Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1253105
`
`Filing date:
`
`12/08/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91273101
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Green Goat LLC
`
`NICHOLAS D. MYERS
`THE MYERS LAW GROUP
`4695 MACARTHUR COURT, SUITE 200
`NEWPORT BEACH, CA 92660
`UNITED STATES
`Primary email: nicholas@themyerslg.com
`Secondary email(s): trademarks@themyerslg.com
`949-825-5590
`
`Opposition/Response to Motion
`
`Nicholas D. Myers
`
`nicholas@themyerslg.com, evan@themyerslg.com, noemi@themyerslg.com
`
`/Nicholas D Myers/
`
`12/08/2022
`
`2022.12.08 Appl. Green Goat's Opposition to Opp. 1161, Inc.'s Discove ry Mo-
`tions.pdf(6031858 bytes )
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`1661, INC.,
`
` Opposer,
`
` v.
`
`
`GREEN GOAT, LLC,
`
` Applicant.
`
`
`
`
`
` Opposition No. 91273101 (Parent Case)
` Opposition No. 91277598
`
` Serial Numbers: 90/410459, 90/880438
`
`
`
`
`
`APPLICANT GREEN GOAT, LLC’S OPPOSITION TO OPPOSER 1661, INC.’S
`MOTION TO COMPEL RESPONSES AND MOTION TO DETERMINE SUFFICIENCY
`OF RESPONSES TO REQUESTS FOR ADMISSION
`
`
`
`
`
`
`
`
`
`
` 
`
`1 
`
`

`

`I.
`
`
`
`INTRODUCTION
`
`The motions (the “Motions”) to compel further discovery responses and to determine the
`
`sufficiency of responses to Requests for Admission filed by Opposer 1661, Inc. (“1661”) represent
`
`a colossal waste of time for the Board, 1661, and Applicant Green Goat, LLC (“Green Goat”). The
`
`only possible reason that counsel for 1661 brought the motions is to drive up the burdens and costs
`
`imposed on Green Goat, a relatively small player in the golf apparel and accessories space. 1661,
`
`with an average annual revenue of in the hundreds of millions, based on sales of collectible
`
`sneakers and extremely high-priced unique third-party branded products under the brand GOAT –
`
`“greatest of all time”, is seeking to drive Green Goat, which sells no items priced over $80, out of
`
`business. Confronting the difficulty of establishing any consumer confusion between the marks
`
`used by the two parties, to date 1661 has approached discovery as a means to harass Green Goat.
`
`The instant motions provide prime examples of this conduct. Additionally, the motions
`
`demonstrate 1661’s refusal to engage in good faith in the process of meeting and conferring with
`
`counsel for Green Goat to avoid unnecessary motion practice.
`
`
`
`On Friday, November 18, 2022, with no advance notice to Green Goat, 1661 served a flurry
`
`of discovery including premature deposition notices (there having been no documents produced to
`
`date by 1661 in the proceeding) and then filed the instant motions. (See Decl. of J. Evan Shapiro
`
`in Support of Applicant Green Goat, LLC’s Opposition to Opposer 1661, Inc.’s Motion to Compel
`
`Further Discovery Responses and to Determine the Sufficiency of Responses to Requests for
`
`Admission sworn to on Dec. 8, 2022 and submitted herewith (“Shapiro Decl.”) ¶ 5.) The Motions
`
`seek: (1) to force Green Goat to “cut and paste” a 10 page statement of its position that there exists
`
`no likelihood of confusion between the marks based largely on facts in the public domain and
`
`arguments into an interrogatory answer; (2) to force Green Goat to provide responses to seven
`
` 
`
`2 
`
`

`

`interrogatories concerning Green Goat’s sale of individual t-shirts featuring famous athletes and
`
`pop culture characters, incorrectly asserting that the Board has held that an applicant’s
`
`unauthorized use of images of individuals and characters is relevant to the “thirteenth” DuPont
`
`factor of “bad faith” or “intent to confuse”; (3) to require Green Goat to produce documents
`
`relating to any third-party financing of its defense to this proceeding, arguing that such production
`
`is necessary to obtain applicant’s possible communications with third parties concerning this
`
`proceeding, even though Green Goat has agreed to produce documents concerning such third-party
`
`communications; and (4) to improperly force Green Goat to issue admissions in response to
`
`vaguely-worded Requests for Admission that involve complex legal contentions or that are
`
`unnecessary in light of document requests and interrogatories 1661 also propounded on Green
`
`Goat.
`
`
`
`As demonstrated below, the Motions find no support in the TTAB procedural rules,
`
`governing case law or common sense. Further, with respect to two discovery requests at issue in
`
`the Motions, counsel for Green Goat demonstrated to counsel for 1661 – prior to the filing of the
`
`Motions – that 1661 would obtain the discovery it was seeking by virtue of Green Goat’s
`
`agreement to comply with other discovery requests issued by 1661. (See Shapiro Decl. ¶¶ 6, 9,
`
`12.) Counsel for 1661 simply ignored counsel for Green Goat’s efforts to avoid motion practice
`
`with respect to these two discovery requests. (See id.)
`
`
`
`Accordingly, the motions provide the Board with an opportunity to remind the parties to
`
`this proceeding that (1) they should give serious consideration before filing discovery motions
`
`with flimsy legal support, and (2) discovery motions should not be filed solely as a means to drive
`
`up an opponent’s litigation expenses.
`
` 
`
`3 
`
`

`

`
`
`In an effort to reduce the number of issues before the Board raised by 1661’s motions, and
`
`despite its view that further responses were not necessary, Green Goat served today a number of
`
`supplemental responses to some of the 1661 discovery requests discussed herein. Further, Green
`
`Goat has requested counsel for 1661 to inform the Board that the issues pertaining to the discovery
`
`requests to which Green Goat has now served supplemental responses have been resolved.
`
`II. FACTS IMPORTANT TO ADJUDICATION OF 1661’S MOTIONS
`
`
`
`The discovery requests at issue in the motions now before the Board were served by 1661
`
`on May 2, 2022, on Eric Gates and Mario Tovar, who were named as Applicants in 1661’s Notice
`
`of Opposition. (See Shapiro Decl. ¶ 3.) On June 1, 2022, Messrs. Gates and Tovar served their
`
`responses and objections to the discovery requests on 1661. (See id.) Prior to today, no
`
`supplemental responses to the discovery requests have been served either by Messrs. Gates and
`
`Tovar or by Green Goat. (See id.)
`
`
`
`On August 5, 2022, the Board ruled that Green Goat should be substituted as Applicant in
`
`the proceeding for Messrs. Gates and Tovar. See 12 TTABVUE. On or around September 2, 2022,
`
`counsel for Green Goat agreed with counsel for 1661, that the discovery served on Messrs. Gates
`
`and Tovar would be deemed discovery served on Green Goat, and that the responses and objections
`
`served by the two men would be deemed responses and objections served by Green Goat on 1661.
`
`(See Shapiro Decl. ¶ 4.)
`
`
`
`On November 16, 2022, the parties held a meet-and-confer call at which some of the
`
`responses and objections that form the basis for the motions now before the Board were discussed.
`
`(See Shapiro Decl. ¶ 9.) During the call, counsel for both sides discussed 1661’s RFP No. 37,
`
`which seeks all documents relating to “any financing or potential financing of this opposition by
`
`another person and/or entity.” (See id.) Counsel for 1661 explained that such documents were
`
` 
`
`4 
`
`

`

`relevant because they would assist 1661 in discovering communications between Green Goat (and
`
`its officers and employees) and third parties concerning the instant proceeding. (See id.) Counsel
`
`for Green Goat noted that Messrs. Gates and Tovar had already agreed to produce documents
`
`responsive to RFP No. 35, which requests:
`
`concerning
`DOCUMENTS
`non-privileged
`All
`any
`communications between YOU and a third party regarding 1661
`and/or the GOAT MARKS, including any communications related
`to this opposition, the GOAT MARKS, or the GREEN GOAT
`MARK.
`
`(See id.; Mario Tovar’s Responses to First Set of Requests for Production of Opposer 1661, Inc.,
`
`Shapiro Decl. Exh. B, at 20 (emphasis added).)
`
`
`
`On this basis, counsel for Green Goat insisted that any motion to compel with respect to
`
`RFP No. 37 could not be justified. (See Shapiro Decl. ¶ 9.) Green Goat’s compliance with Messrs.
`
`Gates and Tovar’s agreement to produce documents concerning “communications between
`
`[themselves] and a third party… related to this opposition” would satisfy 1661’s stated need to
`
`discover third party communications. (See id.) Nevertheless, 1661 filed a motion to compel
`
`concerning RFP No. 37. (See id.)
`
`
`
`In meet-and-confer correspondence, counsel for Green Goat also provided counsel for
`
`1661 with a reason to avoid the motion it has filed concerning 1661’s RFA No. 25. (See id. ¶12.)
`
`That RFA seeks an admission that Green Goat “and 1661 use similar marketing channels.” 17
`
`TTABVUE 11. In an email dated November 15, 2022, counsel for Green Goat, J. Evan Shapiro,
`
`stated to counsel for 1661, Adam A. Herrera, that:
`
`Green Goat will not supplement its response to this RFA. Green
`Goat has agreed to identify each of its marketing channels in a
`supplemental response to 1661’s Interrogatory No. 4. Once Green
`Goat has done so, 1661 will be in a position to make whatever
`arguments it intends to make concerning the identity or overlap
`
` 
`
`5 
`
`

`

`between the 2 parties’ marketing channels. This RFA is thus
`duplicative, in addition to the fact that its use of “similar” is vague.
`
`(Shapiro Decl. ¶ 12 (quoting Shapiro Decl. Exhibit F).) This statement references an agreement by
`
`counsel for Green Goat (see Shapiro Decl. ¶ 12) to supplement its responses to 1661’s
`
`Interrogatory No. 4, which asks Green Goat to “Describe in detail the marketing, sales, and
`
`distribution channels used by YOU or that YOU intend to use to advertise, offer, sell, and/or
`
`provide YOUR goods and services related to the GREEN GOAT MARK.” 17 TTABVUE 49 (Exh.
`
`B to the Motions, 1661’s First Set of Special Interrogatories to Applicants Eric Gates and Mario
`
`Tovar).
`
`
`
`In disregard of this reminder that other discovery served by 1661 would provide 1661 with
`
`the discovery it seeks concerning a comparison of the marketing channels used by the two parties
`
`to this proceeding, counsel for 1661 proceeded to file what Green Goat views as an unnecessary
`
`motion concerning RFA No. 25. (See Shapiro Decl. ¶ 6.)
`
`
`
`1661’s refusal to consider Green Goat’s agreements to comply with other discovery
`
`requests issued by 1661 when deciding to move to compel with respect to RFP No. 37, and to
`
`move for a determination by the Board concerning the sufficiency of Green Goat’s response to
`
`RFA No. 25, indicate that counsel for 1661 is seeking improperly to use the discovery process for
`
`improper purposes. (See id. ¶17.)
`
`III. GREEN GOAT DOES NOT DISPUTE THAT A COMPLETE RESPONSE TO
`INTERROGATORY NO. 11 IS REQUIRED.
`
`
`
`
`At the time this opposition to 1161’s motion to compel was filed, Green Goat had served
`
`on 1661 a supplemental response to Interrogatory No. 11 containing a complete response to the
`
`interrogatory and not making reference to the Answer or to any other pleading in this
`
` 
`
`6 
`
`

`

`proceeding.1 Green Goat has also requested that 1661, Inc. inform the Board in writing that the
`
`motion to compel with respect to Interrogatory No. 11 has been resolved.2 Green Goat has
`
`included this section of its Opposition to 1661’s Motions in the event that 1661 fails to so inform
`
`the Board.
`
`
`
`Green Goat does not dispute that Interrogatory No. 11 should be responded to fully in
`
`writing. However, Green Goat fails to see why 1661 believed it necessary to file a motion to
`
`compel a response to the interrogatory. First, the interrogatory is extremely broad in nature,3
`
`requiring an extremely lengthy response and therefore unduly burdensome. Second, as a
`
`contention interrogatory, it was prematurely served as Green Goat has yet to receive any
`
`information or documents from 1661 concerning 1661’s marks at issue in this consolidated
`
`proceeding. Finally, although interrogatory responses require a verification, the nature of the type
`
`of information elicited by it can be readily verified by 1661. It seeks a comparison of facts in the
`
`public domain concerning the marks at issue – for example, facts stated in USPTO filings, and the
`
`use of the marks in connection with products on publicly available websites. To the extent that it
`
`elicits legal arguments counsel for Green Goat intends to make in this proceeding, 1661 gains no
`
`benefit from such arguments being verified by an officer of Green Goat.
`
`
`
`In light of these circumstances, it was not unreasonable for Messrs. Gates and Tovar to
`
` 
`1 (See Shapiro Decl. ¶ 7; Shapiro Decl. Exh. A.)
`
` 2 (See Shapiro Decl. ¶ 8.)
`
` Interrogatory No. 11 states:
`
`If YOU contend that the GREEN GOAT MARK, on the one hand,
`and the GOAT MARKS, on the other hand, are not confusingly
`similar, then please describe in detail all facts and reasons that
`support, disprove, and/or relate to this
`contention.
`
`7 
`
` 3
`
`
`
` 
`
`

`

`respond to Interrogatory No. 11 by referring to the 10-page statement in the Answer to the Notice
`
`of Opposition they filed demonstrating “that there is no likelihood of confusion, mistake, or
`
`deception between Opposer’s Marks and Applicants’ Mark.” Answer, 8 TTABVUE 5. While
`
`applicable caselaw does not absolutely reject reference to pleadings as a manner of responding to
`
`interrogatories, in light of the objection to Interrogatory 11 made by Messrs. Gates and Tovar,
`
`Green Goat concedes that it should have, at minimum, copied the text from the relevant portion of
`
`the Answer and incorporated it into the responses themselves.
`
`IV.
`
`
`
`
`
`
`THE BOARD SHOULD NOT COMPEL GREEN GOAT TO RESPOND TO
`1661’S INTERROGATORIES NOS. 12-18, AS THEY ARE
`DISPROPORTIONATE TO THE NEEDS OF THIS PROCEEDING – AND AS
`THEY WERE OBJECTED TO ON SUCH GROUND.
`
`1661 served seven interrogatories on Messrs. Gates and Tovar that were inspired by the
`
`following products being sold – or that were sold previously – on Green Goat’s website: (1) a t-
`
`shirt bearing the image of Muhammad Ali; (2) a t-shirt bearing the image of Tiger Woods; (3) a t-
`
`shirt bearing the image of the character Happy Gilmore from the 1996 film “Happy Gilmore”; (4)
`
`a t-shirt that includes the term “Masters”, referencing the Masters Tournament (of golf); (5) a t-
`
`shirt bearing the image of the character Tony Montana from the 1983 film “Scarface”; (6) golf
`
`balls bearing the term “Callaway,” referencing a golf equipment retailer; and (7) baseball hats
`
`bearing the term “Just” (as in “Just Golf,” “Just Birdied,” “Just Bogey’d,” etc.). See 17 TTABVUE
`
`4-6. The interrogatories seek information to determine whether Green Goat obtained consent,
`
`permission, or authorization to use the images and references on these products. See id.
`
`
`
`Messrs. Gates and Tovar objected to 1661’s Interrogatories Nos. 12-18 on the grounds that
`
`they are “disproportionate to the needs of” this proceeding, citing Pursuant to Rule 26(b)(1) and
`
`TBMP § 402.01. See id. Green Goat adopts this position.
`
` 
`
`8 
`
`

`

`
`
`1661 contends that “the issue of IP rights to the images” used on a selective handful of
`
`Green Goat’s t-shirts, caps and balls is “relevant, not overbroad and proportionate to the needs of
`
`the case.” In support of this contention, it seriously mischaracterizes caselaw concerning discovery
`
`into matters that might support the finding of the thirteenth DuPont factor of “bad faith” for
`
`purposes of determining whether there exists a likelihood of confusion between marks. Moreover,
`
`because 1661 has failed to – and, indeed, cannot – argue that Green Goat has sought to confuse
`
`consumers with its use of the complained of images and references on a handful of individual
`
`products, it cannot rely on the justification that the responses it seeks may help it establish the
`
`presence of “bad faith” in this proceeding. Under governing caselaw, the mere copying of an image
`
`is insufficient to establish the type of bad faith in the adoption of a mark that impacts the likelihood
`
`of confusion analysis under DuPont.
`
`
`
`1661 argues that the responses to Interrogatories Nos. 12-18 “may show that Green Goat
`
`has a pattern of “violating third parties’ intellectual property rights,” which, in turn, “can show that
`
`Green Goat had bad faith in adopting the GREEN GOAT mark, “which would be considered in
`
`the likelihood of confusion analysis under the DuPont test.” For this proposition 1661 cites three
`
`cases: Autoxcel Corp. v. Dent Wizard Int’l Corp., 2020 WL 5991308, at *12 (TTAB 2020);
`
`L’Oreal S.A. v. Marcon, 102 USPQ2d 1434 (TTAB 2012); and Coca-Cola Co. v. Meenaxi Enter.,
`
`2021 TTAB LEXIS 213 (TTAB 2021), reversed on other grounds by Meenaxi Enter. v. Coca-
`
`Cola Co., 38 F.4th 1067 (Fed. Cir. 2022). None of these three cases addresses possible evidence
`
`concerning the “violat[ion of] third parties’ intellectual property rights” generally as counsel for
`
`1661 misleadingly suggests. Moreover, each of them is summarily distinguished from the instant
`
`proceeding.
`
` 
`
`9 
`
`

`

`
`
`Autoexcel Corp. stands only for the proposition that “bad faith, or the intent to confuse,
`
`falls under the thirteenth DuPont factor.” 2020 WL 5991308, at *12. It involved no allegation that
`
`an applicant in an opposition proceeding had engaged in any “IP rights violation.” Meenaxi Ent.
`
`did not involve any trademark infringement or “likelihood of confusion” analysis, and the court
`
`did not apply any of the DuPont factors, including the thirteenth one of “bad faith.”4 In L’Oreal,
`
`the court determined that an applicant’s “demonstrated pattern of filing applications to register
`
`various well-known marks” of third parties in the past meant that the “applicant’s adoption of the
`
`L’OREAL PARIS mark was in bad faith, with the intention to trade off of opposer’s famous
`
`L’OREAL and L’OREAL PARIS marks.” 102 USPQ2d at 1442 (emphasis added). By contrast,
`
`here, 1661 has not argued that the handful of products about which it inquires in Interrogatories
`
`Nos. 12-18 represent an attempt by Green Goat to “fil[e] applications to register well known
`
`marks.” (It cannot because Green Goat has not engaged in filing such applications. (See Shapiro
`
`Decl. ¶ 16.)
`
`
`
`1661 has incorrectly characterized the “bad faith” factor considered in the DuPont
`
`likelihood of confusion analysis. “Bad faith” in this context is not synonymous with an “intent to
`
`copy” an image or name. As the Federal Circuit explained in a recent case, application of the “bad
`
`faith” factor involves both (1) knowledge of a prior similar mark before adopting it, and (2) “an
`
`intent to confuse” consumers. QuikTrip West, Inc. v. Weigel Stores, Inc., 984 F.3d 1031, 1036
`
`(Fed. Cir. 2021). In emphasizing the critical nature of the “intent to confuse” aspect of a party’s
`
`“bad faith” adoption of another’s mark, the QuickTrip West Court offered the following holding
`
` 
`4 The case involved use of evidence of a party’s long-established pattern of selling counterfeit
`products using very close copies of logos associated with the original version of those products
`to support the finding that a registrant had attempted deliberately to pass off its own goods as
`those of another. See Meenaxi Ent., 2021 TTAB LEXIS 213, at 49-61.  
`
` 
`
`10 
`
`

`

`by the Second Circuit: “[T]he ‘only relevant intent is intent to confuse. There is a considerable
`
`difference between an intent to copy and an intent to deceive.’” Id. (emphasis added) (quoting
`
`Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 117 (2d Cir. 2009) (quoting 4 J.
`
`Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §
`
`23.113).)
`
`
`
`Here, 1661 seeks to obtain discovery about images and words that are utterly dissimilar to
`
`the marks at issue in this proceeding – marks involving the word or acronym “goat”.5 1661 has not
`
`alleged that the Green Goat products implicated in its Interrogatories Nos. 12-18 are part of a
`
`deliberate scheme to register third party marks or to pass off counterfeit products using well-
`
`established logos belonging to others. The one-off use of an image of Tiger Woods or Mohammad
`
`Ali on single t-shirt product bears no comparison to the broad and multi-year pattern of adopting
`
`world-famous marks including “L’OREAL PARIS” established in L’Oreal, or of
`
`the sale of counterfeit products under stolen logos (for example, the sale of a lemon-lime soft drink
`
`in bottles bearing a logo nearly identical to a logo used by Coca-Cola to sell a similar drink) at
`
`issue in Meenaxi Ent.
`
`
`
`Counter to the misleading argument made by 1661, trademark case law does not support
`
`discovery into each and every instance an applicant in an opposition proceeding such as this has
`
`used the image of a famous figure, or a word used in another company’s logo, on one of its
`
`products. Not surprisingly, the case law cited by 1661 demonstrates that the Board and the federal
`
`judiciary only consider substantial patterns of conduct involving the intentional creation of
`
` 
`5 The four letters g, o, a, and t placed next to each other as a word, in other words “goat,” is often
`understood as an acronym for the expression “the greatest of all time.” See, e.g.,
`https://www.mmguardian.com/teenslang/goat#:~:text=GOAT%20stands%20for%20Greatest%2
`0of,Home (last viewed 12/8/2022 at 2:23 pm).
`
` 
`
`11 
`
`

`

`customer confusion concerning the source of goods or the deliberate misrepresentation of the
`
`source of goods as relevant to determining parties’ intent with respect to their use and registration
`
`(or application for registration) of marks. The relevance of such prior conduct derives from its
`
`potential and obvious impact on the consumer – not on the allegation that a third party’s
`
`“intellectual property rights” may have been violated. Here, 1661 has made no showing that the
`
`items at the center of Interrogatories Nos. 12-18 even remotely indicate a possible substantial
`
`pattern by Green Goat of intentionally creating consumer confusion.
`
`
`
`Accordingly, Interrogatories 12-18 inquire about subject matter that is not proportionate to
`
`1661’s needs in this proceeding. Therefore, Green Goat should not be compelled to respond to
`
`these Interrogatories.
`
`V.
`
`
`
`
`
`1661 HAS FAILED TO ESTABLISH ANY BASIS FOR REQUIRING THE
`PRODUCTION OF DOCUMENTS RELATING TO ANY THIRD-PARTY
`FUNDING OF THE DEFENSE OF THIS OPPOSITION PROCEEDING.
`
`At the time this opposition to 1161’s motion to compel was filed, Green Goat served a
`
`supplemental response to RFP No. 37 stating that Green Goat is unable to comply with Request
`
`for Production No. 37 because no documents exist concerning “any financing or potential
`
`financing” by another person and/or entity of the defense to this opposition proceeding, and
`
`that Green Goat has no documents in its possession, custody or control concerning Opposer
`
`1661, Inc.’s initiation and prosecution of this opposition proceeding.6 Green Goat has also
`
`requested that 1661 inform the Board in writing that the motion to compel with respect to RFP
`
`No. 37 has been resolved.7 Green Goat has included this section of its Opposition to 1661’s
`
`Motions in the event that 1661 fails to so inform the Board.
`
` 
`6 (See Shapiro Decl. ¶ 6; Shapiro Decl. Exh B.)
`
`12 
`
` (See Shapiro Decl. ¶ 7.)
`
` 7
`
` 
`
`

`

`
`
`1661 has moved to compel the production of documents responsive to the following
`
`Request for Production that it served on Messrs. Gates and Tovar on May 2, 2022: “Request for
`
`Production No. 37: All DOCUMENTS concerning any financing or potential financing of this
`
`opposition by another person and/or entity.”
`
`
`
`The most obvious problem with 1661’s motion is that it is 1661 – not Green Goat – who is
`
`likely to have documents concerning the financing of “this opposition” – filed by 1661 and not
`
`Green Goat. Green Goat – and the applicants who preceded it, Messrs. Gates and Tovar, have been
`
`engaged in a defense against this opposition. Presumably 1661 is “financing… this opposition.”
`
`On this ground alone, 1661’s motion to compel should be denied.
`
`
`
`Second, assuming that RFP No. 37 is capable of being interpreted as concerning the
`
`“financing” of Green Goat’s defense to “this opposition”, Messrs. Gates and Tovar properly
`
`objected to the RFP on the ground that it is “disproportionate to the needs of the case” pursuant to
`
`FRCP 26(b)(1) and TBMP § 402.01. This is particularly so given the fact that Messrs. Gates and
`
`Tovar agreed, in response to 1661’s RFP No. 35, which seeks “DOCUMENTS concerning … any
`
`[non-privileged] communications [with third parties] related to this opposition.” (See Shapiro
`
`Decl. ¶ 9; Shapiro Dec. Exh. C (at 20).) During a meet-and-confer call held between the parties in
`
`November 2022, Counsel for Green Goat explained to counsel for 1661 that assuming that the
`
`purpose of RFP No. 37 was to obtain any non-privileged third-party communications relating to
`
`this proceeding, such documents would be produced pursuant to 1661’s RFP No. 35, and therefore
`
`there was no need for 1661 to file any motion to compel. (See Shapiro Decl. ¶ 9.) Counsel for 1661
`
`rejected that suggestion and filed its motion. (See id.)
`
`
`
`1661 justifies its motion to compel with respect to its RFP No. 37 by arguing that
`
`“[d]ocuments which show that Green Goat is receiving financing for this opposition… can reveal
`
` 
`
`13 
`
`

`

`the identities of relevant third parties, as well as communications with those parties.” 17
`
`TTABVUE 10. The problem with this justification is that any need of 1661 to obtain “the identities
`
`of relevant third parties” and “communications with those [third] parties” would be satisfied by
`
`the production of documents responsive to RFP 35, to which Green Goat has agreed.
`
`Green
`
`Goat does not dispute that 1661 has the right under TBMP § 414 to obtain discovery relating to
`
`the identities of any parties “who sent or received pertinent communications.” That is why Green
`
`Goat has agreed to produce documents responsive to RFP No. 35. Thus the “simple example”
`
`provided by 1661 on page 10 of the motions to support its motion – speculation that Green Goat
`
`has a “funder” to which it has allegedly stated that “it has a risk of losing because of consumer
`
`confusion that has occurred” – is unavailing. 17 TTABVUE 10.8 Any such correspondence would
`
`be responsive to 1661’s RFP No. 35 and would have been produced to date. 1661 speculates further
`
`that “[t]he list goes on, as there are a variety of things that Green Goat may have disclosed to a
`
`potential funder that are relevant for analyzing the likelihood of confusion.” 17 TTABVUE 11.
`
`Each of these hypothetical disclosures would be required to be produced in light of Green Goat’s
`
`agreement to produce documents under RFP No. 35. (However, to the undersigned counsel’s
`
`knowledge, no such disclosures were ever made.)
`
` 
`8 Green Goat submits that counsel for 1661’s repeated use of speculative “examples” –
`hypotheticals – in its briefing on the motions, that are extremely prejudicial to Green Goat, is
`highly inappropriate. Let it be clear that Green Goat has never told any party that any “customer
`confusion” concerning its marks and any marks owned by 1661 has occurred. (See Shapiro Decl.
`¶ 15.) No such confusion has occurred to Green Goat’s knowledge. (See id.) Moreover, there is no
`evidence in the record (see id. ¶ 14) concerning any entry by Nike into a partnership with Green
`Goat in which Nike had a “mistaken belief that Green Goat and its products are somehow affiliated
`with [1661].” 17 TTABVUE 8. This hypothetical, which counsel for 1661 refers to as an
`“example,” has no basis in fact, is highly prejudicial, and therefore should not have been used in
`the briefing of the instant motions.
`
` 
`
`14 
`
`

`

`
`
`1661’s citation to Impact Engine, Inc. v. Google LLC, 2020 U.S. Dist. LEXIS 145636 (S.D.
`
`Cal. Aug. 12, 2020), a patent infringement case, in support of its right to obtain document
`
`discovery into any third-party funding upon which Green Goat might be relying is highly
`
`misleading. In Impact Engine, the court noted that “[t]here is a split of authority on whether a
`
`plaintiff’s source of litigation funding is within the scope of relevant discovery.” Id. at *3 (quoting
`
`V5 Techs. v. Switch, Ltd., 334 F.R.D. 306, 312 (D. Nev. 2019)). Reviewing the opposing reasoning
`
`of the two lines of authority to which it had referred, the court noted that “courts that have denied
`
`discovery of litigation funding agreements have also recognized that patent infringement cases
`
`present a ‘special litigation context[]’ where courts have permitted this discovery.” Impact
`
`Engine, 2020 U.S. Dist. LEXIS 145636, at *3-4 (emphasis added). The Court ultimately ruled that
`
`“any litigation funding agreements and related documents are relevant to the patent infringement
`
`claims at issue here.” Id., *4 (emphasis added). Impact Engine’s holding is limited on its face to
`
`patent infringement claims, and possibly to funding agreements that are entered into by plaintiffs
`
`– or, at the very least, parties that initiate proceedings. The decision is therefore inapposite; 1661
`
`should never have cited it.
`
`
`
`Impact Engine is relevant to the instant dispute to the extent that it demonstrates that there
`
`is a substantial body of federal case law holding that discovery into litigation funding arrangements
`
`is barred. See id., at *3, explaining:
`
`The courts that have denied discovery of litigation funding
`agreements have found them irrelevant to the issues presented. See,
`e.g., In re Valsartan, 405 F. Supp. 3d at 616 (“Plaintiffs’ litigation
`funding is a ‘side issue’ that has nothing to do with the key issues in
`the case. . . ."); V5 Techs, 334 F.R.D. at 312 ("[T]he Court agrees
`with Plaintiff that its litigation funding is not relevant to the claims
`or defenses in this case.”).
`
`
` 
`
`15 
`
`

`

`There are ample additional examples of federal decisions denying discovery into litigation funding
`
`arrangements. See, e.g., Benitez v. Lopez, No. 17-cv-3827-SJ-SJB, 2019 WL 1578167 (E.D.N.Y.
`
`Mar. 14, 2019) (denying defendants’ motion to compel, finding that documents concerning
`
`litigation financing were irrelevant and that asserted potential related problems were speculative);
`
`In re Valsartan N-Nitrosodimethylamine (NDMA) Contamination Prods. Liab. Litig., 405 F. Supp.
`
`3d 612, 615 (D.N.J. Sept. 18, 2019) (denying the discovery request and holding the litigation
`
`funding information was irrelevant but stating that discovery could be allowed if the defendant
`
`showed good cause, e.g., where “something untoward occurred,” or a non-party was making
`
`litigation decisions, or the interests of the class were not being protected or a conflict of interest
`
`existed).
`
`
`
`Here, 1661 has argued only that it requires Green Goat to produce documents concerning
`
`third party funding of “this opposition” because it seeks the contents of communications between
`
`Green Goat and any party funding the opposition concerning the opposition and the marks
`
`involved in the opposition, and the identity of the funders. It has failed to articulate any discovery
`
`need it has with respect to communications or documents that strictly concern a funding
`
`arrangement itself, or any improper involvement of a “funder” in this proceeding. In light of these
`
`circumstances, and Green Goat’s prior agreement to produce certain third-party communications
`
`to 1661, 1661’s motion to compel with respect to its RFP No. 37 should be soundly rejected.
`
`VI.
`
`
`
`
`THE CURRENT RESPONSES TO 1661’S REQUESTS FOR ADMISSION NOS. 6
`AND 25 ARE NEITHER UNDULY EVASIVE NOR DEFICIENT.
`
`1661 moves the Board to determine that the responses to 1661’s Requests for Admission
`
`Nos. 6 and 25, are insufficient and to compel Green Goat to “serve full, complete, and proper
`
`responses” to those two RFAs. The only authority cited by 1661 for this motion relating to the two
`
`RFAs is Fed. R. Civ. P. 36(a)(4) (“[W]hen good faith requires a party qualify an answer or deny
`
` 
`
`16 
`
`

`

`only a part of the matter, the answer must specify the part admitted or deny the rest.”). 1661’s
`
`motion with respect to RFAs 6 and 25 should be denied.
`
`
`
`
`
`A.
`
`RFA No. 6 – “Incorporation” of the “GOAT MARKS”
`
`RFA No. 6 asks Green Goat to “[a]dmit that the GREEN