Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA689646
`ESTTA Tracking number:
`08/14/2015
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92060308
`Defendant
`Corcamore, LLC
`CHARLES L THOMASON
`55 W 12TH AVE
`COLUMBUS, OH 43210
`UNITED STATES
`thomason@spatlaw.com
`Motion to Strike
`Charles L. Thomason
`thomason@spatlaw.com
`/Charles L. Thomason/
`08/14/2015
`Sprout_Corc_Mo_Germaness_08_14_2015.pdf(71170 bytes )
`08132015094939-0001.pdf(1157528 bytes )
`ND_Il_CivilityStds.pdf(38602 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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`Cancellation No: 92 060308
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`Registration No. 3708453
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`SFM, LLC,
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`Petitioner,
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`v.
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`Corcamore, LLC
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`Respondent-Registrant.
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`MOTION OF RESPONDENT-REGISTRANT
`TO ENFORCE RULE 2.127(d) ORDER.
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`Respondent Corcamore LLC moves to strike those parts of the petitioner’s opposition
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`filed 3 August 2015, which are “note germane to the motion[s]” before the Board, pursuant
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`Trademark Rule 2.127(d). The portions that deserve to be stricken are highlighted on the exhibit
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`to this motion.
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`Respondent-Registrant filed a germane motion that challenged the baselessness of an
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`allegation essential to standing, whether petitioner has any “reasonable basis in fact” to have
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`pleaded there are vending machines `owned or operated’ by Respondent-Registrant.1 For the
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`petitioner’s theory: that its brick & mortar grocery store beneath Sprout’s Farmers Market
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`signage, might be confused with a vending machine (albeit nonexistent) branded Sprout
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`allegedly owned or operated by Respondent-Registrant - then the germane question asks about
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`any “reasonable basis in fact” for petitioner to plausibly plead that such machines exist. If not
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`(and such machines do not exist), then the petitioner SFM, LLC lacks the “commercial interest”
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`that is fundamental to standing.2 On that basis, Respondent-Registrant’s motion was germane.
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`For standing, the petitioner must plead and prove “something more …than a subjective belief”
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`and the belief it pleads “must have a `reasonable basis in fact.’” Ritchie v. Simpson, 50 U.S.P.Q.2d 1023,
`1027 (Fed. Cir. 1999)(cit. om.). 
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`Cunningham v. Laser Golf Corp., 55 U.S.P.Q.2d 1842, 1844 (Fed. Cir. 2000). 
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`1 
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`What is not germane, or relevant, or appropriate is much of petitioner SFM’s opposition
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`brief filed 3 August. The opposition by petitioner goes way away from germane - griping and
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`kvetching about settlement, and indicating how SFM hopes to settle for nothing more than the
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`cost of its lawyers. Those parts of the petitioner’s opposition, dealing with private settlement
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`negotiations, are irrelevant and not germane to standing, or to the motion, or to whether an
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`allegation essential to SFM’s standing has any basis in fact.
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`For that reason, the excerpts indicated in the attached exhibit should be stricken pursuant
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`to Trademark Rule 2.127(d) and to the final paragraph of the suspension Order here.
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`Additionally, the lawyer signing petitioner SFM’s opposition is subject to the “civility”
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`standards of the U.S. District Court for the Northern District of Illinois, which instruct about the
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`inappropriateness of unilaterally disclosing compromise proposals made in private negotiations.
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`In pertinent part, these standards of the federal court require “good faith” by counsel in regard to
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`“agreements implied by the circumstances” such as the confidentiality of settlement talks, for
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`example these two standards:
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`Lawyers' Duties to Other Counsel
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`6. We will adhere to all express promises and to agreements with other counsel,
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`whether oral or in writing, and will adhere in good faith to all agreements implied
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`by the circumstances or local customs.
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`30. Unless specifically permitted or invited by the court, we will not send copies
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`of correspondence between counsel to the court.
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`Those standards, and the poor choice by counsel to file in the public record, here,
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`correspondence between counsel that communicated in confidence a proposal for settlement of
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`this matter, should provide an additional reason to strike the non-germane parts from the record.
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`2 
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`Attached hereto are two exhibits. Exhibit A indicates the portions of the brief that are not
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`germane and should be stricken, and the request extends to the exhibit referred to in the non-
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`germane portions. Exhibit B hereto are the civility standards referred to above.
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`Based on the foregoing, it is requested that the motion be granted, that the suspension
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`order disallowing non-germane filings be enforced, and the indicated portions of the brief of
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`petitioner SFM be stricken from the record.
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`3 
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`/Charles L. Thomason
`CHARLES L. THOMASON, ESQ.
`55 W. 12th Avenue
`Columbus, OH 43210
`502-349-7227
`Attorney for Corcamore LLC
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`DATE: 14 AUG 2015
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`CERTIFICATE OF SERVICE
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`I certify that on August 14, 2015 that the foregoing motion was electronically filed, and a
`complete copy was deposited with the U.S. Mail, addressed to petitioner’s counsel of record at:
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`4 
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`Nicole M. Murray, Esq.
`Quarles & Brady
`300 N. LaSalle St., Suite 4000
`Chicago, IL 60654
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`BY: /Charles L. Thomason
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Registration No. 3,708,053; Mark: SPROUT;
`Date of Registration: November 10, 2009
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`SFM, LLC
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`Petitioner,
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`v.
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`Cancellation No: 92060308
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`CORCAMORE, LLC.
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`Respondent.
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`SFM’S RESPONSE TO CORCAMORE’S RULE 11 MOTION
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`INTRODUCTION
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` }And its Rule 11 motion violates Rule 11 itself. SFM’s filings
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`and pleadings in this matter are in compliance with the Board’s procedure and the Federal Rules.
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`Corcamore’s request for sanctions should be denied for three reasons: 1) Corcamore failed to
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`observe the appropriate procedures of Fed. R. Civ. P. 1 1(c) prior to filing its motion; 2) SFM has
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`met the requirements of Fed. R. Civ. P. 8 and 11 in each its filings in this proceeding; and 3)
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`Corcarnore’s motion is premature and frivolous.
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` s Rule 11 motion isjust the latestexample ofopposing] c
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`.‘,.
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`ARGUMENT
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`I.
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`Corcamore’s Rule 11 motion should be denied because it did not follow the
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`appropriate procedure under Fed. R. Civ. P. 11.
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`Corcamore did not follow the safe harbor requirement under Rule 1 l. SFM only learned
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`that Corcamore had filed its motion for sanctions during a routine check of the case docket for
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`this proceeding. While Corcamore had threatened to make such a motion via email, SFM did not
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`receive a copy of the motion prior to its filing, only a Conclusory assertion in an e—mail that one
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`of its allegations was in violation of Rule 11. See E—rnai1 chain between Mr. Thomason and Mr.
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`Stahl/Ms. Murray, at pages 5-6, attached as Exhibit A.
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`It was therefore immediately clear that
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`Corcarnore did not comply with Rule ll’s requirement that the brief be served on SFM prior to
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`filing. Counsel for SFM promptly contacted Corcamore’s counsel to inform him of his mistake.
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`Instead of withdrawing his motion, Corcamore’s counsel filed an additional paper asking the
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`Board’s assistance with complying with Rule 1 I by deferring consideration of the motion for 21
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`days. Notably, CorCarnore’s Counsel cited no precedent that his proposed deferment was
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`procedurally proper.
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`Fed. R. Civ. P. 1 l(c) “provides specific instructions in how to initiate a motion under this
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`rule, and requires service of a proposed motion upon the party against whom the misconduct is
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`alleged 21 days before the motion is filed.” See Baron Philippe de Rothschild SA. v. Stfvi-rite
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`Optical Mfg. Co., 55 U.S.P.Q.2d 1848, 1848 n. 2 (T.T.A.B. 2000). Specifically, the rule
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`requires:
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`A motion for sanctions must be made separately from any other
`motion and must describe the specific conduct
`that allegedly
`violates Rule l1(b). The motion must be served under Rule 5, but
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`Another case relied on by Corcamore, Phonometrics, Inc. 12. Economy Inns ofAmerica, is
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`also inapposite. 349 F.3d 1356, 68 U.S.P.Q.2d 1906 (Fed. Cir. 2003). In Pnonometrics, another
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`patent infringement case, the sanctioned party continued making arguments that had been
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`adjudged improper in a parallel proceeding. Id. at 1360-61. Here, the Board has not adjudged
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`SFM’s pleadings to be improper.
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`In a third case relied on by Corcamore, The Clorox Co. v. Chemical Bank, no party was
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`even sanctioned, but the Board cautioned the party against making “blatantly false” claims. 40
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`U.S.P.Q.2d 1098, 11. 9 (T.T.A.B. 1996). Here, SFM’s conduct is entirely proper. It has proffered
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`good faith allegations based on Corcarnore’s trademark registration and publicly available
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`website. It is only Corcamore’s dilatory tactics which has prevented SFM from commencing
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`discovery and proceeding with the cancellation.
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`Corcamore’s reliance on Carrtni, Inc. v. Carla Carini S.R.L. is interesting. 57
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`U.S.P.Q.2d 1067 (T.T.A.B. 2000). ' In Carrini, the Board mentioned that it may “impose
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`sanctions for, among other things, filings that presented to the Board for any improper purpose,
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`such as to harass or to cause unnecessary delay or needless increase in the cost of litigation.” Id.
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`at 1071; citing Fed. R. Civ. P. 11. In that case, due to the parties’ overly voluminous briefing,
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`the Board warned the parties against filing papers “for any improper purpose in violation of Fed.
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`R. Civ. P. 11.” Id. at 1072. To prevent this harassment—by—briefing, the Board ordered that the
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`offending party only be allowed to file a paper in the proceeding after getting consent from the
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`Board. Id. This behavior is more akin to Corcamore’s conduct than SFM’s.
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`’n its motion, Corcamore asserts that
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`certain of SFM’s allegations “lack evidentiary support.” Dkt. 20 at 2. '
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`,....‘..-——.__..
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`ow, and as noted above, Corcamore complains that SFM’s statements lack
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`evidentiary support.
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`'
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`.suppoI;tj.ng.its goM;fafih&a i-f.m11~st»fi3I&fi§i§-i&fli3E:fl§*EGii$y(6Dni§11IG§£!”and
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`_a. .c£I‘nn1ence.. .Og$.__,d;i;sc‘@;t;r;g,fi..u1€flfirwa.y-, Corcamore will-zbe entitled: to seek"
`2
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`fa.-§;},;3§l,}aas,i.s..£o;.SFM"rs assertiens-in its»discoverywetifuests.
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`,;
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`10
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`

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`STANDARDS FOR PROFESSIONAL CONDUCT
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`WITHIN THE SEVENTH FEDERAL JUDICIAL CIRCUIT
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`LAWYERS’ DUTIES TO OTHER COUNSEL
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`We will practice our profession with a continuing awareness that our role is to
`1.
`advance the legitimate interests of our clients. In our dealings with others we will not reflect the
`ill feelings of our clients. We will treat all other counsel, parties, and witnesses in a civil and
`courteous manner, not only in court, but also in all other written and oral communications.
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`We will not, even when called upon by a client to do so, abuse or indulge in
`2.
`offensive conduct directed to other counsel, parties, or witnesses. We will abstain from
`disparaging personal remarks or acrimony toward other counsel, parties, or witnesses. We will
`treat adverse witnesses and parties with fair consideration.
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`We will not encourage or knowingly authorize any person under our control to
`3.
`engage in conduct that would be improper if we were to engage in such conduct.
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`We will not, absent good cause, attribute bad motives or improper conduct to
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`other counsel or bring the profession into disrepute by unfounded accusations of impropriety.
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`We will not seek court sanctions without first conducting a reasonable
`5.
`investigation and unless fully justified by the circumstances and necessary to protect our client's
`lawful interests.
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`We will adhere to all express promises and to agreements with other counsel,
`6.
`whether oral or in writing, and will adhere in good faith to all agreements implied by the
`circumstances or local customs.
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`When we reach an oral understanding on a proposed agreement or a stipulation
`7.
`and decide to commit it to writing, the drafter will endeavor in good faith to state the oral
`understanding accurately and completely. The drafter will provide the opportunity for review of
`the writing to other counsel. As drafts are exchanged between or among counsel, changes from
`prior drafts will be identified in the draft or otherwise explicitly brought to the attention of other
`counsel. We will not include in a draft matters to which there has been no agreement without
`explicitly advising other counsel in writing of the addition.
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`We will endeavor to confer early with other counsel to assess settlement
`8.
`possibilities. We will not falsely hold out the possibility of settlement as a means to adjourn
`discovery or to delay trial.
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`In civil actions, we will stipulate to relevant matters if they are undisputed and if
`9.
`no good faith advocacy basis exists for not stipulating.
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`10. We will not use any form of discovery or discovery scheduling as a means of
`harassment.
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`11. We will make good faith efforts to resolve by agreement our objections to matters
`contained in pleadings and discovery requests and objections.
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`12. We will not time the filing or service of motions or pleadings in any way that
`unfairly limits another party's opportunity to respond.
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`13. We will not request an extension of time solely for the purpose of unjustified
`delay or to obtain a tactical advantage.
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`14. We will consult other counsel regarding scheduling matters in a good faith effort
`to avoid scheduling conflicts.
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`15. We will endeavor to accommodate previously scheduled dates for hearings,
`depositions, meetings, conferences, vacations, seminars, or other functions that produce good
`faith calendar conflicts on the part of other counsel. If we have been given an accommodation
`because of a calendar conflict, we will notify those who have accommodated us as soon as the
`conflict has been removed.
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`16. We will notify other counsel and, if appropriate, the court or other persons, at the
`earliest possible time when hearings, depositions, meetings, or conferences are to be canceled or
`postponed. Early notice avoids unnecessary travel and expense of counsel and may enable the
`court to use the previously reserved time for other matters.
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`17. We will agree to reasonable requests for extensions of time and for waiver of
`procedural formalities, provided our clients' legitimate rights will not be materially or adversely
`affected.
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`18. We will not cause any default or dismissal to be entered without first notifying
`opposing counsel, when we know his or her identity.
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`19. We will take depositions only when actually needed to ascertain facts or
`information or to perpetuate testimony. We will not take depositions for the purposes of
`harassment or to increase litigation expenses.
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`20. We will not engage in any conduct during a deposition that would not be
`appropriate in the presence of a judge.
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`21. We will not obstruct questioning during a deposition or object to deposition
`questions unless necessary under the applicable rules to preserve an objection or privilege for
`resolution by the court.
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`During depositions we will ask only those questions we reasonably believe are
`22.
`necessary for the prosecution or defense of an action.
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`23. We will carefully craft document production requests so they are limited to those
`documents we reasonably believe are necessary for the prosecution or defense of an action. We
`will not design production requests to place an undue burden or expense on a party.
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`24. We will respond to document requests reasonably and not strain to interpret the
`request in an artificially restrictive manner to avoid disclosure of relevant and non-privileged
`documents. We will not produce documents in a manner designed to hide or obscure the
`existence of particular documents.
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`25. We will carefully craft interrogatories so they are limited to those matters we
`reasonably believe are necessary for the prosecution or defense of an action, and we will not
`design them to place an expense or undue burden or expense on a party.
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`26. We will respond to interrogatories reasonably and will not strain to interpret them
`in an artificially restrictive manner to avoid disclosure of relevant and non-privileged
`information.
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`27. We will base our discovery objections on a good faith belief in their merit and
`will not object solely for the purpose of withholding or delaying the disclosure of relevant
`information.
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`28. When a draft order is to be prepared by counsel to reflect a court ruling, we will
`draft an order that accurately and completely reflects the court's ruling. We will
`promptly prepare and submit a proposed order to other counsel and attempt to reconcile any
`differences before the draft order is presented to the court.
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`29. We will not ascribe a position to another counsel that counsel has not taken or
`otherwise seek to create an unjustified inference based on counsel's statements or conduct.
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`Unless specifically permitted or invited by the court, we will not send copies of
`30.
`correspondence between counsel to the court.