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TTAB
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`IN THE UNITED STATES PATENT AND TRADEMARK OF1<1L‘1£
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`STAMPS.COM INC.,
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`oppose,-,
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`V_
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`Opposition No. 91 177737
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`Serial No. 78/591,795
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`PSI SYSTEMS, INC.,
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`Mark: ISTAMPS
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`
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`Applicant. HlllllllllllllllllllllllllHIHIIIHIIIIHIHIIII
`07-21-2008
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`PSI SYSTEMS’ OPPOSITION TO STAMPS.COM'S MOTION TO
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`COMPEL RESPONSES TO DOCUMENT REQUESTS AND
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`INTERROGATORIES AND MOTION FOR PROTECTIVE ORDER
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`“sis”.
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`?- T'1T*:”" '15:: P:;‘. E‘.
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`:9:
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`I.
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`INTRODUCTION
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`Opposer Stamps.com Inc. ("Stamps.com") has moved to compel Applicant PSI
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`Systems, Inc. ("PSl") to produce documents in response to Stamps.com's First Set of Requests
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`for Production of Documents and Things and to provide further amended and supplemental
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`responses to Stamps.com's First Set of Interrogatories.
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`Pursuant to 37 C.F.R. § 2.120(f), PSI opposes and responds by moving the
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`Trademark Trial and Appeal Board for a protective order directing Stamps.com to amend its
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`First Set of Requests for Production of Documents and Things to withdraw requests that are
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`duplicative, irrelevant, overly broad, unduly burdensome or improperly request confidential and
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`trade secret information. The relief sought by Opposer—inc1uding production of a fi,si_\Le_:
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`quantity of documents in electronic form——is unreasonable and unwarranted and does not
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`outweigh the burden and expense to PS1 in this opposition proceeding over an intent-to—use
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`PSI‘S MOTION FOR pnorscrrve ORDER
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`trademark. Also, PS1 has already served further amended and supplemental responses to
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`Stamps.com's interrogatories, so that relief sought by Opposer is moot.
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`Filed herewith in support of this opposition is the Declaration of Susan Hwang
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`(“Hwang Decl.”), with accompanying exhibits.
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`II.
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`FACTUAL BACKGROUND
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`Applicant PSI is a provider of goods and services in the Internet postage industry,
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`based in Palo Alto, California. Among other things, PSI's product lines include labels, sheets of
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`labels, label printers, postage scales and bundled software to allow consumers to buy and print
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`postage online. On March 21, 2005, PSI filed its intent-to—use trademark application, U.S.
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`Application Serial No. 78/591,795, for the mark ISTAMPS in connection with "specialized
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`labels or sheets of labels upon which postage can be printed," in International Class 16. The
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`application was published for opposition on April 10, 2007. Stamps.com filed a Notice of
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`Opposition on June 8, 2007, asserting that PSI's mark ISTAMPS was likely to be confused with
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`Stamps.com's registrations for STAMPS.COM, NETSTAMPS, E-STAMP and I-MAIL.
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`PSI and Stamps.com are not unfamiliar parties to each other. Stamps.com has
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`previously filed a patent infringement action against PSI in United States District Court for the
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`Central District of California, Case No. CV 06-7499 ODW (CTx). That case is currently
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`ongoing. See Hwang Decl. ‘H 1.
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`In this proceeding, on July 6, 2007, PSI served a First Set of Interrogatories and
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`First Set of Requests for the Production of Documents and Things on Stamps.com. See Hwang
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`Decl. 1[ 2.
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`On July 30, 2007, Stamps.com served a First Set of Interrogatories and First Set
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`of Requests for the Production of Documents and Things on PSI. See Hwang Decl. 1] 3 &
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`Exhibit A.
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`On August 10, 2007, Stamps.com served responses to PSI's First Set of
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`Interrogatories and First Set of Requests for the Production of Documents and Things, but did
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`not produce any documents. See Hwang Decl. 1] 4.
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`On September 7, 2007, PSI timely served written objections and responses to
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`Stamps.com's First Set of Interrogatories and First Set of Requests for the Production of
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`Documents and Things. See Hwang Decl. 1] 5 & Exhibit B. PSI's timely objections included
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`objections on the ground that the document requests were irrelevant, overly broad and unduly
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`burdensome. Id. PSI also served a set of documents Bates labeled PSI T 000001-000074. Id.
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`On November 5, 2007, the undersigned counsel from the law firm of Sheppard,
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`Mullin, Richter & Hampton LLP substituted in as new counsel for PS1. See Hwang Decl. 1] 6.
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`Because new counsel for PS1 required additional time to get familiar with the
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`proceeding and because the parties required time to negotiate and stipulate to a protective order,
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`the parties filed a stipulation to extend the discovery period from December 25, 2007 to February
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`25, 2008, which was granted by the Board on December 6, 2007. See Hwang Decl. 1] 7.
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`The parties continued in January 2008 to discuss a joint stipulated protective
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`order. See Hwang Decl. 1] 8. In order to provide the parties additional time to stipulate to a
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`protective order and to conduct discovery, the parties again filed a stipulation on February 20,
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`2008 to extend the discovery period from February 25, 2008 to April 25, 2008, which was
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`granted by the Board on March 21, 2008. Id.
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`On March 18, 2008, the parties held a telephone conference to discuss document
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`production. PSI stated to Stamps.com that it was difficult to ascertain the amount and nature of
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`PSI's responsive documents, based on the broad nature of Stamps.com's document requests. See
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`Hwang Decl. 11 9. PSI reminded Stamps.com that the amount of document production in the
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`unrelated patent case between the parties was considerable and suspected that a large number of
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`documents might have to be sifted through in the present proceeding because of Stamps.com's
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`broad document requests. Id. PSI stated that it would most likely have to produce any
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`responsive documents on a ''rolling basis." Id.
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`On March 27, 2008, the parties stipulated to a protective order, which was
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`approved by the Board on April 29, 2008. See Hwang Decl. 1[ 10.
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`On April 10, 2008, Stamps.com requested PS1 to agree to a further extension of
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`the discovery period, and PS1 did so. See Hwang Decl. 11 11.
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`PSI produced documents Bates labeled PSI T 000075-001346 on April 15, 2008
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`and then served supplemental and amended responses to Stamps.com's First Set of
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`Interrogatories on May 7, 2008. See Hwang Decl. 1] 12. Those documents included printouts of
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`the respective parties‘ websites (where both parties advertise and offer their respective products
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`and services) and prosecution file histories of the respective parties’ trademark applications in the
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`U.S. Patent and Trademark Office. Id.
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`On May 15, 2008, the parties filed a stipulation to extend the discovery period
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`from April 25, 2008 to August 25, 2008, which was granted by the Board on June 3, 2008. See
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`Hwang Decl. 1] 13.
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`On May 16, 2008, Stamps.com produced a hard drive containing almost a million
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`documents (Bates labeled STAMPS TM 00000001 — 00957768) in response to PSI's First Set of
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`Requests for Production of Documents and Things. See Hwang Decl. 1] 14. A brief spot review
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`of the documents identified documents that are not relevant to any of PSI's documents requests,
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`as well as publicly available documents (e.g., U.S. patents and prosecution file histories) that are
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`nevertheless designated "Highly Confidential" under the joint stipulated protective order. Id
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`On June 2, 2008, the parties held another telephone conference to discuss
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`discovery. PSI repeated to Stamps.com that it was still working on production of additional
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`responsive documents. See Hwang Decl. 1[ 15. PSI did not make any representations as to
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`whether PSI's document production was complete. Id.
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`On July 3, 2008, Stamps.com filed a motion to compel documents in response to
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`Stamps.com's First Set of Requests for Production of Documents and Things and to provide
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`further amended and supplemental responses to Stamps.com's First Set of Interrogatories. See
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`Hwang Decl. 1] 16.
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`On July 14, 2008, PSI sent a letter to Stamps.com requesting a meet and confer to
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`withdraw requests that are unreasonably and overly broad, burdensome, cumulative or
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`duplicative and to more properly narrow the scope of documents requested by Stamps.com.
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`Hwang Decl. 1[ l7 and Exhibit C. PSI pointed out that it had identified at least 24 GB of data
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`that might be potentially responsive to Stamps.com's First Set of Requests for Production of
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`Documents, which translated to over 385,000 documents, and at least a million pages of
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`documents. Id. Because of the extensive amount of "raw" data involved, the potentially
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`responsive data was identified using automated searches of keywords that were selected from
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`Stamps.com's First Set of Requests for Production of Documents. Id. PSI used broad keywords
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`because Stamps.com's document requests contained very broad requests. Id. PSI pointed out
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`Stamps.com's Request Nos. 23 and 57 as examples of overly broad requests. PSI also noted that
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`the large volume of documents ultimately might not, however, be responsive to the information
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`that Stamps.com is necessarily seeking through its document requests, because of the possibility
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`that an unresponsive document might contain a keyword ("false positive") and the possibility
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`that a responsive document does not contain a keyword ("false negative"). Id
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`PSI informed Stamps.com that the estimated cost of processing a million pages of
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`documents through an e~discovery vendor would likely be at least $100,000 or more. See Hwang
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`Decl. 1] 17 and Exhibit C. An attorney reviewing a million pages of documents for
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`responsiveness, confidentiality or privilege would have to spend at least 3.8 years in review
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`before being able to produce the documents (estimating one minute per page, 12 hours a day, 365
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`days a year). Even a first year associate with an hourly rate of $250 would bill over $4 million
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`for document review. Id PSI suggested that Stamps.com amend its document requests. Id. PSI
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`pointed out that both Stamps.com and PS1 would benefit by coming to an agreement on a
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`focused discovery method, since both parties will incur costs reviewing whatever documents are
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`produced. Id.
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`PSI also served further supplemental and amended responses to Stamps.com's
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`First Set of Interrogatories on July 14, 2008. See Hwang Decl. 1] 18 and Exhibit C.
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`Stamps.com sent a response letter on July 16, 2008, stating that it did not agree
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`with PSI's position on Stamps.com's document requests, but that it was willing to discuss
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`narrowing certain requests. See Hwang Decl. 1] 19 and Exhibit D. Nevertheless, in the same
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`letter, Stamps.com refused to withdraw Request No. 23 and only agreed to limit Request No. 57
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`rather than withdrawing it. Id.
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`The parties held a telephone conference on July 17, 2008 to further discuss
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`Stamps.com's document requests. See Hwang Decl. 1] 20. Stamps.com disagreed with the
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`general contention that its document requests were duplicative, irrelevant, overly broad or unduly
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`burdensome. Id. While Stamps.com stated that it would be willing to discuss the document
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`requests one by one, it did not make any promises that such document requests would ultimately
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`be withdrawn. Id.
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`III.
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`DISCUSSION
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`A.
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`Stamps.com's Document Reguests Should Withdraw Document Reguests that are
`Overly Broad, Unduly Burdensome, Duplicative, Irrelevant or Improperly Reguest
`Confidential and Trade Secret Information
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`Opposer Stamps.com has moved the Board to compel PSI's production of
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`documents in response to Stamps.com's First Set of Requests for Documents and Things. For the
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`reasons set forth below, PSI moves the Board for a protective order to shield PSI from Opposer's
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`overly broad, unduly burdensome, duplicative, irrelevant and improper document requests. PSI
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`requests that the Board order Stamps.com to withdraw such requests.
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`1.
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`Document Reguest Nos. 3, 4, 10-15, 18-24, 39, 53, 57, 63 are Overly Broad
`and Unduly Burdensome
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`PS1 is fully committed to meeting its discovery obligations in this proceeding, but
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`pot Q undue burden £1 unreasonable expense. The Trademark Rules of Practice and the
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`Federal Rules of Civil Procedure clearly provide protection for parties faced with this issue.
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`Rule 26(b)(2)(C)(iii) of the Federal Rules of Civil Procedure provides that:
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`On motion or on its own, the court must limit the frequency or
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`extent of discovery otherwise allowed by these rules or by local
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`rule if it determines that .
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`.
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`. the burden or expense of the proposed
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`discovery outweighs its likely benefit, considering the needs of the
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`case, the amount in controversy, the parties‘ resources, the
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`importance of the issues at stake in the action, and the importance
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`of the discovery in resolving the issues.
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`Rule 26(c)(1) of the Federal Rules of Civil Procedure further provides that:
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`A party or any person from whom discovery is sought may move
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`for a protective order in the court where the action is pending...
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`The court may, for good cause, issue an order to protect a party or
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`person from annoyance, embarrassment, oppression, or undue
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`burden or expense, including one or more of the following:
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`(A) forbidding the disclosure or discovery .
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`.
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`.
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`(C) prescribing a discovery method other than the one selected by
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`the party seeking discovery;
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`(D) forbidding inquiry into certain matters, or limiting the scope of
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`disclosure or discovery to certain matters .
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`.
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`.
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`(G) requiring that a trade secret or other confidential research,
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`development, or commercial information not be revealed or be
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`revealed only in a specified way...
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`See also 37 C.F.R. § 2.l20(f).
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`Finally, Rule 26(b)(2)(B) of the Federal Rules of Civil Procedure provides as
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`follows:
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`Specific Limitations on Electronically Stored Information. A party
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`need not provide discovery of electronically stored information
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`from sources that the party identifies as not reasonably accessible
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`because of undue burden or cost. On motion to compel discovery
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`or for a protective order, the party from whom discovery is sought
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`must show that the information is not reasonably accessible
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`because of undue burden or cost. If that showing is made, the court
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`may nonetheless order discovery from such sources if the
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`requesting party shows good cause, considering the limitations of
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`Rule 26(b)(2)(C). The court may specify conditions for the
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`discovery.
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`Stamps.com's document requests are overly broad and unduly burdensome. In
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`this regard, PSI notes that in the unrelated patent infringement action mentioned, supra, PSI and
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`PSI‘S MOTION FOR PROTECTIVE ORDER
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`Stamps.com have produced an enormous volume of documents at considerable expense, time
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`and effort. PSI does not wish the current Trademark Trial and Appeal Board proceeding to
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`escalate to that same level and knows from experience that the burden and expense to PS1 in
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`responding to Stamps.com's proposed discovery outweighs the discovery's likely benefit,
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`considering the needs of the current proceeding (which is an administrative proceeding to
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`determine the registrability of an intent-to-use trademark), the amount in controversy (of which
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`there is none), the parties‘ resources, the importance of the issues at stake in the action, and the
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`importance of the discovery in resolving the issues.
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`Similar to the patent case, PSI conducted automated "keyword" searches of the
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`electronic documents in its possession, custody or control, using keywords that were selected
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`from Stamps.com's First Set of Requests for Production of Documents. These keywords were
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`quite broad, because Sta1nps.com's document requests contained very broad requests. PSI has
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`confirmed that a_t legit 2_4g3 of data exist in PSI's possession that might be potentially
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`responsive to Stamps.com's First Set of Requests for Production of Documents. This translates
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`to over 385,000 documents gl Q least 2_1 million pages o_f documents.
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`The estimated cost of processing a million pages of documents through an e-
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`discovery vendor would likely be at least $100,000 or more. An attorney reviewing a million
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`pages of documents for responsiveness, confidentiality or privilege would have to spend at least
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`3.8 years in review before being able to produce the documents (estimating one minute per page,
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`12 hours a day, 365 days a year). Even a first year associate with an hourly rate of $250 would
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`bill E j$_4_ million for document review. And, incredibly, all of this burden and expense would
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`be devoted to determining the registrability of an intent-to-use trademark—that is, a trademark
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`that PSI E @ even yg used!
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`Obviously, this is not something that the Trademark Trial and Appeal likely
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`contemplates that the parties engage in, since the standard time for conducting discovery in a
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`Trademark Trial and Appeal Board proceeding is six months, including the taking of discovery
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`depositions. Moreover, Stamps.com’s massive e-discovery demands make a mockery of the
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`intent-to—use application scheme, by which a party is supposed to be able to expeditiously and
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`efficiently determine if a mark is available for registration. Stamps.com has not demonstrated
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`why PS1 is required to produce such a massive quantity of documents in electronic form, if
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`printouts of the relatively few documents relevant to an intent-to-use trademark should suffice.
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`On a related note, PSI notes that Stamps.com produced almost a million pages of
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`documents on PS1 in response to PSI's First Set of Requests for Production of Documents and
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`Things. Stamps.com argues in its motion that it has met its duty to cooperate under TBMP
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`§ 408.01. Yet, even a spot check of the documents produced by Stamps.com demonstrates that it
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`has simply dumped documents on PS1 without diligent regard for relevance or adherence to the
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`stipulated protective order. PS1 will not engage in the same practice and produce documents to
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`Stamps.com without a careful review of the documents.
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`PSI clearly requires relief from the undue burden and expense in responding to
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`Stamps.com's document requests, especially since many of the document requests are overly
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`broad and unduly burdensome.
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`By way of example, PSI reproduces the following requests from Stamps.com's
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`document requests:
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`REQUEST FOR PRODUCTION NO. 3:
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`Any and all DOCUMENTS that refer to, reflect, illustrate, or
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`otherwise contain any information regarding the goods and
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`services described in the Application.
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`REQ QUEST FOR PRODUCTION NO. 4:
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`Any and all DOCUMENTS that refer to, reflect, illustrate, or
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`otherwise contain any information regarding specialized labels or
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`sheets of labels upon which postage may be printed that have been,
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`are being or are intended to be used in the United States.
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`Aside from the fact that the requests are duplicative (since the goods in the
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`application are in fact the specialized labels or sheets of labels), Stamps.com has written the
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`requests so broadly that they cover all documents pertaining to any of PSI's label products, not
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`just those intended to be used in connection with its mark ISTAMPS. It even covers other
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`parties’ label products. Label products are a key product line in PSI's business. A search for a
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`reference to "labels" could conceivably cover advertising, invoices, correspondence and many
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`other categories of documents. Moreover, it is unclear what specific information Stamps.com is
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`seeking through these discovery requests. The sheer scope of the document requests renders
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`them overly broad and unduly burdensome.
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`Similarly, the following two requests are also overly broad and unduly
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`burdensome:
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`REQUEST FOR PRODUCTION NO. 23:
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`Any and all DOCUMENTS that constitute, refer, reflect, illustrate,
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`or otherwise contain any information regarding any actual or
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`proposed use of specialized labels or sheets or labels upon which
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`postage may be printed in connection with any goods or services
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`involving the delivery of postage over the Internet.
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`REQUEST FOR PRODUCTION NO. 57:
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`Any and all DOCUMENTS that refer to, reflect, illustrate, or
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`otherwise contain any information regarding OPPOSER.
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`Based on those two requests alone, the selected keywords "Stamps.com" and
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`''labels'' identified an extremely large volume of documents that ultimately, however, might not
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`be responsive to the information that Stamps.com is necessarily seeking through its document
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`requests. The burden and expense to PS1 in responding to these discovery requests far outweigh
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`any benefit to Stamps.com in obtaining this discovery, which are clearly "kitchen sink"
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`discovery requests meant to capture documents without regard to need, relevance or value to this
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`proceeding. Document Requests 3, 4, 10-15, 18-22, 24, 39, 53 and 63 raise similar concerns.
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`Both Stamps.com and PS1 would benefit if Stamps.com withdraws overly broad
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`and unduly burdensome document requests, since both parties will incur costs reviewing
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`whatever documents are produced.
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`While Stamps.com has stated that it would be willing in principle to discuss
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`amending its discovery requests, its refusal in its July 16, 2008 letter to withdraw and sufficiently
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`limit even the two sample document requests raised by PSI indicates to PS1 that intervention by
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`the Board is necessary to resolve this discovery dispute.
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`Accordingly, PSI requests that the Board order Stamps.com to withdraw these
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`requests, or at least cooperate in good faith with PS1 to specify with more particularity what
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`relevant infonnation Stamps.com is seeking with respect to the document requests. PSI further
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`requests that the Board allow PS1 to determine the manner and method of document production,
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`including paper printouts of electronically stored information as opposed to electronic
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`production.
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`PSl‘S MOTION FOR PROTECTIVE ORDER
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`2.
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`Document Reguest Nos. 64 and 68 are Irrelevant
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`Stamps.com's Document Request Nos. 64 and 68 are irrelevant to this proceeding.
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`Stamps.com's Document Requests Nos. 64 and 68 request documents that "refer to, reflect,
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`illustrate or otherwise contain any information regarding [the/YOUR] use of specialized labels or
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`sheets of labels upon which postage may be printed" in connection with PSI's Instapostage®
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`mark and Dymo Stamps® mark. Neither of those marks are involved in this proceeding.
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`A party need not provide discovery with respect to those of its marks and goods
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`that are not involved in the proceeding and have no relevance thereto. TBMP § 414 (10); see
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`also VolkswagenwerkAktiengesellschafi v. Thermo-Chem Corp., 176 USPQ 493 (TTAB 1973)
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`(applicant need not provide information as to its other marks or its other products, or as to
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`whether involved mark is used on other products). Accordingly, PSI requests that the Board
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`order Stamps.com to withdraw these requests, or at least specify with particularity what relevant
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`information Stamps.com is seeking with respect to PSI's Instapostage® mark and Dymo Stamps®
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`mark.
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`3.
`
`Document Reguest Nos. 3-4, 5-6, 7-8, 10-11, 14-15, 29, 30 and 32 are
`Duplicative
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`Stamps.com's Document Request Nos. 3-4, 5-6, 7-8, 10-11, 14-15, 29, 30 and 32
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`contain duplicative requests because they generally ask the same question twice. PSI filed its
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`intent—to-use trademark application, U.S. Application Serial No. 78/591,795, for the mark
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`ISTAMPS in connection with "specialized labels or sheets of labels upon which postage can be
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`printed.“ By way of example, the following requests are duplicative:
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`REQUEST FOR PRODUCTION NO. 5:
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`Any and all DOCUMENTS that constitute, refer to, reflect,
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`illustrate, or otherwise contain any information regarding any
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`PSl'S MOTION FOR PROTECTIVE ORDER
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`actual or proposed use of ISTAMPS in connection with the goods
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`and services described in the APPLICATION.
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`RES QUEST FOR PRODUCTION NO. 6:
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`Any and all DOCUMENTS that constitute, refer to, reflect,
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`illustrate, or otherwise contain any information regarding any
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`actual or proposed use of ISTAMPS in connection with specialized
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`labels or sheets of labels upon which postage can be printed that
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`have been, are being or are intended to be used in the United
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`States.
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`The two requests essentially request the same information, and this strategy is
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`employed throughout Stamps.com's document requests. Accordingly, PSI requests that the
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`Board direct Stamps.com to withdraw such duplicative requests.
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`4.
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`Document Reguest Nos. 63, 64 and 69 Improperly Reguest Confidential and
`Trade Secret Information
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`Stamps.com's Document Requests NOS. 63, 64 and 69 request documents
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`containing information about PSI's customers, including customer lists. Request No. 63 requests
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`customer lists for any customers purchasing any of PSI's label or label sheet products, not
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`specific to any of PSI's trademark. Request No. 64 requests customer lists for any customers
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`purchasing any products under PSI's Instapostage® mark, which is not involved in this
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`proceeding. Request No. 69 requests customer lists for any customers purchasing any products
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`under PSI's Dymo Stamps® mark, which is not involved in this proceeding.
`
`The names of customers are not discoverable, even under a protective order. See
`
`TBMP § 414 (3), citing, inter alia, Sunkist Growers, Inc. v. Benjamin Ansehl Company, 229
`
`USPQ 147 (TTAB 1985) (need for customer names does not outweigh possible harm, such as
`
`harassment of customers); J.B. Williams Co. v. Pepsodent G.mb.H., 188 USPQ 577 (TTAB
`
`W02-WEST:LSH\400942588.1
`
`-14-
`
`PSI'S MOTION FOR PROTECTIVE ORDER
`
`

`
`1975) (names of customers need not be identified). Accordingly, PSI requests that the Board
`
`deny Stamps.com's motion to compel documents responsive to these requests.
`
`5.
`
`The Board Should Grant PSI's Motion for a Protective Order
`
`For all the reasons stated herein, PSI respectfully requests that the Board grant
`
`PSI’s motion for protective order and deny Stamps.com's motion to compel PS1 to respond to
`
`Stamps.com's those requests in the First Set of Requests for Production of Documents and
`
`Things that are duplicative, irrelevant, overly broad, unduly burdensome or improperly request
`
`confidential and trade secret information.
`
`B.
`
`PSI Has Responded to Stamps.com's Reguest for Further Supplemental and
`Amended Responses to Stamps.com's First Set of Interrogatories
`
`Stamps.com has requested further supplemental and amended responses to
`
`Stamps.com's First of Interrogatories. PSI served firrther supplemental and amended responses
`
`on July 14, 2008, rendering Opposer's motion moot. Accordingly, Opposer's motion on this
`
`issue should be denied.
`
`C.
`
`PSI Has Made a Good Faith Effort to Meet and Confer with Stamps.com on its
`Motion for a Protective Order
`
`In accordance with 37 C.F.R. 2.120(e)(2), PSI certifies that its counsel made a
`
`good faith effort by telephone and written correspondence with Stamps.com's counsel to resolve
`
`the issues presented by this Motion for Protective Order, and has been unable to reach an
`
`agreement with Stamps.com to date.
`
`IV.
`
`CONCLUSION
`
`For all the reasons stated herein, PSI respectfully requests that the Board grant
`
`PSI's motion for a protective order and deny Stamps.com's motion to compel documents in
`
`W02-WEST:LSH\400942588.l
`
`-1 5 -
`
`PSI'S MOTION FOR PROTECTIVE ORDER
`
`

`
`response to those document requests in Stamps.com's First Set of Requests for Production of
`
`Documents and Things that are duplicative, irrelevant, overly broad, unduly burdensome or
`
`improperly request confidential and trade secret information. PSI requests that the Board deny
`
`Stamps.com's motion to compel further supplemental and amended responses to its First Set of
`
`Interrogatories, since the issue is now moot.
`
`Dated: July 18, 2008
`
`on LLP
`
`
`
`Susan wang, Esq.
`Sheppard, Mullin, Richter & H
`333 South Hope Street, 43”‘ F
`Los Angeles, California 90
`Tel.: (213) 620-1780
`Fax: (213)620-1398
`
`
`
`Attorneys for Applicant
`PSI SYSTEMS, INC.
`
`W02~WEST:LSH\400942588.1
`
`-16-
`
`PSI‘S MOTION FOR PROTECTIVE ORDER
`
`

`
`CERTIFICATE OF MAILING UNDER 37 C.F.R.
`
`1.8
`
`I hereby certify that on this day the foregoing "PSI's Opposition to Stamps.com's
`
`Motion to Compel Discovery and Motion for Protective Order" is being deposited with the
`
`United States Postal Service with sufficient postage as first class mail in an envelope addressed
`
`to the Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
`
`
`
`‘
`
`pton LLP
`
`Dated: July 18, 2008
`
`
`
`Susan Hwang, Esq.
`
`Sheppard, Mullin, Richtfi
`
`333 South Hope Street, 48 Floor
`
`Los Angeles, California 90071
`
`Te1.: (213) 620-1780
`
`Fax: (213)620-1398
`
`Attorneys for Applicant
`
`PSI SYSTEMS, INC.
`
`W02-WEST:LSH\400942588.l
`
`-17-
`
`PSI'S MOTION FOR PROTECTIVE ORDER
`
`

`
`CERTIFICATE OF SERVICE
`
`This is to certify that I have this day caused to be served a copy of the foregoing
`
`"PSI's Opposition to Stamps.com's Motion to Compel and Motion for Protective Order" on
`
`counsel for Opposer, by placing a copy in the United States Mail, postage pre-paid, addressed as
`
`follows:
`
`Justin Sobodash
`
`GRAVES LAW OFFICE, P.C.
`
`12121 Wilshire Boulevard, Suite 775
`
`Los Angeles, CA 90025
`
`Dated: Ju1y18, 2008
`
`l
`
`1
`
`l
`
`' W
`
`,,....
`
`Susan Hwang, Esq.
`
`\
`
`Sheppard, Mullin, Ric tyz Hampton LLP
`
`333 South Hope Street,
`
`8"‘ Floor
`
`Los Angeles, California 90071
`
`Tel.: (213) 620-1780
`
`Fax: (213)620-1398
`
`Attorneys for Applicant
`
`PSI SYSTEMS, INC.
`
`W02-WEST:LSH\400942588.l
`
`-1 8-
`
`PSPS MOTION FOR PROTECTIVE ORDER
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`STAMPS.COM 1Nc.,
`
`Opposer,
`
`V-
`
`PS1 SYSTEMS: INC»
`
`Applicant
`
`
`
`Opposition No. 91177737
`
`Serial No. 78/591,795
`
`Mark: ISTAMPS
`
`DECLARATION OF SUSAN HWANG IN SUPPORT OF PSI SYSTEMS‘ OPPOSITION
`
`TO STAMPS.COM'S MOTION TO COMPEL RESPONSES TO DOCUMENT
`
`REQUESTS AND INTERROGATORIES AND MOTION FOR PROTECTIVE ORDER
`
`1, Susan Hwang, hereby declare and state as follows:
`
`1.
`
`Stamps.com has previously filed a patent infringement action against PS1
`
`in United States District Court for the Central District of California, Case No. CV 06-7499 ODW
`
`(CTx). That case is currently ongoing.
`
`2.
`
`On July 6, 2007, PSI served a First Set of Interrogatories and First Set of
`
`Requests for the Production of Documents and Things on Stamps.com.
`
`3.
`
`On July 30, 2007, Stamps.com served a First Set of Interrogatories and
`
`First Set of Requests for the Production of Documents and Things on PSI. Attached as Exhibit A
`
`is a true and correct copy of Stamps.com's First Set of Requests for the Production of Documents
`
`and Things.
`
`4.
`
`On August 10, 2007, Stamps.com served responses to PSl's First Set of
`
`Interrogatories and First Set of Requests for the Production of Documents and Things, but did
`
`not produce any documents.
`
`W02~WEST:LSH\400942587.1
`
`-1-
`
`

`
`4.
`
`On August 10, 2007, Stamps.com served responses to PSI's First Set of
`
`Interrogatories and First Set of Requests for the Production of Documents and Things, but did
`
`not produce any documents.
`
`5.
`
`On September 7, 2007, PSI timely served written objections and responses
`
`to Stamps.com's First Set of Interrogatories and First Set of Requests for the Production of
`
`Documents and Things. Attached as Exhibit B is a true and correct copy of PSI's responses to
`
`Stamps.com's First Set of Requests for the Production of Documents and Things. PSI's timely
`
`objections included objections on the ground that the document requests were irrelevant, overly
`
`broad and unduly burdensome. PSI also served a set of documents Bates labeled PSI T 000001-
`
`000074.
`
`6.
`
`On November 5, 2007, the undersigned counsel from the law firm of
`
`Sheppard, Mullin, Richter & Hampton LLP substituted in as new counsel for PS1.
`
`7.
`
`Because new counsel for PS1 required additional time to get familiar with
`
`the proceeding and because the parties required time to negotiate and stipulate to a protective
`
`order, the parties filed a stipulation to extend the discovery period from December 25, 2007 to
`
`February 25, 2008, which was granted by the Board on December 6, 2007.
`
`8.
`
`The parties continued in January 2008 to discuss a joint stipulated
`
`protective order. In order to provide the parties additional time to stipulate to a protective order
`
`and to conduct discovery, the parties again filed a stipulation on February 20, 2008 to extend the
`
`discovery period from February 25, 2008 to April 25, 2008, which was granted by the Board on
`
`March 21, 2008.
`
`9.
`
`On March 18, 2008, the parties hel

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