e).

80


Interrogatory Answers and Admissions – Notice of Reliance Evidence.

– Trademark Rule 2.120(j).

– Interrogatory Instructions/Definitions, Questions, Answers.

• Need Not (and Should Not) Use All Answers.

• Can Include Documents Made Part of Answer(s).

– Admission Instructions/Definitions, Questions, Responses.

• Admissions and Partial Admissions Only.

• Denials Inadmissible: Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953 (TTAB 2008).

• Need Not (and Should Not) Use All Responses.


DISCOVERY OF RECORD

81


Discovery Deposition Transcripts and Exhibits, and Disclosures of Adverse Party – Notice of Reliance Evidence.

– Trademark Rule 2.120(j).

– Discovery Deposition Transcripts and Exhibits.

• Portions of Transcript and Those Exhibits to be Relied Upon.

• Need Not (and Should Not) Use Entire Transcript or All Exhibits.

– Disclosures.

• Need Not (and Should Not) Use All Disclosed Information.

• Does not include documents disclosed by adversary.


DISCOVERY OF RECORD

82


Adverse Party Can Supplement When Fairness Requires It. – Trademark Rule 2.120(j)(5).

– Explanation for Supplementation Required: Hirga v. Arena, 90 USPQ2d 1102 (TTAB 2009).

Objections to improper Introduction Evidence are Waived if Not Asserted. – L’Oreal v. Marcon, 102 USPQ2d 1434 (TTAB

2012).


DISCOVERY OF RECORD

83


Documents and Document Responses.

– Generally, documents produced by an adverse party through Initial Disclosures or through a Fed. R. Civ. P. 34 document request are not admissible through a Notice of Reliance. Trademark Rule 2.120(j)(3)(ii).

– Exception: Documents provided as part of an interrogatory answer. Trademark Rules 2.120(j)(3)(i) and (j)(5).

– Exception: Documents that qualify as printed publications or official records. Trademark Rule 2.122(e).

– Exception: Documents that the adversary has admitted are authentic. Trademark Rule 2.120(j)(3)(i).

– Exception: Documents that have been marked and discussed during the adversary’s discovery deposition or on cross-examination during the adversary’s testimony deposition.

– Exception: Formal responses stating that the documents called for do not exist. Calypso Tech. Inc. v. Calypso Capital Mgmt. LP, 100 USPQ2d 1213 (TTAB 2011).


DISCOVERY OF RECORD

84


MAKING NON-DISCOVERTY

MATERIALS OF RECORD

The Party’s Registration.

– Attaching Status-and-Title Copy or TESS/TSDR and Assignment Records to Party’s Opening Pleading. Trademark Rule 2.122(d)(1).

– Submitting Status-and-Title Copy or TESS/TSDR and Assignment Records under Notice of Reliance. TBMP § 704.03(b)(1)(A).

– Making Registration of Record during Party’s Testimony Deposition – with testimony as to ownership and active status. Trademark Rule 2.122(d)(2).

– Failure to properly make the plaintiff’s registration of record during the plaintiff’s testimony period can be fatal. See Sterling Jewelers Inc. v. Romance & Co., 110 USPQ2d 1598 (TTAB 2014).

85


Official Records. – Trademark Rule 2.122(e). – “Official Records” mean the records of public offices or

agencies, or records kept in performance of the duty of a public officer.

– See Conde Nast Publs. Inc. v. Vogue Travel, Inc., 205 USPQ 579 (TTAB 1979).

Printed Publications. – Trademark Rule 2.122(e). – “Printed Publications” must be available to the general

public in libraries or of general circulation among the public or the relevant segment of the public.

– See cases collected at TBMP § 704.08(a).


MATERIALS OF RECORD

86


Internet Evidence.

– Must include:

• Date of access and printing.

• Source of Document (URL).

– Notice of Reliance must identify the relevance of the material offered.

– Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d (TTAB 2010).

– For further explanation, see TBMP § 704.08(b).


MATERIALS OF RECORD

87


Judicial Notice.

– Fed. R. Evid. 201.

– Fact must not be subject to reasonable dispute.

• The fact is generally known within the Board’s territorial jurisdiction; or

• The fact is capable of accurate and ready determination by resort to sources whose accuracy cannot be reasonably questioned.

– See TBMP § 704-12(a) collecting cases regarding facts that were and were not subject to judicial notice.

Testimony from Another Proceeding.

– Trademark Rule 2.122(f).

– “Testimony” means trial testimony or a discovery deposition that was used as trial testimony by parties’ agreement in another proceeding.

– Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031 (TTAB 2010).


MATERIALS OF RECORD

88


“Trial” testimony is taken by way of a deposition outside the Board’s presence.

– Objections to testimony and exhibits are “preserved” for later briefing, but not ruled upon until the Board decides the entire case.

Advance preparation of testimony outlines and exhibits is crucial.

– See Trademark Rule 2.123(a) for methods by which Trial Testimony may be taken.

THE TRIAL DISPOSITION

89


THE TRIAL DISPOSITION

Absent stipulation (approved by the Board) to the contrary, a party may only take its testimony depositions during its testimony period(s).

Give reasonable notice of testimony deposition by way of Deposition Notice.

– Trademark Rule 2.123(c).

– Sunrider Corp. v. Raats, 83 USPQ2d 1648 (TTAB 2007) (6 days reasonable).

– Gaudreau v. American Promotional Events, Inc., 82 USPQ2D 1692 (TTAB 2007) (2 days unreasonable).

Securing Unwilling Adverse Party’s or Non-Party’s Deposition.

– In the U.S. - by way of Subpoena.

– Outside the U.S. – by Letters Rogatory or Hague Convention.

– See Discussion at TBMP § 703.01(f).

Take Care on Formatting of Transcript and Exhibits. Trademark Rule 2.123(g).

Unlike a Discovery Deposition, the Entire Testimony Deposition Transcript and Exhibits must be filed with the Board. Trademark Rule 2.125(a).

90


EXPERT WITNESSES

Expert Disclosures due 30 days prior to close of discovery. – Fed. R. Civ. P. 26(a)(2); Trademark Rule 2.120(a).

After Notice to the Board that One Party or Both Parties Intend to Introduce Expert Testimony, the Board will suspend the Remainder of the Proceeding and issue a Schedule for Expert Discovery. – Trademark Rule 2.120(a)(2).

Late Service or Supplementation of Expert Disclosures can Result in Expert’s Testimony being Stricken. – Gemological Inst. of Am., Inc. v. Gemology Headquarters Int'l, LLC,

Opp. No. 91/194,658 (TTAB July 22, 2014).

Re-Designating a Testifying Expert as a Non-Testifying Expert can Shield the Expert from being Deposed. – Ate My Heart, Inc. v. GA GA Jeans Ltd., Opp. No. 91/205,110 (TTAB

July 22, 2014).

91


ACCELERATED CASE RESOLUTION

Shortening or By-Passing the Board’s Procedures. See TBMP § 702.04.

The Summary Judgment Method. – The key stipulation required by the Board is that the parties agree the

Board may decide issues of fact on the record before it.

Mix-and-Match Stipulations ... – … to Certain Facts. – … to Manner of Introducing Evidence. – … to Admissibility of Certain Evidence.

Recent Examples. – Chanel, Inc. v. Makarczyk, 106 USPQ2D 1774 (TTAB 2013). – Conolty v. Conolty O'Connor NYC LLC, 111 USPQ2d 1302 (TTAB 2014).

92


Jonathan Hudis

[email protected]

703. 412. 7047

QUESTIONS?

THANK YOU

93