throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA738891
`
`Filing date:
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`04/08/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`92057944
`
`Defendant
`Sto AG
`
`MARK L SEIGEL
`THE SLADKUS LAW GROUP
`1827 POWERS FERRY ROAD, BUILDING 6 SUITE 200
`ATLANTA, GA 30339
`UNITED STATES
`jeff@sladlaw.com
`
`Opposition/Response to Motion
`
`Mark L. Seigel
`
`jeff@sladlaw.com, mandy@sladlaw.com,victoria@sladlaw.com,
`mark@sladlaw.com
`
`/Mark L. Seigel/
`
`04/08/2016
`
`Response to StonCor Motion to Compel (FINAL).pdf(517293 bytes )
`Sladkus Dec in support of response to Mot to Compel (FINAL).pdf(130293 bytes
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`) S
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`ladkus Dec Ex A.pdf(3559077 bytes )
`Sladkus Dec Ex B.pdf(1841298 bytes )
`Sladkus Dec Ex C.pdf(3480574 bytes )
`Sladkus Dec Ex D.pdf(1748114 bytes )
`Sladkus Dec Ex E.pdf(3479133 bytes )
`Sladkus Dec Ex F.pdf(1297296 bytes )
`Declaration of Marcy Sperry for Response to StonCor's Motion to Compel
`(final).pdf(220047 bytes )
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`Proceeding
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`STONCOR GROUP, INC.,
`
`
`
`Plaintiff,
`
`
`
`vs.
`
`Cancellation No. 92057944
`
`STO AG,
`
`Registration No. 3509296
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`Defendant.
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`
`
`
`
`STO AG’S RESPONSE TO STONCOR’S MOTION TO COMPEL STO AG
`TO RESPOND WITHOUT OBJECTION TO STONCOR’S FIRST SET OF
`INTERROGATORIES
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`
`

`
`INTRODUCTION
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`Plaintiff StonCor Group, Inc. (“Plaintiff”) complains that Sto improperly
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`objected to Plaintiff’s interrogatories as excessive in number and “failed to make
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`any effort to cooperate with StonCor” in resolving this dispute. (Pl.’s Mot. to
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`Compel 2.) Plaintiff’s interrogatories, when properly counted, contain at least 95
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`separate questions. After Sto explained how it arrived at this number, Plaintiff
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`agreed to delete two disputed interrogatories, which would bring the total number
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`under seventy-five. However, the next day Plaintiff served its Motion to Compel
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`without any further substantive discussion with Sto.
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`Plaintiff’s complaint that Sto has “failed to make any effort to cooperate
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`with StonCor” is particularly ironic. Since September 27, 2013, when Plaintiff
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`filed its petition to cancel Sto’s STOCOAT mark, Plaintiff has repeatedly and
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`unduly delayed all efforts to resolve this dispute. Shortly after commencing this
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`cancellation proceeding, Plaintiff proposed that the parties enter into settlement
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`discussions and Sto agreed. This was two and a half years ago – and since that
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`time, due to Plaintiff’s lack of responsiveness and unreasonable delay, very little
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`has been accomplished.
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`As shown below, Plaintiff has failed to cooperate with Sto in its efforts to
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`resolve this dispute either through settlement (despite the fact that Plaintiff is the
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`party which initially proposed settlement) or through diligent prosecution of this
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`2
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`case. Since the parties first entertained the idea of settlement, Plaintiff’s
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`lackadaisical and uncooperative conduct has forced Sto to send a multitude of
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`follow up communications inquiring about the status of proposed settlement terms
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`and comments regarding draft settlement agreements. Plaintiff’s approach to
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`discovery in this case has not been dissimilar.
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`Contrary to what Plaintiff alleges, Sto did not behave uncooperatively.
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`Rather, Sto believed that Plaintiff was committed to resolving the matter through
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`settlement, and therefore focused on those efforts. Both parties served written
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`discovery requests early on in the proceeding, but agreed to defer their responses to
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`those requests while focusing on settlement efforts. Unfortunately, Plaintiff’s
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`delays and non-responsiveness resulted in little settlement progress. Eventually the
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`Board ordered that no further extensions of time would be granted for settlement
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`discussions. [Dkt. No. 25, October 26, 2015 Order.] By that time, it was clear to
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`Sto that the dispute would not be resolved prior to the deadline for it to respond to
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`Plaintiff’s discovery requests. Sto prepared and served its responses and objections
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`to Plaintiff’s discovery requests, and Plaintiff did the same for Sto’s requests. Sto’s
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`conduct with regard to serving a general objection based on Plaintiff’s excessive
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`number of interrogatories falls squarely within the Trademark Rules. On the other
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`hand, Plaintiff’s conduct falls short. Plaintiff did not act in good faith in trying to
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`resolve the discovery dispute prior to serving its Motion to Compel. As such,
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`Plaintiff’s Motion to Compel must be denied.
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`STATEMENT OF FACTS
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`I. Plaintiff’s Uncommitted and Uncooperative Conduct Derailed Settlement
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`At the parties’ discovery conference in January 2014, Plaintiff proposed
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`entering into a coexistence and settlement agreement, and Sto agreed to consider
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`such a proposal. (Sladkus Dec. ¶ 4, attached as Exhibit “A.”) The parties further
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`agreed that Plaintiff would provide a draft settlement agreement. (Id.) Several
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`weeks later, Sto sent the first of a series of follow up communications to Plaintiff
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`requesting a status update regarding the proposed agreement. (Id.) In response to
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`Sto’s inquiry, Plaintiff cited a new general counsel and a patent litigation matter as
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`the reason for delay. (Id.) This excuse became routine for Plaintiff.
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`On June 3, 2014, to move the stalled settlement discussions along, Sto sent
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`proposed settlement terms to Plaintiff. (Sladkus Dec. ¶ 5.) Plaintiff’s counsel
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`advised that the proposed terms seemed reasonable and he would convey the same
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`to his client. (Id.) However, weeks went by without any feedback. Sto sent a
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`number of email communications to Plaintiff’s counsel requesting comments.
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`(Sladkus Dec. ¶ 6.) Plaintiff’s counsel continuously cited imminent deadlines in the
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`patent litigation matter as the justification for the delay, and repeatedly requested
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`consent to extend or suspend deadlines. (Id.)
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`II. Sto’s Efforts to Honor the Board’s Discovery Deadlines in Light of Stalled
`Settlement Discussions Attributable to Plaintiff’s Conduct
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`Due to the lack of progress towards settlement and in light of impending
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`discovery deadlines, on January 22, 2015, Sto served its First Set of Interrogatories
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`and First Set of Requests for Production of Documents and Things on Plaintiff.
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`(Sladkus Dec. ¶ 7.) After receiving Sto’s discovery requests, Plaintiff notified Sto
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`that the pending patent litigation matter was winding down and that Plaintiff could
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`now devote time and resources to the instant proceeding. (Id.)
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`On January 29, 2015, Plaintiff requested Sto’s consent to a further 90-day
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`extension of discovery. (Id.) Plaintiff then filed an unconsented motion to extend
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`deadlines in this matter, unsurprisingly relying on the patent litigation matter as
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`justification. (Dkt. No. 15, Pl.’s Mot. for Ext. w/o Consent.) Sto subsequently
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`advised Plaintiff that Plaintiff’s failure to provide comments regarding the
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`proposed settlement terms over the course of the past year had not gone unnoticed,
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`and requested Plaintiff to inform Sto once Plaintiff was prepared to discuss
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`settlement. (Sladkus Dec. ¶ 7, Ex. D.)
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`On February 10, 2015, Plaintiff served its First Set of Interrogatories and First
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`Set of Requests for Production of Documents and Things. (Sladkus Dec. ¶ 8.) On
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`Saturday, February 28, 2015, Plaintiff served its First Set of Requests for
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`Admissions and its Second Set of Requests for Production of Documents and
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`Things. (Id.) Plaintiff’s requests for documents collectively totaled 188 requests
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`5
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`and its requests for admissions totaled 168 requests. Plaintiff’s interrogatories
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`totaled 40 numbered interrogatories with 16 separately identified subparts.
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`However, when properly counted then included at least 95 interrogatories.
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`III. Sto’s Good Faith Effort to Promote Meaningful Settlement Discussions
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`Notwithstanding Plaintiff’s half-hearted approach to settlement, Sto made
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`efforts to revive settlement discussions. To this end, on March 3, 2015, Sto
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`inquired whether Plaintiff was at that point interested in actively pursuing
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`settlement negotiations, and whether Plaintiff would agree to set aside discovery so
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`that the parties could focus on settlement. (Sladkus Dec. ¶ 9.) Plaintiff responded
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`the same day with a “resounding “yes!,” ” and advised that Plaintiff would send a
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`draft agreement by the following week. (Id.)
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`Unsurprisingly, Plaintiff did not provide a proposed draft agreement until
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`weeks later, at which time Plaintiff’s counsel advised that he had not yet received
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`comments from Plaintiff on the proposed agreement and that the agreement did
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`“not represent a commitment on the part of StonCor to reach any agreement with
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`Sto AG.” (Sladkus Dec. ¶ 10.) Once again, Sto bore the burden of repeated follow
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`up communications to Plaintiff’s counsel to inquire about the status of comments
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`from his client. Plaintiff either belatedly responded or failed to respond at all to a
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`number of these attempts, and did not provide substantive comments until August
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`6
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`20, 2015 – almost five months after Plaintiff provided the initial draft agreement.1
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`(Sladkus Dec. ¶ 11.)
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`On October 26, 2015, the Board granted yet another request for a suspension
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`of the proceeding – at the same time warning the parties that further requests for
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`suspension or extension would not be entertained. (Dkt. No. 25, October 26, 2015
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`Order.) The parties have continued to pursue settlement; however, in light of the
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`firm deadline for the close of discovery, the parties agreed that responses to any
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`outstanding discovery requests would be due on March 24, 2016. (Sladkus Dec. ¶
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`12.)
`
`IV. Plaintiff’s Pattern of Poor Communication is Reflected in its Handling of
`the Instant Discovery Dispute
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`On March 23, 2016, Sto served its objections and responses to Plaintiff’s
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`First Set of Requests for Admissions, First and Second Sets of Requests for
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`Production of Documents and Things, and a general objection to Plaintiff’s First
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`Set of Interrogatories. (Sperry Dec. ¶ 4, attached as Exhibit “B.”) On March 24,
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`2016, Melissa Scott, associate attorney for Plaintiff’s counsel, contacted Sto’s
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`counsel regarding Sto’s general objection to Plaintiff’s interrogatories. (Id. ¶ 5.)
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`That day, Ms. Scott and Marcy Sperry, Of Counsel for The Sladkus Law Group,
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`
`1 On numerous occasions, Sto received an auto-reply message from Plaintiff’s counsel, advising that if the recipient
`was a client or prospective client, to contact a specified staff member. However, if the recipient happened to be an
`“adversary,” Plaintiff’s counsel was “sorry, but it [was] going to have to wait” until he was back in the office. On at
`least one occasion, Sto received this auto-reply message not a minute after the secretary for Plaintiff’s counsel
`advised that Plaintiff’s counsel was in the office that day.
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`7
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`Sto’s attorney of record, engaged in what Ms. Sperry believed were meaningful
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`and productive discussion regarding Sto’s general objection to Plaintiff’s
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`interrogatories. (Id. ¶ 6 and ¶ 8.) Ms. Sperry explained why Sto believed that
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`Plaintiff’s interrogatories included at least ninety-five questions. (Id. ¶ 6.) Ms.
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`Scott offered to delete two interrogatories (directed to numerous allegations in the
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`original Answer and Counterclaims), which would bring the total number of
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`questions to less than seventy-five. (Id.) Following this discussion, Ms. Sperry
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`believed that parties had resolved this dispute. (Id.) However, on Friday, March 25,
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`2016 at 5:25 p.m., Plaintiff served Sto with the Motion to Compel at issue here
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`without any further substantive discussion.
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`ARGUMENT AND ANALYSIS
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`I. Plaintiff Exceeded the Limit on the Number of Interrogatories
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`
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`Parties are limited to serving no more than 75 interrogatories including
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`subparts. 37 C.F.R. § 2.120(d)(1). Additional interrogatories are not available, even
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`where a case involves a counterclaim or multiple marks. Id.; TBMP § 405.03(c).
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`Parties may exceed the 75-interrogatory limit only by the parties’ stipulation or
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`with the Board’s consent, which may be given upon a showing of good cause. 37
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`C.F.R. § 2.120(d)(1).
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`In calculating interrogatories, a propounding party is bound to its own
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`numbering system. Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19
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`
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`USPQ2d 1636, 1637 (TTAB 1990); Pyttronic Industries, Inc. v. Terk Technologies
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`Corp., 16 USPQ2d 2055, 2056 (TTAB 1990). However, where a party serves 75 or
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`fewer separately designated interrogatories and the interrogatories including
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`subparts in fact exceed 75 questions, the Board will look to the substance of the
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`interrogatories and will count each question separately. Jan Bell Marketing, Inc. at
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`1637.
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`Plaintiff asserts that Sto’s general objection to Plaintiff’s interrogatories
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`based on excessiveness is “unfounded,” and that Plaintiff’s interrogatories totaled
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`40 with 12 subparts. (Pl. Mot. to Compel 1.) However, Plaintiff fails to
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`demonstrate how it has come to that conclusion.2 Plaintiff is mistaken. Many of
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`Plaintiff’s interrogatories include follow-up questions or are directed at multiple
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`issues. Two interrogatories are directed at all of the allegations in Sto’s Answer
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`and Counterclaims, and together total over 22 separate interrogatories. When
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`properly counted Plaintiff’s 40 numbered interrogatories actually total at least 95
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`separate questions.
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`A. Interrogatories containing an
`follow up
`introductory question with
`questions, or a broad introductory clause followed by several subparts
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`Interrogatories containing an initial question with follow up questions are
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`counted as separate
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`interrogatories. Kellogg Co. v. Nugget Distributors’
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`2 Sto notes that Plaintiff’s failure to explain how it concluded that it served a total of 40 interrogatories with 12
`subparts disregards the Board’s recommendation that the moving party set out its counting method showing that the
`number of interrogatories does not exceed 75. TBMP § 405.03(e).
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`
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`Cooperative of America, Inc., 16 USPQ2d 1468, 1469 (TTAB 1990). Likewise,
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`interrogatories beginning with a broad introductory clause followed by several
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`subparts will each be counted separately. Jan Bell Marketing, Inc. at 1637.
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`Several of the interrogatories, namely, Interrogatory Nos. 29, 30, 31 and 32
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`consist of an initial question and three follow up questions. For example,
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`Interrogatory No. 29 directs Sto to:
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`“ Identify all marketing activities in the United States (including,
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`but not limited to, advertisements, promotions, trade shows,
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`articles, press releases whether in print, transmitted by radio,
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`television, wireless format, digital, and internet) for the goods
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`offered under the STOCOAT mark for the past five (5) years, and
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`for each activity identify: (a) when, for how long and where such
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`marketing activity occurred; (b) the names of all media,
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`advertising, promotion or public relations agencies involved in
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`such marketing activity and the names of the primary contact at
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`each agency for the marketing activity; and (c) the annual
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`monetary cost of each marketing activity and all documents
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`relating to such cost.”
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`
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`The initial question directs Sto to identify all marketing activities in the
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`United States for the goods offered under the STOCOAT mark. The first follow up
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`10
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`question asks Sto to provide the date, duration, and location of the activity. The
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`second follow up question asks for the names of any agencies involved with the
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`marketing activity and the primary contact at each of the agencies identified. The
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`third follow up question requires Sto to provide the annual monetary cost of each
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`marketing activity and all documents relating
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`to
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`the cost. Accordingly,
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`Interrogatory Nos. 29, 30, 31 and 32 contain four questions each, for a total of
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`sixteen interrogatories.
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`B. Interrogatories addressing multiple issues
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`Where an interrogatory concerns more than one issue, each issue will be
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`counted as a separate interrogatory. Notice of Final Rulemaking, 54 Fed. Reg.
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`34886 (August 22, 1989). Many of Plaintiff’s numbered interrogatories contain at
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`least two subparts as they concern multiple issues. In particular, Interrogatory Nos.
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`2-5, 7-9, 13-16, 20, 22-24, 33 and 34 each contain two subparts or inquire about
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`two separate issues. By way of example, Interrogatory No. 2 directs Sto to:
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`“Identify all persons responsible for Registrant/Counterclaim
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`Plaintiffs selection and commercial use of the STOCOAT mark in
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`the United States of America.”
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`Interrogatory No. 2 requests information concerning two separate
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`issues, namely, Sto’s selection and commercial use of the STOCOAT mark.
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`Therefore, Interrogatory No. 2 contains two separate interrogatories.
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`Similarly, Interrogatory No. 3 contains two separate interrogatories directed
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`at selection and commercial use of the STOGUARD mark. Interrogatory No.
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`40 addresses four separate issues, as it pertains to four different marks.
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`Therefore, interrogatory numbers 2-5, 7-9, 13-16, 20, 22-24, 33, 34 and 40
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`(eighteen numbered
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`interrogatories) contain a
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`total of
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`thirty-eight
`
`interrogatories.
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`C. Interrogatories directed to allegations in Sto’s Answer and Counterclaims.
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`
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`Interrogatory Nos. 36 and 38 are each substantially more extensive than the
`
`foregoing interrogatories.
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`Interrogatory No. 36 requires Sto to:
`
`“State all
`
`facts
`
`supporting
`
`the denials
`
`set
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`forth
`
`in
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`Registrant/Counterclaim Plaintiff's Answer respecting
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`the
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`allegations of the Petition for Cancellation.”
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`Each of the denials in Sto’s Answer pertains to a separate allegation concerning a
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`distinct issue. Lopez v. Suncor Energy (U.S.A.) Inc., 2012 U.S. Dist. LEXIS
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`128213, at *19-20 (D. Colo. Sept. 7, 2012)(finding that an interrogatory requesting
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`all facts upon which the defendant based its denial or affirmative defense to
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`constitute at least twelve separate interrogatories – “one for each affirmative
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`defense” – and was even broader than that, as it requested the defendant to identify
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`all facts supporting its denials of material allegations in the amended complaint,
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`
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`12
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`which amounted to at least 41 denials); Larson v. Correct Craft, Inc., 2006 U.S.
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`Dist. LEXIS 78028, at *12-13 (M.D. Fla. Oct. 25, 2006)(finding that an
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`interrogatory requesting all facts and documents supporting denials of allegations
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`in a complaint concerned 53 distinct allegations, and as the interrogatory called for
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`both identification of facts and documents, the interrogatory equaled 106
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`interrogatories).When counting the number of issues addressed in Plaintiff’s
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`allegations, Sto only considered its denials to factual allegations asserted by
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`Plaintiff. In particular, Sto only counted its denials to the allegations in paragraphs
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`8-10 and 22-25 of the Complaint. Accordingly, Interrogatory No. 36 addresses, at a
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`minimum, seven separate issues.
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`Similarly, Interrogatory No. 38 consists of no less than fifteen separate
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`questions. Interrogatory No. 38 directs Sto to:
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`“State all
`
`facts supporting
`
`the allegations set
`
`forth
`
`in
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`Registrant/Counterclaim Plaintiff's Counterclaim.”
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`Sto’s counterclaim is comprised of separate factual allegations addressing at least
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`fifteen different issues. In particular, the allegations in paragraphs 1-15 of the
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`Counterclaim are directed to distinct and separate issues. As a result, Interrogatory
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`No. 38 addresses contains at least fifteen separate interrogatories.
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`Sto submits that when counting each of the interrogatories discussed above
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`and each of Plaintiff’s interrogatories which truly contain only one interrogatory,
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`13
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`Plaintiff served a total of at least 95 interrogatories, exceeding the limit imposed by
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`37 C.F.R. § 2.120(d)(1). Plaintiff did not obtain leave from the Board to serve
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`more than 75 interrogatories, nor did the parties stipulate to more than 75
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`interrogatories. Accordingly, the number of interrogatories served by Plaintiff is
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`excessive under the Trademark Rules.
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`II. Sto Properly Followed the Board’s Remedy for Excessive Interrogatories,
`Whereas Plaintiff Failed to Make a Good Faith Effort to Resolve the Dispute
`Before Filing its Motion to Compel
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`Where a party believes it has been served with excessive interrogatories, the
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`party must, “within the time for (and instead of) serving answers and specific
`
`objections to the interrogatories, serve a general objection on the ground of their
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`excessive number.” 37 C.F.R. § 2.120(d)(1). Where, on receipt of a general
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`objection, the propounding party realizes that the interrogatories are indeed
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`excessive, the Board strongly recommends that the parties voluntarily agree to the
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`service of a revised set of interrogatories, instead of bringing their dispute to the
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`Board by motion to compel. TBMP § 405.03(e).
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`If the propounding party believes that the objection is not well taken and the
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`propounding party files a motion to compel discovery, the motion must be
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`accompanied by a written statement that the party or its attorney has made a good
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`faith effort to resolve with the other party or its attorney the issues presented in the
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`motion and has been unable to reach an agreement. 37 C.F.R. 2.120(e)(1). The
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`14
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`statement should include a “recitation of the communications conducted, including
`
`dates, a summary of telephone conversations, and copies of any correspondence
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`exchanged, where applicable.” Hot Tamale Mama...& More, LLC v. SF Inv., Inc.,
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`110 U.S.P.Q.2D 1080,1081 (TTAB 2014). The Board in Hot Tamale Mama noted
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`that the purpose of the good faith rule is to “promote a frank exchange between
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`counsel to resolve issues by agreement or to at least narrow and focus the matters
`
`in controversy before judicial resolution is sought.” Id. In particular, the Hot
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`Tamale Mama Board explained that:
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`[T]he good faith efforts of the parties should be directed to
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`understanding differences and actually investigating ways in which to
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`resolve the dispute. Where it is apparent that the effort toward
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`resolution is incomplete, establishing the good faith effort that is a
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`prerequisite for a motion to compel necessitates that the inquiring
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`party engage in additional effort toward ascertaining and resolving the
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`substance of the dispute.
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`Id.
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`Plaintiff asserts that “if Sto AG had objections to StonCor’s First
`
`interrogatories, picking up the telephone to discuss those objections and trying to
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`reach a compromise with StonCor, so as to move discovery along in this matter,
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`would have been the appropriate thing to do.” (Pl.’s Mot. to Compel 2.) The
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`15
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`Trademark Rules do not impose a duty on the objecting party to contact the
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`propounding party regarding its objections prior to serving them. As noted above,
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`if a party believes that the interrogatories are excessive in number, the remedy
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`provided under the rules is to serve a general objection within the deadline to serve
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`its answers and specific objections. Sto did just that by serving a general objection
`
`on the basis that the interrogatories are excessive in number. Sto served its general
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`objection on March 23, 2016 – well within the deadline for its answers and specific
`
`objections.
`
`After receiving Sto’s general objection to Plaintiff’s interrogatories, Ms.
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`Scott contacted counsel for Sto to discuss the general objection. (Sperry Dec. ¶ 5.)
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`During the meet and confer, the parties discussed Sto’s general objection and Ms.
`
`Sperry explained Sto’s counting method. (Id. at ¶ 6.) Ms. Scott proposed
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`withdrawing Interrogatory Nos. 36 and 38, and Ms. Sperry advised that this
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`proposal would be acceptable if Plaintiff confirmed its offer in writing. (Id.)
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`As a professional courtesy, Sto offered to treat the date of the meet and
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`confer as the date of service of Plaintiff’s revised interrogatories, without actually
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`requiring Plaintiff to serve revised interrogatories, as is typically required by the
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`Board. (Id.) This was based on the understanding that Plaintiff agreed to withdraw
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`Interrogatory Nos. 36 and 38. (Id.) It appeared to Plaintiff’s counsel that the
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`16
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`parties had reached an agreement, and that Ms. Scott was merely confirming the
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`same with Mr. Quinn. (Id.)
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`Shortly after the parties’ meet and confer, Ms. Scott contacted Ms. Sperry
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`and inquired whether Sto would be entitled to a thirty-day period to serve its
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`responses and specific objections to the revised interrogatories. (Sperry Dec. ¶ 7.)
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`As Fed. R. Civ. P. 33(b)(2) and 37 C.F.R. 2.120(a)(3) provide thirty days to
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`respond to interrogatories, Ms. Sperry responded affirmatively. (Id.) Ms. Scott
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`advised that she would convey Sto’s position to Mr. Quinn. (Id.)
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`Sto did not receive any further calls or substantive communications after this
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`discussion. (Id.) The following day, Friday, March 25, 2016, at 5:25 p.m., Plaintiff
`
`served its Motion to Compel. (Id. at ¶ 8.) Counsel for Sto was surprised by
`
`Plaintiff’s conduct, given her belief that the parties had resolved the dispute during
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`the meet and confer. (Id. at ¶ 8.) The only subsequent substantive communication
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`that followed the meet and confer was Ms. Scott’s call to Ms. Sperry confirming
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`the date that Sto’s responses to the revised interrogatories would be due. (Id. at ¶
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`7.) At no time during this subsequent call did Plaintiff indicate that it considered
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`the matter unresolved. (Id.) Accordingly, Sto can only assume that Plaintiff
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`17
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`

`
`proceeded with the Motion to Compel because it was displeased with the fact that
`
`Sto would have thirty days to respond to Plaintiff’s revised set of interrogatories.3
`
`Sto respectfully submits that the foregoing demonstrates that Plaintiff’s
`
`efforts to resolve the dispute before seeking judicial intervention were not in good
`
`faith, and do not comport with the spirit of the good faith requirement as set forth
`
`in 37 C.F.R. 2.120(e). Plaintiff’s 37 C.F.R. 2.120(e) statement omits a summary of
`
`the telephone conference between the parties, as encouraged by the Board. As
`
`shown in this response brief and in the Declaration of Marcy Sperry, the parties
`
`appeared to have resolved the dispute.
`
`The last communication between the parties consisted of a telephone call in
`
`which Sto confirmed that it intended to provide responses and objections to
`
`Plaintiff’s amended interrogatories within thirty days of March 24, 2016, as
`
`authorized by the Federal Rules of Civil Procedure. (Sperry Dec. ¶ 7.) Plaintiff did
`
`not express any concern regarding Sto’s position during this call. (Id.) However,
`
`the following day Plaintiff served its Motion to Compel.
`
`If Plaintiff had any concern regarding the date by which Sto’s responses to
`
`Plaintiff’s revised interrogatories would be due, Plaintiff should have expressed
`
`this to Sto before to serving the Motion to Compel. As such, Plaintiff’s contention
`
`
`3 Sto notes that Plaintiff’s chosen means of resolving this interrogatory dispute, namely, filing the instant Motion to
`Compel, will actually delay Sto’s responses to interrogatories more so than if Plaintiff had simply allowed Sto thirty
`days to respond to Plaintiff’s revised interrogatories, as Sto is entitled to under the Federal Rules of Civil Procedure
`and the Trademark Rules. Accordingly, Sto is quite puzzled by Plaintiff’s odd conduct.
`
`
`
`18
`
`

`
`that it complied with the Board’s good faith requirement is disingenuous. Plaintiff
`
`has not truly made a good faith effort to come to a resolution prior to turning to the
`
`Board. Plaintiff’s conduct, both in its repeated delays with regard to settlement and
`
`in its handling of the instant discovery dispute, demonstrate a clear indifference to
`
`expediently and efficiently resolving this proceeding, this discovery dispute in
`
`particular, and a general disinterest in cooperating with Sto.
`
`CONCLUSION
`
`In view of the foregoing, Sto respectfully requests that Plaintiff’s Motion to
`
`Compel be denied, and that Plaintiff be required to serve a revised set of
`
`interrogatories not exceeding the numerical limit.
`
`
`
`
`
`
`
`
`
`Respectfully submitted on April 8, 2016.
`
`THE SLADKUS LAW GROUP
`
`/Mark L. Seigel/
`Mark L. Seigel, Esq.
`Of Counsel
`Georgia Bar No. 651220
`mark@sladlaw.com
`Jeffrey B. Sladkus, Esq.
`Georgia Bar No. 634617
`jeff@sladlaw.com
`1827 Powers Ferry Road NE
`Bldg. 6, Ste. 200
`Atlanta, GA 30339
`404-252-0900 (phone)
`404-252-0970 (fax)
`
`Attorneys for Defendant/Counter-
`Plaintiff
`
`
`19
`
`
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`STONCOR GROUP, INC.,
`
`Plaintiff,
`
`v.
`
`STO AG,
`
`Defendant.
`
`
`
`
`
`Cancellation No. 92057944
`
`Registration No. 3509296
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing STO AG’S
`RESPONSE TO STONCOR’S MOTION TO COMPEL STO AG TO RESPOND
`WITHOUT
`OBJECTION
`TO
`STONCOR’S
`
`OF
`
`FIRST
`
`SET
`
`INTERROGATORIES has been served on opposing counsel by email as agreed to
`
`by the parties on April 8, 2016 to:
`
`
`
`
`
`
`
`
`
`Charles N. Quinn
`CQuinn@foxrothschild.com
`
`
`
`
`
`/Jeffrey B. Sladkus/
`Jeffrey B. Sladkus
`
`
`
`Attorney for Defendant/Counter-
`Plaintiff
`
`20
`
`THE SLADKUS LAW GROUP
`1827 Powers Ferry Rd.
`Building 6, Suite 200
`Atlanta, GA 30339
`Phone: (404) 252-0900
`Facsimile: (404) 252-0970
`jeff@sladlaw.com
`
`
`
`
`
`

`
`Exhibit A
`|5<hibit A
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`STONCOR GROUP, INC.,
`
`Plaintiff,
`
`vs.
`
`STO AG,
`
`Defendant.
`
`
`
`
`
`
`
`
`
`Cancellation No. 92057944
`
`Registration No. 3509296
`
`
`
`DECLARATION OF JEFFREY B. SLADKUS
`
`
`
`The undersigned acknowledges the warning that willful false statements and
`
`the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §
`
`1001 et seq., and that such willful false statements may jeopardize the validity of the
`
`application or any registration resulting therefrom.
`
`
`
`The undersigned Declarant declares that, to the best of his/her knowledge:
`
`1. My name is Jeffrey B. Sladkus and I am managing partner of The
`
`Sladkus Law Group, having my principal place of business at 1827 Powers Ferry
`
`Rd., Building 6, Suite 200, Atlanta, Georgia 30339. I am a member in good standing
`
`of the State Bar of Georgia, and am the attorney of record for the Defendant in the
`
`above-referenced matter.
`
`

`
`2.
`
`3.
`
`I am over 18 years of age.
`
`This Declaration is based upon my actual knowledge of the statements
`
`made herein.
`
`4.
`
`The Sladkus Law Group represents Defendant Sto A.G. (“Sto”) in this
`
`proceeding. In January 2014, I attended the parties’ discovery conference in this
`
`proceeding. At the conference, attorney of record for Plaintiff, Charles Quinn
`
`proposed entering into coexistence and settlement agreement. I conferred with my
`
`client and advised Mr. Quinn that Sto agreed to consider Plaintiff’s proposal. Mr.
`
`Quinn agreed to provide a draft settlement agreement for my client’s consideration.
`
`After not receiving a proposed agreement weeks later, my associate, Victoria Rooks,
`
`and I sent a number of follow up emails to Mr. Quinn requesting a status update. Mr.
`
`Quinn responded that due to a patent litigation matter pending against Plaintiff and
`
`a new general counsel, he required additional time to provide a draft agreement.
`
`Thereafter, we sent several emails requesting an update as to the status. Mr. Quinn
`
`responded that Plaintiff was still tied up with the patent litigation matter. See Exhibit
`
`“A,” March 10, 2014 – April 23, 2014 email communications between Rooks,
`
`Sladkus, Quinn, and Williams.
`
`5. Months later, I had not yet received a draft settlement agreement from
`
`Plaintiff. Therefore, on June 3, 2014, I sent Mr. Quinn Sto’s proposed settlement
`
`terms. Mr. Quinn responded that he believed the proposed terms to be reasonable
`
`

`
`and he advised that he would convey the terms to Plaintiff in the next few days. See
`
`Exhibit “B,” June 3, 2014 and June 5, 2014 email communications between Sladkus
`
`and Quinn.
`
`6. Ms. Rooks and I sent a number of follow-up emails to Quinn between
`
`June 18, 2

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