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`WINTER
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
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`Mailed: October 24, 2016
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`Cancellation No. 92060593
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`Nervana, LLC
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`v.
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`Tushar Madhu Goradia
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`BY THE TRADEMARK TRIAL AND APPEAL BOARD:
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`This case now comes up for consideration of Petitioner’s motion (filed February 2,
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`2016) for discovery sanctions and Respondent’s cross-motion (filed February 8, 2016)
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`to modify the parties’ standard protective agreement; Petitioner’s motion (filed
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`February 16, 2016) to strike Respondent’s affirmative defenses; Petitioner’s motion
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`(filed March 4, 2016) for summary judgment; Respondent’s motion (filed March 18,
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`2016) to strike; Respondent’s motion (filed May 26, 2016) to withdraw deemed
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`admissions; and Respondent’s motion (filed May 30, 2016) for discovery under Rule
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`56(d).1
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`Motion for Sanctions and Cross-Motion for Protective Order
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` By way of background, on January 1, 2016, the Board issued an order compelling
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`Respondent to respond without objection to certain interrogatories and requests for
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`1 Respondent’s motion to suspend (filed March 22, 2016) was addressed in the Board’s order
`mailed on May 17, 2016 (43 TTABVUE).
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`
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`

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`Cancellation No. 92060593
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`production of documents propounded by Petitioner. In particular, the Board overruled
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`Respondent’s objection that certain documents are confidential, stating that the
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`Board’s standard protective order for the protection of confidential information is
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`automatically in effect for this proceeding and, therefore, Respondent must (i) serve
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`sufficient responsive materials on Petitioner and (ii) provide a privilege log for any
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`information and materials being withheld on the basis of privilege (25 TTABVUE 12,
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`14).
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` Pursuant to Trademark Rule 2.120(g)(1), Petitioner requests that the Board issue
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`a sanction against Respondent for failing to serve responsive documents to requests
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`for production of document nos. 6, 8, 14, and 23,2 which are being withheld by
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`Respondent on the basis that the documents are “commercially sensitive.”
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`Specifically, Petitioner requests the sanction of prohibiting Respondent from relying
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`on said documents in this matter or an order requiring Petitioner to produce the
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`responsive documents, as well as the previously ordered privilege log.
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`2 The four requests for production at issue are as follows:
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`6. All documents concerning the use of Defendant’s Mark by you, Goradia Medical
`Corporation, 4003 LLC or by any third party.
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`8. All documents concerning your plans or preparation to distribute or sell products or
`offer services under Defendant’s Mark.
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`14. All marketing plans, forecasts, projections, and documents concerning your marketing
`and sales plans for products and/or services sold, to be sold, advertised, or to be
`advertised, bearing Defendant’s Mark.
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`23. All documents concerning the dollar volume of sales of any product and/or services
`associated with Defendant’s Mark by you or any third party or licensee authorized to use
`Defendant’s Mark.
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`2
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`

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`Cancellation No. 92060593
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`
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`In response, Respondent requests that the Board modify the parties’ protective
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`order so that Petitioner, including Gregory Maybeck of Maybeck & Hoffman PA
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`(Petitioner’s counsel), a co-founder of Petitioner, is excluded from receiving
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`Respondent’s assertedly commercially sensitive
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`information. In particular,
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`Respondent wants the Board to modify the parties’ protective agreement in the
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`manner in which Respondent proposed to Petitioner (see 28 TTABVUE 41).
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`Specifically, Respondent (i) seeks modification of the protective order to ensure that
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`outside counsel, as well as in-house counsel, do not have access to “trade
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`secret/commercially sensitive” information, (ii) seeks to modify the definition of
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`“attorneys for parties” to exclude in-house counsel, and (iii) wants to delete the
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`statement that “Parties and their attorneys shall have access to information
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`designated as confidential or highly confidential, subject to any agreed exceptions”
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`(28 TTABVUE 39). As grounds therefor, Respondent asserts that Mr. Mayback is a
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`co-founder of Petitioner (29 TTABVUE 15-16); that Mr. Mayback is one of the
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`inventors on Petitioner’s patent application (29 TTABVUE 23) and on two of
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`Petitioner’s provisional patent applications (29 TTABVUE 23; 30 TTABVUE 3); that
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`Mr. Mayback is identified as having the power of attorney for two provisional patent
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`applications of Petitioner’s founders (31 TTABVUE 3, 4); the Mr. Mayback is also a
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`trademark attorney (29 TTABVUE 3); and that the office of Petitioner’s counsel,
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`“Mayback & Hoffman, P.A.,” has been advertised as the place of contact for Petitioner
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`(see 31 TTABVUE 71, 74). Respondent also contends, inter alia, that it was bad faith
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`for Petitioner to not identify Mr. Maybeck’s role with Petitioner in its initial
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`3
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`Cancellation No. 92060593
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`disclosures, and points out that Mr. Maybeck’s email address was not removed from
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`Petitioner’s email address until January 28, 2016 (27 TTABVUE 1). Respondent also
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`argues that it has produced all available “necessary” documents except its
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`commercially sensitive documents, which are not needed insofar as the documents
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`that have been produced show that Respondent used the mark NERVANA during all
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`the relevant times.
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`
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`In reply, Petitioner contends that Respondent’s arguments are an attempt to
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`deflect from its failure to respond to the Board’s compel order. Petitioner also
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`emphasizes that Mr. Mayback is not involved with this matter, does not have access
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`to emails addressed to “trademarks@mayback.com,” and that the only persons that
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`receive such emails are Catherine Hoffman and Julie Dahlgard (Petitioner’s counsel)
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`and Julie D’Abruzzo (Ms. Hoffman’s assistant).
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`• Decision
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`A. Petitioner’s Motion for Sanctions
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` As regards Petitioner’s motion for sanctions, said motion is essentially a motion
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`in limine requesting that the Board preclude Respondent from presenting certain
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`evidence on summary judgment or at trial. It is not the Board’s practice to
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`prospectively exclude any evidence which might be presented by a party at trial (or,
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`presumably, in connection with a summary judgment motion or response), to the
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`extent that such evidence is inconsistent with the non-movant’s discovery responses,
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`or consists of material that said party refused to provide during discovery due to
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`relevancy or other objections, or consists of material that said party failed to produce
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`4
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`Cancellation No. 92060593
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`in discovery on the ground that it was non-existent or unavailable. Greenhouse
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`Systems Inc. v. Carson, 37 USPQ2d 1748, 1750 (TTAB 1995).3 In view of the foregoing,
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`Petitioner’s motion to prospectively exclude evidence for failing to produce documents
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`responsive to request numbers 6, 8, 14, and 23 is denied as premature.
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` Nonetheless, the failure of Respondent, who is represented by counsel, to respond
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`to Petitioner’s discovery and to the Board’s order requiring Respondent’s responses
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`thereto is wholly unacceptable. Therefore, another sanction for Respondent’s failure
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`to obey the Board’s order is appropriate. When a party fails to comply with an order
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`of the Board relating to discovery, including an order compelling discovery, the Board
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`may order appropriate sanctions as defined in Trademark Rule 2.120(g)(1) and Fed.
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`R. Civ. P. 37(b)(2), including entry of judgment against the disobedient party. See,
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`e.g., MHW Ltd. v. Simex, Aussenhandelsgesellschaft Savelsberg KG, 59 USPQ2d 1477
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`(TTAB 2000); Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Mfg. Co., 55
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`USPQ2d 1848 (TTAB 2000); Unicut Corp. v. Unicut, Inc., 222 USPQ 341 (TTAB
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`1984); Caterpillar Tractor Co. v. Catfish Anglers Together, Inc., 194 USPQ 99 (TTAB
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`1976); and TBMP § 527.01 (2016). Sanctions may also include striking all or part of
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`the pleadings of the disobedient party; refusing to allow the disobedient party to
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`support or oppose designated claims or defenses; or prohibiting the disobedient party
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`from introducing designated matters in evidence. Further, while it is true that the
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`3 The better practice is to file a motion to strike or otherwise object to such evidence after it
`is introduced, identifying the specific evidence objected to and the asserted basis for exclusion
`thereof. If the objection is one that cannot be cured promptly, the adverse party may wait
`and raise the objection in or with its main brief on the case. TBMP § 527.01(f) (2016).
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`5
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`Cancellation No. 92060593
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`law favors judgments on the merits wherever possible, it is also true that the Patent
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`and Trademark Office is justified in enforcing its procedural deadlines. Hewlett-
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`Packard v. Olympus, 18 USPQ2d 1710 (Fed. Cir. 1991). Accordingly, the following
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`sanction is hereby ORDERED:
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`For any responsive documents required to be produced by this order (see below)
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`or for any responsive documents already produced, the Board deems
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`Respondent to have stipulated to the authenticity of the documents, as well as
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`agreeing to introduction of the documents by Petitioner at trial by notice of
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`reliance alone, should Petitioner decide that introduction of the documents at
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`trial would be relevant and probative.
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`Respondent is again ORDERED to produce a privilege log for all materials withheld
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`due to privilege. The relevant privilege, and the type and date of the document must
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`be identified in the log. See Fed. R. Civ. P. 26(b)(5). Additionally, Respondent is
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`ORDERED to serve on Petitioner’s attorney, Catherine Hoffman, within FIFTEEN
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`(15) DAYS of the mailing date of this order, its complete responses to Petitioner’s
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`requests for production nos. 6, 8, and 234 in accordance with the Board’s standard
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`protective order, as modified by the order discussed below.
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`4 Request for production no. 14 is not included because Respondent has stated that no
`documents exist which are responsive to that request (see 20 TTABVUE 73).
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`6
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`Cancellation No. 92060593
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`B. Respondent’s Motion to Modify Board’s Standard Protective Order5
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` Respondent’s cross-motion to modify the Board’s standard protective order is
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`essentially a motion for a protective order. See Georgia Pacific Corp. v. Solo Cup Co.,
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`80 USPQ2d 1950, 1952 (TTAB 2006).6 Under Fed. R. Civ. P. 26(c)(1)(G), applicable to
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`this proceeding under Trademark Rule 2.116(a), the Board is authorized to protect
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`parties from undue burden in discovery by ordering “that a trade secret or other
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`confidential research, development, or commercial information … be revealed only in
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`a specified way.” Similarly, Trademark Rule 2.120(f) provides that “[u]pon motion by
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`a party … from whom discovery is sought, and for good cause, the Trademark Trial
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`and Appeal Board may make any order which justice requires to protect a party from
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`… undue burden …, including one or more of the types of orders provided by clauses
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`(1) through (8), inclusive, of Rule 26(c) of the Federal Rules of Civil Procedure.”7 The
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`most common kind of order allowing discovery on conditions is an order limiting the
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`persons who are to have access to the disclosed information. See 8A Wright, Miller, et
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`al., Fed. Prac. & Proc. Civ.3d § 2043 (2016 update). The party seeking a protective
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`5 The parties are reminded that the Board’s standard protective agreement was modified
`effective June 24, 2016. Notably, the designation “highly confidential” has been deleted from
`the agreement.
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` 6
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` Normally, a motion for a protective order ordinarily should be filed in a Board proceeding
`only in response to a motion to compel where, for example, matter sought to be discovered
`assertedly constitutes trade secret or confidential information. See Johnston Pump/General
`Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1674-77 (TTAB 1988); TBMP
`§ 526. However, the Board notes that Respondent did not learn of Mr. Maybeck’s relationship
`with Petitioner until January 23, 2016 (after the Board issued its order compelling
`production). Further, Petitioner did not object to the timeliness of Respondent’s motion. In
`view thereof, the Board shall consider the cross-motion.
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` 7
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` Pursuant to the 2007 amendment to the Federal Rules of Civil Procedure, Rule 26(c) has
`been renumbered such that Rules 26(c)(1)-(8) are now Rules 26(c)(1)(A)-(G).
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`7
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`

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`Cancellation No. 92060593
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`order has the burden to show good cause for it. In re Deutsche Bank Trust Co.
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`Americas, 605 F.3d 1373, 1378 (Fed. Cir. 2010). To establish good cause, that party
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`must submit “a particular and specific demonstration of fact, as distinguished from
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`stereotyped and conclusory statements.” Layne Christensen Co. v. Purolite Co., 271
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`F.R.D. 240, 244 (D. Kan. 2010). See also FMR Corp. v. Alliant Partners, 51 USPQ2d
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`1759, 1761 (TTAB 1999).
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`As an initial matter, to obtain such a protective order, the motion must include a
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`certification that the movant has in good faith conferred or attempted to confer with
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`other affected parties in an effort to resolve the dispute without court action. Fed. R.
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`Civ. P. 26(c)(1)(G); Trademark Rule 2.120(f). Further, “a party seeking that its
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`information only be revealed in a certain way, such as limiting who can view or access
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`the materials, under [Fed. R. Civ. P. 26(c)(1)(G)] must first establish that the
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`information sought is a trade secret or other confidential research, development, or
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`commercial information.”8 Layne Christensen, 271 F.R.D. at 248. It must also “show
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`that the disclosure of this information might be harmful, such as showing the
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`competitive harm that would befall it by virtue of the disclosure of the trade secrets
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`or other highly-confidential proprietary information.” Id. at 249. See also Deford v.
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`8 Factors to consider from the Restatement (First) of Torts, § 757, Comment b, for
`determining whether information constitutes a trade secret or other confidential information
`under Fed. R. Civ. P. 26(c) are:
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`(1) The extent to which the information is known outside his business; (2) The extent to
`which it is known by employees and others involved in his business; (3) The extent of
`measures taken by him to guard the secrecy of the information; (4) The value of the
`information, to him or his competitors; (5) The amount of effort or money expended by
`him in developing the information; (6) The ease or difficulty with which the information
`could be properly acquired or duplicated by others.
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`8
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`Cancellation No. 92060593
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`Schmid Prods. Co., 120 F.R.D. 648, 653 (D. Md. 1987) (requiring party requesting a
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`protective order to provide “specific demonstrations of fact, supported where possible
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`by affidavits and concrete examples, rather than broad, conclusory allegations of
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`potential harm”; business will have to show disclosure would cause harm to
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`competitive and financial position). Such a showing of harm to a party’s business
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`requires support, where possible, by affidavits or declarations and concrete, specific
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`examples. Id. See also Apple, Inc. v. Samsung Electronics Co., 727 F.3d 1214, 107
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`USPQ2d 2048, 2057, 2058 (Fed. Cir. 2013) (finding district court erred in denying
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`motion to seal portions of documents that contained product-specific financial
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`information, including costs, sales, profits and profit margins, and market research,
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`where the parties established that disclosure would cause competitive harm).
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`Our primary reviewing court, the United States Court of Appeals for the Federal
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`Circuit, explained in United States Steel Corp. v. United States, that competitive
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`harm may result when the person accessing the proprietary information is involved
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`in competitive decision-making. See U.S. Steel Corp. v. United States, 730 F.2d 1465,
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`1468 (Fed. Cir. 1984) (stating that, in a case in which in-house counsel were involved
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`in competitive decision-making, the court may need to deny them access to
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`proprietary information, depending on the circumstances); accord In re Deutsche
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`Bank Trust Co. Americas, 605 F.3d 1373, 1377–78 (Fed. Cir. 2010) (extending to
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`patent attorneys). The Federal Circuit has defined “competitive decisionmaking” as
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`“advice and participation in any or all of [a business’s] decisions (pricing, product
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`design, etc.) made in light of similar or corresponding information about a
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`9
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`Cancellation No. 92060593
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`competitor.” U.S. Steel, 730 F.2d at 1468 n.3; accord Deutsche Bank, 605 F.3d at 1378.
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`However, whether an unacceptable opportunity for inadvertent disclosure exists
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`must be “determined by the facts on a counsel-by-counsel basis.” U.S. Steel., 730 F.2d
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`at 1468. Access must be denied or granted on the basis “of each individual counsel’s
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`actual activity and relationship with the party represented.” Id. “The sole question is
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`whether there is an unacceptable risk of or opportunity for ‘inadvertent disclosure’ of
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`confidential information.” Autotech Techs. Ltd. Psp. v. Automationdirect.com, Inc.,
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`237 F.R.D. 405, 407 (N.D.Ill. 2006) (quoting Matsushita Elec. Indus. Co., Ltd. v.
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`United States, 929 F.2d 1577, 1579 (Fed. Cir. 1991)). The Federal Circuit’s directive
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`on competitive decisionmaking requires a “comprehensive inquiry” into an attorney’s
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`relationship with a company, its officers, and its activities. Autotech Techs., 237
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`F.R.D. at 408. Notably, status as in-house counsel cannot alone create that
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`probability of serious risk to confidentiality and cannot therefore serve as the sole
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`basis for denial of access. U.S. Steel, 730 F.2d at 1469. For instance, in Matsushita,
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`the Federal Circuit held that a bar to confidential information cannot rest solely on
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`the counsel’s regular contact with corporate executives. “[T]he standard is not
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`‘regular contact’ with other corporate officials who make ‘policy,’ or even competitive
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`decisions, but ‘advice and participation’ in ‘competitive decisionmaking.’” 929 F.2d. at
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`1580. See also ActiveVideo Networks, Inc. v. Verizon Comm., Inc., 274 F.R.D. 576, 580
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`(E.D.Va. 2010)
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`(“Mere correspondence with competitive decisionmakers or
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`attendance at competitive decisionmaking meetings does not itself constitute
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`competitive decisionmaking.”). Based on the foregoing inquiry, courts have “allowed
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`10
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`

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`Cancellation No. 92060593
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`disclosure of confidential information to in-house counsel and experts upon the
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`premise that those individuals are segregated from the competitive day-to-day
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`business decisions of the company.” McAirlaids, Inc. v. Kimberly-Clark Corp., 299
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`F.R.D. 498, 500-01 (W.D.Va. 2014) (citing U.S. Steel, 730 F.2d at 1468). See, e.g., Safe
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`Flight Instrument Corp. v. Sundstrand Data Control, Inc., 682 F.Supp. 20, 22 (D. Del.
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`1988) (although plaintiff’s officer was precluded from viewing trade secret
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`information, court determined that defendant’s in-house counsel would be segregated
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`“to avoid the possibility of conscious or unconscious abuse of confidential
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`information”) (citing E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 219
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`USPQ 37, 39 (D. Del. 1982)) (internal quotations omitted).
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`Another factor in determining whether a person should be denied access to
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`information is whether the litigants are direct competitors or in different businesses,
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`or if they are not competitors, whether the parties could have another business
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`interest between them. For instance, should the parties not be competitors, certain
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`information may be accessible to the adverse party. See Northbrook Digital, LLC v.
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`Vendio Services, Inc., 625 F.Supp.2d 728, 739 (D. Minn. 2008) (where parties are
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`deemed not to be competitors, e.g., licensor of various technology (plaintiff) vs.
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`provider of internet advertising and marketing services (defendant), “there is no
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`reason to prevent the supplier from having access to the consumer’s financial or
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`customer data” for determining the settlement value of a case).9 However, not being
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`9 “In commercial cases between competitors, it makes sense to restrict each competitor’s
`direct access to the other’s customer and financial data, because one competitor could use its
`opponent’s information to compete unfairly in the marketplace.” Northbrook Digital, 625
`F.Supp.2d at 738.
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`11
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`

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`Cancellation No. 92060593
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`a direct competitor does not obviate the issue of whether in-house counsel or a
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`principal should be restricted from access to commercially sensitive technical
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`information. For instance, although the court in Northbrook Digital noted that the
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`parties were in different businesses, the court concluded that there was an area of
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`potential competition and thus prospective harm to defendant. Specifically, the court
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`reasoned that plaintiff could become a supplier to defendant of technology related to
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`the software and business methods used by defendant to facilitate online advertising
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`and marketing. Id. at 741. The court conjectured that plaintiff could prosecute a
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`patent application based on defendant’s commercially sensitive technical information
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`and thereafter preclude defendant from competing with plaintiff with defendant’s
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`own technology. In view thereof, the court granted defendant’s motion for protective
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`order to prevent plaintiff’s principal (also its owner, attorney, and prosecutor of
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`patents) from gaining access to defendant’s confidential technical information and
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`using that information for patent prosecution. Id.
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`Although Northbrook Digital involved patent infringement, its analysis
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`regarding potential for harm may be applicable to a trademark opposition or
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`cancellation proceeding. Specifically, where the parties are not direct competitors, but
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`the record shows that their interests could intersect and affect each other should
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`commercially sensitive information of one party be revealed to the other, there may
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`be support for granting a protective order.
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`Finally, even if the court is satisfied that a risk of inadvertent disclosure or
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`misuse exists, “the [court] must balance this risk against the potential harm to the
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`12
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`

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`Cancellation No. 92060593
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`opposing party from restrictions imposed upon that party’s right to have the benefit
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`of counsel of its choice.” Deutsche Bank, 605 F.3d at 1380 (cited in Blackbird Tech
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`LCC v. Service Lighting and Elec. Supplies, Inc., et al., slip. op. 2016 WL 2904592
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`(D.Del. May 18, 2016). “In balancing these conflicting interests the district court has
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`broad discretion to decide what degree of protection is required.” Id.
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` At the outset, the Board notes that the parties discussed Respondent’s concerns
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`regarding Mr. Maybeck (28 TTABVUE 5; 29 TTABVUE 5) and that Respondent sent
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`to Petitioner’s counsel a proposed, revised protective agreement for Petitioner’s
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`review (28 TTABVUE 33-42). In view thereof, the Board finds that Respondent made
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`a good faith effort to resolve its concerns with Petitioner prior to filing its cross-
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`motion.
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` With respect to whether the information sought by Petitioner is a trade secret or
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`other confidential commercial information, the Board ordered Respondent to provide
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`sufficient documents responsive to the following requests (25 TTABVUE 14):
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`6. All documents concerning the use of Defendant’s Mark by you, Goradia Medical
`Corporation, 4003 LLC or by any third party.
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`8. All documents concerning your plans or preparation to distribute or sell
`products or offer services under Defendant’s Mark.
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`23. All documents concerning the dollar volume of sales of any product and/or
`services associated with Defendant’s Mark by you or any third party or licensee
`authorized to use Defendant’s Mark.
`
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`Regarding evidence of use and dollar volume of sales for Respondent’s services
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`associated with its NERVANA mark (production request nos. 6 and 23), information
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`“regarding sales, types of customers, and the information regarding use or nonuse of
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`
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`13
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`

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`Cancellation No. 92060593
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`[defendant’s] mark for the [services] involved” is relevant and must be provided to
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`the Petitioner. Sunkist Growers, Inc. v. Benjamin Ansel Co., 229 USPQ 147, 149
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`(TTAB 1985). See also J. B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577, 579
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`(TTAB 1975) (information on use relevant to issue of abandonment). Additionally, it
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`is well-settled that information on sales and use of the relevant mark may be
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`produced subject to the parties’ protective order. Sunkist, 229 USPQ at 149. See also
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`Neville Chemial Co. v. The Lubrizol Co., 184 USPQ 689, 690 (TTAB 1975)
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`(“information sought by applicant, … pertain[ing] to the names of some of opposer’s
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`customers, is confidential and as such need be revealed only under protective order”);
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`TBMP § 414(18) (2016). Therefore, Respondent’s motion for protective order is proper
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`as to request nos. 6 and 23. As to production request no. 8, documents concerning the
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`distribution of Respondent’s services may also be provided under the protective
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`order.10 See Johnston Pump/General Valve Inc., 10 USPQ2d at 1676 (“the first
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`customer to whom opposer sold its valves bearing the mark GV, … the number of
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`salesmen and locations of sales offices, and … the geographic locations of dealers who
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`market and distribute the products bearing the GV mark, touch on confidential
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`matters which must be protected”). In view of the foregoing, the Board must next
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`determine if any competitive harm would result from providing access to the
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`requested information to Mr. Maybeck.
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`10 Information relating to the areas of distribution for a party’s involved services sold under
`its involved mark is discoverable. TBMP § 414(16). If there is a question of abandonment, the
`names of a minimal number of customers for the period in question, are discoverable under
`protective order. See Fisons Ltd. v. Capability Brown Ltd., 209 USPQ 167, 169 (TTAB 1980)
`(possible harm outweighed where issue is abandonment); TBMP § 414(3).
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`
`
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`14
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`

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`Cancellation No. 92060593
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` Applying the standard set forth in U.S. Steel to this matter, the Board is
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`persuaded that Respondent has carried its burden of proof to show competitive harm
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`should Mr. Maybeck have access to Respondent’s financial and limited customer data
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`responsive to requests for production nos. 6, 8 and 23. Respondent’s evidence shows
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`that Mr. Maybeck is one of the founders of Petitioner, is an inventor for one of
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`Petitioner’s patent applications and two provisional applications, and was designated
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`as having “power of attorney” for other patent applications whose identified inventors
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`are Petitioner’s other founders. Petitioner also uses the address of the law firm of
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`Maybeck & Hoffman as its address. Additionally, although Petitioner’s goods and
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`Respondent’s services are different, i.e., they do not appear to be direct competitors
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`(that is, Petitioner’s goods are described as various types of “medical devices” and
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`Respondent’s services are described as “medical services”), Respondent could
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`potentially be a buyer of Petitioner’s medical devices, or Respondent could invent its
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`own medical devices, as Petitioner’s founders have done (see 29 TTABVUE 22), and
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`be in competition with Petitioner.
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`In view of the foregoing, the Board finds that Mr. Maybeck’s position is, at a
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`minimum, akin to that of a member and owner of Petitioner, which is a limited
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`liability company. Additionally, Petitioner has only set forth conclusory arguments
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`that Mr. Maybeck is not involved in this matter and does not address Respondent’s
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`assertion that Mr. Maybeck is involved in Petitioner’s competitive decision-making.
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`Given the dearth of evidence from Petitioner, including the lack of affidavit or
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`evidence indicating otherwise, and the evidence provided by Respondent, the Board
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`Cancellation No. 92060593
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`must presume that Mr. Maybeck has competitive decisionmaking authority for
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`Petitioner. In view thereof, and given that Mr. Maybeck and Ms. Hoffman
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`(Petitioner’s identified counsel) are principals in the same law firm, the Board finds
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`that there is risk of inadvertent disclosure of commercially sensitive information to
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`Petitioner and that Respondent has shown good cause for the modification of the
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`Board’s standard protective order.
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`Finally, the Board must balance the risk of inadvertent disclosure against the
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`potential harm to the opposing party from restrictions imposed upon that party’s
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`right to have the benefit of counsel of its choice.” Deutsche Bank, 605 F.3d at 1380.
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`Insofar as the Board will allow current counsel, Ms. Hoffman and her associates and
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`staff, to view the confidential documents at issue (see below) and will only prevent
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`access by Mr. Mayback and his staff, the Board finds that Petitioner’s choice of
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`counsel in this matter is not abridged and, therefore, modifying the protective order
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`to preclude Mr. Mayback’s access to confidential information and documents is
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`proper.
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` Accordingly, in order to avoid inadverent, improper disclosures of Respondent’s
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`commercially sensitive information, the Board grants Respondent’s motion to modify
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`the parties’ standard protective agreement to the following extent. Specifically, the
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`Board’s current standard protective agreement, viewable at the following URL,
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`http://www.uspto.gov/trademarks-application-process/appealing-trademark-
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`decisions/standard-documents-and-guidelines-0, is considered to be amended for this
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`proceeding as follows (changes shown in bold type font):
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`Cancellation No. 92060593
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`“1) Classes of Protected Information.
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`Confidential – Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) -
`Material to be shielded by the Board from public access, restricted from any
`access by the parties, and available for review by outside counsel for the
`parties, namely, Catherine Hoffman and Julie Dahlgard and Julie
`D’Abruzzo (Ms. Hoffman’s assistant), but not including Gregory
`Maybeck or any support staff operating under his direction, and,
`subject to the provisions of paragraphs 4 and 5, by independent experts or
`consultants for the parties. Such material may include the following types of
`information: (1) sensitive technical information, including current research,
`development and manufacturing
`information;
`(2) sensitive business
`information, including highly sensitive financial or marketing information; (3)
`competitive technical information, including technical analyses or comparisons
`of competitor’s products or services; (4) competitive business information,
`including non-public financial and marketing analyses, media scheduling,
`comparisons of competitor’s products or services, and strategic product/service
`expansion plans; (5) personal health or medical information; (6) an individual’s
`personal credit, banking or other financial information; or (7) any other
`commercially sensitive information the disclosure of which to non-qualified
`persons subject to this Order the producing party reasonably and in good faith
`believes would likely cause harm (emphasis original).
`
`
`…
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`3) Access to Protected Information.
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`
`…
`•
`Attorneys for parties are defined as including in-house counsel and
`outside counsel, namely, Catherine Hoffman and Julie Dahlgard,
`including Julie D’Abruzzo (Ms. Hoffman’s assistant) and other support
`staff operating under counsel’s direction, such as paralegals or legal assistants,
`secretaries, and any other employees or independent contractors operating
`under counsel’s instruction, but not including Gregory Maybeck or any
`support staff operating under his direction.
`
`
`…
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`Parties and their attorneys outside counsel shall have access to information
`designated as confidential, subject to any agreed exceptions.
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`Outside counsel, but not in-house counsel and not Gregory Maybeck or any
`support staff operating under his direction, shall have access to
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`Cancellation No. 92060593
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`information designated as Confidential – Attorneys’ Eyes Only (trade
`secret/commercially sensitive). …
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`The Board’s standard protective agreement stands as written on June 24, 2016, with
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`respect to all other provisions. Additionally, it is ORDERED that Gregory Maybeck
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`shall not have access to the attorney’s fil