UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
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`Mailed: August 8, 2016
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`Opposition No. 91229391
`Serial No. 86830732
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`Kansas State University
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`v.
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`MATTHEW H. SWYERS
`THE TRADEMARK COMPANY
`344 MAPLE AVE. WEST, PMB 151
`VIENNA, VA 22180
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`Vrana, John
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`Alicia Grahn Jones
`KILPATRICK TOWNSEND & STOCKTON LLP
`1100 Peachtree Street, Suite 2800
`Atlanta, GA 30309
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`ESTTA762708
`
`Important! Effective June 24, 2016, a revised Standard Protective Order
`will be applicable to all TTAB proceedings with certain exceptions. See the
`TTAB home page for more information:
`
`http://www.uspto.gov/trademarks-application-process/trademark-trial-and-
`appeal-board-ttab
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`The opposer (plaintiff) identified above has filed a notice of opposition to the
`registration sought by the above-identified application
`filed by applicant
`(defendant). Opposer has certified that it served a copy of the notice of opposition
`on applicant, or its attorney or domestic representative of record, as required by
`Trademark Rule 2.101(a). The electronic version of the notice of opposition, and of
`the entire proceeding, is viewable on the Board’s web page via the TTABVUE link:
`http://ttabvue.uspto.gov/ttabvue/v?qs=91229391.
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`APPLICANT MUST FILE AND SERVE ANSWER
`As required in the schedule set forth below, applicant must file an answer
`within forty (40) days from the mailing date of this order. (For guidance
`regarding when a deadline falls on a Saturday, Sunday or federal holiday, see
`Trademark Rule 2.196.) Applicant’s answer must comply with Fed. R. Civ. P. 8(b),
`must contain admissions or denials of the allegations in the notice of opposition, and
`may include available defenses and counterclaims. For guidance regarding the
`form and content of an answer, see Trademark Rule 2.106(b), and TBMP §§ 311.01
`and 311.02. Failure to file a timely answer may result in entry of default judgment
`and the abandonment of the application.
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`SERVICE OF ANSWER AND OF ALL FILINGS
`The answer, and all other filings in this proceeding, must be served in a manner
`specified in Trademark Rule 2.119(b), and must include proof of service. For
`guidance regarding the service and signing of all filings, see TBMP §§ 113-113.04.
`As noted in TBMP § 113.03, proof of service should be in the following certificate of
`service form:
`
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`I hereby certify that a true and complete copy of the foregoing (insert title of
`submission) has been served on (insert name of opposing counsel or party) by
`mailing said copy on (insert date of mailing), via First Class Mail, postage
`prepaid (or insert other appropriate method of delivery) to: (set out name and
`address of opposing counsel or party).
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`Signature__________________________
`Date_______________________________
`
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`The parties may agree to forward service copies by electronic transmission, e.g., e-
`mail. See Trademark Rule 2.119(b)(6) and TBMP §113.04. Pursuant to Trademark
`Rule 2.119(c), however, five additional days are afforded only to actions taken in
`response to papers served by first-class mail, "Express Mail," or overnight courier,
`not by electronic transmission.
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`LEGAL RESOURCES AVAILABLE AT WEB PAGE
`Proceedings will be conducted in accordance with the Trademark Rules of Practice,
`set forth in Title 37, part 2, of the Code of Federal Regulations. These rules, as well
`as amendments thereto, the Manual of Procedure (TBMP), information on
`Accelerated Case Resolution (ACR) and Alternative Dispute Resolution (ADR), and
`many Frequently Asked Questions, are available on the Board’s web page, at:
`http://www.uspto.gov/trademarks/process/appeal/index.jsp.
` For
`a
`general
`description of Board proceedings, see TBMP §102.03.
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`FILING PAPERS ONLINE
`The link to the Board’s electronic filing system, ESTTA (Electronic System for
`Trademark Trials and Appeals), is at the Board’s web page, at:
`http://estta.uspto.gov/. The Board strongly encourages parties to use ESTTA
`for all filings. ESTTA provides various electronic filing forms; some may be used as
`is, and others may require attachments. For technical difficulties with ESTTA,
`parties may call 571-272-8500. Due to potential technical issues, parties should not
`wait until the last date of a deadline for filing papers. The Board may decline to
`consider any untimely filing.
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`OPPOSER’S OBLIGATION IF SERVICE IS INEFFECTIVE
`If a service copy of the notice of opposition is returned to opposer as undeliverable or
`opposer otherwise becomes aware that service has been ineffective, opposer must
`notify the Board in writing within ten (10) days of the date on which opposer learns
`that service has been ineffective. Notification to the Board may be provided by any
`means available for filing papers with the Board, but preferably should be provided
`by written notice filed through ESTTA. For guidance regarding notice of
`ineffective service, see Trademark Rule 2.101(b) and TBMP § 309.02(c)(1).
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`While opposer is under no obligation to search for current correspondence address
`information for, or investigate the whereabouts of, any applicant opposer is unable
`to serve, if opposer knows of any new address information for the applicant, opposer
`must report the address to the Board. If an opposer notifies the Board that a
`service copy sent to an applicant was returned or not delivered, including any case
`in which the notification includes a new address for the applicant discovered by or
`reported to opposer, the Board will give notice under Trademark Rule 2.118.
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`FORMAT FOR ALL FILINGS
`Trademark Rule 2.126 sets forth the required form and format for all filings. The
`Board may decline to consider any filing that does not comply with this rule,
`including, but not limited to motions, briefs, exhibits and deposition transcripts.
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`CONFERENCE, DISCOVERY, DISCLOSURE AND TRIAL SCHEDULE
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`Time to Answer
`Deadline for Discovery Conference
`Discovery Opens
`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures
`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures
`Plaintiff's 15-day Rebuttal Period Ends
`
`9/17/2016
`10/17/2016
`10/17/2016
`11/16/2016
`3/16/2017
`4/15/2017
`5/30/2017
`7/14/2017
`7/29/2017
`9/12/2017
`9/27/2017
`10/27/2017
`
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`PARTIES ARE REQUIRED TO HOLD DISCOVERY CONFERENCE
`As noted in the schedule above, the parties are required to schedule and to
`participate with each other in a discovery conference by the deadline in the
`schedule. For guidance, see Fed. R. Civ. P. 26(f), Trademark Rule 2.120(a)(2), and
`TBMP § 401.01. In the conference, the parties are required to discuss (1) the nature
`of and basis for their respective claims and defenses, (2) the possibility of settling or
`at least narrowing the scope of claims or defenses, and (3) arrangements for
`disclosures, discovery and introduction of evidence at trial, if the parties are unable
`to settle at this time.
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`Discussion of amendments of otherwise prescribed procedures can include
`limitations on disclosures and/or discovery, willingness to stipulate to facts, and
`willingness to stipulate to more efficient options for introducing at trial information
`or materials obtained through disclosures or discovery.
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`The parties must hold the conference in person, by telephone, or by any means on
`which they agree. A Board interlocutory attorney or administrative trademark
`judge will participate in the conference, upon request of any party, provided that
`such request is made no later than ten (10) days prior to the conference deadline.
`See Trademark Rule 2.120(a)(2). A request for Board participation must be made
`either through an ESTTA filing, or by telephone call to the assigned interlocutory
`attorney whose name is on the TTABVUE record for this proceeding. A party
`should request Board participation only after the parties have agreed on possible
`dates and times for the conference. A conference with the participation of a Board
`attorney will be by telephone, and the parties shall place the call at the agreed date
`and time, in the absence of other arrangements made with the Board attorney.
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`PROTECTIVE ORDER FOR CONFIDENTIAL INFORMATION
`The Board's Standard Protective Order is applicable, and is available at:
`http://www.uspto.gov/trademarks/process/appeal/guidelines/stndagmnt.jsp. During
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`their conference, the parties should discuss whether they agree to supplement or
`amend the standard order, or substitute a protective agreement of their choosing,
`subject to approval by the Board. See Trademark Rule 2.116(g) and TBMP § 412.
`The standard order does not automatically protect a party's confidential information
`and its provisions for the designation of confidential information must be utilized as
`needed by the parties.
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`ACCELERATED CASE RESOLUTION
`During their conference, the parties should discuss whether they wish to seek
`mediation or arbitration, and whether they can stipulate to follow the Board's
`Accelerated Case Resolution (ACR) process for a more efficient and economical
`means of obtaining the Board’s determination of the proceeding. For guidance
`regarding ACR, see TBMP § 528. Detailed information on ACR, and examples of
`ACR cases and suggestions, are available at the Board's webpage, at:
`http://www.uspto.gov/trademarks/process/appeal/index.jsp.
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`DISCOVERY AND INTERLOCUTORY PROCEDURES
`For guidance regarding discovery, see Trademark Rule 2.120 and TBMP Chapter
`400, regarding the deadline for and contents of initial disclosures, see Trademark
`Rule 2.120(a)(2) and TBMP § 401.02, and regarding the discoverability of various
`matters, see TBMP § 414. Certain provisions of Fed. R. Civ. P. 26 are applicable in
`modified form. The interlocutory attorney has discretion to require the parties, or
`to grant a request made by one or both parties, to resolve matters of concern to the
`Board, or a contested motion, by telephone conference. See Trademark Rule
`2.120(i)(1) and TBMP § 502.06(a).
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`TRIAL
`For guidance regarding trial and testimony procedures, see Trademark Rules 2.121,
`2.123 and 2.125, as well as TBMP Chapter 700. The parties should review
`authorities regarding the introduction of evidence during the trial phase, including
`by notice of reliance and by taking testimony from witnesses. For instance, any
`notice of reliance must be filed during the filing party's assigned testimony period,
`with a copy served on all other parties, and any testimony of a witness must be both
`noticed and taken during the party's testimony period. A party that has taken
`testimony must serve on each adverse party a copy of the transcript of such
`testimony, together with copies of any exhibits introduced during the testimony,
`within thirty (30) days after completion of the testimony deposition.
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`Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An oral
`hearing is not required, but will be scheduled upon request of any party, pursuant
`to Trademark Rule 2.129. For guidance regarding briefing and an oral hearing, see
`TBMP §§ 801-802.
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`PARTIES NOT REPRESENTED BY COUNSEL
`This proceeding is similar to a civil action in a federal district court. The Board
`strongly advises all parties to secure the services of an attorney who is familiar
`with trademark law and Board procedure. Strict compliance with the Trademark
`Rules of Practice and, where applicable, the Federal Rules of Civil Procedure, is
`required of all parties, whether or not they are represented by counsel. Parties not
`represented by such an attorney are directed to read the Frequently Asked
`Questions,
`available
`at
`the
`Board’s
`web
`page:
`http://www.uspto.gov/trademarks/process/appeal/index.jsp.
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`PARTIES MUST NOTIFY BOARD OF OTHER PENDING ACTIONS
`If the parties are, or during the pendency of this proceeding become, parties in
`another Board proceeding or a civil action involving the same or related marks, or
`involving any issues of law or fact which are also in this proceeding, they shall
`notify the Board immediately, so the Board can consider whether consolidation
`and/or suspension of proceedings is appropriate. See TBMP § 511.
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