Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA563555
`ESTTA Tracking number:
`10/07/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91197571
`Plaintiff
`Chase Brass, LLC
`BRYAN K WHEELOCK
`HARNESS DICKEY PIERCE PLC
`7700 BONHOMME AVENUE, SUITE 400
`ST LOUIS, MO 63105
`UNITED STATES
`jsamuels@hdp.com, bwheeloc@hdp.com, kbearley@hdp.com,
`sshaw@hdp.com, jgebhardt@hdp.com
`Opposition/Response to Motion
`Joel R. Samuels
`bwheelock@hdp.com, jsamuels@hdp.com, kbearley@hdp.com,
`jgebhardt@hdp.com, sshaw@hdp.com
`/Joel R. Samuels/
`10/07/2013
`61160198_3.pdf(34687 bytes )
`Opposer_s Responses and Objections to Applicant_s First RFPs
`(2).PDF(547644 bytes )
`Opposer_s Responses and Objections to Applicant_s First ROGs
`(2).PDF(530787 bytes )
`Opposer_s Responses and Objections to Applicant_s First RFAs
`(2).PDF(579699 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91197571
`Opposition No. 91197573
`Opposition No. 91197574
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`Chase Brass & Copper Company, LLC,
`a Delaware limited liability company,
`as a licensee of Sambo Copper
`Alloy Co., Ltd., a Japanese corporation,
`
`Opposer,
`
`v.
`
`Sipi Metals Corp., an Illinois corporation,
`
`Applicant.
`
`OPPOSER’S RESPONSE TO APPLICANT’S THIRD MOTION TO DISMISS
`AND MOTION FOR EXTENSION OF DISCOVERY PERIOD AND RESETTING OF
`THE TESTIMONY PERIOD
`
`Sipi Metals Corp.’s (“Sipi”) third attack on Chase Brass & Copper Company’s (“Chase”)
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`standing to bring the Opposition is procedurally improper and based on legal principles
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`inapplicable to Board proceedings. Sipi did not seek reconsideration of the Board’s prior orders,
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`which explicitly stated that some of Sipi’s arguments “will not be revisited.” Dkt. No. 27 at ¶ 7.
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`Instead, six months after its Answer and on the eve of Sipi’s deadline to provide discovery
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`responses, Sipi attempts to use matters outside the pleadings and district court infringement
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`precedent to further delay these proceedings and avoid complying with discovery requests.
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`Moreover, Sipi further attempts to conflate the standards of proof to prevail in an Opposition
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`with the standing requirements at the pleading stage. The Board has twice before determined
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`that Chase has standing to bring this Opposition and that Chase has properly filed a notice of
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`opposition. Sipi’s motion should be denied again.
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`

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`Background
`
`Chase is legally using the marks ECOBRASS®, ECO-BRASS® and/or ECO BRASS®
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`(collectively “ECOBRASS® marks”) on copper alloys, and had been doing so since long before
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`Sipi filed the opposed application. Sipi is attempting to get a certificate of registration from the
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`U.S. Government on a confusingly similar mark, ECOBRONZE. Such a certificate would be
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`prima facie evidence of the validity of the confusingly similar ECOBRONZE mark, and of Sipi’s
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`ownership and exclusive right to use it. 15 U.S.C. § 1057(b). Such a registration would confuse
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`Chase’s licensees and customers, and might even be used to attack Chase’s continued use of
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`ECOBRASS®. Fortunately, 15 U.S.C. § 1063 provides a remedy for a trademark user like
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`Chase: “Any person who believes that he would be damaged by the registration of a mark” can
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`file an opposition, just as Chase has done. 15 U.S.C. § 1063; see also, TBMP §§ 102.02, 303.
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`Neither the statute nor TTAB precedent requires anything more than a belief of injury. The
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`registration of improper marks is regularly opposed by persons who make no claim to ownership
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`or exclusive rights. There is no requirement that an Opposer own a trademark registration or
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`have proprietary rights in the term alleged in the notice of opposition. See Syngenta Crop
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`Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112 (TTAB 2009). Here, Chase has consistently
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`used the ECOBRASS® marks on the same type of goods and services on which Applicant seeks
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`to use ECOBRONZE. It is undisputed that:
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`1) Chase has used the ECOBRASS® marks with permission of the registrant, Sambo;
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`2) Chase has invested a significant amount of time and resources into the marketing of
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`ECOBRASS® marks in order to identify EcoBrass with Chase and/or it sublicensees;
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`3) Chase has licensed the right to ECOBRASS® to sublicensees; and
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`4) No non-licensed party has used the ECOBRASS® marks within the United States.
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`2
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`

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`Accordingly, as clearly set forth in the notice of Opposition, Opposer believes that
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`consumers will be confused if Applicant is allowed to use ECOBRONZE on similar goods as
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`Opposer’s ECOBRASS® branded goods, and, this confusion will harm Chase’s business.
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`Chase may or may not have sufficient rights to bring an infringement action, but it has
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`sufficient rights to object to the issuance of a government imprimatur on a trademark that is
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`confusing with a mark it used first. Sipi’s third motion to dismiss should be summarily denied,
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`and the proceeding immediately resumed so that Chase can get the overdue discovery responses
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`that Sipi’s third motion to dismiss fortuitously delayed.
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`Opposition Standing Requirements
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`Chase, as a party who “believes that [it] would be damaged by registration” of Sipi’s
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`mark, has grounds to file and maintain the Opposition. 15 U.S.C. § 1063; TBMP §§ 102.02, 303.
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`Chase simply needs to show that it has a “real interest” or “a direct and personal stake” in the
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`outcome of the proceeding and a “reasonable belief” that Chase will suffer damage if Sipi’s mark
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`is registered. TBMP §§ 303.03, 309.03(b). The TBMP affirms that no other showing is
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`necessary:
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`There is no requirement that a plaintiff show a personal interest in the proceeding different
`from or “beyond that of the general public” in order to establish standing. There is also no
`requirement that actual damage be pleaded or proved in order to establish standing or to
`prevail in an opposition or cancellation proceeding.
`
`TBMP § 303.03.
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`“Proof of standing in a Board opposition is a low threshold.” Syngenta, 90 USPQ2d at
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`1118, n.8 (TTAB 2009). Ownership of a mark, is not a requirement to have standing. Syngenta,
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`90 USPQ2d 1112; Otto Roth & Co., Inc. v. Universal Foods Corp., 209 USPQ 40 (CCPA 1981).
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`Notably, a party “need not assert proprietary rights in a term [e.g. trademark] in order to have
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`standing.” TBMP § 309.03(b); Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d
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`3
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`

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`490, 492 (Fed. Cir. 1987)(noting that requiring a party “to possess a proprietary interest” in a
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`trademark in order to bring an opposition “confuse[s] a merits determination . . . with a standing
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`determination”).
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`The “low threshold” is easily met. An Opposer simply needs to show “a direct injury to
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`himself.” Ritchie v. Simpson, 170 F.3d 1092, 1096 (Fed. Cir. 1999). This does not require “a
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`specific commercial interest.” Id. Any party with prior use of a mark or trade name has standing
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`to file an Opposition. TBMP § 309.03(b); King Candy Co. v Eunice King’s Kitchen, Inc., 496
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`F.2d 1400 (CCPA 1974)(“[T]he Trademark Act permits opposition on the basis of prior use of a
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`‘mark or trade name previously used in the United States by another.”); Syngenta, 90 USPQ2d at
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`1118, n.8 (“Evidence of Opposer’s actual use of a mark satisfies this [standing] requirement,
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`even if that use is purportedly based on a license.”). Licensees who use a mark with permission
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`have been found to have “a real interest” and may bring an Opposition. Chemical New York
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`Corp. v. Conmar Form Systems, Inc., 1 USPQ2d 1139 (TTAB 1986). Moreover, members of a
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`group of the general public have been determined to have standing to oppose a registration. See
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`Bromberg v. Carmel Self Service, Inc., 198 USPQ 176 (TTAB 1978). Likewise, “a trade
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`association, having a real interest in the outcome of the proceedings, may maintain an opposition
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`without proprietary rights in a mark or without asserting that it has a right or has an interest in
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`using the alleged mark sought to be registered by an applicant.” Jewelers Vigilance, 823 F.2d at
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`493 (citing Tanners' Council of Am., Inc. v. Gary Indus., Inc., 440 F.2d 1404 (CCPA 1971); The
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`Scotch Whiskey Ass'n v. Consolidated Distilled Products, Inc., 204 USPQ 57 (TTAB 1979).
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`As a pleading, a Notice of Opposition must provide a “short and plain statement of the
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`reason(s) why Opposer believes it would be damaged by the registration of the mark” and “a
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`short and plain statement of one or more grounds for opposition.” TBMP § 309.03(a)(2). The
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`4
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`

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`Notice of Opposition must provide enough detail to give the defendant “fair notice” of the basis
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`of the claim. Id. On a 12(b) motion, the Board is only required to determine whether Chase has
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`adequately put Sipi on notice of its claims. Chase is not required to prove its common law rights
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`at the pleading stage.
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`Chase’s Amended Notice of Opposition Sufficiently States the Grounds for the Opposition
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`On July 18, 2011, Chase, as the licensee of ECOBRASS®, and continual user of
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`ECOBRASS®, filed a First Amended Notice of Consolidated Opposition to prevent registration
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`of the ECOBRONZE marks. Chase set forth its prior use of ECOBRASS®. See First Amended
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`Notice of Consolidated Opposition at ¶ 6. Chase asserted its goods marketed and sold under
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`ECOBRASS® are similar to the goods recited in Sipi’s three ECOBRONZE trademark
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`applications. See Id. at ¶ 5. Chase also asserted the ECOBRONZE marks and ECOBRASS®
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`marks are confusingly similar, as ECOBRASS® and ECOBRONZE are very similar in
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`appearance, sound and connotation. See Id. at ¶ 8. Furthermore, Chase asserted registration of
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`the ECOBRONZE marks will damage and injure Chase and Chase’s use of ECOBRASS®. See
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`Id. at ¶ 8. Chase asserted that the ECOBRONZE marks are likely to “cause confusion or mistake
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`in the minds of the public and lead the public and prospective purchasers to believe that
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`applicant’s goods are those of Sambo and/or Chase.” See Id. at ¶ 8.
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`Further, Chase properly pled its likelihood of confusion claim. “Pursuant to Section 2(d)
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`of the Act, 15 U.S.C. § 1052(d), plaintiff must assert, and then prove at trial, that defendant’s
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`mark, as applied to the goods or services, so resembles plaintiff’s previously used or registered
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`mark…as to be likely to cause confusion, mistake or deception.” TBMP § 309.03(c) (emphasis
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`added). Chase provided:
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`5
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`

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`(a)
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`Citation to the registered marks it licenses from Sambo (First Amended Notice of
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`Consolidated Opposition at ¶¶ 2 and 3);
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`(b)
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`Chase’s prior-continuous-use (2005) of ECOBRASS®, as Chase’s use obviously
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`predates Applicant’s intent-to-use application filing date of March 1, 2010;
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`(c)
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`Description of goods sold and marketed by Chase using ECOBRASS® (Id. at ¶
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`5); and
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`(d)
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`The goods set forth in Applicant’s trademark application for the ECOBRONZE
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`marks (Id. at ¶ 1), are very similar to Chase’s goods sold and marketed under
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`ECOBRASS®.
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`Chase pled that the ECOBRONZE marks, as applied to the goods set forth in the
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`application, would likely cause confusion or mistake with Chase or Chase’s goods marketed and
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`sold under the mark ECOBRASS®. See Id. at ¶ 8. As previously recognized by the Board, the
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`facts set forth in the Amended Notice of Opposition and Chase’s clear assertion of 15 U.S.C. §
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`1052(d), meets the pleading standard for a likelihood of confusion claim under Section 2(d). See
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`June 28, 2011 Order at ¶ 6. Accordingly, Applicant’s Motion to Dismiss should be denied.
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`Twice The Board Has Decided that Chase Has Standing to Bring the Opposition
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`Sipi asks the Board to consider, for the third time, whether Chase has standing to bring
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`the Opposition. Chase timely filed its notice of opposition on November 24, 2010. On January
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`3, 2011 Sipi moved to dismiss Chase’s Notice of Opposition, in part, based on Rule 12(b)(6)
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`grounds alleging that Chase lacked standing to file the opposition. On June 28, 2011, the Board
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`decided that Chase, as a licensee, has standing to bring the Consolidated Oppositions. Id. at ¶ 4
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`(citing William & Scott Co. v. Earl’s Restaurants Ltd., 30 USPQ2d 1870, 1873 n.2 (TTAB
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`1994)).
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`6
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`

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`Sipi filed a second motion to dismiss on October 14, 2011 alleging that Sambo and
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`Mitsubishi were necessary parties to the Opposition.
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`In that motion, Sipi acknowledged the
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`Board’s previous determination that Chase, as a licensee, “has standing to maintain a proceeding
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`as a party of interest.” See Motion to Dismiss First Amended Notice of Consolidated Opposition
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`at ¶ 3. The Board’s February 12, 2013 Order determined that Sipi’s standing argument “is
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`premature.” Id. at ¶ 4. Chase affirms, provided Sipi refrains from filing more frivolous motions,
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`and complies with its discovery obligations, that it will provide proof of its standing to bring the
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`opposition at trial. At this point, Chase requests the Board deny Sipi’s motion for the third time
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`and let this case proceed to trial.
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`Chase does not dispute that this Opposition only involves the common law uses and
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`priority issues.1 Chase has adequately alleged common law rights under the law of the TTAB.
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`To the extent Sipi contends Chase failed to explicitly use the phrase “common law rights,” no
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`magic words are necessary in order to maintain an Opposition. See Teletech, Inc., 2010 WL
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`2104141 at *3 (TTAB May 7, 2010)(noting the Board “construe[s] the allegations in the
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`pleadings to do substantial
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`justice”); L-com Inc., 2011 WL 3871953 (TTAB Aug. 3,
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`2011)(finding that common law rights were sufficiently plead even without explicit recitation of
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`“common law rights”). Sipi has ample notice of Chase’s common law claims through the
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`express language of the Notice of Opposition and the Board’s February 12, 2013 Order.2
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`1 In its brief, Sipi implies that Chase has mislead the Board and/or Sipi by impliedly claiming ownership and rights
`to enforce the trademarks. See Sipi’s Opening Br. at p. 3, n.2, pp. 6-7. Chase has never claimed ownership of the
`ECOBRASS® registrations and has never threatened to sue Sipi for infringement of the registered marks. Chase has
`never expressly or impliedly suggested otherwise. Chase has simply referenced the registrations to demonstrate that
`Chase has a legal use of the term ECOBRASS®. Chase has repeatedly represented that Sipi’s application will
`damage Chase’s use of ECOBRASS® which predates Sipi’s registration.
`2 Further, where the parties have allowed discovery into an Opposer’s common law use without objection, the Board
`amends the pleadings to conform to the evidence to sufficiently allege common law use. See, Gecko Trading Co.,
`Inc., 2004 WL 2368480 (TTAB June 22, 2004). Here, Sipi’s own discovery has inquired as to Chase’s common law
`rights, and thus, Sipi has waived its objections to proceeding on common law grounds. See e.g., Ex. A No. 3, 11;
`Ex. B NO.8 & Ex. C.
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`7
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`

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`Accordingly, Sipi’s motion to dismiss should be denied.
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`Twice Before The Board Has Decided That Sambo And Mitsubishi Are Not Necessary
`Parties
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`In its June 28, 2011 Order, the Board determined that Sambo and/or Mitsubishi (Sambo’s
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`successor) do not have to be joined as parties to the Opposition, stating:
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`“The fact that a third party related to the plaintiff, such as a parent or licensor of the
`plaintiff, may also have an interest in a mark relied on by plaintiff does not mean that the
`third party must be joined as a party plaintiff.”
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`See June 28, 2011 Order at 7-8 (citing Avia Group Int’l, Inc. v. Faraut, 25 USPQ2d 1625 (TTAB
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`1992); TBMP § 512); see also A.V. Brands, Inc. v. Spirits Int’l, B.V., CANCELLATION
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`9204334, 2009 WL 1068777 at *3 (TTAB Mar. 31, 2009) (declining a motion to dismiss based
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`on rule 19(a) where an applicant asserted that a foreign licensor was a necessary party). The
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`Board further stated that the “cancellation of the registrations would not preclude Opposer’s
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`assertion of its common law rights in this opposition.” Id. Accordingly, the Board found that
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`Fed. R. Civ. P. 19(a) is “inapplicable” in the present opposition, denied Applicant’s then-
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`proposed counterclaims to cancel the registrations and precluded Applicant from raising claims
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`for cancellation against the owner of the registrations in a subsequent answer. Id. at ¶¶ 8-9.
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`For the second time, on February 12, 2013 the Board affirmed that Sambo and Mitsubishi
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`do not need to be joined, cannot be joined, and their absence does not prejudice Sipi. Moreover,
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`the Board stated “the Board’s decision denying applicant’s request for third party joinder
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`remains in effect, and will not be revisited.” Dkt. No. 27 at 7 (emphasis added). Sipi did not
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`seek reconsideration of the Board’s February 12, 2013 Order. See Trademark Rule 2.127(b).
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`8
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`

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`Thus, Sipi’s reliance on joinder issues is misplaced, and, its motion should be denied.3
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`Sipi’s Cited Authority Does Not Indicate a Contrary Result
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`Sipi fails to cite any controlling contrary authority. First, SDT Inc. v. Patterson Dental
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`and In re Cooper do not stand for the proposition that Chase lacks standing due to Sambo’s
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`retention of rights in the ECOBRASS® trademark registrations. See Dkt. No. 31 at 9. Instead,
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`those cases stand for the proposition that a party cannot be joined once the time period for filing
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`an opposition has expired. Further, in Demon Int’l LC v. Lynch, the Board determined that the
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`Opposer failed to prove its common law protection, Demon Int’l LC v. Lynch, 86 USPQ2d 1058
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`(TTAB 2008), but, Demon was decided on the merits in which “[n]either party presented
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`evidence at trial.” Demon did not discuss whether the Opposer had sufficiently pleaded grounds
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`to establish standing.
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`Sipi also relies upon non-controlling, and distinguishable, authority to support
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`its
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`argument that Chase must have exclusive rights in order to bring an Opposition based on
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`common law rights. For example, Fin. Inv. Co. (Bermuda) Ltd. v. Geberit AG, 165 F.3d 526 (7th
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`Cir. 1998) was a district court trademark infringement litigation and did not discuss standing
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`issues in connection with trademark oppositions. Additionally, Keebler Co. v. Rovira Biscuit
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`Corp., 624 F.2d 366 (1st Cir. 1980), another district court trademark cancellation litigation did
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`not discuss standing issues in a trademark opposition.
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`Instead, Keebler discussed that a
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`registrant of a cancelled trademark held the burden of proof that the marks were entitled to
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`trademark protection. Id. at 376. The Court stated that “exclusive use” of a trademark might be
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`3 Further, Sipi’s argument
`that Chase’s maintenance of this Opposition is prohibited by the validity and
`incontestability clauses of the license is misleading. See Sipi Motion at ¶¶ 3,5. Chase’s actions to enforce the
`protectability of “ECOBRASS®” is entirely consistent with Sambo’s ownership. Further, by bringing this
`Opposition, Chase is not causing a third party to dispute the ownership or validity of the trademarks. Chase is not
`now, and never has claimed ownership in the ECOBRASS® registrations. Moreover, Sipi cannot question the
`validity of the ECOBRASS® marks in this opposition as 1) the marks are incontestable, 2) Sipi did not file a
`counterclaim or contemporaneous petition to cancel Sambo’s marks and 3) could not seek to cancel marks of a non-
`party.
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`9
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`

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`one way to establish common law trademark rights. Nevertheless, and contrary to Sipi’s
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`contention, the court did not hold that a showing of “exclusive use” is a prerequisite of common
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`law trademark protection.
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`Id. Again, Sipi appears to be confusing district court infringement
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`action precedence with TTAB Opposition standing requirements. As recognized by the Board, at
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`the pleading stage Chase, as a party asserting common law rights only needs to show that it may
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`be harmed by the registration of Sipi’s mark. Chase’s Notice of Opposition provided this
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`information; thus, Sipi’s motion should be denied.
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`Sipi’s Motion is an Untimely Delay Tactic
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`Quite simply, Sipi has dragged its feet on this Opposition in a direct affront to the
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`principle of “justice delayed is justice denied.” Chase filed its Notice of Opposition almost three
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`years ago, on November 24, 2010.
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`In the intervening time Sipi has filed 3 motions to dismiss
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`and the proceedings have been suspended seven times. Chase has complied with its obligations,
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`including promptly providing the license once Sipi sent a discovery request, and has sought to
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`move the proceeding to resolution. Notably, Chase has responded to 36 Requests for Admission,
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`11 Interrogatories, 52 Requests for Production, produced 579 documents totaling 4,722 pages
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`and, prior to the September 30, 2013 suspension, and is ready to produce another 4,958
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`documents consisting of 24,294 pages. Chase has also made its expert disclosures.
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`In stark
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`contrast, despite receiving a two-week extension, Sipi has failed to provide any responses to
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`Chase’s First Set of Interrogatories and Request for Production.
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`Sipi’s motion, labeled a Rule 12(b)(6) motion, contains multiple references to matters
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`outside the pleadings. Thus, any reference to the license should be given no consideration on
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`whether Chase has sufficiently plead possibility of damages due to Sipi’s registration and a
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`likelihood of confusion. As noted by the Board’s February 12, 2013 order:
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`10
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`

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`It is not until trial that opposer must prove its pleaded allegations regarding standing,
`including whether it is a lawful licensee, and its claim of priority of use and likelihood of
`confusion. Opposer, as the licensee and not the owner of the pleaded registration, must
`prove its common law rights prior to applicant's priority date.
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`Accordingly, any reliance on the lease is not properly before the Board, and, Sipi’s Third Motion
`
`to Dismiss must be denied once again.
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`Motion for Extension of The Discovery Period and Resetting of the Testimony Period.
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`In accordance with Fed. R. Civ. P. 6(b), Chase hereby moves the Board for an extension
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`of the close of discovery and all subsequent dates for the limited purpose of allowing Chase, and
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`not Sipi, time to obtain and review Sipi’s answers to discovery responses and take follow-up
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`depositions. As detailed, Chase has been diligent during the discovery period by complying with
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`its discovery obligations and issuing discovery of its own. Sipi discovery responses were
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`overdue as of September 30, 2013 when this Opposition was suspended. The discovery period in
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`this Opposition closes October 9, 2013 and Chase’s pre-trial disclosures are due on November
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`23, 2013. Unless these dates are reset by the Board, Chase will not have sufficient time to obtain
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`discovery from Sipi once the Board has determined the instant motion. Accordingly, Chase asks
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`that the discovery period be extended to allow Chase to obtain discovery responses from Sipi and
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`take additional follow-up discovery including depositions. See TBMP § 502.04. Chase also
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`requests an extension of the testimony period to follow the re-set discovery period. See id.
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`11
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`

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`WHEREFORE, Chase respectfully requests the Board to:
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`Conclusion
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`1. Deny Applicant’s Motion to Dismiss First Amended Notice of Consolidated
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`Opposition
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`2. Proceed with the instant Opposition within an extension of the current schedule to
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`allow Chase to obtain discovery from Sipi; and
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`3. Such other relief as the Board deems just and proper.
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`Dated: October 7, 2013
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`Respectfully submitted by,
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`HARNESS, DICKEY & PIERCE, P.L.C.
`
`/Joel R. Samuels/
`Bryan K. Wheelock
`Joel R. Samuels
`7700 Bonhomme, Suite 400
`St. Louis, Missouri 63105
`(314) 726-7500
`FAX: (314) 726-7501
`bwheelock@hdp.com
`jsamuels@hdp.com
`
`Attorneys for Opposer, Chase Brass &
`Copper Company, LLC
`
`12
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing was served via TTAB’s Electronic Filing
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`System and electronic mail on this 7th day of October, 2013, upon the following:
`
`Robert S. Beiser
`Alain Villeneuve
`Vedder Price, P.C.
`222 N. LaSalle Street, Ste. 2600
`Chicago, IL 60601-1104
`rbeiser@vedderprice.com
`
`Attorneys for Applicant,
`Sipi Metals Corp.
`
`/Joel R. Samuels/
`
`13
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Chase Brass & Copper Company, LLC,
`a Delaware limited liability company,
`as a licensee of Sambo Copper
`Alloy Co., Ltd., a Japanese corporation,
`
`Opposer,
`
`V.
`
`Sipi Metals Corp., an Illinois corporation,
`
`Applicant.
`
`Q/\/Q/§/§/\./\/\)§/\/L/\J\/O
`
`Opposition No. 91/197,571
`Opposition No. 91/197,573
`Opposition No. 91/197,574
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`OPPOSER’S RESPONSES AND OBJECTIONS TO
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`APPLICANT’S FIRST SET OF RE! QUESTS FOR PRODUCTION
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`Pursuant to 37 C.F.R. §§ 2.116(a) and 2.120 and Fed. R. Civ. P. 26 and 34, Opposer
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`Chase Brass & Copper Company, LLC, (“Chase” or “Opposer”) through undersigned counsel,
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`hereby responds to Applicant Sipi Metals, Corp.’s, (“Applicant”) First Request for Production of
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`Documents directed to Opposer as follows.
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`GENERAL OBJECTIONS
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`Chase makes the following general objections, whether or not separately set forth in
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`response to each document request, to each instruction, and to each definition in Applicant’s
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`First Request for Production of Documents (“the Requests”):
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`1.
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`Chase objects to the Requests to the extent that they call for information
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`constituting or reflecting attorney-client communications on the grounds of the attorney-client
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`privilege.
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`2.
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`Chase objects to the Requests to the extent that they call for information that is
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`privileged or immune from discovery under the Federal Rules of Civil Procedure and the
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`Trademark Rules of Practice.
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`3.
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`Chase objects to the Requests to the extent that they call for information
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`constituting or reflecting work product, including but not limited to, the thoughts or mental
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`impressions of Chase’s attorneys in connection with the preparation, prosecution, or defense of
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`any claim by or against Chase, on the grounds of the work product doctrine.
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`4.
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`Chase objects to the Requests to the extent that the instructions and/or definitions
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`proffered by Applicant seek to impose upon Chase greater burdens than are permitted or required
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`by the rules governing discovery responses in an Opposition proceeding.
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`5.
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`Chase objects to the Requests to the extent that they seek the disclosure of
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`information that is not relevant to this action or that is not reasonably calculated to lead to the
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`discovery of admissible evidence.
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`6.
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`Chase objects to all Requests to the extent they seek information not currently in
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`Chase’s possession, custody or control, or refer to persons, entities or events not known to
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`Chase, on the grounds that such instructions, definitions, or Requests seek to require more of
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`Chase than any obligation imposed by law, would subject Chase to unreasonable and undue
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`annoyance, oppression, burden, and expense, and would seek to impose upon Chase an
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`obligation to investigate or discover information or materials from third parties or sources who
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`are equally accessible to Applicant.
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`7.
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`Chase objects to the Requests to the extent that they are vague, ambiguous, overly
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`broad, unduly burdensome and oppressive and to the extent that the Requests are not limited to
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`any specific time period.
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`8.
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`Chase objects to the Requests to the extent that they include persons and entities
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`unknown to, or with no actual connection with, or not subject to the control of, Chase.
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`9.
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`Chase reserves its right to supplement, amend or modify these responses and
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`objections as appropriate and warranted as the case proceeds.
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`10.
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`Each and every general objection applies to each and every Request.
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`11. Chase objects to the Requests as overly burdensome to the extent they seek
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`discovery of electronically stored information (“ESI”) information, including internal e-mails,
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`which are beyond the scope of narrow issues involved in this Opposition. See Fed. R. Civ. P.
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`26(b)(2)(C); TMBP § 402.02; Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100
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`USPQ2d 1904, 1908 (TTAB 2011).
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`12. Chase will supplement its responses to contain an identification of documents
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`responsive to each category by Bates label once Chase has completed its collection, review, and
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`production of responsive documents.
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`13.
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`All answers given herein are made subject to each and every general objection,
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`and to the specific objections made in the response of each interrogatory. By providing a
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`response, Chase has not waived any objection on the ground of relevancy, materiality, privilege,
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`admissibility as evidence, or any other ground, for any purpose in any means in this investigation
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`or any proceeding in this or any other action. Nor has Chase waived its right to make further
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`objections to further Requests. Nor is any response to be deemed an admission or
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`acknowledgement that the information sought is within the proper scope of discovery.
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`DOCUMENTS REQUESTED
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`REQUEST NO. 1: All documents and communications relating to Chase’s acquisition and/or
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`ownership of any rights in the expression(s) ECOBRASS, ECO-BRASS and/or ECO BRASS.
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`RESPONSE: Chase incorporates by reference its General Objections set forth
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`above. Chase objects to this response as overly broad and unduly burdensome, especially
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`to the extent this Request seeks electronically stored information beyond the narrow issues
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`involved in this proceeding. Chase further objects to this request to the extent it seeks
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`information not within Chase’s custody or control. Chase also objects to this Request to
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`the extent that it calls for information constituting or reflecting work product, including
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`but not limited to, the thoughts or mental impressions of Chase’s attorneys, and therefore
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`protected by the work product doctrine. Chase further objects to this Request to the extent
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`it calls for confidential or proprietary information, or information protected by the
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`attorney-client privilege.
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`Subject to and without waiving the foregoing objections, Chase states: Chase’s
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`investigation is on-going, however, Chase will produce non-privileged documents that are
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`reasonably responsive to this Request. Chase will provide an identification of documents by
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`Bates number as soon as that information is available. Chase reserves the right to
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`supplement this response as this Opposition continues.
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`REQUEST NO. 2: All documents and communications relating to Chase’s acquisition and/or
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`ownership of any rights in the expression(s) ECOBRASS, ECO-BRASS and/or ECO BRASS,
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`including but not limited to any license of the expression(s) ECOBRASS, ECO-BRASS and/or
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`ECO BRASS from Sambo or Mitsubishi or any other third party.
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`RESPONSE: Chase incorporates by reference its General Objections set forth above.
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`Chase objects to this response as overly broad and unduly burdensome, especially to the
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`extent this Request seeks electronically stored information beyond the narrow issues
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`involved in this proceeding. Chase further objects to this request to the extent it seeks
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`information not within Chase’s custody or control. Chase also objects to this Request to
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`the extent that it calls for information constituting or reflecting work product, including
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`but not limited to, the thoughts or mental impressions of Chase’s attorneys, and therefore
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`protected by the work product doctrine. Chase further objects to this Request to the extent
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`it calls for confidential or proprietary information, or information protected by the
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`attorney-client privilege.
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`Subject to and without waiving the foregoing objections, Chase states: Chase’s
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`investigation is on-going, however, Chase will produce non-privileged documents that are
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`reasonably responsive to this Request. Chase will provide an identification of documents by
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`Bates number as soon as that information is available. Chase reserves the right to
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`supplement this response as this Opposition continues.
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`REQUEST NO. 3: All documents and communications supporting any claim of ownership by
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`Chase of any Common Law trademark rights, in the United States and within the last 6 years, of
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`the expression(s) ECOBRASS, ECO-BRASS and/or ECO BRASS.
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`RESPONSE: Chase incorporates by reference its General Objections set forth above.
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`Chase objects to this response as overly broad and unduly burdensome, especially to the
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`extent this Request seeks electronically stored information beyond the narrow issues
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`involved in this proceeding. Chase objects to this Request as vague and ambiguous at least
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`as to the term “Common Law trademark rights.” Chase further objects to this request to
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`the extent it seeks information not within Chas