U.$. P
`
`IN THE UNITED STATES PATENT AND TR. -_ _
`
`8301'!!! TMOIG/TM Mill Rap: on #26
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`InthematterofApplication SerialNo. 76/002,633
`
`Published in the Official Gazette of December 12, 2000
`
`MATTEL, INC,
`
`Opposer,
`
`VS.
`
`GRANNY SAYS, ‘INC.
`
`Applicant.
`
`<flJw'3fU>C0O<¢C03€0J€@%
`
`Opposition No. 121,979
`
`DECLARATION OF APPLICANT’S ATTORNEY, ROBERT L. CHAIKEN, IN
`SUPPORT OF APPLICANT’S RESPONSE TO OPPOSER’S MOTION FOR
`
`PROTECTIVE ORDER
`
`1, Robert L. Chaiken, declare as follows:
`
`I am a Texas resident, over the age of 21, and I have personal knowledge of the
`matters set forth herein and they are true and correct and I am otherwise competent to
`make this affidavit and if asked, would testify to same under oath.
`
`I primarily
`I am duly licensed to practice law in Texas and have been since 1991.
`focus my practice in civil litigation matters involving commercial and personal injury
`disputes.
`I have practiced in a number of jurisdictions across the country and
`frequently practice in both state and federal courts. I have been retained to represent
`Grarmy Says, Inc. in the instant litigation.
`
`I have represented a number of large businesses and multi-national corporations with
`issues related to trade secret, proprietary and confidential information issues. In the
`context of representing these companies I have had occasion to use protective orders
`to govern discovery and the litigation.
`
`I have reviewed the proposed protective order from Mattel, in the instant case and I
`believe it to be adequate without the “Attorney’s Eyes Only” restriction. A standard
`
`Declaration of Robert L. Chaiken - Page 1
`
`

`
`
`
`D)
`
`*5
`
`protective order will govern and will protect Mattel from the dissemination of any
`confidential information.
`
`Without divulging any attorney client privilege or work product information, I
`believe that I will require the complete and unfettered participation and assistance of
`my client to prepare an adequate defense. Without such assistance, the cost of this
`litigation for my client will be increased and the amount of time, effort and energy
`expended by counsel will needlessly be increased as well. I have seen no evidence in
`this dispute that Granny Says, Inc. or its agents or employees would not comply with
`the terms of a standard protective order. Naturally, I would also comply with the
`terms of a standard protective order without the “attorneys eyes only” restriction.
`
`Granny Says, Inc. has already served its discovery responses to Mattel and has
`identified areas therein that it believes will require protection.
`
`Mattel has not served its responses to Granny Says’ discovery requests, but Mattel
`should be made to file its responses before any protective order is entered in the
`instant case.
`
`I declare under penalty of perjury of the laws of the United States that the foregoing is true
`and correct. Executed this
`ff 77" day of October 2001 in Dallas, Texas.
`
`flmciéa
`
`Robert L. Chaiken
`
`Declaration of Robert L. Chaiken - Page 2
`
`

`
`
`
`E
`
`llllllllllllllllllllllllllllllllllllllllllllllllll
`
`1 O-2 6-2001
`US. Patents! TMO1b/TM MI" Rcpt Dt. #26
`
`XRK OFFICE
`
`IN THE UNITED STATE!
`
`BEFORE THE TRADEMARK TRIAL AND At'1'1LAL BOARD
`
`In the matter of Application Serial No. 76/002,633
`Published in the Official Gazette of December 12, 2000
`
`MATTEL, INC,
`
`Opposer,
`
`VS.
`
`GRANNY SAYS, INC.
`
`Applicant.
`
`¢0Ow'>f0>W'JO0D0OOCUJ€0D€0D
`
`Opposition No. 121,979
`
`DECLARATION OF FILMORE CHAIKEN IN SUPPORT OF APPLICANT’S
`
`RESPONSE TO OPPOSER’S MOTION FOR PROTECTIVE ORDER
`
`1, Filmore Chaiken, declare as follows:
`
`I am a resident of the state of Texas. I am over 21 years of age.
`
`I have personal knowledge of the matters stated herein, and if called upon, I could
`testify to them under oath.
`
`For the past ten years I have assisted my wife, Judith Chaiken, in the operation of her
`children’s book and educational toy business.
`
`I am the person who is fully responsible for operating a separate business, Grarmy
`Says, Inc. for my wife, Judith Chaiken.
`
`I am the person who possesses the most factual knowledge concerning the affairs of
`Granny Says, Inc.
`
`I am the only person who handled the filing of the Application for Trademark for
`Granny Says, Inc. that is the subject of the instant litigation, and thus, I am the only
`person who has the full knowledge of the facts related thereto.
`
`Declaration of Filmore Chaiken - Page 1
`
`

`
`
`
`3
`
`Grarmy Says, Inc. produces, markets, distributes and sells only one product. That one
`product is a plush ball that is attached to a bungee cord. A sample of this product has
`already been produced to Mattel in this litigation.
`
`I have reviewed Mattel’s pleadings in the instant case and I have visited and reviewed
`Mattel’s web-site. I have seen the talking toys that they are selling under the “Says”
`marks. Mattel’s products are in no way the same or similar to Granny Says’ sole
`product (a bungee ball).
`
`Granny Says, Inc. does not market, distribute or sell its sole product (a bungee ball)
`in the marketplace wherein Mattel markets, distributes or sells its “Says” family of
`talking toys.
`
`10.
`
`ll.
`
`12.
`
`Grarmy Says, Inc. has had to employ Robert L. Chaiken, of Chaiken & Chaiken, P.C.,
`to provide legal services to prepare and present Granny Says Inc.’s defense against
`the litigation that was initiated by Mattel in the instant case.
`
`I am familiar with the Standard Protective Order (without the “Attomey’s Eyes Only
`provision) and I have no problem complying with such an order.
`
`99
`
`I believe it is necessary that I be permitted to fully participate and assist in the
`preparation and presentation of Granny Says’ defense in the instant case.
`
`I declare under penalty of perjury of the laws of the United States that the foregoing is true
`and correct. Executed this 2 fl: 1‘ day of October 2001 in Dallas, Texas.
`
` Filmore Chai en
`
`Declaration of Filmore Chaiken - Page 2
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL,BOAP"‘
`
`IllllllHIMlllllHlllllllllllllllllllllllllllllll
`
`M
`
`10-26-2001
`”'s- "=‘°"t & TM0vc/TM Mall Rent Dr. was
`
`In the matter of Application Serial No. 76/002,633
`Published in the Official Gazette of December 12, 2000
`
`§ §
`
`§ §
`
`§ Opposition No. 121,979
`§
`
`§ §
`
`§
`
`MATTEL, INC,
`
`Opposer,
`
`vs.
`
`GRANNY SAYS, INC.
`
`Applicant.
`
`APPLICANT GRANNY SAYS, INC.’S RESPONSE TO THE MOTION FOR
`PROTECTIVE ORDER FILED BY OPPOSER, MATTEL, INC.
`
`TO THE ASSISTANT COMMISSIONER FOR TRADEMARKS:
`
`Applicant, Granny Says, lnc., (“Granny Says”) files this, its Response to the Motion for
`
`Protective order filed by Opposer, Mattel, Inc. (“Mattel”) and respectfully shows as follows:
`
`1.
`
`EISIELIMINARY STATEMENT
`
`Mattel has filed a motion seeking the entry of a protective order to govern discovery
`
`in its preferred format, which is for “attorneys eyes only”. Granny Says does not oppose and in fact,
`
`has already consented to the entry of a protective order. However, Grarmy Says opposes the
`
`“attorneys eyes only” limitation, and as set forth below, shows that such a protective order is not
`
`supported by the facts and circumstances of this case.
`
`
`APPLICANT GRANNY SAYS INC.’S RESPONSE TO OPPOSER
`
`MATTEL, INC.’S MOTION FOR PROTECTIVE ORDER
`
`Page 1
`
`

`
`
`’Z
`
`N
`
`2.
`
`MATTEL AND GRANNY SAYS ARE NOT “DIRECT COMPETITORS”
`
`As its primary basis for the special kind of protective order it seeks, Mattel falsely and
`
`misleadingly states that Mattel and Granny Says are “direct competitors”. [See Page 1 of Mattel’s
`
`Motion; Pages 3, 7, and 11 ofMatte1’s Brief; and Paragraph 9, Page 3 of McShane’s Declaration].
`
`Nothing could be further from the truth. Mattel provides no facts, evidence or proof in support of its
`
`false and misleading statement, and Mattel fails to make a prima facie showing that Mattel and
`
`Granny Says are “direct competitors”.
`
`As set forth in the declaration of Filmore Chaiken, Granny Says does not produce, market,
`
`distribute or sell any product that is similar to any product that is produced, marketed, distributed or
`
`sold by Mattel. The products that Mattel produces, markets, distributes and sells under its “Says”
`
`family of marks consist of talking toys. The “Says” family of toys that Mattel advertises on its web-
`
`site are their “Baby Says” toys and “Farmer Says” toys, both talking toys. The only product that
`
`Granny Says produces, markets, distributes or sells is a plush ball that is attached to bungee cord (a
`
`“bungee ball”).
`
`Mattel possesses no right, title or interest in or to Granny Says’ sole product (a ‘bungee ball’).
`
`Granny Says possesses no right to produce, market, distribute or sell any of Mattel’s products, and
`
`Mattel possesses no right to produce, market, distribute or sell Granny Says’ sole product. The
`
`products of the Parties are not even close to being similar so as to constitute direct competition.
`
`Mattel markets its toys in and to the “mass market”. Grarmy Says does not market, distribute
`
`or sell its sole product in the marketplace wherein Mattel markets, distributes or sells its “Says”
`
`family of products. (See Filmore Chaiken’s Declaration)
`
`APPLICANT GRANNY SAYS, INC.’S RESPONSE TO OPPOS‘ER
`
`MATTEL INC.’S MOTION FOR PROTECTIVE ORDER Page 2
`
`

`
`
`
`In Fuller Bros., Inc. v. International Marketing, Inc., 870 F. Supp. 299, 303 (D.Or. 1994) the
`
`Court stated: “Competitors are persons endeavoring to do the same thing and each offering to
`
`perform the act, furnish the merchandise, or render the service better or cheaper than his rival”.
`
`Black’s Law Dictionary, Fifth Edition, p. 257. Since Mattel and Granny Says do not perform the
`
`same act, furnish the same or similar merchandise, or render the same service, they are not “direct
`
`competitors”.
`
`Mattel should not be granted the extraordinary relief it seeks in its Motion for Protective
`
`Order on the mere unsupported allegations and false statement that they are “direct competitors” with
`
`Granny Says.
`
`3.
`
`MATTEL’S MOTION IS BASED ON ITS SPECULATION AND
`
`PRESUMPTION THAT APPLICANT WILL BREACH A STANDARD PROTECTIVE
`
`CONFIDENTIALITY ORDER
`
`The nature of Mattel’s Motion is essentially one for injunctive relief and is based solely on
`
`Mattel’s speculation and presumption that Applicant, Granny Says will breach the terms of a
`
`standard protective order. Mattel repeatedly states in its Motion, Brief and Declarations that
`
`Applicant will breach a standard protective order, and as a direct result, Mattel will suffer irreparable
`
`harm.
`
`Mattel provides no facts, evidence or proof in support of its baseless speculation and
`
`presumptions. Mattel cites no prior conduct or actions that were ever taken by the Applicants, in any
`
`dispute with Mattel or any other Party, that support Matte1’s baseless speculation and presumptions.
`
`That is because there has been no such conduct or actions taken by the Applicant. Mattel should not
`
`be afforded the presumption that the Agreement will be violated by Applicant.
`
`Page 3
`
`
`
`APPLICANT GRANNY SAYS INC.’S RESPONSE TO OPPOSER
`MATTEL INC.’S MOTION FOR PROTECTIVE ORDER
`
`

`
`
`
`
`
`In Madsen v. Women’s Health Ctr. Inc . 1 14 S.Ct. 2516, 2523 (1994), the Court stated: “An
`
`injunction, by its very nature, applies only to a particular group (or individuals) and regulates the
`
`activities, and perhaps the speech, of that group. It does so, however, because of the group’s past
`
`actions in the context of a specific dispute between real parties”.
`
`Mattel’s repeatedly states that it will somehow suffer irreparable harm ifthe injunctive relief
`
`it seeks is not granted. This is simply not true. The threshold test that must be applied concerning
`
`irreparable harm is whether or not the potential harm can be addressed by a legal or equitable remedy
`
`following a trial. If Applicant were to breach a standard protective order, Mattel can sue Applicant
`
`for damages. Therefore, Mattel should be denied the injunctive relief it seeks through its Motion.
`
`4.
`“ATTORNEYS EYES ONLY” PROTECTIVE ORDER WOULD WORK A
`SUBSTANTIAL HARDSHIP ON APPLICANT AND EFFECTIVELY DENY DUE PROCESS V
`
`Opposer, Mattel sued the Applicant, Granny Says in the instant case. Mattel carries the
`
`burden ofproving that it is entitled to receive the relief it seeks. In the interest ofjustice and simple
`
`fairness, Applicant’s right to properly prepare and present its defense should be protected.
`
`On Page 10 of Mattel’s Brief, Mattel states that: “Applicant’s counsel does not need to
`
`discuss Opposer’s confidential commercial information with his parents. Applicant is represented by
`
`competent counsel. .
`
`. .In other words, Applicant’ s counsel does need to confer with Applicant in the
`
`preparation of Applicant’s defense in this case”. (Apparently Mattel meant to say “does {Qt need to
`
`confer with applicant”).
`
`To the contrary, Applicant’s counsel does require the input of Filmore Chaiken and possibly
`
`others affiliated with the company, to assist in the preparation and presentation of Applicant’s
`
`defense in the instant case. (See Declarations of Filmore Chaiken and Robert L. Chaiken).
`
`APPLICANT GRANNY SAYS, INC.’S RESPONSE TO OPPOSER
`MATTEL, INC.’S MOTION FOR PROTECTIVE ORDER
`
`Page 4
`
`

`
`
`
`Moreover, Applicant and its counsel are in a far better position to make this determination than
`
`counsel for Mattel. Filmore Chaiken is the Party who possesses the greatest knowledge of the facts
`
`and information that are required to prepare the Applicant’s defense in the instant case.
`
`It is
`
`imperative for Applicant’s counsel to be able to rely on the clients for information and analysis, and
`
`possibly to serve as experts, in preparing Applicant’s defense.
`
`If Filmore Chaiken or any party
`
`affiliate for that matter,
`
`is precluded or restricted from participating in the preparation and
`
`presentation of Applicant’s defense, the Applicant may be required to employ outside experts, (that
`
`likely are less qualified and less effective), at a substantial additional cost to the Applicant, in order
`
`to properly prepare and present Applicant’s defense.
`
`Mattel states that: “Opposer (Mattel) is the largest toy company in the world”. (See Paragraph
`
`8 on Page 3 of McShane’s Declaration). Mattel’s armual sales for the year 2000 are in excess of
`
`Four and One-half Billion Dollars g$4,669,942,000 ). Granny Says’ annual sales for the year 2000
`
`were approximately Ten Thousand Dollars ($10,000). Mattel is obviously the Party with the
`
`greatest resources and the most money. The granting of an “Attorneys’ Eyes Only” Protective
`
`Order/Confidentiality and Non-Disclosure Agreement would simply invade the process, drive up the
`
`cost to Applicant for outside experts, and grant an unfair advantage to Mattel.
`
`Mattel’s Vice President and Assistant General Counsel (McShane), a Party, whose role is
`
`somewhat unclear, appears to be directing this litigation for Mattel. Since Mattel’s lawyers are also
`
`Parties (at least with respect to McShane), an “Attorneys’ Eyes Only” Order would grant a further
`
`unfair advantage to Mattel. Because it appears that Mattel, by and through McShane, would be able
`
`to see Applicant’s confidential information in the preparation of its case, but Applicant would be
`
`APPLICANT GRANNY SAYS, INC.’S RESPONSE TO OPPOSER
`
`MATTEL INC.’S MOTION FOR PROTECTIVE ORDER Page 5
`
`

`
`
`
`prohibited from reviewing Mattel’s confidential information in order to assist in the preparation and
`
`presentation of its defense to Mattel’s case. This would be patently unfair.
`
`5.
`
`MATTEL’S ARGUMENT REGARDING APPLICANT’S NEED TO
`
`DEMONSTRATE RELEVANCE AND NECESSITY OF INFORMATION IS MOOT
`
`BECAUSE MATTEL HAS FAILED TO RESPOND TO APPLICANT’S DISCOVERY
`
`REQUESTS
`
`Mattel argues at length in its Brief that Applicant must show the relevance and need for the
`
`confidential information it seeks. Mattel’s argument is moot in this regard because Mattel has not
`
`served its responses to Applicant’s discovery requests in the instant case, and thus, Applicant is
`
`precluded from knowing what Mattel objects to fumishing to Applicant. Mattel states in its Motion,
`
`Brief and Declarations that Mattel has responded to App1icant’s discovery responses; subject to its
`
`numerous and various objections. This is false. There has been no such response and Matte1’s
`
`responses and objection are now over due despite two extensions. Of course, Applicant has already
`
`responded to the discovery ofMattel and made its objections regarding confidentiality on the record.
`
`Mattel should be made to answer Applicant’s discovery before the board determines if a blanket
`
`“attorneys eyes only” protective order is appropriate in this case.
`
`Mattel initiated this frivolous litigation, and subsequently served voluminous discovery
`
`requests on the Applicant. Mattel now refuses to respond to Applicant’s legitimate discovery
`
`requests and apparently seeks to avoid disclosing information that Applicant rightfully is entitled to
`
`receive in order to prepare its defense to Mattel’s case. If Mattel did not want to disclose its
`
`supposedly sensitive information, then Mattel should not have initiated this litigation.
`
`APPLICANT GRANNY SAYS, INC.’S RESPONSE TO OPPOSER
`MATTEL, INC.’S MOTION FOR PROTECTIVE ORDER
`
`Page 6
`
`

`
`
`
`In any event the Board should wait until Mattel responds to Applicant’s discovery requests
`
`since the Parties should be on equal footing regarding what Mattel specifically objects to furnishing
`
`and disclosing, and whether that information is relevant and necessary to the Applicant’s defense.
`
`CONCLUSION
`
`Mattel states on Page 10 of its Brief that: “The opposition proceeding involves a relatively
`
`narrow issue .
`
`.
`
`. .the facts of this dispute are not that complex”.
`
`Notwithstanding this lip service, Mattel has already unreasonably and vexatiously multiplied
`
`the proceedings in the instant case so as to cause Applicant, Granny Says to expend substantial legal
`
`costs and expenses to defend against Mattel’s frivolous opposition to Grarmy Says’ Application for
`
`Trademark. Mattel should not be rewarded for such outrageous and reprehensible conduct.
`
`For the reasons stated hereinabove, Mattel’s request for the relief that it seeks through its
`
`Motion For Protective Order should be denied.
`
`Respectfully submitted,
`
`flwzcmg
`
`Robert L. Chaiken
`
`Texas Bar No. 04057830
`
`CHAIKEN & CHAIKEN, P.C.
`
`7515 Greenville Avenue, Suite 806
`
`Dallas, Texas 75231
`
`(214) 265-0250
`Telephone:
`(214) 265-1537
`Telecopier:
`ATTORNEYS FOR APPLICANT
`
`APPLICANT GRANNY SAYS, INC.’S RESPONSE TO OPPOSER
`MATTEL, INC.’S MOTION FOR PROTECTIVE ORDER
`
`Page 7
`
`

`
`
`
`Certificate of Service
`
`This is to certify that a true and correct copy ofthe foregoing instrument has been sent on this
`2;‘/_"‘ day of October, 2001 Via United States Mail to the following:
`
`Box TTAB NO FEE
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Jill M. Pietrini
`
`Mannat, Phelps & Phillips, LLP
`11355 West Olympic Blvd
`
`Los Angeles, Calif
`
`‘a 90064lZ
`
`Robert L. Chaiken
`
`APPLICANT GRANNY SAYS, INC.’S RESPONSE TO OPPOSER
`MATTEL, INC.’S MOTION FOR PROTECTIVE ORDER
`
`Page 8
`
`

`
`
`
`T95
`
`CHAIKEN 8c CHAIKEN, T1{.,<:.
`Attorneys
`, 1 V.
`
`October 24» 2001
`
`’~='
`
`« Aw‘
`
`’WillIll!IIIIIIIIIIIIIIIII/IIIIII/I/IIIIII
`
` &
`Commissioner for Trademarks
`Box TTAB No Fee
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3 513
`
`Re:
`
`Opposition No. 121,979 ; Serial No. 76/002,633
`Mattel, Inc. v. Granny Says, Inc.
`
`Dear Sir or Madam:
`
`U-S. P;
`
`10-26-2001
`.1
`in N‘ mom” M'" "°°'°r- #26
`
`Enclosed please find an Original and two (2) copies of the following:
`
`1.
`
`2.
`
`3.
`
`Applicant, Granny Says, Inc.’s Response To The Motion For Protective Order Filed
`By Opposer, Mattel, Inc.;
`
`Declaration OfApplicant’s Attorney, Robert L. Chaiken, In Support Of Applicant’s
`Response To Opposer’s Motion For Protective Order; and
`
`Declaration Of Filmore Chaiken In Support Of Applicant’s Response To Opposer’s
`Motion For Protective Order.
`-
`'
`
`A copy of this filing is being served on the opposing party as indicated herein.
`
`Should you have any questions, please don’t hesitate to contact the undersigned. Thanking
`you in advance for your assistance, I remain
`
`Very Truly Yours,
`
`Robert L. Chaiken
`
`RLC/iam
`Enclosures
`
`cc:
`
`Ms. Jill M. Pietrini (with encl.)
`
`Manatt, Phelps & Phillips, L.L.P.
`Corporations Trident Center, East Tower
`11355 West Olympic Boulevard
`Los Angeles, CA 90064
`
`7515 Greenville Avenue o Suite 806 0 Dallas, Texas 75231
`
`Phone (214) 265-0250 0 Fax (214) 265-1537
`
`I