Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA705430
`ESTTA Tracking number:
`10/29/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91210158
`Defendant
`Lundy Law, LLP
`MANNY D POKOTILOW
`CAESAR RIVISE BERNSTEIN COHEN & POKOT
`1635 MARKET ST , SEVEN PENN CENTER 12TH FLOOR
`PHILADELPHIA, PA 19103
`UNITED STATES
`trademarks@crbcp.com, mlozada@crbcp.com
`Opposition/Response to Motion
`Manny D. Pokotilow
`mlozada@crbcp.com
`/mdp/
`10/29/2015
`L1181400003 Memo in OPP to Motion Sanctions for DiscAbuses and removal of
`HC Designation 10 29 2015.pdf(4801240 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91210158
`A.S.N. 85/767,757
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`LARRY PITT & ASSOCIATES, P.C.
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`Opposer.
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`vs.
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`LUNDY LAW, LLP
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`Applicant.
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`LUNDY LAW’S MEMORANDUM IN OPPOSITION TO OPPOSER’S MOTION FOR
`SANCTIONS FOR DISCOVERY ABUSES AND ITS REQUEST FOR REMOVAL OF
`THE HIGHLY CONFIDENTIAL DESIGNATION FOR THE SORTMAN DEPOSITION
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`TABLE OF CONTENTS
`TABLE OF CONTENTS
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`INTRODUCTION .........................................................................................................1
`INTRODUCTION ....................................................................................................... .. 1
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`BACKGROUND OF THE PRESENT DISPUTE .........................................................2
`BACKGROUND OF THE PRESENT DISPUTE ....................................................... ..2
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`I.
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`II.
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`III.
`III.
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`PITT’S MOTION FOR SANCTIONS IS PREMATURE.............................................5
`PITT’ S MOTION FOR SANCTIONS IS PREMATURE ........................................... ..5
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`IV. AT NO TIME DID APPLICANT’S COUNSEL INSTRUCT THE WITNESS NOT
`IV.
`AT NO TIME DID APPLICANT’ S COUNSEL INSTRUCT THE WITNESS NOT
`TO ANSWER A QUESTION DIRECTED TO CONSUMER PERCEPTION ............6
`TO ANSWER A QUESTION DIRECTED TO CONSUMER PERCEPTION .......... ..6
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`V.
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`OPPOSER’S REQUEST FOR REMOVAL OF THE TRADE
`OPPOSER’ S REQUEST FOR REMOVAL OF THE TRADE
`SECRET/COMMERCIALLY SENSITIVE/ATTORNEY’S EYES ONLY
`SECRET/COMMERCLALLY SENSITIVE/ATTORNEY’S EYES ONLY
`DESIGNATION FOR THE SORTMAN DEPOSITION IS NOTHING MORE
`DESIGNATION FOR THE SORTMAN DEPOSITION IS NOTHING MORE
`THAN AN ATTEMPT TO REVERSE THE BOARD’S ORDER REFUSING
`THAN AN ATTEMPT TO REVERSE THE BOARD’ S ORDER REFUSING
`REDESIGNATION OF THE TRADE SECRET/COMMERCIALLY
`REDESIGNATION OF THE TRADE SECRET/COMMERCIALLY
`SENSITIVE/ATTORNEY’S EYES ONLY DOCUMENTS .......................................8
`SENSITIVE/ATTORNEY’S EYES ONLY DOCUMENTS ..................................... ..8
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`VI.
`VI.
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`CONCLUSION ............................................................................................................10
`CONCLUSION .......................................................................................................... .. 10
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`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
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`Seligman & Latz, Inc. v. Merit Mercantile Corporation,
`222 USPQ 720 (TTAB 1984) ....................................................................................................5
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`OTHER AUTHORITIES
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`Fed. R. Civ. P. 30(b)(6)....................................................................................................................3
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`Rule 2.120(e)....................................................................................................................................5
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`Rule 56(d) ................................................................................................................................1, 2, 3
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`ii
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`I.
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`INTRODUCTION
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`Opposer, Larry Pitt & Associates, P.C. has filed a Motion for Sanctions for Discovery
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`Abuses and for Removal of the Highly Confidential Designation for the Sortman Deposition.
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`The Motion for Sanctions should be denied because not only did Opposer fail to seek a Motion
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`to Compel, but a reasonable interpretation of the Order of the Board on Opposer’s Rule 56(d)
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`Motion dated July 30, 2015 was that Opposer would be entitled to depositions of L. Leonard
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`Lundy and Tami Sortman but that the depositions would be strictly limited to the use by Lundy
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`Law of the wording REMEMBER THIS NAME in association with its legal services. As will
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`further be seen none of the questions which Lundy Law refused to answer were relevant to the
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`issue of the manner in which REMEMBER THIS NAME was used in association with the
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`Lundy Law services.
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`With respect to Opposer’s Requests for Removal of the Highly Confidential Designation
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`for the Sortman Deposition, it should be denied because substantially all of the testimony sought
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`by Opposer related to Exhibits 2-10 and 12-15, all of which were marked “Trade
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`Secret/Commercially Sensitive/Attorney’s Eyes Only.” These same documents were the subject
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`of Opposer’s motion to redesignate documents Designated “Trade Secret/Commercially
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`Sensitive/Attorney’s Eyes Only.” A copy of the Motion is attached as Exhibit A. In the Board’s
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`Order of March 11, 2015 (Exhibit B) the Board agreed with Lundy Law that the designation of
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`“Highly Confidential Attorney’s Eyes Only” need not be changed on the documents attached as
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`Exhibits 2-10 and 12-15 of the Sortman deposition because the documents indeed are highly
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`confidential trade secrets of Lundy Law as to the operation of its law firm and not relevant to the
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`manner of use of the mark REMEMBER THIS NAME. It is respectfully submitted that there
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`are so few portions of the transcript that are not highly confidential that it would be less helpful
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`1
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`to the board to redesignate a small portion interweaved throughout the entire deposition and
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`cause there to be two transcripts both of which are cut up and would have to be used together in
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`order to make any sense of the transcript.
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`II.
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`BACKGROUND OF THE PRESENT DISPUTES
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`On October 31, 2014, the Board granted Summary Judgment on the original pleadings
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`finding that the mark REMEMBER THIS NAME was neither generic nor descriptive. A copy of
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`the Board’s Opinion is attached hereto as Exhibit C. The Board, in its discretion, permitted
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`Opposer to file an amended Notice of Opposition, only on the basis alleged by Opposer, Pitt, that
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`the mark REMEMBER THIS NAME is nothing more than an instruction to potential clients to
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`remember the name of Applicant’s law firm, Lundy Law and did not operate as a trademark.
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`After filing an amended Notice of Opposition on the basis that Applicant, Lundy Law’s
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`mark REMEMBER THIS NAME did not function as a trademark, Opposer, on February 18,
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`2015. filed a Request for Redesignation of Documents Marked “Trade Secret/Commercially
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`Sensitive/Attorney’s Eyes Only” (Exhibit A). These documents were produced by Applicant in
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`response to document requests propounded by Opposer prior to the granting of summary
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`judgment. Included among the documents for which Applicant sought redesignation were
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`Exhibits 2-15 of the Tami Sortman deposition. The only other exhibit marked at the Tami
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`Sortman deposition was the Notice of Deposition of Tami Sortman, marked as Exhibit 1.
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`Opposer’s Motion to Redesignate Documents, which included the marked Exhibits 2-10 and 12-
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`15 of the Sortman deposition was denied as to those exhibits by the Board’s Order of March 11,
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`2015. With respect to Exhibit 11, it was voluntarily redesignated as Confidential by Applicant.
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`On March 4, 2015, Applicant filed a Motion for Summary Judgment on the Amended
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`Notice of Opposition. On March 11, 2015, Opposer filed a Rule 56(d) Discovery Motion
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`seeking to take the depositions of (1) L. Leonard Lundy, Managing Partner of Applicant; (2)
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`Tami Sortman, Applicant’s Marketing Director; and (3) Applicant’s 30(b)(6) witness. A copy of
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`the Notice of Deposition of Applicant pursuant to Fed. R. Civ. P. 30(b)(6) is attached as Exhibit
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`D.
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`In its Order of July 30, 2015, granting in part and denying in part Applicant’s Motion
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`Under Rule 56(d), the Board permitted the depositions of Leonard Lundy and Tami Sortman. In
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`granting these depositions, the Board stated as follows:
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`The Board finds that, based upon the record, Opposer has
`sufficiently demonstrated a need to take the deposition of L.
`Leonard Lundy, particularly since Mr. Lundy submitted his
`declaration in support of Applicant’s motion for summary
`judgment. The deposition of Mr. Lundy, however, must be
`limited to the topics raised in his declaration, and may include
`testimony regarding any documents/exhibits attached to his
`declaration. Similarly, the Board finds, based on the record,
`that Opposer has sufficiently demonstrated a need to take the
`discovery of Ms. Tami Sortman, inasmuch as Ms. Sortman, in
`her capacity as Applicant’s marketing director, would be a
`person with specific knowledge regarding the manner in which
`Applicant uses the wording REMEMBER THIS NAME in
`association with its legal services and, therefore, her testimony
`would be directly relevant and necessary to the issues raised in
`Applicant’s motion for summary judgment. (Emphasis added)
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`The Board also stated with respect to the 30(b)(6) deposition of Applicant as follows:
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`The Board finds that Opposer has failed to demonstrate the need to
`take this deposition in order to respond to Applicant’s motion for
`summary judgment….Moreover, the Board notes that Opposer’s
`deposition notice of Applicant’s 30(b)(6) witness, was
`submitted as an exhibit to Opposer’s motion for 56(d)
`discovery, identifies topics for discovery that clearly exceed the
`scope of information necessary for Opposer to respond to
`Applicant’s motion for summary judgment. Accordingly,
`Opposer’s Rule 56(d) motion, as it pertains to Applicant’s 30(b)(6)
`witness is DENIED. (Emphasis added)
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`The topics that are included in the 30(b)(6) Notice of Deposition under matters for
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`examination included the following:
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`11.
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`12.
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`13.
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`Lundy Law’s business.
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`Marketing and advertising strategy of Lundy Law.
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`Competitors of Lundy Law.
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`Lundy Law’s percentage of market.
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`Advertisements of competitors of Lundy Law.
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`Methods and programs for competing in marketplace.
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`Methods for promoting services.
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`Advertising and marketing strategies.
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`Territorial reach of advertising.
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`Decision to use phrase “remember this name”.
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`Conception of promotional materials using the phrase “remember this name”.
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`Conception for advertising on buses and billboards using “remember this name”.
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`Implementation of advertising using “remember this name”.
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`14.
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`First use of the name LUNDY LAW.
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`15.
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`Communications with any advertising, public relations or promotional agency,
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`regarding placement of advertising using the phrase “remember this name”.
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`16.
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`Communications with Titan Communications on advertising using the phrase
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`“remember this name,” “Injured? Remember This Name,” and/or “I’m Glad I
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`Remembered the Name.”
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`17.
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`Communications with Bozeken advertising regarding advertising for Lundy Law.
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`18.
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`Applicant’s production and supplemental production to Opposer’s Interrogatories
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`and Request for Production.
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`On August 25, 2015, Opposer took the deposition of Tami Sortman. A copy of the
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`transcript is attached as Exhibit A of Pitt’s (1) Opposition to Applicant’s Second Motion for
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`Summary Judgment; (2) Motion for Sanctions for Discovery Abuses; and (3) Request for
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`Removal of the Highly Confidential Designation for the Sortman Deposition. As will hereinafter
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`be seen, Ms. Sortman was instructed not to answer certain questions asked by Opposer’s counsel
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`which included subjects set forth above which the Board found to be irrelevant to the issue
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`remaining on the Motion for Summary Judgment relating to the use of the mark REMEMBER
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`THIS NAME for legal services.
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`III.
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`PITT’S MOTION FOR SANCTIONS IS PREMATURE
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`As a preliminary matter, Pitt’s Motion for Sanctions is based on questions asked at a
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`discovery deposition taken of Applicant’s, marketing director, Tami Sortman. Ms. Sortman was
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`instructed not to answer only questions that did not relate to the manner of use of the mark
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`REMEMBER THIS NAME for legal services. Applicant’s witness was only instructed to not
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`answer questions which were not relevant and outside the guidelines set forth in the Board’s
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`Order. In Seligman & Latz, Inc. v. Merit Mercantile Corporation, 222 USPQ 720, 723 (TTAB
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`1984) the opposer asked the Board to grant the sanction of a presumption on the probative value
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`of what opposer characterized as incomplete discovery responses. The Board noted:
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`In the present case, opposer could have moved under Rule 2.120(e)
`for an order to compel complete responses to its discovery
`questions, and upon the failure of applicant to comply with such an
`order, the sanction requested could have been imposed. (citations
`omitted).
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`Opposer’s counsel herein could have called the interlocutory attorney for the purpose of
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`ordering that a question be answered, as she threatened to do throughout the Sortman deposition.
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`See for example, pg. 97, ll 6-8 and p. 116, ll 10-12 of the Sortman transcript. However, counsel
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`for Pitt never did call to get a ruling because it was quite obvious that the questions not answered
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`by Ms. Sortman were outside of the scope of questioning that was permitted by the Board’s July
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`30, 2015 Order.
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`IV. AT NO TIME DID APPLICANT’S COUNSEL INSTRUCT THE WITNESS
`NOT TO ANSWER A QUESTION DIRECTED TO CONSUMER
`PERCEPTION
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`On page 17 of Pitt’s Motion for Sanctions, Opposer charges “Yet, Applicant’s counsel
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`instructed the witness not to answer any questions on [sic] directed to consumer perception.”
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`There is no citation to where that happened. Nor, could there be. Opposer’s statement is just not
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`true. The word “perception” does not appear in the Sortman deposition a single time.
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`Opposer then states (at p. 17)
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`Applicant claims its extensive advertising makes REMEMBER
`THIS NAME a mark, but instructed the witness not to answer
`questions on advertising generally, including whether Applicant
`had an advertising budget. T. Sortman Dep. Tr. 22-26.
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`However, the T. Sortman Dep. Tr. 22-26 shows that counsel stopped the witness, Ms.
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`Sortman from answering questions only as to the percentage of dollars spent by Applicant for
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`each of the different media. It had nothing to do with the manner of advertising under the mark
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`REMEMBER THIS NAME. Moreover, counsel permitted Ms. Sortman to answer the question
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`on the general budget of Lundy Law. As seen at T. Sortman Dep. Tr. 27 and 28, Opposer’s
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`counsel asked the witness questions concerning the advertising budgets for 2013-2015 and they
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`were answered. Only the specific breakdown for costs for advertising were denied to Opposer
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`because such information is a trade secret of Lundy Law.
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`Again, Opposer’s counsel asserts that
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`Applicant's counsel directed his witness not to answer questions
`relating to emails authored Ms. Sortman, produced in case. (sic) T.
`Sortman Dep. Tr. 43-44.
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`However, as can be seen on page 44, Applicant’s counsel instructed Ms. Sortman not to
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`answer unless the question pertains to REMEMBER THIS NAME.
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`Opposer then states
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`Applicant’s counsel instructed the witness not to answer questions
`on earlier comparable ad campaign advertising formats. T.
`Sortman Dep. Tr. 48-49.
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`However, the question asked was “Did Mr. Lundy ever talk to you about a T.V. spot
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`called Talk to a Nurse? Accordingly, Applicant’s counsel objected on the basis that it was not
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`relevant to the use of REMEMBER THIS NAME.
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`Opposer’s counsel then states
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`Applicant’s counsel instructed the witness not to answer questions
`on brand awareness. T. Sortman Dep. Tr. 50.
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`As can be seen on page 50 of the transcript, Applicant’s counsel instructed the witness
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`not to answer the question “And what campaigns failed?” Applicant’s counsel then advised the
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`witness not to answer, unless it is in connection with the wording REMEMBER THIS NAME.
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`The question was never asked by Opposer’s counsel whether the campaign failed with respect to
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`the wording REMEMBER THIS NAME.
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`Opposer’s counsel then states
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`Applicant’s counsel directed his client not to answer questions on
`the consumer market. T. Sortman Dep. Tr. 67.
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`However, as can be seen in T. Sortman Dep. Tr. 67, Ms. Sortman did answer the question
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`“What does market mean?” – Answer: “Market means a place that we want to talk.” Similarly,
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`T. Sortman Dep. Tr. 64, line 21- T. Sortman Dep. Tr. 65, line 9, “market” was explained by Ms.
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`Sortman.
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`What can be seen in the remaining objections set forth on pages 18, 19 of Opposer’s
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`Motion, are similarly groundless statements as were the prior examples. As can be seen by
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`reading the Sortman transcript, what Applicant’s counsel did was limit the deposition to that
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`which was permitted in the Board’s 56(d) Order. Also, Opposer states that
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`Applicant’s counsel directed the witness not to answer questions
`regarding “leads” from an email campaign, T. Sortman Dep. Tr.
`123-126.
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`However, at T. Sortman Dep. Tr. 130-131, it can be seen that Applicant’s counsel did
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`permit the witness to answer questions concerning “leads”.
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`If there were violations of the Order of the Board with respect to the deposition of Ms.
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`Sortman, it was by Opposer’s counsel, who constantly overstepped the bounds set by the Board
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`with respect to the appropriate lines of questioning. A fair review of the transcript shows that
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`Opposer used the Sortman deposition to seek the discovery denied it by the Board’s rejection of
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`its 30(b)(6) Notice of Deposition. Accordingly, Applicant’s Motion for Sanctions for Discovery
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`Abuses should be denied.
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`V.
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`THE
`FOR REMOVAL OF
`OPPOSER’S REQUEST
`TRADE
`SECRET/COMMERCIALLY SENSITIVE/ATTORNEY’S EYES ONLY
`DESIGNATION FOR THE SORTMAN DEPOSITION IS NOTHING MORE
`THAN AN ATTEMPT TO REVERSE THE BOARD’S ORDER REFUSING
`REDISIGNATION OF
`THE TRADE
`SECRET/COMMERCIALLY
`SENSITIVE/ATTORNEY’S EYES ONLY DOCUMENTS
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`During the deposition of Tami Sortman, Opposer marked Exhibits 1-15. Exhibit 1 was
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`an amended Notice of Opposition dated August 25, 2015, the date of Tami Sortman’s deposition.
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`As to Exhibits 2-15, they were respectively emails which had been marked with Bates Nos. as
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`follows:
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`Exhibit 2, LUNDY01390
`Exhibit 3, LUNDY01582-1583
`Exhibit 4, LUNDY01396-01397
`Exhibit 5, LUNDY01374-01375
`Exhibit 6, LUNDY01454-01456
`Exhibit 7, LUNDY01412-01416
`Exhibit 8, LUNDY01355-01356
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`Exhibit 9, LUNDY01361
`Exhibit 10, LUNDY01133-01138
`Exhibit 11, LUNDY01159-01160
`Exhibit 12, LUNDY01161
`Exhibit 13, LUNDY01128
`Exhibit 14, LUNDY01484
`Exhibit 15, LUNDY01485-01492
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`Exhibits 2-15 of the Sortman deposition are attached hereto as Exhibit E.
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`As can be seen in pages 8-10 of Pitt’s Redesignation of Documents Marked Trade
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`Secrets/Commercially Sensitive/Attorney’s Eyes Only, all of these documents which are marked
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`as “Trade Secrets/Commercially Sensitive/Attorney’s Eyes Only” were previously requested by
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`Pitt to be redesignated. On February 23, 2015, Applicant opposed this redesignation on the basis
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`that the documents contained trade-secrets about Applicant’s business and that Opposer is a
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`direct competitor. The Applicant’s opposition to redesignation is attached as Exhibit F. On
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`March 11, 2015, the Board noted that Applicant had stipulated to redesignate several documents.
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`These documents included LUNDY1159 (Exhibit 11 of the Sortman Transcript) which Applicant
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`redesignated as Confidential. However, with respect to each of the remaining documents
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`included in Opposer’s Motion for Redesignation the Board stated (Exhibit B at 3):
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`With regard to the remaining documents at issue, except for
`documents bate-stamped 1241-1244 and 1260-1261, Opposer’s
`motion for redesignation is DENIED.
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`The Board found that the remaining documents (except for
`documents bate-stamped 1241-1244 and 1260-1261) contained
`proprietary information not suitable to be disclosed to a competitor
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`such as Opposer. Specifically, the Board found that the documents
`are either comprised of (1) unpublished marketing/advertising
`strategies, advertising schedules or storyboards, or (2) concern
`matters not necessarily relevant to this proceeding, i.e., an
`unrelated civil litigation.
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`Accordingly, in light of the fact that a substantial part of the testimony given by Tami
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`Sortman was either about documents designated appropriately as Trade Secrets/Commercially
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`Sensitive/Attorney’s Eyes Only, and about areas that the Board specifically stated to be not
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`relevant to the issues of how Applicant is using the mark REMEMBER THIS NAME in
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`association with legal services, Opposer’s Motion should be denied with respect to its request for
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`redesignation of the Sortman Deposition.
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`VI. CONCLUSION
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`For the reasons set forth above, it is respectfully submitted that both of Applicant’s Motion
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`for Sanctions for Discovery Abuses and Request for Removal of the Highly Confidential
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`Designation for the Sortman Deposition should be denied.
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`Respectfully submitted,
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`CAESAR RIVISE, PC
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`By____/MPokotilow/ _______________
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`Manny D. Pokotilow
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`Salvatore R. Guerriero
`1635 Market Street
`12th Floor - Seven Penn Center
`Philadelphia, PA 19103-2212
`Attorneys for Applicant Lundy Law, LLP
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`Dated: October 29, 2015
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`CERTIFICATE OF MAILING
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`The undersigned hereby certifies that the within LUNDY LAW’S MEMORANDUM IN
`OPPOSITION TO OPPOSER’S MOTION FOR SANCTIONS FOR DISCOVERY
`ABUSES AND ITS REQUEST FOR REMOVAL OF THE HIGHLY CONFIDENTIAL
`DESIGNATION FOR THE SORTMAN DEPOSITION is being electronically filed with the
`Trademark Trial and Appeal Board, via the Electronic System for Trademark Trial and Appeals (ESTTA)
`on this day, October 29, 2015.
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`/MPokotilow/
`Manny Pokotilow
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on this same day, the within LUNDY LAW’S
`MEMORANDUM IN OPPOSITION TO OPPOSER’S MOTION FOR SANCTIONS FOR
`DISCOVERY ABUSES AND ITS REQUEST FOR REMOVAL OF THE HIGHLY
`CONFIDENTIAL DESIGNATION FOR THE SORTMAN DEPOSITION is being served
`upon Opposer, via First Class Mail in an envelope addressed to:
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`Jacqueline Lesser
`Nancy Frandsen
`Baker & Hostetler LLP
`Cira Centre – 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104-2891
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`/MPokotilow/
`Manny Pokotilow
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`11
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`EXHIBIT A
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`LARRY PITT & ASSOCIATES, P.C.
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`Opposer,
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`Opposition No. 91210158
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`LUNDY LAW LLP
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`Applicant
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`REQUEST FOR REDESIGNATION OF DOCUMENTS MARKED “TRADE
`SECRET/COMMERCIALLY SENSITIVE/ATTORNEY’S EYES ONLY”
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`Larry Pitt & Associates, P.C. (“Opposer”), by this motion and the attached declaration of
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`Jacqueline M. Lesser (“Lesser Decl.”), hereby seeks the Board’s in camera document inspection
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`for the purpose of redesignating documents that have been improperly labeled as “trade
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`secret/commercially sensitive/attorneys’ eyes only.” The documents are submitted herewith
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`“Under Seal,” pursuant to the Standard Protective Order. The full motion is also submitted
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`“Under Seal” because of descriptions ofthe documents at issue. A redacted version ofthese
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`papers has been filed publicly, pursuant to the Board’s rules.
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`As further discussed herein, none ofthe documents described and identified in this
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`motion are, in fact, “trade secret/commercially sensitive/attorneys’ eyes only” worthy, and that
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`catchall designation should be removed. Although the parties have met and conferred on this
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`issue, Applicant has refused to remove the absolutely restrictive designation or offer any
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`explanation ofwhy this overreaching three—part designation is appropriate at all. The parties are
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`unable to resolve this matter without the Board’s intervention. Lesser Decl. 1113. Pursuant to 37
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`CFR § 2.l20(i)(l), Opposer requests resolution ofthis motion by telephone conference with the
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`lnterlocutory Attorney.
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`1. FACTS RELEVANT TO THIS MOTION
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`Following the Board’s Order of February 28, 2014, directing a production of documents
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`responsive to Opposer’s first discovery requests, Applicant served a supplemental production
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`which it marked, in its entirety, “trade secret/commercially sensitive/attorneys’ eyes only.”' On
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`October 31, 2014, the Board dismissed Opposer’s claims of genericness and mere
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`descriptiveness, and permitted Opposer to amend its Opposition to flesh out its claim that the
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`phrase “remember this name” failed to function as a trademark (Dkt. 23). On November 1 1,
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`2014, Opposer wrote to Applicant regarding the overbroad designation of documents as “trade
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`secret, commercially sensitive/attorneys’ eyes only.” Lesser Decl. 112. After multiple reminders,
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`Applicant finally responded and advised by telephone that it would not agree to redesignate the
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`documents. Id. Since Applicant offered no clarification on its position, Opposer sent two more
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`emails after the New Year to attempt to resolve the matter — or at least to gain some insight as to
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`why Applicant believed the documents in question should be completely restricted from access.
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`Lesser Decl. W3 and 4. After several additional email exchanges, on February 9, 2015, in a one
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`sentence response, counsel for Applicant stated: “Lundy Law, LLC does not consent to change
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`ofthe designation ofthe documents marked as Trade Secret or Highly Confidential to which you
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`referred in your email dated 1/30/2015.” Lesser Decl. 115; Ex. D. Applicant’s counsel also
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`' At the time of production and designation, Opposer was unable to contest the designation. By the Rules of
`Practice, Opposer could not then resolve the discovery dispute on documents that it did not use in its summary
`judgment papers until after resolution ofthe summary judgment motion decided in October 2014, and Applicant
`served its Answer to the Amended Notice of Opposition.
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`advised that Applicant would not permit the already designated marketing expert, Ross Fishman,
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`access to the documents. Lesser Decl. 1l6; Ex. E.
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`2. ARGUMENT
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`A. The “Trade Secret/Commercially Sensitive/Attorneys’ Eyes Only”
`Designation Should Be Removed.
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`The Standard Protective Order does not protect public information from disclosure:
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`Information may 19; be designated as subject to any form of protection if it (a) is,
`or becomes, public knowledge, as shown by publicly available writings, other
`than through violation of the terms ofthis document; (b) is acquired by a non-
`designating party or non~party witness from a third party lawfully possessing such
`information and having no obligation to the owner of the information; (c) was
`lawfully possessed by a non—designating party or non—party witness prior to the
`opening of discovery in this proceeding, and for which there is written evidence
`ofthe lawful possession; (d) is disclosed by a non—designating party or non~party
`witness legally compelled to disclose the information; or (e) is disclosed by a non-
`designating party with the approval of the designating party.
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`Stip. Prot. Order at 1l2, emphasis added.
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`Nonetheless, Applicant has designated its entire second production —« of old documents,
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`about public matters, as “Trade Secret/Commercially Sensitive/Attorneys’ Eyes Only”.
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`Applicant has not articulated any basis for its designation ofthese documents ~ despite the fact
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`that cause must exist for such a drastic limitation to access. See e.g., Nix v. Sword, 1 1 Fed.Appx.
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`498, 500 (6th Cir.200l) (good cause must exist, and the party designating the materials must
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`articulate specific facts showing clearly defined and serious injury resulting from disclosure).
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`There has been no explanation whatsoever — no attempt tojustify the restrictions. However, by
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`virtue ofthis label, under the Standard Protective Order, “this entire production is shielded from
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`public access, restricted from any access by the parties, and available for review by outside
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`counsel for the parties and only available to experts and other consultants upon the parties’
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`agreement.” (Stip. Prot. Order 1l‘ll 3 and 4). As a practical matter, Opposer’s attorney is unable to
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`discuss the documents with its client — Opposer handles its own marketing — and needs to review
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`documents to explain to its counsel advertising and marketing terms of art, and industry customs.
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`It cannot do so because of the improper designation. Opposer is likewise unable to show these
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`public documents to its marketing expert because ofthe improper designations. Finally, public
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`documents that should be accessible are not accessible because ofthe improper designation.
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`B. The Designation Improperly Limits Access to Public, N0n~Confidential
`Documents.
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`Applicant first agreed to litigate this matter without a Protective Order, and then refused
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`to produce documents responsive to discovery requests (Dkt. No. 7). When the Board granted
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`Opposer’s Rule 56 (d) request for production and instituted the Standard Protective Order (Dkt
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`12), Applicant slapped the highest level restrictions on all ofthe documents subsequently
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`produced. According to Applicant, each document is a trade secret document, despite that none
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`of the documents bear any internal marking that they are trade secret or kept as such. According
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`to Applicant, each document is a “commercially sensitive document,” despite the fact that
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`counsel for both sides can not determine anything at all in the documents that would be
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`commercially sensitive — indeed, Applicant’s counsel has not articulated any basis for marking
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`the documents at all. According to Applicant, each document is an “attorneys’ eyes only”
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`document, without any rationale. The overreaching labeling of the documents belies the purpose
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`ofa Protective Order, which is intended to be used as a means to permit access to documents,
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`within bounds — not to make public documents inaccessible. “(E)xcept in unusual circumstances,
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`Board proceedings are open to the public; the mere assertion that information is confidential does
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`not make such designation proper. ‘What happens in the halls of government is presumptively
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`public business. . .any step that withdraws an element ofthejuridical process from public view
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`makes the ensuing decision look more like a ‘fiat, which requires compelling justi'lication.’”
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`Hunler1'ndus. Inc. 1/. Tom C().,
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`I I0 USPQ 2d 1651, 1656 (TTAB 2014), n. 12, citing Union Oil
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`Co. 0fCa/. v. Lem/ell, 220 F.3d 562, 568 (7th Cir. 2002).
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`Quite simply, the Applicant over-designated documents, tactically, to make it difficult for
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`Opposer to prepare its case, rather than to protect a legitimate competitive interest, or prevent
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`disclosure of genuinely commercially sensitive or trade secret materials. Because the documents
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`have been labeled as restricted, Opposer must now take affirmative steps to remove the label,
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`and until such label is removed, Opposer and its expert witness are unable to review documents
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`that are necessary to preparation of its case.
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`“Board proceedings are designed to be publicly available and the improper designation
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`ofmaterials as confidential thwarts that intention. It is more difficult to make findings offact,
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`apply the facts to the law, and write decisions that make sense when the facts may not be
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`discussed. The Board needs to be able to discuss the evidence ofrecord, unless there is an
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`overriding need for confidentiality, so that the parties and a reviewing court will know the basis
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`of the Board's decisions.” Ea’wara’.s' Lz_'/ésciences Corp. v. Vz'gz'Lan2 Corp., 94 USPQ 2d 1399,
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`1403 (TTAB 2010). Applicant'"s over-designation functionally means that Opposer cannot
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`review basic, public documents without filing this motion. Procedurally, it means that the
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`documents can only be provided to the Board “Under Seal.” It