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
`ESTTA538188
`ESTTA Tracking number:
`05/16/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91207428
`Defendant
`U.T. Physicians
`RAYMOND RUNDELLI
`CALFEE HALTER GRISWOLD LLP
`1405 E SIXTH ST, THE CALFEE BLDG
`CLEVELAND, OH 44114 3475
`UNITED STATES
`rrundelli@calfee.com, jcastrovinci@calfee.com, ipdocket@calfee.com
`Opposition/Response to Motion
`Raymond Rundelli
`rrundelli@calfee.com, jwick@calfee.com, ipdocket@calfee.com
`/Raymond Rundelli/
`05/16/2013
`01989791.PDF(80512 bytes )
`01990139.PDF(255295 bytes )
`01990140.PDF(560941 bytes )
`01990141.PDF(82450 bytes )
`01990143.PDF(28807 bytes )
`01990145.PDF(59417 bytes )
`01990146.PDF(183465 bytes )
`01990147.PDF(88976 bytes )
`01990152.PDF(30339 bytes )
`01990176.PDF(17944 bytes )
`01990193.PDF(27757 bytes )
`01990204.PDF(165133 bytes )
`01990239.PDF(216621 bytes )
`01990242.PDF(307025 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`Opposition No. 91/207,428
`
`
`
`
`
`In the Matter of Application Serial No. 85/431,881
`Published in the Official Gazette on September 11, 2012
`
`TEXAS CHILDREN’S HOSPITAL, INC.,
`
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`
`U.T. PHYSICIANS,
`
`
`
`
`
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`:
`:
`:
`:
`:
`:
`:
`:
`:
`
`
`
`APPLICANT’S MEMORANDUM IN OPPOSITION TO
`OPPOSER’S MOTION TO COMPEL
`
`Opposer’s Motion to Compel (“Opposer’s Motion”) should be denied without prejudice
`
`to re-filing and without consideration of the particular discovery disputes raised therein because
`
`Counsel for Opposer has flagrantly flouted the meet and confer precondition to the filing of such
`
`a motion. As it has been from the start, Applicant is prepared to meet and confer in good faith on
`
`all disputes raised by Opposer.
`
`Should the Board decide to address the particular discovery disputes raised in Opposer’s
`
`Motion, the motion should still be denied because in those instances where there is an actual
`
`dispute rather than a manufactured one, Applicant’s objections to Opposer’s discovery requests
`
`are well taken and its responses and privilege log are in full compliance with the applicable rules
`
`of discovery. The best evidence of the merits of Applicant’s objections is Opposer’s utter failure
`
`to even attempt to rebut the vast majority of them either with a coherent argument or case
`
`support shown to be applicable to the disputes and case at hand. Opposer’s brief in support, like
`
`his effort at meeting and conferring, is a wholly perfunctory -- it is mostly a list of bald
`
`{01978211.DOC;2 }
`
`

`
`assertions followed by string cites with long parentheticals -- no effort is made by Opposer to
`
`address Applicant’s particularized objections or to demonstrate why the case support offered
`
`actually has any application to the discovery dispute before the Board.
`
`I. STATEMENT OF FACTS
`
`Opposer’s Motion concerns Applicant’s response to Opposer’s first set of interrogatories
`
`(which numbered 31), document requests (which numbered a whopping 112), and Applicant’s
`
`privilege log. Applicant’s written responses to the document requests and interrogatories were
`
`timely served on March 4, 2013. (Opposer’s Motion, Exhibits 1 and 2.) Numerous objections to
`
`the interrogatories and document requests were stated with particularity, mostly on grounds of
`
`relevance, over-breadth, undue burden and privilege. In many instances, substantive responses
`
`were provided despite the objections asserted. In some instances where undue burden or over-
`
`breadth was the basis of the objection to a document request, Applicant agreed to produce
`
`representative responsive documents. Where no responsive documents existed, the response so
`
`noted. Responsive documents were produced on March 26, 2013. (Rundelli Decl., ¶3 and
`
`Attachment 1.) Applicant’s privilege log was served on April 5, 2013. (Opposer’s Motion, Ex.
`
`3.)
`
`Counsel for Opposer first raised “concerns” about the sufficiency of Applicant’s
`
`responses to Opposer’s document requests in an email dated March 27, 2013 (the “March 27
`
`email”). (Rundelli Decl., ¶4 and Attachment 2.) Notwithstanding Counsel for Opposer’s
`
`certification that he notified Applicant of all deficiencies in its “responses” on March 27, 2013,
`
`the March 27 email addressed only Applicant’s responses to document requests (the subject line
`
`reads “Deficiencies in Applicant's Response to Opposer's First Set of Requests for Production”)
`
`and the email expressly indicated that the question of deficiencies in interrogatory responses
`
`{01978211.DOC;2 }
`
`2
`
`

`
`would be addressed separately. Of course it was impossible for Counsel for Opposer to have
`
`notified Applicant of concerns about the privilege log on March 27 because the log was not even
`
`served until April 5, 2013.
`
`Counsel for Applicant responded to the March 27 email by way of a detailed letter dated
`
`March 28, 2013 (the “March 28 Letter”). (Rundelli Decl., ¶5 and Attachment 3.) Counsel for
`
`Applicant pointed out that Counsel for Opposer’s effort to “confer” was nothing more than a
`
`perfunctory and mindlessly repetitive recitation that the requested documents were “generally
`
`discoverable.” No effort was made to grapple with the particularized and timely objections
`
`interposed by Applicant. Counsel for Applicant observed that a proper meet and confer on
`
`discovery disputes required Counsel for Opposer to elaborate why the asserted objections were
`
`improper and that Counsel for Opposer had failed to do so, thereby failing to meet his duty to
`
`confer. Counsel for Applicant also pointed out that the March 27 email was riddled with errors
`
`and mischaracterizations. For example, in the March 27 email Counsel for Applicant claimed
`
`that Requests Nos. 47 and 48 related to advertising but the Requests on their face relate to “right
`
`to use.” Counsel for Applicant also pointed out several instances where Requests were literally
`
`duplicative of prior requests and where disputes were apparently being manufactured because the
`
`written response either indicated that responsive documents would be produced if they existed or
`
`that there were no responsive documents to be produced. Concerned about the over-breadth and
`
`lack of particularity of certain requests, Applicant also noted that Opposer had a duty to
`
`particularize its discovery requests and tailor them for the facts and circumstances of the actual
`
`dispute before the Board. Counsel for Applicant closed his March 28 Letter by urging Counsel
`
`for Opposer to properly engage on the meet and confer requirement so that discovery could be
`
`kept within reasonable and proper bounds and unnecessary motion practice could be avoided.
`
`{01978211.DOC;2 }
`
`3
`
`

`
`Once again, Counsel for Opposer disregarded his meet and confer obligations -- his
`
`complete response to the March 28 Letter was: “Thank you for your letter. Our motion to
`
`compel will follow.” (Rundelli Decl., ¶6 and Attachment 4.)
`
`Applicant’s privilege log was produced on April 5, 2013 and identifies the date of the
`
`document, to whom the document is addressed, from whom the document was sent, any
`
`additional recipients of the document, the general nature and subject of the document (request for
`
`legal advice, correspondence regarding legal advice, etc.), and the basis of the privilege for
`
`which the document is withheld. (Rundelli Decl., ¶7 and Attachment 5.)
`
`
`
`A month went by after the March 27 email/March 28 Letter exchange with no further
`
`effort by Counsel for Opposer to meet his obligation to tailor Opposer’s discovery requests to the
`
`dispute at hand or to comply with the meet and confer requirement. Then, on April 30, 2013,
`
`Counsel for Applicant received a voice mail message from an associate of Counsel for Opposer
`
`stating that a motion to compel would be filed that very day, April 30th, unless Applicant agreed
`
`to supplement not only its responses to document requests but also Applicant’s responses to
`
`interrogatories and Applicant’s privilege log. (Rundelli Decl., ¶8 and Attachment 6.)
`
`
`
`Counsel for Applicant promptly responded to the voice mail message referenced above
`
`by noting that Counsel for Opposer had never at any prior time raised any concerns about
`
`Applicant’s responses to interrogatories or Applicant’s privilege log, making it literally
`
`impossible for Counsel for Opposer to have complied with his duty to meet and confer with
`
`respect to the interrogatory responses and the privilege log. (Rundelli Decl., ¶9 and Attachment
`
`7.) Counsel for Applicant reiterated that he still believed that Counsel for Opposer had not
`
`complied with his meet and confer obligations with respect to document request responses either
`
`because of his continued refusal to address the merits of the objections asserted by Applicant.
`
`{01978211.DOC;2 }
`
`4
`
`

`
`Counsel for Applicant closed by once again urging Counsel for Opposer to properly engage in a
`
`good faith meet and confer.
`
`Counsel for Opposer then for the very first time articulated by way of an email his
`
`“concerns” about Applicant’s responses to interrogatories and privilege log. (Rundelli Decl., ¶10
`
`and Attachment 8.) As was previously the case with respect to concerns about the responses to
`
`document requests, Counsel for Opposer did not address in any meaningful way the timely and
`
`particularized objections asserted to the interrogatories in question. On May 1, 2013, without
`
`awaiting a response to his April 30, 2013 email, and only a day after first raising alleged
`
`deficiencies in interrogatory responses and a privilege log, Counsel for Opposer filed the instant
`
`Motion to Compel. (Rundelli Decl., ¶11.)
`
`
`
`On May 2, 2003, having had a reasonable period of time to consider Counsel for
`
`Opposer’s newly raised concerns over Applicant’s responses to interrogatories and privilege log,
`
`Counsel for Applicant responded by email, pointing out flaws in Counsel for Opposer’s analysis
`
`of many of the interrogatory responses in dispute and making certain concessions with respect to
`
`two interrogatory responses and the privilege log. (Rundelli Decl., ¶12 and Attachment 9.) With
`
`respect to the privilege log, Counsel for Applicant agreed to provide Counsel for Opposer with
`
`additional information concerning the nature and subject of the privileged communications and
`
`to produce two redacted documents with the privileged content blocked out provided that
`
`Counsel for Opposer would agree that the additional content did not amount to waiver of the
`
`privilege. On May 8, 2013, Counsel for Opposer declined this offer. (Rundelli Decl., ¶13 and
`
`Attachment 10.)
`
`
`
`{01978211.DOC;2 }
`
`5
`
`

`
`II. LAW AND ARGUMENT
`
`A.
`
`Opposer’s Motion to Compel Should Be Denied Because Opposer Failed to
`Comply with Meet and Confer Provisions of Trademark Rule 2.120(e)(1).
`
`
`
`Rule 2.120(e) provides that a motion to compel “must be supported by a written
`
`statement from the moving party that such party or the attorney therefor has made a good faith
`
`effort, by conference or correspondence, to resolve with the other party or the attorney therefor
`
`the issues presented in the motion but the parties were unable to resolve their differences.” 37
`
`C.F.R. §2.120(e)(1). In Amazon Techs., Inc. v. Wax, the Board elaborated on the intended
`
`purpose of this “meet and confer process” and the duty of the parties to present the merits of
`
`their respective positions before filing a motion to compel. 93 USPQ2d 1702 (TTAB 2009).
`
`Specifically, the Board recognized that “for the meet and confer process to be meaningful and
`
`serve its intended purpose, ‘the parties must present to each other the merits of their respective
`
`positions with the same candor, specificity, and support during informal negotiations as during
`
`the briefing of discovery motions.’” Id. at 1705 (citing Nevada Power, Co. v. Monsanto Co., 151
`
`F.R.D. 118, 120 (D. Nev. 1993)).
`
`
`
`As demonstrated above in the Statement of Facts, Counsel for Opposer utterly failed to
`
`engage in any meaningful “meet and confer” discussions, let along good faith discussion, with
`
`Counsel for Applicant prior to filing Opposer’s Motion.
`
`With respect to the privilege log and Applicant’s responses to interrogatories, despite
`
`certifying that he first notified Counsel for Applicant of deficiencies on March 27th, the first
`
`time Counsel for Opposer suggested that there were any deficiencies in either Applicant’s
`
`privilege log or responses to interrogatories was on April 30th when an associate of Counsel for
`
`Opposer that stated that a motion to compel would be filed that very day unless Applicant agreed
`
`to supplement not only its responses to document requests but also to interrogatories and the
`
`{01978211.DOC;2 }
`
`6
`
`

`
`privilege log. Counsel for Applicant promptly responded by noting that Counsel for Opposer
`
`had never at any prior time raised any concerns about responses to interrogatories or Applicant’s
`
`privilege log, making it impossible for Counsel for Opposer to have complied with his duty to
`
`meet and confer with respect to interrogatory responses and the privilege log. Counsel for
`
`Opposer then for the very first time articulated by way of an email at the close of business on
`
`April 30th his alleged concerns about Applicant’s responses to interrogatories and privilege log.1
`
`Counsel for Opposer in turn filed this Motion the next day without waiting for a response
`
`from Counsel for Applicant.
`
`Threatening to file a motion to compel without any prior correspondence regarding some
`
`of the alleged deficiencies complained of therein, providing Counsel for Applicant with a two
`
`and half page list of perceived deficiencies at the close of business the day before filing the
`
`motion to compel, and proceeding to file the motion to compel the very next day without waiting
`
`for any response from Counsel for Applicant concerning newly raised alleged deficiencies does
`
`not allow for any meaningful “meet and confer” process and reeks of bad faith instead of the
`
`required good faith.
`
`
`
`Moreover, with respect to Applicant’s responses to document requests, the March 27
`
`email characterized by Counsel for Opposer as a “meet and confer” effort to resolve disputes
`
`over Applicant’s document production literally makes a mockery of the meet and confer process.
`
`Counsel for Opposer did not provide Counsel for Applicant with any explanation of the merits of
`
`his respective positions with respect to Applicant’s objections based on relevance, over-breadth
`
`or undue burden prior to filing this Motion. Rather, Counsel for Applicant’s deficiency letter
`
`merely recited over and over again that the requested documents were “generally discoverable”
`
`
`1 Notably, it is facially apparent that Counsel for Opposer’s April 30th email was simply cut and
`pasted from an already prepared motion to compel. (Rundelli Decl., Attachment 8.)
`
`{01978211.DOC;2 }
`
`7
`
`

`
`without ever grappling with the legitimate objections interposed by Applicant or the fact that
`
`responsive documents had in some instances been produced or the fact that in some instances
`
`there were no documents to produce. When Counsel for Applicant almost immediately pointed
`
`out why the March 27 email did not constitute a good faith effort to meet and confer, Counsel for
`
`Opposer failed to respond as required. Counsel for Opposer’s failure to elaborate why the
`
`asserted objections were allegedly improper, i.e. the merits of his respective positions, does not
`
`comply with his duty to confer prior to filing a motion to compel. E.g., Amazon Techs., 93
`
`USPQ2d at 1705.
`
`
`
`Because Counsel for Opposer has failed to comply with the provisions of Rule 2.120(e)
`
`by engaging in a meaningful and good faith meet and confer process with Counsel for Applicant,
`
`the Board should deny Opposer’s Motion summarily (without prejudice to re-filing) and order
`
`Counsel for Opposer to engage in a proper good faith meet and confer with Counsel for
`
`Applicant. Counsel for Opposer should not be allowed to circumvent the very process designed
`
`to avoid the need for the Board to address some or all portions of Opposer’s Motion. Applicant
`
`is and, as is evident from the correspondence of Counsel for Applicant, always has been prepared
`
`to meet and confer meaningfully and in good faith. (Rundelli Decl., ¶14.)
`
`B.
`
`Opposer’s Motion to Compel Should Be Denied Because Opposer Has Failed
`to Show Why Applicant’s Privilege Log, Responses and Objections to
`Discovery Requests Require Supplementation.
`
`
`
`If for reasons of economy the Board is inclined to reach the merits of Opposer’s Motion
`
`notwithstanding Counsel for Opposer’s abject failure to meet and confer as required, the Board
`
`should still deny the motion as Opposer has failed to articulate in any logical or coherent way
`
`why Applicant’s privilege log and responses and objections to discovery requests require
`
`supplementation.
`
`{01978211.DOC;2 }
`
`8
`
`

`
`1.
`
`Opposer Has Failed to Show that Applicant’s Privilege Log Does Not
`Comply with Fed. R. Civ. P. 26(b)(5)(A).
`
`
`
`Federal Rule of Civil Procedure 26(b)(5)(A) states:
`
`(A) Information Withheld. When a party withholds information otherwise
`discoverable by claiming that the information is privileged or subject to
`protection as trial preparation material, the party must:
`
`(i) expressly make the claim; and
`
`(ii) describe the nature of the documents, communication or tangible things
`not produced or disclosed -- and do so in a manner that, without
`revealing information itself privileged or protected, will enable other
`parties to assess the claim. Fed. R. Civ. P. 26(b)(5).
`
`The Advisory Committee Notes to this rule state that while the rule does not expressly define
`
`what information must be provided when a party asserts a claim of privilege or work product
`
`protection, details concerning the time, persons and general subject matter may be appropriate.
`
`Fed. R. Civ. P. 26(b)(5) advisory committee’s notes.
`
`
`
`Applicant’s privilege log was produced on April 5, 2013 and identifies the date of the
`
`document, to whom the document is addressed, from whom the document was sent, any
`
`additional recipients of the document, the general nature and subject of the document (request for
`
`legal advice, correspondence regarding legal advice, etc.), and the basis of the privilege for
`
`which the document is withheld. (Rundelli Decl., ¶7 and Attachment 5.) To support its motion,
`
`Opposer baldly argues that the nature and subject matter description in the log is insufficient.
`
`(Opposer’s Motion, p. 16.) No explanation is offered as to how or why the log is insufficient and
`
`no case law support is cited and shown to be analogous to the facts presented here -- the
`
`insufficiency proposition is merely asserted as if it were self-evidently true and required no
`
`elaboration. Opposer apparently cannot be bothered to give either the Board or Applicant any
`
`idea of the type of supplementation it believes is necessary to make an assessment of the
`
`{01978211.DOC;2 }
`
`9
`
`

`
`privileges asserted.2
`
`Opposer’s failure to articulate the type of supplementation it is seeking either in a meet
`
`and confer context or in its Motion is particularly egregious as Counsel for Applicant has offered
`
`to provide Counsel for Opposer with more specific information about the subject of these
`
`documents, provided only that Counsel for Opposer agree that this supplementation would not
`
`constitute a waiver of the privilege. (Rundelli Decl., ¶12 and Attachment 9.) Counsel for
`
`Opposer rejected that offer out of hand.
`
`Opposer also argues that the documents identified in the privilege log as Entry 1 and
`
`Entry 32 must be produced because Applicant’s privilege log does not list an attorney as sending
`
`or receiving the document. However, it is well-established that management-level employees
`
`within an organization can discuss legal advice sought and given without losing the privilege.
`
`See, e.g., Long v. Anderon University, 204 F.R.D. 129, 134 (S.D. Ind. 2001) (attached as Ex. A);
`
`McCook Metals L.L.C. v. Alcoa Inc., 192 F.R.D. 242, 254 (N.D. Ill. 2000) (attached as Ex. B).
`
`The description of the nature and subject of the entries in question makes it readily apparent that
`
`the management level employees identified are doing just that -- and not, as the case relied on by
`
`Opposer suggests, merely forwarding or receiving unprivileged documents. Accordingly,
`
`Opposer has not shown that these documents must be produced.3 Moreover, should the Board be
`
`so inclined, Applicant will submit the documents for an in-camera inspection by the Board.
`
`(Rundelli Decl., ¶15.)
`
`
`2 Applicant objects to any effort Opposer may attempt to make to elaborate its positions on any
`discovery disputes for the FIRST time in a reply brief as Applicant will not have an opportunity
`to respond.
`to produce Entries 1 and 32 with privileged
`3 Applicant has conditionally offered
`communications redacted provided only that Opposer will agree that the production would not
`waive the privilege -- Opposer has rejected this offer. (Rundelli Decl., ¶¶12-13 and Attachments
`9 and 10.)
`
`{01978211.DOC;2 }
`
`10
`
`

`
`2.
`
`Opposer Has Failed to Show that Applicant’s Responses and
`Objections to Interrogatories Require Supplementation.
`
`a.
`
`Opposer’s “Disputes” Concerning Certain Interrogatory
`Responses are Manufactured Because Applicant Has Fully
`Responded Interrogatory Nos. 1, 2, 3, 17, 18, 19 and 20.
`
`
`
`Opposer’s Motion t should be denied with respect to Interrogatories Nos. 1, 2, 3, 17, 18,
`
`19 and 20 because Applicant has fully responded to each of these interrogatories and Opposer
`
`has failed to articulate why or how Applicant’s responses are inadequate.
`
`Opposer contends that the response to Interrogatory No. 1 (identify the services rendered
`
`under Applicant’s Mark) requires supplementation. Applicant interposed a relevance objection
`
`to this interrogatory since only the services identified in the opposed application are in issue. As
`
`pointed out above in the section concerning failure to meet and confer, Opposer has not bothered
`
`to articulate even a colorable theory of relevance, despite the fact that the case which Applicant
`
`repeatedly relies upon, Neville Chemical v. Lubrizol, illustrates that in response to an objection to
`
`a particular discovery request the party seeking it must articulate its why the objection does not
`
`preclude a response. 183 USPQ 184 (TTAB 1974).
`
`However, notwithstanding its objection, Applicant’s response to Interrogatory No. 1 does
`
`in fact respond fully and fairly to the question posed concerning the services rendered under
`
`the mark:
`
`Notwithstanding and without waiving any objections asserted to the foregoing
`Interrogatory, Applicant states that the medical clinic services being marketed under
`Applicant’s Mark can be more particularly described as “medical services to mothers
`with high risk pregnancies and babies with congenital anomalies or genetic
`conditions. Opposer’s Motion, Ex. 2, pp. 1-2.
`
`Thus, the dispute over the response to Interrogatory No. 1 is completely manufactured. Counsel
`
`for Opposer either failed to read the response or is willfully ignoring it.
`
`Similarly, with respect to Interrogatory No. 2 (how is Applicant’s mark used), although
`
`{01978211.DOC;2 }
`
`11
`
`

`
`Applicant objected based on the form of the question, Applicant provided a full and complete
`
`response:
`
`Applicant’s Mark is used in signage at the physical place where those services are
`rendered, as well as in advertising and promotional materials for those services. In
`this regard, Applicant refers Opposer to the use of Applicant’s Mark at:
`http://childrens.memorialhermann.org/Services/texas-fetal-center/.
`
`Also,
`representative samples of the use of Applicant’s Mark are being produced in response
`to one or more of requests included in Opposer’s Amended First Set of Requests for
`Production. Opposer’s Motion, Ex. 2, p. 2.
`
`The manufactured dispute pattern repeats again with respect to Interrogatory No. 3 (is
`
`Applicant’s mark in use) -- Applicant provided a full and complete substantive response after
`
`asserting an objection to the form of the question:
`
`Applicant’s Mark is use in commerce for the services identified in the response to
`Interrogatory No. 1. Opposer’s Motion, Ex. 2, p. 2.
`
`Finally, Opposer contends that the responses to Interrogatories Nos. 17 through 20
`
`require supplementation, but again the dispute is manufactured. No objections were asserted to
`
`these interrogatories and full and complete responses were made -- the persons whose identity is
`
`the subject of the requests have been identified. (Opposer’s Motion, Ex. 2, pp. 6-7.) While
`
`Opposer cites a number of cases for the proposition that the requested information is relevant,
`
`Opposer again fails to address the actual content of Applicant’s responses in its Motion and
`
`articulate why these responses require supplementation. (Opposer’s Motion, p. 15.)
`
`Opposer’s assertions to the contrary, there is no real dispute (and thus no need to compel
`
`further responses) with respect to Applicant’s responses to Interrogatory Nos. Nos. 1, 2, 3, 17,
`
`18, 19 and 20. Had Counsel for Opposer simply waited a decent period of time after raising this
`
`dispute for the first time the day before Opposer’s Motion was filed, the illusory nature of the
`
`dispute would have either become clear or could have been discussed in good faith by counsel.
`
`Opposer’s Motion with respect to these interrogatory responses should be denied.
`
`{01978211.DOC;2 }
`
`12
`
`

`
`b.
`
`Applicant’s Objections to Interrogatory Nos. 29 and 14 Are
`Well-Founded.
`
`Opposer contends that Applicant’s response to Interrogatory No. 29 (date and
`
`circumstances under which Applicant first became aware of Opposer’s Mark) requires
`
`supplementation. However, as indicated in Applicant’s particularized objection, a response to
`
`this interrogatory would require an enormous undertaking by Applicant. In particular, Applicant
`
`would have to survey all of its current and existing employees to determine when each and every
`
`one of these individuals first became aware of Opposer’s Mark. An undue burden objection was
`
`accordingly asserted and clarification concerning the relevance of the requested information was
`
`sought as the relative importance of the requested information to the claims at issue bears on the
`
`question of how much burden it is reasonable to expect Applicant to bear. By way of example,
`
`Applicant’s knowledge of Opposer’s use of its mark is not relevant to any of the numbered
`
`averments of the Notice of Opposition or any of the du Pont factors that bear on the question of
`
`likelihood of confusion. Such knowledge is also not relevant to any asserted or possible
`
`affirmative defense or counterclaim. Moreover, the Board has limited a similar interrogatory
`
`concerning an entity’s actual knowledge of an opposer’s mark to require an entity to examine its
`
`trademark files in order to determine actual knowledge as the requesting party itself conceded
`
`that would be unduly burdensome to require a responding party to survey each and every
`
`individual employee to determine when each employee has knowledge of the opposer’s mark.
`
`American Optical v. Exomet, Inc., 181 USPQ 120, 123 (TTAB 1974).
`
`The Neville Chemical case on which Opposer relies (Motion, pp. 15-16) is of no
`
`assistance to Opposer under the facts here – there it was Opposer’s knowledge of Applicant’s use
`
`of its mark that was in issue and the Board held that the information might be relevant to a
`
`possible affirmative defense of estoppels, laches or waiver by Applicant. That is not the case
`
`{01978211.DOC;2 }
`
`13
`
`

`
`here. Accordingly, Neville Chemical does not support Opposer’s assertion that Applicant must
`
`supplement its response to Interrogatory No. 29.
`
`Finally, Counsel for Applicant has offered to work with Counsel for Opposer to find a
`
`mutually agreeable way to respond to this interrogatory. On May 2, 2013, less than two full days
`
`after Counsel for Opposer first raised Applicant’s alleged deficiency with Counsel for Applicant,
`
`Counsel for Applicant indicated that if the parties can reach some accommodation on how the
`
`burden of response can be minimized and Opposer can articulate the relevance of the information
`
`requested, Applicant would agree to attempt to supplement the response. (Rundelli Decl., ¶12
`
`and Attachment 9.) Counsel for Opposer has not substantively responded to this offer or in any
`
`way attempted to limit the scope of this interrogatory -- again highlighting his total failure to
`
`comply with both the letter and spirit of the meet and confer requirement.
`
`Under the circumstances, Opposer’s motion to compel supplementation of Interrogatory
`
`No. 29 should be denied.
`
`
`
`Opposer also contends that Applicant’s response to Interrogatory No. 14 (state dollars
`
`spent on advertisements containing the opposed mark) requires supplementation. Applicant
`
`interposed a relevance objection to this interrogatory. Once again, Opposer has not made the
`
`required effort to establish the relevance of the information requested to its case in chief, either
`
`in the meet or confer context or in the Motion, as Opposer has not shown how Applicant’s
`
`advertising expenses are relevant to any affirmative defense or counterclaim in this case.
`
`(Opposer’s Motion, p. 14.) Moreover, in the spirit of compromise, on May 2, 2013, Applicant
`
`agreed to attempt to gather information responsive to Interrogatory No. 14 and supplement its
`
`response to either include such information or an explanation why no responsive information is
`
`available. Consequently, Opposer’s motion to compel supplementation of Interrogatory No. 14
`
`{01978211.DOC;2 }
`
`14
`
`

`
`should also be denied.
`
`3.
`
`Opposer Has Failed to Show that Applicant’s Responses and
`Objections to Document Requests Require Supplementation.
`
`
`a.
`
`Opposer Has Moved to Compel on Document Requests Where
`Applicant Has Already Produced Responsive Documents or
`Stated that No Responsive Document Exist.
`
`
`
`Opposer has moved to compel Applicant to supplement its response to Document
`
`Request No. 67, which requests all documents related to trademark searches. However,
`
`Applicant had already produced a lengthy trademark search report pertaining to Applicant’s
`
`Mark -- the only non-privileged document responsive to the request. Thus, Counsel for Opposer
`
`has moved to compel Applicant to respond to a document request when it is already in
`
`possession of the only document to which it is entitled. Moreover, contrary to Opposer’s
`
`assertions, the law is clear that Applicant need not produce documents evidencing its attorney’s
`
`mental impressions of these search results. Amerace Corp. v. USM Corp., 183 USPQ 506, 507
`
`(TTAB 1974) (holding that “while a trademark search report is not privileged, any comments or
`
`opinions of an attorney relating thereto fall within the scope of the attorney-client privilege” and
`
`expressly overruling any prior decisions of the Board inconsistent with this ruling). The
`
`American Optical case Opposer relied upon for the proposition that it is entitled to discovery of
`
`documents evidencing Applicant’s attorney’s mental impressions concerning the trademark
`
`search report (Motion, p. 6) was decided prior to Amerace, and thus expressly overruled on this
`
`point to the extent it is inconsistent with Amerace. See also TBMP Section 414(6) (“[s]earch
`
`reports are discoverable, but the comments or opinions of attorneys relating thereto are
`
`privileged and not discoverable (unless privilege is waived).”) Consequently, Opposer’s Motion
`
`with respect to Document Request No. 67 should be denied.
`
`
`
`Similarly, Opposer has moved to compel Applicant to supplement its responses to
`
`{01978211.DOC;2 }
`
`15
`
`

`
`Document Request Nos. 80 (complete description of Applicant’s services rendered under the
`
`opposed mark) and 81 (all communications related to such description). With respect to
`
`Document Request No. 80, it is well-established that Applicant is not obligat