Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA770381
`09/13/2016
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`ESTTA Tracking number:
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`Filing date:
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`Proceeding
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91213597
`
`Defendant
`Tigercat International Inc.
`
`CANDACE LYNN BELL
`ECKERT SEAMANS CHERIN & MELLOTT LLC
`50 S 16TH STREET, 22ND FLOOR
`PHILADELPHIA, PA 19102 2523
`UNITED STATES
`cbell@eckertseamans.com, rjacobsmeadway@eckertseamans.com,
`jkirsch@eckertseamans.com, afleisher@eckertseamans.com
`Opposition/Response to Motion
`
`Candace Lynn Bell
`
`cbell@eckertseamans.com, rjacobsmeadway@eckertseamans.com,
`jkirsch@eckertseamans.com
`
`/Candace Lynn Bell/
`
`09/13/2016
`
`Applicants Opposition and Memorandum to Combined Motion for Reconsidera-
`tion with Certificate of Service.pdf(666844 bytes )
`EXHIBIT 1 TO APPLICANTS OPPOSITION TO COMBINED MOTION FOR RE-
`CONSIDERATION.PDF(1591622 bytes )
`EXHIBIT 2 TO APPLICANTS OPPOSITION TO COMBINED MOTION FOR RE-
`CONSIDERATION.PDF(1729250 bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`CATERPILLAR INC.,
`
`OPPOSER,
`
`V.
`TIGERCAT INTERNATIONAL INC.
`
`0
`
`APPLICANT.
`
`Opposition No. 91213597
`
`APPLICANT’S MEMORANDUM IN OPPOSITION TO:
`OPPOSER’S COMBINED MOTION SEEKING RECONSIDERATION OF THE
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`MOTION TO COMPEL DEPOSITION OF JAMES BERGER WITHOUT OBJECTIONS,
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`BOARD’S AUGUST 18,2016 ORDER,
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`MOTION F(1I§]S)USPENSION
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`Tigercat International Inc. (“Applicant” or “Tigercat”) respectfully submits this
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`memorandum in opposition to Opposer ’s Combined Motion Seeking Reconsideration ofthe
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`Board ’s August 18, 2016 Order, .Motion to Compel Deposition ofJames Berger Without
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`Objections, and Motion for Suspension (the “Combined Motions”).
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`Caterpillar, Inc. (“Opposer” or “Caterpillar”) seeks reconsideration of the Board’s Order
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`permitting Applicant to serve a sur-rebuttal survey expert report, but makes no showing that the
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`Board erred. Opposer’s motion to compel Tigercat’s survey expert, Mr. James Berger’s further
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`deposition, approximately 6 months after Mr. Berger’s deposition, without any effort by Opposer
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`to meet-and-confer, and seeking relief in the form of sanctions although Tigercat has not violated
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`any Board Order, is a wholly inappropriate Vehicle to secure the requested relief, to which
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`Opposer is not entitled. While motions to compel may result in suspension of inter parties
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`proceedings, given the baseless nature of Opposer’s motions for reconsideration and to
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`

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`compel/for sanctions, and its disregard of its good-faith meet-and-confer obligations, the Board
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`should decline to reward Caterpillar’s gamesmanship with a further delay of this proceeding.
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`Background/Clironology,
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`The relevant chronology will aid the Board in its assessment of Opposer’s Combined
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`Motions :
`
`April 13, 2015 — the deadline for expert disclosure‘. Both parties served expert
`disclosures on this date. Applicant served the expert report and survey of Mr.
`Berger regarding the likelihood of confusion using the Squirt methodology.
`Opposer did not disclose any survey expert report.
`December 23, 2015 ~ the date for expert disclosure as reset by the Board Order of
`December 22, 2015. Opposer did not disclose any survey expert report.
`March 3, 2016- Opposer took the discovery deposition of Tigercat ’s survey
`expert, ll/Ir. Berger.
`April 4, 2016 - Opposer served the rebuttal expert report of Mr. Hal Poret. The
`Poret report contained two parts: a critique of Mr. Berger’s survey, and an entirely
`new likelihood of confusion survey which employed an Ever-Ready methodology.
`April 25, 2016 — Tigercat sought Opposer’s consent to file its motion for leave to
`serve a sur-rebuttal report, in response to that of Mr. Poret with respect to the A
`newly produced survey. Tigercat offered to provide Mr. Kramkowski’s expert
`rebuttal report to Opposer within thirty (30) days of the disclosure of Mr. Poret’s
`report and to make Mr. Kramkowski available for deposition prior to the close of
`discovery.
`April 28, 2016 — Opposer informed Tigercat that it would not consent to
`Tigercat’s Motion for Leave.
`‘
`
`May 4, 2016 - Applicant filed its Motion for Leave to Disclose and Rely on a
`rebuttal expert to Opposer’s expert report.
`May 4, 2016 - Tigercat provided Opposer with a copy ofthe rebuttal expert
`report ofMr. Kramkowski Tigercat intends to disclose and rely on, ifgranted
`leave by the Board to do so.
`
`May 19, 2016 — Caterpillarfiled its opposition to Applicants motion for leave to
`serve a sur-rebuttal report.
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`June 3, 2016 — Applicant filed a reply brief in support of its motion for leave.
`August 18, 2016 — the Board entered its Order, granting Tigercat leave to serve
`and rely upon a sur-rebuttal expert report which solely rebuts and or critiques the
`methodology of the survey conducted by Mr. Poret, as well as the analysis ofthe
`data resultingfrom the survey.
`‘
`August 29, 2016 — Caterpillarfiled the instant Combined Motions.
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`1 A motion was before the Board to suspend proceedings before the deadline for expert disclosures, but no order had
`issued and the parties disclosed expert reports on that date.
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`2
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`

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`Caterpillar makes no claim in connection with its discovery motion directed to Mr. Berger’s
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`further deposition that it sought to meet and confer with Tigercat before making its motion, and
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`cannot make any such claim.
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`Caterpillar’s Combined Motions lack merit.
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`Argument
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`1.
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`0pposer’s Motion for Reconsideration Should Be Denied. The Board did not Err in
`Granting Tigercat ’s Motion for Leave to File a Sur-Reply Rebuttal Reg‘ort
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`Requests by parties for reconsideration of a Board Order are governed by 37 C.F.R. §
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`2.l27(b). See, also, TBMP §518. Caterpillar’s motion, while timely, fails in all other respects to
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`meet the applicable standard for reconsideration. TBMP §5 1 8 provides in pertinent part:
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`.
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`Generally, the premise underlying a motion for reconsideration. .
`under 37 CFR § 2.l27(b) is that, based on the facts before it and
`the prevailing authorities, the Board erred in reaching the order or
`decision it issued. Such a motion may not properly be used to
`introduce additional evidence, nor should it be devoted simply to a
`reargument of the points presented in a brief on the original
`motion. Rather, the motion should be limited to a demonstration
`that based on the facts before it and the applicable law, the Board’s
`ruling is in error and requires appropriate change.
`.
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`Caterpillar offers no explanation as to how the Board’s original order was in error. Its motion for
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`reconsideration is essentially a repetition of arguments the Board has already considered and
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`rejected. See, Vignette Corp. v. Marina, 77 U.S.P.Q.2d (BNA) 1408 (TTAB 2005) (“Because
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`we find no error in our consideration of the Marine Declaration in determining opposer's motion
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`for summary judgment, opposer's request for reconsideration is denied. See Trademark Rule
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`2.l27(b).”); Swiss Natural Foods, Inc. v. Country Club Indus, 91094939, 1999 TTAB LEXIS
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`548 (TTAB Sept. 16, 1999).
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`

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`Opposer reiterates its arguments concerning the applicability of the Newegg case.
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`Caterpillar continues to insist that the holding of Newegg does not extend to sur-rebuttal expert
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`reports, offered by a different expert. The most Caterpillar can muster to argue is:
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`While not specifically addressed in Newegg, the factual situation
`underlying the Board’s finding of timeliness involved the
`submission of a sur-rebuttal expert report by the original expert.
`The Board’s August 18, 2018 [sic] Order does not specifically
`address this point, other than indicating that Newegg is not limited
`to its particular facts and that the Board has discretion to allow a
`sur-rebuttal expert report under the appropriate circumstances.
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`Dkt. 71, Opposer’s Combined Motions, at p. 3. Opposer does not dispute the Board’s discretion.
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`Opposer does not show in any way that the Board erred in the exercise of its discretion.
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`Opposer again argues that:
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`Neither the Board’s August 18, 2016 scheduling order nor the
`TBMP provides an appropriate testimony period for sur-rebuttal
`testimony to be introduced. Opposer respectfully requests the
`Board’s clarification on this issue.
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`Dkt. 7l, Opposer’s Combined Motions, at p. 4. Opposer raised the same issue before in
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`opposing Tigercat’s motion for leave to file a sur-rebuttal report. Dkt. No. 67, at pp. 9-10. The
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`timing and any other logistics of Mr. KramkoWsl<i’s anticipated deposition is something that
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`counsel for the parties could have addressed with a telephone call. Whatever Opposer hopes to
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`achieve by raising this point, it does not amount to demonstration of Board error, or otherwise
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`warrant reversal of the Board’s sound exercise of its discretion.
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`In seeking reconsideration, Opposer appends and cites Mr. Kramkowski’s report, which it
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`had approximately 2 weeks before itfiled its opposition to Tigercat ’s motion for leave to file a
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`sur-rebuttal expert report, claiming that Mr. Kramkowski’s report bolsters that of Mr. Berger,
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`Applicant’s survey expert. Specifically, Caterpillar first imperfectly describes Mr. Berger’s
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`control for the survey that he conducted, and then claims that Mr. Kramkowski’s criticism of Mr.
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`Poret’s selection of Bobcat as a control in Mr. Poret’s survey design, augments Mr. Berger’s
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`report, because the “Bobcat” logo was used as a control in Mr. Berger’s survey. See, Exhibit 1,
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`First Amended Report of James T. Berger, at p. 7.
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`If Opposer had an argument it wished to make particular to Mr. Kraml<owsl<i’s actual
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`report, it had the opportunity to do so. It cannot now augment its failed arguments by way of its
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`motion for reconsideration. TBMP §5 1 8 makes clear: motions for reconsideration “may not
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`properly be used to introduce additional evidence.” Id. Moreover, Caterpillar’s argument,
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`whether or not waived, is immaterial. Tigercat will not use Mr. Kraml<owski’s report or
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`testimony to support Mr. Berger’s report or testimony. More importantly, the Board has
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`specifically directed that Mr. Kramkowski’is report and testimony not be used to bolster Mr.
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`Berger’s report and testimony. Notably, Mr. Kraml<owsl<i’s report is not directed to Mr.
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`Berger’s report, but only to the (im)propriety of Opposer’s rebuttal survey expe1t’s
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`opinion/methodology. See, Exhibit 2, Rebuttal Report of William J. Kramkowski Re: Caterpillar
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`Inc. V. Tigercat International Inc., Analysis ofExpert Rebuttal Report and Survey ofHal Poret,
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`Conducted to Assess Likelihood ofConfusion Between TIGERCAT mark and Caterpillar. If Mr.
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`Kramkowski’s report or testimony is offered during the trial period to support the report or
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`testimony of Mr. Berger, in Violation of the Board’s Order of August 18, Caterpillar’s remedy is
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`a motion to strike or preclude at the appropriate time. Caterpillar’s argument points to no facts
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`and no law misconstrued or ignored by the Board in permitting the sur-rebuttal report.
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`None of the cases Caterpillar seeks to rely on support its motion for reconsideration.
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`Caterpillar misstates the history of Gilbane Bldg. Co. v. Downers Grove Cmty. High Sch.
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`Dist. No. 99, No. 02 C2260, 2005 WL 838679 (N.D. Ill. Apr. 5, 2005). In Gilbane, the District
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`Court permitted the plaintiff to supplement its expert report following motion practice, largely to
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`“expedite resolution” of a Daubert challenge. See, Gilbane, 2005 WL 838679, at *5. However,
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`the plaintiff proffered a second report of an additional expert. Because the expert’s second report
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`went so far as to amount to a new report in furtherance of plaintiffs case-in-chief, the District
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`Court struck it. See, Gilbane, 2005 WL 83 8679, at *2, ll. In doing so, the District Court stated
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`it was “[b]ecause the CCL Report goes far beyond rebutting the opinion’s expressed [in
`defendant’s] expert report, the CCL Report is not a rebuttal report.” Id. The District Court went
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`on to observe that, “Although [plaintiff] may not use the CCL Report as a rebuttal opinion,
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`[plaintiff] is entitled to offer evidence from [the additional expert noted] to rebut [Defendant’s
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`expert’s] opinions.” Id. at *l2 (emphasis added).
`
`In, Innovation Ventures, L.L. C. v. N. I/.E., Inc., No. 08-11867, 2014 WL 4979059 (E.D.
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`Mich. Oct. 5, 2014), the District Court considered whether to strike two expert reports, described
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`as “supplemental reports”. The District Court had invited the submission of supplemental
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`reports. See, Innovation Ventures, 20l4WL 4979059, at * 1. At issue was whether the reports
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`were new reports, or in fact, “supplemental reports”:
`NVE says that the reports are ... new reports, not supplemental
`reports, and therefore should have been filed by August 1, 2009,
`pursuant to the Court’s original scheduling order.
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`The salient question, then, is whether either report truly qualifies as
`a “supplemental report.”
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`See id., 2014 WL 4979059, at *2.
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`The first of the two, offered by a previously disclosed expert, was held by the District
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`Court to be “substantially responsive” to the defendant’s expert’s detailed criticisms of the
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`supplementing expert’s earlier report, such that it “qualifies as a supplemental report”; and it was
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`therefore permitted. See id., at *2. The second purportedly “supplemental” report was offered
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`by the plaintiff as “supplementary” to the report of “one ofits other experts.” See id. (emphasis
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`added). In the course of its opinion, striking the latter report, the District Court specifically
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`found it “significant that with the [second report], Plaintiff seeks to supplement the report of his
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`previously disclosed expert .
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`.
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`. with that of an entirely different expert.” Id. (emphasis added).
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`I
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`Innovation Ventures only speaks to the issue of the reports as “supplemental”; it does not
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`address rebuttal reports, or “sur~rebuttal” reports. Unlike in Innovation Ventures, the point of
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`Mr. Kramkowski’s report is not to supplement Mr. Berger’s report, but rather, as permitted by
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`the Board, to rebut Mr. Poret’s report to the extent it is based on the new survey he did.. The
`factual context ofInnovation Ventures is therefore, markedly different from the one at hand, and
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`has no bearing on this matter.
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`Caterpillar cites no applicable case in support of its motion for reconsideration.
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`2.
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`0gQoser’s Motion to Comgel/For Sanctions Should be Denied
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`Motions to compel before the Board are governed by 37 C.F.R. §2.l20(e). See, also,
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`TBMP §523. Notably, 37 C.F.R. §2.l20(e)(l) provides:
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`expert testimony disclosure, or
`. A motion to compel
`.
`.
`discovery 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 paities were unable to resolve their differences.
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`Prior to filing a motion to compel, a complaining party must make a good—faith effort to
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`resolve its discovery dispute with the other side. See, Giant Food, Inc. v. Standard Terry Mills,
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`Inc., 231 USPQ 626 (TTAB l986).
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`In connection with Opposer’s motion to compel Mr. Berger’s second deposition,
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`Caterpillar did not raise its objections to Applicant’s Counsel’s instructions during Mr. Berger’s
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`deposition with Applicant’s Counsel after Mr. Berger’s deposition. Caterpillar only raised its
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`objections after the Berger deposition in its Response Papers to Applicant’s Motion for Leave.
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`See, Dkt. 66, pp. 2-6. To date, Caterpillar has made no effort to conduct a meet-and-confer with
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`Tigercat’s counsel regarding Tigercat’s counsel’s instruction to Mr. Berger to refuse to answer
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`certain questions on the basis of privilege. Having failed even to raise the issue after the
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`g deposition with Tigercat’s counsel directly or request a good—faith meet—and-confer, let alone
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`satisfy the good-faith effort requirement of Trademark Rule 2. l20(e)(l), Caterpillar has not
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`‘ complied with its obligations and so its motion to compel should be denied on that basis alone.
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`See, Hot Tamale Mama. .
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`. and More, LLC v. SF Investments, Inc., 110 USPQ2d 1080, 1081
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`(TTAB 2014)..
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`Fed. R. Civ. P. 30(c)(2) provides that objections to preserve a privilege are a basis for
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`instructing a witness not to answer a question. Tigercat’s work product objections in the course
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`of Mr. Berger’s objections were made timely and in good-faith and were proper. Fed. R. Civ. P.
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`26(b)(4), provides:
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`(4)
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`Trial Preparation: Experts.
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`(A)
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`(B)
`
`(C)
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`Deposition of an Expert Who May Testify. A party
`may depose any person who has been identified as
`an expert whose opinions may be presented at trial.
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`Trial-Preparation Protection for Draft Reports or
`Disclosures. Rules 26(b)(3)(A) and (B) protect
`drafts of any report or disclosure required under
`Rule 26(a)(2), regardless of the form in which the
`draft is recorded.
`
`Trial-Preparation Protection for Communications
`Between a Party's Attorney and Expert Witnesses.
`Rules 26(b)(3)(A) and (B) protect communications
`between the party's attorney and any witness
`required to provide a report under Rule 26(a)(2)(B),
`regardless of the form of the communications,
`except to the extent that the communications:
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`

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`(i)
`
`(ii)
`
`(iii)
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`relate to compensation for the expert's study
`or testimony;
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`identify facts or data that the party's attorney
`provided and that the expert considered in
`forming the opinions to be expressed; or
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`identify assumptions that the party's attorney
`provided and that the expert relied on in
`forming the opinions to be expressed.
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`Caterpillar is seeking to engage in a fishing expedition concerning the substance of
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`communications between Mr. Berger and counsel regarding survey format selection in asking
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`Mr. Berger about the Ever-Ready survey format. Counsel for the parties could have discussed
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`this point and possible means of addressing their respective concerns, had Caterpillar sought to
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`confer with Tigercat in good—faith, as Caterpillar was required to do.
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`Caterpillar, not content to disregard its obligations to meet—and-confer, argues with no
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`basis for the imposition of “sanctions” against Tigercat in the form of requiring a second
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`discovery deposition of Mr. Berger “without any objections from counsel” (including any
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`privilege based objections), “to the extent the Board declines to strike Mr. Kramkowski ’s report
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`as aform ofsanction”. See, Dkt. 71, Opposer’s Combined Motions, at p. 9 (emphasis added).
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`First, Caterpillar makes its request for sanctions despite the fact that Tigercat has not acted in
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`derogation of any Board Order particular to Mr. Berger’s deposition or otherwise. See, 37
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`CPR. §2,120(g)(l); TBMP §527.0l(a); see also, L—COM, Inc. V. ELECOA/I Co., 91192293,
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`2011 TTAB LEXIS 252, *l0-11 (TTAB Aug. 3, 2011) (“A motion for sanctions for failure to
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`comply with an order of the Board lies only when the Board has entered an order relating to
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`discovery (i.e., an order compelling discovery or a protective order) and the order has been
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`violated”) (citations omitted); Nobelle.com LLC v. Qwest Communications International Inc., 66
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`USPQ2d 1300, 1303 (TTAB 2003). Second, Mr. Kramkowski’s sur-rebuttal report has not yet
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`

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`been offered as evidence in this proceeding; indeed the trial testimony period has not opened for
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`either party. Striking Mr. Kramkowski’s report bears no relationship to deposing Mr. Berger a
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`second time for discovery purposes, let alone “without any objection.” There is no basis at this
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`time for any motion to strike the sur-rebuttal report directed by the Board to be served by
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`September 17, 2016, during the discovery period. Third, given Mr. Berger’s status as a non-
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`party, the Board is respectfully without jurisdiction to compel Mr. Berger to appear for a second
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`discovery deposition, or compel Mr. Berger to answer questions without any objection at a
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`second discovery deposition. See, TBMP §411.04 (“Because the Board does not have
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`jurisdiction over a non-party Witness,
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`if a non-—party witness has appeared voluntarily for a
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`deposition, but refuses to answer particular questions propounded during the deposition, the
`deposing party must seek relief from an appropriate United States district court and may not file
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`a motion to compel with the Board.”); see also, TBMP §404.03(a)(2).
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`None of the cases cited by Caterpillar supports its request for sanctions. In none of the
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`cases cited by Caterpillar in its request for sanctions, did the Board address forcing an expert
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`witness to testify at a discovery deposition, or second discovery deposition “without objection”.
`In both Stoncor Grp., Inc. v. X-Calibur iC0nstr. Sys., Inc., 91219043, 2016 WL 1729505 (TTAB
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`Apr. 27, 2016) and Allergan, Inc. v. KRL Group, Inc., 91169544, 2012 WL lll31000 (TTAB
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`Mar. 29, 2012), the party against whom sanctions was imposed violated an earlier order of the
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`Board.
`
`In Orthomatrix, Inc. v. Wright Med. Tech, Inc., 91116918, 2001 WL 754818 (TTAB July
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`3, 2001), when the Board directed opposer to respond to interrogatories and document requests
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`without objection, and without an earlier discovery order directing that discovery, the party had
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`both failed to respond to the subject discovery, choosing instead to file a motion to suspend for
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`10
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`

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`settlement discussions, and failed to oppose the motion to compel, instead moving for an
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`extension of time to respond to the motion to compel. In expressing its extreme displeasure with
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`the parties, the Board observed that it “expects the parties and their attorneys to deal with one
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`another in this case in an atmosphere of cooperation and good faith.” Caterpillar made no effort
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`to meetand confer regarding its motion to compel. This is not the good faith required of parties
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`in proceedings before the Board.
`
`Caterpillar parenthetically cites to Elec. Indus. Ass ’n, 50 U.S.P.Q.2d 1775 (TTAB 1999)
`
`for the proposition that the case involved “acknowledging that sanctions are appropriate where a
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`party improperly asserts objections.” Dkt. 71, Combined Motions, at p. 8. What Caterpillar
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`ignores, is that resolution of the request for sanctions before the Board involved a party that had
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`earlier failed to respond to discovery, and that failure was the subject of an uncontested motion
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`to compel. The Board ruled in response to the motion to compel that the responding party, by
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`then pro Se, had to provide “discovery responses without objection”. Nonetheless, the pro Se
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`party responded with numerous objections. Upon motion, the Board then fashioned sanctions
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`appropriate to the circumstances before it. The facts of Elec. Indus. warranted the Board’s
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`exercise of its inherent powers in the manner set out in the opinion. This is not that case.
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`Tigercat produced Mr. Berger for deposition. Tigercat made timely and good faith objections
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`based on the work product privilege. Caterpillar waited six months to make any motion
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`regarding those objections and has not secured any Order compelling responses to particular
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`questions. Any objection Caterpillar would make to the claim of privilege asserted is not now
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`the subject of any Order which was violated.
`
`Ferro Corp. v. Scm Corp, 219 U.S.P.Q. 346 (TTAB 1983), on which Caterpillar also
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`relies, involved improper commentary and instructions by counsel at a trial testimony deposition.
`
`11
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`

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`The Board’s analysis in Ferro makes no suggestion that there was any instruction to the witness
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`during trial testimony, not to answer questions posed on the basis of work product privilege.
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`Ferro does not advance Caterpillar’s position with respect to its motion seeking a second
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`discovery deposition of Mr. Berger and “without objection.”
`
`There is no sound basis for the motion to compel made by Caterpillar or Caterpillar’s
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`request for sanctions, and both should be denied. If Caterpillar legitimately believes that any of
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`Mr. Kramkowski‘s testimony or report is offered in support of the Berger testimony or report
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`instead of in rebuttal of Mr. Poret’s survey and report, it has a remedy at that time, specifical1y,a
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`motion to strike/preclude such testimony or report. Caterpillar now has no grounds to seek
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`sanctions, in any form.
`
`3.
`
`0QQoser’s Motion to Susgend Should be Denied
`
`Opposer seeks suspension of these proceedings under 37 CFR §2.120(e)(2) because
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`Opposer has filed a Motion to Compel discovery. However, Opposer failed to fulfill its meet-
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`and-confer obligations prior to filing its motion to compel, as such, the motion is procedurally
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`improper. Since Opposer has made no other showing why the proceeding should be suspended,
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`Opposer’s request for suspension should be denied.
`
`12
`
`

`
`Conclusion
`
`For all the preceding reasons, Applicant respectfully submits that the Board should deny
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`Opposer ’s Combined Motion Seeking Reconsideration ofthe Board ’s August 18, 2016 Order,
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`Motion to Compel Deposition ofJames Berger Without Objections, and Motion for Suspension.
`
`Date: September l3, 2016
`
`Respectfully submitted,
`
`/s/ Candace Lynn Bell
`Candace Lynn Bell
`Roberta Jacobs-Meadway
`Joshua L. Kirsch
`
`ECKERT SEAMANS CHERIN &
`
`MELLOTT, LLC
`Two Liberty Place
`50 South 16th Street — 22nd Floor
`
`Philadelphia, PA 19102
`cbell@eckertseamans.com
`rjacobsmeadway@eckertseamans.com
`jkirsch@ecl<e1tsearnans.com
`Attorneysfor Applicant Tigercat International, Inc.
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`13
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the attached Applicant ’s
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`Memorandum in Opposition to: Opposer ’s Combined Motion Seeking Reconsideration ofthe
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`Board ’s August 18, 2016 Order, Motion to Compel Deposition ofJames Berger Without
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`Objections, and Motion for Suspension was served on counsel for the Opposer on the date listed
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`below Via email:
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`Christopher P. Foley, Esq.
`Naresh Kilaru, Esq.
`Finnegan, Henderson, Farabow,
`Garrett & Dunner L.L.P.
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`901 New York Avenue, NW.
`Washington, DC 20001
`Christopher.fo1ey@finnegan.corn
`Naresh.ki1aru@finnegan.com
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`Laura. K. Johnson, Esq.
`FINNEGAN, HENDERSON, FARABOW,
`GARETT & DUNNER, L.L.P.
`2 Seaport Boulevard
`Boston, MA 02210
`Laura.johnson@finnegan.com
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`Dated: September 13, 2016
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`By: s/ John F. Metzger
`John F. Metzger
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`EXHIBIT 1
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`First Amended
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`Report of James T. Berger
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`Re: CATERPILLAR INC., Opposer, v. TIGERCAT INTERNATIONAL
`INC. Applicant
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`Report of James T. Berger 1 April 13, 2015
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`First Amended
`Report of James T. Berger
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`Re: CATERPILLAR INC., Opposer, v. TIGERCAT INTERNATIONAL
`INC. Applicant
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`I.
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`Introduction
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`1. This report focuses on a scientific research study conducted among men and
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`women age 18 and over who have been involved in the purchase, use, or
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`maintenance of heavy-duty construction, logging or off-road equipment.
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`Specifically, the survey attempts to determine if persons involved in those job
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`functions recognize similarities between the colored logos of the Applicant and
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`the Opposer. The focus of the survey was to determine if there was a likelihood
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`of confusion between the logos of Caterpillar Inc. and Tigercat International Inc.
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`In this First Amended version we have included information about the validation
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`of the survey and have attached the Validation Report as EXHIBIT E.
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`II.
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`Personal Background
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`2. Present Activities. I am currently a faculty member at Roosevelt University. I am
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`also Principal of James T. Berger/Market Strategies, a strategic marketing
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`communications and consulting firm. I currently teach courses in Advertising,
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`Consumer Behavior, Personal Selling and Sales Management, Global Marketing,
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`Marketing Management, and Marketing in Theory and Practice at Roosevelt
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`University’s Walter E. Heller College of Business Administration. I have
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`previously taught graduate and undergraduate marketing-related courses at
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`Report of James T. Berger 2 April 13, 2015
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`DePaul University and Loyola University, and Northwestern University’s Kellogg
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`Graduate School of Management. In addition, I have taught undergraduate
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`courses at Northwestern University’s School of Continuing Studies, The
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`University of Illinois at Chicago, and The Lake Forest Graduate School of
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`Management. In November 2011, Oxford University Press published a book that
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`I co-authored with R. Mark Halligan of the law firm of Nixon Peabody entitled
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`Trademark Surveys: A Litigator’s Guide. In addition, I have authored many
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`articles dealing with marketing and other business-related issues. A copy of my
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`curriculum vitae, summary of my teaching experience, publications list, billing
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`rate and testimony experience, are attached to this report as EXHIBIT A.
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`3. Education. I received a Master’s Degree in Business Administration in 1978 from
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`the University of Chicago Graduate School of Business, with concentrations in
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`marketing and finance. I also received a Master of Science Degree in Journalism
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`from Northwestern University’s Medill School of Journalism in 1965, with
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`concentrations in the news and editorial sequence, and a Bachelor of Arts
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`Degree with a major in journalism from the University of Michigan in 1964.
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`4. Prior Experience. I have previously worked as an Account Supervisor for two
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`Downtown Chicago advertising agencies, as Vice President and Director of
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`Public Relations for another Chicago advertising agency, and as Account
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`Supervisor for two major Chicago public relations agencies. I have had my own
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`marketing communications consulting practice for more than 25 years, and have
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`been involved in marketing consulting and survey work for law firms for more
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`than 15 years.
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`Report of James T. Berger 3 April 13, 2015
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`5. Market Research/Trademark Experience. I have extensive market research
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`experience, including quantitative and qualitative survey research, and have
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`performed in-person, telephone, and Internet-based interviewing in various
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`industries with respect to brands and trademarks. I have also designed and
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`coordinated market research programs, including drafting questionnaires,
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`performing and supervising personal interviews, organizing focus groups,
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`tabulating and evaluating data, and preparing research reports. I have delivered
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`continuing legal education programs entitled “Intellectual Property Surveys: Best
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`Practices” twice before the Chicago Bar Association, twice before the Milwaukee
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`Bar Association, before the St. Louis Bar Association, and before the Texas Bar
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`Association. In addition, I was a presenter at a session in March 2003, before
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`the Minnesota State Bar Association, entitled “The Effective Use of Survey
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`Experts and Evidence in Trademark Cases.” Furthermore, I have authored 17
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`articles on intellectual property and trademark/secondary meaning surveys for
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`INTELLECTUAL PROPERTY TODAY Magazine: (1) “10 Frequently Asked
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`Questions About Intellectual Property Surveys,” which appeared in the August
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`2003 issue; (2) “Swimming in Shark-Infested Waters,” which appeared in the
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`June 2004 issue; (3) “Creativity Key to Executing Toughest IP Survey Projects,”
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`which appeared in the July 2005 issue; (4) “What IP Attorneys Should Know
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`About Expectations and Costs for Survey Research,” which appeared in the April
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`2006 issue; (5) “10 Easy Ways to Blow Away A Survey,” which appeared in the
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`January 2007 issue; (6) “The Power and Perils of Internet Surveys,” which
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`appeared in the August 2007 issue; (7) “How to Do an IP Survey Without Giving
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`Report of James T. Berger 4 April 13, 2015
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`Away the Store,” which appeared in the April 2008 issue; (8) “New Challenges to
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`the IP Survey Process,” which appeared in the July 2009 issue; (9) “Introducing
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`the Internet/Telephone ‘Hybrid’ Survey,” which appeared in the July 2010 issue;
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`(10) “When NOT To Do An Intellectual Property Survey,” which appeared in the
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`November 2010 issue; (11) “A New Survey Protocol for Proving/Disproving
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`Design Patent Infringement,” which appeared in the April 2011 issue; (12) “How
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`to Apply Theory of Probability to Decision to the Decision of Whether to Do an
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`I.P. Survey,” which appeared in the February 2011 issue; (13) “The
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`Descriptive/Suggestive Conundrum in Trademark Surveys,” which appeared in
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`the November 2011 issue; (14) “The Pre-Litigation Pi