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`TTAB
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`IN THE UNITED STATES PATENT AND TRADEMARK OF. -.,..
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Serial No. 77/066,734
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`Opposition No. 91185350
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`Mark: HERBAN GARDENS
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`HUBIE GROWN, LLC
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`Opposer,
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`v.
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`HEB GROCERY COMPANY, LP,
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`Applicant.
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`APPLICANT’S MOTION FOR ENTRY OF PROTECTIVE ORDER
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`OPPOSER’S RESPONSE TO
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`INTRODUCTION
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`Applicant has moved for the entry of a modified protective order 1 as an alternative to the
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`Board’s standard protective order under 37 C.F.R. § 2.1 l6(g). This Motion is opposed by
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`opposer because disclosure of opposer’s trade secret/commercially sensitive materials to its
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`competitor’s in-house counsel poses an unacceptable risk of inadvertent disclosure.
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`ARGUMENT
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`I. THE PROTECTIVE ORDER SHOULD NOT BE MODIFIED TO COMPROMISE
`THE CONFIDENTIALITY OF OPPOSER’S TRADE SECRET/COMMERCIALLY
`SENSITIVE MATERIALS.
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`Applicant asserts that its in-house counsel should be given access to all of the trade secret
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`and commercially sensitive materials of the opposer. However, applicant fails to indicate that its
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`in-house counsel are not involved in applicant’s competitive decision making and would not
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`present an unacceptable risk of inadvertent disclosure of the trade secret/commercially sensitive
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`1 For the convenience of the Board, a red-lined version of applicant’s modified protective order is provided as
`Exhibit A to reveal the differences between applicant’s modified protective order and the Board’s standard
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`protective order.
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`Il|l|||HlllIllll||||H||||H|||||||I|||||||Hll||
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`10-27-2008
`5: 7'”E‘¢‘:/T"\ Natl Rcpt CL
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`L‘ S Patent
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`an
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`information. Furthermore, applicant fails to assert any additional justifications for the proposed
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`modification of the standard Board protective order.
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`A.
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`Granting Applicant Access to Trade Secret/Commercially Sensitive
`Materials Presents an Unacceptable Risk of Inadvertent Disclosure
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`The Board has stated that the primary determining factor in granting in-house counsel
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`access to trade secret/commercially sensitive materials is “whether in-house counsel is involved
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`in its employer-litigant’s ‘competitive decisionrnaking.’” Georgia-Pacific Corp. and Fort James
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`Operating Co. v. Solo Cup C0., 80 U.S.P.Q.2d 1950, 1952 (T.T.A.B. 2006), (citing US. Steel
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`Corp. v. United States, 730 F.2d 1465 (Fed. Cir. 1984)). In the Georgia-Pacific decision, an
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`opposer in a Board proceeding requested the standard protective order be modified to allow two
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`in-house counsel access to trade secret/commercially sensitive material of applicant. 80
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`U.S.P.Q.2d at 1951. Finding that the opposer had only made a minimal showing that in-house
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`counsel were not involved in their employer’s competitive decision making, the Board ruled in a
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`precedential decision that the standard protective order should not be modified because it would
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`present an unacceptable risk of inadvertent disclosure of such information under Rule 26(c) of
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`the Federal Rules of Civil Procedure.2 80 U.S.P.Q.2d at 1953.
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`Similar to the opposer in Georgia-Pacific, applicant in the present matter has sought to
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`have the standard protective order modified to allow its two in-house counsel access to trade
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`secret/commercially sensitive information. In doing so, applicant fails to show that its in-house
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`counsel do not participate in competitive decision making. Applicant’s motion actually reveals
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`that its in-house counsel are involved with “formulating settlement positions, and conducting
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`other activities that may relate to the settlement or resolution of this matter”, i.e., the in-house
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`counsel are directly involved with competitive decision making.
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`
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`2 Rule 26(c) provides:
`Upon motion by a party or by the person from who discovery is sought, accompanied by a certification that
`the movant has in good faith conferred or attempted to confer with other affected parties in an effort to
`resolve the dispute without court action, and for good cause shown, the court in which the action is pending
`or alternatively, on matters relating to a deposition, the court in the district where the deposition is to be
`taken may make any order which justice requires to protect a party or person from annoyance,
`embarrassment, oppression, or undue burden or expense, including one or more of the following:
`(7) that a trade secret or other confidential research, development, or commercial information not be
`revealed or revealed only in a designated way. Fed. R. Civ. P. 26(c).
`2
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`on
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`It is also reasonable to infer that, at least in view of their status as counsel dealing with
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`intellectual property matters, it is likely that applicant’s in—house counsel are likely to be in
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`regular contact with the marketing and/or engineering personnel of applicant and thus participate
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`in the applicant’s competitive decision making.
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`Furthermore, applicant and opposer are competitors with each other as they are selling
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`identical goods — live potted plants. Thus, applicant’s in-house counsel will frequently be in a
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`position of advising applicant on matters relating directly to the subject matter of opposer’s trade
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`secrets/commercially sensitive material. This places in-house counsel in the position of having
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`to either deny legal advice to their employer or indirectly and improperly revealing opposer’s
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`trade secrets/commercially sensitive material. See Brown Bag Software v. Symnatec Corp., 960
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`F.2d 1465 (9th Cir. 1992) [finding that in-house counsel who advised employer on a number of
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`legal issues was involved in competitive decision making and presented a risk of inadvertent
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`disclosure].
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`Although applicant has alleged that its modified protective order insures that protected
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`information remains confidential, there has been no consideration of the substantial and
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`unacceptable risk of inadvertent disclosure nor has there been consideration of the harm to
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`opposer that would be caused by inadvertent disclosure. Particularly troublesome is the
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`possibility of having opposer’s trade secret/commercially sensitive materials floating around in
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`its competitor’s headquarters. Therefore, as the in-house counsel of applicant are involved in
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`applicant’s competitive decision making, granting applicant’s in-house counsel access to trade
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`secret/commercially sensitive materials presents an unacceptable risk of inadvertent disclosure
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`whereby applicant’s motion should be denied.
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`B.
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`Applicant Presents No Proper Reason Why In-House Counsel Should Have
`Access to Trade Secret/Commercially Sensitive Materials
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`In the Applicant’s Motion for Entry of Protective Order, applicant fails to provide any
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`legitimate justification for departing from the Board’s standard practice of restricting in—house
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`counsel from access to trade secret/commercially sensitive information. Although applicant
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`contends that modification of the protective order is necessary to avoid “unnecessary delays in
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`developing strategies that may ultimately lead to a speedy resolution of the opposition”, this does
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`3
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`not justify disregarding the unacceptable risk of inadvertent disclosure presented by a
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`competitor’s in-house counsel having their hands on opposer’s trade secret/commercially
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`sensitive information. The impact of the standard protective order on communications between
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`outside and in-house counsel as alleged by applicant in its motion can be cited by nearly every
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`party seeking to modify the standard protective order in a manner similar to the applicant. Thus,
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`this hardly serves to distinguish this present matter from other instances where the Board has
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`refused to modify the standard protective order to permit access to in-house counsel to trade
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`secret/commercially sensitive information. In finding no reason to modify the standard
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`protective order in the Georgia-Pacific case, the Board was presented with similar arguments by
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`the party seeking to permit in-house counsel access to trade secret/commercially sensitive
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`information. See Opposer’s Memorandum in Opposition to Applicant’s Motion for Entry of
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`Comprehensive Protective Order (Exhibit B) at page 6, Georgia-Pacific Corp. and Fort James
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`Operating Co. v. Solo Cup Co., 80 U.S.P.Q.2d 1950 (T.T.A.B. 2006) (No. 91157293) and
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`Opposer’s Memorandum in Reply to Applicant’s Opposition to Opposers’ Motion to Modify the
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`Protective Order and Re-Designate Dr. Paul Singh’s Report and Testimony as Non-Confidential
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`(Exhibit C) at page 6, Georgia-Pacific, 80 U.S.P.Q.2d 1950 (No. 91157293). As can be inferred
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`from the Board’s ruling in the Georgia-Pacific case, such arguments do not serve as sufficient
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`justification for entering a protective order to allow in-house counsel access to trade
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`secret/commercially sensitive materials.
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`Finally, applicant has shown in the past that it is capable of participating in Board
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`proceedings while denying in-house counsel access to trade secrets and commercially sensitive
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`materials. See Agreed Motion for Entry of Protective Order (Exhibit D) at page 3, Eddy Packing
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`Co., Inc. v. HEB Grocery C0., LP, No. 92041545 (T.T.A.B. Aug. 10, 2004) and Provisions for
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`Protecting Confidentiality of Information Revealed During Board Proceeding (Exhibit E) at
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`page 2, 7-Eleven, Inc. v. HEB Grocery Co., L.P, 83 U.S.P.Q.2d 1257 (T.T.A.B. 2007) (No.
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`91162178). Accordingly, any inconvenience applicant believes will be imposed by the Board’s
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`standard protective order is insufficient to both deviate from standard Board practices and ignore
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`the unacceptable risk of inadvertent disclosure.
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`II. APPLICANT DID NOT TRY TO NEGOTIATE AN ACCEPTABLE
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`PROTECTIVE ORDER IN GOOD FAITH.
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`In its motion, applicant claims it conferred with opposer in good faith regarding entry of a
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`mutually agreeable protective order. However, without any prior consultation with opposer,
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`applicant sent the modified protective order. See Exhibit 2 attached to applicant’s motion. In
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`doing so, applicant provided no indication of how this modified protective order differed from
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`the Board’s standard protective order or why it was wasting everyone’s time by not just using the
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`Board’s standard protective order which was already in place. Only after the undersigned asked
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`for an explanation from applicant did it reveal its true intentions of letting its in-house counsel
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`gain access to opposer’s trade secret/commercially sensitive materials. See Exhibit 3 attached to
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`applicant’s motion.
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`In the penultimate paragraph of its motion, applicant claims opposer “made no attempt to
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`negotiate a mutually agreeable protective order.” However, when the undersigned contacted
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`applicant’s outside counsel by phone to object to the provision in the modified protective order
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`which would give applicant’s in-house counsel access to opposer’s trade secret/commercially
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`sensitive material, applicant’s outside counsel gave the undersigned an ultimatum — either accept
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`the modified protective order or he would file the present motion to have it entered. See also the
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`similar ultimatum in the last sentence in the first paragraph of his October 1, 2008 email (Exhibit
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`3 attached to applicant’s motion) which states “[i]f your client is not agreeable to have it entered,
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`I will make a motion to have it entered.” Such ultimatums do not reveal a good faith attempt on
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`the part of applicant to negotiate entry of a mutually agreeable protective order but rather a
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`unilateral take-it-or-leave-it attitude by applicant.
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`Applicant also states in its motion: “[i]n fact, Opposer was unwilling or unable to identify
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`any type or class of documents it was concerned about Applicant’s in-house counsel having
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`access to, effectively putting an end to negotiations.” This is a flagrant misrepresentation as the
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`undersigned categorically denies there was any discussion with applicant or its counsel about
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`identifying any such type or class of documents. The true facts are that it was applicant’s
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`ultimatums as outlined in the preceding paragraph that ended the negotiations which never really
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`started in view of applicant’s take-it-or-leave-it attitude.
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`

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`It is respectfully submitted that applicant is wasting everyone’s time, including the
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`Board’s time, by ignoring the Board’s standard protective order and attempting to change the
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`longstanding Board precedent of not permitting in-house counsel access to trade
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`secret/commercially sensitive material. This attempt should be denied.
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`III. CONCLUSION
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`Based on the foregoing, opposer respectfully requests that the Board deny Applicant’s
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`Motion For Entry of Protective Order on the grounds that the proposed modification presents an
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`unacceptable risk of inadvertent disclosure.
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`Dated:
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`/5 21 200?
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`Respectfully submitted,
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`HUBIE GROWN, LLC
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`Opposer
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`By
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`Attorney for Opposer
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`WARE, FRESSOLA, VAN DER SLUYS
`& ADOLPHSON
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`Bradford Green, Building Five
`755 Main Street, P.O. Box 224
`Monroe, Connecticut 06468
`Telephone: (203) 261-1234
`Facsimile (203)261-5676
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`

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`CERTIFICATE OF MAILING AND SERVICE
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`This hereby certifies that the original of this paper was mailed to the U.S. Patent and
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`Trademark Office and a copy of this paper was mailed to Opposer’s counsel on the date
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`indicated below by depositing the same with the United States Postal Service as first-class mail,
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`postage prepaid to:
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`United States Patent and Trademark Office
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`Trademark Trial and Appeal Board
`PO Box 1451
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`Alexandria VA 22313-1451
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`and
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`Kirt S. O’Neill
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`Daniel Moffett
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`Akin, Gump, Strauss, Hauer & Feld, LLP
`PO Box 12870
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`San Antonio TX 78212
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`Dated: October 23, 2008
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`df d A lphson
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`

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`TRADEMARK QFFICE
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`, IN THE UNITED STATELPATENT AND
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` HQN
` CEEmNG
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` ‘
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`[=1§gBIE QRQWQ, LL; ;,
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`..
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`§
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`Serial No.:
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`77/066 734
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`§
`Oggoser,
` §
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`V
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`rk:
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`HERBAN G RDEN
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`HEB
`
`ERYC MPANY L
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`§
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`§
`éggligant.
` §
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`0 itionN :
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`11 5
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`Information disclosed by any party or non-party witness during this proceeding may be considered confidential,
`a trade secret, or commercially sensitive by a party or witness. To preserve the confidentiality of the information
`so disclosed, either—the parties have agreed to be bound by the termsof
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`
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`Agreement of the parties is indicated by the signatures of the parties’ attorneys anetler
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` at the conclusion of theorder
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`g% . tedtrt. Ttsre binding from
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`
`TERMS OF ORDER
`
`A
`1) Classes of Protected Information.‘
`The Rules ot Practice in Trademaurk ‘Cases. provide that all inter partes proceeding files, as well as the
`involved registration and application files, are open to public inspection. The terms of this order are not
`to be used to undermine public access to files. When appropriate. however, a party or witness, on its
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`

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`‘I
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`own or through its attorney, may seek to protect the confidentiality of information by employing one of
`the following designations.
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`Confidential—Material to be shielded by the Board from public access.
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`Trade Secret/Commercially Sensitive—Material to be shielded by the Board from public access,
`restricted from any access by the parties", and available for review by outside counsel for the parties
`and, subject to-the provisions of paragraph 4g_,__§ and ag, by independent experts or consultants for
`I and Designated lnzljouse Counsel of the parties.
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`2) Information Not to Be Designated as Protected.
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`Information may not be designated as subject to any form of protection if it (a) is, or becomes, public
`knowledge, as shown by publicly available writings, other than through violation of the terms of this
`document; (b) is acquired by a non—designating party or non—party witness from a third party lawfully
`possessing such information and having no obligation to the owner of the information; (c) was lawfully
`possessed by a non—designating party or nonéparty witnessprior to the opening of discovery in this
`proceeding, and for which there is written evidence of the lawful possession; (d) is disclosed by a non-
`designating party or non—party witness legally compelled to disclose the information; or (e) is disclosed
`by a non—designating party with the approval of the designating party.
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`3) Access to Protected Information.
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`The provisions of this order regarding access to protected information are subject to modification by
`written agreement of the parties or their attorneys, or by motion filed with and approved by the Board.
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`Judges, attorneys, and other employees of the Board are bound to honor the parties’ designations of
`information as protected but are not required to sign forms acknowledging the terms and existence of
`this order. Court reporters, stenographers, video technicians or others who may be employed by the
`parties or their attorneys to perform services incidental to this proceeding will be bound only to the
`extent that the parties or their attorneys make it a condition of employment or obtain agreements from
`such individuals, in accordance with the provisions of paragraph 4.
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`Parties are defined as including individuals, officers of corporations, partners of partnerships, and
`management employees of any type of business organization.
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`Attorneys for parties are defined as including in-house counsel and outside counsel, including
`support staff operating under counsel’s direction, such as paralegals or legal assistants, secretaries,
`and any other employees or independent contractors operating under counsel's instruction.
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`H0
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`Independent experts or consultants include individuals retained by a party for purposes related to
`prosecution or defense of the proceeding but who are not otherwise employees of either the party or
`its attorneys.
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`Non-party witnesses include any individuals to be deposed during discovery or trial, whether willingly
`or under subpoena issued by a court of competent jurisdiction over the witness.
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`Parties Q their attorneys shall have access to information designated as confidentiale_r—highly
`subject to any agreed exceptions.
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`, but
`in-house counse|£L_1n;_ I
`g
`_
`A
`_
`-A
`Outside counsel
`; shallhave access to information designated astrade '
`'
`‘
`‘
`'
`'
`‘
`secret/commercially sensitive o
`o
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`I
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`Independent experts or consultants, non-party witnesses, fig any other individual not otherwise
`specifically covered by the terms of this order may be afforded access to confidential _e_r-highly
`confidential-information in accordance with the terms that follow in paragraph 4. Further,
`independent experts or consultants may have access to trade secretlcommercially sensitive
`information if such access is agreed to by the parties or ordered by the Board, in accordance" with the
`terms that follow in paragraph 4 and 5.
`'
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`4) Disclosure to Any Individual.
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`Prior to disclosure of protected information by any party or its attorney to any individual not already
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`'provided access to such information by the terms-of this order‘ ‘ ' ' ‘ ' ‘
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`
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`the individual shall be informed of the
`existence of this order and provided with a copy to read. The individual will then be required to certify
`in writing that the order has been read and understood and that the terms shall be binding on the
`individual. No individual shall receive any protected information until the party or attorney proposing to
`disclose the information has received the signed certification from the individual
`Q_f.th9 Qeriifrcallnn Qn_al| Qgunsel OI Lescrd. A form for such certification
`'
`‘
`is attached to this ema Pnots-161116 QLdeJ' as
`The party
`or attorney receiving the completed bm shall retain the original.
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`5) Disclosure to Independent Experts or Consultants.
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`In addition to meeting the requirements of paragraph 4, any party or attorney proposing to share
`disclosed information with an independent expert or consultant must also notify the--party-~which
`Notification must be personally served or
`fonrvarded by certified mail, return receipt requested, and shall provide notice of the name, address.
`occupation and professional background of the expert or independent consultant.
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`Ihegy party or its attorney receiving the notice shall have ten (10) business days to object to
`disclosure to the expert or independent consultant. If objection is made, then the parties must
`negotiate the issue before raising the issue before the Board. If the parties are unable to settle their
`dispute, then it shall be the obligation of the party or attorney proposing disclosure to bring the matter
`before the Board with an explanation of the need for disclosure and a report on the efforts the parties
`have made to settle their dispute. The party objecting to dis_closure,wi|| be expected to respond with its
`arguments against disclosure or its objections will be deemed waived.
`
`' 1
`
`V
`) Responses to Written Discovery.
`Responses to interrogatories ‘under Federal Rule 33 and requests for admissions under Federal Rule
`36, and which the responding party reasonably believes to contain protected information shall be
`prominently stamped-or marked with the _appropriate designation from paragraph 1. Any inadvertent
`disclosure without appropriate designation shall be remedied as soon as the disclosing party learns of
`‘its error, by informing all adverse parties, in‘wn'ting,"o'f the "error. The parties should inform the Board
`only if necessary because of the filing of protected information not in accordance with the provisions of
`paragraph 42-Q
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`

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`tr
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`lg) Production of Documents.
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`If a party responds to requests for production under Federal Rule 34 by making copies and forwarding
`the copies to the inquiring party, then the copies shall be prominently stamped or marked, as
`A
`necessary, with the appropriate designation from paragraph 1. if the responding party makes
`documents available for inspection and copying by the inquiring party, all documents shall be
`considered protected during the course of inspection. After the inquiring party informs the responding
`party what documents are to be copied, the responding party will be responsible for prominently
`stamping or marking the copies with the appropriate designation from paragraph 1. Any inadvertent
`disclosure without appropriate designation shall be remedied as soon as the disclosing party learns of
`its error,‘ by informing all adverse parties,_ in writing, of -the error. The parties should inform the Board
`only if necessary because of the filing of protected information not in accordance with the provisions of
`paragraph ¢2—.J_§,_
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`sg) Depositions.
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`Protected documents produced during a discovery deposition, or offered into evidence during a
`testimony deposition shall be orally noted as such by the producing or offering party at the outset of
`any discussion of the document or information contained in the document. In addition, the documents
`must be prominently stamped or marked with the appropriate designation.
`
`During discussion of any non-documentary protected information, the interested party shall make oral
`note of the protected nature of the information.
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`The transcript of any deposition and all exhibits or attachments shall be considered protected for 30
`days following the date of service of the transcript by the party that took the deposition. During that 30-
`day period, either party may designate the portions of the transcript, and any specific exhibits or
`attachments, that are to be treated as protected, by electing the appropriate designation from
`paragraph 1. Appropriate stampings or markings should be made during this time. If no such
`designations are made, then the entire transcript and exhibits will be considered unprotected.
`
`9;|;Q) Filing Notices of Reliance.
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`When a party or its attorney filesa notice of reliance during the party's testimony period, the party or
`attorney is bound to honor designations made by the adverse party or attorney, or non-party witness,
`who disclosed the information, so as to maintain the protected status of the information.
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`.
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`401:1) Briefs.
`
`When filing briefs, memoranda, or declarations in support of a motion, or briefs at final hearing, the
`portions of these filings that discuss protected information, whether information of the filing party, or
`any adverse party, or any non-party witness, should be redacted. The rule of reasonableness for
`redaction is discussed in paragraph 42g of this order.
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`Mg) Handling of Protected Information.
`
`Disclosure of information protected under the terms of this order is intended only to facilitate the
`prosecution or defense of this case. The recipient of any protected information disclosed in accordance
`with the terms of this order is obligated to maintain the confidentiality of the information and shall
`exercise reasonable care in handling, storing, using or disseminating the information.
`
`421;) Redaction; Filing Material With the Board.
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`. When a party or attorney must file protected information with the Board, or a brief that discusses such
`information, the protected information or portion of the brief discussing the same should be redacted
`from the remainder. A rule of reasonableness should dictate how‘ redaction is effected.
`
`-
`
`Redaction canentail merely covering a portion of a page of material when it is copied in anticipation of
`filing but" can also entail the more extreme measure of simply filing the entire page under seal as one
`that contains primarilyconfidential material. if only a sentence or short paragraph of a page ofmaterial-.
`is confidential, covering that material when the page is copied would be appropriate. in contrast, if
`most of the material on the page is confidential, then filing the entire page under seal would be more
`_ reasonable, even if some small quantity of non-confidential material is then withheld from the public ,
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`

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`record. Likewise, when a multi-page document is in issue, reasonableness would dictate that redaction
`of the portions or pages containing confidential material be effected when only some small number of
`pages contain such material. In contrast, if almost every page of the document contains some _
`confidential material, it may be more reasonable to simply submit the entire document under seal.
`Occasions when a whole document or brief must be submitted under seal should be very rare.
`
`Protected information, and pleadings, briefs or memoranda that reproduce, discuss or paraphrase
`such information, shall be filed with the Board under seal. The envelopes or containers shall be
`prominently stamped or marked with a legend in substantially the following form:
`
`CONFIDENTIAL
`
`This envelope contains documents or information that are subject to a protective order or agreement.
`The confidentiality of the material is to be maintained and the envelope is not to be opened, or the
`contents revealed to any individual, except by order of the Board.
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`-‘l3j_A) Acceptance of Information; Inadvertent Disclosure.
`
`Acceptance by a party or its attorney of information disclosed under designation as protected shall not
`constitute an admission that the information is, in fact, entitled to protection. Inadvertent disclosure of
`information which the disclosing party intended to designate as protected shall not constitute waiver of
`any right to claim the information as protected upon discovery of the error.
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`441_§) Challenges to Designations of Information as Protected.
`
`If the parties or their attorneys disagree as to whether certain information should be protected, they are
`obligated to negotiate in good faith regarding the designation by the disclosing party. If the parties are
`unable to resolve their differences, the party challenging the designation may make a motion before
`the Board seeking a determination of the status of the information.
`
`A challenge to the designation of information as protected must be made substantially
`contemporaneous with the designation, or as soon as practicable after the basis for challenge is
`known. When a challenge is made long after a designation of information as protected, the challenging
`party will be expected to show why it could not have made the challenge at an earlier time.
`The party designating information as protected will, when its designation is timely challenged, bear the
`ultimate burden of proving that the information should be protected.
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`45$) Board’s Jurisdiction; Handling of Materials After Termination.
`
`The Board’s jurisdiction over the parties and their attorneys ends when this proceeding is terminated.
`A proceeding is terminated only after a final order is entered and either all appellate proceedings have
`been resolved or the time for filing an appeal has passed without filing of any appeal.
`
`The parties may agree that archival copies of evidence and briefs may be retained, subject to
`compliance with agreed safeguards. Otherwise, within 30 days after the final termination of this
`proceeding, the parties and their attorneys shall return to each disclosing party the protected
`information disclosed during the proceeding, and shall include any briefs, memoranda, summaries,
`and the like, which discuss or in any way refer to such information. In the alternative, the disclosing
`party or its attorney may make a written request that such materials be destroyed rather than returned.
`
`461_1_) Other Rights of the Parties and Attorneys.
`This order shall not preclude the parties or their attorneys from making any applicable claims of
`privilege during discovery or at trial. Nor shall the order preclude the filing of any motion with the Board
`for relief from a, particular provision of this order or for additional protections not provided by this order.
`
`

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`EXHIBIT A
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`HERBAN GARDENS
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`Agglicant.
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`§
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`
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`I hereby certi_f_v_that the foregoing_Stipulated Protective Order and Acknowledgement of
`Stigulated Protective Order form were served on the followi
`ng counsel this
`day of
`October, 2008,=\Q1 regular U.S. Mail, gostage gre-gaid:
`
`.
`Jack M. Pasguale
`Warez Freesolgfi, Van der Slug & Adolp_hson LLP
`755 Main Stree_t§_P.O. Box 224
`Monroe CT 06468
`
`Daniel Moffett
`
`Certificgte of Mailing te of lin :
`
`

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`CERTIFICATE OF MAILING
`
`
`37 C.F.R 1.8
`
`Signature.
`
`I hereby certify that this correspondence is being deposited with the U.S. Postal Service with sufficient postage as First Class Mail in
`"an envelope addressed to: BOX TTAB — NO FEE, Commissionerfor Trademarks, 2900 Crystal Drive. Arlington, VA 22202-3514, on
`Ihedatebelowfl
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`Date
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`’
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`4
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`'
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TRADEMARK
`
`Opposition NO. 91 157923
`
`) ) ) ) ) )
`
`)
`)
`
`) )
`
`) )
`
`AGBOORGIA-PACIFIC CORPORATION
`and FORT JAMES OPERATING
`
`COMPANY,
`
`Opposers,
`
`v.
`
`SOLO CUP COMPANY,
`
`Applicant.
`
`OPPOSERS’ MEMORANDUM IN OPPOSITION TO APPLICANT’S MOTION FOR
`
`OF COMPREHENSIVE PROTECTIVE ORDER
`
`INTRODUCTION
`
`Applicant’s instant motion for protective order (“Applicant’s Protective Order Motion”)
`
`should be denied as a matter of law because it is not germane to Opposers’ summary judgment
`
`mqtion filed on April 27, 2004 (“Opposers’ Summary Judgment Motion”).
`.
`Alternatively, if the Board considers Applicant’s Protective Order Motion, the Board
`
`should modify two of the provisions in Applicant’s proposed protective order because:
`
`(1) it
`
`does not provide Opposers’ in-house counsel equal and adequate access to documents; and (2) it
`improperly requires the receiving party to disclose the identity ofa consulting expert before such
`
`expert can review confidential documents of the producing party. Accordingly, Applicant’s
`
`25424100.:
`
`-1-
`
`

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`.
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`J
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`proposed protective order should be amended to permit Opposers’ in-house counsel full access to
`
`all documents and not require disclosure of consulting experts.
`
`ARGUMENT
`
`I.
`
`APPLICANT’S PROTECTIVE ORDER MOTION SHOULD BE ..DENIED
`BECAUSE IT IS NOT GERMANE TO OPPOSERS’ SUMMARY JUDGMENT I
`MOTION.
`
`‘Opposers agree that if the Board does ‘not grant Opposers’ Summary Judgment Motion,
`
`the parties will need a protective order. However, Opposers disagree that a protective order is
`
`necessary at this time. Currently,
`
`the proceedings are suspended because Opposers filed
`
`Opposers’ Summary Judgment Motion. When a party in an opposition proceeding files a
`
`dispositive motion, the TTAB suspends the proceeding “with respect to all matters not germane
`
`to the motion and no party should file any paper which is not germane to the motion. .
`
`.
`
`.” 37
`
`CFR § 2.l27(d); TBMP § 528.03. Applicant’s Protective Order Mot