Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA573771
`ESTTA Tracking number:
`11/27/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92055795
`Defendant
`E.F. Hutton Group, Inc.
`ERIC J VON VORYS
`SHULMAN ROGERS GANDAL PORDY ECKER PA
`12505 PARK POTOMAC AVENUE, 6TH FLOOR
`POTOMAC, MD 20854
`UNITED STATES
`evonvorys@shulmanrogers.com
`Reply in Support of Motion
`Eric J. von Vorys
`evonvorys@shulmanrogers.com
`/EricJvonVorys/
`11/27/2013
`Reply to Opposition to Mot Sanctions 11-27-13.PDF(1951005 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`________________________________________________________ __x
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`TERRENCE HASTINGS
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`Petitioner,
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`v.
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`E.F. HUTTON GROUP INC.
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`Respondent.
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`Cancellation No. 92fO55'r'95
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`Registration No. 4122970 E.F. HUTTON
`Registration No. 4126754 |E‘1F|'|uttnn
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`________________________________________________________-_;'(
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`REPLY TO PETITIONER’S OPPOSITION TO RESPON])ENT’S MOTION FOR SANCTIONS
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`Respondent E.F. Hutton Group Inc. (“Respondent”) submits through counsel this Reply to
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`Petitioner’s Opposition to Respondent’s Motion for Sanctions and states as follows: Petitioner raises
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`three issues why it should not be sanctioned for filing its untimely and faulty Motion to Compel: (i)
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`Respondent’s Motion for Sanctions was improper; (ii) Petitioner’s Motion filed two months afier
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`Discovery closed actually was timely, and (iii) Respondent’s Motion for Sanctions was retaliatory and
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`frivolous.‘ Contrary to Petitioner’s allegations, Respondent’s Rule 11 Motion was proper under the
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`circumstances, Petitioner’s Motion was not timely, and Respondent’s Motion was not retaliatory or
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`frivolous. Moreover, Petitioner does not contradict Respondent’s contentions that Petitioner’s Notice of
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`Deposition was procedurally defective or that Petitioner has no published case law to support its position.
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`For these reasons, Respondent’s Motion for Sanctions should be granted.
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`Before countering Petitioner’s principal arguments, it is worth addressing Petitioner’s complete
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`failure to support its argument with proper, published case law. Petitioner’s Opposition relies on two
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`intermediate, unpublished non-final decisions and four unpublished case decisions as part ofits meager
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`support. Further, not one single case cited by Petitioner has the same facts as in the instant case. For
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`1 Petitioner’s Opposition contains the same type of misrepresented facts, misleading summaries, and irrelevant case
`citations, which are either inapposite or have no suppottin g authority because they are unpublished, that prompted
`Respondent to tile for sanctions in the first place. Such incautious conduct should not be overlooked by the Board in
`its decision to grant the requested sanctions.
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`example, Petitioner cites five cases to support its contention that a Motion for Sanctions under Rule 1 l(b)
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`is improper. None ofthosc cases involves the filing ofa Motion to Compel the deposition ofa non-party
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`attorney outside the discovery period. Each case involves a party failing to provide responses to
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`interrogatories or document requests during the discovery period? Petitioner also tries to find support in
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`three referenced cases that Rule 1 l(d) says that Rule ‘l l sanctions are inapplicable to discovery disputes.
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`The first case, Guimaraes v. NORS is an unpublished case involving an employment dispute. The second
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`citation Rates Tech, Inc. v. Mediatrix Telecom, Inc. is also unpublished and involved a patent
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`infringement case. Finally, Aver.-it v. Sofjbcro involved a pro-se prisoner civil rights lawsuit alleging
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`excessive force and denial of medical needs. Each dispute involved one party's refusal to provide
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`interrogatory responses or documents during the discovery period. Not one single case in the entire
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`Opposition provides support for Petitioner’s argument that it should not be sanctioned for its frivolous
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`motion practice in filing a Motion to Compel a deposition after discovery had been closed for two
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`months. As all legal contentions in Petitioner’s Opposition are unwarranted by existing law, Petitioner’s
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`Opposition fails and the Board should grant Respondent’s Motion for Sanctions.
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`I.
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`Motion for Sanctions Under Rule l1(b) Is Proper in this Case.
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`Rule 1] governs every pleading, written motion, and other paper signed by an attorney.3 Rule
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`1 1(d)4 is the exception to the general Rule 11. Rule 11(d) only applies to disclosures and discovery
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`2 As the Board is aware, it is not unusual that a Motion to Compel the provision of interrogatory responses or
`documents would be filed after discovery closes as the TBMP expressly permits this type of discovery responses to
`be provided after the close of discovery. TBMP § 403.03. Not so with depositions. The Rules do not permit
`depositions to be taken afier the close ofdiscovery. 37 CFR § 2.l20(a)(3); TBMP §404.07(b).
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`3 Fed. R. Civ. P. 1 l(b) REPRI-lSEN'l‘A'I‘lONS TO THE COURT. By presenting to the court a pleading, written motion, or
`other paper — whether by signing, filing, submitting, or later advocating it — an attorney or unrepresented party
`certifies that to the best of the person's knowledge, information, and belief, formed after an inquiry reasonable under
`the circumstances: (1) it is not being presented for any improper purpose, such as to harass, cause unnecessary delay,
`or needlessly increase the cost of litigation; (2) the claims, defenses, and other legal contentions are warranted by
`existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law or for establishing
`new law; (3) the factual contentions have evidentiary support or, ifspecifically so identified, will likely have
`evidentiary support after a reasonable opportunity for further investigation or discovery; and (4) the denials of
`factual contentions are warranted on the evidence or, if specifically so identified, are reasonably based on belief or a
`lack ofinformation.
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`4 Fed. R. Civ. R.
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`l l(d) states: INAPPLICABILITY T0 DISCOVERY. This rule does not apply to disclosures and discovery
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`requests, responses, objections, and motions under Rules 26 through 3?.
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`requests, responses, objections a11d motions under Rules 26 through 37. Rules 26 through 3? describe the
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`discovery process. As the Advisory Committee Notes For Rule 11(d) make clear, the general Rule 1]
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`does not apply to disclosures, requests, responses, objections and motions during the discovery process.
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`Sanctions for abuses during discovery are controlled by Fed.R.Civ.P. 26(g), not Rule 11. As the Court in
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`Caigene Inc. v. Enzo Biocnem Inc, 29 U.S.P.Q.2d 1679 (E.D. Cal. 1993) confirmed, “Rule 26 more
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`specifically refers to discovery abuse in general rather than motions seeking to compel discovery, and
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`stands in lieu ofthe more general Rule 1].” Accordingly, Rule 26(g) provides remedies for abuses during
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`the Discovery process, while Rule 11 provides remedies for abuses outside ofthe Discovery process.
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`Discovery in the instant case closed on August 2, 2013. Petitioner, himself, refused Respondent's
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`request to extend the deadline. Petitioner’s Motion to Compel was filed on September 30, 2013, two
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`months after Discovery closed. So, Petitioner’s Motion cannot be considered “during the Discovery
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`process.” Consequently, Rule 1 l(d) does not govern. Respondent’s Motion for Sanctions under general
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`Rule 1 1 is not based on Petitioner’s failure to properly subpoena Mr. von Vorys’ deposition during the
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`Discovery period. Respondent’s Motion for Sanctions is based on Petitioner’s frivolous Motion to
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`Compel that was filed two months after Discovery closed, which is not permitted by the TBMP rules or
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`supported by existing law and needlessly increased the cost of litigation.
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`Even presuming arguendo that Rule 11 does not govern this situation, the Board still has the
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`inherent authority to grant sanctions under TBMP 527.03, which was referenced in Respondent’s Motion
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`for Sanctions. Consequently, whether the Motion for Sanctions is titled Rule 11 sanctions, Rule 26(g)
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`sanctions, or any other relevant Rule in the TBMP or the Fed.R.Civ.P. that enumerates remedies for
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`frivolous motions’ practice, it ultimately makes no difference as the Board has the ability to issue
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`sanctions on its own authority. See e.g., Central Mfg. Inc. v. Third Miiiennium Tech. Inc., 6] U.S.P.Q.2d
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`1210 (TTAB 2001). As such, Petitioner’s first argument fails.
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`II.
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`Petitioner’s Motion to Compel Was Not Timely Filed.
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`Petitioner argues that its Motion to Compel the deposition of Mr. von Vorys was not frivolous
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`because it was timely filed under 3? C.F.R. § 2.120(e). Petitioner is mistaken. 3?‘ C.F.R. § 2.120(e) is
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`not availing to support Petitioner’s argument that its Motion to Compel was timely filed. 3? C.F.R. §
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`3
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`2. l20(e) only concerns a short list of enumerated discovery abuses, none of which are present here. The
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`language is clear that 3? C.F.R. § 2.120(e) only covers discovery abuses by a party or an officer, director
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`or managing agent ofa party. To be certain, 37 C.F.R. § 2. l20(e) states as follows:
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`If a party fails to designate a person
`Motion for an order to compel discovery.
`pursuant to Rule 30(b) (6) or Rule 3 1(a) ofthe Federal Rules of Civil Procedure, or
`if a party, or such designated person, or an officer, director or managing agent of a
`party fails to attend a deposition or fails to answer any question propounded in a
`discovery deposition, or any interrogatory, or fails to produce and permit the
`inspection and copying of any document or thing, the party seeking discovery may
`file a motion before the Trademark Trial and Appeal Board for an order to compel
`a designation, or attendance at a deposition, or an answer, or production and an
`opportunity to inspect and copy.
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`Mr. von Vorys is neither a party, a Rule 30(b) (6) designee of a party, nor an officer, director or managing
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`agent ofa party. Thus, 37 C.F.R. § 2. ] 2U(e) does not apply.
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`This is not a case where Respondent stonewalled Petitioner by not providing any discovery
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`responses. Petitioner has not complained that Respondent has failed to designate a person pursuant to
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`Rule 30(b) (6) or Rule 31(a) ofthe Federal Rules of Civil Procedure. Petitioner has not complained that
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`Respondent or such designated person, or an officer, director or managing agent of Respondent failed to
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`attend a deposition or failed to answer any question propounded in a discovery deposition, or any
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`interrogatory, or failed to produce and permit the inspection and copying of any document or thing. This
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`is because Respondent has answered all of Petitioner’s interrogatories, delivered all responsive documents
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`to Petitioner and designated a person pursuant to Rule 30(b) (6), who dutifully sat for a deposition and
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`answered all questioned put to him for over five hours. Petitioner filed the Motion to Compel Mr. von
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`Vorys’ deposition because he did not like the responses Respondent’s 30(b) (6) designee gave during his
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`deposition. If Petitioner was so keen on taking Mr. von Vorys’ deposition, he should have followed the
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`procedures established by TBMP § 404.03(a) (2)5 during the discovegy periods Instead of following
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`5 TBMP § 404.03(a) (2) Person Residing in the United States — Nonparty. Ifa proposed deponent residing in
`the United States is not a party, or a person who, at the time set for the taking ofthe deposition, is an officer,
`director‘, or managing agent ofa party, or a person designated under Fed. R. Civ. P. 30(b) (6) or 3 l (a) (3) to testify
`on behalfofa party, the responsibility rests wholly with the deposing party to secure the attendance ofthe proposed
`deponent. Ifthe proposed deponent is not willing to appear voluntarily, the deposing party must secure the
`deponent's attendance by subpoena, pursuant to 35 U.S.C. § 24 and Fed. R. Civ. P. 45. The subpoena must be issued
`from the United States district court in the federaljudicial district where the deponcnt resides or is regularly
`employed.
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`the prescribed rules for securing Mr. von Vorys’ deposition attendance w which was by subpoena issued
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`from the United States District Court for the District of Maryland, Greenbelt Division — Petitioner filed a
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`frivolous "Motion to Compel.
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`Petitioner contends that, in a letter dated August 27, 2013 (submitted to the Board as
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`Petitioner’s Exhibit C), Mr. von Vorys suggested that any sought-after testimony could be obtained
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`through the deposition of Respondent’s principal, Christopher Daniels without the need to depose
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`Mr. Von Vorys, but when Mr. Daniels was deposed he stated that he had no knowledge ofthe factual
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`circumstances surrounding his attorney signing the Statements ofUse. Petitioner misstates and
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`misrepresents what was said in Mr. von Vorys’ letter as well as what Mr. Daniels testified to in his
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`deposition. As the Board can see, the referenced letter sets forth a number of reasons why Petitioner
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`is not entitled to take Mr. von Vorys’ depositionf not just that all relevant information could be
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`ascertained by taking Mr. Daniel’s 30(b) (6) deposition. Moreover, Mr. Daniels directly answered to
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`the best of his ability every question that was put to him by Petitioner’s attorney during a five plus
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`hour deposition. The only question Mr. Daniel’s could not answer was “What firsthand basis did Mr.
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`von Vorys have to make those statements [when he signed the declaration in the Statement of Use?]”
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`The way the question was asked, Mr. Daniels could not possibly know what “firsthand” knowledge
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`someone else had. So Mr. Daniels replied that he does not know what Mr. von Vorys knows.
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`Petitioner’s attorney never followed up by asking Mr. Daniels why he had Mr. von Vorys sign the
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`Declaration or whether all of the information in the Statement of Use was true. In seeking the
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`deposition of Mr. von Vorys, Petitioner does not assert that Mr. Daniels could not or would not provide
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`information related to the Statement ofUse — only that Mr. Daniels did not provide information as to what
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`Mr. von Vorys knew or did not know.
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`It is disingenuous now to assert that Petitioner needs Mr. von
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`6 TBMP § 404.0] When Permitted and By Whom. Discovery depositions must be both noticed and taken prior to
`the expiration ofthe discovery period.
`7 The three-page letter in question insists that Petitioner is not entitled to take Mr. von Vorys’ deposition because,
`among other reasons: (i) Mr. von Vorys is neither a party, a Rule 30(b) (6) designate ofa party, nor an officer,
`director or managing agent ofa party; (ii) Petitioner has no relevant case law supporting its request; and (iii) the
`taking of Mr. von Vorys’ deposition would be futile as at all relevant times he was Respondent’s attorney and
`anything he would testify to was governed by the attorney-client privilege.
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`5
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`Vorys’ testimony when he had a chance to get the information from Respondent’s 30(b) (6) designee
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`and failed to ask the right questions.
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`III.
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`Rcspontlent’s Motion for Sanctions was not Retaliatory, but Was an Appropriate
`Request under the Circumstances.
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`Petitioner seems to argue, without any supporting case law, that by signing the Declaration in the
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`Statement of Use at issue, Mr. von Vorys somehow became a fact witness who is not shielded by the
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`attorney-client privilege. This is utterly wrong. 37 C.F.R. § 2.193(e) (1) (TMEP § 804.04) states:
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`Verification of facts. A verification in support of an application for registration,
`amendment to an application for registration, allegation of use under §2.?6 or §2.88,
`request for extension of time to file a statement of use under §2.89, or an affidavit
`under section 8, l2(c), 15, or 71 of the Trademark Act must be sworn to or supported
`by a declaration under §2.20, signed by the owner or a person properly authorized to
`sign on behalf of the owner. A person who is properly authorized to verify facts on
`behalf of an owner is: (i) A person with legal authority to bind the owner (e.g., a
`corporate officer or general partner of a partnership); (ii) A person with firsthand
`knowledge of the facts and actual or implied authority to act on behalf of the owner;
`or (iii) An atto1'n_r:_:y_as defined in {$1 l.l o_f_tl_1_is chapter who has an actual written or
`verbal power of attorney or an implied power of attorney from the owner. (emphasis
`added)
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`This Section clearly identifies three types of people permitted to sign the Declaration in a
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`Statement of Use. 37 CPR. § 2. l93(e) (1) (iii) says that an attorney who has an actual written or verbal
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`power of attorney or an implied power of attorney from the owner is permitted to sign such a Statement of
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`Use. 3? C.F.R. § 2.193(e) (1) (iii) does not require that the attorney have first-hand knowledge of any
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`facts ofthe owner as required in 3? C.F.R. § 2.193(e) (1) (ii). Section 2.l93(e) (1) (iii) undoubtedly
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`permits an attorney — who has a power of attorney from the owner — to sign certain documents for the
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`convenience of the owner. Accordingly, when Mr. Von Vorys executed the Statement of Use in
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`question as the attorney of record for the Applicant, he did not become a fact witness or forfeit the
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`attorney-client privilege.
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`Petitioner again misstates Respondent’s reason why Petitioner's Motion to Compel was
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`frivolous and warranting sanctions. Petitioner asserts that Respondent is seeking sanctions because
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`Petitioner attempts to seek an attorney’s deposition, which must by definition be harassing, frivolous
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`andfor otherwise violate Rule 11. Respondenl’s Motion for Sanctions has nothing to do with the fact
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`6
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`that Petitioner was seeking the dcposition of Respondent’s attorney. Respondent filed its Motion for
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`Sanctions stt'icl|y laecause Petitioner liled a Motion to Compel l<nowin_g_liI1| well that: {_i_') its Motion
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`was two months too late. (ii) its Motion was not s_Igpporlet| by law or the facts: and (iii) the Board |i_2_1_d
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`no authority to g_[§_I_’_‘.'_l2 such a motion ofa non—party attorngy. This is the very definition ofa frivolous
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`motion.
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`Petitioner argues that there is precedent in other Federal courts where the deposition of an
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`attorney in trademark litigation was deemed proper. Petitioner cites four cases in support ofits
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`allegation. A reading of these four cases shows that they are all inappositc and of no support. In
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`every case, the attorney voluntarily testified as an expert in the case, as in-house counsel for a party,
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`or as the party’s 30(b) )6) designee. None of Petitioner’s cases offer any support that a party can
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`compel the deposition after the close of discovery of a non-party attorney through a Motion to
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`Compel at the Board, instead of through a subpoena from a U.S. District Court.
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`IV.
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`Dismissal Is An Appropriate Sanction.
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`Petitioner’s Motion to Compel was: (1) presented for an improper purpose, such as to harass,
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`cause unnecessary delay, or needlessly increase the cost oflitigation and (2) is unwarranted by the
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`TBMP rules or existing law. Respondent’s attorney in the August 2?, 2013 letter informed Petitioner
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`of these facts. Accordingly, Petitioner had notice that the filing of his Motion to Compel was
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`frivolous and not warranted by TBMP rules or existing law, yet he filed it anyway. Respondent
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`notified Petitioner that it was going to file this Motion for Sanctions, giving Petitioner the appropriate
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`twenty-one days to withdraw his Motion to Compel. With full knowledge of the consequences,
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`Petitioner deliberately chose not to withdraw. The Board under like circumstances has sanctioned
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`such previous bad faith by awarding judgment against one party filing abusive motions. See Giant
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`Food, Inc. v. Standard Terry M':'h's', Inc., 231 U.S.P.Q. 626 (TTAB 1986) (“[N]o sanctions other than
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`entry ofjudgment in favor of opposcr .
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`.
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`. will effectively halt the reckless and dilatory conduct
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`[applicant] displayed in this case”); see also, (.‘arr:'m'1nc. v. Carla Carinf S.R.L., 5'! U.S.P.Q.2d 1067
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`(TTAB 2000); Baron Phffijzipe de Rothschild S.A. v. Sty!-Rite Optical Mfg. Co., 55 U.S.P.Q.2d 1848
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`(TTAB 2000).
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`In light of the fact that Petitioner had ample warning that filing his Motion to Compel was
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`frivolous, and he filed it anyway, and then refused to withdraw it after notice, this Board should grant
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`Respondent's Motion for Sanctions and should award judgment in Respondent’s favor.
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`Dated: November 27, 2013
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`Respectfully submitted,
`
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`Eric J. Von Vorys, Estfui e
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`Shulman, Rogers, Gandal, Pordy & Eelte ', P.A.
`12505 Park Potomac Avenue
`Sixth Floor
`L
`Potomac, Maryland 20854
`(301) 230-5200
`
`- " '
`
`Counsel for Respondent E.F. Hutton Group Inc.
`
`

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`CERTIFICATE OF SERVICE
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`I hereby certify that on the 27th day ofNovember 2013, a copy ofthe foregoing Motion for Sanctions was
`sent via first class mail and email, to:
`
`Jess M. Collen, Esq.
`Collen lP, Intellectual Prioperty Law P.C.
`The Holyoke-Manhattan Building
`80 South Highland Avenue
`Ossining, New York 10562
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