ESTTA Tracking number:
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`ESTTA1354778
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`Filing date:
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`04/25/2024
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`92083712
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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 email
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`Signature
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`Date
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`Attachments
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`Plaintiff
`Ember Law, PLLC
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`DELFINA HOMEN
`MILLER NASH LLP
`1140 SW WASHINGTON ST., STE. 700
`PORTLAND, OR 97205
`UNITED STATES
`Primary email: trademark@millernash.com
`Secondary email(s): delfina.homen@millernash.com,
`robert.cumbow@millernash.com, lisa.motherwell@millernash.com
`503-224-5858
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`Motion to Compel Discovery or Disclosure
`
`Delfina S. Homen
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`trademark@millernash.com, delfina.homen@millernash.com,
`robert.cumbow@millernash.com, lisa.motherwell@millernash.com
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`/Delfina S. Homen/
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`04/25/2024
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`EMBER Motion to Compel.pdf(290275 bytes )
`Homen Declaration in Support of Motion EMBER LAW.pdf(273446 bytes )
`Exhibit 1 to Homen Declaration EMBER LAW.pdf(525120 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`EMBER LAW, PLLC,
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`Petitioner,
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`v.
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`SAN JOAQUIN VALLEY COLLEGE,
`INC.,
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`
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`Respondent.
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`Reg. No.: 6969393
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`Mark: EMBER EDUCATION
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`Cancellation No. 92083712
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`
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`PETITIONER’S MOTION TO COMPEL INITIAL DISCLOSURES
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`Pursuant to 37 C.F.R. § 2.120(f)(1), Fed. R. Civ. P. 26(a)(1), and TBMP § 523, Petitioner
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`Ember Law, PLLC (“Petitioner”) hereby submits the following Motion to Compel Initial
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`Disclosures from Respondent San Joaquin Valley College, Inc. (“Respondent”).
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`Petitioner, a boutique civil litigation firm headquartered in Seattle, Washington, is the
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`owner of U.S. Trademark Appl. Ser. No. 90304134 (“the ‘134 Application”) for the mark
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`EMBER for “Legal services; Providing legal services in the field of Personal injury; Providing
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`legal services in the field of Criminal Law” in Class 45. (Pet. ¶ 2, 4, 1 TTABVUE.) Petitioner
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`has used the EMBER mark continuously for these services since at least as early as March 4,
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`2016. (Id. ¶ 5.)
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`Petitioner’s ‘134 Application was refused under Section 2(d), likelihood of confusion,
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`because of Respondent’s U.S. Reg. No. 6,969,393 (“the ‘393 Registration”) for the mark
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`EMBER EDUCATION, based only on its inclusion of “legal services” in Class 45. (Pet. ¶¶ 1, 3.)
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`The ‘393 Registration lists a first use in commerce date of August 26, 2022, well after
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`Petitioner’s use of EMBER began in 2016. From Petitioner’s investigation, Respondent does not
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`PETITIONER’S MOTION TO COMPEL
`INITIAL DISCLOSURES
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`PAGE 1
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`CANC. NO. 92083712
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`use its EMBER EDUCATION mark for “legal services” and did not have a bona fide intent to
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`use the mark for “legal services” when it filed the application that matured in the ‘393
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`Registration. (See id. ¶¶ 9-22.)
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`Accordingly, on November 20, 2023, Petitioner filed a Petition for Partial Cancellation,
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`seeking to cancel “legal services” from the ‘393 Registration on the grounds of Petitioner’s
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`priority and a likelihood of confusion between Petitioner’s EMBER mark and Respondent’s
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`EMBER EDUCATION mark for “legal services,” as well as non-use and lack of bona fide
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`intent. (See generally 1 TTABVUE.) Respondent filed an Answer on January 29, 2024, denying
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`Petitioner’s salient allegations. (See generally 7 TTABVUE.)
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`The parties held a discovery conference on March 7, 2024. (Homen Decl. ¶ 2.) During
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`the conference, Petitioner’s undersigned counsel stated Petitioner would make initial disclosures,
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`and Respondent’s counsel of record indicated Respondent would likewise make initial
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`disclosures. (Id. ¶ 3.) Petitioner served its initial disclosures on April 1, 2024. (Id. ¶ 4.)
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`Respondent never served initial disclosures. (Id. ¶ 5.)
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`Prior to the filing of this cancellation, Respondent’s counsel indicated multiple times that
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`Respondent was amenable to resolving this dispute and would provide a proposal to that effect.
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`(Homen Decl. ¶ 6.) That proposal never came, necessitating the filing of this cancellation. (Id.)
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`Afterward, Respondent’s counsel again indicated that Respondent is amenable to resolving this
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`dispute and would provide a proposal to that effect, including during the parties’ discovery
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`conference. (Id. ¶ 7.) Yet again, that proposal never came, despite multiple follow-ups, one of
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`which reminded Respondent that it had yet to serve initial disclosures. (Id. ¶ 8 & Ex. 1.)
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`Every party to an inter partes proceeding is obligated to make initial disclosures to every
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`other party. TBMP § 401.02. Initial disclosures kick off the discovery process, providing
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`PETITIONER’S MOTION TO COMPEL
`INITIAL DISCLOSURES
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`PAGE 2
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`CANC. NO. 92083712
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`“routine disclosure of names of potential witnesses and basic information about documents and
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`things that a party may use to support a claim or defense.” 72 Fed. Reg. 42,242, 42,246 (Aug. 1,
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`2007); see also Fed. R. Civ. P. 26(a)(1)(A) (setting forth the information that must be provided in
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`initial disclosures).
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`“The Board adopted a disclosure regime to promote the early exchange of information
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`and settlement and, for cases that do not settle, ‘more efficient discovery and trial, reduction of
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`incidents of unfair surprise, and increase the likelihood of fair disposition of the parties’ claims
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`and defenses.’” TBMP § 408.01(b) (quoting 72 Fed. Reg. at 42,244); see also Spier Wines (PTY)
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`Ltd. v. Shepher, 105 USPQ2d 1239, 1246 (TTAB 2012) (disclosures, from initial through
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`pretrial, and discovery responses should be viewed as a continuum of communication). “A party
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`failing to make initial disclosures may be subject to a motion to compel, and ultimately, a motion
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`for discovery sanctions.” TBMP § 401.02 (citing 37 C.F.R. § 2.120(f)(1), (h)).
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`Under the calendar in this proceeding, as reset in response to Respondent’s consent
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`motion to extend, initial disclosures were due March 29, 2024. (See 5-6 TTABVUE.) It is now
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`April 25, 2024, and Respondent has yet to serve initial disclosures, despite being reminded by
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`Petitioner that its disclosures are overdue. (Homen Decl. ¶¶ 5, 8 & Ex. 1.)
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`“The Board expects parties (and their attorneys or other authorized representatives) to
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`cooperate with one another in the discovery process, and looks with extreme disfavor on those
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`who do not.” TBMP § 428.01. This obligation to cooperate includes the obligation to provide
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`initial disclosures. See TBMP § 428.01(b). Respondent failed in this duty, just as it has failed to
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`proffer a resolution to this dispute. The Board should grant this Motion and order Respondent to
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`serve proper initial disclosures without further delay.
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`PETITIONER’S MOTION TO COMPEL
`INITIAL DISCLOSURES
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`PAGE 3
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`CANC. NO. 92083712
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`Date: April 25, 2024
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`Respectfully submitted,
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`/Delfina S. Homen /
`Delfina S. Homen
`Miller Nash LLP
`1140 SW Washington St, Ste 700
`Portland, OR 97205
`503-205-2596
`
`Attorney for Petitioner
`Ember Law, PLLC
`
`Robert C. Cumbow
`Miller Nash LLP
`605 5th Ave S, Ste 900
`Seattle, WA 98104
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`Attorney for Petitioner
`Ember Law, PLLC
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`PETITIONER’S MOTION TO COMPEL
`INITIAL DISCLOSURES
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`PAGE 4
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`CANC. NO. 92083712
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`CERTIFICATE OF SERVICE
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`I hereby certify that on April 25, 2024, I caused a true and correct copy of the foregoing
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`PETITIONER’S MOTION TO COMPEL INITIAL DISCLOSURES to be served by email
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`upon the following attorneys of record for Respondent:
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`Jessica Bromall Sparkman, trademarkdocket@jmbm.com, jsparkman@jmbm.com
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`_/Lisa Motherwell/ ___
`Lisa Motherwell
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`PETITIONER’S MOTION TO COMPEL
`INITIAL DISCLOSURES
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`PAGE 5
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`CANC. NO. 92083712
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`EMBER LAW, PLLC,
`
`
`
`
`
`Petitioner,
`
`v.
`
`SAN JOAQUIN VALLEY COLLEGE,
`INC.,
`
`
`
`Respondent.
`
`Reg. No.: 6969393
`
`Mark: EMBER EDUCATION
`
`Cancellation No. 92083712
`
`
`DECLARATION OF DELFINA S. HOMEN IN SUPPORT OF
`PETITIONER’S MOTION TO COMPEL INITIAL DISCLOSURES
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`I, Delfina S. Homen, hereby declare under penalty of perjury:
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`1.
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`I am an attorney for Petitioner Ember Law, PLLC (“Petitioner”). I am personally
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`knowledgeable regarding the subject matter stated herein and/or base my inferences on
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`information I have personally reviewed. I make this declaration in support of Petitioner’s Motion
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`to Compel Initial Disclosures from Respondent San Joaquin Valley College, Inc.
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`(“Respondent”).
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`2.
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`The parties held their discovery conference for this proceeding on March 7, 2024.
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`I participated in the conference on behalf of Petitioner; Respondent’s counsel of record, Jessica
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`Bromall Sparkman, participated in the conference on behalf of Respondent.
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`3.
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`During the discovery conference, I stated Petitioner would make initial
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`disclosures, and from my recollection, Respondent’s counsel stated Respondent would also make
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`initial disclosures.
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`4.
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`5.
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`Petitioner served its initial disclosures in this proceeding on April 1, 2024.
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`To date, Respondent has not served initial disclosures in this proceeding.
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`HOMEN DEC ISO PETITIONER’S
`MOTION TO COMPEL INITIAL DISCLOSURES
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`PAGE 1
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`CANC. NO. 92083712
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`

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`6.
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`It is my understanding that prior to the filing of this proceeding, Respondent’s
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`counsel indicated multiple times to my co-counsel, Bob Cumbow, that Respondent was
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`amenable to resolving this dispute and would provide a proposal to that effect. It is also my
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`understanding that such a proposal never came.
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`7.
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`Since the cancellation was filed, Respondent’s counsel again indicated that
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`Respondent was amenable to resolving this dispute and would provide a proposal to that effect.
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`This includes during the parties’ discovery conference on March 7th, during which we discussed
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`how initial disclosures might be avoided for both parties if the matter were resolved. To date,
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`however, no proposal has been received.
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`8.
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`Since the parties’ discovery conference, I have sent multiple emails to
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`Respondent’s counsel, namely:
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`a. An email on March 7th, after the discovery conference concluded, confirming that
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`the next deadline in the proceeding was the initial disclosure deadline, and stating,
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`“We look forward to receiving your client’s proposal [for resolution] as soon as
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`possible, so that the parties may avoid the need for initial disclosures”; no
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`response was received.
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`b. An email on March 21, 2024, “[c]hecking in on whether your client has a
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`proposal for resolution of this proceeding”; no response was received.
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`c. An email on April 18, 2024, stating, “I have not heard from you for quite some
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`time on this matter, and your client missed the initial disclosures deadline. If this
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`is not going to resolve, we would like to know, so that we may proceed
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`accordingly”; no response was received.
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`Attached as Exhibit 1 is a true and correct copy of this email thread.
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`HOMEN DEC ISO PETITIONER’S
`MOTION TO COMPEL INITIAL DISCLOSURES
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`PAGE 2
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`CANC. NO. 92083712
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`I hereby declare that all statements made herein of my own knowledge are true and that
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`all statements made on information and belief are believed to be true; and further that these
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`statements are made with the knowledge that willful false statements and the like so made are
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`punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States
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`Code.
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`Dated: April 25, 2024
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`/s/ Delfina S. Homen
`Delfina S. Homen
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`HOMEN DEC ISO PETITIONER’S
`MOTION TO COMPEL INITIAL DISCLOSURES
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`PAGE 3
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`CANC. NO. 92083712
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`CERTIFICATE OF SERVICE
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`I hereby certify that on April 25, 2024, I caused a true and correct copy of the foregoing
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`DECLARATION OF DELFINA S. HOMEN IN SUPPORT OF PETITIONER’S MOTION
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`TO COMPEL INITIAL DISCLOSURES to be served by email upon the following attorneys
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`of record for Respondent:
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`Jessica Bromall Sparkman, trademarkdocket@jmbm.com, jsparkman@jmbm.com
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`_/s/ Lisa Motherwell ___
`Lisa Motherwell
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`HOMEN DEC ISO PETITIONER’S
`MOTION TO COMPEL INITIAL DISCLOSURES
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`PAGE 4
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`CANC. NO. 92083712
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`

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`EXHIBIT 1
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`

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`Homen,Delfina
`
`From:
`Sent:
`To:
`Ce:
`Subject:
`
`Jessica,
`
`Homen, Delfina
`Thursday, April 18, 2024 4:23 PM
`‘Jessica Bromall Sparkman’
`Motherwell, Lisa; Cumbow, Bob
`RE: EMBER EDUCATION,Canc. No. 92083712
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`| have not heard from you for quite some time on this matter, and your client missed the initial disclosures
`deadline. If this is not going to resolve, we would like to Know,so that we may proceed accordingly.
`
`Thanks,
`Delfina
`
`From: Homen, Delfina
`Sent: Thursday, March 21, 2024 12:26 PM
`To: Jessica Bromall Sparkman’ <JSparkman@jmbm.com>
`Subject: RE: EMBER EDUCATION,Canc. No. 92083712
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`Hi Jessica,
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`Checking in on whether your client has a proposal for resolution of this proceeding.
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`Thanks,
`Delfina
`
`From: Homen, Delfina
`Sent: Thursday, March 7, 2024 2:16 PM
`To: Jessica Bromall Sparkman <JSparkman@jmbm.com>
`Subject: RE: EMBER EDUCATION,Canc. No. 92083712
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`Hi Jessica,
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`Thanks again for your time this afternoon. Confirmed that the next deadline is initial disclosures, on March 29,
`2024. Welook forward to receiving your client’s proposal as soon as possible, so that the parties may avoid the
`need for initial disclosures.
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`Thanks,
`Delfina
`
`From: Homen, Delfina
`Sent: Wednesday, March 6, 2024 10:16 AM
`To: Jessica Bromall Sparkman <JSparkman@jmbm.com>
`Subject: RE: EMBER EDUCATION,Canc. No. 92083712
`
`Sounds good. I’llsend you a Teams invite momentarily.
`
`

`

`From: Jessica Bromall Sparkman <JSparkman@jmbm.com>
`Sent: Wednesday, March 6, 2024 6:51 AM
`To: Homen, Delfina <Delfina.Homen@MillerNash.com>
`Subject: Re: EMBER EDUCATION,Canc. No. 92083712
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`[EXTERNAL MESSAGE: This email originated from outside of the firm. Do not click links or open attachments unless you
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`recognize the sender and knowthecontentis safe.
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`Thursday at 2:00 PST?
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`Sent from my iPhone
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`On Mar 4, 2024, at 6:32 PM, Homen, Delfina <Delfina.Homen@millernash.com> wrote:
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`Jessica,
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`The parties need to hold the discovery conferencein the above-identified cancellation proceeding. Can you please
`let me know whatyour availability is this week? | can make Tuesday afternoon or Wednesday morning work,or |
`currently am available all day Thursday and Friday.
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`Thanks,
`Delfina
`
`Delfina S. Homen
`Special Counsel (pronouns: she/her/hers)
`
`Miller Nash LLP
`US Bancorp Tower | 111 SW Fifth Ave, Ste 3400 | Portland, OR 97204
`Direct: 503.205.2396 | Office: 503.224.5858
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