Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA754233
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`Filing date:
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`06/23/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`91221613
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`Party
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`Correspondence
`Address
`
`Plaintiff
`CaseWare International Inc.
`
`RALPH A DOWELL
`DOWELL & DOWELL PC
`103 ORONOCO ST, SUITE 220
`ALEXANDRIA, VA 22314
`UNITED STATES
`mail@levygrandinetti.com, dowell@dowellpc.com
`
`Submission
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`Filer's Name
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`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
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`Motion for Discovery Sanctions
`
`Rebecca Stempien Coyle
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`mail@levygrandinetti.com
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`/Rebecca Stempien Coyle/
`
`06/23/2016
`
`Motion Sanctions_062316.pdf(124545 bytes )
`Motion Sanctions_Exhibit 1_emails June 10 to 12.pdf(79048 bytes )
`Motion Sanctions_Exhibit 2.pdf(67942 bytes )
`Motion Sanctions_Exhibit 4_Interrog.pdf(184588 bytes )
`Motion Sanctions_Exhibit 5_RFA.pdf(113134 bytes )
`Motion Sanctions_Exhibit 6_ND Cal Order.pdf(402099 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`))
`
`))
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`CASEWARE INTERNATIONAL INC.,
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`Opposer,
`
`v.
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`NXTBIGTHING, LLC,
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`)
`Applicant.
`__________________________________________)
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`Opposition No. 91/221,613
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`Serial No. 85/955,337
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`Mark: IDEAMATCH
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`))
`
`))
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`OPPOSER’S MOTION FOR SANCTIONS AND FOR
`SUSPENSION PENDING DETERMINATION OF THIS MOTION
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`The Opposer, CaseWare International Inc. (“Opposer” or “CWI”), pursuant to 37 C.F.R.
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`§ 2.120(g) and TBMP § 527 respectfully moves for sanctions against the Applicant,
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`NxtBigThing, LLC (“Applicant”), in the form of a default judgment for the Applicant’s failure to
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`comply with the Board’s Order of May 13, 2016. See Dkt. 23. In the alternative, if the Board
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`deems that a default judgment is not warranted as of yet, CWI moves for sanctions in the form of
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`an order precluding the Applicant from relying at trial upon information that was properly sought
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`but not produced in discovery.
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`CWI requests that the proceeding, other than the briefing schedule for the Parties in
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`relation to CWI’s contemporaneously filed motion for leave to amend,1 be suspended pending
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`disposition of this Motion.
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`1 CWI understands that the filing of the instant motion for sanctions should toll all filings
`that are not germane to the sanctions request. CWI’s motion for leave to amend addresses a new
`cause of action based on the small amount of information that can be gleaned from the
`Applicant’s discovery responses. CWI files its motion for leave to amend contemporaneously
`with the instant motion in case the Board does not enter a default judgment so that the Parties
`and the Board would not need to suffer through another suspension while the motion to amend is
`considered.
`
`

`

`I.
`
`FACTUAL BACKGROUND
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`On April 28, 2016, CWI brought a motion to compel substantive discovery responses
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`from the Applicant. Dkt. 19. This motion was necessary due to the Applicant’s staunch
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`insistence that it did not have an obligation to respond to CWI’s discovery requests. Id., p. 2-4.
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`CWI had explained to the Applicant numerous times prior to bringing its motion to compel that
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`the Applicant’s refusal to respond was based on inapplicable law and in direct contradiction to
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`the Rules governing the Board. Id. The Applicant refused to reconsider its position. Id.
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`While CWI was trying to resolve its discovery dispute with the Applicant, the Applicant
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`filed a motion to “strike” CWI’s initial disclosures. See Dkt. 17; see also Dkt. 19, pp. 2-3. Prior
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`to CWI filing its response the Board issued an order sua sponte, denying the motion to “strike”
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`(the “Order denying Applicant’s Motion to Strike”). Dkt. 18. In its Order denying Applicant’s
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`Motion to Strike, the Board further addressed the possibility that the Applicant “may be seeking
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`to avoid serving responses to discovery requests that Opposer served concurrently with its initial
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`disclosures” and addressed this possibility. Id. Specifically, the Board (1) noted TBMP
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`§ 403.02, (2) quoted from Luster Products, Inc. v. Van Zandt, 104 U.S.P.Q.2d 1877, 1878-79
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`(T.T.A.B. 2012), (3) informed the Applicant that “the parties could have timely served discovery
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`requests on Monday, March 28, 2016,” and (4) held that “[d]ates remain as last reset in the
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`Board’s October 28, 2015 order. Applicant’s discovery responses are due in accordance with
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`Trademark Rule 2.119(c) and 2.120(a)(3).” Id.
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`After the Order denying the Applicant’s Motion to Strike, CWI tried one more time to
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`demonstrate to the Applicant that its objections and refusal to respond to CWI’s discovery
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`responses were unfounded. The Applicant refused to reconsider, and CWI brought its motion to
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`compel discovery responses and test the sufficiency of the Applicant’s responses. Dkt. 19, p. 4.
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`2
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`

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`On May 13, 2016, the Board issued an order granting CWI’s motion to compel (the
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`“Order granting CWI’s Motion to Compel”). Dkt. 23. In addition to noting that the Applicant’s
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`theories for its refusal to respond were “wrong” and based on inapplicable case law from district
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`courts, the Board’s Order granting CWI’s Motion to Compel provided the following instructions
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`to the Applicant:
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`Applicant’s discovery responses are otherwise [apart from the objection of timeliness]
`largely identical boilerplate objections that indicate Applicant’s failure to make a good
`faith effort to meet Opposer’s discovery needs. See TBMP 408.01.
`
`Applicant’s repeated objections that certain document requests are “compound,
`unduly burdensome and oppressive” are improper because Applicant has provided
`no specific reasons for each objection with regard to each request at issue. See
`Fed. R. Civ. P. 34(b)(2)(B); TBMP § 406.04.
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`[T]he compound nature of a document request is not a basis for objection to that
`document request.
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`To the extent that Applicant objects to discovery requests on the ground that they
`seek confidential/trade secret information, the Board’s standard protective order is
`operative herein. See Trademark Rule 2.116(g); TBMP § 412. Accordingly, any
`confidential/trade secret information that is otherwise discoverable must be
`disclosed pursuant to the standard protective order.
`
`Applicant is allowed until thirty days from the mailing date set forth in this order
`[June 13, 2016] to serve amended substantive responses . . . and to produce
`copies of documents responsive to those document requests. (Emphasis added).
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`Regarding Applicant’s interrogatory responses, Applicant should review Federal
`Rule of Civil Procedure 33 and TBMP Section 405.
`
`Regarding Applicant’s amended responses to document requests, Applicant must
`first state in response to each request whether it has responsive documents and, if
`so, that documents will be produce[d] or that documents are being withheld based
`on a specific objection or claim of privilege.
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`While the Board did not preclude the Applicant from raising new objections to CWI’s
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`discovery responses, the Board did instruct that any objections must be “properly stated . . . to
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`individual discovery requests,” that the Applicant’s responses were served timely “in compliance
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`3
`
`

`

`with this order,” and that the Applicant had “a good faith basis for asserting” the objections. Id.,
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`p. 4, n.7. The Board specifically referred the Applicant to TBMP 414 “regarding the
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`discoverability of various types of information in Board proceedings.” Id.
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`Finally, the Board stated that if the Applicant failed to comply, then CWI’s remedy was
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`to file a motion for sanctions under Trademark Rule 2.120(g)(1) and referred to the FED. R. CIV.
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`P. 37(c)(1). Id., p. 4, n. 6.
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`II.
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`THE APPLICANT’S “SUBSTANTIVE” DISCOVERY RESPONSES
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`Pursuant to the Board’s Order granting CWI’s Motion to Compel, the Applicant’s
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`substantive discovery responses were due on or before June 13, 2016.2 On the afternoon of
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`Friday, June 10, 2016, the Applicant contacted CWI’s counsel inquiring into entering into
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`settlement negotiations. See Composite Exhibit 1, e-mails of June 10-12, 2016, between
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`Mr. Batterman and Ms. Stempien Coyle. When CWI’s counsel informed the Applicant that it
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`was not possible to discuss settlement that same day, the Applicant finally (at 7 p.m.) asked for
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`an extension of time of the Board’s discovery deadline. Id. CWI’s counsel informed the
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`Applicant on Sunday, June 12, 2016, that she could not agree to the Applicant’s request for an
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`extension of time. Id. The Applicant then asked for a response by 6 p.m., Monday, June 13,
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`2016,the deadline for its discovery responses. Id. On the afternoon of June 13, 2016, CWI
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`confirmed with the Applicant that CWI would not agree to an extension of time for the
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`Applicant’s ordered discovery responses. Id. Then, in contrast to the deadline set by the Board,
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`the Applicant served its allegedly “substantive” discovery responses on Tuesday, June 14, 2016.
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`The Applicant alleged that this delay was due to “lost power in [its] office [the night of June 13,
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`2 The actual deadline of 30 days fell on Sunday, June 12, 2016.
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`4
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`

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`2016] and [it was] without internet.” See Exhibit 2, e-mail of June 14, 2016, from
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`Mr. Batterman to Ms. Stempien Coyle.
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`In addition to being untimely, the Applicant’s allegedly “substantive” discovery
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`responses were rife with improper and boilerplate, objections, responses that were either non-
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`responsive or evasive, vague assertions of “loss of evidence” that have been found implausible
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`by the United States District Court for the Central District of California, and other failings.
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`See Exhibits 3 through 5, Applicant’s responses to First Set of Requests for Production of
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`Documents and Things (“RFP”), Applicant’s Responses to First Set of Interrogatories
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`(“Interrogatories”), and Applicant’s Responses to First Set of Requests for Admissions (“RFA”),
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`respectively. A summary of the issues with the Applicant’s “substantive” discovery responses is
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`as follows:
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`(1)
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` Objections that all but two of the RFPs are “oppressive, unduly vague,
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`ambiguous, overbroad and unduly burdensome,” without providing specific reasons. (Exhibit 3,
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`RFP Nos. 1-17, 20-53.)
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`(2)
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`Objections that 17 of the Interrogatories are “oppressive, unduly vague,
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`overbroad, irrelevant and unduly burdensome”without further explanation.” (Exhibit 4,
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`Interrogatory Nos. 9, 10, 12-16, 18, 19, 22-25, 29-31, 37, 39, 40.)
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`(3)
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`Objections that almost all of the RFPs and nearly half of the Interrogatories are
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`“not reasonably calculated to lead to discoverable evidence,” without any explanation.
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`(Exhibit 3, RFP Nos. 2-17, 20-53; Exhibit 4, Interrogatory Nos. 9, 10, 12-16, 18, 19, 23-25, 29-
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`31, 37, 39, 40.)
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`(4)
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`“Objections” to 43 RFPs (all but ten) and 18 Interrogatories that “electronic
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`copies of certain possibly responsive documents may have been lost in August 2011 and due to
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`5
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`

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`an alleged power surge in April 2015.” (Exhibit 3, RFP Nos. 1-8, 10-12-15-17, 20, 22, 24-39,
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`41, 43-50, 52, 53; Exhibit 4, Interrogatory Nos. 8-10, 12-16, 18, 22-25, 29-31, 37, 39.)
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`(5)
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`Responses to 25 RFP (nearly half) that responsive documents were “previously
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`provided to Opposer,” without ever identifying any particular communications or documents
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`(Exhibit 3, RFP Nos. 1-3, 6-8, 10-12, 16, 20, 22, 25-28, 32, 36, 37, 41, 46, 47, 50, 52, 53.
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`(6)
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`Responses to various Interrogatories, inquiring into use and dates of use by the
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`Applicant, that “Applicant has continuously used its mark IDEAMATCH in commerce.
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`Applicant is choosing to wait until the USPTO issues a notice of allowance at which point
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`Applicant will file its statement of use.” (Exhibit 4, Interrogatory Nos. 2(d), 3, 28, 36.)
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`(7)
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`Responses to various Interrogatories inquiring into the identification of witnesses
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`without supplying addresses or contact information for the persons identified. (Exhibit 4,
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`Interrogatory Nos. 4-6, 20, 32, 33.)
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`(8)
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`(9)
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`Responses consisting solely of objections for 26 RFPs and 23 Interrogatories.
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`Repetition, almost verbatim, of objections discussed in the Order granting CWI’s
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`Motion to Strike.
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`(10) Objections to 15 RFPs and 12 Interrogatories on the basis of confidentiality.
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`(Exhibit 3, RFP Nos. 6-9, 22, 24, 30, 33, 37, 38, 46, 47, 50-52; Exhibit 4, Interrogatory Nos. 9,
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`12, 13, 19, 23-25, 29-31, 37, 39.)
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`(11)
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`The Applicant stated it was serving responsive documents for eight RFPs, yet it
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`produced only 12 pages total, consisting of TESS printouts for its two applications for the mark
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`IDEAMATCH, a printout from the TTABVUE of an extension of time for its application, a
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`printout from the TTABVUE for the docket of a terminated opposition involving the Applicant,
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`6
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`

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`a Whois lookup for ideamatch.com, and domain details from GoDaddy for ideamatch.com.3
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`(Exhibit 3, Exhibits RFP.)
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`(12)
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`The Applicant asserts that it “is without knowledge or information sufficient to
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`forms a belief as to the truth of the allegations” and therefore denied nearly all of the RFAs. The
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`Applicant makes this “response” even when the admission request is related to matters that the
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`Applicant should know, such as whether or not the Applicant is challenging CWI’s priority in
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`this action and whether or not CWI granted the Applicant permission to use its mark, or
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`otherwise acquiesced to the Applicant’s use or registration of its mark. (Exhibit 5, esp., RFA 16,
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`26 and 29).
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`The Applicant has not provided any documents or other information regarding any
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`financial information, marketing, or advertising, business plans, explanations of its goods or
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`services, how it decided upon its mark, use of its mark (which the Applicant states it is using in
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`other discovery responses, see e.g., Exhibit 5, RFA 5-10, 38 and 39), descriptions of its
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`customers or intended customers, and other basic information for a trademark owner.
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`III.
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`SANCTIONS SHOULD BE ENTERED AGAINST THE APPLICANT
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`“[I]f a party fails to comply with an order of the Trademark Trial and Appeal Board
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`relating to disclosure or discovery, . . . the Board may make an appropriate order, including those
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`provided in Rule 37(b) of the Federal Rules of Civil Procedure.” 37 C.F.R. § 2.120(g). Pursuant
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`to Rule 21.20(g) the Board may enter “judgment against the disobedient party . . . where no less
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`drastic remedy would be effective and there is a strong showing of willful evasion.” TBMP
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`3 CWI further notes the Applicant has not provided Bates numbering or anything similar
`to any of its produced documents, either in these “exhibits” or documents the Applicant
`forwarded to CWI while the Parties were in discussions regarding settlement.
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`7
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`

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`527.01(a), para. 3. The Board may also prohibit “the disobedient party from introducing
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`designated matter in evidence.” Id.
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`In the instant case the Board issued its Order granting CWI”s Motion to Compel on
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`May 13, 2016. Dkt. 23. Among the Applicant’s obligations under that Order were (1) producing
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`substantive discovery responses by June 13, 2016, and (2) raising any objections in its responses
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`only where there was a good faith basis for asserting such objections. The Applicant has failed
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`to comply with the Board’s Order. As an initial matter the Applicant’s responses were untimely,
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`with the Applicant offering only a weak “excuse” as to why, and after the Applicant had sought
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`a last minute agreement from CWI to extend its deadline. See Exhibits 1 and 2.
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`More troubling, though, is the Applicant’s blatant failure to provide “substantive”
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`responses. The Applicant produced a grand total of 12 pages of responsive documents with its
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`responses and provided little to no answers of value to the interrogatories. Rather, the
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`Applicant’s responses are filled with numerous nonsensical objections where there cannot
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`possibly be any good faith for asserting them since the objections are in direct contradiction to
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`the very portions of the TBMP cited by the Board to the Applicant.
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`For example, the Applicant objects to all but two of the RFPs on the basis that they are
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`“oppressive, unduly vague, ambiguous, overbroad, and unduly burdensome.” See Exhibit 3.
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`The Applicant also objects to nearly half of the Interrogatories on the purported basis that they
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`are “oppressive, unduly vague, overbroad, irrelevant and unduly burdensome.” But the
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`Applicant never explains the basis for either objection, and the objections are facially
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`implausible for many of the document requests and interrogatories. See Exhibit 4; see, e.g.,
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`Interrogatory Nos. 9, 12, 15, and 25 (regarding selection of Applicant’s mark, channels of trade,
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`classes and characteristics of customers, and marketing expenditures, respectively). The
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`8
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`

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`Applicant objects to nearly every RFP and Interrogatory as “not reasonably calculated to lead to
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`discoverable evidence,” without providing any explanation or good faith basis. See Exhibits 3
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`and 4, Interrogatory Nos. 9, 10, 12-16, 18, 19, 23-25, 29-35, 37, 39, and 40. The Applicant also
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`makes numerous objections based on purported confidentiality, despite the applicability of the
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`Board’s standard protective order to this matter, a fact pointed out to the Applicant by the Board
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`already. See Exhibit 3, RFP Nos. 6-9, 22-24, 30, 33, 37, 38, 46, 50-51; and Exhibit 4,
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`Interrogatory Nos. 9, 12, 13, 19, 23-25, 29-31, 37, and 39. See also Dkt. 23.
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`The Applicant also includes an “objection” that “electronic copies of certain documents
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`that might have been responsive to this request were irretrievably lost in August 2011 due to a
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`lightning strike, and in April 2015 due to a power surge” in response to all but ten of the RFP
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`and about half of the Interrogatories. See Exhibits 3 and 4. CWI respectfully submits that this
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`“objection” is without merit since the Applicant has tried a nearly identical “objection” in a
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`trademark proceeding before the U.S. District Court for the Northern District of California and
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`the Court there soundly rejected this “objection” of an April 2015 power surge as “implausible”
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`and “unbelievable.” Exhibit 6, esp. CWI000405 through CWI000414 (February 8, 2016,
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`decision in InternMatch, Inc. v. NxtBigThing, LLC, N.D. Cal., Case No. 14-cv-05438-JST).
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`Moreover, even if this “objection” were valid, (1) it only concerns “electronic copies” and not
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`paper copies (or originals), (2) there is no effort by the Applicant to explain whether the
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`Applicant thinks it likely that responsive information was indeed “lost,” and (3) the Applicant
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`fails to provide a substantive response for information and/or documents existing after April
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`2015. The facial implausibility of this “objection” is made clear in light of some of the requests
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`– requests where the Applicant would be reasonably expected to have responsive information or
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`evidence after April 2015. For example, the Applicant asserts its power surge “objection” in
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`9
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`

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`response to requests for production regarding the goods and service the Applicant’s mark is used
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`for, evidence of the Applicant’s ability to offer its goods or services, documents regarding the
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`Applicant’s plans to sell or market under its Mark, and documents regarding its advertising
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`expenses or budget. (RFP No. 10, 12, 17, and 24 ); see also Exhibit 3, RFP Nos. 1-8, 10-12, 15-
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`17, 20, 22, 24-39, 41, 43-50, and 52-43.)
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`The Applicant also failed to identify properly persons in response to Interrogatory
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`Nos. 4-6, 20, 32, and 33. See Exhibit 4. Nor can the Applicant rely on the proper identification
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`of the individuals from its initial disclosures, because the Applicant never made any initial
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`disclosures.
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`Even for the most basic discovery inquiries, the Applicant responded with objections and
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`nonsensical “responses.” For example, in response to interrogatories regarding the types of
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`goods and services offered or intended to be offered, the Applicant merely copied verbatim its
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`long list of goods and services identified in its application. See Exhibit 4, Interrogatory
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`Nos. 1and 28. In response to interrogatories regarding any dates of first use, the Applicant
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`states: “Applicant has continuously used its mark IDEAMATCH in commerce. Applicant is
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`choosing to wait until the USPTO issues a notice of allowance at which point Applicant will file
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`its statement of use.” Id., Interrogatory Nos. 2(d), 3, 28, and 36. In regard to document requests
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`the Applicant responds to several requests by referring vaguely to communications with CWI or
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`documents the Applicant previously sent to CWI, but it never specifically identifies what
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`communications or documents it is referring to. The Applicant does not even bother to identify a
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`date of the communication or when the documents were sent. Exhibit 3, RFP Nos. 1-3, 6-8,
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`10-12, 16, 20, 22, 25-28, 32, 36, 37, 41, 46, 47, 50, 52, and 53.
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`10
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`

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`The sum of all of the above baseless objections and other evasive tactics by the Applicant
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`is that the Applicant did not provide timely, substantive discovery responses.
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`A.
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`Default Judgment against the Applicant Is Warranted
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`Sanctions in the form of a default judgment against the Applicant are warranted in this
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`action. The Applicant “ has unfortunately continued what is by now a longstanding pattern of
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`dilatory behavior, cavalier disregard for the time and resources of the Board and opposing
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`counsel, and flouting of Board rules. Both the Board and [CWI] have bent over backwards to
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`provide [the Applicant] with multiple opportunities to comply with the applicable rules and
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`requirements.” Patagonia, Inc. v. Azzolini, 109 U.S.P.Q.2d 1859, 1862 (T.T.A.B. 2014).
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`The Applicant’s pattern of conduct establishes that entry of judgment is justified as no
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`less drastic remedy would be effective and there is a strong showing of willful evasion by the
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`Applicant. The Board has now instructed the Applicant three times that its obligations in this
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`matter are governed by the Board’s Rules, including specific citations of the applicable Rules.
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`See Dkt. 14, p. 5, Dkt. 18, and Dkt. 23, pp. 2-4. The Applicant routinely ignores the Board’s
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`Orders and Rules. For example, in advance of its motion to compel, CWI repeatedly pointed out
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`to the Applicant the baselessness of its “untimely” objection, including citations to the clear
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`Rules of the Board. The Board even instructed the Applicant to provide responses to the
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`discovery responses before the motion to compel, when the Board saw through the dilatory
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`nature of the Applicant’s motion to strike CWI’s initial disclosures. Despite all of this, the
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`Applicant refused to abide by the Board’s clear Rules and stubbornly clung to its entirely
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`unsupported “timeliness” objection.
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`Moreover, the Applicant’s behavior is not merely a pattern in this proceeding but in other
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`adversarial proceedings as well. The Applicant relies in this proceeding on an “objection” (or
`
`11
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`

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`excuse) that it unsuccessfully tried to hide behind in a recent District Court proceeding. The
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`Applicant is well aware that the Northern District of California found the Applicant’s claims of
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`loss of evidence due to a power surge as “implausible” and “unbelievable.” Yet the Applicant
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`decided to try its luck with this “objection” in front of this Board.
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`In view of the Applicant’s repeated disregard for the Board’s orders and Rules, and the
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`evidence that bad faith objections and/or excuses are the Applicant’s modus operandi, it is
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`evident that further warnings and chances by the Board will not bring any change to the
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`Applicant’s behavior. Any sanction short of a default judgment would be futile. Moreover,
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`CWI respectfully submits that any sanction short of default will result in CWI needing to spend
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`additional resources seeking compliance with simple and clear rules of procedure (which have
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`also been specifically identified by the Board to the Applicant). Such a result is unfair to CWI
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`and not warranted in light of the Applicant’s history. See Patagonia, supra; Benedict v. Super
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`Bakery Inc., 665 F.3d 1263, 101 U.S.P.Q.2d 1089 (Fed. Cir. 2011); MySpace, Inc. v. Mitchell, 91
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`U.S.P.Q.2d 1060 (T.T.A.B. 2009) (Sanctions in the form of default judgment were entered when
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`the defendant failed to comply with earlier orders from the Board. The defendant’s assertion that
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`he “complied or tried to comply” were belied by the facts of the case.); MHW Ltd. v. Simmex, 59
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`U.S.P.Q.2d 1477, 14788-79 (T.T.A.B. 2000) (“It is obvious from a review of the record that
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`opposers have been engaging for years in delaying tactics, including the willful disregard of the
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`Board’s orders. Opposers’ protestations that their attempts at compliance have been diligent are
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`unconvincing, and their reasons for delay are undermined by their obvious failure to take any
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`action within the Board ordered periods for responding to applicant’s discovery requests. We
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`agree with applicant that the responses and supplements to response served on applicant
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`demonstrate opposers’ intent to continue to delay this proceeding by setting up obstacles to
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`12
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`

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`applicant’s receipt of clearly relevant information.”). See also Baron Philippe de Rothschild S.A.
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`v. Styl-Rite Optical Mfg. Co., 55 U.S.P.Q.2d 1848 (T.T.A.B. 2000).
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`There is no remedy less drastic than judgment against the Applicant that would be
`
`effective. The Applicant has demonstrated a pattern of willful evasion in both this proceeding
`
`and before at least one District Court. Moreover, the Applicant’s last-minute “effort” to extend
`
`its obligation to provide discovery responses, coupled with its untimely service and lack of any
`
`substantive responses to CWI’s discovery requests, further demonstrates a disregard for the
`
`Board’s Order granting CWI’s Motion to Compel. The Applicant has also ignored the Board’s
`
`numerous efforts to educate the Applicant as to the governing rules in this proceeding.
`
`Therefore, pursuant to TBMP 527.01(a), CWI respectfully requests that the Board enter
`
`judgment against the Applicant.
`
`B.
`
`Alternatively, the Applicant Should Be Prohibited from Relying on
`Any New Evidence
`
`In the event the Board disagrees that a default judgment is warranted, CWI requests in
`
`the alternative a sanction prohibiting the Applicant from relying at trial, or summary judgment,
`
`upon any information that was properly sought by CWI but not produced by the Applicant in
`
`discovery. 37 C.F.R. § 2.120(g), see also FED. R. CIV. P. 37(c)(1); M.C.I. Foods, Inc. v. Bunte,
`
`86 U.S.P.Q.2d 1044, 1048 (T.T.A.B. 2008) (entering sanctions accepting as authentic and
`
`admissible any documents produced by the disobedient party if filed by the moving party, but
`
`prohibiting the disobedient party from relying at trial on any documents requested but not
`
`produced prior to entry of sanctions); HighBeam Marketing, LLC v. HighBeam Research LLC,
`
`85 U.S.P.Q.2d 1902, 1905 (T.T.A.B. 2008) (entering sanctions prohibiting disobedient party
`
`from relying at trial on discovery materials disclosed only after entry of sanctions against it).
`
`13
`
`

`

`Here, as explained supra, the Applicant has failed to comply with the Board’s Order
`
`granting CWI’s Motion to Compel, and sanctions are warranted. At the very least, and in view
`
`of the fact that this is the Applicant’s second effort to avoid its obligation to provide substantive
`
`discovery responses, sanctions should be entered prohibiting the Applicant from relying at trial
`
`or summary judgment on any evidence that was properly requested by CWI but not produced by
`
`the Applicant during discovery. CWI further requests that this sanction specifically address the
`
`documents that the Applicant vaguely cites to in its responses but does not specifically identify
`
`as well as witnesses for whom inadequate identifying information was disclosed. Finally, CWI
`
`notes that the Applicant was specifically warned about the possibility of this sanction in its Order
`
`granting CWI’s Motion to Compel. Dkt. 23, p. 4, n.6.
`
`IV.
`
`CONCLUSION
`
`The Applicant has failed to comply with the Board’s Order granting CWI”s Motion to
`
`Compel by its failure to (1) timely serve its responses, (2) provide substantive responses and (3)
`
`present only objections for which there was a good faith basis. Sanctions against the Applicant
`
`are warranted, as made apparent by the Applicant’s pattern of conduct in this matter and its
`
`effort to try an “objection” before the Board that was soundly rejected by the Northern District of
`
`California as “implausible” and “unbelievable.” Sanctions in the form a judgment against the
`
`Applicant should be entered in this case, since no less drastic remedy would be effective and
`
`there is a strong showing of willful evasion by the Applicant. In the alternative, if the Board
`
`disagrees that default judgment is warranted at this stage, sanctions should be entered in the form
`
`of a prohibition against the Applicant from relying at trial, or summary judgment, upon
`
`information that was properly sought by CWI but not produced by the Applicant in discovery.
`
`14
`
`

`

` June 23, 2016
`Date
`
`Respectfully submitted,
`
` /s/ Rebecca J. Stempien Coyle
`Rebecca J. Stempien Coyle
`Paul Grandinetti
`LEVY & GRANDINETTI
`P.O. Box 18385
`Washington, D.C. 20036-8385
`Telephone (202) 429-4560
`mail@levygrandinetti.com
`
`Attorneys for Opposer
`
`15
`
`

`

`CERTIFICATE OF SERVICE
`
`I certify that a copy of the foregoing OPPOSER’S MOTION FOR SANCTIONS AND
`
`FOR SUSPENSION PENDING DETERMINATION OF THIS MOTION with Exhibits 1-6 was
`
`served this date by e-mail and first class mail, postage prepaid, on the Applicant as follows:
`
`Mr. Chad Batterman
`NXTBIGTHING LLC
`203 NE Front Street, Suite 201
`Milford, Delaware 19963-1431
`ideamatch12@gmail.com
`
` June 23, 2016
`Date
`
` /s/ Rebecca Stempien Coyle
`Rebecca J. Stempien Coyle
`
`

`

`EXHIBIT 1
`EXHIBIT 1
`
`

`

`From: Paul Grandinetti
`
`Sent: Monday, June 13, 2016 3:10 PM
`
`To: 'Chad Batterman'
`
`Subject: RE: Opposition No. 91/221,613 IDEAMATCH
`
`Dear Mr. Batterman:
`
` have heard from my client. CWI does not agree to an extension of time, and expects NxtBigThing to produce its discovery as ordered.
`
` I
`
`
`At this time CWI has been informed of your communications regarding settlement. However, we do not have any instructions from CWI
`regarding settlement. It is our position that proceedings should continue as scheduled.
`
`Regards,
`Rebecca Stempien Coyle
`
`Levy & Grandinetti
`Suite 304
`1120 Connecticut Ave NW
`Washington DC 20036
`
`Tel. (202) 429-4560
`Fac. (202) 429-4564
`mail@levygrandinetti.com
`
`
`From: Chad Batterman [mailto:chadbatterman@gmail.com]
`Sent: Monday, June 13, 2016 12:15 AM
`To: Paul Grandinetti <mail@levygrandinetti.com>
`Subject: Re: Opposition No. 91/221,613 IDEAMATCH
`
`Rebecca,
`Appreciate the followup. Would you please let me know if you are able to reach your client either way by Monday 6pm est. Have a
`good evening.
`
`Thank you,
`
`Chad Batterman
`
`On Jun 12, 2016, at 10:10 PM, Paul Grandinetti <mail@levygrandinetti.com> wrote:
`
`Dear Mr. Batterman:
`
`I do not have any update. I do not know when I will have an update from my client. It will certainly not be before
`Monday and I do not know if I will have one by Monday.
`
`I cannot agree to any extension of time for you at this time.
`
`Regards,
`Rebecca Stempien Coyle
`
`Levy & Grandinetti
`1120 Connecticut Ave, NW
`Suite 304
`Washington DC 20036
`
`Tel. 202-429-4560
`Fax 202-429-4564
`
`file: / / / C| / Users/ RJS/ Dropbox% 20(L&G)/ CLI ENTS/ MCG/ I deaMatch/ RE% 20Opposition% 20No.% 2091221613% 20I DEAMATCH.htm[ 6/ 23/ 2016 3: 50: 11 PM]
`
`

`

`mail@levygrandinetti.com
`
`From: Chad Batterman <chadbatterman@gmail.com>
`Sent: Sunday, June 12, 2016 3:16:29 PM
`To: Paul Grandinetti
`Subject: Re: Opposition No. 91/221,613 IDEAMATCH
`
`Rebecca,
`Following up on my last email to see if you an update?
`
`Thank you,
`
`Chad Batterman
`
`On Jun 10, 2016, at 7:05 PM, Chad Batterman <chadbatterman@gmail.com> wrote:
`
`Rebecca,
`The settlement would be the last offer your client made to us before ttabvue proceedings started backup.
` Would you agree to allow us to reply to discovery once you hear back from you client?
`
`
`
`Thank you,
`
`Chad Batterman
`
`
`
`On Jun 10, 2016, at 6:41 PM, Paul Grandinetti <mail@levygrandinetti.com> wrote:
`
`Dear Mr. Batterman:
`
` I
`
` am not in a position to speak with you regarding settlement without obtaining instructions from my
`client. For example, I do not know whether the client would still be amenable to settle on terms
`previously discussed. Finally, it will not be possible for me to obtain such instructions before Monday.
`
`If you have a settlement offer you would like my client to con