Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA969671
`04/25/2019
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`91236668
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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 email
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`Signature
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`Date
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`Attachments
`
`Plaintiff
`Coreology Inc.
`
`HENRY POGORZELSKI
`CONLEY ROSE PC
`P O BOX 3267
`HOUSTON, TX 77253-3267
`UNITED STATES
`tmhou@conleyrose.com
`713-238-8000
`
`Opposition/Response to Motion
`
`Henry Pogorzelski
`
`hpogorzelski@conleyrose.com, tryan@dfw.conleyrose.com, daltm-
`para@dfw.conleyrose.com
`
`/Henry Pogorzelski/
`
`04/25/2019
`
`Opposers Response in Opposition to Lagree Motion to Compel Supp. Priv.
`Log.pdf(403059 bytes )
`Ex. A - G.pdf(5468472 bytes )
`Ex. H - M.pdf(5305167 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Consolidated
`Opposition No. 91236668 (parent)
`Opposition No. 91236942
`Opposition No. 91238139
`Opposition No. 91245111
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`In the Matters of U.S. Trademark Applications Serial Nos. 87/160,134 for alleged mark
`SCRAMBLED EGGS; 87/975,341 for alleged mark WHEELBARROW; 87/507,864 for alleged
`mark SPIDER LUNGE, and 87/659,572 for alleged mark SEXY BACK, each assigned to Lagree
`Technologies, Inc.
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`
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`COREOLOGY INC.
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`Opposer,
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`v.
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`LAGREE TECHNOLOGIES, INC.
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`
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`
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`Applicant.
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`
`
`
`OPPOSER’S RESPONSE IN OPPOSITION TO APPLICANT’S MOTION TO COMPEL
`OPPOSER TO SUPPLEMENT PRIVILEGE LOG AND PROVIDE SUPPLEMENTAL
`RESPONSE TO APPLICANT’S INTERROGATORY NO. 33
`
`
`Opposer Coreology, Inc., (“Coreology”) hereby responds in opposition to Applicant’s
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`Motion To Compel Opposer To Supplement Its Privilege Log of Communications with Third
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`Parties Ronald A. Shafii And BodyRok and Provide a Substantive Response to Applicant’s
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`Related Interrogatory No. 33 (“Lagree’s Motion”). Lagree’s Motion should be denied because
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`(i) it seeks information that is not relevant or proportional to the needs of the case; (ii) it seeks
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`information protected from disclosure by the attorney work product doctrine; and (iii) it seeks
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`information protected from discovery by the common legal interest privilege. For similar
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`reasons, the second portion of Lagree’s Motion, regarding Interrogatory No. 33, should also be
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`denied.
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`
`
`

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`The gist of Lagree’s Motion is Lagree’s position that, under the guise of identifying
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`potential witness bias, Lagree is entitled to discover each and every communication that
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`Coreology and/or its counsel may have with any potential third party witnesses disclosed in
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`either side’s initial disclosures. In Lagree’s own words, that includes telephone calls, in-person
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`meetings, and video conferences. Lagree’s position is inconsistent with the proportionality
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`requirements of Rule 26(b)(1) and TBMP § 401.01. The weakness of Lagree’s argument for
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`such expansive discovery may be illustrated by role reversal—is Lagree willing to produce or log
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`each and every communication that Lagree and/or its counsel may have with each and every
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`third party disclosed in its initial disclosures? Lagree’s Motion is an overt attempt to waste party
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`resources for no other reason but to drive up costs and prevent Coreology from pursuing
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`legitimate discovery related to core trademark issues. Lagree’s Motion should be denied.
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`I.
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`INTRODUCTION
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`A.
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`The Dispute Between Lagree and Coreology
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`Opposer Coreology owns and operates a fitness studio in southern California in which
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`customers perform Pilates-like exercise routines on exercise machines generically called
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`reformers. Ex. A, ¶ 5 (First Amended Notice of Opposition). The present dispute between
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`Lagree and Coreology began around the time that Lagree’s counsel sent Coreology a cease and
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`desist letter, accusing Coreology of infringing a number of Lagree’s alleged intellectual
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`properties. See Ex. B (Ltr. dated Jan. 10, 2017). Those intellectual properties included four
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`patents, four trade dress registrations and certain copyrights relating to Lagree’s training
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`manuals. Id. In a follow-up email, Lagree’s counsel accused Coreology of unauthorized use of a
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`laundry list of alleged Lagree trademarks corresponding to the names of various exercise moves,
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`including the following terms relevant to these TTAB proceedings:
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`
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`2
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`

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` Scrambled Eggs
` Spider Lunge
` Carriage Kick1
` Sexy Back
`
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`See Ex. C. At present, there remains a dispute between Coreology and Lagree regarding the
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`validity and/or the alleged infringement of these alleged trademarks, the four Lagree patents, and
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`the Lagree copyrights.2
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`B.
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`The Present Oppositions
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`In these consolidated oppositions, Opposer has challenged the registerability of four
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`alleged marks on several grounds, including that (1) the terms fail to function as marks; (2) the
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`terms are descriptive and generic for the names of exercise moves; and (3) to the extent that
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`Lagree had any trademark rights in these terms, those rights were abandoned because Lagree
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`failed to police its rights and/or provided naked licenses to these rights. See, e.g., Ex. A, ¶¶ 12-
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`14, 16. Lagree disputes these grounds and has alleged various defenses.
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`C.
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`Third Party BodyRok
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`BodyRok refers to a number of closely related entities that own and/or operate exercise
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`studios, mainly in the San Francisco area. It is believed that at one time, BodyRok had been a
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`so-called licensee of Lagree. In other words, BodyRok licensed the LAGREE mark and
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`Lagree’s MEGAFORMER mark in a franchise-type arrangement in which BodyRok paid Lagree
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`certain funds for exclusive use of these marks in certain zip codes. Lagree sued BodyRok
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`in 2015 and again in 2017, in the Northern District of California. See Ex. D (First Amended
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`1 See Opp. No. 91246748 (filed Mar. 4, 2019).
`2 The dispute relating to the Lagree trade dress registrations was mooted when Lagree voluntarily
`surrendered its invalid registrations during the course of the Lagree-BodyRok litigation. See
`U.S. Trademark Reg. Nos. 4,849,429; 4,849,314; 4,849,325; and 4,849,456 (all surrendered).
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`
`
`
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`3
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`

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`Complaint in second lawsuit). In the second case, Lagree alleged infringement by BodyRok of
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`the following alleged common law trademarks:
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` Wheelbarrow
` Scrambled Eggs
` The Sexy Back
` Spider Lunge
`
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`Id. at ¶ 48. Lagree also alleged infringement by BodyRok of three of the four Lagree patents
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`asserted against Coreology. See id., at ¶¶ 38. Lagree further asserted copyright infringement
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`against BodyRok in relation to Lagree’s training manual. See id. at ¶¶ 189-195.
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`Thus, Lagree’s allegations against BodyRok are very similar to Lagree’s allegations
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`against Coreology. Lagree settled its lawsuit against BodyRok very quickly after BodyRok
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`issued a subpoena to and received responsive documents from third-party Ronald A. Shafii. The
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`terms of that settlement are not yet known to Coreology. While Lagree has produced a
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`significantly redacted copy of a portion of the Lagree-BodyRok settlement, the agreement
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`references important alleged trademarks contained in a separate third-party document that
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`Lagree has not produced.
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`Coreology counsel has at times communicated with BodyRok counsel. However, at no
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`time have there been any communications involving non-attorneys as between Coreology and
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`BodyRok. Lagree has desperately sought to learn the contents of the communications between
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`Coreology counsel and BodyRok counsel. Originally, in a good faith attempt to placate Lagree
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`counsel’s demands, Coreology’s counsel generated a log to identify its attorney-to-attorney
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`communications. However, as Lagree’s demands for additional details began to increase
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`exponentially, Coreology was forced to reassess its earlier decision to generate a log.
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`
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`4
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`

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`D.
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`Third Party Ronald A. Shafii
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`Ronald A. Shafii is an individual who was formerly associated with Lagree and its
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`founder Sebastien Lagree. Shafii took on a number of roles within Sebastien Lagree’s
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`organization, including IT functions. Ex. E, ¶5 (Shafii Declaration). Contrary to the false
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`narrative recited in Lagree’s Motion and elsewhere, Shafii is not believed to have engaged in any
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`wrongdoing. Id. at ¶ 11,12. Instead, it appears that one of Shafii’s jobs was assisting with the
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`backing up of data associated with Lagree’s various personal computers. When Shafii ceased
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`working with Lagree, Shafii simply retained various back-up ESI at his residence and took an
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`unrelated job. Id. at ¶¶6-12. Shafii has stated that he believes that within the ESI that he
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`provided to BodyRok in response to BodyRok’s subpoena, there exist a number of documents
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`that are highly relevant to the present trademark proceedings. Id. at ¶ 15. These include license
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`agreements (which are expected to reference Lagree’s LAGREE and MEGAFORMER marks,
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`but not reference the alleged marks of the present oppositions); exercise training manuals (which
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`would refer to the alleged marks and support Coreology’s position that the terms fail to function
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`as marks); old versions of Lagree’s websites (same); and documents relating to Lagree’s
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`previous trademark disputes with former so-called licensees. See id. at ¶ 15.
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`In an effort to obtain relevant information from Shafii, Coreology caused to be issued a
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`document subpoena to Shafii. See Ex. F. The document topics in that subpoena were narrowly
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`tailored to information relevant to the trademark-related issues in these oppositions. Id. On
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`occasion, Coreology counsel has communicated via email and text with Shafii’s counsel. On
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`rare occasions, Coreology’s counsel has spoken directly with Shafii, but then always in the
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`presence of Shafii’s counsel. Lagree has sought desperately to learn the contents of these
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`communications. Originally, in a good faith attempt to placate Lagree counsel’s demands,
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`
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`5
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`

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`Coreology’s counsel generated a log to identify its communications. However, as Lagree’s
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`demands for additional details began to increase exponentially, Coreology was forced to reassess
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`its earlier decision to generate a log.
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`E.
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`Lagree-Initiated Satellite Litigation
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`In response to efforts by Coreology and BodyRok to obtain relevant information from
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`Shafii, Lagree has initiated multiple legal proceedings. Lagree sued Shafii personally in
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`California state court. Lagree moved to quash Coreology’s subpoena in the District of Oregon.
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`See Ex. G (Lagree motion to quash). Although there has been extensive briefing, the Oregon
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`District Court so far has not issued any ruling. Lagree also moved to quash a related Coreology
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`subpoena directed to BodyRok’s ESI vendor, Epiq. Ex. H. Lagree moved for a protective order
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`in the present TTAB proceedings, which the Board denied. See Doc. Nos 30, 31.
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`Later, in a transparent attempt to obtain communications between Coreology’s counsel
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`and Shafii, Lagree issued its own subpoena directed to Shafii, from the Western District of
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`Washington. Ex. I. The topics in the Lagree subpoena do not appear to relate to any of the core
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`trademark issues in these proceedings, but rather, the topics relate to communications between
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`Shafii and various third parties including Coreology. Id. Lagree subsequently filed its own
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`motion to compel against Shafii in relation to its subpoena. Ex. J. Similarly, there has been
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`extensive briefing, but the Court in the Western District of Washington has not yet issued any
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`ruling.
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`
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`Unhappy with the speed at which the Washington court has proceeded, Lagree now
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`brings this largely duplicative present motion, raising the same sorts of legal arguments that are
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`pending in the Washington court.
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`
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`
`6
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`

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`II.
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`ARGUMENT – PRIVILEGE LOG
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`A. Communications Between Coreology’s Counsel and Counsel for Third Parties
`Shafii and BodyRok Are Not Discoverable Because They Are Not Relevant and
`Not Proportional to the Needs of the Case.
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`Discovery in TTAB proceedings is informed by Rule 26(b)(1), which recites in relevant
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`part:
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`(b) DISCOVERY SCOPE AND LIMITS.
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`(1) Scope in General. Unless otherwise limited by court order, the scope
`of discovery is as follows: Parties may obtain discovery regarding any
`nonprivileged matter that is relevant to any party's claim or defense and
`proportional to the needs of the case, considering the importance of the issues at
`stake in the action, the amount in controversy, the parties’ relative access to
`relevant information, the parties’ resources, the importance of the discovery in
`resolving the issues, and whether the burden or expense of the proposed
`discovery outweighs its likely benefit.
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`(emphasis added). Thus, Rule 26(b)(1) places significant limits on the scope of discovery. In
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`federal court, gone are the days when parties were permitted to engage in fishing expeditions
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`based on the possibility that marginally relevant information might be revealed. Rule 26
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`expressly mandates the consideration of whether the information sought to be discovered may
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`be:
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` Relevant to any party's claim or defense, and
` Proportional to the needs of the case, considering
`o
`
`the importance of the issues at stake in the action,
`
`o
`
`o
`
`the amount in controversy,
`the parties’ relative access to relevant information,
`the parties’ resources,
`the importance of the discovery in resolving the issues, and
`o whether the burden or expense of the proposed discovery outweighs its likely
`benefit.
`
`o
`
`o
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`The above limitations are incorporated into TTAB proceedings in TBMP § 401.01, which adds
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`that “[t]he scope of discovery in Board proceedings is generally narrower than in court
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`
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`7
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`

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`proceedings.” It is against this standard that Lagree’s discovery requests must be judged.
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`
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`Here, the relevant claims and defenses include whether the alleged marks fail to function
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`as marks, whether they are descriptive and/or generic, and whether Lagree failed to
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`police/abandoned any trademark rights. Accordingly, the relevant topics of discovery are:
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`(1) the manner in which Lagree and its so-called licensees have used the alleged marks;
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`(2) the way in which the alleged markets are perceived by the relevant audience; and
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`(3) the manner in which Lagree did or did not attempt to police its alleged marks.
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`
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`The bias of potential third party witnesses such as BodyRok and Shafii is not a claim or
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`defense in these consolidated proceedings. BodyRok and Shafii likely have their views
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`concerning the above three topics. But the status of BodyRok and Shafii as potential witnesses
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`does not make discoverable the communications between Coreology’s counsel and counsel for
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`BodyRok and Shafii.
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`
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`Further, any proportionality analysis would further support denying Lagree’s Motion.
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`Lagree’s attempt – to impose a requirement that Coreology’s counsel log and explain in detail
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`every email or text message – is not related in any meaningful way to the importance of any of
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`the issues at stake in these proceedings. Lagree’s requested logging requirement is
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`disproportionate to the amount in controversy and the parties’ resources. It is not important to
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`resolving the issues in this case. And it imposes a burden and expense that greatly outweighs
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`any likely benefit.
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`
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`As understood, Lagree’s Motion attempts to justify it need to obtain discovery of the
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`communications between Coreology’s counsel and BodyRok’s counsel, and between
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`Coreology’s counsel and Shafii’s counsel, in order to ferret out “bias.” This justification holds
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`no water. First, there is already no question but that BodyRok and Shafii are likely biased
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`
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`8
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`against Lagree. Lagree sued BodyRok in federal court twice, and no doubt BodyRok believes
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`that Lagree’s lawsuits were unfounded. Similarly, Lagree has sued Shafii individually in state
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`court in California. And Lagree’s allegations against Shafii – in the state court case, in the
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`subpoena-related actions in the miscellaneous actions now pending in the District of Oregon and
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`the Western District of Washington, and in these consolidated TTAB proceedings – are
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`scandalous to say the least. That BodyRok and Shafii have reason to be biased against Lagree is
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`not likely to be contested.
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`
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`Second, any connection between communications between Coreology counsel and
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`counsel for BodyRok, and between Coreology counsel and Shafii and/or Shafii’s counsel, are
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`significantly attenuated from the typical communications – that of party to party communications
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`– that are more commonly sought during discovery. To be clear, Lagree is not seeking
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`communications between non-attorneys associated with Coreology and non-attorneys associated
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`BodyRok. There are none. Lagree is not seeking communications between non-attorneys
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`associated with Coreology and Shafii. There are none. Lagree is seeking communications
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`between Coreology’s counsel and various third-party witnesses for improper purposes.
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`
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`Third, Lagree will have other, more efficient ways to go about demonstrating “bias” than
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`burdening Coreology and its counsel with a time-consuming and costly logging exercise.
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`
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`In sum, the information sought in Lagree’s Motion is not discoverable under TBMP
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`§ 401.01 and Rule 26 (b)(1). For this reason alone, Lagree’s Motion should be denied.
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`B. Communications Between Coreology’s Counsel and Counsel for Third Parties
`BodyRok and Shafii Are Non-Discoverable Work Product.
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`Separate and apart from the non-discoverable nature of the information sought by reason
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`of TBMP § 401.01 and Rule 26 (b)(1), the information sought in Lagree’s motion is non-
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`discoverable attorney work product.
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`
`
`9
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`

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`1. The Work Product Doctrine.
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`The work-product doctrine protects from disclosure all documents and tangible things
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`prepared by or for a party, or by or for the parties’ representative, in anticipation of litigation.
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`See Fed. R. Civ. P. 26(b)(3); In re Grand Jury Subpoena, 357 F.3d 900, 906 (9th Cir. 2004). The
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`work-product doctrine provides protection against adversaries and is not as easily waived as the
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`attorney/client privilege. Nidec Corp. v. Victor Co. of Japan, 249 F.R.D. 575, 580, (N.D. Cal.
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`2007). Work-product protection is only waived where disclosure of otherwise protected
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`documents is made to a third party and that disclosure enables an adversary to gain access to the
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`information. United States v. Bergonzi, 216 F.R.D. 487, 495-96 (N.D. Cal. 2003). If disclosure
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`is not made to an adversary, there is no waiver. See id. So long as transferor and transferee
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`anticipate litigation against a common adversary on the same issue or issues, they have strong
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`common interests in sharing the fruit of their trial preparation efforts. McMorgan & Co. v. First
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`Cal. Mortg. Co., 931 F. Supp. 703, 709 (N.D. Cal. 1996). Accord e.g., Cal. Sportfishing Prot.
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`Alliance v. Chico Scrap Metal, Inc., 299 F.R.D. 638, 645 (E.D. Cal.2014) (“Disclosure to person
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`with interest common to that of attorney or client is not inconsistent with intent to invoke work
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`product doctrine’s protection and would not amount to waiver.”). This is because the purpose of
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`the work product doctrine is not to protect the evidence from disclosure to the outside world,
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`“but rather to protect it only from the knowledge of opposing counsel and his client.” Cal.
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`Sportfishing, 299 F.R.D. at 645.
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`2. The Work Product Doctrine Applies and Prevents Production of the
`Documents at Issue.
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`Here, the work product doctrine specifically applies and has not been waived.
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`Communications between counsel for Coreology and counsel for BodyRok are obviously work
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`product because they occurred in the context of Lagree’s threatened and/or actual litigation
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`10
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`

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`against BodyRok, as well of Lagree’s threatened legal claims against Coreology at the same time
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`(and regarding the same legal subject matters). There is no need and no point for Coreology to
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`be required to provide the additional detailed information that Lagree’s Motion demands.
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`Similarly, communications between Coreology counsel and counsel for Shafii (including
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`attorney Matthew Wolf in Los Angeles defending Shafii in Lagree’s California state court case,
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`and attorney Alyoha (“Al”) McClain, an attorney representing Shafii with respect to Coreology’s
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`and Lagree’s subpoenas) are work product because they occurred in the context of pending
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`and/or anticipated litigation brought by Lagree. See also, Wolf Decl. ¶¶6-13 (Ex. K) (confirming
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`Wolf’s role in defending Shafii in the state court action); McClain Decl. ¶¶6-15 (Ex. L)
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`(confirming McClain’s role with respect to the subpoenas).
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`
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`All of the communications between counsel for Mr. Shafii and counsel for Coreology
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`occurred with the reasonable belief and understanding that they were being made in the context
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`of pending and or anticipated litigation, that the parties shared common legal interests with
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`respect to the information at issue, and that their communications were privileged and
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`confidential and would not be disclosed to Lagree. See Wolf Decl. ¶¶ 12-13 (Ex. K); McClain
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`Decl. ¶¶ 14-15 (Ex. L). Both Mr. Shafii and Coreology have asserted privilege with respect to
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`these communications and have provided privilege logs regarding them. Thus, no waiver has
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`occurred.
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`
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`For these reasons, the work-product doctrine alone should shield the communications and
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`documents issue from production to Lagree, and there is no need and no point for Coreology to
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`be required to provide the additional detailed information that Lagree’s Motion demands.
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`
`
`
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`
`
`11
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`

`

`C. Coreology Has a Common Legal Interest with Both BodyRok and Shafii,
`Providing Further Support for the Non-Discoverability of the Requested
`Communications.
`
`The work-product doctrine alone should shield the communications and documents at
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`issue from production to Lagree. As discussed below, however, the common interest privilege
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`likewise applies to protect the documents from production.
`
`Rather than a separate privilege, the “common interest” or “joint defense” rule is an
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`exception to ordinary waiver rules and is “designed to allow attorneys for different clients
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`pursuing a common legal strategy to communicate with each other.” WatchGuard Techs., Inc., v.
`
`iValue Infosolutions Pvt. Ltd., 2017 WL 3581624, at *3 (W.D. Wash. Aug. 18, 2017) (quoting In
`
`re Pac. Pictures Corp., 679 F.3d 1121, 1129 (9th Cir. 2012)). Because the privilege sometimes
`
`applies outside the context of actual litigation, what parties call a “joint defense” privilege is
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`more aptly termed the “common interest rule.” Id. The privilege is an extension of the
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`attorney/client privilege and also applies to the work-product doctrine. In re Imperial Corp.of
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`Am. 167 F.R.D. 447, 455 (S.D. Cal. 1995). “The common interest or joint defense privilege
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`applies where ‘(1) the communication was made by separate parties in the course of a matter of
`
`common interest or joint defense; (2) the communication was designed to further that effort; and
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`(3) the privilege has not been waived.’” WatchGuard, 2017 WL 3581624, at *3.
`
`“Common interests” should not be construed as narrowly limited to coparties. So
`long as the transferor and transferee anticipate litigation against a common
`adversary on the same issue or issues, they have strong common interests in
`sharing the fruit of trial preparation efforts. Moreover, with common interest on a
`particular issue against a common adversary, the transferee is not at all likely to
`disclose the work product material to the adversary.
`
`Cal. Sportfishing, 299 F.R.D. at 647. Accordingly, the privilege “does not require a complete
`
`unity of interests among the participants, and it may apply where the parties’ interests are
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`adverse in substantial respects.” United States v. Bergonzi, 216 F.R.D. at 495.
`
`
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`12
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`

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`“Any member of a common-interest arrangement may invoke the privilege against third
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`persons, even if the communication in question was not originally made by or addressed to the
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`objecting member.” United States v. Gonzalez, 669 F.3d 974, 982 (9th Cir. 2012). In addition,
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`the privileged status of communications falling within the common interest doctrine “cannot be
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`waived without the consent of all of the parties” to the communication. Id. A written agreement
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`is not required so long as the parties are pursuing an agreed joint strategy or common interest.
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`See Pac. Pictures, 679 F.3d at 1129.
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`Here, as discussed above, Coreology and BodyRok clearly had a common interest in
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`refuting Lagree’s claims regarding the alleged Lagree common law trademarks corresponding to
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`exercise moves, especially where the same alleged trademarks have been asserted against both
`
`Coreology and BodyRok. Coreology and BodyRok also shared a common interest in the
`
`preservation of the unique ESI that Shafii produced to Epiq – especially given Lagree’s stated
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`position that it has no obligation to preserve it. Coreology and BodyRok also had a common
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`legal interest in defending against various Lagree patents.
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`Similarly, Coreology and Shafii clearly had and still have a common interest in the
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`preservation of the unique ESI that Shafii produced to Epiq, as well as in refuting Lagree’s
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`claims regarding misappropriation of the documents and information that Shafii has or had
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`(including with limitation, the ESI that Shafii produced to Epiq) relating to Lagree.
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`In sum, under the work-product doctrine and the common interest privilege, the
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`communications sought by Lagree’s Motion are protected from disclosure or production to
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`Lagree, and the Court should deny Lagree’s Motion to Compel on these grounds.
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`13
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`III. ARGUMENT – RESPONSE TO INTERROGATORY NO. 33
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`Lagree’s Motion at page 19 requests that the Board order Coreology to respond to
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`Lagree’s Interrogatory No. 33 by identifying the existence and terms of its agreements with
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`Shafii and BodyRok. Interrogatory No. 33 recites as follows:
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`Identify all communications and all agreements concerning the Applicant,
`this Opposition, or any aspect thereof, between Opposer, or anyone associated
`with Opposer or on Opposer’s behalf, and any other entity or person, including
`but not limited to Ronald Shafii and BodyRok, including but not limited to
`communications and agreements related to any community of interest or joint
`defense or cooperation with Opposer.
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`Thus, the interrogatory request concerns “all communications and all agreements” regarding a
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`number of topics. Coreology’s initial response to this interrogatory included a privilege log.
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`Lagree counsel wrote to Coreology counsel with an email dated November 12, 2018. Ex. M. In
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`that email, Lagree does not mention any desire that Coreology identify any agreements. Instead,
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`the email highlights the term “communications” and complains that while Coreology’s privilege
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`log identities emails and text messages, it does not identify “other ‘communications’ that are not
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`emails or text messages such as, but not limited to, phone calls, in-person meetings, video
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`conferences, etc.” Id. The Lagree email noted that Coreology counsel had participated in
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`telephone calls with counsel for third party Epiq, and the Lagree email demanded that Coreology
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`update its privilege log to include those other sorts of communications also. Id. Given the
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`unreasonableness of Lagree’s position, Coreology declined Lagree’s demands. A depiction of
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`the Lagree email is reproduced below:
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`14
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`Ex. M. In other words, during the meet and confer process, Lagree did not ask for agreements.
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`Had Lagree conferred about the subject matter of Lagree’s Motion – that Lagree wanted
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`Coreology to identify all agreements between Coreology and BodyRok, and between Coreology
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`15
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`

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`and Shafii, rather than that Coreology counsel must start logging all of its telephone calls with
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`counsel for third parties – then the above portion of Lagree’s Motion might not have been
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`brought. For the reasons demonstrated by Coreology above, any agreements between Coreology
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`and Shafii, and between Coreology and BodyRok, are not discoverable because they are neither
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`relevant nor proportional to the needs of this trademark proceeding. Still, the burden upon
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`Coreology to identify such agreements (to the extent that such agreements exist) is arguably not
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`high. Accordingly, if the Board believes that the identity of any such agreements between
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`Coreology and either BodyRok or Shafii are relevant to the claims or defenses in these
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`proceedings, Coreology will happy supplement its interrogatory response to identify them.
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`III. CONCLUSION
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`For the reasons stated above, Lagree’s Motion should be denied.
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` Respectfully Submitted,
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`
`/s/ Henry M. Pogorzelski
`Henry M. Pogorzelski
`Texas Bar No. 24007852
`CONLEY ROSE, P.C.
`P.O. Box 3267
`Houston, TX 77253-3267
`Telephone (713) 238-8000
`Facsimile (713) 238-8008
`E-mail: hpogorzelski@conleyrose.com
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`tmhou@conleyrose.com
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`Counsel for Opposer Coreology, Inc.
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`16
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`CERTIFICATE OF SERVICE UNDER TBMP 113
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`
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`I HEREBY CERTIFY that a true and correct copy of the foregoing Opposer’s Response
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`In Opposition To Applicant’s Motion To Compel Opposer To Supplement Privilege Log And
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`Provide Supplemental Response To Applicant’s Interrogatory No. 33 in Consolidated Opposition
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`Nos. 91236668 (parent), 91236942, 91238139 and 91245111 has been sent via electronic mail, to
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`counsel for Applicant, Lagree Technologies, Inc., as follows:
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`Jason L. Gilbert
`Michael S. Neustel
`Chad E Ziegler
`NEUSTEL LAW OFFICES, LTD
`2534 South University Drive, Suite 4
`Fargo, ND 58103
`UNITED STATES
`Email: jason@neustel.com
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`michael@neustel.com
`chad@neustel.com
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`
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`On this Thursday, April 25, 2019:
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`/s/ Henry M. Pogorzelski
`Henry M. Pogorzelski
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`17
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`

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` 
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` 
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`Exhibit A 
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`Exhibit A
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`

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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA883043
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`Filing date:
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`03/13/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91236668
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`Coreology Inc.
`
`Henry Pogorzelski
`Conley Rose, P.C.
`P.O. Box 3267
`Houston, TX 77253-3267
`UNITED STATES
`Email: tmhou@conleyrose.com
`
`Submission
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`Filer's Name
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`Filer's email
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`Signature
`
`Date
`
`Attachments
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`Motion to Amend Pleading/Amended Pleading
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`Henry Pogorzelski
`
`hpogorzelski@conleyrose.com, tmhou@conleyrose.com
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`/Henry Pogorzelski/
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`03/13/2018
`
`First Amended Notice of Opposition SCRAMBLED EGGS final for fil-
`ing.pdf(283766 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re U.S. Trademark Application Serial No. 87/160,134 for the mark SCRAMBLED EGGS,
`filed on September 2, 2016, published on May 16, 2017, and having the current owner of record
`Lagree Technologies, Inc.
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`
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`Coreology, Inc.
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`
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`Opposer,
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`vs.
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`Lagree Technologies, Inc.,
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`Applicant.
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Opposition No. 91236668
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`FIRST AMENDED NOTICE OF OPPOSITION
`
`
`Commissioner:
`
`
`
`This First Amended Notice of Opposition is filed as a matter of course pursuant to TBMP
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`§ 507.02 and Fed. R. Civ. P. 15(a). Coreology, Inc. (“Opposer”), a corporation organized under
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`the laws of the state of California and having a place of business at 704 Deep Valley Dr., Rolling
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`Hills Estates, California 90274, United States, believes that it will be damaged by Lagree
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`Technologies, Inc.’s registration of the mark SCRAMBLED EGGS in International Classes 025
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`and 041 as shown in U.S. Trademark Application Serial No. 87/160,134. Accordingly, Opposer
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`hereby opposes the same under the provisions of the Trademark Act of 1946, § 1063 of Title 15
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`of the United States Code.
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`Opposer provides the following as standing to oppose the application and as grounds for
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`the opposition:
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`
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`777965-v1/7278-00300
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`
`1
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`

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`Background
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`1.
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`The Opposed U.S. Trademark Application Serial No. 87/160,134 for the alleged
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`mark S