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`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: June 26, 2017
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`Opposition No. 91235231
`Serial No. 87012317
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`FRANK M CAPRIO
`BRADLEY ARANT BOULT CUMMINGS LLP
`200 CLINTON AVENUE WEST
`SUITE 900
`HUNTSVILLE AL 35801 UNITED STATES
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`Nike, Inc.
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`v.
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`Gronk Nation, L.L.C.
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`HELEN HILL MINSKER
`BANNER & WITCOFF LTD
`10 SOUTH WACKER DRIVE
`SUITE 3000
`CHICAGO IL 60606 UNITED STATES
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`Lalita Webb, Paralegal Specialist:
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`NOTICE OF INSTITUTION
`The opposer (plaintiff) identified above has filed a notice of opposition to the registra-
`tion sought by applicant (defendant) in the above-identified application. This notice
`of institution is forwarded pursuant to Trademark Rules 2.105(b) and (c), and consti-
`tutes service of the notice of opposition on applicant. An electronic version of the no-
`tice of opposition is viewable on TTABVUE at http://ttabvue.uspto.gov/ttabvue/. See
`Trademark Rule 2.105(a). The parties should diligently monitor this proceeding via
`TTABVUE.
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`APPLICANT MUST FILE ANSWER THROUGH ESTTA
`As required in the schedule below, applicant must file an answer within forty
`(40) days from the mailing date of this order. Failure to file a timely answer may
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`Opposition No. 91235231
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`result in the entry of default judgment and abandonment of the application. Regard-
`ing when a deadline falls on a Saturday, Sunday or federal holiday, see Trademark
`Rule 2.196. Applicant must file the answer through ESTTA - Electronic System for
`Trademark Trials and Appeals, unless ESTTA is unavailable due to technical prob-
`lems or extraordinary circumstances are present. An answer filed on paper under
`these limited circumstances must be accompanied by a Petition to the Director (and
`the required fee under Trademark Rule 2.6). See Trademark Rule 2.106(b)(1). In sub-
`stance, applicant’s answer must comply with Fed. R. Civ. P. 8(b); it must admit or
`deny the allegations in the notice of opposition, and may include available defenses
`and counterclaims. Regarding the form and content of an answer, see Trademark Rule
`2.106(b)(2) and TBMP § 311.
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`DUTY TO MAINTAIN ACCURATE CORRESPONDENCE INFORMATION
`Throughout this proceeding, the parties, and their attorneys or representatives, must
`notify the Board of any correction or update of physical address and email address,
`and should use the ESTTA change of address form. See Trademark Rule 2.18(b);
`TBMP § 117.
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`SERVICE OF ANSWER AND OF ALL SUBMISSIONS
`The service of the answer, and all other submissions in this proceeding, and of all
`matters that are required to be served but not required to be filed in the proceeding
`record, must be by email unless the parties stipulate otherwise. Trademark Rule
`2.119(b). In the absence of a stipulation, service may be by other means only under
`the limited circumstances and in a manner specified in Trademark Rule 2.119(b).
`Regarding the signing and service of all submissions, see TBMP §§ 113-113.04.
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`The answer, and all other submissions, must include proof of service. As noted in
`TBMP § 113.03, proof of service may be in the following certificate of service form:
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`I hereby certify that a true and complete copy of the foregoing (in-
`sert title of submission) has been served on (insert name of oppos-
`ing counsel or party) by forwarding said copy on (insert date of
`mailing), via email (or insert other appropriate method of deliv-
`ery) to: (set out name, and address or email address of opposing
`counsel or party).
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`Signature__________________________
`Date_______________________________
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`SUBMIT ALL FILINGS ONLINE VIA ESTTA
`Submissions must be filed via ESTTA, the Board’s online filing system, unless
`ESTTA is unavailable due to technical problems or extraordinary circumstances are
`present. Trademark Rule 2.126(a). Submissions may be filed in paper form only un-
`der the limited circumstances specified in Trademark Rule 2.126(b), with a required
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`Opposition No. 91235231
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`the Board’s web page:
`is accessible at
`written explanation. ESTTA
`http://estta.uspto.gov/. The page has instructions and tips. ESTTA offers various
`forms, some of which may require attachments and/or a fee. For technical questions,
`a party may call 571-272-8500 (Mon. - Fri. 8:30 - 5:00 ET) or email ESTTA@uspto.gov.
`This proceeding involves several deadlines, and due to potential technical issues, par-
`ties should not wait until the deadline to submit filings. The Board may decline to
`consider an untimely submission. Moreover, Trademark Rule 2.126 sets forth the
`required form and format for all submissions (e.g., page limitations), and the Board
`may decline to consider any submission that does not comply with this rule, in-
`cluding, 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 Due
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures Due
`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures Due
`Plaintiff's 15-day Rebuttal Period Ends
`Plaintiff's Opening Brief Due
`Defendant's Brief Due
`Plaintiff's Reply Brief Due
`Request for Oral Hearing (optional) Due
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`8/5/2017
`9/4/2017
`9/4/2017
`10/4/2017
`2/1/2018
`3/3/2018
`4/17/2018
`6/1/2018
`6/16/2018
`7/31/2018
`8/15/2018
`9/14/2018
`11/13/2018
`12/13/2018
`12/28/2018
`1/7/2019
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`PARTIES ARE REQUIRED TO HOLD DISCOVERY CONFERENCE
`The parties are required to schedule and hold a discovery conference by the deadline
`in the schedule in this order, or as reset by the Board. In the conference, the parties
`are required to discuss, at a minimum, 1) the nature and basis of their claims and
`defenses, 2) the possibility of promptly settling, or at least narrowing the scope of
`claims or defenses, and 3) arrangements for disclosures, discovery, preserving discov-
`erable information and introduction of evidence at trial. For guidance, see Fed. R. Civ.
`P. 26(f), Trademark Rule 2.120(a)(2)(i) and TBMP §§ 401.01 and 408.01(a).
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`The parties must hold the conference in person, by telephone or by a means on which
`they agree. A Board interlocutory attorney or administrative trademark judge will
`participate in the conference either upon request of any party made no later than ten
`(10) days prior to the conference deadline, or when the Board deems it useful to have
`Board involvement. See Trademark Rule 2.120(a)(2)(i). A request for Board partici-
`pation must be made either through ESTTA, or by telephone call to the assigned in-
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`Opposition No. 91235231
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`terlocutory attorney named on the TTABVUE record for this proceeding. A party re-
`questing Board participation should first determine possible dates and times when
`all parties are available. A conference with a Board attorney’s participation will be
`by telephone in accordance with the Board’s instructions.
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`For efficiency, the parties may stipulate to various procedural and substantive dis-
`closure, discovery and trial matters (e.g., modification of deadlines and obligations)
`upon written stipulation and approval by the Board. Trademark Rule 2.120(a)(2)(iv)
`provides a non-exhaustive list of matters to which parties may stipulate. The best
`practice is to reduce all stipulations to writing. If email service is not practical, such
`as for voluminous document production in discovery, the parties should discuss in the
`conference how production will be made. The parties, and their attorneys or repre-
`sentatives, have a duty to cooperate in the discovery process. TBMP § 408.01.
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`PROTECTIVE ORDER FOR CONFIDENTIAL INFORMATION
`The Board's Standard Protective Order is automatically imposed in all inter partes
`proceedings, and is available at: https://www.uspto.gov/trademarks-application-pro-
`cess/appealing-trademark-decisions/standard-documents-and-guidelines-0. During
`their conference, the parties should discuss whether they will use an alternative or
`modified protective order, subject to approval by the Board. See Trademark Rule
`2.116(g) and TBMP § 412. The standard order does not automatically protect confi-
`dential information; its provisions for designating confidential information must be
`utilized as needed by the parties. Trademark Rule 2.126(c) sets forth the procedure
`for filing confidential submissions.
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`ACCELERATED CASE RESOLUTION (ACR)
`During their conference, the parties are to discuss whether they wish to seek media-
`tion or arbitration, and whether they can stipulate to the Board's Accelerated Case
`Resolution (ACR) process for a more efficient and cost-effective means of obtaining
`the Board’s determination of the proceeding. For details, and examples of ACR pro-
`ceedings, see TBMP § 528, and the Board's webpage: http://www.uspto.gov/trade-
`marks-application-process/trademark-trial-and-appeal-board-ttab.
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`INITIAL DISCLOSURES AND DISCOVERY
`Regarding the deadline for and contents of initial disclosures, see Trademark Rules
`2.120(a)(1) and (2)(i), and TBMP § 401.02. Regarding deadlines for serving and re-
`sponding to discovery, see Trademark Rule 2.120(a)(3) and TBMP § 403.03. Certain
`provisions of Fed. R. Civ. P. 26 are applicable in modified form. Note that written
`discovery (interrogatories, requests for production, requests for admission) must be
`served early enough so that responses will be due no later than the close of discov-
`ery. Regarding the scope and limits of discovery, see TBMP 414; discoverable items
`may include documents, tangible things, and electronically stored information (ESI).
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`MOTIONS
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`Certain provisions of Fed. R. Civ. P. 11 apply to all submissions in Board proceedings.
`See TBMP § 527.02. Regarding available motions, see TBMP Chapter 500. Regarding
`applicable deadlines to respond to motions, depending on the motion filed, see Trade-
`mark Rules 2.127(a) and (e)(1). When a party timely files a potentially dispositive
`motion the proceeding is suspended with respect to all matters not germane to the
`motion. See Trademark Rule 2.127(d). In addressing motions or other filings, if it
`appears to the Board that a telephone conference would be beneficial, or upon request
`of one or both parties, the Board may schedule a conference. See Trademark Rule
`2.120(j)(1) and TBMP § 502.06(a).
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`PRETRIAL DISCLOSURES, TRIAL AND BRIEFING
`Regarding the procedures and deadlines for pretrial disclosures and trial, and specif-
`ically the noticing, taking, serving and submitting of evidence and testimony, see
`Trademark Rules 2.120(k), 2.121, 2.122, 2.123 and 2.125, as well as TBMP Chapter
`700. The parties should review these authorities. For example: witness testimony
`may be submitted in the form of affidavit or declaration subject to the right to oral
`cross examination; transcripts of testimony depositions, with exhibits, must be served
`on each adverse party within thirty (30) days after completion of taking the testi-
`mony; certified transcripts and exhibits must be filed, with notice of such filing served
`on each adverse party; and all notices of reliance must be submitted during the sub-
`mitting party's assigned testimony period and must indicate generally the relevance
`the evidence and associate it with one or more issues.
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`Main 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 separate notice timely filed
`pursuant to Trademark Rule 2.129(a). Regarding briefs and oral hearings, see TBMP
`§§ 801-802.
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`LEGAL RESOURCES AVAILABLE AT WEB PAGE
`For a general description of Board proceedings, see TBMP §102.03. Proceedings are
`governed by the Trademark Rules of Practice in Parts 2 and 7 of Title 37 of the Code
`of Federal Regulations. These rules, 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-application-process/trademark-trial-and-
`appeal-board-ttab. The parties should check the web page for important changes,
`announcements, etc., many of which apply to proceedings already in progress.
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`PARTIES NOT REPRESENTED BY COUNSEL
`This proceeding is similar to a civil action in a federal district court and can be com-
`plex. The Board strongly advises all parties to secure the services of an attorney who
`is familiar with trademark law and Board procedure. The Board cannot aid in the
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`selection of an attorney. See TBMP § 114.02. The Board requires strict compliance
`with all applicable authorities whether or not the party is represented by counsel.
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`NOTIFY BOARD OF ALL PENDING ACTIONS
`If the parties are, or during the pendency of this proceeding become, parties in an-
`other Board proceeding or a civil action involving the same or related marks, or in-
`volving any issues of law or fact which are also in this proceeding, they shall notify
`the Board immediately. See Trademark Rule 2.106(b)(3)(i). The Board will consoli-
`date and/or suspend related Board proceedings, as appropriate. See Trademark Rule
`2.117(c); TBMP §§ 510 and 511.
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