throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA479522
`ESTTA Tracking number:
`06/21/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92055393
`Defendant
`Able Planet, Inc.
`CLAYTON C JAMES
`HOGAN LOVELLS US LLP
`1200 17TH STREET, SUITE 1500
`DENVER, CO 80202
`UNITED STATES
`clay.james@hoganlovells.com, lucky.vidmar@hoganlovells.com
`Reply in Support of Motion
`Clayton C. James
`clay.james@hoganlovells.com, lucky.vidmar@hoganlovells.com
`/Clayton C. James/
`06/21/2012
`20120621 Reply in support of the motion to consolidate.pdf ( 65 pages )(903484
`bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BOSE CORPORATION,
`
`Petitioner,
`
`v.
`
`ABLE PLANET, INCORPORATED,
`
`Registrant.
`
`Cancellation No: 92055393
`Registration No: 3655934
`
`ABLE PLANET’S REPLY IN SUPPORT OF ITS MOTION TO SUSPEND
`PROCEEDINGS
`
`Bose candidly admits that the Board typically suspends proceedings where, as here, a
`
`civil action is pending which may have a bearing on the case. 37 C.F.R. § 2.117. Lacking any
`
`real arguments for why these proceedings should not be suspended pending the outcome of the
`
`Colorado Action, Bose invents the specter of delay on the part of Able Planet. Unfortunately for
`
`Bose, the facts do not support Bose’s scare tactics.
`
`As an initial matter, in the Colorado Action it was Bose, not Able Planet, who sought to
`
`delay discovery, proposing a period of over one year from the filing of the action until the
`
`dispositive motion deadline, as shown in the original proposed scheduling order (Docket 21 of
`
`the Colorado Action, filed on June 1, 2012), attached hereto as Exhibit R-1. Contrary to Bose’s
`
`aspersions in its Opposition, Able Planet’s proposed schedule was significantly shorter than that
`
`proposed by Bose.
`
`In any event, the Magistrate Judge in the Colorado Action refused the
`
`proposed scheduling order and ordered the parties to confer again and attempt to agree on a
`
`\\DE - 039239/000002 - 530971 v1
`
`

`

`shorter case schedule. Thereafter, Bose and Able Planet did agree on a case schedule in the
`
`Colorado Action that was slightly shorter than Able Planet originally proposed, and five months
`
`shorter than the schedule Bose originally requested.
`
`(Exhibit R-2 hereto, Docket 25 in the
`
`Colorado Action, filed on June 21, 2012). Under the agreed upon schedule, the discovery cutoff
`
`in the Colorado Action is November 30, 2012, and dispositive motions are due on December 21,
`
`2012. As such, the schedule in the Colorado Action is significantly more aggressive than the
`
`schedule governing these cancellation proceedings, where discovery closes on December 24,
`
`2012, and the pretrial disclosure periods do not end until July 7, 2013. In fact, Able Planet has
`
`already served its initial set of discovery in the Colorado Action on June 19, 2012, (Exhibit R-3
`
`hereto), while the discovery period in these cancellation proceedings does not begin until June
`
`27, 2012.
`
`Thus, Bose’s complaint that Able Planet’s motion to suspend is a “delay tactic” rings
`
`hollow.
`
`In fact, the cases cited by Bose on this issue illustrate the strained nature of its
`
`argument. In Jodi Kristopher Inc. v. International Seaway Trading Corp., 91 U.S.P.Q.2d 1957
`
`(T.T.A.B. 2009), it was the petitioner who sought a suspension, and did so on the last day of its
`
`own testimony period. In denying the motion, the Board noted that the “petitioner failed to take
`
`testimony or submit evidence during its original or second testimony period and has offered no
`
`explanation in its motion for its failure to do so.” Id. at 1959. As such, Jodi Kristopher has
`
`nothing in common with the facts of the present case, where the civil action and the current
`
`proceedings were initiated essentially at the same time, where both cases are in essentially the
`
`same procedural posture, and where, as shown above, the district court action is on a schedule
`
`that is ahead of the present proceedings, with discovery already under way.
`
`2
`
`

`

`Similarly, Bose’s reliance on Union Carbide Corporation v. W. R. Grace & Co., 213
`
`U.S.P.Q. 400 (T.T.A.B. 1982) is curious at best.
`
`In Union Carbide, the Board suspended the
`
`cancellation proceedings pending the outcome of a civil action pursuant to Trademark Rule
`
`2.117. Then, after the end of trial in the civil action, the district court ordered that the
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`proceedings be resumed so that the evidence might be considered by the Board. Therefore,
`
`Union Carbide does not help Bose. If anything, it underscores the fact that a suspension of these
`
`proceedings is appropriate, even accepting Bose’s unfounded speculations that the court in the
`
`Colorado Action may, at some undetermined point in the future, allow these proceedings to
`
`resume.
`
`As discussed in Able Planet’s Motion to Suspend, all of the reasons underlying the
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`Board’s policy of suspending proceedings pending resolution of related district court actions are
`
`present in this case. As Bose’s Opposition makes clear, the parties are engaged in a commercial
`
`dispute that dates back to 2007 and is much broader than just the trademark issues involved in
`
`these cancellation proceedings. As such, Bose’s preferred approach of running the proceedings
`
`simultaneously virtually guarantees piecemeal consideration of the issues, duplicative discovery
`
`and motions and practice, and potentially conflicting outcomes.
`
`Therefore, the Board should suspend these proceedings pursuant to Trademark Rule
`
`2.117.
`
`3
`
`

`

`Respectfully submitted on June 21, 2012.
`
`HOGAN LOVELLS US LLP
`
`s/Clayton C. James/ ________________
`Clayton C. James
`Srecko “Lucky” Vidmar
`One Tabor Center, Suite 1500
`1200 Seventeenth Street
`Denver, CO 80202
`Phone +1 303 899 7300
`Fax +1 303 899 7333
`Email: clay.james@hoganlovells.com
`Email: lucky.vidmar@hoganlovells.com
`
`Attorneys for Registrant Able Planet, Incorporated.
`
`4
`
`

`

`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on June 21, 2012, I electronically filed a true and correct
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`copy of the foregoing ABLE PLANET’S REPLY IN SUPPORT OF ITS MOTION TO
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`SUSPEND PROCEEDNIGS with the U.S. Patent and Trademark Office via the ESTTA
`
`system, and also served it by first class mail, postage prepaid, as follows:
`
`Michelle Brownlee
`Trademark Counsel
`Bose Corporation
`The Mountain, MS 40
`Framingham, MA 01701
`
`By:
`
`s/Lucky Vidmar/
`Lucky Vidmar
`
`5
`
`

`

`ABLE PLANET’S REPLY IN SUPPORT OF ITS MOTION TO SUSPEND
`PROCEEDINGS
`
`Exhibit R-1
`
`

`

`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 1 of 19
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`
`Civil Action No. 1:12-cv-00894-CMA-CBS
`
`ABLE PLANET, INCORPORATED,
`
`Plaintiff,
`
`v.
`
`BOSE CORPORATION,
`
`Defendant.
`
`[PROPOSED] SCHEDULING ORDER
`
`1. DATE OF CONFERENCE
`AND APPEARANCES OF COUNSEL AND PRO SE PARTIES
`
`The scheduling conference was held on June 6, 2012 at 10 a.m. Clayton C. James and
`
`Srecko “Lucky” Vidmar of Hogan Lovells US LLP appeared on behalf of Plaintiff Able Planet,
`
`Incorporated (“Able Planet”). Gayle Strong of Greenberg Traurig appeared in person, and, by
`
`permission of the Court, John J. Regan and Karen Stringer of WilmerHale appeared
`
`telephonically on behalf of Defendant Bose Corporation (“Bose”).
`
`2. STATEMENT OF JURISDICTION
`
`This Court has original jurisdiction over the federal Lanham Act claims pursuant to
`
`15 U.S.C. § 1121(a), 28 U.S.C. § 1338(a), and 28 U.S.C. § 1338(b). This Court has
`
`supplemental jurisdiction over the Colorado state law claims under 28 U.S.C. § 1367, because
`
`those claims are so related to the claims brought under the Lanham Act that they form a part of
`
`the same case or controversy.
`
`

`

`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 2 of 19
`
`3. STATEMENT OF CLAIMS AND DEFENSES
`
`PLAINTIFF:
`a.
`Able Planet’s Claims: This lawsuit is intended to stop Bose’s unlawful infringement of
`
`Able Planet’s trademark and to recover damages for that unlawful infringement. Able Planet
`
`seeks injunctive and monetary relief for the acts by Bose that constitute trademark infringement
`
`and unfair competition under the Lanham Act, and for trademark infringement and unfair
`
`competition under the common law of Colorado.
`
`Able Planet designs, manufactures, markets, and sells personal electronics, including
`
`personal sound amplification systems, audiology products, earphones and headphones. Able
`
`Planet uses an innovative technology to filter undesirable sound, enhance sound quality and
`
`speech clarity, restrict electromagnetic interference, reduce distortion, and increase perceived
`
`loudness without increasing volume. Able Planet owns the HEAR THE DIFFERENCE
`
`trademark, which is registered with the United States Patent and Trademark as U.S. Reg. No.
`
`3,655,934, issued July 14, 2009. Able Planet’s trademark is valid and in full force and effect.
`
`Able Planet also owns all common law rights in and to the mark HEAR THE DIFFERENCE for
`
`use in connection with Able Planet’s products.
`
`Able Planet first used the HEAR THE DIFFERENCE mark in commerce at least as early
`
`as October 10, 2005, and has continued using it through the present. Able Planet has developed
`
`substantial goodwill and consumer recognition in the HEAR THE DIFFERENCE mark and the
`
`products sold thereunder, including through widespread electronic and print advertising, product
`
`packaging, and displays in national retail stores. Since 2005, Able Planet’s widespread use,
`
`marketing, and offering of products under the HEAR THE DIFFERENCE mark has resulted in
`
`2
`
`

`

`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 3 of 19
`
`the HEAR THE DIFFERENCE mark becoming a source identifier distinctly associated with
`
`Able Planet’s quality business reputation. At all times relevant to this Complaint, Able Planet
`
`has extensively promoted the HEAR THE DIFFERENCE mark and has developed significant
`
`goodwill and a quality business reputation in the marketplace as a source identifier with the
`
`consuming public. As such, the HEAR THE DIFFERENCE mark is among Able Planet’s most
`
`valuable assets.
`
`As of at least July 11, 2007, Bose had actual knowledge of the HEAR THE
`
`DIFFERENCE mark. During the 2011 holiday season, Bose marketed and sold its products
`
`under the slogan HEAR THE DIFFERENCE in several of Able Planet’s largest retailers. This
`
`damaged Able Planets goodwill, quality business reputation, and profits. Furthermore, Bose’s
`
`use of an identical mark to Able Planet’s mark on similar products in Able Planet’s largest retail
`
`outlets creates a likelihood of causing consumer confusion. Bose has used and continues to use
`
`Able Planet’s trademark to benefit from Able Planet’s reputation and goodwill as a provider of
`
`high-performing audio and communication devices sold in large and prominent nationwide
`
`retailers, including Costco and Brookstone, among others.
`
`Bose’s Counterclaims: Along with its Answer, Bose has asserted counterclaims for (i)
`
`cancellation of the HEAR THE DIFFERENCE trademark; (ii) declaratory judgment of non-
`
`infringement of the HEAR THE DIFFERENCE trademark; (iii) claim for supposed damages to
`
`Bose as a result of the registration of the HEAR THE DIFFERENCE trademark; and (iv) unfair
`
`competition claims based on Bose’s supposed earlier use of the phrase “hear the difference.”
`
`None of these counterclaims has merit.
`
`3
`
`

`

`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 4 of 19
`
`First, Bose’s cancellation claim are baseless because, even if everything Bose alleges is
`
`true (and Able Planet disputes that it is), the only remedy available to Bose is a limitation on the
`
`scope of goods for the HEAR THE DIFFERENCE registration, not its cancellation. Second,
`
`Bose cannot show any damages suffered as a result of the registration of the HEAR THE
`
`DIFFERENCE mark. Third, Bose’s argument that it cannot infringe the HEAR THE
`
`DIFFERENCE mark because it is merely descriptive flies in the face of Bose’s numerous efforts
`
`to assert rights in that very mark against Able Planet. For this very reason, Bose’s unfair
`
`competition claims are as puzzling as there are baseless. In all of the settlement discussions
`
`between the parties, Bose has never presented any evidence of its use of the phrase “hear the
`
`difference” in the trademark sense, i.e., use as a source identifier.
`
`Related Case/Consolidation: This case should be consolidated with the Civil Action
`
`No. 1:11-cv-1435 filed by Bose against Able Planet in this District and alleging, inter alia,
`
`infringement of certain Bose patents by Able Patent (“Bose Patent Action”). On May 14, 2012,
`
`Able Planet filed a motion in the Bose Patent Action to consolidate the two actions. Bose has
`
`indicated that it opposes consolidation. Bose’s deadline to oppose Able Planet’s Motion for
`
`Consolidation is June 4, 2012. The agreements and schedules proposed herein are without
`
`prejudice to Able Planet’s pending motion.
`
`DEFENDANT:
`b.
`Background: Bose is engaged in the manufacture and sale of consumer audio products,
`
`such as sound systems for use in homes and automobiles, portable sound systems and
`
`headphones. Bose has used the descriptive phrase “Hear the Difference,” which is at issue in this
`
`Litigation, in its advertising and marketing materials since at least as early as 1995. Indeed, as
`
`4
`
`

`

`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 5 of 19
`
`early as June 2007, Bose put Able Planet on notice that it appeared that Able Planet was
`
`attempting to create consumer confusion by using Bose’s trade dress and slogan Hear the
`
`Difference.
`
`Nevertheless, Defendant Able Planet Incorporated (“Able Planet”) filed this lawsuit only
`
`after settlement discussions broke down in a separate and unrelated case, brought by Bose
`
`against Able Planet and alleging, among other things, patent infringement arising under the
`
`patent laws (Title 35 of the United States Code), trade dress infringement and dilution under
`
`Section 43(a) and (c) of the Lanham Act (15 U.S.C. § 1125(a) and (c)), and unfair competition
`
`under Colorado common law. That case, which Bose commenced on or about June 1, 2011, is
`
`now pending and well-advanced before Judge Krieger in this District.
`
`At the heart of that case are Bose’s allegations that defendant Able Planet has and
`
`continues to infringe two of Bose’s design patents and Bose’s Trade Dress (as defined in the
`
`Complaint) by making, using, selling and offering for sale certain noise cancelling headphones
`
`that use Bose’s patented designs and Trade Dress. Bose also alleges that Able Planet infringed
`
`in the past one of its utility patents, which has since expired, by making, importing, using, selling
`
`and offering certain noise cancelling headphones that use Bose’s active noise cancellation
`
`technology. Bose also alleges that Able Planet has diluted Bose’s Trade Dress and engaged in
`
`unfair competition in violation of Colorado common law by, among other things, distributing,
`
`offering for sale, and selling certain noise cancelling headphones, which use Bose’s Trade Dress
`
`and patented designs in United States commerce.
`
`These two cases do not present the same legal or factual issues – indeed, in simple terms,
`
`the case pending before Judge Krieger deals with Bose’s intellectual property (utility and design
`
`5
`
`

`

`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 6 of 19
`
`patents and trade dress), and this case deals with Able Planet’s different type of intellectual
`
`property (an alleged trademark).
`
`It was only when settlement discussions in the patent/trade
`
`dress case broke down, that Able Planet threatened to bring suit for alleged infringement of its
`
`trademark.
`
`After reviewing Able Planet’s alleged “Hear the Difference” mark and its prosecution
`
`history, Bose filed a petition to cancel the alleged mark on March 23, 2012, and amended the
`
`petition on May 22, 2012. The grounds for cancellation in Amended Petition to Cancel include:
`
`(1) the Application and Resulting Registration is Void; (2) Fraud on the United States Patent and
`
`Trademark Office (“USPTO”); (3) the phrase “Hear the Difference” is merely descriptive; and
`
`(4) the phrase “Hear the Difference” is confusingly similar to the phrase “Hear the Difference”
`
`used by Bose since at least 1995.
`
`Able Planet then followed through with its threat and commenced this action on April 5,
`
`2012.
`
`Able Planet’s Allegations and Bose’s Counterclaims: Able Planet has failed to state a
`
`claim against Bose.
`
`It has no valid or enforceable trademark rights in the merely descriptive
`
`phrase “Hear the Difference,” since its registration is void and was fraudulently procured.
`
`Accordingly, Bose seeks a declaratory judgment of non-infringement, and seeks to cancel Able
`
`Planet’s alleged mark.
`
`In its counterclaims, Bose alleges that Able Planet’s mark is void ab
`
`initio because of a substantive error in the trademark application, and because neither the original
`
`applicant, who was an officer of Able Planet at the time, nor Able Planet itself, had a bona fide
`
`intent to use the alleged mark in commerce on some or all of the goods identified in the
`
`application.
`
`6
`
`

`

`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 7 of 19
`
`Indeed, as set forth in Bose’s counterclaims, Able Planet filed a Statement of Use
`
`representing that it had used the alleged mark “Hear the Difference” on, and in connection with,
`
`a vast number and variety of products. Based upon Bose’s reasonable investigation, and on
`
`information likely to be discovered during discovery, Able Planet was not selling, let alone
`
`using, the words “Hear the Difference” as a trademark in connection with each of the many
`
`different goods included in its Statement of Use. Such goods include, but are not limited to:
`
`interactive computer games software, security systems, karaoke machines, global positioning
`
`system (GPS), portable wireless communication apparatus, and cameras. Bose seeks to cancel
`
`Able Planet’s alleged mark for these reasons.
`
`Alternatively, should this Court determine that the phrase “Hear the Difference” is
`
`inherently distinctive, and that any trademark significance is attached to this phrase, Bose has
`
`prior rights in the phrase because Bose has been using this phrase in commerce before Able
`
`Planet existed and ever used “Hear
`
`the Difference.” Accordingly, Bose has asserted
`
`counterclaims under the Lanham Act for False Designation of Origin, False Advertising and
`
`Unfair Competition, as well as a claim under Colorado law for common law unfair competition.
`
`Motion to Consolidate: Able Planet could have attempted to file a counterclaim for
`
`trademark infringement in the matter pending before Judge Krieger, but it chose not to. Instead,
`
`almost a year later, Able Planet now seeks to consolidate these distinct cases. The cases involve
`
`quite different intellectual property, each of which confers different substantive rights, has a
`
`different history, and gives rise to different damages claims. Bose plans to file an opposition to
`
`Able Planet’s motion to consolidate.
`
`7
`
`

`

`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 8 of 19
`
`4. UNDISPUTED FACTS
`
`The following facts are undisputed:
`
`a.
`
`Able Planet registered a trademark HEAR THE DIFFERENCE®, which was
`
`issued on July 14, 2009 as U.S. Reg. No. 3,655,934.
`
`b.
`
`Bose has been aware since on or about July 11, 2007 that Able Planet claimed
`
`ownership of Application Serial No. 78/699,988 for the HEAR THE DIFFERENCE mark.
`
`c.
`
`Bose has provided merchandising displays to Costco to be used in Costco stores
`
`during the 2011 holiday season that included the words “Hear the Difference Bose® Headphones
`
`make.”
`
`d.
`
`On or about August 24, 2005, Anne Foster (“Foster”) applied for a registration of
`
`the mark “Hear the Difference,” which was assigned serial number 78/699,980 (the ‘980
`
`Application”) by the USPTO.
`
`e.
`
`Foster assigned the ‘980 Application, approximately nine months later, to a
`
`corporate entity, Able Planet, Incorporated.
`
`f.
`
`On or about February 19, 2008, the USPTO issued a Notice of Allowance, and on
`
`or about November 21, 2008, Able Planet filed a Statement of Use.
`
`g.
`
`Able Planet made the following statement with respect to the Class of Goods in its
`
`application: “The applicant, or the applicant's related company or licensee, is using the mark in
`
`commerce on or in connection with all goods and/or services listed in the application or Notice
`
`of Allowance or as subsequently modified. The mark was first used by the applicant, or the
`
`applicant's related company, licensee, or predecessor in interest at least as early as 10/07/2005,
`
`and first used in commerce at least as early as 10/07/2005, and is now in use in such commerce.”
`
`8
`
`

`

`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 9 of 19
`
`h.
`
`The Statement of Use included the following declaration: “Applicant is the owner
`
`of the mark sought to be registered, and is using the mark in commerce on or in connection with
`
`the goods/services identified above, as evidenced by the attached specimen(s) showing the mark
`
`as used in commerce.”
`
`i.
`
`The Declaration further stated as follows: “The undersigned being hereby warned
`
`that willful false statements and the like are punishable by fine or imprisonment, or both, under
`
`18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize the
`
`validity of this document, declares that he/she is properly authorized to execute this document on
`
`behalf of the Owner; and all statements made of his/her own knowledge are true and that all
`
`statements made on information and belief are believed to be true.”
`
`5. COMPUTATION OF DAMAGES
`
`Plaintiff’s Statement:
`
`Able Planet seeks injunctive relief and damages for Bose’s unlawful actions, which
`
`constitute trademark infringement in violation of Lanham Act § 32, unfair competition in
`
`violation of the Lanham Act § 43, common law trademark infringement, and common law unfair
`
`competition. Bose’s use of the slogan HEAR THE DIFFERENCE constitutes willful and
`
`intentional infringement of Able Planet’s HEAR THE DIFFERENCE® mark and Able Planet’s
`
`Common Law Mark because Bose chose to market and sell its products under the slogan HEAR
`
`THE DIFFERENCE during the 2011 holiday season even though it had actual knowledge of the
`
`HEAR THE DIFFERENCE mark by no later than July of 2007. As such, Able Planet seeks an
`
`award of compensatory and treble damages, pre- and post-judgment interest, costs, and
`
`attorneys’ fees against Bose as a result of the conduct complaint of in the Complaint.
`
`9
`
`

`

`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 10 of 19
`
`Specifically, Able Planet seeks all of Bose’s profits earned under the HEAR THE DIFFERENCE
`
`designation, all of Able Planet’s lost profits, and treble actual damages. Able Planet asks the
`
`Court to require that an accounting be had and enter judgment against Bose for all profits, gains,
`
`and advantages received or realized by Bose since commencement of its use of HEAR THE
`
`DIFFERENCE and for all damages sustained by Able Planet resulting from Bose’s infringing
`
`and unlawful activities. Able Planet also seeks interest on the damages, as well as its costs and
`
`reasonable attorneys’ fees. The precise amounts of these damages are not determinable until the
`
`completion of discovery in this action.
`
`Additionally, Able Planet seeks a preliminary and/or permanent injunction restraining
`
`and enjoining Bose from using, displaying, or advertising with the slogan HEAR THE
`
`DIFFERENCE or designation similar to the HEAR THE DIFFERENCE mark. Able Planet
`
`seeks such further injunctive and corrective action as set forth in the Complaint.
`
`Defendant’s Statement:
`
`Bose requests full relief for Able Planet’s willful attempt to mislead the USPTO by the
`
`material, false and fraudulent misrepresentations that Able Planet made during the registration of
`
`its alleged mark “Hear the Difference.” In addition to an award for damages, Bose seeks
`
`attorneys’ fees, experts’ fees, costs and expenses pursuant to: (1) 15 U.S.C. § 1120, as a result of
`
`Able Planet’s false and fraudulently procured Trademark Registration; (2) 15 U.S.C. § 1117, due
`
`to the exceptional nature of this case; and (3) as a result of having to defend this action in light of
`
`Able Planet’s fraudulent conduct in procuring U.S. Trademark Reg. No. 3,655,934.
`
`Bose also seeks a declaration that its use of the descriptive phrase “Hear the Difference”
`
`does not violate Sections 32 and 42 of the Lanham Act or common law.
`
`10
`
`

`

`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 11 of 19
`
`Alternatively, if the phrase “Hear the Difference” is found to be inherently distinctive,
`
`and if any trademark significance is attached to this phrase, Bose seeks damages, including,
`
`without limitation, damages to be doubled or tripled for willful infringement, lost profits and an
`
`order enjoining Able Planet its officers, directors, employees, agents, licensees, successors, and
`
`assigns, and all persons in concert with them, from using, including without limitation on
`
`displays and in marketing and advertising materials, the phrase “Hear the Difference” or any
`
`designation in commerce similar to the phrase Hear the Difference. Bose also seeks such further
`
`injunctive and corrective action as set forth in its Counterclaims.
`
`Neither the amount of attorneys’, experts’ or other fees and costs, nor the amount of any
`
`other relief that may be deemed appropriate, is ascertainable at this time. Bose reserves the right
`
`to supplement, modify, or add to this statement as the case proceeds and other discovery is
`
`obtained.
`
`a.
`
`b.
`
`6. REPORT OF PRECONFERENCE DISCOVERY AND
`MEETING UNDER FED. R. CIV. P. 26(f)
`
`The initial Rule 26(f) meeting was held on May 24, 2012.
`
`Clayton C. James of Hogan Lovells US LLP participated on behalf of Able
`
`Planet, and Karen Stringer participated on behalf of Bose.
`
`c.
`
`The parties exchanged their initial disclosures under Fed. R. Civ. P. Rule 26(a)(1)
`
`on June 1, 2012.
`
`d.
`
`The parties do not propose any changes in the timing or requirements of
`
`disclosures under Fed. R. Civ. P. 26(a)(1).
`
`11
`
`

`

`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 12 of 19
`
`e.
`
`No agreements related to the conduct of informal discovery have been reached at
`
`this time, though the parties will continue to discuss opportunities for such discovery.
`
`f.
`
`The parties agree to meet and confer to pursue opportunities to reduce discovery
`
`or other litigation costs (including the use of a unified exhibit numbering system) and limits on
`
`electronic discovery, including but not limited to electronic email.
`
`g.
`
`While the parties agree that there will be some discovery of materials maintained
`
`in electronic format, they do not believe the case will involve large amounts of such discovery.
`
`Such materials shall be produced in electronic format, either as .pdf or .tif images on CDs with
`
`OCR data, when possible. However, the parties may seek documents in their native application
`
`as necessary on an individual basis, after meeting and conferring on the necessity to do so. Each
`
`image will have a unique file name based on the associated production number, and all parent-
`
`child relationships (attachment ranges) will be preserved. The parties shall, whenever practical,
`
`produce electronic copies of documents rather than paper copies. The parties will not be
`
`required to preserve or search information in data sources that are not reasonably accessible,
`
`including back-up tapes, disaster recovery systems, and other data sources that are not
`
`reasonably accessible, based on expense and burden associated with searching and producing
`
`information from such sources.
`
`In the event of any inadvertent disclosure of any privileged or trial preparation materials,
`
`such materials shall immediately be destroyed or returned to the disclosing party, without any
`
`further use of any kind, after notice has been given by the disclosing party, and without such
`
`inadvertent disclosure constituting a waiver of any privilege. Communications between parties
`
`12
`
`

`

`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 13 of 19
`
`and their counsel occurring after the date of the filing of this lawsuit will all be deemed
`
`privileged, will not be subject to discovery, and will not be subject to privilege logging.
`
`h.
`
`The parties have engaged in ongoing settlement discussions related to their
`
`dispute in connection with the Bose Patent Action, including two settlement conferences with
`
`U.S. Magistrate Judge Watanabe.
`
`7. CONSENT
`
`The parties do not consent at this time to the exercise of jurisdiction of a Magistrate
`
`Judge.
`
`8. DISCOVERY LIMITATIONS
`
`a.
`
`Each party shall take no more than ten (10) non-expert depositions and three (3)
`
`expert depositions.
`
`b.
`
`c.
`
`Each party shall propound no more than twenty-five (25) interrogatories.
`
`No deposition will exceed the seven-hour duration limitation under Fed. R. Civ.
`
`P. 30(d)(1), excluding breaks and legal argument.
`
`d.
`
`Each party shall propound no more than forty (40) requests for production of
`
`documents.
`
`e.
`
`Each party shall propound no more than thirty-five (35 requests for admission
`
`except that either party may propound unlimited number of requests for admission solely
`
`regarding authentication of documents).
`
`13
`
`

`

`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 14 of 19
`
`9. CASE PLAN AND SCHEDULE
`
`Counsel for the parties have met and conferred regarding a proposed schedule but have
`
`been unable to come to a mutually acceptable recommended schedule. Therefore, the parties’
`
`respective proposals are as follows:
`
`a.
`
`Deadline for Joinder of Parties and Amendment of Pleadings:
`
`(i) Plaintiff’s proposal:
`
`July 6, 2012
`
`(ii) Defendant’s proposal:
`
`September 7, 2012
`
`b.
`
`Fact discovery cut-off:
`
`(i) Plaintiff’s proposal:
`
`October 15, 2012
`
`(ii) Defendants’ proposal:
`
`December 14, 2012
`
`c.
`
`Dispositive Motion Deadline:
`
`(i) Plaintiff’s proposal:
`
`February 15, 2013
`
`(ii) Defendant’s proposal: May 15, 2013
`
`d.
`
`Expert Witness Disclosure:
`
`1.
`
`While the parties have not made their final determination as to the need
`
`and anticipated fields for expert testimony, and each reserves the right to supplement their
`
`respective lists, each party currently anticipates relying on expert testimony in the areas of
`
`trademark infringement, trademark validity, unfair competition and damages.
`
`2.
`
`3.
`
`Each party may designate up to three (3) expert witnesses.
`
`The parties shall designate all experts and provide opposing counsel with
`
`all information specified in Fed. R. Civ. P. 26(a)(2) on or before: .
`
`14
`
`

`

`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 15 of 19
`
`(i) Plaintiff’s proposal: November 15, 2012
`
`(ii) Defendant’s proposal: March 1, 2013
`
`4.
`
`The parties shall designate all rebuttal experts and provide opposing
`
`counsel with all information specified in Fed. R. Civ. P. 26(a)(2) on or before:
`
`(i) Plaintiff’s proposal:
`
`December 15, 2013
`
`(ii) Defendant’s proposal:
`
`April 5, 2013
`
`e.
`
`Plaintiff anticipates deposing the following persons:
`
`1.
`
`One or more Bose personnel responsible for the use of the HEAR THE
`
`DIFFERENCE mark by Bose;
`
`2.
`
`One or more Bose personnel to testify regarding sales and other financial
`
`data associated with products marketed by Bose in connection with the HEAR THE
`
`DIFFERENCE mark;
`
`3.
`
`One or more representatives of Costco, and any other retailer, through
`
`which Bose marketed any products using the HEAR THE DIFFERENCE mark;
`
`4.
`
`Any experts identified by Bose.
`
`f.
`
`Defendant anticipates deposing the following persons:
`
`1.
`
`One or more Able Planet personnel responsible for the use of the alleged
`
`Hear the Difference mark by Able Planet.
`
`2.
`
`Anne Foster, the applicant for the registration of the alleged mark Hear the
`
`Difference, which was assigned serial number 78/699,980.
`
`3.
`
`4.
`
`One or more individuals with knowledge regarding the ‘980 Application.
`
`Kevin Semcken, President and CEO of Able Planet.
`
`15
`
`

`

`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 16 of 19
`
`5.
`
`One or more individuals with knowledge regarding Able Planet’s
`
`marketing, advertising, comparisons, and sales of products (historically and in the present) using
`
`the alleged mark Hear the Difference.
`
`6.
`
`One or more Able Plane

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