UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
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`Mailed: October 24, 2014
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`Opposition No. 91207982
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`Gface GmbH
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`v.
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`iConnectUS LLC
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`Jennifer Krisp, Interlocutory Attorney:
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`This proceeding is before the Board for consideration of opposer’s July 3,
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`2013 motion to compel initial disclosures, and responses to discovery. The
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`motion is fully briefed.
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`By way of its motion, opposer seeks an order compelling applicant to
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`respond in full and without objection to opposer’s First Set of Interrogatories and
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`First Request for Production of Documents, both served on March 25, 2013
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`(motion, Exh. A, B). Pursuant to an extension of time granted by opposer,
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`applicant’s responses were due May 24, 2013 (motion, Exh. C).
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`The Board presumes the parties’ familiarity with the record, the prior
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`Board order, and the arguments set forth in their briefing of the motion to
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`compel. Notwithstanding, the Board notes certain salient points.
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`Applicant asserts that opposer’s counsel “left the situation in an
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`ambiguous status” instead of contacting applicant directly to discuss the deadline
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`Opposition No. 91207982
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`for the discovery responses (applicant’s brief, p. 3). The assertion is given little
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`weight. The record reflects that Mr. Mark Morrison was, during the relevant
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`time at issue - from March 25, 2013 through the May 24, 2013 extended due date
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`for applicant’s discovery responses - counsel of record for applicant. Mr. Morrison
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`signed, as counsel on behalf of applicant, the January 24, 2013 answer and
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`motion to extend, and the February 2, 2013 brief in response to opposer’s motion
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`to strike and motion for default; he did not file the noncompliant “Change of
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`Correspondence Address” until after the May 24, 2013 extended due date for
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`applicant’s responses to the discovery at issue. There is no indication that
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`applicant was unaware of the May 24, 2013 extended due date. Moreover,
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`opposer served the discovery requests at issue on Mr. Morrison, as legal
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`representative for applicant, at the exact address which Mr. Morrison set forth
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`under his own signature as representative on behalf of applicant in the January
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`24, 2013 and February 2, 2013 filings noted above. Furthermore, as the Board
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`clarified in its July 8, 2014 order, Mr. Morrison did not, as applicant contends in
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`its brief, withdraw as applicant’s counsel on May 27, 2013.1
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`Turning to the motion itself, the Board finds that opposer satisfied its
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`obligation to make a good faith effort, by conference or correspondence, to resolve
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`1 Although not directly germane to the activities during the relevant time at issue, the
`Board notes that subsequent to May 27, 2013, opposer’s counsel sent emails to Mr.
`Fetyko, to which Mr. Fetyko responded (motion, Exh. F). Thus, applicant’s assertion
`that opposer’s counsel filed the motion to compel without attempting to contact applicant
`(applicant’s brief, p. 3) is incorrect. For the same reason, applicant’s argument that
`there has been “contributory neglect” (applicant’s brief, p. 4) on opposer’s part is
`unsupported and immaterial.
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`2
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`Opposition No. 91207982
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`with applicant the issues presented in its motion prior to seeking the Board’s
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`intervention. See Trademark Rule 2.120(e)(1); TBMP § 523.02 (2014).
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`While the Board notes that applicant experienced an apparent or perceived
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`change in legal representation, opposer has not caused or contributed to the
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`delay in obtaining discovery, or to the delay to this proceeding due to failure to
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`receive applicant’s responses. Opposer has been attentive to this proceeding and
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`to its obligation to cooperate in the discovery process. More to the point, it is
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`entitled to obtain the information and documents that it requires in order to
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`prepare its case, and is entitled to advance this proceeding. Lastly, opposer did
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`not unduly delay in filing its motion to compel.
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`Applicant did not respond to opposer’s motion insofar as opposer seeks
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`initial disclosures.
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`In view of these findings, opposer’s motion to compel is granted. Applicant
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`is allowed until thirty days from the mailing date of this order in which to serve
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`1) initial disclosures pursuant to Fed. R. Civ. P. 26(a)(1) and Trademark Rule
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`2.120(a)(2); and 2) responses to opposer’s First Set of Interrogatories and First
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`Request for Production of Documents. Inasmuch as applicant failed to respond
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`by the extended due date, applicant is directed to respond in full and without
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`objection with respect to the merits of the discovery requests. See No Fear Inc. v.
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`Rule, 54 USPQ2d 1551, 1554 (TTAB 2000); TBMP § 403.03 (2014). The Board
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`will not grant any unconsented motion to extend the time allowed to applicant to
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`serve its initial disclosures and responses to discovery as ordered herein.
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`3
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`Opposition No. 91207982
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`Schedule
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`Proceedings are resumed. Disclosure, discovery and trial dates are reset
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`as follows.
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`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures
`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures
`Plaintiff's 15-day Rebuttal Period Ends
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`1/14/2015
`2/13/2015
`3/30/2015
`5/14/2015
`5/29/2015
`7/13/2015
`7/28/2015
`8/27/2015
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`In each instance, a copy of the transcript of testimony, together with
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`copies of documentary exhibits, must be served on the adverse party within
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`thirty days after completion of the taking of testimony. Trademark Rule 2.125.
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`Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An
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`oral hearing will be set only upon request filed as provided by Trademark Rule
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`2.129.
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`4
