Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA910845
`
`Filing date:
`
`07/20/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91220846
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Lawson's Finest Liquids, LLC
`
`DANIEL CHRISTOPHERSON
`LEHRMAN BEVERAGE LAW PLLC
`2911 HUNTER MILL RD, STE 303
`OAKTON, VA 22124-1719
`UNITED STATES
`Email: dan.christopherson@bevlaw.com, rclehrman@bevlaw.com, trade-
`marks@bevlaw.com
`
`Opposition/Response to Motion
`
`Daniel Christopherson
`
`dan.christopherson@bevlaw.com, trademarks@bevlaw.com
`
`/Daniel Christopherson/
`
`07/20/2018
`
`Opposition to Motion to Compel.pdf(164246 bytes )
`Exhibit A.pdf(272412 bytes )
`Exhibit B.pdf(1460863 bytes )
`Exhibit C.pdf(305707 bytes )
`Exhibit D.pdf(5446556 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Opposition No. 91220846
`Application Serial No. 86/299,655
`
`
`Mark: CHINOOKER’D IPA
`Filing Date: 6/4/2014
`
`
`
`
`
`W. CLAY MACKEY,
`
`Opposer,
`v.
`LAWSON’S FINEST LIQUIDS, LLC a
`Vermont limited liability company,
`
`
`
`Applicant,
`
`Counterclaimant
`v.
`W. CLAY MACKEY,
`
`Counterdefendant.
`
`
`APPLICANT’S OPPOSITION TO OPPOSER’S MOTION TO COMPEL RETURN OR
`DESTRUCTION OF PRIVILEGED DOCUMENTS
`
`Applicant Lawson’s Finest Liquids, LLC (“Lawson”), hereby responds to Opposer W.
`
`Clay Mackey’s (“Mackey”) Motion to Compel Return or Destruction of Privileged Documents
`
`(the “Current Motion”). As discussed below, the Current Motion should be denied because: (1)
`
`the request is wholly unreasonable given the substantial amount of time that has passed since the
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`documents in question were originally produced, the lack of a showing that the disclosure was in
`
`fact inadvertent, and the nature of the documents provided; (2) the documents requested are not
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`privileged; and (3) if granted, the Current Motion would have a profound and significant impact
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`on Lawson’s ability to build its case.
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`
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`BACKGROUND
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`
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`Since Mackey filed his Notice of Opposition on February 27, 2015, this proceeding has
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`been pending for almost three and a half years. As one of the grounds for Mackey’s opposition,
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`Mackey relied upon United States Trademark Registration No. 1,790,596, for the mark
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`CHINOOK in international class 32 for beer. In the counterclaim first filed August 4, 2015, and
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`amended on December 23, 2015, Lawson alleged that Mackey’s opposition was invalid for
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`numerous reasons, including non-use and abandonment of the mark as to beer (see Lawson’s
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`Counterclaim III). Thereafter, Lawson filed its first set of discovery requests on October 7, 2016,
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`with a primary emphasis of the requests relating to Mackey’s alleged use of the mark CHINOOK
`in connection with beer. ​See ​Exhibit A. Mackey provided its responses to Lawson’s first set of
`discovery requests on November 14, 2016. ​See ​Exhibit B.
`Feeling that Mackey’s objections were improper and the responses were otherwise
`
`inadequate, Lawson filed a Motion to Compel Mackey’s substantive discovery responses on
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`December 6, 2016. On April 3, 2017, the Board ruled on Lawson’s Motion to Compel, finding
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`that Mackey’s boilerplate objections to Lawson’s requests were improper, and that several of
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`Mackey’s responses were otherwise inadequate. In so finding, the Board held, “[i]n addition, a
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`party asserting a claim of privilege must describe the nature of the documents and information
`withheld to enable the other party to assess the claim of privilege, and ​Opposer/ Counterclaim-
`Defendant has not done that here​.” Fed. R. Civ. P. 26(b)(5); ​Amazon Techs., Inc. v. Wax​, 93
`USPQ2d 1702, 1706 n.6 (TTAB 2009) (emphasis added). On that basis, the Board ordered
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`Mackey to disclose any documents withheld on the basis of its boilerplate objections to Lawson
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`within 30 days of the mailing date of the order, ​May 3, 2017​. The Board also made the following
`observation:
`
`1. A licensor is required to exercise control over the use of his
`mark. Accordingly, it would be reasonable to expect that Opposer/
`Counterclaim-Defendant, as a licensor, would have some
`information and documents responsive to Applicant/Counterclaim-
`Plaintiff’s discovery requests. Opposer/Counterclaim-Defendant is
`reminded of his duty to make a good faith effort to satisfy
`Applicant/Counterclaim-Plaintiff’s discovery needs…. Opposer/
`Counterclaim-Defendant commenced this opposition proceeding,
`and as such, he must be prepared to engage in discovery and invest
`the time and resources necessary to litigate the case.
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`While this ruling related to Mackey’s responses to Lawson’s first set of requests, Lawson
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`submits that Mackey’s subsequent discovery responses, and lack of information or evidence
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`provided to date relating to Mackey’s alleged use through a third party licensee of its mark in
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`connection with beer, should be interpreted in light of the Board’s order. On April 20, 2017,
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`Mackey served its supplemental responses on Lawson, including exactly 18 pages of documents.
`On April 3, 2017, Lawson served Mackey with a second set of discovery requests. ​See
`Exhibit C. Mackey served its response on Lawson on May 10, 2017, including 517 pages of
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`documents. On June 1, 2017, Mackey served Lawson with its amended objections and response
`to Lawson’s Second Set of Discovery Requests. ​See ​Exhibit D. As part of both of Mackey’s
`responses to Lawson’s first and second sets of discovery requests, Mackey himself signed a
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`declaration stating:
`
`W. Clay Mackey states that he is the Opposer herein and has read
`the foregoing OPPOSER W. CLAY MACKEY’S AMENDED
`OBJECTIONS AND RESPONSES TO APPLICANT LAWSON’S
`FINEST LIQUIDS, LLC’S SECOND SET OF DISCOVERY
`REQUESTS and knows the contents thereof and further states
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`under penalty of perjury that he believes the same to be true and
`correct.
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`Lawson notes that the Current Motion wholly relates to documents that were provided by
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`Mackey in response to Lawson’s second set of discovery requests, and Mackey signed a
`declaration stating he was aware of the contents of the responses. ​See ​Exhibits A and D.
` Mackey now requests, more than a year after the documents were initially disclosed to
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`Lawson, and well after the time Lawson could have minimized the impact of such a claw-back
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`by pursuing additional discovery, that the Board require Lawson to turn over a substantial
`percentage of the documents that it intends to rely on as it builds its case. Mackey’s 11​th​ hour
`attempt at pulling back 168 pages (more than 31% of the documents disclosed by Mackey in
`
`1
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`response to Lawson’s first 2 sets of discovery requests), cannot be tolerated at least due to the
`
`substantial prejudicial effect it will have on Lawson to prepare its case.
`
`Mackey appointed the law firm of Stokes Lawrence, P.S. (“Stokes”) as his new counsel
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`on March 1, 2018. Since that time, Lawson has been cooperative with Stokes and generously
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`consented to a 90-day extension of time to allow Stokes to get up to speed on the case. Stokes
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`reached out to Lawson on May 15, 2018, regarding a claim that Mackey’s previous counsel had
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`previously disclosed privileged documents to Lawson. The following day, Lawson’s counsel
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`responded to Stokes, questioning the timing of the request and substantial quantity of the
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`documents that were allegedly inadvertently disclosed. Stokes replied to Lawson’s counsel a
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`week later on May 22, 2018. Thereafter, in between preparing its final set of discovery requests
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`1 ​Only 22 days currently remain until the close of Lawson’s discovery period, which is currently suspended pending
`the Board’s decision on Lawson’s Motion for Partial Summary Judgment. Pursuant to TBMP § 403.02,
`Interrogatories, requests for production, and requests for admission must be served early enough in the discovery
`period, as originally set or as may have been reset by the Board, so that responses, including production of
`inspection of documents, will be due no later than the close of discovery.
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`and preparing its summary judgment motion, Lawson did indeed sequester the documents in
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`question, separating out the disputed documents from the others produced by Stokes. Lawson has
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`not yet destroyed the documents, since it believes Stokes’s request is meritless and unreasonable,
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`and looks forward to the Board’s ruling on this issue.
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`Now Mackey has groundlessly accused Lawson of ignoring Stokes’s request to return or
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`destroy the privileged documents, apparently based on the fact that Lawson served its final set of
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`discovery requests upon Mackey on May 15, 2018. Lawson notes that the service of the requests
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`was wholly unrelated to Stokes’s communications relating to the ongoing discussion regarding
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`Mackey’s claw back attempt. The period during which Lawson was required to conclude its
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`discovery was set to expire on June 15, 2018, and, the date Lawson served its discovery requests
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`was the final day it as permitted to do so. Further, given Mackey’s unwillingness during the
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`course of this proceeding to produce relevant documents or make admissions that such
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`documents do not exist, even after the Board mandated Mackey’s cooperation, Lawson has had
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`no choice but to continue to try to pin down Mackey as to the increasingly clear fact that Mackey
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`simply lacks any information or documentation to substantiate its allegedly continuous,
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`substantially exclusive use of its mark in connection with beer, and alleged control over the
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`production of such goods.
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`Without a better option, based largely on the dearth of information provided by Mackey
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`to date, Lawson file its Motion for Partial Summary Judgment on May 24, 2018, seeking the
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`cancellation of Mackey’s beer registration. This filing was timed so as to preserve some time
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`after the Board’s ruling to permit Lawson an opportunity to depose Mackey. As the success of
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`Lawson’s motion would effectively cut the scope of such a deposition in half.
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`Mackey appears to now be attempting to shift all blame for delays and allegedly
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`inadvertent disclosures to Mackey’s prior counsel. First and foremost, Mackey’s former counsel
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`was not a new attorney, but was instead a seasoned lawyer with 48 years of experience. He was
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`even featured as a panelist in a seminar entitled, “Asserting and Responding to Patent
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`Infringement Claims: Legends of Litigation,” put on the by the Western Trial Lawyers
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`Association. Accordingly, it should not be readily assumed that Mackey’s former counsel made
`2
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`the substantial errors alleged by Mackey in the Current Motion.
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`Mackey should not be held blameless for the actions of Mackey’s prior counsel, be
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`allowed to scapegoat Mackey’s prior counsel as justification for an extraordinarily late and
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`unreasonable request, or be permitted to swoop in at the last minute and claw back such a
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`substantial percentage of the documents that were produced by Mackey’s prior counsel. To allow
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`such behavior would be tantamount to allowing a party to undo all tactical mishaps by its counsel
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`at any point during a trial by switching attorneys. Also, Mackey’s new attorneys should not be
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`permitted to now conclude that documents were inadvertently turned over, just because the
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`contents of some of the documents are unfavorable to Mackey. In reality, both Mackey’s prior
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`counsel and Mackey himself signed off on the discovery responses, including a statement that
`Mackey actually knew the contents of the responses​ when they were provided.
`Nonetheless, in light of Mackey’s decision to file the Current Motion and cut off
`inter-partes​ discussions on the issue, and since the Board determined that the Current Motion is
`germane to Lawson’s Motion for Partial Summary Judgment, Lawson now exercises its right to
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`challenge Mackey’s attempt to claw-back the documents in question.
`
`2 ​http://lowegrahamjones.com/attorneys/h._al_richardson#​, last accessed July 20, 2018.
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`For the reasons adduced below, Lawson requests that the Board deny the Current Motion.
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`STANDARD
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`Attorney client privilege does not afford a blanket protection to all attorney-client
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`communications. The attorney-client privilege only protects the essence of the communications
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`actually had by the client and lawyer and only extends to information given for the purpose of
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`obtaining legal representation. Generally, the disclosure of confidential communications or
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`attorney work product to a third party, such as an adversary in litigation, constitutes a waiver of
`privilege as to those items. ​Genentech Inc. v. U.S. International Trade Commission​, 122 F.3d
`1409, 43 USPQ2d 1722, 1728 (Fed. Cir. 1997).
`
`The Board’s Standard Protective Order, effective June 24, 2016, is operative in the
`
`present proceeding. Pursuant to Section 13 of the Standard Protective Order, “If a disclosing
`party through ​inadvertence​ produces or provides discovery material that it believes is subject to a
`claim of ​attorney-client privilege​, work product immunity, or any other privilege, the disclosing
`party may give written notice to the receiving party that the discovery material is deemed
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`privileged and that return of the material is requested.” Trademark Trial and Appeal Board,
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`Standard Protective Order, at § 13 (emphasis added). Lawson notes that this provision is not
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`absolute, but is instead subject to the limitations of § 14, which provides that a party can
`
`challenge the other party’s designation of information as protected, subject to a requirement that
`the parties negotiate in good faith regarding the designation by the disclosing party. ​Id. ​at § 14.
`The determination of whether Mackey should be permitted to make a late claim of
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`privilege to previously produced documents is guided by F.R.E. § 502(b), which relates to
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`inadvertent disclosure: “When made in a federal proceeding … the disclosure does not operate as
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`a waiver in a federal … proceeding if: (1) the disclosure is inadvertent; (2) the holder of the
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`privilege or protection took reasonable steps to prevent disclosure; and (3) the holder promptly
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`took reasonable steps to rectify the error.... F.R.E. § 502(b). Lawson submits that a proper
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`application of the requirements of F.R.E. § 502(b) clearly demonstrates that any privilege that
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`may have existed within the disputed documents has since been waived through Mackey’s
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`intentional disclosure of such documents, Mackey’s failure to take reasonable steps to avoid the
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`disclosure of such documents, and Mackey’s inaction in attempting to reclaim such documents
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`for more than a year. All of these factors are particularly dispositive in light of Mackey’s history
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`of refusing to substantively respond to Lawson’s discovery requests.
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`Documents and discussions by Mackey and Mackey’s previous counsel do not fall under
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`the work product doctrine, unless the documents themselves relate to a litigation, or similar
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`adversarial matter. Very few of the documents referenced in the Current Motion relate to the
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`current proceeding, and no documents relate to another litigation. Further, trademark prosecution
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`lacks the adversarial nature to be a “litigation,” and work-product claims therefore cannot be
`sustained for materials generated for trademark solicitation. ​See Hercules, Inc. v. Exxon Corp.​,
`434 F. Supp. 136 (D. Del. 1977). Accordingly, most of the documents are clearly not work
`
`product.
`
`
`
`
`
`ARGUMENT
`
` As discussed below, Lawson submits that the Current Motion should be denied because:
`
`(1) there is insufficient evidence to show that Mackey’s disclosure was inadvertent, Mackey did
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`not take reasonable steps to prevent the disclosure, and Mackey did not take reasonable steps to
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`rectify the alleged inadvertent disclosure; (2) the documents requested are not privileged; and (3)
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`if granted, the Current Motion would have a profound and significant impact on Lawson’s ability
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`to build its case, given Lawson’s period for making discovery requests has ended..
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`(1) Mackey’s disclosure of the documents in question was not inadvertent; Mackey did not
`take reasonable steps to prevent the disclosure of such documents; and Mackey has
`gravely failed to take reasonable steps to rectify the disclosure of the documents
`
`
`
`
`
`A. The disclosure in question was not inadvertent
`
`Mackey alleges that documents provided in response to Lawson’s second set of discovery
`
`requests were inadvertently and mistakenly disclosed to Lawson. Lawson notes that all of the
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`documents provided by Mackey were stamped with Bates numbers and a “confidential”
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`designation. Care was obviously taken to doubly stamp each document before its disclosure.
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`Lawson submits herewith as Exhibit E the allegedly privileged documents through the Board’s
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`protocol for the submission of confidential documents, to ensure that the Board reviews the same
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`version of the documents as was provided to Lawson as they were provided to Lawson, stamped
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`both with bates numbers and for confidentiality. Given that such documents were considered by
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`Mackey for confidentiality purposes, Lawson submits that it cannot, and should not, be presumed
`
`that consideration was not also given to attorney-client privilege. Lawson again notes that
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`Mackey’s former counsel was a seasoned attorney that undoubtedly knew which types of
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`documents were protected by attorney-client privilege, and which were not. Any failure by
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`Mackey and Mackey’s former counsel to undertake such an analysis for 31% of the documents
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`being provided could not be considered a reasonable attempt by Mackey to prevent inadvertent
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`disclosure. This is especially true in light of the fact that both Mackey himself and Mackey’s
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`former counsel signed a declaration stating they were aware of the contents of the documents
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`being provided.
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` Further, in Mackey’s supplemental responses to Lawson’s first set of discovery requests,
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`Mackey objected to the requests on the basis that, “Opposer objects to these requests on the
`
`grounds and to the extent that they would require the disclosure of information and documents
`confidential to the Opposer and not subject to the protective order, if any, herein.” ​See ​Exhibit D,
`p. 2 ¶ 4. Accordingly, it is only reasonable to conclude that the disclosure of the documents was
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`intentional.
`
`The actual evidence that is available regarding the intentionality of the disclosure in
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`question weighs heavily against a finding of inadvertence, especially when contrasted with
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`Mackey’s recently concocted and wholly unsubstantiated claim that the disclosure must have
`
`been inadvertent. Mackey’s current counsel is now hoping to prevail on its own mere assertions
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`that the disclosure “must” have been inadvertent. Again, this claim is being made despite the fact
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`that both Mackey and Mackey’s former counsel declared at the time of the disclosure that they
`
`were aware of the contents of the documents being disclosed. Even if Mackey’s current counsel
`
`wishes that the former counsel would have handled things differently, it is improper for them to
`now state as a matter of fact that the documents ​must​ have been inadvertently disclosed. Instead,
`a closer review of the documents demonstrates that it is much more likely that the documents
`were in fact intentionally disclosed​ by Mackey’s previous attorney. Again, the Current Motion
`relates to ​more than 31% of the documents​ turned over by Mackey in response to Lawson’s first
`2 sets of discovery requests. If Mackey were now suggesting that a few pages were inadvertently
`
`included, that would be one thing. Here, the sheer volume of the documents they are seeking to
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`claw back, plus the fact that they twice considered the documents for confidentiality and
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`bates-stamping purposes, indicates the disclosure was not inadvertent. Mackey was well-aware
`
`of what it disclosed.
`
`B. If the disclosure was inadvertent, Mackey egregiously failed to
`exercise reasonable care to avoid the inadvertent disclosure
`
`If Mackey inadvertently disclosed the documents in question, such disclosure was the
`
`direct result of a lack of reasonable care on the part of both Mackey and Mackey’s former
`
`counsel. In order to determine whether Mackey exercised reasonable care, one considers the
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`“reasonableness” of the precautions taken to prevent inadvertent disclosure, the number of
`inadvertent disclosures, and the extent of the disclosures. ​See, e.g.​, ​Victor Stanley, Inc. v.
`Creative Pipe, Inc.​, 250 F.R.D. 251, 259 (D. Md. 2008).
`Reasonableness in this context does not mean that preventative measures have to be
`
`foolproof. “The reasonableness of the precautions adopted by the producing party must be
`
`viewed principally from the standpoint of customary practice in the legal profession at the time
`and in the location of the production.” ​Johnson v. Ford Motor Co.​, No. 3:13-cv-06529, 2015
`U.S. Dist. LEXIS 49975, at *41–42 (S.D. W. Va. Apr. 14, 2015). Although the Rule 502(b) test
`
`does not require perfection, carelessness can be costly and may result in waiver of privilege
`
`protections. In a large ESI case, examples of kinds of carelessness that have resulted in waiver
`
`are failure to test the reliability of keyword searches with appropriate sampling and inadvertently
`producing a large number of privileged documents. ​See ​Mt. Hawley Ins. Co. v. Felman Prod.,
`Inc.​, 271 F.R.D. 125 (S.D. W. Va. 2010).
`While it is unclear what precautions were taken to specifically identify and avoid the
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`inadvertent disclosure of privileged documents, Mackey clearly took precautions to identify and
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`avoid the inadvertent disclosure of confidential documents that were not stamped as such. If
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`Mackey’s counsel only had precautions in place to protect confidential documents, and did not
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`have similar precautions in place to protect privileged documents, such a failure could not be
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`considered reasonable, and would be wholly against the typical practices of other law firms. In
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`light of the experience level of Mackey’s former counsel, one would not expect that is what
`
`occurred here.
`
`Regarding the number of inadvertent disclosures, Lawson again notes that the alleged
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`inadvertent disclosure spans 168 documents and constitutes more than 31% of the documents
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`disclosed by Mackey. If the disclosure of these documents was inadvertent, Mackey’s former
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`counsel would have had to have gone through each of the 168 pages of the documents, deemed
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`them relevant to one or more of Lawson’s requests, recognized that the contents were
`
`confidential, compiled them, bates stamped them, signed them himself, and sent them to Mackey
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`for review and final sign-off as to the contents. During this involved process, Mackey and his
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`attorney would have had to have each overlooked the existence of attorney-client privilege at
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`least 168 times (likely several more, given the appearance that documents were at least reviewed
`
`for relevance and confidentiality).
`
`Regarding the extent of the disclosures, Lawson actually expects that Mackey’s former
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`counsel did do a reasonable job of inspecting the disclosed documents before he intentionally
`
`disclosed them. The nature of the documents disclosed does not constitute privilege (discussed
`
`further below), but instead relates to communications between Mackey’s former counsel and
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`Mackey on matters that cannot be considered privileged communications. For instance,
`
`reminders regarding trademark renewals involve information that is part of the public record, and
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`merely reporting to a client regarding an upcoming renewal deadline does not constitute
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`attorney-client privilege. Similarly, providing a client with instructions about how to generate a
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`photograph to be used as a specimen for submission to the USPTO in order to achieve a
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`registration or renewal registration does not constitute legal advice. There is no application of
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`fact to law inherent or implicit in any of those types of documents, nor do the contents of such
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`communications include confidential information provided by the client to the attorney for the
`
`purpose of obtaining legal advice. The nature of the documents that were disclosed leads one to
`the conclusion that such documents were deemed not protected, and ​intentionally disclosed​ in
`response to Lawson’s requests.
`
`In the alternative, if any of the documents in question are deemed to be privileged, then
`
`Mackey’s failure to undertake the steps necessary to withhold the documents was wholly
`
`unreasonable in light of the multiple attempts Mackey had to do so during the process of
`
`preparing its discovery responses.
`
`C. Mackey has failed to take reasonable steps to rectify the disclosure of the
`documents
`
`
`
`Mackey first served the documents in question upon Lawson over a year ago. Mackey
`
`then waited until only 22 days remained in Lawson’s discovery period to raise this issue of
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`inadvertent disclosure with the Board. Mackey cannot be rewarded, and Lawson should not be
`
`punished, for Mackey’s waiting until the last minute to claim that such a substantial portion of
`
`the documents previously produced are not eligible for use at trial. Mackey provided his written
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`signature declaring that he was aware which documents were disclosed at the time they were
`
`filed. He can not be permitted to now claim otherwise.
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`
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`(2) The documents in question are not privileged.
`
`
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`Lawson is in a precarious situation of being asked to quarantine the allegedly privileged
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`documents while the Board considers whether or not to sustain the Current Motion, while also
`
`needing to argue against the Current Motion. Accordingly, if the Board is not persuaded that the
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`issue of whether the documents in question are indeed privileged, Lawson is confident that the
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`Board is capable of determining whether the underlying documents are, in fact, privileged,
`
`without Lawson’s input regarding any specific document. Generally, however, Lawson submits
`
`that documents relating to trademark prosecution and maintenance are not the types of
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`documents that are the subject of attorney-client privilege. Similarly, as noted above, trademark
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`prosecution lacks the adversarial nature to be a “litigation,” and work-product claims therefore
`cannot be sustained for materials generated for trademark solicitation. ​See Hercules, Inc. v.
`Exxon Corp.​, 434 F. Supp. 136 (D. Del. 1977). Similarly, Lawson submits that an attorney’s
`instructions to a client regarding the steps required to prepare a specimen for submission to the
`
`USPTO for finalizing a registration or renewal does not constitute a protected communication.
`
`Nonetheless, Lawson defers to the Board’s judgment on this issue.
`
`(3) If granted, Mackey’s claw-back attempt would significantly prejudice Lawson’s case
`
`
`
`Lawson reiterates that the Current Motion was filed at the Board at a time when Lawson
`
`could not submit additional discovery requests. Lawson has been diligently seeking discovery in
`
`this proceeding, while also attempting to maintain fairness by agreeing to a long 90-day
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`extension, so as to provide Mackey’s new attorneys an opportunity to get up to speed in this
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`matter. Lawson is not, however, agreeable to Mackey’s attempt to pull back almost 1/3 of the
`
`documents that Lawson has spent a great deal of resources seeking to obtain from Mackey. There
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`is no justification as to why Mackey should be permitted to make such a significant request this
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`late in the process. Mackey’s opportunity for reclaiming such documents passed a long time ago.
`
`CONCLUSION
`
`The evidence relating to the Current Motion indicates that Mackey’s disclosure of the
`
`documents in question was not inadvertent. Mackey’s new attorneys now seek to claw back such
`
`documents, nearly a year after they were first disclosed, and in a way that would greatly
`
`prejudice Lawson’s ability to prepare its case and substantiate its pending causes of action. The
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`documents sought by Mackey are either not privileged, or any privilege that existed has since
`
`been waived through their disclosure to Lawson over a year ago. Given that the discovery period
`
`of the current proceeding has nearly closed entirely, and has effectively closed regarding
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`Lawson’s ability to submit discovery requests, the Current Motion should be denied.
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`W. CLAY MACKEY,
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` Opposer,
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`v.
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`LAWSON’S FINEST LIQUIDS, LLC,
`a Vermont limited liability company,
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` Applicant.
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`Opposition No.: 91220846
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`APPLICANT’S FIRST SET OF DISCOVERY REQUESTS
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`Applicant Lawson’s Finest Liquids, LLC (“Applicant”), through its counsel and pursuant
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`to the rules of the Trademark Trial and Appeal Board (“TTAB”) and Federal Rules of Civil
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`Procedure (“FRCP”) Rules 33 and 34, propounds the following Requests for Admission
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`(collectively, “RFAs,” or individually, “RFA”), Interrogatories (collectively, “ROGs,” or
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`individually, “ROG”), and Requests for Production of Documents (collectively, “RFPs,” or
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`individually, “RFP”) (collectively, all RFAs, ROGs, and RFPs are referred to as the “Discovery
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`Requests”), to be answered fully within thirty (30) days from their service. Copies of all
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`documents may be sent electronically to dan.christopherson@bevlaw.com, or by paper or
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`electronic disc to the undersigned counsel at 2911 Hunter Mill Road, Suite #303, Oakton,
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`Virginia 22124. Please amend, supplement, and/or correct any answer as may be necessary or as
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`required within the time frame provided by the FRCP and rules of the TTAB. In the event that
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`Opposer W. Clay Mackey (“Opposer”) is not in possession of any documents in response to a
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`specific Discovery Request, please so state.
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`Page 1 of 17
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`Definitions
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`As used in these Discovery Requests, the following terms have the following meanings:
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`ATF: “ATF” means the Bureau of Alcohol, Tobacco, and Firearms of the United States
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`Department of Justice.
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`Beer Product: “Beer Product” means a unique brand of malt beverage produced by a
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`given Producer. For example, “Chinook Copper Ale” produced by Redhook Ale Brewery, Inc.
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`constitutes one “Beer Product,” while “Chinook Copper Ale” produced by Northwest Brewing
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`Company constitutes a second, different, “Beer Product.”
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`Chinook Beer Mark: “Chinook Beer Mark” means the word mark “CHINOOK” as shown
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`in U.S. Trademark Registration No. 1,790,596.
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`Chinook Beer Mark Application: “Chinook Beer Mark Application” means U.S.
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`Trademark Application Serial No. 74/310,636.
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`COLA: “COLA” means Certificate of Label Approval issued by the TTB or ATF.
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`Distribution Agreement: “Distribution Agreement” means agreement between a Producer
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`and a Wholesaler, whereby the Wholesaler agreed to purchase a Beer Product from the Producer
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`and re-sell said Beer Product to a Retailer(s) or another Wholesaler(s) in a given geographic
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`territory.
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`Document: “Document” means any item, including electronic data, which would be a
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`“writing” or “recording” as defined in Rule 1001(1) of the Federal Rules of Evidence or a
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`“document” as defined in Rule 34(a) of the Federal Rules of Civil Procedure, including, without
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`limitation every original (and every copy of any original or copy which differs in any way from
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`any original because of notations thereon or attachments thereto or otherwise) of every writing or
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`recording of every kind of description, whether handwritten, typed, drawn, sketched, printed or
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`recorded by any physical, mechanical, electronic or electrical means.
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`Page 2 of 17
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`Hop: “Hop” means the flower or seed cone of the hop plant Humulus Lupulus, which is
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`used as a flavoring and stability agent in a Beer Product.
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`Identify: “Identify” has the following meanings:
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`1. When referring to a natural living Person, “Identify” means to give, to the extent
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`known, the name, address, and telephone number of the Person.
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`2. When referring to a natural deceased Person, “Identify” means to give, to the extent
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`known, the name, date of birth, place of birth, date of death, and place of death of that
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`Person.
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`3. When referring to a P