IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`’, ..«/I
`
`/7
`
`g O
`
`8-1 9-2003
`
`u.s. Patent a. TMOfcITM Mail Rep! 0:. #22
`
`the Matter of Trademark Application
`In
`Serial No. 75/789,080
`
`RMV CELLARS, LLC
`
`Opposer,
`
`-v-
`
`Opposition No. 91151893
`
`CALONA WINES LTD
`
`Applicant.
`
`
`CONSENTED TO MOTION FOR EXTENSION OF DEADLINES
`
`Opposer, RMV Cellars, LLC, respectfully moves for an extension of the testimony
`
`deadlines for 90 days, as follows:
`
`30-day testimony period for party in
`position of plaintiff to close
`
`November 26,2003
`
`30-day testimony period for party in
`position of defendant to close
`
`January 25,2004
`
`15-day rebuttal period for party in the
`position of plaintiff to close
`
`March 9, 2004
`
`The requested extension is not for the purposes of mere delay. Opposer has
`
`submitted a motion for leave to amend the notice of opposition and to reopen discovery
`
`on limited issues. The parties wish to conserve resources and await the taking o
`
`testimony until
`
`the parties learn of the Board’s decision on that motion.
`
`Chuck
`
`McClung, counsel for Applicant, has consented to this motion and the requested
`
`extension in a telephone conversation on August 11, 2003.
`
`CONSENTED TO MOTION FOR EXTENSION OF DEADLINES --1
`
`KURT M- RYLANDER TRIAL AND
`PATENT ATTORNEY AT LAW PC
`1014 FRANKLIN STREET, surrs 206
`VANCOUVER, WA 98660
`360.750.9931
`
`
`
`>..»¢_=.._~'_=-:.-r::_,«.,,.,..
`
`

`
`I43:;:;}:)ll_.
`
`WHEREFORE, the Board should grant Opposer’s consented to motion.
`
`DATED THIS August 14, 2003
`
`Respectfully submitted,
`
`
`
`ER, Reg. No. 43,897
`RT M. RYLA
`1014 Franklin Street,
`' e 206
`Vancouver, WA 98660
`(360) 750-9931
`Attorney for Opposer
`
`/
`
`CERTIFICATE OF SERVICE TO APPLICANT
`
`I HEREBY CERTIFY that on the date signed below I insene Iope
`containing the document to which this certificate I
`. ached into
`e’ .
`. Mails, first
`class, postage gre-paid, addressed to the .
`a ney of reco e
`-7’ the Applicant, Chuck
`McClung, Chernoff Vilhauer McC|ung I
`tenzel, L.L .
`-0-
`2nd Ave, 1600 ODS
`Tower, Portland, Oregon 97204 an y facsimile to (
`
`I
`
`DATED August 14, 2003
`
`Certificate of Mailing
`
`I hereb
`certify that on the date signed below the
`origi
`. and two copies of the document to which this
`certification is attached is being deposited with the
`United States Post
`-- ' -
`:. first cla
`mail
`in an
`
`
`envelope oe ssed to BOX ‘I: 0 FE Assistant
`Com ' loner for Trademark , T .2‘
`ark Trial and
`-
`2- Drive, Arlington, VA
`
`
`
`
`
`
` _j__
`
`CONSENTED TO MOTION FOR EXTENSION OF DEADLINES --2
`
`KURT M. RYLANDER TRIAL AND
`PATENT ATTORNEY AT LAW PC
`1014 FRANKLIN STREET, SUITE 206
`VANCOUVER, WA 98660
`360.750.9931
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Do. No. RMVO3
`
`In the matter of trademark application Serial No. 75/789,080
`Filed August 31, 1999
`For the mark SANDHILL
`
`Class: 33
`Published in the Official Gazette at TM 481 on January 8, 2002
`
`Opposition No. 91151893
`
`REDACTED PUBLIC VERSION OF
`DOCUMENT FILED UNDER
`PROTECTIVE ORDER
`
`
`
`CALONA WINES LTD
`
`Applicant.
`
`RMV CELLARS, LLC
`
`Opposer,
`
`_V-
`
`(Proposed ) FIRsT AMENDED NOTICE OF OPPOSITION
`
`1.
`
`RMV CELLARS, LLC, a Washington limited liability company having its
`
`principal place of business at 2830 S. Cornett Drive, Ridgefield, WA 98642, United
`
`States (hereinafter “Opposer”), believes that it is damaged by registration of the mark
`
`SANDHILL that is the subject of U.S. Trademark Application Serial No. 75/789,080
`
`(hereinafter ‘"080 application”) for wines,
`
`in Class 33, by CALONA WINES LTD., a
`
`Canadian corporation having an address at 1125 Richter Street Kelowna, British
`
`Columbia CANADA VIY 2K6 (hereinafter "Applicant"). The ’080 application was filed
`
`August 31, 1999, and published for opposition on January 8, 2002 at TM 481, Official
`
`Gazette of the United States Patent and Trademark Office. Opposer hereby opposes
`
`registration of the SANDHILL mark as described in the ’080 application.
`
`FIRST AMENDED NOTICE OF OPPOSITION -1
`
`KURT M- RYLANDER TRIAL AND
`PATENT ATTORNEY AT LAW PC
`1014 FRANKLIN STREET. SUITE 206
`VANCOUVER, WA 98660
`360.750.9931
`
`

`
`\>
`
`2.
`
`The Opposition fee was filed with the original Notice of Opposition.
`
`As the first ground for opposition, Opposer alleges as follows:
`
`3.
`
`Opposer owns and has not abandoned the mark SANDHILL WINERY
`
`for wines, and Applicant’s mark SANDHILL so resembles Opposer’s mark SANDHILL
`
`WINERY as to be likely, when used on or in connection with the goods or services of
`
`the Applicant, to cause confusion, mistake or deception.
`
`As second, alternative, grounds for opposition, Opposer alleges as follows:
`
`4.
`
`Opposer is
`
`informed and believes and on that basis alleges that
`
`Applicant is not the owner of the '08O application
`
`5.
`
`6.
`
`7.
`
`[REDACTED].
`
`.[REDACTED]
`
`[REDACTED].
`
`As third, alternative, grounds for opposition, Opposer alleges as follows:
`
`8.
`
`Opposer is informed and believes and on that basis alleges that Opposer,
`
`since prior to Applicant’s filing date or any date of first use upon which Applicant can
`
`rely, has used and not abandoned the mark SANDHILL WINERY for wines;
`
`that
`
`Applicant’s mark SANDHILL so resembles Opposer’s previously used mark SANDHILL
`
`WINERY as to be likely, when used on or in connection with the goods or services of
`
`the Applicant,
`
`to cause confusion, mistake or deception, and thus is not entitled to
`
`registration pursuant to Section 2(d) of the Trademark Act.
`
`FIRST AMENDED NOTICE OF OPPOSITION -2
`
`KURT M. RYLANDER TRIAL AND
`PATENT ATTORNEY AT LAW PC
`1014 FRANKLIN STREET, sum: 206
`VANCOUVER, WA 98660
`360.750.9931
`
`

`
`As a fourth, alternative, grounds for opposition, Opposer alleges as follows:
`
`9.
`
`Based on the foregoing allegations, Applicant
`
`is not the real party in
`
`interest for the ‘O80 Application, and does not have standing to pursue the ‘080
`
`Application.
`
`As fifth, alternative, grounds for opposition, Opposer alleges as follows:
`
`10.
`
`Based on the foregoing allegations, Applicant has abandoned the ‘080
`
`Application.
`
`As sixth, alternative, grounds for opposition, Opposer alleges as follows:
`
`11.
`
`Based on the foregoing allegations, Applicant has voided its rights to the
`
`mark SANDHILL by violation of the Anti-Assignment in Gross rule.
`
`WHEREFORE, Opposer prays that
`
`this opposition is sustained and that
`
`registration to the Applicant is refused.
`
`Respectfully submi
`
`
`
`
`
`K
`
`T M. RYLANDER, Reg. No. 43,897
`14 Franklin Street, Suite 206
`Vancouver, WA 98660
`(360) 750-9931
`Attorneys for Opposer
`
`
`
`FIRST AMENDED NOTICE OF OPPOSITION -3
`
`KURT M- RYLANDER TR|AL AND
`PATENT ATTORNEY AT LAW Pc
`1014 FRANKUN STREET, SUITE 206
`VANCOUVER, WA 98660
`360.750.9931
`
`

`
`‘E;
`
`CERTIFICATE OF SERVICE TO APPLICANT
`
`class, postage gre-gaid, addressed to the attorn
`
`McCIung, Chernoff Vilhauer McC|ung & Sten -
`, L.L.P., 60
`ile to (503
`Tower, Portland, Oregon 97204 and by fac '
`
`
`
`
`
`
`
`original and two copies of the document to w
`
`
`certification is attached is being deposi -- with the
`
`
`
`FIRST AMENDED NOTICE OF OPPOSITION --4
`
`KURT M. RYLANDER TRIAL AND
`PATENT ATTORNEY AT LAW PC
`1014 FRANKLIN STREET, sum: 206
`VANCOUVER, WA 98660
`360.750.9931
`
`

`
`
`-"1.7
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`the Matter of Trademark Application
`In
`Serial No. 75/789,080
`
`Opposition No. 91151893
`
`RMV CELLARS, LLC
`
`Opposer,
`
`-v-
`
`CALONA WINES LTD
`
`
`
`Applicant.
`
`OPPOSER’S MOTION FOR LEAVE
`
`TO AMEND NOTICE OF OPPOSITION
`AND TO REOPEN DISCOVERY AND
`MEMORANDUM IN SUPPORT
`THEREOF
`
`REDACTED PUBLIC VERSION OF
`DOCUMENT FILED PURSUANT TO
`PROTECTIVE ORDER
`
`MOTION
`
`Opposer, RMV Cellars, LLC (“”RMV Cellars”), moves the Board for leave to
`
`amend its Notice of Opposition, and to reopen discovery, pursuant to TBMP 322, 400 _e_t
`
`_s_eg, 507 e_t - 37 CFR § 2.107, and Rules 15 and 26 of the Federal Rules of
`
`Procedure. RMV Cellars seeks to amend its Notice of Opposition to remove the original
`
`Second, Fourth, and Fifth Grounds of Opposition, and insert new Second, Fourth, and
`
`Fifth Grounds, and add a Sixth Ground, and to conduct discovery thereon. This motion
`
`is necessitated by the surprising discovery responses first produced by the Applicant on
`
`June 23, 2003 under the auspices of the protective order Applicant demanded.
`
`Certificate of Mailing
`
`I hereby certify that on the date signed below the
`original and two copies of the document to wh'
`this
`certification is attached is being deposited
`
`'
`
`United States Postal Service as first clas
`
`AVE TO AMEND NOTICE OF OPPOSITION
`OPPOSER’S MOTION FOR
`AND TO REOPEN DISC 0 ERY AND MEMORANDUM IN SUPPORT
`THEREOF—1
`
`KURT M. RYLANDER TRIAL AND
`PATENT ATTORNEY AT LAW PC
`1014 FRANKLIN STREET, suns 206
`VANCOUVER, WA 98660
`360.750.9931
`
`

`
`‘u
`
`Concurrently filed with this motion is a proposed First Amended Notice of
`
`Opposition. This motion is supported by exhibits attached hereto.
`
`WHEREFOR RMV Cellars seeks leave to amend the Notice of Opposition, file
`
`the First Amended Notice of Opposition, and to conduct discovery thereon.
`
`MEMORANDUM OF POINTS AND AUTHORITIES
`
`Opposer learned on June 23, 2003, under the auspices of the protective order
`
`that Applicant had demanded, that [REDACTED]. The information in that discovery
`
`response was not known prior to its receipt. Applicant had refused to provide the
`
`information until a protective order was filed. On July 1, 2003, less than 10 days after
`
`receiving the subject discovery responses, Opposer transmitted the amended notice, in
`
`legislative drafting mode, to Applicant’s counsel. Applicant responded on July 17, 2003
`
`that it would oppose any amendments.
`
`Opposer specifically seeks to amend its Notice of Opposition to remove the
`
`original Second, Fourth, and Fifth Grounds of Opposition, and insert new Second,
`
`Fourth, and Fifth Grounds, and add a Sixth Ground. The added and new counts are all
`
`based on the discovery responses first received from Applicant on June 23, 2003.‘
`
`A.
`
`BACKGROUND
`
`RMV Cellars is a U.S. based vineyard and wine seller with a significant
`
`reputation.
`
`RMV Cellars’ SANDHILL WINERY 1999 Cabernet Sauvignon, Red
`
`Mountain, was selected as one of the Top 100 wines in the World. Applicant is a
`
`Canada based vineyard and wine seller. RMV Cellars applied on July 6, 2001, for the
`
`mark SANDHILL WINERY for labels on its wines. Calona applied in Canada on March
`
`
`
`1 The removals are all based on the normal discovery, and opposing counsel was notified on or
`before May 15, 2003 that the Opposer would seek to strike those counts.
`OPPOSER’S MOTION FOR LEAVE TO AMEND NOTICE OF OPPOSITION
`KURT M- RY‘-ANDER TR'AL AND
`AND TO REOPEN DISCOVERY AND MEMORANDUM IN SUPPORT
`PATENT ATT°R"EY AT LAW PC
`1014 FRANKLIN STREET, sum: 206
`THERE°F"2
`VANCOUVER, WA 98660
`360.750.9931
`
`

`
`8, 1999, as an intent-to-use application, for the mark SANDHILL for its wines, and filed
`
`its U.S. intent-to-use application on August 31, 1999. RMV Cellars first used its mark in
`
`commerce in the United States prior to March 8, 1999.
`
`Wine is a product that can be marketed and promoted but not sold until properly
`
`vintaged. Until vineyards mature to produce full yields of grapes for pressing, and until
`
`the pressed wine has been sufficiently aged and bottled for consumption, wine is of a
`
`nature as to make placement of its mark on the containers or the displays associated
`
`therewith or on the tags or labels affixed thereto impracticable.
`
`RMV Cellars’ first vintage, the 1997 vintage,
`
`is the fruit of vineyards planted in
`
`1989 through 1996, and growing from 1992 through 1999, at which time the vineyards
`
`became mature enough to produce a vintage.
`
`In anticipation of the marketing, sales, and distribution of the 1997 vintage, the
`
`principals incorporated RMV Cellars LLC on June 8, 1998 and conceived in late
`
`September 1998 of
`
`the mark SANDHILL WINERY for
`
`the 1997 vintage.
`
`This
`
`conception came from the Sandhill Cranes which fly over the Red Mountain Vinicultural
`
`region that the vineyards are located within. RMV Cellars started researching the name
`
`SANDHILL on October 11, 1998. RMV Cellars hired a graphic designer to make the
`
`SANDHILL WINERY label for the 1997 vintage. The first label was made in November
`
`11, 1998. The same label is currently in use.
`
`The 1997 SANDHILL WINERY vintage label was first used in commerce on
`
`November 18, 1998 at a meeting in Vancouver, Washington with bankers and other
`
`individuals showing the Sandhill Winery label,
`
`in connection with financing for the
`
`winery. The purpose of the meeting was to review the label and to discuss financing for
`
`OPPOSER’S MOTION FOR LEAVE TO AMEND NOTICE OF OPPOSITION
`AND TO REOPEN DISCOVERY AND MEMORANDUM IN SUPPORT
`THEREOF--3
`
`KURT M. RYLANDER TRIAL AND
`PATENT ATTORNEY AT LAW PC
`1014 FRANKLIN STREET, sums 206
`VANCOUVER, WA 98660
`360.750.9931
`
`

`
`the winery building. The meeting was attended by a number of people. The meeting
`
`was open to all the offices in the building, with the public coming in, drinking wine, and
`
`viewing the label.
`
`Included at the meeting were potential customers and investors.
`
`Some of the people at the meeting later purchased the SANDHILL WINERY wine. At
`
`least one person, an investor, later requested a bottle of the SANDHILL WINERY wine
`
`which was shipped to him.
`
`The same label as shown in November 1998 has been continuously used. RMV
`
`Cellars’ wine is sold in at least fifteen states in the US. RMV Cellars has hosted several
`
`thousand guests in it tasting rooms from every corner of the country. RMV Cellars has
`
`participated in trade and consumer events Nationwide. RMV Cellars ships annually
`
`approximately 850 cases of Sandhill Cabernet Sauvignon, Red Mountain, Sandhill
`
`Winery and 220 cases of Sandhill Merlot, Red Mountain, Sandhill Winery. The Sandhill
`
`Winery wines have been entered in more than 30 regional and national wine
`
`competitions and have won over 30 medals. The Sandhill Winery wines have been
`
`reviewed in Wine Spectator, Wine Enthusiast, Winepress Northwest, The Columbian,
`
`The Seattle Times, and Northwest Palate. The Sandhill Winery wines are advertised in
`
`three local and regional wine publications and have been advertised in a national
`
`publication.
`
`SANDHILL WINERY is listed on the Washington Wine Commission
`
`website. The 1999 Sandhill Cabernet Sauvignon, Red Mountain, Sandhill Winery wine
`
`was selected as one of the Top 100 wines in the World.
`
`OPPOSER'S MOTION FOR LEAVE TO AMEND NOTICE OF OPPOSITION
`AND TO REOPEN DISCOVERY AND MEMORANDUM IN SUPPORT
`THEREOF__4
`
`KURT 55- RYLANDER TRIAL AND
`PATENT ATTORNEY AT LAW PC
`1014 FRANKLIN STREET, sune 206
`VANCOUVER, WA 98660
`360.750.9931
`
`

`
`
`
`1-:=.=:_=_=v...,,
`
`B.
`
`FACTUAL BASIS FOR MOTION
`
`On March 8, 1999, Applicant, then known as Calona Wines Ltd., filed a Canadian
`
`intent-to-use for the mark SANDHILL for its wines, and filed its U.S.
`
`intent-to-use
`
`application, serial no. 75/789,080 (the ‘080 application), on August 31, 1999
`
`RMV Cellars learned from Applicant's original discovery response that
`
`the
`
`original applicant, Calona Wines Ltd, post application filing, had been the subject of an
`
`asset sale. Exhibit
`
`Applicant stated in the discovery response that the asset sale
`
`agreement would be produced, id_., but failed to do so, so RMV Cellars requested the
`
`documentation. Exhibit “B. Applicant refused to provide the information without a
`
`protective order. Exhibit “C”. A protective order was agreed to and entered. On June
`
`23, 2003, Applicant provided the information under the auspices of the protective order.
`
`Exhibit
`
`From that
`
`information, first received on June 23, 2003, RMV Cellars
`
`discovered the following:
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`[REDACTED]. Exhibit “A” at page 2, Asset Sale Agreement 11 1.1.
`
`[REDACTED]..
`
`Id. at page 3, Asset Sale Agreement 1] 1.3
`
`[REDACTED]..
`
`Id.
`
`[REDACTED]. Exhibit “A” at page 11.
`
`[REDACTED].
`
`[REDACTED]..
`
`B.
`
`1.
`
`ARGUMENT
`
`THE BOARD SHOULD GRANT LEAVE TO AMEND
`
`Opposer should be entitled to amend its notice of opposition to include counts
`
`based on the information which was not publicly known, and which Applicant withheld
`
`from Opposer in discovery until June 23, 2003.
`
`OPPOSER’S MOTION FOR LEAVE TO AMEND NOTICE OF OPPOSITION
`AND TO REOPEN DISCOVERY AND MEMORANDUM IN SUPPORT
`THEREoF"5
`
`KURT M- RY‘-ANDER TRIAL AND
`PATENT ATTORNEY AT LAW PC
`1014 FRANKLIN STREET, sum: 206
`VANCOUVER, WA 98660
`360.750.9931
`
`

`
`Rule 15 of the Federal Rules of Civil Procedure, regarding amending original
`
`pleadings, states in pertinent part: “[A] party may amend the party's pleading only by
`
`leave of court or by written consent of the adverse party; and leave shall be freely given
`
`when justice so requires.” FED. R. CIv. P. 15(a); see TBMP 321, 322; 37 CFR § 2.107.
`
`TBMP 321 states, in pertinent part:
`
`‘‘If, after the filing of its pleading, a party learns, through discovery or
`otherwise, of information which would serve as the basis for an
`additional claim...the party should move promptly to amend its
`pleading to assert the additional matter.”
`
`TBMP 321 (citing Rule 15(a) and a string citation of cases).
`
`The new grounds all stem from the protective order material that was received on
`
`June 23, 2003. The new grounds all relate to the discovery that the Applicant is not be
`
`the proper party, has abandoned use of the mark, and/or that the Applicant may have
`
`violated the Anti-Assignment
`
`in Gross rule.
`
`Specifically, Opposer discovered that
`
`[REDACTED].
`
`Based on that
`
`information, RMV Cellars raises additional grounds,
`
`in the
`
`alternative: (a) Applicant is not the owner of the '080 application; (b) Applicant is not the
`
`real party in interest for the ‘080 Application, and does not have standing to pursue the
`
`‘O80 Application; (c) Applicant abandoned the ‘080 Application; (d) Applicant voided its
`
`rights to the mark SANDHILL by violation of the Anti-Assignment in Gross rule.’
`
`
`
`2 “A trademark cannot be sold or assigned apart from the good will it symbolizes. MCCARTHY
`ON TRADEMARKS § 18:2 (omitting a string citation); 15 U.S.C. § 1060. Absent this goodwill,
`App|icant’s mark is invalid. This is the Anti-Assignment in Gross Rule. Sie MCCARTHY ON
`TRADEMARKS AND UNFAIR COMPETITION at 18:2 & 18:19 (“McCarthy”); 15 U.S.C. § 1060. “A trade
`name or mark is merely a symbol of good will; it has no independent significance apart from the
`good will it symbo|izes.... [A] trademark cannot be sold or assigned apart
`from the good will it
`symbolizes.” Q, at 18-6 (quoting Marshak v. Green, 746 F.2d 927 (2"‘’ Cir. 1984)).
`OPPOSER’S MOTION FOR LEAVE TO AMEND NOTICE OF OPPOSITION
`KURT M- RY‘-ANDER TRTAL AND
`AND TO REOPEN DISCOVERY AND MEMORANDUM IN SUPPORT
`PATENT ATT°RNEY AT W” P0
`THEREOF-_6
`1014 FRANKLIN STREET, SUITE 206
`VANCOUVER, WA 98660
`360.750.9931
`
`

`
`
`
`*..“~,::.~;.=;.._-,,.
`
`RMV Cellars only learned of the additional grounds for opposition after June 23,
`
`2003, see Exhibit
`
`and this was due directly to Applicant’s refusal to provide the
`
`subject information prior to that time. RMV Cellars proposed the amended Notice less
`
`than ten (10) days later, on July 1, 2003. Exhibit “E”. RMV Cellars did not hear from
`
`Applicant’s counsel, and so called and left a message, and then sent a letter. Exhibit
`
`“F”. Applicant’s counsel then finally got back to RMV Cellars on July 17, 2003, see
`
`Exhibit
`
`refusing to agree to any amendment.
`
`Applicant’s expected counter argument. Applicant may contend that it notified
`
`Opposer on August 20, 2002 about the existence of the asset sale and purchase
`
`agreement. Exhibit
`
`However,
`
`first, Applicant at
`
`that
`
`time
`
`stated, without
`
`qualification, that it would turn over the agreement, id., but then failed to do so, and on
`
`being reminded, changed its story and refused to turn it over without a protective order.3
`
`Second, [REDACTED].
`
`Indeed,
`
`if Applicant, now known as Canrim Packaging Ltd.,
`
`sticks by its story and argues that the application and mark was transferred, i.e., that the
`
`Board should interpret the agreement to have made that transfer (despite its express
`
`terms), then it would appear Applicant admits that it is not the real party in interest and
`
`has no standing.
`
`The rules specifically provide that leave to amend “shall be freely given when
`
`justice so requires.” FED. R. CIV. P. 15(a). The rules specifically further state that an
`
`amendment for new grounds can be based on material learned first through discovery.
`
`TBMP 321.
`
`The proposed amendment is specifically contemplated by the rules,
`
`is
`
`
`
`3 Curiously, the Board will note that the fax date from the Canadian attorneys for Applicant to
`the U.S. attorneys for Applicant shows that the U.S. counsel had the agreement on August 20,
`2002 in its offices.
`
`OPPOSER'S MOTION FOR LEAVE TO AMEND NOTICE OF OPPOSITION
`AND TO REOPEN DISCOVERY AND MEMORANDUM IN SUPPORT
`THEREOFT7
`
`KURT M. RYLANDER TRIAL AND
`PATENT ATTORNEY AT LAW PC
`1014 FRANKLIN STREET, sum: 206
`VANCOUVER, WA 98660
`360.750.9931
`
`

`
`
`
`sought to all intents and purposes almost immediately after learning of the new grounds,
`
`and is exactly appropriate
`
`2.
`
`THE BOARD SHOULD REOPEN DISCOVERY
`
`Opposer should be entitled to conduct discovery regarding the information which
`
`was not publicly known, and which Applicant withheld from Opposer in discovery until
`
`June 23, 2003. As this information is and has been treated as confidential and not
`
`available to the public by Applicant, there is no way that Opposer through reasonable
`
`diligence could have discovered the new information prior to the disclosure by Applicant
`
`on June 23, 2003.
`
`The Board has the discretion, and should use it, to reopen discovery to allow
`
`inquiry into the new information that was discovered by Opposer on June 23, 2003.
`
`See TBMP 507.02 (‘‘In granting a motion for leave to amend under FRCP 15(a), the
`
`Board may,
`
`in its discretion, reopen the discovery period”); See Space Base, Inc. v.
`
`Stads Corp., 17 USPQ2d 1216 (TTAB 1990); Buffett v. Chi-Chi’s, lnc., 226 USPQ 428
`
`(TTAB 1985); Anheuser-Busch,
`
`Inc. v. Martinez, 185 USPQ 434 (TTAB 1975);
`
`American Optical Corp. v. American Olean Tile Co., 168 USPQ 471 (TTAB 1971).
`
`The new grounds all relate to the discovery that the Applicant may not be the
`
`proper party, may have abandoned its use of the mark, and/or that the Applicant may
`
`have violated the Anti-Assignment in Gross rule. Specifically, Opposer discovered that
`
`[REDACTED].
`
`RMV Cellars’ seeks reopening of discovery on a limited basis to explore the
`
`following:
`
`specifically, who,
`
`if anyone,
`
`is using the mark SANDHILL (other than
`
`Opposer), on what products or services, to what extent, whether there was any lapse or
`
`OPPOSER'S MOTlON FOR LEAVE TO AMEND NOTICE OF OPPOSITION
`AND TO REOPEN DISCOVERY AND MEMORANDUM IN SUPPORT
`THEREoF__8
`
`KURT M- RY‘-ANDER TRW- AND
`PATENT ATT°R"EY AT W" "C
`1014 FRANKLIN smear. sums 206
`VANCOUVER, WA 98660
`360.750.9931
`
`

`
`
`
`abandonment of use, and whether a different entity than that who originally filed the
`application is the actual user.
`Reopening discovery to this limited extent is not prejudicial, or is prejudicial to
`
`2:
`.
`
`only a minimum degree,
`
`to Applicant. Applicant only turned over the surprising
`
`information on June 20, 2003, received June 23, 2003, and had been withholding it
`
`pending a protective order. Applicant obviously well knew that
`
`the information
`
`contained therein was of significance. Answering the limited discovery sought will take
`
`virtually know time, perhaps five interrogatories and requests for production and one
`
`30(b)(6) deposition.
`
`WHEREFORE, the Board should grant Opposer’s motion.
`
`DATED THIS August 14, 2003
`
`T M. RYLANDER, Reg. No. 43,897
`K
`014 Franklin Street, Suite 206
`Vancouver, WA 98660
`(360) 750-9931
`Attorney for Opposer
`
`
`
`
`
`0PPOSER’S MOTION FOR LEAVE TO AMEND NOTICE OF OPPOSITION
`AND TO REOPEN DISCOVERY AND MEMORANDUM IN SUPPORT
`THERE°F"9
`
`KURT M- RYI-ANDER TR|AL AND
`PATENT A'”°R"EY ‘*7 '-AW PC
`1014 FRANKLIN STREET, suITE 206
`VANCOUVER, WA 98660
`360.750.9931
`
`

`
`
`
`CERTIFICATE OF SERVICE TO APPLICANT
`
`I HEREBY CERTIFY that on the date signed b ea
`velope
`
`
`'
`.
`. Mails first
`,.
`
`
`e Applicant, Chuck
`nd Ave, 1600 ODS
`
`
`
`
`
`el, L.L.P., 6
`McC|ung, Chernoff Vilhauer McC|ung & Ste
`Tower, Portland, Oregon 97204 and by fa : mile to (503) — 1
`
`
`
`
`s|1'|QN
`p
`I
`D
`I
`OPPOSER S MOTION FOR LEAVE TO AMEN NOT CE OF O PO
`AND TO REOPEN DISCOVERY AND MEMORANDUM IN SUPPORT
`THERE°F"1°
`
`KURT M. RYLANDER TRIAL AND
`PATENT ATTORNEY AT LAW PC
`1014 FRANKLIN STREET‘ SUITE 206
`VANCOUVER, WA 98660
`360.750.9931
`
`

`
`EXHIBIT A
`TO OPPOSER’S MOTION FOR LEAVE TO AMEND
`NOTICE OF OPPOSITION AND TO REOPEN DISCOVERY
`
`REDACTED
`Exhibit previously filed under seal with unredacted motion
`
`

`
`
`
`, KURT M. RYLANDER
`TRIAL & PATENT ATTORNEY AT LAW PC
`
`May 06, 2003
`
`File no. RMV03
`
`BY FACSIMILE
`
`AND FIRST CLASS MAIL
`
`'
`Chuck McClung
`Chemoff Vilhauer McClung & Stenzel, L.L.P.
`601' SW 2nd Ave,
`2 1600 ODS Tower
`
`Portland, OR 97204
`
`RE:
`
`SANDHILL Ol’POSITION
`
`Dear Mr. McClung:
`
`After reviewing the following, please contact me at your earliest convenience.
`
`In Applicant’s Response to Opposer’s Interrogatory No. 2, Applicant identified
`We have not
`-an Asset Purchase Agreement and stated that “it will be produced.”
`received that yet.
`
`In answer to Interrogatory No. 22, Applicant claimed that all information
`requested was protected by privileged. We need the listing of documents and authors
`for a privilege log. Please provide that information and documents at your earliest
`-convenience.
`
`(1) Opposer
`With respect to the conductof the case, I propose the following:
`would withdraw second, fourth, and ‘fifth grounds for opposition; (2) the parties
`stipulate that the marks SANDI-[ILL and SANDI-HLL WH\IERY, when used in
`connection with wineries and the sales of wine, are confusingly similar. The parties
`could then focus on what appears to be the real issue, i.e., priority of use.
`'
`
`EXHIBIT mt_b____
`PAGE ML“ OF amt;
`
`Main Omoe
`I014 Franklin Street
`Suite 206
`
`Vancouver, Washington ‘
`98660
`Tel: 360.750.9931
`Fax: 360.397.0473
`
`'
`
`wwv/.rylanderIaw.oom
`
`' PractleeAreu '
`?atents,Tndanarks,Copyrlghts
`&ingemem&UnfnlrCompen‘tion
`
`FedaalTonClalms
`CommcmoialLitigation
`Personallnjury
`CdminalDefense
`Federalltegulatorybisputes
`1‘rialsandAppeals
`
`Licensed
`State ofWashington
`State ofOregon
`District ofColumbia
`
`)3.
`
`'
`
`& Trademark Oflioe
`“ Patent Office
`
`'getofBar
`
`US. Supreme Conn
`Federal Circuit
`D.C. Circuit
`
`Court ofInternational Trade.
`Court ofFedanl Claims
`DC. District Court ‘
`Western District ofWashington
`Enstun District ofWashington
`Southern District ofMaryland
`District ofOregon
`
`Assodadons
`\m.!nt:lleotual Prop.LawAssn
`Wash. State Patent Law Assn
`Ore. Pntut LawAssn
`Assn of1ria.l Lawyers ofAm.
`vash. sum Trial Lawyer's Assn
`American BarAssn
`Sec.Int‘¢1lec:uaIPropenyl.aw
`Sec. Public Contract Law
`Federal CircuitBarAssn _
`Oregon State Bar Assn
`Sec. InteUec1‘ualProp¢r!y
`Sec. Litigation
`Sec. Business Litigation
`Multnomah BarAssn
`Washington State Bar Assn
`Sec. Lldgatlarr
`so» 'yu¢l1¢ctualPmperty
`BarAssn
`Defense Bar
`_
`dA_ _
`lumbia Bar Assn
`District 0
`:dcnlBomlofContructAppeals
`BarAssn
`
`

`
`’
`
`Letter to
`
`Chuck McClung
`May 06, 2003
`Page 2
`
`’
`
`I look forward to hearing from you “shortly.
`
`
`
`KMR;wf
`Cc:
`John Dingethal
`
`EXH\B\T 9
`PAGE
`1 OF
`
`‘L
`
`

`
`LAW OFFICES
`
`CHERNOI-‘F, VILHAUER, MCCLUNG & $'rENzEL, LLP
`
`lN'rELLEc1'uAL PROPERTY LAW
`INCLUDING PATENT. TRADEMARK.
`COPYRIGHT AND UNPAIR
`COMPETITION MATTERS
`
`500 CD5 TOWER
`60! S.W. SECOND AVENUE
`PORTLAND. OREGON 97204-3I57
`TELEPHONE: (503) a27—56.3I
`FAX: (503) a28_4373
`
`May 12, 2003
`
`' TIM A. LONG
`K”“' R°"“"3
`' BRENNA K- '-EGAARD
`
`' REGISTERED PATENT ATTORNEY
`DAVID S. FINE
`SENIOR LAw CLERK
`
`’
`
`'
`
`ourpile; 7g15_ooo2
`
`‘ JACOB E. VILHAUER. JR.
`‘ DENN|s E. s'rENzEL
`1 ' cHARLEs D. McCLuNo
`DONALD 9» HASI-ET‘?
`.1. PETER $1'ARLEs
`
`. WILUAM O. GEN‘,
`' NANcv J. MORIARTY
`.JuLuANNE R. DAVIS
`’ KEVIN L. RussELI.
`
`DANIEL P. CHERNOFF
`(I935-I995)
`
`_';g
`
`'
`
`lI.
`
`.
`
`Y
`
`VIA FACSIMILE
`360
`397-0473
`’CONFIRMATION VIA FIRSTfCLASS MAlL
`
`Kurt M. Rylander, Esq.
`1014 Franklin St., Suite 206
`Vancouver, WA
`98660
`
`Re:
`
`SANDHILL Oppogition
`
`Dear Kurtx
`
`.'In response to your letter of May 6Lf20O3jjthe“AssetA
`.,
`Purchase;Agfeement referred.to in Resppfisé to Opposer’s;
`N"
`U«~
`A‘ . Interrogatory No.~2..¢_ontains..confidentialmaitieriail
`that‘ Calona
`Wines does not want RMV Cellars to have access ts;
`-Accordingly,
`we need to enter into a Protective Order before this document can
`be produced. Would you please send me a draft Protective Order
`so that we can initiate this process.
`'
`
`With respect to Interrogatory No. 22, all
`correspondence that applicant has had concerning the use by
`Opposer of Opposer’s mark has been with its Vancouver, B.C.
`attorney Catherine D. Mutala.
`I do not have copies of this
`correspondence and the preparation of a privileged log will have
`to wait until Ms. Mutala returns from the INTA conference in
`
`Amsterdam, early next week. Would you please let me know whether
`you still want a privileged log with respect to this material
`realizing that it is all letters between Ms. Mutala and Calona
`Wines.
`
`' Calona Wines_is agreeable to your proposal that Opposer
`.
`.withdraw~its_seQOnd, fourth and fifth grounds for opposition_and
`the*partiesfistipulate;that,the,marks,SANDHILLland_SANDHIBL
`=WINERY¢.when.used in connection withgwineriesfand the sale of"
`wines are ggonf-usi;11g1y”.‘s":im.i“].a§r._ ‘fPl.eas'e.' send me __'8.‘ popy of the
`proposed withdrawal of the second[ fourth and fifth grounds for
`_ . {opposition and the stipulation and I will sign the stipulation
`and return it to you on the understanding EYF-Higrlwill be filed
`
`»
`
`\
`
`JE
`Q!
`
`‘L
`
`

`
`LAW OFFICES
`
`CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP
`
`Kurt M. Rylander, Esq.
`May 12, 2003
`Page 2
`
`'
`
`-.;;..».~.
`
`with the TTAB concurrently with the withdrawal of the second,
`fourth and fifth grounds for opposition.
`
`Sincerely
`
`Charles D. Mcclung
`
`CDM/lma
`
`cc: Catherine D. Mutala, Esq.
`
`EXHIBIT new
`PAGE
`9. 0? @;m
`
`he
`
`
`

`
`
`
`KURT M. RYLANDER
`
`TRIAL & PATENT ATTORNEY AT LAW PC
`
`May 15, 2003
`
`.
`_
`BY FACSl1VIILE
`AND FIRST CLASS MAIL
`
`.
`,
`Chuck McClung
`Chernofl‘ Vilhauer McClung & Stenzel, L.L.P.
`601 SW 2nd Ave,
`1600 ODS Tower
`Portland, OR 97204
`
`_
`
`RE:
`
`SANDHILL OPPOSITION
`
`File no. RMVO3
`.
`
`Mnln Omce
`1014 Franklin Street
`‘suite 206
`Vancouver, Washington
`98660
`Tel: 360.750.9931
`Fax: 360.397.0473
`www.rylandalaw.com
`
`PncflceAreu
`
`rmam.naaenmh.Cowris|I_ts
`|fringernent&UnfairCompetition
`0ovemmmtContmctClnims
`I’-'edeml'l‘ortClnims
`Conunerclalljfigation
`Paxonallniuty
`
`Faieralllasulatorynisputes
`Tr-ialundAppeals
`-
`
`Licensed
`State ofWashington
`State ofOregon
`District of Columbia
`
`U.S.
`'
`
`& Trademark Ofiice
`Patent Office
`
`Dear Mr. McClung:
`
`'
`
`'
`
`er of Bar
`-
`'
`US. Supreme Court
`Federal Circuit
`D.C. Circuit
`Court oflnternalional Trade
`Court ofFeda'nl Claims
`D.C. District Court
`Western District ofWashington .
`mm District ofwaxhington
`Southern District ofMaryland
`District ofOregon
`
`Associations
`Am.lntelIeetnalPrvop.LnwAssn
`W|sh.StatePatentI.awAssn
`Ora.PatentLawAssn
`Assnof'l‘rinlLawyasofAm.
`Wnsh.Stxte'l\'lalLnwya"uAssn
`AmaicanBarAxsn
`S¢c.In1ellactu¢lProp¢nyLaw
`Sac.PubllcCau:ractLaw
`FedenlCircuitBarAssn
`0regonStateBarAssn
`Sec.In:el!ec:ualPmpe:-ty
`Sec.LltlgatIon
`Sec.Bu.rbw.ssLl:igution
`MultncmahBarAssn
`.Yiasl:ingwnStateBarAssn
`Sec.Llligarian
`S~'—In1dlectualPrup¢rIy
`untyBarAssn
`Dcfenseflnr
`ofColnmbinBarAssn
`'edenlBomlofComractAppea1s
`Barmsn
`
`;
`(‘x
`
`Pursuant to your letter dated May‘ 12, 2003, enclosed please. find the proposed
`protective order.
`Please call. at your earliest convenience with any questions,
`otherwise just sign and send. by fax and mail, I will sign, file, and send you a copy,
`which should then allow the release of the material.
`
`It appears we are in agreement on a stipulation as to likelihood of confiision
`and the withdrawal of the second, fourth, and fifih grounds for opposition.
`I will
`prepare that for your review, but I wish to await receipt of the material from the
`foregoing paragraph to make sure that there is not an additional ground for opposition,
`before I amend the notice. The sole purpose for waiting would be so two amendments
`would not have to be filed instead of one.
`’
`
`With respect to the privilege log, it will not be necessary if you make a
`representationthat the documents consist solely of letters from the Ms. Mutaladirectly .
`to the managing person of your client, and vice versa, and that the material in the
`letters was for purposes of requesting, or giving, legal advice.
`,
`
`Finally, I am preparing enumerated proposed stipulations for your review that I
`believe can reduce this case to a legal argument on the briefs, preserving time and
`money for our mutual clients. I expect to. provide that to you by the end of the month.
`
`EXiHlBlT__l_Dfi__,
`PAGE ___g_m_ W _z__;L:m
`
`

`
`
`
`Letter to
`
`Chuck McClung
`May 15, 2003
`
`Page 2
`
`
`
`KURT M.R ANDER »
`