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`IN THE UNITED STATES PATENT AND TRADEMARK FICE§
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOQE)
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`Cancellation No. 92053 24
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`LLOYD, INC. OF IOWA,
`Petitioner,
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`v.
`JENNIFER L WEEMS
`Respondent
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`)
`)
`)
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`)
`5
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`4| LOKO
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`PETITIONER’S MOTION FOR SUMMARY JUDGMENT OR IN THE ALTERNATIVE
`MOTION FOR SANCTIONS IN THE FORM OF ORDER CANCELLING
`REGISTRATION FOR VIOLATION OF THE BOARD’S PROTECTIVE ORDER
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`Petitioner, Lloyd Inc. of Iowa (‘Petitioner’), moves for summary judgment under Fed. R.
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`Civ. P. 56, on the basis that there is no issue of material fact to be resolved and Petitioner is
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`entitled to judgment on the merits of the cancellation proceeding as a matter of law, or in the
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`alternative, for an Order cancelling Respondent’s registration as a sanction for Respondent’s
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`violation of the Board’s protective order pursuant to TBMP § 527.01 and 37 CFR § 2.l20(g).
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`There is no evidence of record and no evidence that Respondent could submit that would
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`prevent a finding that Petitioner has prior rights in the EQU-AID mark, nor that a likelihood of
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`consumer confusion between Petitioner’s EQU-AID mark and Respondent’s proposed EQUI-
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`ADE mark that is the subject of the challenged registration would not be likely among the
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`relevant consuming public.
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`In addition, Respondent’s counsel has admitted to violating the Board’s protective order
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`by disclosing TRADE SECRET COMMERCIALLY SENSITIVE materials that includeda
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`complete list of Petitioner’s customers and sales data from 2002 through 2009 to Respondent,
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`another company in the equine health industry. The only appropriate remedy for such a violation
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`under these facts is an Order ofjudgment in Petitioner’s favor that cancels the challenged
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`registration.
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`Accordingly, Petitioner is entitled to a resolution of the Cancellation proceeding in its
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`favor and to have Registration No. 2,992,027 cancelled.
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`I.
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`BACKGROUND
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`Petitioner filed a Notice of Cancellation seeking to cancel the registration for
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`Respondent’s EQUI-ADE mark registered for use with “electrolytes for horses” in International
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`Class 5. Petitioner relies on a priority of rights and a likelihood of confiision between the mark
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`EQU-AID and the mark EQUI-ADE under 15 U.S.C. § ll25(d), and brings its petition within
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`five years of the date of the challenged registration pursuant to TBMP § 307.02(a). Petitioner
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`has standing to challenge the registration as it has a real interest in the proceeding and a
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`reasonable basis for its belief that it would be damaged by the continued registration of
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`Respondent’s mark. See Richie v. Simpson, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); TBMP §
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`309.03(b). Discovery opened on May 13, 2009 and closed on November 9, 2009. Both parties
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`have served and responded to written discovery requests. Petitioner’s 30-day trial period will
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`open on January 6, 2010. Thus, this matter is ripe for the determination of dispositive motions.
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`On October 9, 2009, Petitioner supplemented its earlier discovery responses by producing
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`responsive internal documents that included a comprehensive computer generated report listing
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`the names of Petitioner’s customers and other commercially sensitive information. All
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`documents were marked TRADE SECRET COMMERCIALLY SENSITIVE and their
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`production was accompanied by a cover letter from Petitioner’s counsel noting the TRADE
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`SECRET COMMERCIALLY SENSITIVE status of the enclosed materials. Amy S. Cahill.
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`Declaration (“Cahill Decl.”) attached as Exhibit A, 1] 3.
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`On October 14, 2009, counsel for Petitioner received an email directly from Respondent,
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`Ms. Weems, that revealed that she was in receipt of Petitioner’s TRADE SECRET
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`COMMERCIALLY SENSITIVE materials, including the Lloyd Inc. of Iowa customer list
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`produced pursuant to the protective order only five days earlier. Cahill Decl., 1] 4. Respondent’s
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`counsel later confirmed that all of the protected materials had, in fact, been provided to his client
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`in violation of the Board’s standard protective order in place in this proceeding. Cahill Decl., ‘ll
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`5.
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`In an effort to mitigate the damage caused by the disclosure of its customer list to
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`Respondent, Petitioner requested that Respondent undertake certain actions, including returning
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`the materials and providing sworn representations that Ms. Weems has not used and agrees not to
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`use in the future the information in any form for any purpose. Cahill Decl., 1] 6. Respondent has
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`not complied with Petitioner’s requests. Specifically, Respondent has refused to agree to refrain
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`from contacting Petitioner’s customers identified in the confidential materials for any purpose.
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`Cahill Decl., 1] 7.
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`II.
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`PETITIONER IS ENTITLED TO JUDGMENT ON THE MERITS
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`Petitioner’s Rights in its Eg [U-AID Mark
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`Stuart C. Johnson is Director of Marketing and Sales of Petitioner. Lloyd, Inc. of Iowa,
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`and has been employed by Petitioner, including by its predecessor company, Vet-A—Mix, since
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`1972. Stuart Johnson has knowledge of Petitioner’s use of the EQU-AID mark that spans several
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`decades. See Declaration of Stuart C. Johnson, attached as Exhibit B hereto (“Johnson Decl.”), 1[
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`2.
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`Petitioner, Lloyd, Inc. of Iowa, is a manufacturer of pharmaceutical and nutritional
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`products for animals and has distributed its products worldwide for over forty years. Among its
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`products are a number of veterinary products intended for use in the equine industry, including
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`Petitioner’s EQU—AID product. Johnson Decl., 1] 3. Petitioner’s EQU—AID product is a
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`balanced, fortified dietary supplement specifically formulated for horses to promote optimal
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`equine health, appearance, and performance. Johnson Decl., 1] 4.
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`Petitioner began using its EQU—AID mark in connection with its equine nutritional
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`product in commerce in January 1962, and has used the mark continuously from 1962 to the
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`present. At no time has Petitioner discontinued use of the EQU—AID mark. Johnson Decl., 1] 5.
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`Sales figures for Petitioner’s EQU—AID product from 1999 through 2008 are included as a sealed
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`exhibit to the Johnson Declaration. Johnson Decl., 1] 6. Petitioner has also produced and
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`provides in support hereof representative sales invoices from each quarter from the years
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`sparming 2002 to the present. Johnson Decl., 1] 7. For each of these years, Petitioner has spent a
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`significant percentage of the gross sales earned from the sale of EQU—AID on advertising its
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`EQU—AID product in commerce. Johnson Decl., 1] 8.
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`Petitioner markets its EQU—AID product to horse owners and veterinarians. Johnson
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`Decl., 1] 9. Petitioner distributes its EQU—AID product to animal health distributors who then sell
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`it to veterinarians and to equine mail order catalog sales outlets. Johnson Decl., 1] 10. Petitioner
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`has current business plans to expand distribution of its EQU—AID product to include over-the-
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`counter sales through retail outlets that will sell the product directly to consumers. Johnson
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`Decl., 1] 11.
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`Petitioner promotes its EQU—AID product via its Internet web site located at
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`http://www.lloydinc.com/vet eguine eguaid.html. Print-outs from Petitioner’s web site showing
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`use of the EQU—AID mark are attached to the Johnson Declaration. Johnson Decl., 1] l2.
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`Petitioner also promotes its product at trade shows, including the American Association of
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`Equine Practitioners Convention (“AAEP”), where it displayed banner advertisements in 2004,
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`2005, 2006 and 2007. Johnson Decl., 1[ 13. Examples of Petitioner’s banner advertisements and
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`marketing brochures promoting its EQU-AID products showing the mark as used in connection
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`with the products are included as attachments to the Declaration of Stuart Johnson. Johnson
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`Decl., 1] 14. Petitioner has advertised its EQU-AID mark in printed publications. Johnson
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`Decl., 1[ 15.
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`From time to time, Petitioner has reformulated its EQU-AID product to reflect changes in
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`guidelines known as the Nutrient Requirements of Horses published by the National Research
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`Counsel of the National Academies (“NRC”). Johnson Decl., 1} 16. For example, in 1984
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`Petitioner’s EQU-AID formulation was altered to increase Vitamin E and Zinc levels and to
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`include Selenium and Mathione in response to increased scientific knowledge regarding the
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`biochemical needs of horses. Johnson Decl., 1] 17. This improved formulation has variously
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`been marketed as “EQU-AID Plus” or “New Formula EQU-AID” to indicate to consumers that
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`the product had been reformulated to reflect scientific improvements. Johnson Decl., 1} 18
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`Examples of EQU-AID Plus packaging is attached to the Johnson Declaration. Johnson Decl., 1]
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`19.
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`The EQUI-ADE Mark of Respondent’s Registration No. 2,992,027
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`Respondent has provided verified answers to Petitioner’s First Set of Interrogatories and
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`has responded to Petitioner’s First Requests for Admissions. These responses establish the facts
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`surrounding Respondent’s adoption and use of the EQUI-ADE mark of Registration No.
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`2,292,027, and are proper evidence for purposes of a dispositive motion before the Board.
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`TBMP § 528.05(c); Trademark Rule 2.127(e)(2). A copy of Respondent’s Verified Answers to
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`Petitioner’s First Set of Interrogatories is attached as Exhibit C. A copy of Respondent’s
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`Responses to Petitioner’s First Requests for Admissions is attached hereto as Exhibit D.
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`Respondent Jennifer Weems is an individual residing in Sisters, Oregon. Respondent
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`states that she alone is responsible for the promotion, sale, and distribution of Respondent’s
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`products under the EQUI-ADE mark. Answer to Interrogatory No. 2.
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`Respondent admits that she adopted her mark in late 2003 and began using the EQUI-
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`ADE mark in November 2003 in connection with her equine electrolyte products, and in early
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`2004 in connection with ancillary promotional products.‘ Respondent’s Answers to
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`Interrogatory Nos. 3, 8.
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`Respondent admits that she uses her proposed EQUI-ADE mark in connection with an
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`electrolyte drink mix for use by horses. Answer to Interrogatory No. 6.
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`Respondent admits that she sells her EQUI-ADE product to horse owners and caretakers
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`of animals. Response to Request No. 18; Answer to Interrogatory No. 22.
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`Respondent admits that she promotes her EQUI-ADE product via the Internet through her
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`web site www.egui-ade.com. Response to Request No. 22; Answer to Interrogatory No. 30.
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`Respondent admits that she promotes her product through print advertisements. Answer
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`to Interrogatory No. 22. Respondent’s print advertisements include a telephone number for
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`product orders by telephone. Exhibit E.
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`III.
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`ARGUMENT
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`A.
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`Petitioner Has Priorig of Rights
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`Petitioner establishes, by way of the attached declaration from Stuart C. Johnson and the
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`supporting exhibits, that Petitioner began using its EQU-AID mark at least as early as January
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`1 Respondent sells aprons, mugs, visors, t-shirts and kitchen magnets bearing the EQUI-ADE mark.
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`6
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`22, 1962, andihas provided sales data including sales reports showing continuous use since prior
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`to the alleged time use by Respondent began. 2
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`Respondent admits that the earliest possible date on which she began using her proposed
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`EQUI-ADE mark was November 2003.
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`There is no genuine issue of fact regarding Petitioner’s prior and continuous rights in its
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`EQU-AID mark.
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`B.
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`Consumers Are Likely to Be Confused by Registered EQUI-ADE Mark
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`A determination of the issue of likelihood of confusion is based on analysis of all of the
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`probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de
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`Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also In re Majestic Distilling
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`C0,, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion
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`analysis, however, the two key considerations are the similarities between the marks and the
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`similarities between the goods. See In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284
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`(TTAB 2009).
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`Petitioner’s mark and Respondent’s mark are nearly identical and are used for closely
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`related products, which are intended to improve the health of horses. Petitioner’s goods and
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`Respondent’s goods are sold through overlapping marketing channels to the same class of
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`purchasers. There is no genuine issue of fact regarding the likelihood of consumers to be
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`confused by Respondent’s junior use of the challenged mark in commerce, and therefore
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`Petitioner is entitled to summary judgment as a matter of law.
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`I.
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`The EQU~AID and EQUI-ADE Marks Are Highly Similar
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`2The use of the additional word “Plus” does not affect the basic overall commercial impression of the mark and thus
`does not interrupt the user’s chain of ownership back to use in the original form. See e.g. Hess ‘s ofAllentown, Inc.
`v. National Bellas Hess, Inc., 169 USPQ 673 (TTAB l971)(HESS BROS. to HESS permitted) .
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`7
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`Nothing speaks more clearly in support of Petitioner’s position than a side-by-side
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`comparison of the marks as shown below:
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`PETITIONER
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`RESPONDENT
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`.L
`i
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`EQUI-ADE
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`The marks EQU-AID and EQUI-ADE are nearly identical in sound.
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`The marks EQU-AID and EQUI-ADE are extremely similar in appearance.
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`Most importantly, the marks create similar commercial impressions, namely the “EQU”
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`taken from the Latin word “EQUUS” for “horse” used in connection with “aid” or a sound alike
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`“ade” that, taken together, suggest a supplement for horses. The Dictionary.com definitions for
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`“EQUUS" are “type genus of the Equidae; only surviving genus of the family Equidae” and “a
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`genus of the family Equidae that comprises the horses, asses, zebras, and related recent and
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`extinct mammals.” One of the definitions provided by Dictionary.com for “aid” is “help or
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`support; assistance.” Print-outs of definitions from Dictionary.com are attached as Exhibit F.
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`The degree of similarity necessary to support a likelihood of confusion is something less
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`than exact identity, and the degree of similarity required to prove likely confusion varies with the
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`competitive differences between the parties’ goods. Less similarity is required to prove a
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`likelihood of confusion where goods are competitive than in the case of dissimilar products. As
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`the Board has recognized, “as the degree of similarity of the goods of the parties increases, ‘the
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`degree of similarity [of the marks] necessary to support a conclusion of likely confusion
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`declines.”’ Fossil Inc. v. Fossil Group, 49 USPQ2d 1451 (TTAB 1998), quoting in part from
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`Century 21 Real Estate Corp. v. Century Life ofAmerica, 23 USPQ2d 1698, 1700 (Fed. Cir.
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`1992). In this case, as the parties’ goods are closely related, exact similarity of marks is not
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`required.
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`In fact, although marks are compared in terms of similarity of sound, sight, and meaning,
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`similarity as to only one of these three factors may be sufficient to support a likelihood of
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`confusion. In re White Swan, Ltd, 8 USPQ2d 1534 (TTAB 1988); Interstate Brands Corp., 53
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`USPQ2d 1910 (TTAB 2000)(“Similarity in either form, spelling or sound alone maybe be
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`sufficient to support a finding of likelihood of confusion”) Petitioner’s EQU-AID mark and
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`Respondent’s EQUI-ADE mark sound virtually identical. Where the marks sounds identical to
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`the ear, even though some visual dissimilarities exist, the auditory similarities are particularly
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`important where the goods are of the types frequently purchased by verbal order. See TBC Corp.
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`v. Holsa, Inc., 126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. l997)(“ln this age of business over
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`the telephone and advertising on TV and radio the close similarity in sound between GRAND
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`SLAM and GRAND AM [both for vehicles tires] would be likely to result in mistake if not
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`confusion”). From the advertisements Respondent has produced which prominently display a
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`telephone number for orders, it is reasonable to conclude that Petitioner takes orders from
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`customers by telephone, rendering the identical sounds of the marks particularly relevant in this
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`case.
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`2.
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`The Parties’ Goods Are Closely Related
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`A side-by-side comparison of the parties’ goods appears below.
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`i
`T............1
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`PETITIONER
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`EQU-AID
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`1
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`RESPONDENT
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`EQUI-ADE
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`-_.
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`_.__
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`i
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`Dietary supplements for animals in
`International Class 5.
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`i
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`,
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`Electrolytes for horses in International Class 5.
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`Petitioner sells dietary supplements for animals including horses.
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`Respondent’s registration is for electrolytes for horses in International Class 5.
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`Petitioner’s goods are intended to promote the physical well-being of horses.
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`Respondent’s electrolytes for horses are intended to promote the physical well-being of
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`horses. Respondent’s Response to Request for Admission No. 26.
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`Petitioner’s products are intended to improve the performance of horses.
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`Respondent advertises her product as intended to improve the performance of horses. See
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`attached Exhibit G.
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`Goods are considered to be related not because of their inherent characteristics, but
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`because buyers are likely to believe that such goods come from the same source or are connected
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`with or sponsored by a common company. Packard Press, Inc. v. Hewlett—Packard Co., 56
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`USPQ2d 1351 (Fed. Cir. 2000); In re Save Venice New York, Inc., 59 USPQ2d 1778 (Fed. Cir.
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`200l)(“The related goods test measures whether a reasonably prudent consumer would believe
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`that noncompetitive but related goods sold under similar marks derive from the same source
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`...”). Many third—party trademark registrations that have issued in the veterinary health industry
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`that include electrolyte products also include nutritional supplements for animals. Those “live”
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`registrations on file with the U.S. Patent and Trademark Office that include both "electrolytes”
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`and “nutritional supplements” for animals include U.S. Registration Nos. 3,681,620; 3,514,364;
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`3,352,498; 3,403,594; 3,309,668; 3,309,636; 3,106,145; 3,103,109; 2,932,962; 3,649,575;
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`3,637,949; 3,576,151; and 2,803,893. A chart of the registrations which includes the relevant
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`identifications of goods and supporting registration certificates from the USPTO are attached as
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`Exhibit H.
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`In examining applications for a likelihood of confusion with existing registered marks, an
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`Examining Attorney may rely upon copies of prior use-based registrations of a mark for both
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`applicant’s goods/services and the goods/services listed in the cited registration. TMEP §§
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`l207.0l(a)(vi); 1207.01(d)(iii). This is because third—party registrations that cover a variety of
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`goods or services have probative value to the extent that they suggest that goods or services are
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`of a type that may eminent from a single source. See On-line Careline Inc. v. America Online
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`Inc., 56 USPQ2d 1471, 1475 (Fed. Cir. 2000) (goods and services are “related” if they are
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`available from a single source.”)
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`In his Declaration, Mr. Johnson confirms what these registrations suggest - - that a
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`number of companies in the equine science and health industry sell both nutritional supplements
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`and electrolyte products for animal use. Based on his thirty plus years of experience in the
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`equine health industry, Mr. Johnson attests -- that consumers who encounter the EQUI—ADE
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`mark used in connection with electrolyte products for horses are likely to believe that those
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`products emanate from or are endorsed by or are affiliated with the same commercial source that
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`produces nutritional supplements for horses sold under the EQU-AID mark. Johnson Dec1., 111]
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`20, 21.
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`Moreover, a trademark owner has rights in his trademark not only for the goods it
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`actually sells, but also for those goods in markets into which it might reasonably be expected to
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`expand in the future.
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`In determining the possibility of expanding product lines, it is the ordinary
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`customer’s perception of possible expansion that guides the analysis. See Planetary Motion Inc.
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`v. Techsplosion, Inc., 59 USPQ2d 1894 (11th Cir. 2001). Given the number of companies that
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`11
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`sell both nutritional supplements and electrolytes in the veterinary industry, it is highly likely
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`that consumers would believe that Petitioner had expanded its product lines to include electrolyte
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`products for horses. Thus, those who encounter Respondent’s electrolyte products for horses in
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`the marketplace are likely to believe that they originate from or are associated with Petitioner.
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`Johnson Decl, 1] 21.
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`3.
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`The Parties Use Overlapping Marketing Channels
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`Both Petitioner and Respondent advertise their respective products via the Internet and
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`Via print advertisements in publications directed to the trade. Overlapping marketing channels
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`weigh in favor of likelihood of confusion. The Board has held that confusion was likely by use
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`of the same mark on children’s clothing and adult women’s clothing because “an appreciable
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`number of purchasers of children’s wearing apparel are mothers, grandmothers and other adult
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`female relatives and friends of the children who wear them, all of whom are also purchasers of
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`ladies apparel.” Piccolo Sportswear, Inc. v. Mast Industries, Inc., 227 USPQ 710 (TTAB 1985).
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`4.
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`The Parties ’ Products Are Intendedfor the Same Class ofConsumers and
`Will Be Sold Through Identical Trade Channels
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`The intended consumers for both Petitioner and Respondent’s products include
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`veterinarians and horse owners. Further, although Petitioner currently distributes its products
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`through distributors who sell through mail order catalogs, Petitioner has current plans to expand
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`the sales of its product to include over the counter sales directly to veterinarians and horse
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`owners.3 The planned expansion would render the sales channels for Petitioner’s EQU-AID
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`product and Respondent’s EQUI-ADE identical. Present methods of distribution are not
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`3 In her interrogatory answers Respondent suggests that she sells directly to veterinarians and horse
`owners. Answer to Interrogatory No. 23. However, in a recent email to counsel for Petitioner,
`Respondent references contacting her “reps at the most popular veterinary supply companies” suggesting
`that she does use third-party distributors to sell her EQUI-ADE product See Cahill Decl., 11 10.
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`conclusive of no likely confusion because marketing and distribution methods are always subject
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`to change. See Glamorene Products Corp. v. Procter & Gamble Co., 190 USPQ 543 (CCPA
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`l976)(where applicant does not specify channels of sales, present differences between the parties
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`is not controlling in likelihood of confusion analysis); Wella Corp. v. California Concept Corp.,
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`194 USPQ 419 (CCPA l977)(reversing Board holding that the parties were “locked into”
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`separate trade channels because there was no proof of impossibility of use of common trade
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`channels in the future).
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`5.
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`Petitioner ’s EQU-AID Mark is Strong
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`Petitioner has used its EQU-AID mark in commerce for over thirty years. During this
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`period, consumers have come to recognize the EQU-AID mark and to associate the mark
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`exclusively with Petitioner. Petitioner has invested considerably in the goodwill of its mark
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`through advertising and product development over this period. Accordingly, the strength of
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`Petitioner’s EQU-AID mark weights in favor of a finding of likely confusion. In close cases, a
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`party to an opposition who is a senior user of a mark is entitled to the benefit of any doubt as to
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`likelihood of confusion under Section 2(d) of the Lanharn Act. In re Apparel, Inc., 151 USPQ
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`353 (CCPA 1966); In re Arthur Holland, Inc., 192 USPQ 494 (TTAB 1976).
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`IV.
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`LEGAL STANDARD FOR JUDGMENT AS A MATTER OF LAW
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`A motion for summary judgment allows the Board to dispose of cases in which the
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`evidence show that there is no genuine issue as to any material fact and that the moving party is
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`entitled to judgment as a matter of law. TBMP § 528.01; Fed.R.Civ. P. 56(c). A party moving
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`for summary judgment has the burden of demonstrating the absence of any genuine issue of
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`material fact, and that it is entitled to judgment as a matter of law. The Board does not hesitate
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`to resolve cases on summary judgment where it is appropriate.
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`See, e.g. Sweats Fashions Inc. v.
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`Pannill Knitting Co., 4 USPQ2d 1793 (Fed. Cir. 1987).
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`Petitioner as plaintiff in the Cancellation proceeding bears the burden of proving, by a
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`preponderance of evidence, its asserted grounds of priority and likely confusion. See Cereceries
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`Centroamericana, S.A. v. Cerveceria India, Inc., 13 USPQ2d 1307, 1309 (Fed. Cir. 1989);
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`Cunningham v. Laser Golf Corp, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000). The evidence of
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`record shows that there is no genuine issue as to any material fact bearing on priority or
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`likelihood of confusion and that Petitioner is entitled to judgment as a matter of law.
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`V.
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`PETITIONER IS ENTITLED TO THE SANCTION OF ENTRY OF DEFAULT
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`JUDGMENT IN ITS FAVOR
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`Petitioner is also entitled to an entry of default judgment in its favor as a sanction for
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`Respondent’s violation of the Board’s protective order in this case.
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`The Board’s Protective Order in place in this proceeding provides in relevant portion:
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`Trade Secret/Commercially Sensitive -Material to be shielded by
`the Board from public access, restricted from any access by the
`parties, and available for review by outside counsel for the parties
`and, subject to the provisions of paragraph 4 and 5, by independent
`experts or consultants for the parties.
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`Despite the existence of a protective order in this case and Petitioner’s proper designation
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`of discovery materials as TRADE SECRET COMMERCIALLY SENSITIVE pursuant to this
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`order, Respondent’s counsel admits that he forwarded to his client highly confidential
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`proprietary information comprising Petitioner’s twenty—eight page sales chart that includes a
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`complete list of Petitioner’s customers, and quantities of EQU-AID product sold to them with
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`accompanying dates, for the period September 2002 through September 2009.
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`The Trademark Rules of Practice permit the imposition of sanctions, including an entry
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`of default judgment against a party, for violations of Board protective orders. Sanctions for
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`Failure to Comply with Board Protective Order, TBMP § 527.0l(a), Trademark Rule 2.l20(g)
`
`provides:
`
`If a party fails to comply with an order of the Trademark Trial and
`Appeal Board relating to discovery, including a protective order,
`the Board may make any appropriate order, including any of the
`orders provided in Rule 37(b)(2) of the Federal Rules of Civil
`Procedure, except that the Board will not hold any person in
`contempt or award any expenses to any party. The Board may
`impose against a party any of the sanctions provided by this
`subsection in the event that said party or any attorney, agent, or
`designated witness of that party fails to comply with a protective
`order made pursuant to Rule 26(c) of the Federal Rules of Civil
`Procedure.
`
`The sanctions which may be entered by the Board include, inter alia, striking all or part
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`of the pleadings of the disobedient party; refusing to allow the disobedient party to support or
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`oppose designated claims or defenses; prohibiting the disobedient party from introducing
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`designated matters in evidence; and entering judgment against the disobedient party. Although
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`default judgment is a harsh remedy, it is justified where no less drastic remedy would be
`
`effective and there is a strong showing of willful evasion. See Unicut Corporation v. Unicut,
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`Inc., 222 USPQ 341 (TTAB 1994). The alternative sanctions available to the Board, i.e. striking
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`part of the pleadings of the disobedient party or prohibiting the disobedient party from
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`introducing certain matters into evidence, would not address the potential harm to Petitioner. See
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`TBMP § 527.01.
`
`The appropriateness of the Board’s sanction turns on the conduct of the wrongdoer and
`
`the remedies available to effectively address the harm. Respondent’s counsel has offered no
`
`explanation for the reckless disclosure of information to his client and has not yet ever complied
`
`15
`
`

`
`fully with Petitioner’s requests to remedy the situation to the extent remedial actions are
`
`available. In this case, the harm to Petitioner from the unauthorized disclosure of its client list is
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`irreversible. Petitioner and Respondent sell highly related horse health products to the same
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`classes of purchases. Petiti0ner’s customer list and invoices can be used by Respondent to
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`Petitioner’s competitive disadvantage. Further, Respondent has openly contacted potential
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`customers concerning this case. Cahill Decl., 1] 9.
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`The circumstances presented -- flagrant disregard for the Board’s Order and irreversible
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`harm to a party -- justify an entry of default judgment as a sanction against the violating party.
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`The alternative forms of relief such as striking from evidence those materials not produced by a
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`disobedient party or forming legal presumptions as a matter of law that allow inferences in favor
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`of the wronged party would not address the harm to be suffered by Petitioner under the facts.
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`Accordingly, Petitioner seeks judgment in its favor as a sanction against Respondent for the
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`disclosure of proprietary information designated TRADE SECRET COMMERCIALLY
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`SENSITIVE.
`
`VI.
`
`CONCLUSION
`
`Petitioner respectfully requests that Petitioner’s Motion for Summary Judgment or in the
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`Alternative, for Sanctions be granted and that judgment be entered against the Respondent and
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`that Registration No. 2,992,027 be cancelled.
`
`16
`
`

`
`s/Amy Sullivan Cahill
`Amy Sullivan Cahill
`Srmzs & HARBISON PLLC
`
`400 West Market Street
`
`Suite 1800
`
`Louisville, Kentucky 40202
`(502) 587-3400
`Fax (502) 587-6391
`
`Brewster Taylor
`STITES & HARBISON PLLC
`
`1199 N. Fairfax Street, Suite 900
`Alexandria, Virginia 22314
`(703) 837-3906
`Fax (703) 739-9577
`Attorney for Petitioner,
`Lloyd, Inc. of Iowa
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I have served a copy hereof by first class mail this 22nd day of
`December, 2009 upon the following:
`
`Dean T. Sandow
`
`Jason Ayers
`FARLEIGH WADA WITT
`
`121 SW Morrison Street, Suite 600
`
`Portland, Oregon 97204
`
`s/Amy S. Cahill
`Amy S. Cahill
`
`342LT: 1006:7471 16: 1 ZLOUISVILLE
`
`

`
`% EXHIBIT A
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`LLOYD, INC. OF IOWA,
`Petitioner,
`
`V.
`
`JENNIFER L. WEEMS,
`
`Registrant
`
`%%&/%%\./\—/
`
`Cancellation No. 92050624
`
`DECLARATION OF AMY S. CAHILL
`
`1, Amy S. Cahill, declare as follows:
`
`1.
`
`I offer this Declaration in support of Petitioner, Lloyd, Inc. of lowa’s
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`Motion for Summary Judgment or in the Alternative Motion for Sanctions filed in the
`
`above—styled action.
`
`I have personal knowledge of the matters set forth herein and if
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`called as a witness to testify in this matter, I could and would testify competently thereto.
`
`2.
`
`I am one of the attorneys of record for the Petitioner Lloyd, Inc. of Iowa
`
`(“Lloyd”) in the above—styled action.
`
`3.
`
`On October 9, 2009, Petitioner supplemented its earlier discovery
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`responses by producing responsive internal documents numbered PET003 9-PET0069,
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`which documents constituted a comprehensive computer generated report reflecting the
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`names of Petitioner’s customers and sales data for the EQU-AID product from September
`
`2002 through September 2009. All documents were marked TRADE SECRET
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`COMMERCIALLY SENSITIVE and their production was accompanied by a cover letter
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`from Petitioner’s counsel noting the TRADE SECRET COMMERCIALLY SENSITIVE
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`status of the enclosed materials. Exhibit 1 (SEALED).
`
`

`
`4..
`
`On October 14, 2009, counsel for Petitioner received an email directly
`
`from Respondent, Ms. Weems, that revealed that she was in receipt of Petitioner’s
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`TRADE SECRET COMMERCIALLY SENSITIVE materials, including the Lloyd Inc.
`
`of Iowa customer list produced pursuant to the protective order only five days earlier.
`
`This email is not submitted in support of this Declaration because Petitioner designated
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`the communication for “Settlement Purposes Only.”
`
`5.
`
`On October 19, 2009, the undersigned contacted Respondent’s counsel
`
`directly inquiring whether the TRADE SECRET COMMERCIALLY SENSITIVE
`
`materials had been provided to his client. Exhibit 2.
`
`6.
`
`Respondent’s counsel confirmed by email dated October 20, 2009, that all
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`of the TRADE SECRET COMMERCIALLY SENSITIVE protected materials had been
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`provided to his client in violation of the Board’s protective order in place in this
`
`proceeding. Exhibit 3.
`
`7.
`
`On October 23 and again on October 29, 2009, Petitioner’s counsel
`
`requested that Respondent take certain mitigating actions, including providing a sworn
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`declaration from Mr. Weems in which she attest that she has not retained the competitive
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`information in any form and agrees not to use the wrongly—disclosed