Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`91 1 96923
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`Defendant
`Truck-Lite Co., LLC
`CARL A HJORT III
`THE BILICKI LAW FIRM PC
`1285 N MAIN ST
`JAMESTOWN, NY 14701-2157
`UNITED STATES
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`cahjort@bi|icki|aw.com, babi|icki@bi|icki|aw.com, mkpeterson@bi|icki|aw.com
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`docadm@bi|icki|aw.com, cahjort@bi|icki|aw.com
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA568411
`ESTTA Tracking number:
`10/31/2013
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91196923
`Defendant
`Truck-Lite Co., LLC
`CARL A HJORT III
`THE BILICKI LAW FIRM PC
`1285 N MAIN ST
`JAMESTOWN, NY 14701-2157
`UNITED STATES
`docadm@bilickilaw.com, cahjort@bilickilaw.com
`Opposition/Response to Motion
`Carl A. Hjort, III
`cahjort@bilickilaw.com, babilicki@bilickilaw.com, mkpeterson@bilickilaw.com
`/CAH/
`10/31/2013
`Reply to discovery motion clean.pdf(50981 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Petitioner,
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`In the Matter of Miscellaneous Design (arrangement of LED’s)
`Application No.: 77/618,319
`Published for Opposition: June 8, 2010
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`______________________________
`Grote Industries, Inc.,
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`Opposer,
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`Opposition No.: 91196923
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`Truck-Lite Co., LLC,
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`f/k/a Truck-Lite Co., Inc.
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`Applicant.
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`______________________________)
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`In the Matter of: Miscellaneous Design (stop-turn-tail lamp)
`U.S. Trademark Registration No.: 3,483,147
`Registered: August 12, 2008
`______________________________
`Grote Industries, Inc.
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`v.
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`Truck-Lite Co., LLC
`f/k/a Truck-Lite Co., Inc.
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`Cancellation No.: 92053498
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`Registrant.
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`APPLICANT/REGISTRANT TRUCK-LITE CO., LLC’S RESPONSE TO THE
`OPPOSER/PETITIONER’S RULE 56(d) MOTION FOR DISCOVERY
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`Applicant/Registrant Truck-Lite Co., LLC (“Truck-Lite”), through its undersigned attorneys,
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`hereby submits the following response to Opposer/Petitioner Grote Industries, Inc.’s (“Grote”) Rule 56(d)
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`Motion for Discovery.
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`1 
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`Grote’s Motion Is Deficient Because It Does Not Meet the Requirements of
`37 C.F.R § 2.127(a)
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`As an initial matter, Truck-Lite submits that Grote’s motion is fatally defective, because
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`I.
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`it fails to comply with the requirements of 37 C.F.R. § 2.127(a). Grote’s motion fails to present
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`even a single citation to any relevant law in support of the positions advanced therein. Because
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`Grote’s motion provides no legal support for any of the positions taken therein, the motion is
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`defective and should be denied.
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`The contents of motions submitted to the Board are governed by 37 C.F.R. §2.127(a),
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`which requires: “[e]very motion must be submitted in written form and must meet the
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`requirements prescribed in § 2.126. It shall contain a full statement of the grounds, and shall
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`embody or be accompanied by a brief.” 37 C.F.R. § 2.127(a)(emphasis added); See also
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`Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 13 USPQ2d 1719, 1720 n.3
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`(TTAB 1989) (“The presentation of one's arguments and authority should be presented
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`thoroughly in the motion or the opposition brief thereto”).
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`Grote’s three (3) page motion utterly fails to present any authority for any of the positions
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`advanced in the motion. Not a single case is cited in the motion. In view of this complete lack
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`of legal support for any of positions advanced in the motion, it is clear that the motion does not
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`provide a “full statement of the grounds” for the relief it requests; and, therefore it does not meet
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`the requirements of 37 C.F.R. § 2.127(a). On this procedural ground alone, Grote’s Rule 56(d)
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`motion should be denied. On substantive grounds, it is clear that Grote is not entitled to the
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`discovery sought, because Truck-Lite has not waived the attorney-client privilege in this case.
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`2 
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`II.
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`Truck-Lite Has Not Waived the Attorney-Client Privilege, Therefore Any Discovery
`Relative to Attorney-Client Privileged Communications is Inappropriate.
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`Contrary to Grote’s unsupported arguments, Truck-Lite has not waived the attorney-
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`client privilege in this case. All that Truck-Lite has done in filing the instant Motion for
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`Summary Judgment is allege that certain statements were made “with the advice of counsel.”
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`Critically, Truck-Lite has not disclosed the contents of any of the advice of counsel that it
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`received. It has long been recognized that revealing a general topic of discussion between
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`attorney and client does not waive attorney-client privilege, unless that revelation also reveals the
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`substance of a protected communication. Truck-Lite has not revealed the substance of any
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`protected communication, and consequently has not waived the attorney-client privilege in this
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`case.
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`In New Jersey v. Sprint Corp., 258 F.R.D. 421 (D.Kan. 2009), the court held that a
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`director's deposition testimony did not waive attorney-client privilege with respect to advice
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`received from counsel concerning tax shelter issues, even though the director testified to some of
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`the advice received and stated that legal counsel gave advice. The court came to this conclusion
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`because the director's statement in his deposition that the board of directors received legal advice
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`did not waive attorney-client privilege to that legal advice, because the director did not reveal
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`substance of the protected communications. Id.
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`Similarly, in Quiksilver, Inc. v. Kymsta Corp., 247 F.R.D. 579 (C.D.Cal. 2007), a
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`manufacturer’s chief executive officer did not waive the company’s attorney-client privilege
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`during his deposition by disclosing the manufacturer's strategy in using and registering a
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`composite trademark first and separately from another mark by itself. Again, the court held that
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`since the deposition answer did not reveal the substance of any attorney-client communications,
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`but simply noted that CEO received legal advice regarding the brand as part of broader
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`discussion of commercial strategy, there was no waiver of the attorney-client privilege. Id. This
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`conclusion was reinforced by the fact that the competitor seeking to pierce the attorney-client
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`privilege cited no pertinent authority to support the proposition that manufacturer waived the
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`privilege. Id. In Quiksilver, the court noted that the focal point of attorney-client privilege
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`waiver analysis should be the holder's disclosure of privileged communications to someone
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`outside the attorney-client relationship, not the holder's intent to waive the privilege. Quiksilver,
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`Inc. v. Kymsta Corp., 247 F.R.D. 579 (C.D.Cal. 2007).
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`In Allstate Ins. Co. v. Levesque, 263 F.R.D. 663 (M.D.Fla. 2010) the court held that a
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`defendant in a personal injury suit did not waive the attorney-client privilege regarding his
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`communications with his personal attorney, when the defendant did not disclose any specific
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`details of the substance of his communications with his personal attorney. The mere fact that the
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`defendant testified, in subsequent declaratory judgment action, about the facts concerning his
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`consultation with his personal attorney, did not constitute a waiver of the privilege under the
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`sword and shield doctrine. Id. Because the details of the substance of the communication
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`between the defendant and his personal attorney were not disclosed, there was no waiver of the
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`attorney-client privilege. Allstate Ins. Co. v. Levesque, 263 F.R.D. 663 (M.D.Fla. 2010).
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`The case of Safeco Ins. Co. of America v. Vecsey, 259 F.R.D. 23 (D.Conn. 2009) also
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`demonstrates that Truck-Lite has not waived the attorney-client privilege in this case; and, that
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`Grote is not entitled to discover any of Truck-Lite’s attorney-client privileged communications.
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`The Safeco Court held that merely because the attorney-client privileged communications are
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`relevant does not place them “at issue,” so as to implicitly waive attorney-client privilege. The
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`Safeco Court further held that when privileged communications are not at issue, the opposing
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`party cannot destroy the privilege by merely claiming a need for the documents. Id. Many other
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`4 
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`cases have followed the holdings and rationale of the aforementioned courts, and denied claims
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`of waiver of the attorney-client privilege, where the subject of the attorney-client
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`communications has not been disclosed. See also Ritchie Risk-Linked Strategies Trading
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`(Ireland), Ltd. v. Coventry First LLC, 2010 WL 5174759 (S.D.N.Y. 2010) (Defendants did not
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`waive their attorney-client privilege by having one of their attorneys testify at a deposition about
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`non-privileged communications, or by summarizing in conclusory and unrevealing terms certain
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`advice or impressions of their counsel.); Yellow Robe v. Allender, 2010 WL 424194 (D.S.D
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`2010) (A client conveying a legal conclusion and making references to privileged conversations
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`without disclosing their content did not waive the attorney client privilege as to those
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`conversations.)
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`All of these cases demonstrate that Truck-Lite’s statement, that certain representations
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`were made on the advice of counsel, does not waive the attorney-client privilege. Truck-Lite has
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`not disclosed the substance of any privileged communications. Because none of the substance of
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`any privileged communications has been disclosed, the privilege is not waived, and all of Truck-
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`Lite’s communications are shielded to the full extent of the attorney-client privilege. Since all of
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`the communications on which Grote demands discovery are subject to the attorney-client
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`privilege, and since that privilege has not been waived, Grote’s motion for discovery must be
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`denied, in its entirety.
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`Grote specifically seeks the production of documents embodying the “advice of counsel”
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`given to Truck-Lite. These documents are subject to the attorney-client privilege; and, that
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`privilege has not been waived. Therefore, Grote’s demand for discovery must be denied. Next,
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`Grote seeks to depose Robert Ives, presumably to ask questions relative to the legal advice
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`Truck-Lite received. Again, the responses to any questions directed to Mr. Ives regarding the
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`5 
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`advice Truck-Lite received from legal counsel would be protected by the attorney-client
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`privilege; and, that privilege has not been waived. Therefore, Grote’s demand to depose Mr.
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`Ives must be denied. Grote also seeks to depose a 30(b)(6) representative, again, presumably, to
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`ask questions relative to the legal advice Truck-Lite received. The responses to any questions
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`directed to a 30(b)(6) representative regarding the advice Truck-Lite received from legal counsel
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`would be protected by the attorney-client privilege; and, that privilege has not been waived.
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`Therefore, Grote’s demand to depose a 30(b)(6) representative must be denied. Finally, and
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`most egregiously, Grote seeks to depose Truck-Lite’s outside counsel to discover the legal
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`advice counsel provided to Truck-Lite. Again, the responses to any questions directed to Truck-
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`Lite’s counsel regarding the advice Truck-Lite was provided would be protected by the attorney-
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`client privilege; and, that privilege has not been waived. Therefore, Grote’s demand to depose
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`Truck-Lite’s counsel must be denied.
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`6 
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`III.
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`Conclusion
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`In view of the foregoing, Grote has failed to demonstrate that it is entitled to discovery under
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`Rule 56(d). Truck-Lite has demonstrated that the attorney-client privilege has not been waived in this
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`case; and, therefore all of Grote’s Rule 56(d) discovery requests, which are directed to attorney-client
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`privileged communications, are inappropriate and not subject to discovery. For these reasons, the
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`discovery sought under Rule 56(d) by Grote in the subject motion is improper. For these reasons Grote’s
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`motion must be denied.
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`Dated: October 31, 2013
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`The Bilicki Law Firm, P.C.
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`/CAH/
`_______________________________
`Carl A. Hjort, III
`Byron A. Bilicki
`1285 North Main Street
`Jamestown, NY 14701
`Telephone: 716-664-5600
`Fax: 716-664-5606
`ATTORNEYS FOR APPLICANT/REGISTRANT,
`TRUCK-LITE CO., LLC
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`7 
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`CERTIFICATE OF TRANSMISSION AND SERVICE
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`The undersigned hereby certifies that a copy of the foregoing document was transmitted to the
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`Trademark Trial and Appeal Board at the United States Patent and Trademark Office via the Electronic
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`System for Trademark Trials and Appeals (ESTTA) and served by electronically mailing a copy thereof
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`to counsel for the Opposer/Registrant at the following email address:
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`This 31st day of October, 2013.
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`lueders@uspatent.com
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`/CAH/
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`________________________________
`Carl A. Hjort, III
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`8 
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