Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA711862
`ESTTA Tracking number:
`12/01/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91217666
`Defendant
`Summit Entertainment, LLC
`PAUL A BOST
`SHEPPARD MULLIN RICHTER & HAMPTON LLP
`1901 AVENUE OF THE STARS, SUITE 1600
`LOS ANGELES, CA 90067
`UNITED STATES
`larry.jones@alston.com, pbost@smrh.com, lthompson@smrh.com, jpiet-
`rini@smrh.com, lmartin@smrh.com, mdanner@smrh.com, rwalsh@smrh.com
`Reply in Support of Motion
`Paul A. Bost
`pbost@smrh.com, lmartin@smrh.com, mdanner@smrh.com, rw-
`alsh@smrh.com, jpietrini@smrh.com, shwang@smrh.com
`/Paul A. Bost/
`12/01/2015
`TBL-SUMMIT - Reply Brief iso Motions to Compel Discovery.pdf(60598 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
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`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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`Docket No. 22HF-202718
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`
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`Opposition Nos. 91-217666, 91-217706
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`APPLICANT SUMMIT
`ENTERTAINMENT, LLC’S REPLY
`BRIEF IN SUPPORT OF ITS MOTIONS
`TO COMPEL OPPOSER TBL
`LICENSING, LLC’S
`SUPPLEMENTATION OF CERTAIN OF
`ITS DISCOVERY RESPONSES AND TO
`TEST THE SUFFICIENCY OF CERTAIN
`OF ITS RESPONSES TO REQUESTS FOR
`ADMISSION
`
`
`In re Matter of Application Nos. 86/071,240,
`86/071,241, 86/071,242, 86/071,243,
`86/071,244, 86/071,245, 86/071,246,
`86/071,247, 86/071,248, 86/071, 249 for the
` in Classes 9, 14,16, 18, 20, 21,
`trademarks
`24, 25, 26 & 28
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`TBL Licensing LLC,
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`Opposer,
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`vs.
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`Summit Entertainment, LLC,
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`Applicant.
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`INTRODUCTION
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`I.
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`In two consolidated proceedings, Opposer TBL Licensing LLC (“Opposer”) has opposed
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`ten of Applicant Summit Entertainment, LLC’s (“Applicant”) applications – each in a different
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`International Class – to register its design mark at issue. Likewise, Opposer has asserted nine
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`trademark registrations in various classes in support of its consolidated notices of opposition. It
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`is therefore Opposer who has set the scope of this consolidated proceeding – which by definition
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`is quite broad as a result. Applicant’s discovery requests are clearly proportional to the number
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`of marks Opposer has made of issue in this consolidated proceeding. Yet, Opposer acts, and
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`premises its failure to fulfill its discovery obligations, as if it is doing Applicant a favor by
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`participating in discovery in this proceeding. The Board should not buy into Opposer’s faulty
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`premise and hyperbole, and, instead, should grant Applicant’s motion to compel in its entirety.
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`II.
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`INTERROGATORY NO. 10 – RETAIL PRICES
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`Applicant’s interrogatory plainly requests that Opposer “[s]tate the retail price of each of”
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`Opposer’s goods bearing or sold under its tree mark. Opposer’s continued contention that this
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`straightforward interrogatory is overbroad and burdensome is facially unsupported. Opposer
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`cannot allege nine registrations, across a panoply of goods, in support of its two consolidated
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`notices of opposition to ten applications, but then refuse to provide basic information regarding
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`the goods it has made of issue in this proceeding.
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`Applicant did not request that Opposer provide it with all retail prices for the relevant
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`goods from January 1, 2006 to the present. Opposer’s contention that this is the scope of
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`Interrogatory No. 10 derives from the following prefatory instruction to Applicant’s First Set of
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`Interrogatories: “Unless otherwise stated, the relevant time period for the requests below is
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`January 1, 2006 to the present.” Interrogatory No. 10, however, does not have a temporal
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`component, and it would be nonsensical to read that limitation into it. The interrogatories is
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`clearly stated in the present Opposer’s suggestion that Interrogatory No. 10 does is merely a
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`convenient way for it to dismiss its obligation to provide this relevant information. Even if
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`Opposer is of the genuine belief that Interrogatory No. 10 is requesting that Opposer state each
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`retail price for each of its relevant goods from January 1, 2006 to the present, a reasonable
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`compromise would have been for Opposer to provide its current retail prices for its relevant
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`goods or provide documents – e.g., price lists of suggested retailer prices – reflecting such prices.
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`Instead, Opposer simply does not want to provide this relevant information for reasons unknown
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`to Applicant.
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`Applicant’s suggestion that Opposer provide it with a range of retail prices for its
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`products does not constitute, as Opposer argues, a “new and untimely interrogatory.” (Opp., p.
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`4, n. 3.) This is, instead, a compromise proposed by Applicant in good faith in order to come to
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`an amicable resolution of this discovery impasse. Applicant’s proposed compromise is
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`tantamount to parties agreeing that, in lieu of producing all documents to a document request, the
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`discovery respondent will produce representative samples of documents to the request. In short,
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`Applicant is merely attempting to work towards amicably resolving the discovery impasse, not
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`propounding new or untimely discovery requests.
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`III. REQUESTS FOR PRODUCTION (“RFP”) NOS. 1-3, 6-11, 15-17, 39, 41, 45, AND 48
`– AGREEMENT TO PRODUCE
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`In its opposition brief, Opposer argues that simply because its boilerplate responses to
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`these RFPs contain the words “will produce,” it has satisfied its obligations under Fed.R.Civ.P.
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`34(b)(2)(B).1 This would be true if Opposer actually stated that it “will produce” the specific
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`documents requested by Applicant in each of these RFPs. It has not done this. Instead, each of
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`Opposer’s responses states the exact same thing, namely, that:
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`It will produce representative samples of labels, hang tags, advertisements,
`promotional materials, web pages and other materials reflecting its use of the [tree
`mark] in the United States on and in conjunction with the types of goods listed in
`response to Interrogatory No. 1, which goods are offered and sold to members of
`the general public in this country through numerous third-party retailers,
`[Opposer’s] own retail stores, and the websites of [Opposer] and its retailer
`customers.
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`As noted by Applicant in its motion, each of these RFPs seeks different documents, and
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`Opposer’s boilerplate responses are, at best, non-responsive and, at worst, evasive. Accordingly,
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`Opposer’s contention in its opposition brief that it “crafted its responses to [Applicant’s] requests
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`production” (Opp., p. 7) is belied by its actual responses.
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`IV. RFP NO. 18 – CO-BRANDING AGREEMENTS
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`Opposer’s agreements related to its pleaded marks are presumptively discoverable under
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`TBMP § 414(10): “Information concerning litigation and controversies including settlement and
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`other contractual agreements between a responding party and third parties based on the
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`responding party’s involved mark is discoverable.” (Emphasis added.) Opposer’s interpretation
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`of TBMP § 414(10) is incorrect. Opposer argues that this “provision permits some discovery of
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`only ‘[i]nformation concerning litigation and controversies.’” (Opp., p. 10, n. 4.) In other
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`Applicant’s problem with Opposer’s responses is not that Opposer used the term “will
`produce” instead of “will be permitted,” the language used in Fed.R.Civ.P. 34(b)(2)(B). Instead,
`it is Opposer’s failure to agree to produce documents “as requested.” Fed.R.Civ.P. 34(b)(2)(B).
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`words, Opposer argues that the phrase “other contractual agreements” is limited by the previous
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`phrase “[i]nformation concerning litigation and controversies.” Opposer’s argument is flatly
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`rejected by the relevant case law as reflected in the TBMP’s footnotes to TBMP § 414(10), i.e.;
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`Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675
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`(TTAB 1988) (licensing agreements and arrangements between opposer and third parties and
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`amount of sales thereto are relevant); Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167,
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`172 (TTAB 1975) (contacts with third parties, such as through litigation or agreements, based on
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`pleaded mark for involved goods, are relevant.)
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`Instead of producing its agreements, Opposer asks Applicant to take it at its word that the
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`agreements do not contain information relevant to this proceeding. It is well established,
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`however, that “information concerning communications or controversies between a party to a
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`proceeding before the Board and third parties based upon the party's involved mark may be
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`relevant for such purposes as to show admissions against interest, limitations on the party's rights
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`in such mark, a course of conduct amounting to what could be considered an abandonment of
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`rights in the mark, that the mark has been carefully policed and protected, etc.” American
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`Society of Oral Surgeons v. American College of Oral and Maxillofacial Surgeons, 201 U.S.P.Q.
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`531, 533 (TTAB 1979). Pursuant to TBMP § 414(10), Applicant is entitled to these agreements
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`to determine the implications of each agreement on Opposer’s alleged rights in its tree mark.
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`V.
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`INTERROGATORY NO. 27 AND RFP NO. 49 – TEMPORAL LIMITATION
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`In support of its unilateral imposition of a temporal limitation on these discovery
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`requests, Opposer cites to a personal injury case, Rowland v. Paris Las Vegas, 2015 WL
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`4742502 (S.D. Cal. Aug. 11, 2015). In that case, the plaintiff, who slipped on defendant’s floor,
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`served defendant with an interrogatory requesting it “[i]dentify each person who complained,
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`reported, or otherwise informed you that the tile floor in the hotel rooms at Paris Las Vegas
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`Hotel & Casino was slippery, at any time from day one through present.” Id. at *2. The court
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`ruled that the interrogatory sought relevant information, but was overbroad as to time, and
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`therefore limited its temporal scope to the last five years. Id. at *3.
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`Here, unlike Rowland, Applicant seeks Opposer’s disclosure and production of all
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`settlement agreements Opposer has entered into relating to its tree mark or any mark that depicts,
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`in whole or in part, a tree. Again, Opposer wants Applicant to take it at its word that any pre-
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`2006 settlement agreements it entered into “have only de minimis, if any, probative value in the
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`Board’s determination of the strength of the Timberland Tree Mark today.” (Opp., p. 6.)
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`(emphasis in original.) Opposer’s representation as to the relevance, or lack thereof, of its
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`settlement agreements is insufficient. Applicant is entitled to review the agreements to
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`determine if they continue to impact the manner in which Opposer is allowed to use its mark,
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`narrow the channels of trade in which it is allowed to operate, contain any admissions against
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`Opposer’s interest, allow for coexistence with other tree marks, or limits its rights in its tree
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`mark, among other things.
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`VI. RFP NOS. 50-52 – “TO THE EXTENT DOCUMENTS EXIST” RESPONSE
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`In its opposition brief, Opposer argues that it is not “obligated to have completed its
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`search for the requested documents prior to serving its written responses.” (Opp., p. 10.)
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`Actually, this is precisely what the TBMP requires: “A party served with a request for discovery
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`has a duty to thoroughly search its records for all information properly sought in the request, and
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`to provide such information to the requesting party within the time allowed for responding to the
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`request. With regard to document production requests, a proper written response to each request
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`requires the responding party to state that there are responsive documents and that either they
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`will be produced or will be withheld on a claim of privilege; to state an objection with
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`appropriate reasons; or to state that no responsive documents exist.” TBMP § 408.02.
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`(Emphasis added.) Opposer has not cited any authority otherwise. Although Opposer may
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`contend that, as a matter of convention, parties do not complete their search for responsive
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`documents prior to serving written responses, that, of course, does not excuse Opposer from
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`complying with TBMP § 408.02. Applicant is entitled to RFP responses that comply with
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`TBMP § 408.02.
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`VII. RFA NOS. 35, 36, 39, 40, 46, 47, 51, 52, 56, 57, 61, 62, 66, 67, 71, 72, 76, 77, 81, 82,
`86, 87, 91, 92, 96, 97, 101, 102, 106, 107, 111, 112, 116, 117, 121, 122, 126, 127, 131,
`132, 136, 137, 141, 142, 146, 147, 151, 152, 156, 157, 161, 162, 166, 167, 171, 172, 176,
`177, 181, 182, 186, 187, 191, 192, 196, 197, 201, 202, 206, 207, 211, 212, 216, 217, 221,
`222, 226, 227, 231, 232, 236, 237, 241, 242, 246, 247, 251, 252, 256, 257, 261, 262, 266,
`267, 271, AND 272
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`Again, Opposer’s attempt to absolve itself from its discovery obligations based on its
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`claim that Applicant’s discovery requests are prolix ignores that it is Opposer who opposed ten
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`of Applicant’s applications and asserted nine of its registrations. Far from supporting Opposer,
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`the cases relied on by Opposer are in such contrast to Applicant’s discovery efforts as to validate
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`them, especially given the number of pleaded applications and registrations at issue in this
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`consolidated proceeding affecting ten applications. See Domond v. 37.37, Inc., 113 U.S.P.Q.2d
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`1264, 1265 (TTAB 2015) (“On the first day of discovery, Petitioner served upon Respondent a
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`set of 707 requests for admission, 247 document requests, and 26 enumerated interrogatories,
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`some with subparts. The following day, Petitioner served upon Respondent a second set of
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`requests for admission, comprising 165 additional requests”); C.H. Stuart Inc. v. S.S. Sarna, Inc.,
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`212 U.S.P.Q. 386, 386-87 (TTAB 1980) (at issue were 165 interrogatories, not including
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`subparts.)
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`In any event, Opposer’s response does not address its obligation under Fed.R.Civ.P.
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`36(a)(4), which requires a non-admitting party to either “specifically deny [the RFA] or state in
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`detail why [it] cannot truthfully admit or deny [the RFA].” Further, “[t]he answering party may
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`assert lack of knowledge or information as a reason for failing to admit or deny only if the party
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`states that it has made reasonable inquiry and that the information it knows or can readily obtain
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`is insufficient to enable it to admit or deny.” Id. (emphasis added.) Nothing in Fed.R.Civ.P.
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`36(a)(4) allows a respondent to an RFA to simply state that the RFA requires it to “conduct
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`research,” yet that is what Opposer has done.
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`Furthermore, Opposer has not cited any authority as to what type of research constitutes
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`an impermissible “investigation,” as that term is used in TBMP § 414(19). As Applicant argued
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`in its motion papers, Opposer’s search of the PTO records, much less its review of its files and
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`determination of its institutional knowledge, all fall short of an “investigation.” Opposer need
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`only look at the identified registration or TESS record of each, and answer the RFAs Opposer
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`chooses not to.
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`Finally, Opposer cites Moss v. Blue Cross & Blue Shield of Kansas, Inc., 241 F.R.D. 683,
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`692-93 (D. Kan. 2007) and argues that therein, the court held “that a discovery request requiring
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`the responding party to search and characterize numerous records was unduly burdensome, and,
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`as a result, the party need not respond.” (Opp., p. 13.) Nothing in the cited pages from Moss
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`stands for this proposition. Moreover, Moss nowhere addresses RFAs. Also, in Moss, the court
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`ordered defendant to provide the following information requested by plaintiff in its interrogatory:
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`for “claims of violations of the [Family and Medical Leave Act],” (a) the name of the attorney
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`who represented the individual making the claim, (b) the resolution of the claim, (c) the
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`supervisors, managers, or upper level employees involved with handling or investigating the
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`claim, and (d) the case caption and number, court, and ultimate outcome. Id. at 691-92. Thus,
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`on balance, Moss supports Applicant’s position, not Opposer’s.
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`Respectfully submitted,
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`SHEPPARD MULLIN RICHTER & HAMPTON, LLP
`Jill M. Pietrini
`Paul A. Bost
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`Dated: December 1, 2015
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`By: /Paul A. Bost/
`Attorneys for Applicant
`Summit Entertainment, LLC
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`CERTIFICATE OF ELECTRONIC TRANSMISSION
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`I hereby certify that APPLICANT SUMMIT ENTERTAINMENT, LLC’S REPLY
`BRIEF IN SUPPORT OF ITS MOTIONS TO COMPEL OPPOSER TBL LICENSING,
`LLC’S SUPPLEMENTATION OF CERTAIN OF ITS DISCOVERY RESPONSES AND
`TO TEST THE SUFFICIENCY OF CERTAIN OF ITS RESPONSES TO REQUESTS
`FOR ADMISSION is being transmitted electronically to Commissioner of Trademarks, Attn:
`Trademark Trial and Appeal Board through ESTTA pursuant to 37 C.F.R. §2.195(a), on this 1st
`day of December, 2015.
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`/LaTrina A. Martin/
`LaTrina A. Martin
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`CERTIFICATE OF SERVICE
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`I hereby certify that APPLICANT SUMMIT ENTERTAINMENT, LLC’S REPLY
`BRIEF IN SUPPORT OF ITS MOTION TO COMPEL OPPOSER TBL LICENSING,
`LLC’S SUPPLEMENTATION OF CERTAIN OF ITS RESPONSES TO APPLICANT’S
`FIRST SETS OF INTERROGATORIES AND REQUESTS FOR PRODUCTION OF
`DOCUMENTS AND THINGS is being deposited with the United States Postal Service as first
`class mail in an envelope addressed to:
`
`Larry C. Jones
`ALSTON & BIRD, LLP
`Bank of America Plaza
`101 South Tryon Street, Suite 4000
`Charlotte, NC 28280-4000,
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`on this 1st day of December, 2015.
`
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`SMRH:473846992.1
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`/LaTrina A. Martin/
`LaTrina A. Martin
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