April 5, 2021
`
`Opposition No. 91268564
`Serial No. 86416292
`
`
`
`SARAH G. VOELLER
`HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
`45 SOUTH SEVENTH STREET
`SUITE 2700
`MINNEAPOLIS, MN 55402
`
`Pianos Etc. Inc.,
`v.
`
`PANASONIC CORPORATION
`
`
`WENDY PETERSON
`NOT JUST PATENTS LLC
`1248 VICTORIA ST N
`
`ST. PAUL, MN 55117
`
`
`ESTTA1124802
`
`
`NOTICE OF INSTITUTION
`The opposer (plaintiff) identified above has filed a notice of opposition to the
`registration sought by applicant (defendant) in the above-identified application.
`This notice of institution is forwarded pursuant to Trademark Rules 2.105(b) and
`(c), and constitutes service of the notice of opposition on applicant. An electronic
`version
`of
`the notice
`of
`opposition
`is viewable
`on TTABVUE at
`https://ttabvue.uspto.gov/ttabvue/. See Trademark Rule 2.105(a). The parties should
`diligently monitor this proceeding via TTABVUE.
`
`APPLICANT MUST FILE ANSWER THROUGH ESTTA
`As required in the schedule below, applicant must file an answer within forty
`(40) days from the date of this order. Failure to file a timely answer may result
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`in the entry of default judgment and abandonment of the application. Regarding
`when a deadline falls on a Saturday, Sunday or federal holiday, see Trademark Rule
`2.196. Applicant must file the answer through ESTTA - Electronic System for
`Trademark Trials and Appeals, unless ESTTA is unavailable due to technical
`problems or extraordinary circumstances are present. An answer filed on paper
`under these limited circumstances must be accompanied by a Petition to the
`Director (and the required fee under Trademark Rule 2.6). See Trademark Rule
`2.106(b)(1). In substance, applicant’s answer must comply with Fed. R. Civ. P. 8(b);
`it must admit or deny the allegations in the notice of opposition, and may include
`available defenses and counterclaims. Regarding the form and content of an answer,
`see Trademark Rule 2.106(b)(2) and TBMP § 311.
`
`DUTY TO MAINTAIN ACCURATE CORRESPONDENCE INFORMATION
`Throughout this proceeding, the parties, and their attorneys or representatives,
`must notify the Board of any correction or update of physical address and email
`address, and should use the ESTTA change of address form. See Trademark Rule
`2.18(b); TBMP § 117.
`
`SERVICE OF ANSWER AND OF ALL SUBMISSIONS
`The service of the answer, and all other submissions in this proceeding, and of all
`matters that are required to be served but not required to be filed in the proceeding
`record, must be by email unless the parties stipulate otherwise. Trademark Rule
`2.119(b). In the absence of a stipulation, service may be by other means only under
`the limited circumstances and in a manner specified in Trademark Rule 2.119(b).
`Regarding the signing and service of all submissions, see TBMP §§ 113-113.04.
`
`The answer, and all other submissions, must include proof of service. As noted in
`TBMP § 113.03, proof of service may be in the following certificate of service form:
`
`
`I hereby certify that a true and complete copy of the foregoing
`(insert title of submission) has been served on (insert name of
`opposing counsel or party) by forwarding said copy on (insert
`date of mailing), via email (or insert other appropriate method
`of delivery) to: (set out name, and address or email address of
`opposing counsel or party).
`
`Signature__________________________
`Date_______________________________
`
`
`SUBMIT ALL FILINGS ONLINE VIA ESTTA
`Submissions must be filed via ESTTA, the Board’s online filing system, unless
`ESTTA is unavailable due to technical problems or extraordinary circumstances are
`present. Trademark Rule 2.126(a). Submissions may be filed in paper form only
`under the limited circumstances specified in Trademark Rule 2.126(b), with a
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`required written explanation. ESTTA is accessible at the Board’s web page:
`https://estta.uspto.gov/. The page has instructions and tips. ESTTA offers various
`forms, some of which may require attachments and/or a fee. For technical questions,
`a party may call 571-272-8500 (Mon. - Fri. 8:30 - 5:00 ET) or email
`ESTTA@uspto.gov. This proceeding involves several deadlines, and due to potential
`technical issues, parties should not wait until the deadline to submit filings. The
`Board may decline to consider an untimely submission. Moreover, Trademark
`Rule 2.126 sets forth the required form and format for all submissions (e.g., page
`limitations), and the Board may decline to consider any submission that does not
`comply with this rule, including, but not limited to motions, briefs, exhibits, and
`deposition transcripts.
`
`CONFERENCE, DISCOVERY, DISCLOSURE AND TRIAL SCHEDULE
`
`
`
`Time to Answer
`Deadline for Discovery Conference
`Discovery Opens
`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures Due
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures Due
`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures Due
`Plaintiff's 15-day Rebuttal Period Ends
`Plaintiff's Opening Brief Due
`Defendant's Brief Due
`Plaintiff's Reply Brief Due
`Request for Oral Hearing (optional)
`Due
`
`5/15/2021
`6/14/2021
`6/14/2021
`7/14/2021
`11/11/2021
`12/11/2021
`1/25/2022
`3/11/2022
`3/26/2022
`5/10/2022
`5/25/2022
`6/24/2022
`8/23/2022
`9/22/2022
`10/7/2022
`10/17/2022
`
`
`
`PARTIES ARE REQUIRED TO HOLD DISCOVERY CONFERENCE
`The parties are required to schedule and hold a discovery conference by the
`deadline in the schedule in this order, or as reset by the Board. In the conference,
`the parties are required to discuss, at a minimum, 1) the nature and basis of their
`claims and defenses, 2) the possibility of promptly settling, or at least narrowing the
`scope of claims or defenses, and 3) arrangements for disclosures, discovery,
`preserving discoverable information and introduction of evidence at trial. For
`guidance, see Fed. R. Civ. P. 26(f), Trademark Rule 2.120(a)(2)(i) and TBMP §§
`401.01 and 408.01(a).
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`The parties must hold the conference in person, by telephone or by a means on
`which they agree. A Board interlocutory attorney or administrative trademark
`judge will participate in the conference either upon request of any party made no
`later than ten (10) days prior to the conference deadline, or when the Board deems
`it useful to have Board involvement. See Trademark Rule 2.120(a)(2)(i). A request
`for Board participation must be made either through ESTTA, or by telephone call to
`the assigned interlocutory attorney named on the TTABVUE record for this
`proceeding. A party requesting Board participation should first determine possible
`dates and times when all parties are available. A conference with a Board attorney’s
`participation will be by telephone in accordance with the Board’s instructions.
`
`For efficiency, the parties may stipulate to various procedural and substantive
`disclosure, discovery and trial matters (e.g., modification of deadlines and
`obligations) upon written stipulation and approval by the Board. Trademark Rule
`2.120(a)(2)(iv) provides a non-exhaustive list of matters to which parties may
`stipulate. The best practice is to reduce all stipulations to writing. If email service is
`not practical, such as for voluminous document production in discovery, the parties
`should discuss in the conference how production will be made. The parties, and
`their attorneys or representatives, have a duty to cooperate in the discovery
`process. TBMP § 408.01.
`
`PROTECTIVE ORDER FOR CONFIDENTIAL INFORMATION
`The Board's Standard Protective Order is automatically imposed in all inter partes
`proceedings, and is available at: https://www.uspto.gov/trademarks-application-
`process/appealing-trademark-decisions/standard-documents-and-guidelines-0.
`During their conference, the parties should discuss whether they will use an
`alternative or modified protective order, subject to approval by the Board. See
`Trademark Rule 2.116(g) and TBMP § 412. The standard order does not
`automatically protect confidential information; its provisions for designating
`confidential information must be utilized as needed by the parties. Trademark Rule
`2.126(c) sets forth the procedure for filing confidential submissions.
`
`ACCELERATED CASE RESOLUTION (ACR)
`During their conference, the parties are to discuss whether they wish to seek
`mediation or arbitration, and whether they can stipulate to the Board's Accelerated
`Case Resolution (ACR) process for a more efficient and cost-effective means of
`obtaining the Board’s determination of the proceeding. For details, and examples of
`see TBMP
`§
`ACR
`proceedings,
`528,
`and
`the Board's webpage:
`https://www.uspto.gov/ttab.
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`INITIAL DISCLOSURES AND DISCOVERY
`Regarding the deadline for and contents of initial disclosures, see Trademark Rules
`2.120(a)(1) and (2)(i), and TBMP § 401.02. Regarding deadlines for serving and
`responding to discovery, see Trademark Rule 2.120(a)(3) and TBMP § 403.03.
`Certain provisions of Fed. R. Civ. P. 26 are applicable in modified form. Note that
`written discovery (interrogatories, requests for production, requests for admission)
`must be served early enough so that responses will be due no later than the close
`of discovery. Regarding the scope and limits of discovery, see TBMP 414;
`discoverable items may include documents, tangible things, and electronically
`stored information (ESI).
`
`MOTIONS
`Certain provisions of Fed. R. Civ. P. 11 apply to all submissions in Board
`proceedings. See TBMP § 527.02. Regarding available motions, see TBMP Chapter
`500. Regarding applicable deadlines to respond to motions, depending on the motion
`filed, see Trademark Rules 2.127(a) and (e)(1). When a party timely files a
`potentially dispositive motion the proceeding is suspended with respect to all
`matters not germane to the motion. See Trademark Rule 2.127(d). In addressing
`motions or other filings, if it appears to the Board that a telephone conference would
`be beneficial, or upon request of one or both parties, the Board may schedule a
`conference. See Trademark Rule 2.120(j)(1) and TBMP § 502.06(a).
`
`PRETRIAL DISCLOSURES, TRIAL AND BRIEFING
`Regarding the procedures and deadlines for pretrial disclosures and trial, and
`specifically the noticing, taking, serving and submitting of evidence and testimony,
`see Trademark Rules 2.120(k), 2.121, 2.122, 2.123 and 2.125, as well as TBMP
`Chapter 700. The parties should review these authorities. For example: witness
`testimony may be submitted in the form of affidavit or declaration subject to the
`right to oral cross examination; transcripts of testimony depositions, with exhibits,
`must be served on each adverse party within thirty (30) days after completion of
`taking the testimony; certified transcripts and exhibits must be filed, with notice of
`such filing served on each adverse party; and all notices of reliance must be
`submitted during the submitting party's assigned testimony period and must
`indicate generally the relevance the evidence and associate it with one or more
`issues.
`
`Main briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An
`oral hearing is not required, but will be scheduled upon separate notice timely filed
`pursuant to Trademark Rule 2.129(a). Regarding briefs and oral hearings, see
`TBMP §§ 801-802.
`
`TIPS FOR FILING EVIDENCE, TESTIMONY, OR LARGE DOCUMENTS
`The Board requires each submission to meet the following criteria before it will be
`considered: 1) pages must be legible and easily read on a computer screen; 2) page
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`orientation should be determined by its ease of viewing relevant text or evidence,
`for example, there should be no sideways or upside-down pages; 3) pages must
`appear in their proper order; 4) depositions and exhibits must be clearly labeled and
`numbered – use separator pages between exhibits and clearly label each exhibit
`using sequential letters or numbers - and 5) the entire submission should be text-
`searchable. Additionally, submissions must be compliant with Trademark Rules
`2.119 and 2.126. Submissions failing to meet all of the criteria above may require
`re-filing. Note: Parties are strongly encouraged to check the entire document before
`filing.1 The Board will not extend or reset proceeding schedule dates or other
`deadlines to allow time to re-file documents. For more tips and helpful filing
`information, please visit the please visit the ESTTA help webpage.
`
`LEGAL RESOURCES AVAILABLE AT WEB PAGE
`For a general description of Board proceedings, see TBMP §102.03. Proceedings are
`governed by the Trademark Rules of Practice in Parts 2 and 7 of Title 37 of the
`Code of Federal Regulations. These rules, the Manual of Procedure (TBMP),
`information on Accelerated Case Resolution (ACR) and Alternative Dispute
`Resolution (ADR), and many Frequently Asked Questions, are available on the
`Board’s web page, at:
`https://www.uspto.gov/ttab. The parties should check the web page for important
`changes, announcements, etc., many of which apply to proceedings already in
`progress.
`
`PARTIES NOT REPRESENTED BY COUNSEL
`This proceeding is similar to a civil action in a federal district court and can be
`complex. The Board strongly advises all parties to secure the services of an
`attorney who is familiar with trademark law and Board procedure. The Board
`cannot aid in the selection of an attorney. See TBMP § 114.02. The Board requires
`strict compliance with all applicable authorities whether or not the party is
`represented by counsel.
`
`PARTIES WITHOUT A U.S. DOMICILE MUST SECURE U.S. COUNSEL
`Effective August 3, 2019, the USPTO amended its rules to require applicants,
`registrants or parties to a proceeding whose domicile is not located within the U.S.
`or its territories to be represented by an attorney who is an active member in good
`standing of the bar of the highest court of a state in the U.S., including the District
`of Columbia or any Commonwealth or territory. Attorney information requires
`applicant’s appointed attorney to provide email and bar information as follows: Year
`of admission, State or territory of admission and, bar number if one is issued. 84 FR
`31498 (Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants
`and Registrants, July 2, 2019). Until ESTTA forms are available which will mask
`the bar information, an attorney may file the required information through ESTTA
`
`1 To facilitate accuracy, ESTTA provides thumbnails to view each page before submitting.
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`and select “confidential.” A filing under “confidential” is not made available for
`public viewing.
`
`NOTIFY BOARD OF ALL PENDING ACTIONS
`If the parties are, or during the pendency of this proceeding become, parties in
`another Board proceeding or a civil action involving the same or related marks, or
`involving any issues of law or fact which are also in this proceeding, they shall
`notify the Board immediately. See Trademark Rule 2.106(b)(3)(i). The Board will
`consolidate and/or suspend related Board proceedings, as appropriate. See
`Trademark Rule 2.117(c); TBMP §§ 510 and 511.
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