Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA794154
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`Filing date:
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`01/10/2017
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91226562
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Attachments
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`Defendant
`Century International Arms, Inc.
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`DOUGLAS R WOLF
`WOLF GREENFIELD & SACKS PC
`600 ATLANTIC AVE FL 23
`BOSTON, MA 02210-2206
`UNITED STATES
`drwtrademarks@wolfgreenfield.com, sgstrademarks@wolfgreenfield.com, jljl-
`wtrademarks@greenfield.com
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`Reply in Support of Motion
`
`Stephanie G. Stella
`
`sgstrademarks@wolfgreenfield.com
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`/Stephanie G. Stella/
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`01/10/2017
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`CIA Reply ISO Motion for Reconsideration of Decision on Motion.pdf(30498
`bytes )
`EXHIBIT A.pdf(298399 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
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`PALMETTO STATE ARMORY, LLC
`) Opposition No. 91226562
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`Opposer,
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`vs.
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`CENTURY INTERNATIONAL ARMS,
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`INC.
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`Applicant.
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`____________________________________)
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`Application Serial No. 86/418943
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`For the mark THE AMERICAN AK
`(STANDARD CHARACTER MARK)
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`APPLICANT’S REPLY IN SUPPORT OF ITS MOTION FOR
`RECONSIDERATION IN PART OF DECISION ON MOTION
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`As the Board held in its precedential decision in Kairos Institute of Sound Healing, LLC
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`v. Doolittle Gardens, LLC, “a motion to compel must precede a motion for sanctions. A motion
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`for sanctions is only appropriate if a motion to compel these respective disclosures has already
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`been granted.” 88 U.S.P.Q.2d 1541, at *3 (T.T.A.B. 2008) (citing Notice of Final Rulemaking,
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`Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42256
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`(Aug. 1, 2007) (emphasis added). Failure to comply with a Board order relating to disclosure or
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`discovery is “a prerequisite to a motion for sanctions.” Kairos Institute, 88 U.S.P.Q.2d 1541, at
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`*3 (emphasis added).
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`Contrary to Opposer’s contention, Applicant Century International Arms, Inc.’s (“CIA”)
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`decision not to oppose the combined motion to compel and for sanctions has no bearing on the
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`fact that the Board erred in granting sanctions that were not available to Opposer as a matter of
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`law. Even an unopposed motion must be appropriately based in law, and Opposer tellingly cites
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`no support for its contention that Applicant’s failure to oppose the motion negates the applicable
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`rules, regulations, and precedential case law holding that a party’s violation of a Board order
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`compelling discovery is a prerequisite to a motion for sanctions.1 Indeed, the Board’s holdings
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`in the wake of Kairos Institute support the opposite. For example, in the Board’s precedential
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`decision in Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposer omitted any argument against
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`Applicant’s motion for sanctions, which was combined with its motion to compel. See Exh. A,
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`Amazon’s Brief. Nevertheless, the Board—which granted the motion to compel—sua sponte
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`held that “applicant’s motion for sanctions, it is premature, and therefore will be given no further
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`consideration, because opposer has not, at this point, failed ‘to comply with an order of the
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`Trademark Trial and Appeal Board relating to disclosure or discovery.’” 93 U.S.P.Q.2d 1702
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`(T.T.A.B. 2009) (citing Trademark Rule 2.120(g)(1)). Cf. HighBeam Marketing, LLC v.
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`Highbeam Research, LLC, 85 U.S.P.Q.2d 1902 (T.T.A.B. 2008) (granting motion for sanctions
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`appropriately filed by Applicant after Opposer failed to comply with Board order compelling
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`discovery), and M.C.I. Foods Inc. v. Bunte, 86 U.S.P.Q.2d 1044, 1048 (T.T.A.B. 2008)
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`(“Because M.C.I. failed to comply with the Board’s orders [granting motions to compel],
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`sanctions are appropriate.”). Thus, the Board recognized Applicant’s procedural error, and
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`appropriately declined to consider the motion for sanctions.
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`CIA is not, as Opposer argues, using its Motion for Reconsideration as a second
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`opportunity to oppose Opposer’s motion to compel. Rather, CIA is using it for its intended
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`purpose, in accordance with Section 518 of the Trademark Trial and Appeal Board Manual of
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`1 Notably, the Board in Kairos Institute explained that while its notice of institution of an
`opposition “sets a deadline for the parties to provide initial disclosures, it does not constitute an
`‘order of the Trademark Trial and Appeal Board relating to disclosure’ within the contemplation
`of Trademark Rule 2.120(g)(1),” and “is merely a scheduling order, whereas the type of order
`that is contemplated as a prerequisite to a motion for sanctions under Trademark Rule
`2.120(g)(1) is an order granting or denying a motion to compel or a motion for a protective
`order.” 88 USPQ2d 1541, at *3.
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`2
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`Procedure, to request that the Board modify its order because—“based on the facts before it and
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`the prevailing authorities, the Board erred”—when it imposed sanctions against CIA.
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`CIA’s motion introduces no new evidence in an attempt to argue against Opposer’s
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`motion to compel—indeed, CIA agrees with the Board’s decision to grant the motion. However,
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`CIA’s Motion clearly demonstrates that, based on the precedential case law cited above and the
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`evidence before it at the time the Board issued its decision, the Board’s ruling imposing
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`sanctions is in error and requires appropriate change. Like it did in Amazon Technologies, the
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`Board should have declined to consider Opposer’s request for sanctions as premature.
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`As Applicant noted in its opening brief, CIA: participated in the May 5, 2016 discovery
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`conference, and served its Initial Disclosures, First Set of Requests for Production of Documents
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`and Things to Opposer, and First Set of Interrogatories to Opposer, on November 1, 2016, which
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`was within the original discovery period set by the Board’s February 25, 2016 Scheduling Order,
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`and prior to the Board’s November 8, 2016 decision granting Opposer’s motion to compel and
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`for sanctions; and complied with the Board’s order compelling discovery when, on December 8,
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`2016, it served on Opposer its formal responses to Opposer’s Interrogatories and Requests for
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`the Production of Documents, including its first document production.
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`In view of the foregoing, and the arguments set forth in its opening brief, Applicant CIA
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`respectfully requests that the Board reverse as premature its November 8, 2016 Order imposing
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`sanctions, i.e., its ruling that CIA has waived and forfeited its right to conduct any discovery
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`against Opposer Palmetto State Armory, and deem as timely served CIA’s November 1, 2016
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`discovery requests to Opposer.
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`[signature on next page]
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`3
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`Dated: January 10, 2017
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` Respectfully submitted,
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`John L. Welch
`Stephanie G. Stella
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, Massachusetts 02210
`617-646-8000 (Telephone)
`617-646-8646 (Fax)
`jwelch@wolfgreenfield.com
`sstella@wolfgreenfield.com
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`Attorneys for Applicant
`Century International Arms, Inc.
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`4
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that on January 10, 2017, I served a copy of Applicant’s Reply In
`Support of Its Motion for Reconsideration In Part of Decision on Motion on counsel for
`Opposer via first-class mail, postage-prepaid, addressed to:
`
`
`Chad N. Johnston
`WILLOUGHBY & HOEFER, P.A.
`930 Richland Street Post Office Box 8416
`Columbia, South Carolina 29202-8416
`(803) 252-3300
`cjohnston@willoughbyhoefer.com
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`
`
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`By:
`Stephanie G. Stella
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`Attorney Docket: C0820.50002US00
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`EXHIBIT A
`EXHIBIT A
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`AMAZONTOOSM
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`'
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`‘7 Q 00 /, /o‘l é
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`TTAB
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`Opposition No.: 91187118
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`CERTIFICATE OF MAILING BY "EXPRESS MAIL"
`"Express Mail" mailing label no_
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`I hereby certify that this correspondence and all listed attachments are
`addressed to Commissioner for Trademarks, PO. Box 1451. Alexandria,
`VA 22313-1451, and are being deposited with the United States Postal
`Service "Express Mail Post Office to Addressee" service on
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`July 20, 2009
`ate)
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`‘11
`Susan M. Natland
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`AMAZON TECHNOLOGIES, INC.,
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`Opposer,
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`V.
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`JEFFREY S. WAX & STEVEN M. FREELAND,
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`Applicants.
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`AMAZON TECHNOLOGIES, INC.’S
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`RESPONSE TO APPLICANTS’ MOTION TO COMPEL
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`Commissioner for Trademarks
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`PO. Box 1451
`Alexandria, VA 22313—1451
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`Dear Sir or Madam:
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`llllllllllllllllllllllllllllllllIlllllllllllllllll
`07-22-2009
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`. E Eider-t
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`L ’"Tf:‘/"‘ "eil Pcpl CI.
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`336
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`Amazon Technologies, Inc. (“Amazon”) hereby responds to Applicants’ Motion to Compel.
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`In
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`Jeffrey S. Wax and Steven M. Freeland’s (“Applicants”) Motion to Compel, Applicants move,
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`pursuant to Rule 523.01 of the US. Trademark Trial and Appeal Board and 37 CFR § 2.120(e), for an
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`order compelling Amazon’s substantive responses to Interrogatories Nos. 1-29, Requests for
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`Admissions Nos. 1-91, and Requests for Production of Documents and Things Nos. 1—5 1 .1
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`1 Moreover, on July 17, 2009 (two days before the deadline for Amazon to respond to Applicants” Motion to Compel),
`Applicant filed a document entitled “Exhibits 1 And J To Be Considered With Applicant’s Motion To Compel Opposer’s
`Substantive Responses To Discovery” (the “Supplemental Motion”). The Supplemental Motion attached Amazon’s First
`Set of Interrogatories, Nos. 1-37 and Amazon’s First set of Requests for Production of Documents and Things, Nos. 1—76
`and set forth some additional arguments. As a preliminary matter, Amazon notes that the Supplemental Motion is irrelevant
`and untimely. As such, it should be stricken. If the Board considers Applicants’ Supplemental Motion, Amazon notes that,
`as mentioned below, Applicants have refused to properly respond to many of Amazon’s Discovery Requests. Further, while
`Applicants allege that they requested electronic copies of these discovery requests from Amazon, the email making such a
`request was sent at 6:05 Q.m. on July 16, 2009 Thus, Amazon did not even have time to respond to this email before
`Applicants filed their Supplemental Motion.
`In any event, the request to Amazon for electronic copies of these discovery
`requests was made seventeen (17) days after Applicants filed Applicants’ Motion to Compel. Further, whether Amazon
`provided Applicants with electronic copies of the discovery requests or Applicants made their own electronic copies, the
`size of the pdfs documents would not have changed.
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`-1-
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`specifically, in Applicants’ Motion to Compel, Applicants allege that “[o]n May 12, 2009,
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`Applicant served upon Opposer Interrogatories Nos. 1-29, Requests for Admissions Nos. 1-91, and
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`Requests for Production of Documents and Things Nos. 1-51” (collectively, “Applicants’ Discovery
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`Requests”) and that Amazon failed to substantively respond to Applicants’ Discovery Requests. While
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`Applicants are correct that on May 12, 2009, Applicants mailed Applicants’ Discovery Requests to
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`counsel for Amazon, pursuant to 37 CFR § 2.120(a)(3), “[a] party must make its initial disclosures
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`prior to seeking discovery, absent modification of this requirement by a stipulation of the parties
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`approved by the Board, or a motion granted by the Board, or by order of the Board.”
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`(Emphasis
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`added).2
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`However, to date, Applicants have not served their Initial Disclosures. Due to Applicants’
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`failure to serve their Initial Disclosures, Applicants have not complied with 37 CFR § 2.120(a)(3).
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`Accordingly, Applicants were not (and are not) entitled to serve any discovery requests.3 Amazon
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`notes that in its objections to Applicants’ Discovery Requests, Amazon stated that it was exempt from
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`responding (at this time), due to Applicants’ failure to comply with the applicable rules.4
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`As Applicants were not entitled to serve any discovery requests, Amazon respectfully requests
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`that the Trademark Trial and Appeal Board (the “Board”) issue an order denying Applicants’ Motion to
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`Compel in its entirety, including, an order denying Applicants’ (1) request that they be given additional
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`time to conduct follow-up discovery, (2) request that Amazon be ordered to provide substantive
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`responses and production to Applicants’ Discovery Requests; (3) request for an order extending
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`discovery solely for the benefit of Applicants; and (4) motion for sanctions.
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`Amazon notes that, in making this request, Applicants have failed to show that good cause exists
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`for providing Applicants with any additional time to send additional or follow-up discovery requests or
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`take any discovery depositions. E T.M.B.P. 509.01.
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`In fact, Amazon notes that Applicants’ Motion to
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`Compel was filed only one (1) day before the discovery period closed.5 Thus, Applicants’ failure to have
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`2 As is the standard practice of the Board, the January 31, 2009 deadline for the parties to serve Initial Disclosures was set
`forth in the October 23, 2008 Trial Order.
`3 Amazon notes that the parties did not agree to waive Initial Disclosures and that Amazon’s Initial Disclosures were
`properly served on January 30, 2009. Moreover, Applicants did not motion the Board for an order waiving Initial
`Disclosures. Amazon further notes that Applicant, Jeffrey Wax, a licensed member of the California Bar, indicates on his
`website that his legal practice areas include representation in trademark oppositions (See Exhibit A). As such, Mr. Wax was
`obviously well aware of 37 CFR § 2.120(a)(3), which applies to all opposition proceedings commenced on or after
`November 1, 2007.
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`in Amazon’s June 25, 2009 letter, Amazon once again advised
`4 As is discussed in Applicants’ Motion to Compel,
`Applicants that Amazon was not obligated to provide substantive responses to Applicants’ Discovery Requests.
`5
`In Applicants’ Motion to Compel, Applicants argue that they are entitled to additional time to propound “follow-up”
`discovery because Applicants’ Discovery Requests are “virtually identical” to Amazon’s Discovery Requests. Applicants
`-2-
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`sufficient. time to take “follow—up discovery” (or even any discovery, since, to date, Applicants have
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`not properly served any discovery), is due to Applicants’ own lack of diligence. & Luehrmann v.
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`Kwik Kopy Cog, 2 USPQ2d 1303 (T.T.A.B. 1987) (desire to conduct follow-up discovery is not good
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`cause for extension of discovery period Where party seeking extension did not serve initial discovery
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`requests until late in discovery period).
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`In light of the foregoing, Amazon respectfully requests that the Board deny Applicants” Motion
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`and reset the Scheduling Order to provide Applicants with the same period of time it had under the
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`prior order, namely, one (1) day remaining in the discovery period.
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`Respectfiilly submitted,
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
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`Dated: July 20, 2009
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`2040 Main Street, Fourteenth Floor
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`Irvine, CA 92614
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`(949) 760—0404
`Attorneys for Opposer,
`Amazon Technologies, Inc.
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`7494500
`072009
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`______—_____—____—__—_____—____—__________—__—__————————-
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`have, however, failed to mention that they failed to properly respond to many of Amazon’s Discovery Requests. Amazon is
`currently attempting to resolve Applicants’ failures without the Board’s intervention.
`-3-
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`CERTIFICATE OF SERVICE
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`I hereby certify that I served a copy of the foregoing AMAZON TECHNOLOGIES, INC.’S
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`RESPONSE TO APPLICANTS’ MOTION TO COMPEL upon Applicants’ correspondent of
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`record by depositing one copy thereof in the United States Mail, first class postage prepaid and by
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`depositing one copy thereof in the United States Mail, Certified Mail on July 20, 2009, upon counsel
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`for Steven M. Freeland, upon Jeffrey S. Wax, as well as Applicants’ correspondence of record as
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`follows:
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`Jeffrey S. Wax
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`Wax Law Group
`1017 L Street #425
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`Sacramento, California 95 814
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`Philip J. Graves
`Graves Law Office, PO.
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`12121 Wilshire Blvd, Suite 775
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`Los Angeles, CA 90025
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`EXHIBIT A
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`lilax lam lirmip
`
`titre:
`
`Jeffrey ii. lilax
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`Professionals llig Flam
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`Education:
`
`Ming 5. 11m
`Justin mam
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`Purdue University
`Bachelor of Science in Electrical Engineering
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`fimamm “m”
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`iticzguali’ita
`
`that
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`Indiana University
`Bachelor of Science in Biology
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`UCalifornia Western School of Law, 1990
`Juris Doctor
`Dean's Honor List
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`Areas of Practice:
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`
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`He focuses on the procurement, protection and management of intellectual
`property rights for high technology companies. He has handled the
`preparation and prosecution of numerous patent appiications for NASDAQ
`companies.
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`In particular, he has experience across a broad spectrum of technical fields
`including analog and digital electronics, communications systems, processors,
`hard drives, semiconductor technologies, networks, hardware, software,
`signal processing, aerOSpace technologies, powerplants, mechanical
`engineering and medical arts.
`
`Other practice areas include intellectual property iicense agreements, patent
`infringement and validity opinions and related analysis, providing intellectuai
`property litigation support, trademark clearance and registration,
`representation in trademark oppositions, and copyright issues.
`
`Industry experience:
`Previously employed with Teiedyne Isotopes as a Laboratory Scientist
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`Litigation experience:
`He has handled lawsuits as first chair through bench trials and jury trials.
`Currently, he appiies his litigation experience to strategically handle patent
`applications and other intellectual property.
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`Admissions:
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`Registered patent attorney with the US. Patent and Trademark Office;
`Federal and State Courts of Caiifornia; US. District Court for the Northern
`District of California; Federal and State Courts of Illinois; and U.S. District
`Court for the Northern District of Illinois.
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`Associations:
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`American Intellectual Property Law Association; Silicon Valley Intellectual
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`http://www.waxlawgroup.com/23801/19901.html[7/16/2009 2:02:51 PM]
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`c..J
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`Property Law Association; Association of Trial Lawyers of America; Institute
`of Eiectricai and Electronics Engineers, Inc. (XEEE); American Bar Association.
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