throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`M 2900 Crystal Drive
`V
`Arlington, Virginia 22202-3513
`
`MAY 0 8 2002
`
`tww
`
`PAT. & T.M. OFFICE
`
`i1
`
`
`
`115,866
`Opposition No.
`Cancellation Nos. 28,126;
`
`28,127; 28,130; 28,133;
`28,145; 28,155; 28,171;
`28,174; 28,199; 28,248;
`28,280; 28,294; 28,314;
`28,319; 28,325; 28,342 and
`28,379
`
`Prairie Island Indian
`
`Community, Plaintiff
`
`v.
`
`Treasure Island Corporation,
`Defendant
`
`Before Seeherman, Bottorff and Rogers, Administrative
`Trademark Judges.
`
`By the Board:
`
`The following motions are addressed herein by the
`
`Board:
`
`(1) defendant's motion (filed April 25, 2001,
`
`in
`
`Cancellation No. 28,126)
`
`to compel discovery;
`
`(2)
`
`plaintiff's motion (filed July 10, 2001,
`
`in Opposition No.
`
`115,866)
`
`to consolidate the above—referenced opposition and
`
`cancellation proceedings or,
`
`in the alternative,
`
`to suspend
`
`the opposition proceeding pending the outcome of
`
`Cancellation No. 28,126;
`
`(3) plaintiff's motion (filed July
`
`11, 2001,
`
`in Opposition No. 115,866)
`
`to compel discovery and
`
`

`
`=6
`
`Opposition No. 119,866
`
`Cancellation Nos. 28,126 and others
`
`.
`
`(4) defendant's motion (filed October 2, 2001 in
`
`Cancellation No. 28,126)
`
`for discovery sanctions.
`
`The parties have briefed the motions and,
`
`in order to
`
`expedite decision thereon,
`
`the Board presumes familiarity
`
`with the issues presented and does not provide a complete
`
`recitation of the allegations and contentions of each party.
`
`/
`
`Opposition No. 115,866 Consolidated With Cancellation No.
`28,126 (and Previously Consolidated Cancellation
`Proceedings) For Purposes of Trial And Submission of Trial
`Briefs only
`
`We turn first to plaintiff's motion to consolidate
`
`Opposition No. 115,866 with Cancellation No. 28,126 [which
`
`had been previously consolidated with Cancellation Nos.
`
`28,127; 28,130; 28,133; 28,145; 28,155; 28,171; 28,174;
`
`/
`
`28,199; 28,248; 28,280; 28,294; 28,314; 28,319; 28,325;
`
`28,342 and 28,379].
`
`The Board has reviewed the claims and
`
`defenses in the subject opposition and cancellation
`
`proceedings. Because the parties are the same and the
`
`proceedings involve common questions of law or fact, and in
`
`the interest of judicial economy, plaintiff's motion is
`
`approved to the extent that Opposition No. 115,866 and
`
`Cancellation Nos. 28,126; 28,127; 28,130; 28,133; 28,145;
`
`28,155; 28,171; 28,174; 28,199; 28,248; 28,280; 28,294;
`
`28,314; 28,319; 28,325; 28,342 and 28,379 are hereby
`
`consolidated solely for purposes of taking testimony and
`
`

`
`
`
`Opposition No. 119,866
`
`Cancellation Nos. 28,126 and others
`
`.
`
`submission of main briefs,1 and may be presented on the same
`
`record and briefs.
`
`See Fed. R. Civ. P. 42(a).
`
`Discovery had closed in Opposition No. 115,866 as of
`
`April 25, 2001, when defendant filed its motion to compel
`
`in
`
`the consolidated cancellation proceedings, but remained open
`
`in the consolidated cancellations. Therefore,
`
`the Board
`
`will limit any future discovery served by either party to
`
`that which is relevant to the cancellation proceedings. As
`
`set forth below, proceedings herein are resumed and the
`
`deadline for discovery (effective solely for the
`
`cancellation proceedings)
`
`is reset.
`
`The rescheduled
`
`testimony dates are applicable to the opposition and
`
`cancellation proceedings as consolidated.2
`
`Plaintiff's Motion (filed July 11, 2001)
`
`to Compel Discovery
`
`The Board now turns to plaintiff's motion (filed July
`
`11, 2001)
`
`to compel discovery in Opposition No. 115,866.
`
`Specifically, plaintiff seeks an order compelling defendant
`
`to fully respond to Interrogatory Nos.
`
`2 and 4, and Requests
`
`for Production of Documents 1, 2, 8, 9, and 10,
`
`including
`
`the disclosure of information otherwise protected by the
`
`1 The Board file for Opposition No. 115,866 will be maintained
`as the “parent” case, but all papers filed herein must
`include
`the proceeding numbers of the consolidated cases, beginning with
`the opposition proceeding number, and listing the cancellation
`cases in ascending numerical order.
`to suspend the
`2 Plaintiff's motion, filed in the alternative,
`opposition proceeding pending the outcome of Cancellation No.
`28,126,
`is denied.
`
`

`
`
`
`Opposition No. 119,866
`
`Cancellation Nos. 28,126 and others
`
`.
`
`attorney~client privilege. Essentially, plaintiff argues
`
`that defendant, by pleading the affirmative defenses of
`
`laches, acquiescence and estoppel, has waived the attorney-
`
`client privilege,
`
`in part,
`
`regarding information and
`
`documents “that reflect on its decision to adopt and use the
`
`mark TREASURE ISLAND and that, heretofore, have been
`
`withheldm.”
`
`In its opposition to plaintiff's motion to compel,
`
`defendant argues that there is no waiver of any attorney-
`
`client privilege because it has not “put advice of counsel
`
`at issue and does not propose to affirmatively rely on
`
`advice of counsel at trial.” Indeed, our review of the
`
`record does not reveal any attempt by defendant
`
`to utilize
`
`communications between it and counsel
`
`to demonstrate or
`
`support its pleading of the affirmative defenses.
`
`As the court
`
`in Frontier Refining Inc. et al V. German-
`
`Rupp Company, Inc., 136 F.3d 695 <10” Cir. 1998) noted,
`
`there are three general approaches utilized to determine
`
`whether a party has waived the attorney-client privilege as
`
`a result of asserting a claim, counterclaim or affirmative
`
`defense.
`
`The Court described them in the following manner:
`
`The first of these general approaches is the “automatic
`waiver” rule, which provides that a litigant
`automatically waives the privilege upon assertion of a
`claim, counterclaim, or affirmative defense that raises
`as an issue a matter to which otherwise privileged
`
`material is relevant. See Independent Prods. Corp. V.
`Loew's Inc., 22 F.R.D. 266, 276-77 (S.D.N;Y. 1958)
`(originating “automatic waiver” rule); see also FDIC v.
`
`

`
`
`
`Opposition No. 119,866
`
`Cancellation Nos. 28,126 and others
`
`.
`
`Wise, 139 F.R.D. 168, 170-71 (D. Colo. 1991)
`(discussing Independent Productions and “automatic
`waiver” rule). The second set of generalized approaches
`provides that the privilege is waived only when the
`material to be discovered is both relevant to the
`issues raised in the case and either vital or necessary
`
`to the opposing party's defense of the case. See Black
`Panther Party v. Smith, 213 U.S. App. D.C. 67, 661 F.2d
`1243, 1266-68 (D.C. Cir. 1981)
`(balancing need for
`discovery with importance of privilege), vacated
`without opinion, 458 U.S. 1118 (1982); Hearn V. Rhay,
`68 F.R.D. 574, 581 (E.D. Wash. 1975)
`(setting forth
`three—factor test, which includes relevance and
`vitality prongs). Finally, several courts have
`recently concluded that a litigant waives the attorney-
`client privilege if, and only if,
`the litigant directly
`puts the attorney's advice at issue in the litigation.
`See, e.g., Rhone—Poulenc Rorer Inc. v. Home Indem. Co,
`32 F.3d 851, 863-64 (3d Cir. 1994)
`(adopting
`restrictive test and criticizing more liberal views of
`waiver).
`
`Id. at 699-700
`
`As acknowledged in a very recently decided case,
`
`the
`
`Court of Appeals for the Federal Circuit has not “had the
`
`occasion to address whether the pleading of equitable
`
`estoppel and laches defenses constitutes an implicit waiver
`
`of attorney-client privilege.” Chamberlain Group V.
`
`Interlogix, Inc., 2002 U.S. Dist. Lexis 5468 (N.D. Ill.,
`
`March 26, 2OO2).3
`
`The Chamberlain court dealt with a patent
`
`infringement case with facts very similar to those at hand.
`
`The court adopted the third, more narrowly constructed,
`
`implicit waiver rule described above. Specifically,
`
`the
`
`court held that “advice of counsel is not
`
`‘in issue’ because
`
`3 The Board generally looks to the Federal Circuit for guidance
`as it is the Board's primary reviewing court.
`
`

`
`
`
`Opposition No. 11!,866
`
`Cancellation Nos. 28,126 and others
`
`it is relevant,” citing Rhone—Poulenc, id..
`
`The Court
`
`further held that the defendant therein did not “assert
`
`advice of counsel as a defense, and it has not used
`
`attorney—client communications to prove a claim or defense.
`
`Consequently,
`
`[defendant] has not waived the attorney—client
`
`privilege, and its attorney opinions on [plaintifffs]
`
`patents are not discoverable.” Id. at p. 12.
`
`We have reviewed and considered the possible approaches
`
`to determining if defendant's pleading of laches,
`
`acquiescence and estoppel constitute any implicit waiver of
`
`the attorney-client privilege. We find the reasoning of the
`
`courts in Rhone—Poulenc and Chamberlain persuasive and, as
`
`described further below, we herein adopt
`
`the same approach.
`
`In Rhone—Poulenc,
`
`the court held that “the advice of
`
`counsel is placed in issue where the client asserts a claim
`
`or defense, and attempts to prove that claim or defense by
`
`disclosing or describing an attorney-client communication.”
`
`Id. at 864. Or, as the Chamberlain court succinctly put it,
`
`“the mere assertion of equitable estoppel and laches
`
`defenses is insufficient to waive the attorney-client
`
`privilege.” Id. at 15.
`
`Furthermore,
`
`the Chamberlain court
`
`stated that the narrow construction of the implicit waiver
`
`“comports with the basic principles of the attorney client
`
`privilege. When the privilege is waived, it is often
`
`because confidential communications are the only source of
`
`

`
` I
`
`1
`
`Opposition No . 11!, 866
`
`Cancellation Nos. 28,126 and others
`
`evidence on the disputed issue.” Id. citing Pippenger V.
`
`Gruppe, 883 F. Supp. 1201, 1204 (S.D.
`
`Ind. 1994).
`
`In considering the three affirmative defenses pleaded
`
`by defendant,
`
`the Board notes that the acquiescence and
`
`laches defenses do not even contain an element relating to
`
`defendant's conduct but are directed solely to action or
`
`inaction of plaintiff.4
`
`It is not possible therefore to
`
`construe the mere pleading of these defenses as placing at
`
`issue defendant's conduct or state of mind, namely, its
`
`reasons for adopting and using its trademark under the
`
`Rhone—Poulenc approach or, even under the second, more
`
`liberal standard for “at issue” waiver, as enunciated by the
`
`court
`
`in Hearn V. Rhay, 68 F.R.D. 574, 581 (E.D. Wash.
`
`1975). Under either standard,
`
`the defendant has not waived
`
`the attorney-client privilege merely by pleading laches and
`
`acquiescence.
`
`We now look at the third defense of equitable
`
`estoppel.
`
`The elements required to establish equitable
`
`(1) an active
`4 The elements of acquiescence are:
`(2)
`representation that a right or claim would not be asserted;
`the delay between the active representation and assertion of the
`right or claim was not excusable; and (3)
`the delay caused
`the undue prejudice. Hitachi Metals International, Ltd. V.
`Yamakyu Chain Kabushiki Kaisha, 209 USPQ 1057 (TTAB 1981).
`As set forth in Lincoln Logs Ltd. V. Lincoln Pre~Cut Log Homes
`Inc., 971 F.2d 732, 23 USPQ2d 1701 (Fed. Cir. 1992),
`the
`elements of laches are (1) unreasonable delay in assertion of
`one's rights against another; and (2) material prejudice to the
`other attributable to this delay.
`
`

`
`
`
`Opposition No. 119866
`
`Cancellation Nos. 28,126 and others
`
`I
`
`.
`
`estoppel are:
`
`(1) misleading conduct which leads another
`
`to reasonably infer that rights will not be asserted
`
`against it;
`
`(2) reliance upon this conduct; and (3) due to
`
`this reliance, material prejudice if the delayed assertion
`
`of such rights is permitted. Lincoln Logs Ltd. V. Lincoln
`
`Pre~Cut Log Homes Inc., 971 F.2d 732, 23 USPQ2d 1701 (Fed.
`
`Cir. 1992) citing A.C. Aukerman Co. V. R.L. Chaides
`
`Construction Co., 960 F.2d 1020, 22 USPQ2d 1321 (Fed. Cir.
`
`1992).
`
`As stated above, defendant has not attempted to rely
`
`on advice from counsel or any privileged communications
`
`with counsel
`
`to prove the affirmative defense of equitable
`
`estoppel.
`
`In accordance with Rhone-Poulenc and
`
`Chamberlain, we therefore find that there is no implicit
`
`waiver as a result of defendant's merely pleading this
`
`defense.
`
`While laches and acquiescence do not contain an
`
`element
`
`involving defendant's conduct,
`
`the Board notes that
`
`estoppel requires a showing of defendant's reliance upon
`
`plaintiff's conduct. Also, as an affirmative defense,
`
`estoppel is potentially dispositive of this case.
`
`Plaintiff argues that,
`
`in view thereof,
`
`the only possible
`
`recourse for rebutting defendant's assertion of detrimental
`
`reliance is to show that defendant did not rely on
`
`plaintiff's action or inaction but instead relied on the
`
`

`
`
`
`Opposition No. 19866
`
`Cancellation Nos. 28,126 and others
`
`.
`
`advice of counsel. We disagree. As the Chamberlain court
`
`aptly pointed out, a party may “dispute equitable estoppel
`
`by contesting the remaining... prongs of the affirmative
`
`defense.
`
`[Citing Pippenger v. Gruppe, 883 F. Supp. 1201,
`
`1204 (S.D.
`
`Ind. 1994)].
`
`(attorney—client communications are
`
`not
`
`the only source of relevant information; plaintiff
`
`could question defendant on the extent of its reliance on
`
`plaintiff's conduct)."
`
`In View thereof, plaintiff's motion to compel is hereby
`
`denied to the extent that plaintiff seeks privileged
`
`communications regarding defendant's decision to adopt and
`
`use the TREASURE ISLAND mark. Specifically,
`
`the attorney-
`
`client privilege has not been waived with regard.to the
`
`communications identified in plaintiff's motion to compel
`
`(Treasure Island's Corp.’s Privilege Log item nos. 5, 31,
`
`34-37, 53, and 130-137).
`
`Defendant, However, Required to Produce Copy of October 21,
`1991, Thomson & Thomson Search Report
`
`Defendant has stated (footnote 6 on page 17 of its
`
`“opposition to opposer's motion to compel”)
`
`that its failure
`
`to produce an October 21, 1991 Thomson & Thomson trademark
`
`search report is not based on attorney—client privilege or
`
`work product doctrine but rather because it “cannot be
`
`located despite diligent efforts.” Defendant further stated
`
`that it was in the process of contacting Thomson & Thomson
`
`to obtain a copy of the search report and, if successful,
`
`

`
`5
`
`.
`
`Opposition No. 11 ,866
`Cancellation Nos. 28,126 and others
`
`9
`
`0
`
`1
`
`’
`
`would produce a copy for plaintiff.
`
`It is well-established
`
`/
`
`/
`
`:
`
`that search reports are discoverable, but the comments or
`
`opinions of attorneys relating thereto are privileged and
`
`not discoverable (unless the privilege is waived, e.g., as
`
`%
`
`MI
`
`J
`1
`
`j
`
`1
`
`discussed above).
`
`See Fisons Ltd. V. Capability Brown Ltd.,
`
`209 USPQ 167 (TTAB 1980); Goodyear Tire & Rubber Co. V.
`
`Tyrco Industries, 186 USPQ 207 (TTAB 1975); Miles‘
`Laboratories, Inc. V.
`Instrumentation Laboratory, Inc., 185
`
`USPQ 432 (TTAB 1975); and Amerace Corp. v. USM Corp., 183
`USPQ 506 (TTAB 1974).
`,
`
`We trust that defendant by this time has located the
`subject search report or obtained a copy from Thomson &
`Thomson. Defendant is hereby ordered to serve a copy of
`said report to plaintiff within twenty (20) days from the
`
`dated stamped on this order.
`
`If defendant has failed to
`
`locate or obtain a copy of the search report, defendant
`
`should file with the Board a detailed report
`
`(within the
`
`same 20 day time period) specifying all efforts to find the
`
`report,
`
`including a listing of files searched, personnel
`
`conducting the search(es), and dates/hours spent searching
`
`for the report, as well as a report on the effort to obtain
`
`a copy from Thomson & Thomson.
`
`Defendant's Motion to Compel Discovery
`
`We now turn to defendant's motion (filed April 25,
`
`2001,
`
`in Cancellation No. 28,126)
`
`to compel discovery in
`
`10
`
`

`
`
`
`Opposition No. 19,866
`
`Cancellation Nos. 28,126 and others
`
`D
`
`’
`
`that case. Defendant is moving to compel production of
`
`copies, without redactions, of all correspondence “from or
`
`to Merchant & Gould (plaintiff's former counsel)
`
`regarding
`
`the TREASURE ISLAND mark.” Defendant asserts that plaintiff
`
`has waived any attorney—client privilege to these documents
`
`as a result of its voluntarily producing (in response to
`
`defendant's discovery requests)
`
`two letters (dated April 15,
`
`1992, and April 22, 1992), with redactions,
`
`from Merchant
`
`&
`
`Gould to plaintiff's former general manager regarding the
`
`TREASURE ISLAND mark. 5
`
`1
`
`Plaintiff acknowledges that it voluntarily produced the
`two letters, with redactions, but argues that it waived the
`
`attorney—client privilege only as to “the subject matter of
`
`the disclosed communications ~ the registrabiliby of
`
`Plaintiff's mark in 1992.” Likewise, plaintiffgargues that
`
`the redacted portions of the two letters and other documents
`
`sought by defendant are protected by the attorney-client
`privilege.
`Thus,
`the issue before the Board now is not
`
`whether plaintiff waived its attorney-client privilege,
`
`which has been conceded, but the scope of the waiver.
`
`5 The Board notes that only the holder of the attorney-client
`privilege (the client) may waive the attorney-client privilege.
`McCormick On Evidence,
`§ 93, at 341 (John William Strong, ed.,
`West Publishing)
`(1992). However,
`the privilege is waived if
`the privilege holder/client voluntarily discloses or consents to
`disclosure of any privileged communications. See; e.g.,
`In re
`Von Bulow, 828 F.2d 94, 101 (2d Cir. 1987).
`In this case,
`the
`client (Prairie Island) waived its privilege by consenting to
`the production of the two letters and by discussing them during
`I
`the contemporaneous discovery deposition.
`
`ll
`
`

`
`
`
`Opposition No.‘ 11,866
`
`Cancellation Nos. 28,126 and others
`
`“
`
`The voluntary waiver by a party, without limitation, of
`
`one or more privileged documents discussing a certain
`
`subject waives the privilege as to all communications
`
`between the same attorney and the same client on the same
`
`subject.
`
`The authorities for this general rule are
`
`numerous.
`
`See e.g., Weil v.
`
`Investment/Indicators, Research
`
`& Management, 647 F.2d 18, 24 (9th Cir. 1981) and” in
`
`general,
`
`4 Moore's Federal Practice fl26.60[2], page 26-201-
`
`202 (1989).
`
`I
`
`Plaintiff has submitted the two aforementioned
`
`redacted letters, without redactions, and six other letters
`
`for in camera inspection. Plaintiff argues thatythe six
`
`additional letters are protected by the attorneyéclient
`
`privilege.6 In order to determine the scope of the waiver
`
`of the attorney-client privilege,
`
`the Board has reviewed
`
`the two letters voluntarily disclosed by plaintiff (through
`
`its former counsel).
`
`These letters, and the others
`
`produced in briefing the motion to compel, arefidiscussed
`
`separately below.
`
`I
`
`J1
`
`6 In plaintiff's response to the motion to compel, it states
`that it is submitting for in camera inspection seven additional
`letters which it believes are protected by the attorney—client
`privilege. However,
`the Board received copies of only six
`additional letters.
`It appears from page 3 of plaintiff's
`response that communications numbered “4” and “7? are the same
`document.
`3
`
`i
`
`12
`
`

`
`
`
`Opposition No . 11!, 866
`
`Cancellation Nos. 28,126 and others
`
`& Gould tov
`(1) April 15, 1992 Letter From Merchant
`Mr. Ronald Valentine [Exhibit A-1 of Plaintiff's Response]
`
`As stated in the first paragraph (unredacted) of this
`
`letter, one subject discussed in the letter involves
`
`plaintiff's former counsel's providing its “reviewiof the
`
`trademark availability search results.” Plaintiff
`
`voluntarily produced unredacted portions of this letter
`which discussed certain marks, e.g.,
`the “Netherlands
`
`Antilles mark”, but redacted portions of the letthr which
`
`discussed other marks.
`
`Inasmuch as the subject matter of
`
`the entire first two pages of the letter involves1
`
`discussion of the trademark search results, plaintiff has
`
`waived any attorney~client privilege to the contents of the
`
`first two pages.
`
`The first two paragraphs of page three of the letter
`
`contain plaintiff's counsel's discussion of matters
`
`unrelated to the trademark search results, andjthus do not
`I
`
`fall within the scope of the waived subject matter. _It is
`I
`
`noted that plaintiff did not redact the last paragraph of
`1
`
`the third page.
`
`;
`
`(2) April 22, 1992 Letter From Merchant & Gouid to
`Mr. Ronald Valentine [Exhibit A-2 of Plaintiff's Response]
`__j__________
`I
`The unredacted portions of this letter (first two
`
`sentences of first paragraph on page one and khe last
`
`paragraph on page two) contain information id the following
`
`13
`
`

`
`
`
`Opposition No. 11!,866
`
`Cancellation Nos. 28,126 and others
`
`;
`
`'
`
`subject areas: plaintiff’s counsel's request for
`
`plaintiff's dates of first use; plaintiff's intentflon to
`
`initiate an advertising campaign; and plaintiff's intention
`4
`
`of filing for “state service mark registrations.” jThus
`
`plaintiff has voluntarily waived any attorney—cliehtJ
`
`privilege that may have otherwise protected commudications
`
`and/or documents discussing these subjects.
`
`;
`
`Inasmuch as the last sentence of the first paragraph on
`{
`
`page one contains information regarding plaintiffVs expenses
`
`involved with filing for state registrations, itfis a
`I
`
`distinct subject and has no possible relevance to any
`
`substantive issue.
`
`,/
`
`However,
`issues, i.e.,
`
`the second paragraph on page one ibvolves
`the federal registration search add possible
`
`conflicts, which fall within the scope of subject areas for
`
`which plaintiff has waived its attorney—client privilege.
`1
`
`The Board thus finds that plaintiff has also waived any
`
`attorney-client privilege that may have protected this
`9
`
`paragraph.
`
`I
`I
`to the extent that defendant's motion to
`I
`compel seeks production of this document, it #5 hereby
`
`Consequently,
`
`granted in part and denied in part; specifically, plaintiff
`I
`
`is hereby ordered to produce another copy of this letter
`'
`i
`which does not redact the second paragraph ongpage one.
`
`i
`
`I
`
`14
`
`

`
`
`
`Opposition No. 129866
`
`
`
`.
`
`;
`3"
`
`Cancellation Nos. 28,126 and others
`
`Plaintiff may continue to redact the last sentence of the
`
`first paragraph on page one.
`
`& Gould toj
`(3) April 22, 1992 Letter From Merchant
`Foote Marketing Group [Exhibit A~3 of Plaintiff's Response]
`
`Inasmuch as this letter involves issues that fall
`1
`
`within the scope of subject areas for which plaintfiff has
`
`waived its attorney~client privilege,
`
`the Board finds that
`
`plaintiff has waived any attorney—client privilege that may
`
`have protected this letter. Consequently,
`
`to thegextent
`I
`
`that defendant's motion to compel seeks production of this
`
`document, it is hereby granted and plaintiff is drdered to
`I
`produce an unredacted copy of this letter to defendant for
`I
`
`copying and/or inspection.
`
`51
`
`(4) May 13, 1992 Letter From Merchant & Gould tof
`Foote Marketing Group [Exhibit A-4 of Plaintiff’b Response]
`
`Inasmuch as this letter involves issues that fall
`9
`within the scope of subject areas as to which plaintiff has
`I
`
`waived its attorney—client privilege,
`
`the Boardffinds that
`f
`plaintiff has waived any attorney—client privilpge that may
`
`have protected this letter. Consequently,
`
`to fihe extent
`
`that defendant's motion to compel seeks production of this
`
`document, it is hereby granted and plaintiff is ordered to
`
`produce an unredacted copy of this letter to defendant for
`I
`
`‘copying and/or inspection.
`
`4I
`z
`
`I
`
`15
`
`

`
`
`
`Opposition No. 11’, 866
`
`Cancellation Nos. 28,126 and others
`
`‘
`
`1"
`
`& Gould to
`(5) March 5, 1992 Letter From Merchant
`Plaintiff [Exhibit Ar5 of Plaintiff's Response]
`
`Inasmuch as this letter does not
`
`involves issues that
`
`fall within the scope of subject areas as to whichiplaintiff
`
`the Board finds
`has waived its attorney—client privilege,
`1
`that plaintiff has not waived its attorney—client privilege
`[
`
`in relation to this letter. Consequently,
`
`to thejextent
`'\1
`
`that defendant's motion to compel seeks production of this
`
`document, it is hereby denied.
`
`1
`
`(6) March 5, 1992 Letter From William Hardacker tb
`Merchant
`& Gould [Exhibit Ar6 of Plaintiff's Resppnse]
`
`Inasmuch as this letter does not
`
`involves issue(s)
`
`that
`
`fall within the scope of subject areas as to whiéh plaintiff
`has waived its attorney-client privilege,
`the Board finds
`that plaintiff has not waived its attorney-clienfi privilege
`in relation to this letter. Consequently,
`to tqe extent
`that defendant's motion to compel seeks production of this
`1
`1
`
`document, it is hereby denied.
`
`& Gould to
`(7) November 21, 1996 Letter From Merchant
`Plaintiff [Exhibit Ar7 of Plaintiff's Responsefl
`Inasmuch as this letter involves issues tflat fall
`41
`
`within the scope of subject areas as to which plaintiff has
`
`waived its attorney-client privilege,
`
`the Board finds that
`
`plaintiff has waived any attorney—client privifiege that may
`
`JI
`
`have protected this letter. Consequently,
`
`to/the extent
`1
`
`that defendant's motion to compel seeks production of this
`
`document, it is hereby granted and plaintiff is ordered to
`
`16
`
`

`
`
`
`Opposition No. 129866
`
`Cancellation Nos. 28,126 and others
`
`.
`
`produce an unredacted copy of this letter to defendant for
`I
`
`copying and/or inspection.
`
`& Gould to
`(8) September 13, 1996 Letter From Merchant
`;1 Plaintiff [Exhibit A-8 of Plaintiff's Response]
`
`
`Inasmuch as this letter involves issues that fall
`I
`
`within the scope of subject areas as to which plaihtiff has
`
`waived its attorney~client privilege,
`the Board finds that
`plaintiff has waived any attorney~client privilege that may
`
`have protected this letter. Consequently,
`
`to the extent
`
`that defendant's motion to compel seeks production of this
`II
`
`document, it is hereby granted and plaintiff is ordered to
`I
`
`produce an unredacted copy of this letter to defendant for
`
`copying and/or inspection.
`
`Defendant's Motion For Discovery Sanctions
`
`Defendant filed (on October 2, 2001)
`
`a motion for
`
`discovery sanctions based on plaintiff's “violations of the
`
`Board's April 17, 2001 order compelling plaintiff to serve
`
`amended discovery responses and produce documents.”
`I
`
`Defendant requests the Board to impose sanctions “deeming
`'
`I
`established [defendant's] prima facie showing df its
`1
`
`defenses based on laches, estoppel and waiver.”
`i
`
`Inasmuch as the Board's order did not specify a
`I
`
`deadline for compliance with the order, defendant's motion
`
`is hereby denied.7 However,
`
`to the extent that plaintiff
`
`7 Despite the neglect of the Board in not settind a deadline for
`compliance with the April 17, 2001 order,
`for which reason
`
`17
`
`

`
`
`
`Opposition No. 11!,866
`
`Cancellation Nos. 28,126 and others
`
`.
`
`I
`
`;
`
`has not complied with the April 17, 2001, order, itiis(
`
`hereby ordered to comply within thirty (30) days fnom the
`II4
`
`mailing date stamped on this order.
`
`3
`
`i
`I
`(1) defendant's motion (filed Aprfil 25,
`
`(I
`
`Summary
`
`In summary,
`
`2001,
`
`in Cancellation No. 28,126)
`
`to compel discovery is
`
`granted in part and denied in part
`
`(as explained herein);
`
`(2) plaintiff's motion (filed July 10, 2001,
`
`in Opposition
`
`No. 115,866)
`
`to consolidate the above-referenced opposition
`
`and cancellation proceedings is granted;
`
`(3) plaintiff's
`
`motion (filed July 11, 2001,
`
`in Opposition No. 115,866)
`
`to
`
`compel discovery is denied to the extent that the attorney-
`
`client privilege has not been waived by defendant with
`
`regard to the communications identified in plaidtiff’s
`
`motion to compel; however, plaintiff's motion to compel is
`
`granted to the extent that defendant is hereby ordered to
`1
`produce the search report for inspection and/or copying by
`
`plaintiff within thirty (30) days from the date stamped on
`
`this order; and (4) defendant's motion (filed October 2,
`I
`)1
`
`for discovery sanctions is denied.
`
`2001)
`
`I
`
`the Board is nod impressed with
`sanctions are not being entered,
`plaintiff's reasons for failing to comply in a timely manner.
`Certainly plaintiff should have attempted to comply with the
`order as if the relevant discovery requests were being served on
`that date, i.e., plaintiff should have respondedlwithin thirty
`days from the date of the order.
`
`1 I
`
`18
`
`I
`f
`
`

`
`
`
`Opposition No . 11!, 866
`
`Ln’
`
`Cancellation Nos. 28,126 and others
`
`Proceedings Resumed
`
`.
`
`f
`
`.
`
`Proceedings herein are resumed and trial dates,
`
`including the close of discovery (only for the cancellation
`
`proceedings), are reset as follows:
`
`5
`
`THE PERIOD FOR DISCOVERY IN
`
`OPPOSITION NO. 115,866 TO CLOSE:
`
`CLOSED
`
`THE PERIOD FOR DISCOVERY IN
`
`CANCELLATION NOS. 28,126; 28,127;
`
`28,130; 28,133; 28,145; 28,155;
`28,171; 28,174; 28,199; 28,248;
`28,280; 28,294; 28,314; 28,319;
`28,325; 28,342 and 28,379 TO CLOSE:
`
`June 11, 2002
`f
`
`30-day testimony period for party in
`position of plaintiff to close:
`
`September(9, 2002
`
`30-day testimony period for party in
`position of defendant
`to close:
`
`November 23, 2002
`
`15-day rebuttal testimony period for
`plaintiff to close:
`
`December 23, 2002
`
`In each instance,
`
`a copy of the transcript of testimony
`
`together with copies of documentary exhibits, must be served
`
`on the adverse party within thirty days after completion of
`1
`
`the taking of testimony.
`
`Trademark Rule 2.125.
`
`Briefs shall be filed in accordance with Tredemark Rule
`
`2.128(a) and (b).
`
`5
`
`An oral hearing will be set only upon request filed as
`
`provided by Trademark Rule 2.129.
`
`19

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket