Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1149137
`07/26/2021
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`ESTTA Tracking number:
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`Filing date:
`
`Proceeding
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`Party
`
`Correspondence
`Address
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91245851
`
`Plaintiff
`Sony Group Corporation
`
`MARK SOMMERS
`FINNEGAN HENDERSON FARABOW GARRETT & DUNNER LLP
`901 NEW YORK AVENUE NW
`WASHINGTON, DC 20001
`UNITED STATES
`Primary Email: docketing@finnegan.com
`Secondary Email(s): mark.sommers@finnegan.com,
`naresh.kilaru@finnegan.com, TTAB-Legal-Assistants@finnegan.com
`202-408-4000
`
`Submission
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`Filer's Name
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`Filer's email
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`Motion to Strike Testimony
`
`Mark Sommers
`
`docketing@finnegan.com, mark.sommers@finnegan.com,
`naresh.kilaru@finnegan.com, jessica.hannah@finnegan.com, TTAB-Leg-
`al-Assistants@finnegan.com
`
`Signature
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`Date
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`/Mark Sommers/
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`07/26/2021
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`Attachments
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`2021-07-26 Sony Motion to Strike Applicant Testimony.pdf(1270555 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`SONY GROUP CORPORATION
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`
`Opposer
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`
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`v.
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`NEIL CAMPBELL
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`Applicant
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`Opposition No. 91245851
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`Application Serial No. 87882260
`Mark: SONISTREAM
`Filed: April 18, 2018
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`
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`OPPOSER SONY GROUP CORPORATION’S
`MOTION TO STRIKE APPLICANT’S TESTIMONY
`
`
`I.
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`INTRODUCTION
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`Opposer Sony Group Corporation moves the Board to strike certain trial testimony of
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`Applicant Neil Campbell because it violates Board rules. Specifically, Applicant’s Notices of
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`Reliance Nos. 4, 6, and 7 should be stricken in whole or in part because they contain material
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`that cannot be introduced by notice of reliance. Additionally, Applicant filed two declarations
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`and an expert report that should be stricken because such declarations/report were executed prior
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`to Applicant’s testimony period.
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`
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`II.
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`FACTS
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`Applicant’s 30-day testimony period ended on April 19, 2021.1 29 TTABVUE 5.
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`Applicant submitted eight notices of reliance (60 TTABVUE - 65 TTABVUE, 69 TTABVUE -
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`1 On April 13, 2021, Applicant filed an unconsented motion to extend Applicant’s trial period.
`59 TTABVUE. Sony opposed this motion (71 TTABVUE), and the Board denied Applicant’s
`motion on July 22, 2021 order. 73 TTABVUE 8. Applicant’s testimony period is closed.
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`

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`70 TTABVUE), two declarations from Jacqueline A. Chorn (66 TTABVUE), one declaration
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`from Mr. Campbell (68 TTABVUE), and an expert report from Jonathan E. Hochman (67
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`TTABVUE).
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`
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`III. ARGUMENT
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`Several of Applicant’s Notices of Reliance (in whole or in part) contain material not
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`appropriate for introduction by notice of reliance and, consequently, should be stricken. See
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`TBMP § 532 (an adverse party may move to strike a notice of reliance “on the ground that the
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`notice of reliance does not comply with the procedural requirements of the particular rule under
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`which it was submitted”); TBMP 707.02(b). Further, Applicant submitted two declarations and
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`an expert report that were improperly executed prior to Applicant’s testimony period, which
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`should be stricken. See 37 C.F.R. § 2.121(a)(1).
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`
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`A.
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`The Chorn Declarations and Hochman Report Should Be Stricken Because
`They Were Not Executed During the Testimony Period
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`To properly make an affidavit or declaration of record as trial testimony, “the affidavit or
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`declaration must be executed during the assigned testimony period.” Robinson v. Hot Grabba
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`Leaf, LLC, 2019 U.S.P.Q.2d (BNA) 149089, 2019 TTAB LEXIS 96, at *11, *14 n.23 (TTAB
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`2019) (finding declaration was “not appropriately considered” because it was dated three months
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`prior to testimony period). See also Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d
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`1844, 1846 n.8 (TTAB 2004) (materials submitted outside of applicant’s assigned testimony
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`period and which failed to comply with the Board’s evidentiary rules given no consideration);
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`Trademark Rule 2.121(a)(1); 37 C.F.R. § 2.121(a)(1) (“No testimony shall be taken or evidence
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`2
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`

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`presented except during the times assigned, unless by stipulation of the parties approved by the
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`Board, or upon motion granted by the Board, or by order of the Board.”).
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`The declarations of Jacqueline A. Chorn (66 TTABVUE) and the expert report of
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`Jonathan Hochman (67 TTABVUE) should be stricken because they were not executed during
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`Applicant’s assigned thirty-day testimony period, which ended April 19, 2021. Specifically, the
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`Chorn declaration (66 TTABVUE 1) was executed on March 23, 2020 (id. at 23), and the
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`Supplemental Chorn Declaration (id. at 30) was executed on June 26, 2020 (id. at 32). The
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`expert report of Jonathan Hochman (67 TTABVUE) was executed on February 20, 2020. Id. at
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`7. Because these declarations and expert report were executed well prior to and outside of
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`Applicant’s testimony period, they should be stricken.
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`
`
`B.
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`E-mail Communications in Notice of Reliance No. 7 Should Be Stricken
`Because They Are Not Evidence That Can Be Introduced Through a Notice
`of Reliance
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`Portions of Applicant’s Notice of Reliance No. 7 (69 TTABVUE 142-43) should be
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`stricken because they consist of e-mails, and “email communications are not evidence that may
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`be introduced through a notice of reliance.” Larry Pitt & Assocs., P.C. v. Lundy Law, LLP, 2018
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`TTAB LEXIS 75, at *13 (TTAB Mar. 6, 2018) (non-precedential) (“Finally, we may not
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`consider the email communications [submitted with a notice of reliance] because email
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`communications are not evidence that may be introduced through a notice of reliance.”).2 See
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`also Calypso Tech., Inc. v. Calypso Capital Mgmt., LP, 100 U.S.P.Q.2D (BNA) 1213, 1217
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`(TTAB 2011) (emails were not properly of record because they could not be made of record by
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`notice of reliance); Fed. Nat’l Mortg. Ass’n v. Carey, 2004 TTAB LEXIS 495, at *5 (TTAB
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`2 Copies of non-precedential decisions cited are attached as Exhibit A.
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`3
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`Aug. 24, 2004) (non-precedential) (email may not be submitted through notice of reliance and
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`“[a]ccordingly, this evidence has not been considered.”). Consequently, those pages of Notice of
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`Reliance No. 7 (i.e., 69 TTABVUE 142-43) should be stricken.
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`
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`C.
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`Notices of Reliance Nos. 4 and 6 Should Be Stricken Because They
`Consist of Hyperlinks that Are Not Sufficient to Make the Underlying
`Webpages of Record
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`Applicant’s Notices of Reliance Nos. 4 and 6 (63 TTABVUE and 65 TTABVUE,
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`respectively) contain hyperlinks to various websites. Specifically, Applicant’s Notice of
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`Reliance No. 4 contains a list of 15 hyperlinks. Applicant’s Notice of Reliance No. 6 contains a
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`link to the URL https://broadcast.bswusa.com/search?w=broadcast but does not contain a
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`corresponding printout for the referenced webpage. Under Board precedent, “merely providing a
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`link to a website is insufficient to make information from that site of record.” In re Olin Corp.,
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`124 USPQ2d 1327, 1332 n.15 (TTAB 2017) (“Because the information displayed at a link’s
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`Internet address can be changed or deleted, merely providing a link to a website is insufficient to
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`make information from that site of record.”). See also TV Azteca, S.A.B. de C.V. v. Martin, 128
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`USPQ2d 1786, 1790 n.14 (TTAB 2018) (providing an Internet link to an article is insufficient to
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`make the article of record; “[t]he Board does not accept Internet links as a substitute for
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`submission of a copy of the resulting page”); In re Aquitaine Wine USA, LLC, 126 USPQ2d
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`1181, 1195 n.21 (TTAB 2018) (“we do not consider websites for which only links are
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`provided”). Accordingly, Applicant’s Notice of Reliance No. 4 should be stricken in its entirety,
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`and the link to the URL https://broadcast.bswusa.com/search?w=broadcast should be stricken
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`from Applicant’s Notice of Reliance No. 6.
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`4
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`

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`IV. CONCLUSION
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`For at least the authorities and reasons above, the Board should grant Sony’s motion to
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`strike the specified portions of Applicant’s Notices of Reliance Nos. 4, 6, and 7, the Chorn
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`declarations, and the Hochman expert report.
`
`
`Dated: July 26, 2021
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`
`
`
`
`By: / Mark Sommers /
`Mark Sommers
`Naresh Kilaru
`Jessica L. Hannah
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, L.L.P.
`901 New York Ave., N.W.
`Washington, D.C. 20001-4413
`Telephone: 202-408-4000
`
`docketing@finnegan.com
`mark.sommers@finnegan.com
`naresh.kilaru@finnegan.com
`jessica.hannah@finnegan.com
`TTAB-Legal-Assistants@finnegan.com
`
`Attorneys for Opposer
`SONY GROUP CORPORATION
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`
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`5
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`CERTIFICATE OF SERVICE
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`I certify that a true and accurate copy of the foregoing OPPOSER SONY GROUP
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`CORPORATION’S MOTION TO STRIKE APPLICANT’S TESTIMONY was served on
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`July 26, 2021, via e-mail, on Applicant at the following correspondence address of record:
`
`
` NEIL CAMPBELL
`1038 5TH STREET #A
`SANTA MONICA, CA 90403
`
`neil@gomusic1.com
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`
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`
` / Judy Valusek /
` Trademark Legal Assistant
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`Opposition No. 91245851
`OPPOSER SONY GROUP CORPORATION’S
`MOTION TO STRIKE APPLICANT’S TESTIMONY
`
`
`Exhibit A
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`

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` 2018 TTAB LEXIS 75
`
`Trademark Trial and Appeal Board
`
`February 28, 2018, Hearing ; March 6, 2018, Decided
`
`Opposition No. 91210158
`
`Reporter
` 2018 TTAB LEXIS 75 *
`
`Larry Pitt & Associates, P.C. v. Lundy Law, LLP
`
`Prior History:
`
` Larry Pitt & Assocs., P.C. v. Lundy Law, LLP, 2013 TTAB LEXIS 640 (Trademark Trial & App. Bd., Oct. 31, 2013)
`
`Disposition: [*1]
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`Decision: The opposition is sustained and registration to Applicant is refused. allowance of these registrations does
`not bind the Board. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
`
`Core Terms
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`REMEMBER, advertising, Trademark, service mark, marketing, notice, introduce, consumer, declaration, reopen,
`expert report, registration, designation, legal services, deposition, registered, functions, slogan
`
`Counsel
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`Jacqueline M. Lesser of Baker & Hostetler LLP, for Larry Pitt & Associates, P.C.
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`Manny D. Pokotilow of Caesar Rivise, PC, for Lundy Law, LLP.
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`Panel: Before Bergsman, Goodman and Pologeorgis, Administrative Trademark Judges.
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`Opinion By:
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`Bergsman, Marc A.
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`Opinion
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`This Opinion is Not a Precedent of the TTAB
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`Opinion by Bergsman, Administrative Trademark Judge:
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`Lundy Law, LLP ("Applicant") seeks registration on the Principal Register of the mark REMEMBER THIS NAME (in
`standard characters) for "legal services," in Class 45. 1
`
`1 Application Serial No. 85767757 was filed on October 31, 2012, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a),
`based upon Applicant's claim of first use anywhere and use in commerce since at least as early as May 16, 2011.
`
`

`

` 2018 TTAB LEXIS 75, *1
`
`Page 2 of 13
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`Larry [*2] Pitt & Associates, P.C. ("Opposer") filed an Amended Notice of Opposition against the registration of
`Applicant's mark on the ground that REMEMBER THIS NAME does not function as a service mark under Sections
`1, 2, 3 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1053, and 1127. 2
`
` [*3]
`
`In its Answer to the Amended Notice of Opposition, Applicant admitted that (1) Opposer has used the phrase
`"REMEMBER THIS NUMBER" over its toll free number as one means of instructing potential clients to remember
`the telephone number of Opposer's business, (2) it is a law firm operating in Pennsylvania and its advertising
`normally contains the name of the firm or its toll free number, (3) it filed subject application Serial No. 85767757,
`and (4) it filed suit against Opposer charging that Opposer's use of REMEMBER THIS NUMBER is an infringement
`of Applicant's REMEMBER THIS NAME; but Applicant dismissed the suit. Applicant denied the remaining salient
`allegations in the Amended Notice of Opposition.
`
`I. Evidentiary Issues
`
`A. Applicant's motion to introduce testimony after the close of trial.
`
`On January 19, 2018, well after the close of trial and briefing, Applicant filed a "Motion To Enter Further Evidence
`Into Notice of Reliance." 3 In essence, Applicant filed a motion to reopen its testimony period to introduce newly
`discovered evidence. Applicant seeks to introduce the declaration of Lauren Cohen, Applicant's Director of
`Strategic Marketing, including a copy of Ms. Cohen's Facebook [*4] page announcing that she is leaving Applicant.
`One of the people responding to her announcement wrote "Remember The Name!!" Applicant argues that the
`evidence could not have been introduced earlier because it was not posted until January 19, 2018.
`
`Opposer objects to the Cohen Declaration on the grounds that material submitted outside of a party's testimony
`period should be given no consideration and that Opposer has had no opportunity to cross examine either Lauren
`Cohen or the person responding to her Facebook post. 4
`
`The Trademark Rules provide for a trial order setting the time for each party to introduce testimony or other
`evidence.
`
`The Trademark Trial and Appeal Board will issue a trial order setting a deadline for each party's required
`pretrial disclosures and assigning to each party [*5] its time for taking testimony and presenting evidence
`("testimony period"). No testimony shall be taken or evidence presented except during the times assigned,
`unless by stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of
`the Board.
`
`Trademark Rule 2.121(a), 37 C.F.R. § 2.121(a).
`
`Trademark Board Manual of Procedure (TBMP) § 509.01(b)(2) (June 2017) provides that:
`
`2 24 TTABVUE.
`
`Opposer initially filed a Notice of Opposition against the registration of Applicant's mark under Section 2(e)(1) of the Trademark
`Act, 15 U.S.C. § 1052(e)(1), on the grounds that REMEMBER THIS NAME is merely descriptive or generic when used in
`connection with legal services. However, in the Board's October 31, 2014 Order granting Applicant's motion for summary
`judgment on the issues of whether its mark is generic or merely descriptive when used in connection with legal services, the
`Board allowed Opposer time to file an amended notice of opposition setting forth a claim that Applicant's mark REMEMBER
`THIS NAME does not function as a service mark under Sections 1, 2, 3 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052,
`1053 and 1127. 23 TTABVUE.
`
`3 105 TTABVUE.
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`4 107 TTABVUE 2.
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`

`

` 2018 TTAB LEXIS 75, *5
`
`Page 3 of 13
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`If a party files a motion to reopen its testimony period to introduce newly discovered evidence, the moving party
`must show not only that the proposed evidence has been newly discovered, but also that the evidence could
`not have been discovered earlier through the exercise of reasonable diligence. However, even if a sufficient
`showing of due diligence has been made, the Board will not automatically reopen a party's testimony period for
`introduction of new evidence. The Board must also consider such factors as the nature and purpose of the
`evidence sought to be brought in, the stage of the proceeding, and prejudice to the nonmoving party. (footnotes
`omitted).
`
`Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1), provides that a party may introduce the testimony [*6] of a
`witness through an affidavit or declaration, filed during that party's testimony period, subject to the right of the
`adverse party to cross examine the witness. Considering the stage of this proceeding, allowing Applicant to
`introduce Ms. Cohen's declaration requires us to reopen Applicant's testimony period so that Opposer may cross
`examine the witness. Moreover, because the declarant whose statement is purportedly probative is not Ms. Cohen,
`we would have to permit Opposer to depose the declarant of the statement at issue. It is much too late in the
`proceeding to permit a reopening of Applicant's testimony period especially because the evidence at issue,
`consumer perception, is the type of evidence that Applicant should have introduced during its testimony period. See
`Canadian Tire Corp. v. Cooper Tire & Rubber Co., 40 USPQ2d 1537, 1539 (Comm'r 1996) ("The nature and
`purpose of the evidence sought to be added, the stage of the proceeding, the adverse party's right to a speedy and
`inexpensive determination of the proceeding and the need for closure once the trial period has been completed
`(barring some compelling reason to reopen), are all factors which must [*7] be considered by the Board in
`determining a motion to reopen such as this.").
`
`Moreover, the evidence sought to be introduced, one response to a Facebook posting, does not have significant
`probative value to justify reopening trial. That is, the new evidence is not likely to cause a different result or affect
`the outcome of this case.
`
`Any further delay will prejudice Opposer. This case has been pending since April 2013, there has been a motion for
`summary judgment, and the parties have had more than four years to take discovery and present trial evidence. It is
`time to move this case forward for a final determination on the merits. See Harjo v. Pro-Football Inc., 45 USPQ2d
`1789, 1790 (TTAB 1998).
`
`Applicant's motion to reopen its testimony period to introduce the declaration of Lauren Cohen and accompanying
`exhibit is denied.
`
`B. Applicant's motions to strike portions of the Ross Fishman testimony deposition and expert report.
`
`Opposer has introduced the testimony deposition and Amended Expert Report of Ross Fishman. 5 Mr. Fishman is a
`marketing consultant specializing in the development of strategies and creative marketing for law firms. 6
`
`Fundamentally [*8] we do three things: We are sort of a strategy and branding firm, mostly representing law
`firms, but other professional services, and other kinds of companies as well. We do the strategy, branding, and
`then developing the collateral materials in support of those brands, um, which include these days, um,
`websites, um, as well as print ads, brochures, the full range of marketing collateral materials. And also do a lot
`of marketing training, firm in trades (phonetic), and keynote speeches. 7
`
`Despite the Board's finding that Mr. Fishman is qualified as a marketing expert in the field of law firm advertising,
`not as an expert in trademark law, 8 Opposer engaged Mr. Fishman to render his opinion regarding the following
`topics:
`
`5 71 TTABVUE.
`
`6 Fishman Dep. Exhibit 2 (Amended Expert Report of Ross Fishman) (71 TTABVUE 130).
`
`7 Fishman Dep., p. 8 (71 TTABVUE 9).
`
`

`

` 2018 TTAB LEXIS 75, *8
`
`Page 4 of 13
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`1. The use of the phrase REMEMBER THIS NAME;
`
`2. Whether REMEMBER THIS NAME may be considered a trademark;
`
`3. Whether [*9] the specimen of use filed with Applicant's application showing use of REMEMBER THIS
`NAME functions as a trademark; and
`4. Whether REMEMBER THIS NAME is capable of functioning as a trademark. 9
`
`Applicant filed a series of motions to strike portions of the Fishman testimony deposition and Amended Expert
`Report, 10 as well arguing in its brief that Mr. Fishman's testimony and Amended Expert Report should be given
`little weight because they exceed the subject matter about which he is qualified to testify. 11
`
`The Board is responsible for determining whether the subject of this opposition, the phrase REMEMBER
`THIS [*10] NAME, is capable of functioning as a service mark, and whether the specimen filed with Applicant's
`application shows use of REMEMBER THIS NAME as a service mark. Edwards Lifesciences Corp. v. VigiLanz
`Corp., 94 USPQ2d 1399, 1402 (TTAB 2010); Fisons Ltd. v. UAD Laboratories, Inc., 219 USPQ 661, 663 (TTAB
`1983).
`
`[A]bsent a competently designed and executed survey of a cross-section of customers and prospective
`customers of the products or services involved, the deciding tribunal must make its own subjective evaluation
`of what the average consumer will perceive the mark to be as he encounters them in the actual or hypothetical
`... marketing arena.
`
` Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d at 1402 (quoting The Mennen Co. v. Yamanouchi
`Pharm. Co., Ltd., 203 USPQ 302, 305 (TTAB 1979)); see also Anheuser-Busch Inc. v. Holt, 92 USPQ2d 1101,
`1106 (TTAB 2009); Ferro Corp. v. Nicofibers, Inc., 196 USPQ 41, 45 (TTAB 1977) ("understanding of the marks
`must be determined in light of the relevant purchasing sector and not that of linguistic experts or those
`familiar [*11] with the meaning or derivation of words").
`
`In a similar situation, a witness was qualified as an expert in the field of travel writing and journalism based on her
`professional experience as a travel writer and editor and, therefore, was "qualified as an expert as to how to convey
`travel information to readers and potential tourists, and how travel writers believe such information will be perceived
`and understood." However, the witness was not qualified to render an opinion regarding consumer perception. The
`Board expressly stated that the opinion of the purported expert witness may not "serve as a substitute for the
`Board's judgment on the legal claim before us." Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107
`USPQ2d 1750, 1757 (TTAB 2013), aff'd mem., 565 Fed. Appx. 900 (Fed. Cir. 2014).
`
`Because Mr. Fishman is qualified as an expert in legal marketing, he is qualified to testify as to how to convey legal
`marketing information to consumers and how practitioners in the field of legal marketing believe such information
`will be perceived. Mr. Fishman, however, is not qualified to testify regarding consumer perception. Accordingly, we
`have treated [*12] his testimony as an expert as explained above and have accorded his testimony the appropriate
`probative value.
`
`Likewise, we limit the testimony of Harlan Schillinger, Applicant's expert witness on legal marketing, to how to
`convey legal marketing information to consumers and how legal marketing practitioners believe such information
`will be perceived. 12
`
`8 23 TTABVUE 4-5.
`
`9 Fishman Dep. Exhibit 2 (Amended Expert Report of Ross Fishman) (71 TTABVUE 130).
`
`10 62 TTABVUE, 67 TTABVUE, and 85 TTABVUE.
`
`11 Applicant's Brief, p. 28 (96 TTABVUE 33).
`
`12 79 TTABVUE.
`
`

`

` 2018 TTAB LEXIS 75, *12
`
`Page 5 of 13
`
`C. Evidence improperly submitted through notices of reliance.
`
`The types of evidence admissible by notice of reliance are identified in Trademark Rules 2.122(d)(2) (registration
`owned by a party to a proceeding), 2.122(e)(1) (printed publications and official records), 2.122(e)(2) (Internet
`materials) and 2.120(k) (discovery depositions, initial disclosures, and answers to interrogatories and requests for
`admission). See Trademark Rule 2.122(g), 37 C.F.R. § 2.122(g).
`
`We may not consider the document entitled "Case Study: Lundy Law" by Expert Technology Associates (63
`TTABVUE 60) analyzing Applicant's advertising. There is no evidence [*13] or testimony that the case study
`appears in books or periodicals available to the general public in libraries or in general circulation among the
`relevant public as required by Trademark Rule 2.122(e)(1). Accordingly, it is not the type of document that may be
`introduced through a notice of reliance.
`
`We may not consider the video and audio excerpts from Health Alert advertising introduced by Opposer purporting
`to feature video and audio of third-party use of REMEMBER THIS NAME (63 TTABVUE 88) nor may we consider
`the recording introduced by Applicant purporting to feature the use of REMEMBER THIS NAME (74 TTABVUE
`699), as neither is the type of evidence that may be filed through a notice of reliance. There is no provision in the
`rules for the introduction of audio and video tapes through a notice of reliance.
`
`Finally, we may not consider the email communications from Tami Sortman, Applicant's Creative Director,
`regarding advertising for REMEMBER THIS NAME because email communications are not evidence that may be
`introduced through a notice of reliance. 13
`
` [*14]
`
`II. The Record
`
`The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Applicant's
`application file. 14 The record also includes the following testimony and evidence:
`
`A. Opposer's testimony and evidence.
`
`1. Notice of reliance [*15] on the following items:
`a. Applicant's responses to Opposer's first set of interrogatories; 15
`b. Applicant's responses to Opposer's first set of requests for admission; 16
`c. Applicant's responses to Opposer's request for production of documents; 17
`
`13 64 TTABVUE 3-4 (designated confidential).
`
`14 Accordingly, it was not necessary for Opposer to file a copy of the application in its first notice of reliance.
`
`Also, it was not necessary for Opposer to introduce its rebuttal notice of reliance (89 TTABVUE) because Opposer previously
`introduced those discovery responses in its first notice of reliance discussed below (63 TTABVUE). "When evidence has been
`made of record by one party in accordance with these rules, it may be referred to by any party for any purpose by the Federal
`Rules of Evidence." Trademark Rule 2.122(a), 37 C.F.R. § 2.122(a). See, e.g., Nazon v. Ghiorse, 119 USPQ2d 1178, 1181 n.6
`(TTAB 2016) ("Once evidence is properly of record, it may be relied on by any party for any purpose.").
`
`15 63 TTABVUE 9-25.
`
`16 63 TTABVUE 26-40.
`
`17 63 TTABVUE 41-54. Opposer did not include any documents.
`
`Responses to document production requests are admissible solely for the purpose of showing that a party has stated that there
`are no responsive documents. See City Nat'l Bank v. OPGI Mgt. GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1674 n.10
`(TTAB 2013).
`
`

`

` 2018 TTAB LEXIS 75, *15
`
`Page 6 of 13
`
`d. Applicant's supplemental responses to Opposer's request for production of documents; 18
`e. Online articles purporting to advise businesses to choose memorable names; 19
`f. Excerpt from third-party websites purportedly showing use of REMEMBER THIS NAME; 20
`g. Discovery deposition of Tami Sortman, Applicant's Creative Director; 21 and
`h. Discovery deposition of L. Leonard Lundy, Applicant's Managing Partner; 22 and
`2. Testimony deposition of Ross Fishman, Opposer's expert witness in the field of legal marketing; 23 and
`3. Rebuttal testimony declaration of Ross Fishman. 24
`
` [*16] [*17]
`
`B. Applicant's testimony and evidence.
`
`1. Notice of reliance on the following items:
`
`a. Copies of third-party registration prosecution history files showing the registration of marks that
`purportedly have characteristics similar to REMEMBER THIS NAME; 25 and
`
`b. Printout from Avvo.com purportedly profiling Ross Fishman, Opposer's expert witness in the field of
`legal marketing; 26
`2. Testimony deposition of L. Leonard Lundy, Applicant's Managing Partner; 27
`3. Testimony deposition of Tami Sortman, Applicant's Creative Director; 28 and
`4. Testimony deposition of Harlan Schillinger, Applicant's expert witness in the field of legal marketing. 29
`
`III. Standing
`
`18 63 TTABVUE 55-59.
`
`19 63 TTABVUE 62-87.
`
`20 63 TTABVUE 92-115.
`
`21 64 TTABVUE 4-72 (Confidential). Opposer filed a redacted version of the Tami Sortman discovery deposition posted at 110
`TTABVUE 3-203.
`
`Opposer unnecessarily introduced the entire discovery deposition of Tami Sortman. For example, the speaking objections at
`pages 41, 114, 123 and 127 (64 TTABVUE 14, 33-36) do not add anything to our understanding of the facts. The Board rules of
`practice and procedure provide that a party may introduce any part of a discovery deposition through a notice of reliance.
`Trademark Rule 2.120(k)(3)(i), 37 C.F.R. § 2.120(k)(3)(i). Yet, we would be remiss if we did not add that although Opposer
`believed that we should suffer through the entire deposition, Opposer did not include the exhibits about which the witness was
`asked to testify.
`
`22 64 TTABVUE 73-135 (Confidential). A copy of the Lundy deposition with the confidential designation removed was posted at
`110 TTABVUE 205-267.
`
`23 71 TTABVUE. Applicant filed motions to strike, inter alia, Fishman Testimony Deposition Exhibit 3 (62 and 67 TTABVUE).
`Because we do not rely on those exhibits, we need not decide Applicant's motions.
`
`24 88 TTABVUE.
`
`25 74 TTABVUE 8-692.
`
`26 74 TTABVUE 693-698.
`
`27 76 TTABVUE. The portions of the Lundy deposition designated confidential are posted on 77 TTABVUE.
`
`28 78 TTABVUE.
`
`29 79 TTABVUE.
`
`

`

` 2018 TTAB LEXIS 75, *17
`
`Page 7 of 13
`
`Standing is a threshold issue that must be proven by the plaintiff [*18] in every inter partes case. See Empresa
`Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); see also Lipton
`Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) ("The facts regarding standing
`... are part of [a plaintiff's] case and must be affirmatively proved. Accordingly, [plaintiff] is not entitled to standing
`solely because of the allegations in its petition."). To prove its standing to oppose the registration of a phrase that
`allegedly does not function as a mark, an opposer may show it is engaged in the manufacture or sale of the same
`or related goods or services as those listed in the applicant's application; that is, that the opposer has the right to
`use the wording in marketing its services. See Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1487
`(TTAB 2017) ("Opposer has standing to opposer registration of Applicant's claimed mark because it competes
`directly with Applicant in the general utility engine business, and thus has a reasonable basis for a belief that it
`would be damaged if Applicant's claimed mark were registered."); D.C. One Wholesaler, Inc. v. Chien, 120
`USPQ2d 1710, 1712 (TTAB 2016) [*19] (because the parties are competitors, opposer has standing to pursue a
`claim that the subject matter sought to be registered does not function as a mark); Univ. Book Store v. Univ. of
`Wisc. Bd. of Regents, 33 USPQ2d 1385 (TTAB 1994) (operators of stores which sell merchandise imprinted with
`the mark sought to be registered have standing to oppose); cf. Apollo Med. Extrusion Techs., Inc. v. Med.
`ExtrusionTechs., Inc., 123 USPQ2d 1844, 1848 (TTAB 2017); Anheuser-Busch Inv. v. Holt, 92 USPQ2d 1101,
`1103 (TTAB 2009); Plyboo Am., Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1634 (TTAB 1999); Nature's Way v.
`Nature's Herbs, 9 USPQ2d 2077, 2080 (TTAB 1989); Binney & Smith Inc. v. Magic Marker Indus., Inc., 222 USPQ
`1003, 1010 (TTAB 1984).
`
`Opposer, in its brief, did not address standing as an element of its case. 30 Our review of the record yields the
`following evidence relevant to Opposer's standing:
`
`. Applicant, in its Answer, admitted that (1) "Opposer has used the phrase 'REMEMBER THIS NAME' over its
`toll free number as one means of instructing potential clients to remember the [*20] telephone number of
`Opposer's business," and (2) Applicant filed suit against Opposer, charged that the use of the mark
`REMEMBER THIS NUMBER was an infringement of REMEMBER THIS NAME, but dismissed the suit. 31
`
`. Applicant's response to Opposer's Interrogatory No. 19.
`
`State with specificity where, when and how Applicant first became aware of Opposer's use of the phrase
`REMEMBER THIS NAME in Opposer's advertising.
`
`Response
`
`... Applicant states that on January 24, 2013 an employee reported to Applicant that she saw someone
`else using the mark REMEMBER THIS NAME. The employee did not remember who. Applicant requested
`that she return to the place where she saw the advertisement and find the nature of the law firm using the
`mark. The employee took a picture of the advertisement located on the inside of SEPTA bus with her cell
`phone. The advertisement was that of Opposer. The advertisement did not use Applicant's mark
`REMEMBER THIS NAME, rather, it used the mark, REMEMBER THIS NUMBER. 32
`
`. Testimony deposition of Ross Fishman, Opposer's expert witness.
`
`Q. Are you familiar with, um, either law firm in this particular case, Larry Pitt & Associates or [*21] Lundy
`Law?
`A. I was not familiar with them before getting involved in this case. 33
`
`. Ross Fishman's Amended Expert Report.
`
`30 Applicant, in its brief, did not address whether Opposer has standing. At the oral hearing, Applicant initially contested
`Opposer's standing but subsequently conceded that it did not contest Opposer's standing.
`
`31 Applicant's Answer PP 7 and 18 (25 TTABVUE 3 and 5).
`
`32 63 TTABVUE 22.
`
`33 Fishman Testimony Dep., p. 26 (71 TTABVUE 27).
`
`

`

` 2018 TTAB LEXIS 75, *21
`
`Page 8 of 13
`
`Larry Pitt & Associates, like other law firms[,] uses the phrase "Remember this number." This advertising
`always and only refers to the firms' number -- 1-888-PITT LAW. Many personal injury firms have a phone
`number related to th