Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA488705
`ESTTA Tracking number:
`08/13/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91171191
`Plaintiff
`Peer Bearing Company
`THOMAS C MCDONOUGH
`NEAL GERBER & EISENBERG LLP
`TWO NORTH LASALLE STREET, SUITE 1700
`CHICAGO, IL 60606
`UNITED STATES
`tmcdonough@ngelaw.com, twilliams@ngelaw.com, mbenson@ngelaw.com
`Opposition/Response to Motion
`Thomas C. McDonough
`tmcdonough@ngelaw.com, twilliams@ngelaw.com, knye@ngelaw.com,
`mbenson@ngelaw.com
`/Thomas C. McDonough/
`08/13/2012
`Opposer's_Response_to_Petition_to_Disqualify.pdf ( 118 pages )(5921552
`bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Peer Bearing Company,
`
`Opposer,
`
`V.
`
`Roller Bearing Company of America, Inc.,
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`Applicant.
`
`Consolidated
`
`Opposition No. 91171191 (Appl. No. 78/535213)
`
`Opposition No. 91176823 (Appl. No. 78/745178)
`Opposition No. 91176837 (Appl. No. 78/754894)
`Opposition No. 91176848 (Appl. No. 78/754907)
`Opposition No. 91176851 (Appl. No. 78/754876)
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`Attorney Docket No. 01 91 94.0720
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`$/AAA;/\2é%%
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`OPPOSER’S RESPONSE TO APPLICANT’S PETITION TO
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`DISQ QUALIFY PURSUANT TO 37 C.F.R. §11.19gc)
`
`Opposer Peer Bearing Company (“Peer”) hereby responds to the Petition to Disqualify
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`Peer’s Counsel filed by Applicant Roller Bearing Company of America, Inc. (“RBC”).
`
`1.
`
`Introduction
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`The Petition to Disqualify Peer’s attorneys is a sham filing designed merely to delay
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`these proceedings, as there is no basis in fact or law for RBC’s claims. The Petition omits key
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`facts entirely, and the “facts” upon which RBC relies are directly ‘contrary to a prior finding by
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`an Arbitration Panel to which RBC is bound under collateral estoppel. The law is similarly
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`directly contrary to RBC’s position. RBC misconstrues the case law it does cite, and it fails to
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`cite controlling authority directly contrary to at least one of its positions.
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`Despite RBC’s argument to the contrary, this is not a “conflict of interest” case. Peer’s
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`attorneys never represented RBC or any of its affiliates and there is no allegation that Peer’s
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`attorneys ever had access to any of RBC’s privileged information. Every case cited by RBC
`involves a former client asking that its former counsel be disqualified. That is not the situation
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`here, and RBC offers absolutely no reason or non-frivolous argument why the cases should be
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`

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`extended in such a manner. Rather, RBC argues that a third party, SKF USA, Inc. (“SKF”), may
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`be in violation of a decision by the Arbitration Panel. If RBC really believes that, its remedy is to
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`pursue a claim against SKF, not to argue that Peer cannot use its own attorneys.
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`Critically, RBC fails to tell the Commissioner that it has already lost its attempt to have
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`Peer precluded from litigating this opposition. The Arbitration Panel decided this exact question
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`against RBC, as it held that Peer was n_(_>_t_ enjoined from opposing RBC’s applications. RBC also
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`fails to note that it lost a trademark infringement case in district court against Peer on these exact
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`same marks. Therefore, RBC knows that (1) it cannot preclude Peer from litigating this
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`opposition under collateral estoppel and (2) it cannot prevail in this opposition once Peer’s co-
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`existing, longstanding legal use of the exact same marks for the exact same goods is put to the
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`Board. There can be no question, therefore, that RBC’s sole purpose for filing the Petition is to
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`harass Peer by pursuing vexatious claims.
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`RBC’s assertion that it can have Peer’s attorneys disqualified simply because RBC served
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`discovery on the attorneys is nonsensical and directly contrary to a prior controlling decision,
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`which it does not even cite. For these reasons, and as outlined in detail below, RBC’s Petition
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`must be denied.
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`Finally, despite the fact that the Opposition is stayed, at RBC’s request, RBC has served
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`subpoenas and discovery on Peer, Peer’s attorneys, SKF and SKF’s attorneys. The only use of
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`A
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`such improper and untimely discovery is to harass Peer and SKF.
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`II.
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`Facts
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`In its filings with the Board and in this Petition, RBC made statements that are
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`objectively false and misleading about the outcome of the prior Arbitration between Applicant
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`and SKF. The Arbitration Panel made a series of fact findings that it deemed to be undisputed,
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`and RBC’s Petition directly contradicts these facts, and ignores other relevant facts.
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`

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`A.
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`RBC Lost a Motion to Enjoin this Opposition in the SKF Arbitration
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`While this Petition is ostensibly one to disqualify attorneys, the clear intent of RBC is to '
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`terminate or enjoin these Oppositions. RBC commits a major sin of omission, however, by
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`failing to note that it already lost its attempt to have these trademark oppositions enjoined. In
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`fact, twice in its Petition, at pages 8 and 12, RBC notes that the Arbitration Panel “agreed to
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`opine on whether or not Peer’s opposition of RBC’s marks should be enjoined,” citing to the
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`Interim Order (Exhibit
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`to the Petition). RBC fails to note, however, that the Arbitration Panel
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`expressly held that Peer is not enjoined from pursuing these Consolidated Oppositions in the
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`Final Order (attached as Exhibit 1 hereto, and as Exhibit A to the Petition).
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`The Arbitration between Applicant RBC and SKF addressed the specific issue RBC is
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`indirectly raising here, namely, whether Peer, as a subsidiary of SKF, is precluded from pursuing
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`these Oppositions. As the Panel stated,
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`the relief RBC seeks would constitute a mandatory injunction
`Specifically,
`directing SKF:
`(a) to stop Peer from opposing RBC’s trademark efforts with
`respect to the product designations included in the Nice catalog;
`'
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`Final Order, Exhibit 1, p. 6. Thus, Peer’s ability to oppose Applicant’s trademarks was directly in
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`front of the Arbitration Panel. The Panel expressly held that Peer is r_1_o__t enjoined from pursuing
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`these Oppositions, stating that “RBC’s argument is a non sequitur and should be denied, based
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`on the facts and the law.” Final Order, Exhibit 1, p. 9. Specifically, the Panel held as follows:
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`After carefully reviewing the record, briefs, oral argument, and applicable
`authorities,
`the majority has concluded, on balance,
`that RBC has not
`demonstrated a “clear right” to the relief it seeks, and that SKF has the better of
`the argument on the matter currently before the Panel. Therefore, the majority of
`the Panel will not take the extraordinary step of ordering the mandatory injunctive
`relief sought by RBC.
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`Final Order, Exhibit 1, pp. 14-15. The Panel concluded with the following holding:
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`‘ “IT IS ORDERED that (1) RBC’s request for an injunction against SKF regarding '
`the Peer activities is DENIED; ...”
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`

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`Final Order, Exhibit 1, p. 24‘ (emphasis in original). There is, therefore, no doubt that Peer is
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`entitled to pursue these Oppositions.
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`Instead of noting the Panel’s actual decision in the Final
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`Order, RBC instead quotes misleadingly from the Dissenting Judge’s opinion._ See, Petition, p. 8.
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`B.
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`'
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`The Undisputed Facts Found by the Arbitration Panel are Directly
`Contrary to RBC’s Unsupported Allegations in the Petition
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`RBC makes many completely unsupported allegations about how Peer and SKF allegedly
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`are or will be acting in concert. However, RBC fails to address or mention the undisputed facts
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`found by the Panel in its Final Order. The key facts the Panel relied on are directly relevant to ‘
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`this Petition, and directly contrary to RBC’s statements. Specifically, the Arbitration Panel found
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`the following to be “undisputed facts”:
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`Peer used the Series designations well before the 1997 APA between SKF
`(1)
`and RBC and well before SKF acquired the stock of Peer;
`
`(2)
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`Peer opposed RBC’s trademark efforts beforeeSKF acquired Peer;.
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`Peer is not a party to the APA or to this arbitration and there is no
`(3)
`provision in the APA reaching Peer or imposing SKF’s restrictions on its
`affiliates;
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`Since being acquired by SKF, Peer has not been doing anything Vis-a-vis
`(4)
`the Series designations or RBC’s USPTO proceedings that
`is more than or
`different from what it has historically done;
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`SKF’s acquisition of Peer does not alter the extent of any injury (if indeed
`(5)
`there is any injury) to RBC as a result of Peer’s conduct;
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`SKF‘ acquired Peer in the exercise of SKF’s and its parent company’s
`(6)
`business judgment to gain the benefits of Peer’s expertise and market share in the
`medium-quality, medium-price bearing market, while SKF’s business has
`concentrated on the high-end bearing market;
`
`There is no evidence that SKF acquired Peer in order to circumvent the
`
`(7)
`APA;
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`SKF has not engaged in, or interfered with, Peer’s day-to—day business
`(8)
`operations;
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`

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`SKF and Peer operated in different markets, independently of each other,
`(9)
`and in partial competition with each other;
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`(10) Although SKF has the power to control Peer, there is no evidence that SKF
`has exercised its control over Peer in connection with the use of the Series
`designations or the opposition to RBC’s USPTO efforts;
`
`The senior officers who carry out the day-to-day, operational management
`(11)
`of Peer’s business are not SKF employees; all four of the senior executives of
`Peer who manage its day-to-day operations,
`including Peer’s chief executive
`officer, are Peer employees, not SKF employees, and only one of them has ever
`been employed by any SKF-affiliated company;
`
`(12) Although the five-person Peer board of directors includes three people
`who are employed by SKF or its affiliates, the board does not control Peer’s day-
`to-day management of the business;
`
`SKF and Peer have exercised proper corporate procedures that are
`(13)
`expected of parent and subsidiary corporations (e.g. separate boards, corporate
`documents, proper minutes, accounting, capitalization, and the like);
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`There is no evidence whatsoever that SKF has operated or now operates
`(14)
`Peer as an “a1ter—ego,” or as a “sham” to circumvent or evade the APA.
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`Final Order, Exhibit 1, pp. 13-14 (footnotes omitted; italics in original). RBC is bound to these
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`facts under the doctrine of collateral estoppel, and yet it makes no mention of any of them.
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`Instead, as outlined below, RBC actually contradicts several of these facts.
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`C.
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`The History between Peer and RBC.
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`The present Oppositions long predate the relationship between Peer and its current parent
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`company, SKF USA, Inc. In fact, SKF did not acquire Peer until 2008, long after both the current
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`Peer Oppositions and the SKF Oppositions were filed. Final Order, Exhibit 1, pp. 6, 13. The Peer
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`Oppositions were filed in 2006 and 2007 and SKF filed its Oppositions in 2007.
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`RBC also fails to advise the Commissioner that RBC sued Peer in the District Court in
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`Connecticut for infringement of these exact same marks, and lost based on laches. RBC Nice
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`Bearings, Inc. v. Peer Bearing Co., 676 F. Supp. 2d 9, 27 (D. Conn. 2009), copy attached as
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`Exhibit 2. This lawsuit was filed in September, 2006, long prior to SKF’s acquisition of Peer.
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`

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`Peer prevailed because it was able to demonstrate that it has been using therelevant marks since
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`the early l960’s and that RBC had long been aware of this use and did nothing about it. This
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`decision was then affirmed by the Second Circuit. RBC Nice Bearings, Inc. v. Peer Bearing Co.,
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`410 Fed. Appx. 362, 367 (2d Cir. 2010), copy attached as Exhibit 3. RBC also voluntarily
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`dismissed, with prejudice, its claims against Peer’s use of the 600 SERIES and 6900 SERIES
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`terms when "it realized that these terms were generic for metric bearings, and RBC also
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`voluntarily dismissed, with prejudice, its claims against Peer’s use of the 7500 SERIES and 7600
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`SERIES terms (see, dismissal documents attached hereto as Exhibit 4). Peer, therefore, has the
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`right to use the exact same marks on the exact same goods covered by RBC’s applications.
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`III.
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`Legal Standards
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`A.
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`Motions to Disqualify Are Subject to a Very High Standard
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`The standard for a motion to disqualify is extremely high. Courts subject motions to
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`disqualify to “particularly strict judicial scrutiny” because of the potential for abuse, and the cost
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`and inconvenience to clients and the judicial system that may be caused by such misuse of the
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`rules for tactical purposes. Optyl Eyewear Fashion Int 7 v. Style Cos., 760 F.2d 1045, 1050 (9th
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`Cir. 1985).
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`“The moving party bears a heavy burden of proving facts required for
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`disqualification.” RMB Fasteners, Ltd v. Heads & Threads Im"l, LLC, No. 11 C 2071, 2012
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`U.S. Dist. LEXIS 8715, 2012 WL 245124, at *5 (ND. 111. Jan. 25, 2012).
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`Disqualification is a drastic measure that courts are reluctant to impose except when
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`absolutely necessary because it "takes away a party’s ability to choose its own counsel, and
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`because it a tactic often used to create delay or to harass.
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`Deboles v. The Nat ’l Railroad _
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`Passenger Corp., No. 2:11—cv—00276, 2012 U.S. Dist. LEXIS 79102, at *3 (D. Nev.20l2)
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`(internal citations omitted); Mercury Vapor Processing Techs. Inc. v. Vill. ofRiverdale, 545 F.
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`

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`Supp. 2d 783, 787 (N.D. Ill. 2008) (“motions to disqualify should be viewed with extreme
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`caution for they can be misused as techniques of harassment”).
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`B.
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`RBC Lacks Standing to Move to Disqualify Peer’s Attorneys
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`As one safeguard against misuse of a motion to disqualify, “[a]s a general rule, courts do
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`not disqualify an attorney on the grounds of conflict of interest unless the former client moves
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`for disqualification.” In re Yarn Processing Patent Validity Litig., 530 F.2d 83, 88 (5th Cir.
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`1976); Kasza v. Browner, 113 F.3d 1159 (9th Cir. 1998). To allow an “unauthorized surrogate”
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`to bring a disqualification motion on these grounds would “allow that surrogate to use the
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`conflict rules for his own purposes where a genuine conflict might not really exist.” In re Yarn
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`Processing, 530 F.2d at 90. Thus, the burden rests on the moving party to prove that standing
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`exists. Deboles, 2012 U.S. Dist. LEXIS 79102, at *3.
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`In Deboles, the plaintiffs tried to disqualify defense counsel because he represented both
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`defendants and plaintiffs made different allegations against each defendant.
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`Id. at *1. Plaintiffs
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`argued that defendant’s counsel would violate his ethical duties to the defendants in such a joint
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`representation, but the court found this allegation to be mere speculation.
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`Id. at *3. The court
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`also noted that if an ethical breach was found, “the alleged injury to the non client movant must
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`be (a) concrete and particularized, and (b) actual or imminent, not conjectural or hypothetical.”
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`Id. at *7 (citations omitted). The plaintiffs had no such concrete evidence but only had
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`speculation as potential harm. Id.
`In the Cablevision Lightpath case cited by RBC, the court agreed:
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`Because courts must “bear in mind a party’s right to choose his or her
`counsel and the possibility that a disqualification motion has been brought
`for tactical reasons,” “[m]otions to disqualify opposing counsel are viewed
`with disfavor in the Circuit.” Consequently, the moving party’s burden of
`proof is a high one.
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`

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`Cablevision Lightpath, 2011 WL 3845504, at *2 (citations omitted).
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`The extremely limited
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`exceptions to this rule do not apply here. Non-client standing to move for disqualification exists
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`only if there is an “ethical breach [that] so infects the litigation .
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`.
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`. that it impacts the moving
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`party’s interest in a just andlawful determination of [the] claims.
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`.
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`.
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`.” Colyer v. Smith, 50 ‘F.
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`Supp. 2d 966, 971 (C.D. Cal. 1999).
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`RBC relies solely on the statement that “any doubt should be resolved in favor of
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`disqualification,” Petition p. 8, but fails to note that such a presumption only applies to a
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`situation where the attorney is adverse to his or her former client, to protect the former client.
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`The presumption does not apply to a situation such as this one where the disqualification motion
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`is being used as a strategic tactical weapon. Freeman v. Chicago Musical Instrument Co., 689
`F.2d 715, 721 (7th Cir. 1982) (noting motions to disqualify are disfavored because they deprive a
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`party of its counsel of choice).
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`C.
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`RBC Misstates the Test for a Petition to Disqualify Based on Conflict
`of Interest
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`RBC relies heavily on Plus Products v. Con-Stan Industries,
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`Inc., but completely
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`misstates the standard for disqualification set forth in that decision. 221 U.S.P.Q. 1071 (USPTO
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`iComm’r Pat. 1984). RBC argues that “[t]he Commissioner of Patents and Trademarks has
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`established a ‘substantial relationship’ test for determining whether a practitioner has a conflict
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`of interest sufficient to justify disqualification.” Petition, p. 9. This is simply not true. The Plus
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`Products decision instead used a three part test similar to what other courts have used, which
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`require that the moving party be a client or former client of the potentially disqualified attorney.
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`Specifically, the Commissioner held that an attorney should be disqualified if the moving party
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`can show that (i) the attorney is its former attorney; (ii) the attorney now represents an adverse
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`party; and (iii) the subject matter embraced by the present representation is “substantially
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`

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`related” to the subject matter where the attorney previously represented the moving party. Id. at
`1074; see also The Gilman Corp. v. The Gilman Bros. C0,, 20 USPQ2d 1238, 1239-1240
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`(USPTO Comm’r Pat. 1991) (applying Plus Prods. test and denying motion to disqualify).
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`A three part test that likewise requires that the moving party be a client or former client is
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`also set out in the other primary case relied on by RBC, Blue Planet Software, Inc. v. Games
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`Int ’l, Inc., which stated the rule as follows:
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`An attorney may be disqualified from representing a client in a
`particular case if:
`‘
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`(1) the moving party is a former client of the adverse party’s
`counsel
`
`(2) there is a substantial relationship between the subject matter
`of the counsel’s prior representation of the moving party and
`the issues in the present lawsuit; and
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`(3) the attorney whose disqualification is sought had access to,
`or was likely to have had access to relevant privileged
`information in the course of his prior representation of the
`client.
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`331 F. Supp 2d.- 273, 276 (S.D.N.Y., 2004), citing Evans v. Artek, 715 F.2d 788, 791 (2d Cir.
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`1983). RBC inartfully attempts to apply Blue Planet by misstating the opinion and relying on
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`mere dicta.
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`The Blue Planet opinion discussed situations where a prior attorney—client
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`relationship is not required, but RBC fails to note that all such cases discussed by Blue Planet
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`involve a situation where the moving party was at least a vicarious or de facto client, and the
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`attorney was in a position to use privileged information of the moving party. Id.
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`The Blue
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`Planet case involved an attorney who was adverse to a defendant but who had previously
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`represented that defendant’s predecessor company and had substantial access
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`to the
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`predecessor’s confidential documents
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`and discussed confidential
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`information with the
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`

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`predecessor’s employees.
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`Id. at 274.
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`It was that access to the defendant’s information that gave
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`the attorney an unfair advantage and required disqualification. Id. at 277.
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`Likewise, RBC inaptlyrelies on Cablevision Lightpath, Inc. v. Verizon New York, Inc., to
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`overstate its case. This case also makes it clear that the test for disqualification “first requires
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`that the movant he a former client of the opposing party’s counsel.” 2011 WL 3845504, at *2.
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`In Cablevision, there was no dispute that the moving party was a former client ofthe disqualified
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`firm. Id.
`RBC also incorrectly relies on Merck Eprova AG v. Prothera, Inc., for the standard for
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`disqualification. 670 F. Supp. 2d 201, 210 (S.D.N.Y. 2009).
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`argues that “the courts have
`
`recognized the existence of an attorney/client relationship when clients and attorneys are allied in
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`a common legal cause.” Petition, pp. 10 and 12. The Merck case, however, involved a motion to
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`disqualify defense counsel who had previously represented the Plaintiff in a related patent
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`prosecution matter, and the two representations overlapped in time. Merck, 670 F. Supp. 2d at
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`203. Thus, the Merck court also required that the conflict of interest be with the moving party,
`not with some third party.‘ Id. at 210.
`I
`
`In sum, the test for disqualification clearly requires that the attorney have a former
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`relationship with the moving party, either as its attorney directly or in a manner that permitted
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`the attorney to have access to confidential information of the moving party itself, not of some
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`third party. RBC makes no showing that the Peer attorneys were ever RBC’s counsel or ever had
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`access to RBC’s privileged or confidential information.
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`The requirement that the prior representation is substantially related to the issues in the
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`present
`
`litigation is another part of the court’s analysis. However,
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`it
`
`is not, as RBC
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`inappropriately argues, the entire test. Compare Blue Planet, 331 F. Supp 2d. at 276 and
`
`10
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`

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`Petition, pp. 9 and 13. Moreover, contrary to RBC’s argument on page 13 of the Petition, an
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`alleged substantial relationship between Peer and a third party, not RBC, is simply not relevant.
`Finally, RBC misstates I the requirement
`that
`the attorney had access to privileged
`
`information. RBC appears to argue that access to SKF’s privileged information is somehow
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`sufficient to meet this test. However, Blue Planet and the cases cited therein make it clear that
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`the attorney must have had access to the moving party’s privileged information. 331 F. Supp 2d.
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`at 267. Thus, RBC must show that Peer’s attorneys had access to RBC’s privileged information.
`
`D.
`
`. RBC Cannot Subpoena Peer’s Attorneys As Witnesses In Order to
`Disqualify Them
`
`RBC alternatively attempts to disqualify Peer’s attorneys merely on the basis that RBC
`itself has subpoenaed them to testify in a fishing expedition to gather information in support of
`the instant Petition to Disqualifyr This circular reasoning has been explicitly rejected by the
`
`USPTO and federal courts. Notably, RBC does not cite a single case in support of its argument
`on this point. Indeed, the case law is clear: the rules were not designed to permit a lawyer to call
`opposing counsel as a witness and thereby disqualify him as counsel. Little Caesar Enters. Inc.
`
`v. Domino ’s Pizza Inc., 11 USPQ2d 1233, 1233 (USPTO Comm’r of Pat. 1989); Oplyl Eyewear,
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`760 F.2d at 1050; Colyer, 50 F. Supp. 2d at 974.
`
`In Little Caesar ’s, the applicant in an opposition proceeding filed a petition to disqualify
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`counsel for opposer on the grounds that counsel had executed answers to interrogatories on
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`behalf of his client, and applicant intended to call counsel as a fact witness to testify regarding
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`the basis of that knowledge. 11 USPQ2d at 1233. The Commissioner noted that the language of
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`the Trademark Rule regarding disqualification of an attorney-witness closely tracks the language
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`of the ABA Model. Code of Professional Responsibility, and held that
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`the principal
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`considerations under both are “(1) whether an attorney ought to be called to testify on behalf of
`
`11
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`

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`his client...or (2) whether the attorney may be called other than on behalf of his client and his
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`testimony is or may be prejudicial to the client.”
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`Id.
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`(emphasis in original), citing Optyl
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`Eyewear, 760 F.2d at 1048. As here, the movant did not allege that the attorney’s testimony
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`would be prejudicial
`disqualify.
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`to his client, and the Commissioner therefore denied the petition to
`A
`
`In Optyl Eyewear, the 9”‘ Circuit Court of Appeals went even further, granting sanctions
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`against a party who moved to disqualify opposing counsel, 760 F.2d at 1052. Plaintiff Optyl
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`Eyewear sued its competitor Style Companies alleging trademark infringement and unfair
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`competition.
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`Id. at 1047. Counsel for Optyl Eyewear assisted their client in drafting a letter to
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`send to Optyl’s customers to, among other things, inquire whether they had experienced actual
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`confusion.
`Id. Style Companies then moved to disqualify on the basis that it intended to call
`counsel to testify at trial about the extent of their participation in drafting the letter.
`‘Id. The
`
`court noted that “[i]n short, Style offered no showing that Optyl ‘ought’ to call its counsel to
`
`testify or that counsels’ testimony might have been prejudicial if [Style’s counsel] had called
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`Optyl’s counsel to testify.”
`
`Id at 1049. On that basis, the court held that the petition to
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`disqualify was a tactical maneuver undertaken in bad faith, and awarded the non—moving party’s
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`request for fees and double costs jointly and severally against the movant and its counsel.
`
`Id. 1 at
`
`1052.
`
`E.
`
`, RBC Is Collaterally Estopped by the Arbitration Panel’s Holding and
`Findings of Fact
`
`An analysis of the doctrine of collateral estoppel, or issue preclusion,
`
`is important
`
`because of the intended effect of RBC’s Petition. This doctrine bars relitigation of an issue of
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`fact or law that was raised, litigated, and decided in a prior proceeding. Zachry Infrastructure"
`
`LLC v. Am. Inflastructure Inc., 101 USPQ2d 1249, 1253 (TTAB 2011), citing NLTB v. United
`
`12
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`

`
`Techs. Corp., 706 F.2d‘ 1254, 1260 (2d Cir. 1983). Collateral estoppel conserves judicial
`
`resources, protects litigants from the expense and annoyance of defending against the same _claim
`
`in multiple guises, and minimizes the possibility of inconsistent decisions, thereby increasing
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`public reliance on 'judicial decisions. Montana v. US, 440 U.S. 147, 153-154 (1979).
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`Application of the doctrine of collateral estoppel requires (1) identity of the relevant issue in the
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`current and a prior proceeding, (2) actual litigation of that issue in the prior proceeding, (3)
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`necessity of a determination of the issue in entering judgment in the prior proceeding. Liberty
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`Mut. Ins. Co. v. FAG Bearings Corp, 335 F.3d 752, 758 (8th Cir. 2003); . Where the parties in
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`the two proceedings differ, courts also require that the party with the burden of proof on the
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`relevant issue had a full and fair opportunity to litigate it in the prior proceeding.
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`Id. at 758; see
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`also The Quality Meas. Co. v. IPSOS S.A., 56 Fed. Appx. 639, 644 (6th Cir. 2003) Here,
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`because the Arbitration Panel has already explicitly determined the issue of whether Peer should
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`be bound by the Arbitration decision against SKF, and
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`had a full and fair opportunity to
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`argue the issue at that time, it is collaterally estopped from re-arguing that point now. RBC is
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`also collaterally estopped from contesting the specific findings of fact by the Panel, as those facts
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`were specifically relied upon by the Panel to reach its decision, and those facts are the same facts
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`RBC is now relying on in this Petition. Final Order, Exhibit 1, pp. 13-14; see Qual. Meas., 56
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`Fed. Appx. at 645.
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`IV.
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`Argument
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`A.
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`RBC Cannot Meet Any of the Requirements for Disqualification and
`it Lacks Standing to Assert SKF’s Interests
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`RBC’s Petition fails both legally and factually. The Peer attorneys never represented
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`RBC or any of its affiliates. The only argument that RBC relies on is that there was a relationship
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`between Peer and its corporate parent, against whom RBC also litigated. There is absolutely no
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`case law to support disqualification based on an attorney’s relationship with a corporate parent or
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`other third party. Since RBC cannot show that Peer’s attorneys formerly represented RBC or
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`ever had any special relationship with RBC that enabled Peer’s attorneys to have access to any of
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`RBC’s privileged information, RBC fails the first requirement of the disqualification test. See
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`Cablevision Lightparh, 2011 WL 3845504 at *2; Merck, 670
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`Supp. 2d at 203. This is
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`sufficient reason to deny the Petition.
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`RBC also fails to meet the requirement that the counsel have access to RBC’s privileged
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`information, but instead argues that counsel’s alleged access to SKF’s privileged information is
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`sufficient. It is not. The case law specifically requires that RBC show the attorneys had access to
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`RBC’s confidential information. Blue Planet, 331 F. Supp 2d. at 276. Here, no such showing has
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`been or can be made, and this is another reason why the Petition to Disqualify should be denied.
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`RBC’s Petition makes it clear that it is improperly trying to assert SKF’s interest, but it
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`clearly lacks standing to do so. Specifically, RBC summarizes its claim as follows: “Peer’s
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`Attorneys are faced with the conflicting interests of opposing RBC’s trademarks (Peer’s interest)
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`and not opposing RBC’s trademark applications (SKF’s interests).” Petition, p. 13. This is not
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`true, but in any event it is simply not a conflict of interest. RBC has no standing to argue “SKF’s
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`interests” here. See In re Yarn Processing, 530 F.2d at 90. If RBC thinks that SKF is violating
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`the Panel’s order, its remedy is to make a claim against SKF, not against Peer. The Panel already
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`refused RBC’s request that it enjoin Peer’s oppositions, and RBC is bound under collateral
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`estoppel to permit this Opposition to proceed.
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`B.
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`RBC Misstates the Factual Record and Ignores the
`Undisputed Facts Found by the Arbitration Panel
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`Despite all its hand waving and hyperbole, RBC’s Petition fails to demonstrate any
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`concrete harm that will befall
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`it if Peer is entitled to use its own attorneys. All
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`it has is
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`speculation and innuendo, demonstrating that its Petition is not a serious attempt to protect RBC
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`but instead merely a tactical attempt to cause delay and expense for Peer. RBC relies on a series
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`of statements that are wholly unsupported and contrary to the express findings of facts by the
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`Arbitration Panel. As noted above, RBC is bound by the Panel’s holdings and factual findings
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`under collateral estoppel. See Zachry Infrastructure, 101 USPQ2d at 1249.
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`RBC’s misstatements are too numerous to catalog entirely, but certain ones require a
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`"response. For example, RBC argues, without citation to any document or testimony, that the
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`“common policies and procedures uniformly applicable to multinational contingencies such as
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`SKF and its individual businesses and subsidiaries” will require Peer to disclose SKF’s
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`information. Petition, p. 5. This is nonsensical and irrelevant in the context of a conflict of
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`interest disqualification petition, but also directly contrary to the Panel’s findings that
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`“[a]lthough SKF has the power to control Peer, there is no evidence that SKF has exercised its
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`control over Peer in connection with
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`the opposition to RBC’s USPTO efforts” and “SKF and
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`Peer have exercised proper copporate procedures that are expected of parent and subsidiary
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`corporations.” Exhibit 1, Final Order, p. 14, Facts 10 and 13 (emphasis added). RBC’s
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`statement to the contrary is simply wrong.
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`Another false and unsupported statement is the argument that “SKF and Peer attorneys
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`cooperated as one to oppose RBC’s trademark applications as part of an ongoing common. ’
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`enterprise.” Petition, p. ll. Despite having litigated for at least 5 years with Peer and SKF in
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`separate cases, RBC gives not a single shred of evidence to support this allegation. More
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`importantly, this statement is again a direct contradiction of the facts found by the Arbitration
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`Panel. Final Order, Exhibit 1, p. 14, Facts 4 and 10.
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`15
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`Instead of addressing the undisputed facts head on, RBC misleadingly quotes from a
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`portion of the Arbitration Panel’s Final Order as if it was a holding, when in fact it was just the
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`Panel’s summary of RBC’s argument, not a finding of fact. See, Petition, p. 7 (citing to Exhibit
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`1, p. 7, Final Order). The actual finding of fact by the Panel, summarized on pp. 13-14 of the
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`Final Order, was directly contrary to this argument. This argument and misquotation of the prior
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`decision constitutes an active misrepresentation of the record by RBC.
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`RBC also references several times a “substantial symbiotic relationship” between Peer
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`and SKF. See, Petition, pp. 12, 13, and 14. It argues that Peer’s attorneys and SKF’s attorneys
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`constitute a “common legal representative” (Petition, p. 13) and that
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`this common legal
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`representative “has already represented conflicting interests in the opposition of RBC’s marks
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`prior to the Arbitration (i.e. collectively opposing RBC’s P marks) and subsequent
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`to the
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`opposition (withdrawing but arguing to continue with other oppositions of RBC’s marks)?’
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`Again, not one fact is set out to support these statements, and they contradict the Panel’s findings
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`of fact. But more importantly, RBC then follows
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`these statements w