Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA924709
`09/26/2018
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91226322
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Lupin Pharmaceuticals, Inc.
`
`DIANE B MELNICK
`POWLEY & GIBSON PC
`304 HUDSON ST 2ND FLOOR
`NEW YORK, NY 10013
`UNITED STATES
`trademarks@powleygibson.com, dbmelnick@powleygibson.com,
`thcurtin@powleygibson.com, smmorales@powleygibson.com
`212-226-5054
`
`Opposition/Response to Motion
`
`Suzanna M. M. Morales
`
`smmorales@powleygibson.com, thcurtin@powleygibson.com
`
`/Suzanna M. M. Morales/
`
`09/26/2018
`
`Lupin - Ampel - response to motion to strike FINAL_Public.pdf(756957 bytes )
`morales decl final.pdf(552011 bytes )
`A.pdf(78514 bytes )
`B.pdf(35839 bytes )
`C.pdf(1566873 bytes )
`D_Redacted.pdf(724822 bytes )
`E public.pdf(20644 bytes )
`F.pdf(351826 bytes )
`G.pdf(279491 bytes )
`H.pdf(35024 bytes )
`I.pdf(179050 bytes )
`J.pdf(87342 bytes )
`K.pdf(149789 bytes )
`L.pdf(91319 bytes )
`
`

`

`IN THE U.S. PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`-----------------------------------------------------x
`LUPIN PHARMACEUTICALS, INC.,
`
`
` Opposer,
`v.
`
`
`AMPEL, LLC,
`
`Applicant.
`------------------------------------------------------x
`
`
`Opposition No. 91226322
`
`OPPOSER’S RESPONSE IN OPPOSITION TO MOTION TO STRIKE
`
`I.
`
`PRELIMINARY STATEMENT
`
`
`
`
`
`Opposer, Lupin Pharmaceuticals, Inc. (“Lupin” or “Opposer”) brought this opposition against
`
`the application of Applicant, Ampel, LLC’s (“Ampel” or “Applicant”) for the claimed mark LUPPIN
`
`for services related to the treatment of the disease Lupus on the grounds that Ampel’s mark is likely
`
`to cause confusion with Lupin’s longstanding and federally registered mark LUPIN covering a full
`
`line of pharmaceutical products.
`
`In support of its case, Lupin engaged in a fulsome and forthcoming discovery, producing
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`thousands of pages of documents responsive to Ampel’s discovery requests. Lupin’s production
`
`included printouts from third-party websites; examples of other companies offering the same types of
`
`goods and services that Lupin and Ampel offer; unsolicited media coverage; and hundreds of pages
`
`of examples of Lupin’s product packaging. In support of its summary judgment motion, Lupin used
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`the same types of documents and evidence that Ampel now seeks to exclude.
`
`Ampel had ample time and opportunity to challenge the sufficiency of Lupin’s discovery
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`responses and document production, but never objected. Ampel never complained about any alleged
`
`deficiency in Lupin’s interrogatory responses or in its 3,000-plus page document production.
`
`Moreover, Ampel only noticed a single deposition during discovery – a Rule 30(b)(6) deposition of
`
`
`
`1
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`

`

`Lupin – but cancelled it. When Lupin served the trial affidavit Ampel now seeks to strike, Ampel did
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`not seek to cross-examine the witness under the provisions of the Trademark Rules of Practice.
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`Instead, Ampel chose to bring this “motion to strike.”
`
`Ampel’s studied indifference in (i) failing to object to, or even complain about, Lupin’s
`
`responses to Ampel’s discovery; (ii) declining to proceed with its own noticed deposition of Lupin’s
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`Rule 30(b)(6) designee(s); and (iii) failing to even conduct a cross-examination of Mr. Berthold on
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`his trial affidavit, should not be rewarded with a preclusion order. Ampel’s belated objections are
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`tardy and have been waived. More importantly, Lupin’s evidence comes as no surprise to Ampel.
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`Ampel has not even attempted to argue that it would be prejudiced by Lupin’s introduction of the
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`evidence Ampel seeks to exclude. Lupin respectfully requests that the Board deny Ampel’s motion to
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`strike in its entirety.
`
`
`
`II.
`
`STATEMENT OF FACTS
`
`On December 2, 2016, Ampel served its first set of interrogatories and requests for
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`production, and, having obtained an extension of deadlines in the matter, Lupin served timely
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`responses on March 6, 2017. Declaration of Suzanna M. M. Morales (“Morales Decl.”) at ¶¶ 3-4,
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`Exhs. A-B. Lupin updated its answers to Ampel’s interrogatories on March 8, 2017 and November
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`17, 2017. Id. at ¶¶ 5-6, Exhs. C-D.
`
`Ampel’s Interrogatory No. 21 stated as follows:
`
`Identify all facts on which the Opposer relies or intends to rely upon in support of its
`contention set forth in paragraph 11 of the Notice of Opposition that Ampel’s use of the
`mark LuPPiN is likely to cause consumers to mistakenly believe that Ampel’s services are
`affiliated or associated with, connected to, or sponsored, approved or authorized by
`Opposer.
`
`Lupin responded to this excessively broad interrogatory by stating:
`
`Opposer objects to this Interrogatory as overly broad, unduly burdensome, and not
`proportional to the needs of this case. Opposer objects to this Interrogatory as premature,
`
`
`
`2
`
`

`

`as discovery is ongoing and, to date, there is little, if any, evidence that Applicant has
`actually used its claimed mark in connection with its claimed services. Opposer objects to
`this Interrogatory to the extent it requests Opposer’s legal conclusions and/or seeks to
`invade the attorney-work product privilege. Subject to and without waiver of the foregoing
`general and specific objections, Opposer states that Opposer is the prior, senior user and
`registrant of the mark LUPIN and has widely used such mark on and in connection with a
`wide variety of pharmaceutical products that were distributed, marketed, advertised,
`promoted and sold to the trade and consuming public well prior to the adoption, use and
`application for registration of the claimed mark LUPPIN by Applicant. Further, as a result
`of the longstanding and widespread use of the Lupin Trademarks on a full line of
`pharmaceutical products combined with the substantial sale throughout the United States
`of Opposer’s pharmaceutical products under the Lupin Trademarks, Opposer’s Lupin
`Trademarks are strong and well-known marks, particularly in the field of pharmaceuticals.
`Opposer states that the parties’ respective marks are nearly identical, with the sole
`exception that Applicant’s mark contains an additional, and silent, “p”. The parties’ marks,
`when spoken and heard are indistinguishable. Opposer will also adduce proof at trial that
`several of Opposer’s pharmaceutical preparations may be repurposed to alleviate certain
`symptoms of Lupus. Opposer reserves its right to supplement this response and to provide
`evidence in support of the allegations made in Opposer’s Notice of Opposition, including,
`without limitation, in Opposer’s Notice of Reliance and through testimonial depositions.
`
`See Exhibit A to Morales Decl. (emphasis added).
`
`Ampel’s Interrogatory No. 22 requested:
`
`
`Identify all facts on which the Opposer relies or intend to rely upon in support of its
`contention set forth in paragraph 11 of the Notice of Opposition that Ampel’s use of the
`mark LuPPiN is likely to cause confusion, deception or mistake among consumers.
`
`
`
`Lupin responded by referring Ampel to its response to Request No. 21, quoted in its
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`entirety above. See Exhibit A to Applicant’s Motion to Strike (Dkt. 36).
`
`
`
`
`
`
`
`Similarly, Ampel’s Document Request No. 13 asked for:
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`All documents and things upon which Opposer intends to rely to prove its claims and
`contentions set forth in Opposer’s Notice of Opposition.
`
`Lupin responded:
`
`Opposer objects to this Request as the Request is, at best, premature at this stage of the
`proceedings. The Request seeks production of “all” documents and things which Opposer
`intends to rely upon to prove its claims in this proceeding although discovery is still open.
`Aside from the information and documents already disclosed in pleadings and in discovery
`to date, Opposer will submit its proof in its Notice of Reliance, after relevant information
`and documents have been gathered in discovery. Opposer further objects to this Request to
`the extent the request seeks documents and/or information protected by the attorney-client
`privilege or otherwise seeks to invade the attorney work product doctrine. Without waiver
`
`3
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`

`

`of the foregoing general and specific objections, Opposer will amend and supplement its
`response to this Request in advance of trial.
`
`See Exhibit C to Applicant’s Motion to Strike (emphasis added).
`
`Ampel also requested in its Interrogatory No. 5 that Lupin, “[i]dentify all pharmaceutical
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`products and drugs that are sold or marketed under the word mark LUPIN and/or the Lupin Design
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`Mark.” Lupin identified numerous products, ultimately listing more than one-hundred
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`pharmaceutical products in its second amended response to Ampel’s interrogatories. Morales Decl.,
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`Exh. D at pp. 3-6.
`
`Similarly, in response to Ampel’s Interrogatory No. 7, requesting that Lupin “[i]dentify each
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`pharmaceutical product and drug that is manufactured, sold or licensed, or has been manufactured,
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`sold or licensed, by Opposer which is approved for, marketed for, and/or intended to, treat Lupus,”
`
`Lupin responded:
`
`Opposer objects to this Interrogatory as vague and ambiguous due to the compound nature
`of the request. Subject to and without waiver of the foregoing general and specific
`objections, Opposer does not market, sell or license a pharmaceutical product intended only
`for the treatment of Lupus. Opposer however affirmatively avers that Opposer markets and
`sells pharmaceutical products that can be used in connection with the treatment of Lupus,
`such as nonsteroidal anti-inflammatory drug (NSAIDs) including celecoxib and anti-
`malarials. Many of Opposer’s pharmaceutical products are approved for, and marketed for
`the treatment of a wide range of diseases and conditions, including the treatment of certain
`common symptoms of Lupus such as fever; headache; fatigue; confusion; chest pain;
`stiffness; shortness of breath; joint or muscle pain; anemia; shortness of breath; swelling
`(edema) in the legs, ankles, and feet; joint swelling; and rash.
`
`Lupin’s answer specifically identified 44 products. That answer was later amended to 53
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`products as Lupin continues to produce more types of pharmaceutical products. Id. at pp. 7-11.
`
`Ampel also propounded certain discovery requests related to Lupin’s channels of trade:
`
`Interrogatory No. 17: Identify and describe the channels of distribution in the United States
`through which Opposer promotes, advertises, distributes, sells, and/or provides Opposer’s
`products and Services.
`
`Response to Interrogatory No. 17:
`
`Opposer objects to this Interrogatory on the
`
`
`
`4
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`

`

`ground that it is vague, ambiguous, and compound. Without waiver of the foregoing
`general and specific objections, Opposer promotes, advertises, distributes, sells, and/or
`provides Opposer’s Products and Services through many different channels of trade.
`Opposer provides products, both generic and branded, to wholesalers including, without
`limitation, AmeriSource Bergen Corporation, Red Oak, and Walgreen Boots Alliance.
`These wholesalers, in turn, distribute Opposer’s products bearing the Lupin trademark to
`consumers throughout the United States. Channels of trade in which Opposer’s products
`are available to the ultimate consumer include major retail chains such as CVS, Walgreens,
`WalMart and grocery store chains including, without limitation, Giant and Harris Teeter.
`Opposer’s products also are offered and sold to various federal government agencies and
`programs including, without limitation, the Department of Veterans Affairs, federal
`prisons, and Medicare and Medicaid. Advertising for Opposer’s products under the name
`and mark LUPIN (including, without limitation, the Lupin Design Mark) is conducted
`through various channels and media including Opposer’s website; internet banner ads;
`internet pop-up ads; television infomercials; advertisements in medical journals and
`pharmaceutical trade journals; pharmaceutical bulletins; specialty consumer medical
`publications; and underwriting and/or sponsorship of pharmaceutical seminars and medical
`seminars. Opposer also provides patient assistance rebate programs to consumers of
`Opposer’s Products and Services in the general U.S. public using the word mark LUPIN
`and Lupin Design Mark.
`
`Morales Decl., Exh. C at p. 16 (emphasis added).
`
`Identify and describe with specificity the (i) intended consumers,
`Interrogatory No. 18:
`and (ii) ultimate purchasers of each of Opposer’s Products and Services.
`
`Opposer objects to this Interrogatory on the
`Response to Interrogatory No. 18:
`grounds it is vague, ambiguous, and requires speculation and subjective judgment as to the
`meaning and differences between “intended consumers” and “ultimate purchasers.”
`Opposer further objects to this Interrogatory on the grounds it is overly broad, unduly
`burdensome, and not proportional to the needs of this case, particularly as it requests the
`identity of the consumers and purchasers of the hundreds of pharmaceutical products
`distributed and sold by Opposer, and to the extent it requests confidential information
`regarding individual and institutional purchasers. Opposer also objects to this Interrogatory
`to the extent it is not limited to United States commerce. Subject to and without waiver of
`the foregoing general and specific objections, the purchasers of Opposer’s Products and
`Services are wholesale pharmaceutical distributors (such as AmeriSource Bergen
`Corporation) and federal agencies and programs such as Medicare, Medicaid, and the
`Department of Veterans Affairs, among others (see also Response to Interrogatory No. 17).
`The end consumers of Opposer’s pharmaceutical products are individuals who need, or
`have been prescribed, Opposer’s products for a medical ailment or condition. Opposer
`further incorporates by reference its response to Interrogatory No. 17.
`
`Id., Exh. A at p. 17.
`
`Notably, Interrogatory No. 17 requests only those consumers to which Lupin itself directly
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`“promotes, advertises, distributes, sells, and/or provides” LUPIN branded products. Ampel could
`
`
`
`5
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`

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`have, but did not, serve any follow-up discovery regarding the customers to which the identified
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`wholesalers provide products, nor did Ampel inquire further regarding the identity of any
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`“institutional purchasers” referenced in Lupin’s response.
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`On March 10, 2017, Lupin produced 1,043 pages of responsive documents. Id. at ¶ 7. On
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`March 17, Lupin made a further production of 946 pages of responsive documents. Id. at ¶ 8. On
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`March 24, 2017, Lupin produced an additional 418 pages of documents. Id. at ¶ 9. On November 17,
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`2017, Lupin made another production of 959 pages of documents. Id. at ¶ 10. The November 17
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`production included many of the same types of documents to which Ampel now objects, such as
`
`third-party websites demonstrating use of the same mark for both pharmaceutical products and
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`educational or support group services and trademark registrations covering both pharmaceutical
`
`goods and educational or support group services. Id.; TBMP 704.03(b)(1)(B). Such documents were
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`not ever in the possession, custody, or control of Lupin, but were located through searches conducted
`
`by Lupin’s attorneys. In a good faith effort to respond to Interrogatory Nos. 21 and 22 and Document
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`Request No. 13, Lupin included these documents in its production.
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`Lupin’s production also included more than 1,500 pages of product packaging samples in the
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`form of package inserts and packaging proofs for the more than 50 LUPIN branded products that
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`were identified by Lupin through a diligent search of its records for pharmaceutical products capable
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`of treating common symptoms of Lupus, including Celecoxib, Quinapril, and Desoximetasone.
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`Morales Decl. at ¶ 11, Exh. E. Such documents were produced in March 2017, and supplemented
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`November 17, 2017 to reflect the expansion of Lupin’s product portfolio to include additional drugs
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`that can be used to treat common symptoms of Lupus. Lupin’s production prior to the close of
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`discovery also included a number of photographs of product packaging, including Lovastatin and
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`Simvastatin among others. Id. at ¶ 12, Exh. F. Lupin also produced documents illustrating the use of
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`
`
`6
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`

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`the LUPIN mark directly on the drug tablets and capsules. See, e.g., Morales Decl. at ¶ 13, Exh. G.
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`
`
`On September 22, 2017, Ampel served a Notice of Deposition of Lupin under Fed. R. Civ. P.
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`30(b)(6). The deposition notice listed 15 topics to be covered in the deposition of Lupin, including:
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`The facts that Lupin Pharmaceuticals relies on, or intends to rely upon, in support of its
`allegations that (a) Ampel’s use of the Respondent’s Trademark is likely to cause
`consumers to mistakenly believe that Ampel’s services are affiliated or associated with,
`connected to, or sponsored or approved by Lupin Pharmaceuticals; and (b) consumers are
`likely to mistakenly believe that the services offered by Ampel under the Respondent’s
`Trademark are provided by Lupin Pharmaceuticals and/or that such services are intended
`to provide support for patients who take Lupin-branded pharmaceutical products;
`
`Lupin Pharmaceutical’s activities to market, promote, and sell products, goods, or services
`under the Opposer’s Trademarks, including the marketing channels, geographic scope of
`marketing, and geographic location of customers; and
`
`Lupin Pharmaceutical’s past, present, and intended use of Opposer’s Trademarks,
`including the date on which the marks were first used in interstate commerce and the
`manner of such use.
`
`Morales Decl., Exh. H.
`
`
`
`Upon receipt of this Notice of Deposition, Lupin prepared Dave Berthold to appear on behalf
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`of Lupin as one of Lupin’s designees under Fed. R. Civ. P. 30(b)(6). Morales Decl. at ¶ 14. Mr.
`
`Berthold is Lupin’s Vice President of Sales – U.S. Generics. Mr. Berthold was first identified in
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`Lupin’s Initial Disclosures on June 10, 2016. Morales Decl., Exh. I. On October 16, 2017, four days
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`before the deposition, Ampel cancelled its own noticed Fed. R. Civ. P. 30(b)(6) deposition of Lupin,
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`stating “Lupin’s position and the issues in dispute seem clear, so it does not justify the time and
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`expense of taking the deposition.” Morales Decl. at ¶ 16, Exh. J.
`
`
`
`Discovery closed November 17, 2017. Any motion to compel discovery was due on June 28,
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`2018, prior to the deadline for Lupin’s pretrial disclosures. TBMP § 523.03. Ampel (i) did not seek to
`
`compel further responses from Lupin to any of its discovery requests; (ii) never challenged any of
`
`Lupin’s objections to Ampel’s discovery; (iii) never complained about the sufficiency of Lupin’s
`
`
`
`7
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`

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`responses and documents produced; (iv) never objected to Lupin’s reservation of its rights to
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`supplement the relevant responses up to the tn'al period; and (v) never brought a motion to compel.
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`Morales Decl. at 1] 20.
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`On December 29, 2017, Lupin filed its Motion for Summary Judgment. Dkt. l9 and 20.
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`Lupin’s evidence in support of its Motion included printouts of third-party registrations, examples of
`
`third-party use of the same marks for goods and services of the same type that Lupin and Ampel
`
`ofl‘er, and media coverage of Lupin. In its reply brief, filed February 15, 2018, Lupin included
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`evidence fiom the USPTO file histories of other applications and registrations of Ampel. Dkt. 23 and
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`24. Aside from a general hearsay objection, Ampel did not object to these evidentiary submissions by
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`Lupin on summary judgment.
`
`In addition, Lupin’s Motion for Summary Judgment included an affidavit of Dave Berthold
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`with exhibits (referenced hereinafier as the “Berthold SJ Affidavit”). The Berthold SJ Aifidavit
`
`stated, in pertinent part:
`
`1.
`
`2.
`
`that Lupin products are sold through major wholesalers, which sell LUPIN branded
`products to the ultimate consumer;
`
`that Lupin pharmaceutical products are “prescribed and distributed through hospitals
`located throughout the United States”; and
`
`3.
`
`that Lupin sells drugs on which the LUPIN mark is affixed directly to the drug capsule.
`
`See Dkt. l9 and 20. Ampel has stipulated to the admissibility for all purposes at trial of the Berthold
`
`SJ Aflidavit. Dkt. 26.
`
`On August 9 and 13, 2018, during Lupin’s testimonial period, Lupin supplemented its
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`document production. The supplemental production comprised:
`
`Bates Nos.
`
`Descri n tion of Documents
`
`LUP003880B — 3924
`
`LUP003367,
`LUP003372,
`
`Images of LUPIN branded product packaging
`
`

`

`(46 pages)
`LUP003368 – 3371
`(4 pages)
`LUP003373 – 3384
`(12 pages)
`LUP003385 – 3428
`(43 pages)
`
`LUP003429 – 3582,
`LUP003861 – 3863
`(156 pages)
`LUP003583 – 3637
`(54 pages)
`
`LUP003638 – 3683,
`LUP003864 –
`3880A1
`(61 pages)
`LUP003684 – 3737
`(53 pages)
`LUP003738 – 3744
`(6 pages)
`LUP003745 – 3860
`(115 pages)
`
`Images of the LUPIN mark as affixed directly to pills
`
`Unsolicited media coverage of Lupin located through a search of
`LexisNexis by Lupin’s attorneys. TBMP §704.08(b).
`Copies of third-party trademark registrations and Trademark Status
`Document Retrieval (“TSDR”) current status printouts of third-party
`registrations covering goods and services similar to those of Lupin and
`Ampel, obtained by Lupin’s attorneys. TBMP § 704.03(b)(1)(B).
`Third-party websites, listing the full URL and date accessed, showing use
`of the same third-party marks for goods and services similar to those of
`Lupin and Ampel, obtained by Lupin’s attorneys. TBMP §704.08(b).
`Media references, bearing sufficient information from which to obtain the
`publicly-available documents, and websites, listing the full URL and date
`accessed, regarding patient partner programs, all obtained by Lupin’s
`attorneys. TBMP §704.08(b).
`Copies of application and registration records for other trademark
`applications and registrations owned by Ampel, obtained from TSDR by
`Lupin’s attorneys. TBMP §704.03(b)(1)(B).
`
`Hospital websites, containing the full URL and date accessed, obtained by
`Lupin’s attorneys. TBMP §704.08(b).
`Media coverage of Ampel, obtained by Lupin’s attorneys from
`LexisNexis. TBMP §704.08(b).
`USPTO records for Patent No. 9,995,734 for which Ampel’s principal Dr.
`Peter Lipsky is a named inventor, obtained by Lupin’s attorneys from the
`USPTO’s Patent Application Information Retrieval portal (PAIR). TBMP
`§ 704.03(b)(1)(B).
`
`
`
`
`As with Lupin’s production of November 17, 2017, the overwhelming majority of these
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`documents consist of third-party, publicly-available materials that were not responsive to any
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`discovery requests other than Ampel’s exceedingly broad Interrogatory Nos. 21 and 22 and
`
`Document Request No. 13. These documents were never in the possession, custody, or control of
`
`Lupin, but were located through independent research conducted by Lupin’s outside attorneys.
`
`The remainder of the documents – a total of 50 pages – consists of either 1) images of the
`
`
`1 Lupin’s attorneys inadvertently produced two documents bearing Bates No. LUP003880. For ease of reference,
`Lupin is producing re-labelled documents LUP003880A and LUP003880B, attached to the Morales Decl. at K.
`Aside from the corrected numbering, these documents are identical to documents filed within Lupin’s testimony
`period.
`
`
`
`9
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`

`

`LUPIN mark on Lupin’s drugs themselves or 2) images of the LUPIN mark as it appears on product
`
`packaging. Prior to the August 2018 production, Lupin already had produced documents depicting
`
`the LUPIN mark as affixed directly to drugs. See, e.g., Morales Decl., Exh. G. Documents produced
`
`in August 2018 provided clearer images of the mark on such products.
`
`
`
`As to the second category of documents – images of the mark on product packaging – they
`
`depict Lupin’s mark as it actually appears on the physical product. For all intents and purposes, these
`
`images are practically identical to the packaging proofs produced by Lupin nearly a year and a half
`
`earlier. Examples of such documents are below:
`
`Included in Lupin’s March 10, 2017 production
`
`REDACTED
`
`Included in Lupin’s August 2018 production
`
`
`
`
`
`
`
`10
`
`

`

`Compare Morales Decl. at Exh. E with Berthold Trial Affidavit at Exh. B, pg. 1. There is no material
`
`difference arising from the product packaging proofs produced in March 2017 and the documents
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`depicting the labeling as it actually appears on the underlying product as reflected in the August 2018
`
`production. There is no surprise or prejudice to Ampel arising from the use of these documents at
`
`trial.
`
`
`
`During its trial testimony period, Lupin filed and served another affidavit of Dave Berthold.
`
`Dkt. 32 (“Berthold Trial Affidavit”) on August 13, 2018. In his trial testimony2, Mr. Berthold
`
`elaborated upon his previous sworn testimony that Lupin products are available in hospitals (as stated
`
`in the Berthold SJ Affidavit), providing specific names of certain hospital facilities where Lupin
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`products are provided. The Berthold Trial Affidavit also – and again, elaborating upon prior
`
`testimony set forth in the Berthold SJ Affidavit – attached images of the LUPIN mark as applied
`
`directly to pills. The Berthold Trial Affidavit also attached images of product packaging that were
`
`included in the August 2018 production.
`
`
`
`The rest of the August 2018 production, namely, publicly-available documents not obtained
`
`from Lupin’s records, was attached to Lupin’s Notice of Reliance filed August 9, 2018.
`
`
`
`III.
`
`LEGAL STANDARD
`
`“It is settled that a party in a Board proceeding generally has no obligation to identify all of
`
`its trial evidence prior to trial.” Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 2005
`
`TTAB LEXIS 600, at *24 (T.T.A.B. Dec. 2, 2005).
`
`The Federal Rules of Civil Procedure require a party to supplement discovery responses “in a
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`timely manner if the party learns that in some material respect the disclosure or response is
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`2 The Berthold Trial Affidavit was submitted in addition to the testimony set forth in the Berthold SJ Affidavit. Per
`the parties’ stipulation, the Berthold SJ Affidavit is admissible for all purposes at trial.
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`11
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`incomplete or incorrect, and if the additional or corrective information has not otherwise been made
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`known to the other parties during the discovery process or in writing.” Fed. R. Civ. P. 26(e)(1)(A).
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`More importantly, “[i]f a party that served a request for discovery receives a response thereto
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`that it believes to be inadequate, but fails to file a motion to challenge the sufficiency of the response,
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`it may not thereafter be heard to complain about the sufficiency thereof.” TBMP § 523.04; see also
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`Time Warner Entertainment Co. L.P. v. Jones, 65 U.S.P.Q.2d 1650, 1656 (T.T.A.B. 2002) (“We note
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`that, despite her apparent dissatisfaction with opposer’s interrogatory responses, applicant never filed
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`a motion to compel further responses from opposer; applicant will not now be heard to complain that
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`opposer's discovery responses were inadequate.”).
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`Moreover, a party may submit testimonial evidence in the form of an affidavit or declaration.
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`Within twenty days after service of the trial affidavit, the other party may elect to conduct a live
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`cross-examination of the witness. In this case, such election was required by September 4, 2018.
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`TBMP § 703.01(e).3
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`“If a party fails to provide information or identify a witness as required by Rule 26(a) or (e),
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`the party is not allowed to use that information or witness to supply evidence on a motion, at a
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`hearing, or at a trial, unless the failure was substantially justified or is harmless.” In determining
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`whether a claimed failure is substantially justified or harmless, the Board will consider:
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`1) the surprise to the party against whom the evidence would be offered; 2) the ability of
`that party to cure the surprise; 3) the extent to which allowing the testimony would disrupt
`the trial; 4) importance of the evidence; and 5) the nondisclosing party's explanation for its
`failure to disclose the evidence.
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`Kate Spade LLC v. Thatch, LLC, 126 U.S.P.Q.2d 1098, 1101 (T.T.A.B. 2018).
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`3 Lupin acknowledges the Board’s order deferring determination of Ampel’s motion to strike until final hearing.
`Dkt. 37. Lupin submits that Ampel’s objection is to the timeliness of the document production, rather than to the
`competency, relevancy, or materiality of the testimony. Therefore, such objection should have been made through
`the procedure for cross-examination. TBMP § 707.04; Fed. R. Civ. P. 32(d).
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`IV.
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`ARGUMENT
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`Lupin was under no obligation to disclose any of the documents and testimony to which
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`Ampel now belatedly objects. Lupin participated fully and in good faith in discovery. Ampel, on the
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`other hand, did not even seek discovery it now complains was withheld; never complained until now
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`about the sufficiency of Lupin’s discovery responses; failed to compel the documents and testimony
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`at issue; did not object to the presentation of the same type of evidence presented during summary
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`judgment briefing; and failed to cross-examine Mr. Berthold over his Trial Affidavit. Morales Decl.
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`at ¶ 20. Ampel has not – and cannot – demonstrate that it was harmed by any alleged late production.
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`Lupin respectfully submits that Ampel’s motion to strike should be denied in its entirety.
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`A. The Berthold Affidavit Is Entirely Proper
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`
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`The entire basis for Ampel’s motion is the purported untimeliness of Lupin’s August 2018
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`document production. According to Ampel, “[t]he portions of Berthold’s affidavit relying on such
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`documents, specifically paragraphs 3-7 of his affidavit, should also be struck or excluded.” Dkt. 36 at
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`3. The Board should not be misled by Ampel’s characterization of this portion of the Berthold Trial
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`Affidavit. Ampel’s characterization is, at best, inaccurate.
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`Ampel attempts to paint the entire August 2018 production and the Berthold Trial Affidavit
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`in broad brushstrokes, and, by extension, impugn Lupin’s conduct during discovery. Ampel quotes
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`20 discovery requests out of context and baldly characterizes Lupin’s conduct as “neither justified
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`nor harmless” without a single supporting fact, all in the hope that Ampel’s baseless allegations will
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`stick and the Board will exclude Lupin’s evidence. A simple review of the evidence, however, belies
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`Ampel’s mischaracterizations, and there is no basis to exclude any of the evidence Ampel challenges.
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`1. Ampel Waived Any Right It May Have Had to Object to the Berthold Trial Affidavit
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`As a threshold matter, Ampel’s motion to strike the Berthold Trial Affidavit is procedurally
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`improper. Since Lupin served its initial disclosures in June 2016, Ampel has been aware that Mr.
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`Berthold may have relevant information in this case. Nonetheless, Ampel did not depose Mr.
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`Berthold or any other witness. Notably, Ampel cancelled the lone deposition it had noticed during
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`discovery, the Rule 30(b)(6) deposition of Lupin, which included, among other topics, the use of the
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`LUPIN mark and marketing channels. See, e.g., Time Warner Entertainment Co. L.P. v. Jones, 65
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`U.S.P.Q.2d 1650, 1657 (T.T.A.B. 2002) (“Nor did applicant avail herself of the opportunity to notice
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`and take discovery depositions under Fed. R. Civ. P. 30(b)(6) of persons with knowledge of relevant
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`facts. In these circumstances, applicant’s claim that she was deprived of the opportunity to obtain
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`discovery regarding opposer’s case prior to trial is not persuasive.”). Mr. Berthold provided similar
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`testimony earlier via the Berthold SJ Affidavit in support of Lupin’s motion for summary judgment,
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`and Ampel did not object to the timeliness of such testimony. Rather, Ampel stipulated to the
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`admissibility at trial of the Berthold SJ Affidavit. Dkt. 26.
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`Once the Berthold Trial Affidavit was served, Ampel was required to elect cross-examination
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`within twenty days, that is, by September 4, 2018. Instead, on September 6, 2018, Ampel filed the
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`instant motion to strike. 37 C.F.R. § 2.123(c) (“When a party elects to take oral cross-examination of
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`an affiant or declarant, the notice of such election [for cross-examination] must be served on the
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`adverse party and a copy filed with the Board within 20 days from the date of service of the affidavit
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`. . . .” (emphas