throbber
MAILED
`_
`MAY 0 8 2002
`
`tww
`
`PAT. & T.M. OFFICE
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`\
`Arlington, Virginia 22202-3513
`
`I
`
`$$5*866—==;L—
`Opposition No.
`22-
`r-
`\;_.
`__«"_umCancellation Nos&t28,126;¥-7)
`<€8,l27{'28f130}28fT333(‘*“**‘””“—'"
`28,145; 28.155; 28,171;)(
`28,174; 28,199; 28,248-
`28,280; 28,294; 28;314-
`28,319; 28,325; 28,342Xhnd"
`28,379
`
`Prairie Island Indian
`Community, Plaintiff
`
`v.
`
`Treasure Island Corporation,
`Defendant
`
`
`
`Before Seeherman, Bottorff and Rogers, Administrative
`Trademark Judges.
`\
`
`By the Board:
`
`The following motions are addressed herein by the
`
`Board:
`
`(1) defendant's motion (filed April 25, 2001,
`
`Cancellation No. 28,126)
`
`to compel discovery;
`
`(2)
`
`in
`A
`
`in Opposition No.
`plaintiff's motion (filed July 10, 2001,
`115,866)
`to consolidate the above-referenced opposition and
`
`cancellation proceedings or,
`
`in the alternative,
`
`to suspend
`
`the opposition proceeding pending the outcome of
`Cancellation No. 28,126;
`(3) plaintiff's motion (filed July
`
`11, 2001,
`
`in Opposition No. 115,866)
`
`to compel discovery and
`
`

`
`
`
`Opposition No. 11!,866
`
`Cancellation Nos. 28,126 and others
`
`0
`
`
`
`
`(4) defendant's motion (filed October 2, 2001 in
`
`Cancellation No. 28,126)
`
`for discovery sanctions.
`
`The parties have briefed the motions and,
`
`in order to
`
`expedite decision thereon,
`
`the Board presumes familiarity
`
`with the issues presented and does not provide a complete
`
`recitation of the allegations and contentions of each party.
`
`
`
`
`
`
`Opposition No. 115,866 Consolidated With Cancellation No.
`28,126 (and Previously Consolidated Cancellation
`Proceedings) For Purposes of Trial And Submission of frial
`Briefs only .
`—
`_
`We turn first to plaintiff's motion to consolidate
`
`Opposition No. 115,866 with Cancellation No. 28,126 [which
`had been previously consolidated with Cancellation Nos.
`28,127; 28,130; 88,133; 28,145; $8,155; 38,171; §8,174;
`
`28,199; 28,248; 28,280; 28,294; 28,314; 28,319; 28,325;
`
`flwwmmnu
`
`28,342 and 28,379].
`
`The Board has reviewed the claims and
`
`defenses in the subject opposition and cancellation
`
`proceedings. Because the parties are the same and the
`
`proceedings involve common questions of law or fact, and in
`the interest of judicial economy, plaintiff's motion is
`approved to the extent that Opposition No. 115,866 and
`
`Cancellation Nos. 28,126; 28,127; 28,130; $8,133; 88,145;
`
`28,155; 28,171; 28,174; 28,199; 28,248; 28,280; 28,294;
`
`28,314; 28,319; 28,325; 28,342 and 28,379 are hereby
`
`consolidated solely for purposes of taking testimony and
`
`
`
`

`
`
`
`Opposition No. 11b,866
`
`0
`
`Cancellation Nos. 28,126 and others
`submission of main briefs,‘ and may be presented on the same
`
`record and briefs.
`
`See Fed. R. Civ. P. 42(a).
`
`Discovery had closed in Opposition No. 115,866 as of
`
`April 25, 2001, when defendant filed its motion to compel in
`
`the consolidated cancellation proceedings, but remained open
`
`in the consolidated cancellations. Therefore, the Board
`
`will limit any future discovery served by either party to
`that which is relevant to the cancellation proceedings. .As“"mww”l
`
`set forth below, proceedings herein are resumed and the
`
`deadline for discovery (effective solely for the
`
`cancellation proceedings)
`
`is reset.
`
`The rescheduled
`
`testimony dates are applicable to the opposition and
`
`cancellation proceedings as consolidated.2
`
`Plaintiff's Motion (filed July 11, 2001)
`
`to compel Discovery
`
`The Board now turns to plaintiff's motion (filed July
`
`11, 2001)
`
`to compel discovery in Opposition No. 115,866.
`
`Specifically, plaintiff seeks an order compelling defendant
`
`to fully respond to-Interrogatory Nos.
`
`2 and 4, and Requests
`
`for Production of Documents 1, 2, 8, 9, and 10,
`
`including
`
`the disclosure of information otherwise protected by the
`
`
`‘ The Board file for Opposition No. 115,866 will be maintained
`as the “parent” case, but all papers filed herein must include
`the proceeding numbers of the consolidated cases, beginning with
`the opposition proceeding number, and listing the cancellation
`cases in ascending numerical order.
`to suspend the
`2 Plaintiff's motion, filed in the alternative,
`opposition proceeding pending the outcome of Cancellation No.
`28,126,
`is denied.
`
`

`
`
`
`E
`
`Opposition No. ll’,866
`
`Cancellation Nos. 28,126 and others
`
`attorney—client privilege. Essentially, plaintiff argues
`
`that defendant, by pleading the affirmative defenses of
`
`laches, acquiescence and estoppel, has waived the attorney-
`
`client privilege,
`
`in part,
`
`regarding information and
`
`documents “that reflect on its decision to adopt and use the
`
`mark TREASURE ISLAND and that, heretofore, have been
`
`withheldm.”
`
`ln its opposition to plaintiff's motion to compel,
`
`defendant argues that there is no waiver of any attorney-
`
`client privilege because it has not “put advice of counsel
`
`at issue and does not propose to affirmatively rely on
`
`advice of counsel at trial.” Indeed, our review of the
`
`record does not reveal any attempt by defendant
`
`to utilize
`
`communications between it and counsel to demonstrate or
`
`support its pleading of the affirmative defenses.
`
`As the court
`
`in Frontier Refining Inc. et al V. Gorman—
`
`Rupp Company, Inc.,
`
`l36iF.3d 695 <10“ Cir. 1998) noted,
`
`there are three general approaches utilized to determine
`
`whether a party has waived the attorney-client privilege as
`
`a result of asserting a claim, counterclaim or affirmative
`
`defense.
`
`The Court described them in the following manner:
`
`The first of these general approaches is the “automatic
`waiver” rule, which provides that a litigant
`automatically waives the privilege upon assertion of a
`claim, counterclaim, or affirmative defense that raises
`as an issue a matter to which otherwise privileged
`material is relevant. See Independent Prods. Corp. v.
`Loew’s Inc., 22 F.R.D. 266, 276-77 (S.D.N.Y. 1958)
`(originating “automatic waiver” rule); see also FDIC v.
`
`

`
`
`
`Opposition No. 11.,866
`
`Cancellation Nos. 28,126 and others
`
`O
`
`(D. Colo. 1991)
`Wise, 139 F.R.D. 168, 170—71
`(discussing Independent Productions and “automatic
`waiver” rule). The second set of generalized approaches
`provides that the privilege is waived only when the
`material to be discovered is both relevant to the
`issues raised in the case and either vital or necessary
`to the opposing party's defense of the case. See Black
`Panther Party v. Smith, 213 U.S. App. D.C. 67, 661 F.2d
`1243, 1266-68 (D.C. Cir. 1981)
`(balancing need for
`discovery with importance of privilege), vacated
`»e- without-opinion,.458.U.S._l118.J1982); Hearn v."Rhay,____"w“_“_
`68 F.R.D. 574, 581 (E.D. Wash. 1975)
`(setting forth
`three—factor test, which includes relevance and
`vitality'prongs):
`-Finally, several courts have-:~v«--~~~»um-
`recently concluded that a litigant waives the attorney-
`client privilege if, and only if,
`the litigant directly
`‘puts the attorney's advice at issue in the litigation.
`See, e.g., Rhone-Poulenc Rorer Inc. v. Home Indem. Co,
`32 F.3d 851, 863fi64 (3d Cir. 1994)
`(adopting
`restrictive test and criticizing more liberal views of
`waiver).
`
`Id. at 699~7OO
`
`.As acknowledged in a very recently decided case,
`
`the
`
`Court of Appeals for the Federal Circuit has not “had the
`
`occasion to address whether the pleading of equitable
`
`estoppel and laches defenses constitutes an implicit waiver
`
`of attorney-client privilege.” Chamberlain Group v.
`
`Interlogix, Inc., 2002 U.S. Dist. Lexis 5468 (N.D. Ill.,
`
`March 26, 20O2).3 The Chamberlain court dealt with a patent
`
`infringement case with facts very similar to those at hand.
`
`The court adopted the third, more narrowly constructed,
`
`implicit waiver rule described above. Specifically,
`
`the
`
`court held that “advice of counsel is not
`
`‘in issue’ because
`
`
`
`3 The Board generally looks to the Federal Circuit for guidance
`as it is the Board's primary reviewing court.
`
`

`
`
`
`Opposition No . «,866
`
`Cancellation Nos. 28,126 and others
`
`O
`
`i
`
`it is relevant,” citing Rhone-Poulenc, id..
`
`The Court
`
`further held that the defendant therein did not “assert
`
`advice of counsel as a defense, and it has not used
`
`attorney-client communications to prove a claim or defense.
`
`Consequently,
`
`[defendant] has not waived the attorney—client
`
`privilege, and its attorney opinions on [plaintiff's]
`
`patents are not discoverable.” Id. at p. 12.
`
`We ga;;“rgv:¢véa and considered the possible approaches”""
`
`to determining if defendant's pleading of laches,
`
`acquiescence and estoppel constitute any implicit waiver of
`the attorney-client privilege. We find the reasoning of the
`
`courts in Rhone—Poulenc and Chamberlain persuasive and, as
`
`described further below, we herein adopt
`
`the same approach.
`
`In Rhone—Poulenc,
`
`the court held that “the advice of
`
`counsel is placed in issue where the client asserts a claim
`
`or defense, and attempts to prove that claim or defense by
`
`disclosing or describing an attorney—client communication.”
`
`Id. at 864. Or, as the Chamberlain court succinctly put it,
`
`“the mere assertion of equitable estoppel and laches
`
`defenses is insufficient to waive the attorney~client
`
`privilege.” Id. at 15.
`
`Furthermore,
`
`the Chamberlain court
`
`stated that the narrow construction of the implicit waiver
`
`“comports with the basic principles of the attorney client
`
`privilege. When the privilege is waived, it is often
`
`because confidential communications are the only source of
`
`

`
`
`
`Opposition No. 9,866
`
`Cancellation Nos. 28,126 and others
`
`.
`
`evidence on the disputed issue.” Id. citing Pippenger V.
`
`Gruppe, 883 F. Supp. 1201," 1204 (S.D.
`
`Ind. 1994).
`
`In considering the three affirmative defenses pleaded
`
`by defendant,
`
`the Board notes that the acquiescence and
`
`laches defenses do not even contain an element relating to
`
`defendant's conduct_but are directed solely to action or
`
`inaction of plaintiff.‘
`
`It is not possible therefore to
`
`construe the mere pleading at these defenses as placing'at"‘
`
`issue defendant's conduct or state of mind, namely,
`
`its
`
`reasons for adopting and using its trademark under the
`
`Rhone—Poulenc approach or, even under the second, more
`
`liberal standard for-“at issue” waiver, as enunciated by the
`
`court in Hearn V. Rhay, 68 F.R.D. 574, 581 (E.D. Wash.
`
`1975). Under either standard,
`
`the defendant has not waived
`
`the attorney-client privilege merely by pleading laches and
`
`acquiescence.
`
`We now look at the third defense of equitable
`
`estoppel.
`
`The elements required to establish equitable
`
`
`
`(1) an active
`‘ The elements of acquiescence are:
`(2)
`representation that a right or claim would not be asserted;
`the delay between the active representation and assertion of the
`right or claim was not excusable; and (3)
`the delay caused
`the undue prejudice. Hitachi Metals International, Ltd. V.
`Yamakyu Chain Kabushiki Kaisha, 209 USPQ 1057 (TTAB 1981).
`As set forth in Lincoln Logs Ltd. V. Lincoln Pre-Cut Log Homes
`Inc., 971 F.2d 732, 23 USPQ2d 1701 (Fed. Cir. 1992),
`the
`elements of laches are (1) unreasonable delay in assertion of
`one's rights against another; and (2) material prejudice to the
`other attributable to this delay.
`
`

`
`
`
`Opposition No. 11 ,866
`Cancellation Nos. 28,126 and others
`
`Q
`
`0
`
`'
`
`estoppel are:
`
`(1) misleading conduct which leads another
`
`to reasonably infer that rights will not be asserted
`
`against it;
`
`(2) reliance upon this conduct; and (3) due to
`
`this reliance, material prejudice if the delayed assertion
`
`of such rights is permitted. Lincoln Logs Ltd. v. Lincoln
`
`Prejcut Log Homes incl, §7l F.2d 732, 23 USPQ2d 1701 (Fed.
`
`Cir. 1992) citing A.C. Aukerman Co. V. R.L. Chaides
`
`Construction Co., 960 F.2d lOéO, 22‘U§PQ§d ldél
`
`(Fed. Cir.
`
`1992).
`
`As stated above, defendant has not attempted to rely
`
`on advice from counsel or any privileged communications
`
`with counsel
`
`to prove the affirmative defense of equitable
`
`estoppel.
`
`In accordance with Rhone—Poulenc and
`
`Chamberlain, we therefore find that there is no implicit
`
`waiver as a result of defendant's merely pleading this
`
`defense.
`
`While laches and acquiescence do not contain an
`
`element
`
`involving defendant's conduct,
`
`the Board notes that
`
`estoppel requires a showing of defendant's reliance upon
`
`plaintiff's conduct. Also, as an affirmative defense,
`
`estoppel is potentially dispositive of this case.
`
`Plaintiff argues that,
`
`in view thereof,
`
`the only possible
`
`recourse for rebutting defendant's assertion of detrimental
`
`reliance is to show that defendant did not rely on
`
`plaintiff's action or inaction but instead relied on the
`
`

`
`
`
`Opposition No. 11’,866
`
`Cancellation Nos. 28,126 and others
`
`0
`
`advice of counsel. We disagree. As the Chamberlain court
`
`aptly pointed out,
`
`a party may “dispute equitable estoppel
`
`by contesting the remaining... prongs of the affirmative
`
`defense.
`
`[Citing Pippenger v. Gruppe, 883 F. Supp. 1201,
`
`1204 (S.D.
`
`Ind. 1994)].
`
`(attorney-client communications are
`
`not
`
`the only source of relevant information; plaintiff
`
`could question defendant on the extent of its reliance on
`
`plaintiff's conduct).”
`
`In view thereof, plaintiff's motion to compel is hereby
`
`denied to the extent that plaintiff seeks privileged
`
`communications regarding defendant's decision to adopt and
`
`use the TREASURE ISLAND mark. Specifically,
`
`the'attorney—
`
`client privilege has not been waived with regard.to the
`
`communications identified in plaintiff's motion to compel
`(Treasure Island's Corp.’s Privilege Log item nos. 5, 31,
`
`34-37, 53, and 130-137).
`
`Defendant, However, Required to Produce Copy of October 21,
`1991, Thomson & Thomson Search Report
`
`Defendant has stated (footnote 6 on page 17 of its
`“opposition to opposer’s motion to compel”)
`that its failure
`
`to produce an October 21, 1991 Thomson & Thomson trademark
`
`search report is not based on attorney-client privilege or
`
`work product doctrine but rather because it “cannot be
`
`located despite diligent efforts.” Defendant further stated
`that it was in the process of contacting Thomson & Thomson
`
`to obtain a copy of the search report and,
`
`iffsuccessful,
`
`

`
` ;
`
`discussed above).
`
`See Fisons Ltd. v. Capability Brown Ltd.,
`
`_ 209 USPQ 167 (TTAB 1980); Goodyear Tire & Rubber Co: y:
`
`Tyrco Industries, 186 USPQ 207 (TTAB 1975); Miles
`
`Laboratories,
`
`Inc. v.
`
`Instrumentation Laboratory, Inc., 185-“flu
`
`USPQ 432 (TTAB 1975); and Amerace Corp. V. USM Corp., 183
`
`USPQ 506 (TTAB 1974).
`
`We trust that defendant by this time has located the
`
`subject search report or obtained a copy from Thomson &
`
`Thomson. Defendant is hereby ordered to serve a copy of
`
`said report to plaintiff within twenty (20) days from the
`
`dated stamped on this order.
`
`If defendant has failed to
`
`locate or obtain a copy of the search report, defendant
`
`(within the
`should file with the Board a detailed report
`same 20 day time period) specifying all efforts to find the
`report,
`including a listing of files searched; personnel
`
`conducting the search(es), and dates/hours spent searching
`
`for the report, as well as a report on the effort to obtain
`
`a copy from Thomson & Thomson.
`
`Defendant's Motion to compel Discovery
`We now turn to defendant's motion (filed April 25,
`
`2001,
`
`in Cancellation No. 28,126)
`
`to compel discovery in
`
`10
`
`99
`
`Opposition No. 11 ,866
`Cancellation Nos. 28,126 and others
`
`.
`
`O
`
`1
`
`’
`
`would produce a copy for plaintiff.
`
`It is well-established
`
`that search reports are discoverable, but the comments or
`opinions of attorneys relating thereto are privileged and
`
`not discoverable (unless the privilege is waived, e.g., as
`
`

`
` I
`
`Opposition No . Q866
`
`.
`
`J
`
`Cancellation Nos. 28,126 and others
`
`that case. Defendant is moving to compel production of
`
`copies, without redactions, of all correspondence “from or
`
`to Merchant & Gould (plaintiff's former counsel)
`
`regarding
`
`the TREASURE ISLAND mark.” Defendant asserts that plaintiff
`
`has waived any attorney-client privilege to these documents
`
`as a result of its voluntarily producing (in response to
`
`defendant's discovery requests)
`
`two letters (dated April 15,
`
`1992, and April 22, 1992), with redactions,
`
`from Merchant"&"*‘“"“"
`
`Gould to plaintiff's former general manager regarding the
`I
`
`TREASURE ISLAND mark.5
`Plaintiff acknowledges that it voluntarily produced the
`
`two letters, with redactions, but argues that it waived the
`
`attorney-client privilege only as to “the subject matter of
`
`the disclosed communications ~ the registrability of
`
`Plaintiff's mark in 1992.” Likewise, plaintifffargues that
`
`the redacted portions of the two letters and other documents
`sought by defendant are protected by the attorney-client
`privilege.
`-Thus,
`the issue before the Board now is not
`whether plaintiff waived its attorney-client privilege,
`which has been conceded, but the scope of the waiver.
`
`
`5 The Board notes that only the holder of the attorney—client
`privilege (the client) may waive the attorney—client privilege.
`McCormick On Evidence,
`§ 93, at 341 (John William Strong, ed.,
`West Publishing)
`(1992). However,
`the privilege is waived if
`the privilege holder/client voluntarily discloses or consents to
`disclosure of any privileged communications. See; e.g.,
`In re
`Von Bulow, 828 F.2d 94, 101 (2d Cir. 1987).
`In this case,
`the
`client (Prairie Island) waived its privilege by consenting to
`the production of the two letters and by discussing them during
`I
`the contemporaneous discovery deposition.
`
`11
`
`

`
`Opposition No; $866
`
`-
`
`Cancellation Nos. 28,126 and others
`
`!
`
`0
`
`The voluntary waiver by a party, without limitation, of
`one or more privileged documents discussing a certain
`subject waives the privilege as to all communications
`
` numerous.
`
`between the same attorney and the same client on the same
`
`subject.
`
`.
`
`r_. M.
`
`The authorities for this general rule are
`
`See e.g., Weil v.
`.
`_w_. _.
`‘AI: -.
`
`Investment/Indicatorst Research
`_,
`_‘
`H,
`,_ __,
`_ H__ _“___"m___“
`
`& Management, 647 fi.2d 18, 24 (9th Cir. 1981) and“ in
`
`4 Moore's federal Practice fi26;60[2]} page 26:§Ol:'“tM~ ‘
`‘general,
`202 (1989).
`'
`Plaintiff has submitted the two aforementionhd
`
`redacted letters, without redactions, and six other letters
`
`for in camera inspection. Plaintiff argues that;the six
`additional letters are protected by the attorneyeclient
`
`privilege.6 In order to determine the scope of the waiver
`of the attorney-client privilege,
`the Board hasfreviewed
`
`the two letters voluntarily disclosed by plaintiff (through
`
`its former counsel).
`
`These letters, and the others
`
`produced in briefing the motion to compel, aresdiscussed
`
`separately below.
`
`I
`___i__
`
`5 In plaintiff's response to the motion to compel, it states
`that it is submitting for in camera inspection seven additional
`letters which it believes are protected by the attorney—client
`privilege. However,
`the Board received copies of only six
`additional letters.
`It appears from page 3 of plaintiff's
`response that communications numbered “4” and “7? are the same
`document .
`
`12
`
`

`
`
`
`Opposition No .
`
`866
`
` Cancellation Nos. 28,126 and others
`
`(1) April 15, 1992 Letter From Merchant
`& Gould to
`___________________________________________________
`s Response]
`Mr. Ronald Valentine [Exhibit A-l of Plaintiff’
`
`As stated in the first paragraph (unredacted) of this
`
`letter, one subject discussed in the letter involves
`
`plaintiff's former counsel's providing its “reviewgof the
`‘trademark'availability'search results;” “Plaintiff ---~~-~~~~w~~
`voluntarily produced unredacted portions of this letter_“
`which discussed certain marks, e.g.,
`the “Netherlands
`Antilles mark”, but redacted portions of the lettbr which
`discussed other marks.
`Inasmuch as the subject matter of
`the entire first two pages of the letter involves
`discussion of the trademark search results, plaintiff has
`waived any attorney—client privilege to the contents of the
`
`first two pages.
`The first two paragraphs of page three of the letter
`contain plaintiff's counsel's discussion of matters
`unrelated to the trademark search results, andjthus do not
`I
`
`fall within the scope of the waived subject matter.
`-
`I
`noted that plaintiff did not redact the last paragraph of
`the third page.
`i
`
`‘It is
`
`& Gould to
`1992 Letter From Merchant
`(2) April 22,
`[Exhibit A-2 of Plaintiff's Response]
`I
`Mr. Ronald Valentine
`
`The unredacted portions of this letter (first two
`
`sentences of first paragraph on page one andfthe last
`paragraph on page two) contain information in the following
`
`13
`
`

`
`
`
`Opposition No. 1*,866
`
`Cancellation Nos. 28,126 and others
`
`‘
`
`.5
`
`subject areas: plaintiff's counsel's request for
`
`plaintiff's dates of first use; plaintiff's intentfion to
`
`initiate an advertising campaign; and plaintiff's intention
`J
`
`of filing for “state service mark registrations.” §Thus
`
`plaintiff has voluntarily waived any attorney-clieht
`
`_privilege that may have otherwise protected commudications
`and/or documents discussing these subjects.
`;
`
`Inasmuch as the last sentence of the first“paragraph‘on‘"“T“”“ *"
`i
`
`page one contains information regarding plaintiffVs expenses
`
`involved with filing for state registrations, itfis a
`
`distinct subject and has no possible relevance to any
`
`substantive issue.
`
`However,
`
`the second paragraph on page one ibvolves
`
`issues, i.e.,
`
`the federal registration search add possible
`
`conflicts, which fall within the scope of subject areas for
`
`which plaintiff has waived its attorney-client privilege.
`I
`
`The Board thus finds that plaintiff has also wdived any
`
`attorney-client privilege that may have protected this
`.
`paragraph.
`E
`Consequently,
`to the extent that defendant's motion to
`compel seeks production of this document, it #5 hereby
`granted in part and denied in part; specifically, plaintiff
`is hereby ordered to produce another copy of this letter
`‘
`I
`
`which does not redact the second paragraph ongpage one.
`
`I I
`
`I
`
`14
`
`

`
`
`
`Opposition No Q866
`
`Cancellation Nos. 28,126 and others
`
`O
`
`Plaintiff may continue to redact the last sentence of the
`
`first paragraph on page one.
`
`(3) April 22, 1992 Letter From Merchant & Gould toj
`Foote Marketing Group [Exhibit A-3 of Plaintiff's Besponse]
`
`Inasmuch as this letter involves issues that fall
`
`within the scope of subject areas for which plainthff has
`
`waived its attorney~client privilege,
`
`the Board ffinds-that~—~——~~-~—~
`
`plaintiff has waived any attorney-client privilege that may
`f
`--—- ov -oo~-~ - ——-.-—.~_~-.... .... .
`
`have protected this letter. Consequently,
`
`to thegextent
`I
`
`that defendant's motion to compel seeks productioh of this
`1
`
`document, it is hereby granted and plaintiff is drdered to
`1
`
`. produce an unredacted copy of this letter to defendant for
`I
`.I
`iI
`
`copying and/or inspection.
`
`(4) May 13, 1992 Letter From Merchant & Gould to,"
`Foote Marketing Group [Exhibit A—4 of Plaintiff’fi Response]
`I
`
`Inasmuch as this letter involves issues that fall
`I
`within the scope of subject areas as to which plaintiff has
`
`waived its attorney—client privilege,
`the Boardffinds that
`l
`plaintiff has waived any attorney—client privilkge that may
`
`have protected this letter. Consequently,
`
`to fihe extent
`
`that defendant's motion to compel seeks production of this
`
`document, it is hereby granted and plaintiff is ordered to
`produce an unredacted copy of this letter to dkfendant for
`
`I
`!
`
`‘copying and/or inspection.
`
`15
`
`

`
`.
`
`Opposition No. 11’,866
`
`Cancellation Nos. 28,126 and others
`
`.
`
`(5) March 5, 1992 Letter From Merchant & Gould to
`Plaintiff [Exhibit A-5 of Plaintiff's Response]
`Inasmuch as this letter does not
`involves issues that
`
`fall within the scope of subject areas as to whichiplaintiff
`
`has waived its attorney—client privilege,
`the Board finds
`that plaintiff has not waived its attorney-client %rivilege
`in relation to this letter. Consequently,
`to thefextent'”“‘““*"”‘*'*
`that defendant's motion to compel seeks production of this «
`1¢*”m_V
`
`I
`
`I
`
`document, it is hereby denied.
`
`1I
`
`(6) March 5, 1992 Letter From William Hardacker tb
`Merchant & Gould [Exhibit A-6 of Plaintiff's Respbnse]
`
`Inasmuch as this letter does not
`
`involves issue(s)
`
`that
`
`fall within the scope of subject areas as to which plaintiff
`has waived its attorney—client privilege,
`the Board finds
`that plaintiff has not waived its attorney—clien% privilege
`in relation to this letter. Consequently,
`to tde extent
`that defendant's motion to compel seeks production of this
`
`document, it is hereby denied.
`
`y
`
`I
`
`(7) November 21, 1996 Letter From Merchant & Gohld to
`Plaintiff [Exhibit A-7 of Plaintiff's Responsefi
`I
`Inasmuch as this letter involves issues that fall
`1
`within the scope of subject areas as to which plaintiff has
`
`waived its attorney~client privilege,
`
`the Board finds that
`
`plaintiff has waived any attorney—client privifiege that may
`
`II
`
`have protected this letter. Consequently,
`
`tolthe extent
`i
`that defendant's motion to compel seeks production of this
`
`document, it is hereby granted and plaintiff is ordered to
`
`16
`
`

`
`Opposition No.
`
`866
`
`Cancellation Nos. 28,126 and others
`
`O
`
`produce an unredacted copy of this letter to defendent for
`
`copying and/or inspection}
`
`& Gould to
`(8) September 13, 1996 Letter From Merchant
`Plaintiff [Exhibit A-8 of Plaintiff's Response]
`’
`
`III
`
`Inasmuch as this letter involves issues that fall
`
`II
`
`within the scope of subject areas as to which plaintiff has
`
`.~.
`
`
`
`waived its attorney-client privilege,
`the Board fgnds~that~—- m»~~-
`'
`I
`plaintiff has waived any attorney-client privilege that may
`
`have protected this letter. Consequently,
`
`to thejextent
`
`that defendant's motion to compel seeks productiop of this
`document, it is hereby granted and plaintiff is drdered to
`x
`I
`produce an unredacted copy of this letter to defendant for
`
`copying and/or inspection.
`
`Defendant's Motion For Discovery Sanctions
`Defendant filed (on October 2, 2001)
`
`I
`a motilon for
`
`discovery sanctions based on plaintiff's “violations of the
`I
`Board's April 17, 2001 order compelling plaintiff to serve
`,
`_
`I
`amended discovery responses and produce documents.”
`Defendant requests the Board to impose sanctiofls “deeming
`‘
`I
`established [defendant's] prima facie showing df its
`I
`
`defenses based on laches, estoppel and waiverfl..__.‘_
`Inasmuch as the Board's order did not spepify a
`
`deadline for compliance with the order, defendhnt’s motion
`
`is hereby denied.7 However,
`
`
`to the extent thaf plaintiff
`I
`
`7 Despite the neglect of the Board in not setting a deadline for
`compliance with the April 17, 2001 order,
`for which reason
`
`17
`
`

`
`
`Opposition No. ”,866
`.
`/
`
`Cancellation Nos. 28,126 and others
`
`5
`
`has not complied with the April 17, 2001, order, itiis
`;
`hereby ordered to comply within thirty (30) days ffiom the
`III
`
`mailing date stamped on this order.
`
`Summary
`
`;
`
`i
`I
`
`In summary,
`
`(1) defendant's motion (filed Aprpl 25,
`I
`
`2001,
`
`in Cancellation No. 28,126)
`
`to compel discofiery is
`
`granted in part and denied in part
`_
`(2) plaintiff's motion (filed July 10, 2001,
`
`(as explained herein);
`I
`in Opposition
`I
`No. 115,866)
`to consolidate the above-referenced ppposition
`and cancellation proceedings is granted;
`(3) plaJntiff’s
`
`motion (filed July 11, 2001,
`'
`
`in Opposition No.
`
`ll5,866)
`I
`
`to
`
`compel discovery is denied to the extent that the attorney-
`
`client privilege has not been waived by defendant with
`I
`regard to the communications identified in plaidtiff’s
`motion to compel; however, plaintiff's motion td compel is
`
`granted to the extent that defendant is hereby prdered to
`I
`produce the search report for inspection and/oricopying by
`
`plaintiff within thirty (30) days from the daté stamped on
`I
`
`this order; and (4) defendant's motion (filed éctober 2,
`I
`
`I
`
`I I
`
`2001)
`
`for discovery sanctions is denied.
`
`I I s
`
`the Board is nod impressed with
`anctions are not being entered,
`plaintiff's reasons for failing to comply in a timely manner.
`Certainly plaintiff should have attempted to comply with the
`order as if the relevant discovery requests were being served on
`that date, i.e., plaintiff should have responded within thirty
`days from the date of the order.
`
`III
`
`18
`
`

`
`_
`
`4
`
`~—‘§_.
`
`‘_
`
`n
`
`Opposition No. 11!,866
`
`Cancellation Nos. 28,126 and others
`
`0
`
`I
`
`;
`
`Proceedin s Resumed
`
`Proceedings herein are resumed and trial dates)
`
`including the close of discovery (only for the canqellation
`
` A
`
`proceedings), are reset as follows:
`
`THE PERIOD FOR DISCOVERY IN
`OPPOSITION NO. 115,866 TO CLOSE:
`
`CLOSED
`
`I II
`
`I
`
`I I
`
`I I
`
`June 11; 2002
`
`SeptemberI9, 2002
`
`I I
`
`I
`November 23, 2002
`
`I THE PERIOD F012 DISCOVERYMINI
`CANCELLATION NOS. 28,126; 28,127;
`28,130; 28,133; 28,145;.28,155;‘_
`28,171; 28,174; 28,199; 28,248;
`28,280; 28,294; 28,314; 28,319;
`28,325; 28,342 and 28,379 TO CLOSE:
`
`30—day testimony period for party in-
`position of plaintiff to close:
`\
`
`_
`
`30-day testimony period for party in
`position of defendant to close:
`
`15-day rebuttal testimony period for
`plaintiff to close:
`
`I
`DecemberI23, 2002
`
`In each instance, a copy of the transcript of testimony
`
`together with copies of documentary exhibits, must be served
`
`on the adverse party within thirty days after completion of
`the taking of testimony. Trademark Rule 2.125.II
`Briefs shall be filed in accordance with Trédemark Rule
`I
`.
`
`2.l28(a) and (b).
`E
`An oral hearing will be set only upon request filed as
`
`III I III
`
`I II
`
`I
`
`provided by Trademark Rule 2.129.
`
`19

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