Ll
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`AM GENERAL, LLC:
`
`Opposer
`
`v.
`
`OPTIMIZER, INC.
`
`Applicant
`
`\¥%/\/$/€§/M
`
`Opposition No. 91161306
`
`MOTION FOR ENTRY OF PROTECTIVE ORDER
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`Opposer, AM General, LLC, hereby moves for entry of the enclosed Protective Order in
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`this matter. The Protective Order has been stipulated to by the parties as indicated by the
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`signatures of counsel on Page 7. Entry of the Order is, therefore, respectfully requested.
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`Respectfully submitted,
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`
`
`204 Wes Jefferson Boulevard, Suite 250
`South Bend, IN 46601
`
`(219) 234-4149
`Telephone:
`Fax:
`(219) 239-1900
`
`Attorneys for Opposer
`
`SBIMANI 204984vl
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`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on the 19th day of January, 2005, a true and correct
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`copy of the foregoing was served upon the following counsel of record, via United States mail,
`
`postage prepaid.
`
`Gregg Reed
`Kluger, Peretz, Kaplan & Berlin, P.L.
`Miami Center, Suite 1700
`
`201 South Biscayne Boulevard
`Miami, FL 33131
`
`
`
` Gerard T. Gall
`
`CERTIFICATE OF MAILING
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`I hereby certify that on the 19th day of January, 2005, this Motion for Entry of Protective
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`Order, as well as an executed copy of the Protective Order, was served upon the United Sates
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`Patent and Trademark Office, Trademark Trial and Appeal Board, P.O. Box 1451, Alexandria,
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`VA 22313-1451, by depositing the same in the United States mail, postage prepaid.
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`
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`SBIMANI 204984vl
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`

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`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`AM GENERAL, LLC:
`
`Opposer
`
`V.
`
`OPTIMIZER,
`
`INC.
`
`Applicant
`
`\./%\/J/\/%%
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`Opposition No. 91161306
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`PROTECTIVE ORDER
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`IT IS HEREBY ORDERED THAT:
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`1.
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`All Protected Information produced or exchanged in the course of this
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`opposition proceeding shall be used solely for the purpose of this opposition proceeding or
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`litigation between the parties relating thereto, and information thus disclosed shall not be used
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`for any other purpose or for any other action.
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`Protected Information as used herein shall mean Confidential Information
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`and/or Confidential Attorneys’ Eyes Only Information and shall include:
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`Any material or information which is designated "Confidential
`Information''
`or
`“Confidential Attorneys’
`Eyes Only
`Information” by any party, whether
`it be a document,
`information contained in a document, information revealed
`during a deposition, information revealed in an interrogatory
`or other discovery response, or otherwise. By way of example
`and not limitation, Confidential Information or Confidential
`Attorneys’ Eyes Only Information may include information
`relating to sales, costs, pricing, profits, research, business
`plans,
`finances, employment policies, customer
`identities,
`internal procedures, and the like.
`In designating Protected
`Information, the designating party will make such designation
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`available to:
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`only as to that information that it in good faith believes to be
`confidential or sensitive.
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`Confidential Information shall be designated by marking the
`thing or page of a document containing such information as
`follows: "CONFIDENTIAL."
`
`Confidential Attorneys’ Eyes Only Information shall be designated by
`marking the thing or page of a document containing such information
`as follows: “CONFIDENTIAL — ATTORNEYS’ EYES ONLY.”
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`In lieu of marking and producing the original of a document, a
`marked copy thereof may be produced, provided that the
`unmarked original is kept available by the producing party for
`inspection.
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`Confidential Attorneys’ Eyes Only Information shall only be made
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`attorneys who have appeared in this opposition proceeding and
`employees of the attorneys’ law firms to whom it is necessary
`that the material be disclosed for purposes of this opposition
`proceeding;
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`judges, attorneys, employees and staff at the TTAB;
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`any independent accountants, statisticians, economists, or
`other experts, retained or employed by a party as an expert in
`connection with this opposition proceeding who have no
`relationship, other than as an expert witness, with any of the
`parties hereto or any of their competitors and who have signed
`a document
`in the form of Exhibit "A" attached hereto,
`PROVIDED, however, that the name(s) of such person(s) shall
`be disclosed to the party that provided the Protected
`Information to be disclosed at least five (5) business days prior
`to any disclosure of Protected Information to them. Such
`disclosure shall not be made if written notice of objection is
`served within said five (5) day period, and any such objection
`must be based on the objecting party’s good faith claim based
`on a business conflict or competitive injury; but the party
`seeking disclosure shall have the right to bring the dispute
`before the Board for resolution if it cannot be resolved by the
`parties; and
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`any other person who is designated by stipulation of the parties
`or by order of the Board, after notice to all parties upon a
`showing of good cause why such person shall be so designated
`and opposing parties have had an opportunity to be heard in
`opposition thereto. All such persons designated by the Board
`or by stipulation shall sign an undertaking, in the form of
`Exhibit “A” attached hereto,
`to maintain the information
`confidential.
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`Confidential Information shall only be made available to those above-identified categories of
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`persons to whom Confidential Attorneys’ Eyes Only Information may be shared, as well as the
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`parties to this opposition proceeding.
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`4.
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`For purposes of discovery in this action, Protected Information may be
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`disclosed by an adverse party to officers of the party which designated the information as
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`Confidential Information or Confidential Attorneys’ Eyes Only Information, or to the author or
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`addressee or any person who, as a matter of record, actually received a document designated as
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`Confidential, other than through discovery or through attorney client communications relating to
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`this opposition proceeding without the prior written consent of the party who designated the
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`information as Protected Information.
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`5.
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`Information disclosed at a deposition in this action may be designated by a
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`party as Protected Information by indicating on the record at the deposition that the specific part
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`of the testimony and/or any documents or thing marked for
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`identification is Protected
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`Information and subject
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`to the provisions of this Order.
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`In the event a party designates
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`information at a deposition as Confidential Information or Confidential Attorneys’ Eyes Only
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`Information, the reporter shall segregate those pages of the transcript from the remainder of the
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`transcript and mark the segregated pages as designated. A party may also designate information
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`isclosed at such deposition as Confidential Information or Confidential Attorneys’ Eyes Only
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`Information by notifying all parties in writing, within ten (10) days of receipt of the transcript by
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`attorneys for the designating party, of the specific pages and lines of the transcript which contain
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`Confidential Information or Confidential Attorneys’ Eyes Only Information. Each party shall
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`attach a copy of such written statement to the face of the transcript and each copy thereof in its
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`possession, custody or control. All depositions shall be treated as Confidential Information for a
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`period of at least ten (10) days after a transcript of said deposition is actually received by
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`attorneys for each of the parties.
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`6.
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`Any information designated as Confidential Information or Confidential
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`Attorneys’ Eyes Only Information shall not be made available to or maintained by persons other
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`than those expressly permitted by paragraph 3 above, or the party who produced the Protected
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`Information.
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`7.
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`Nothing shall prevent disclosure beyond the terms of this Order if the
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`party designating the information as Protected Information consents to such disclosure,
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`in
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`writing, or if the Board, after notice to all affected parties, orders such disclosure.
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`8.
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`The inadvertent or unintentional disclosure by the producing party of
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`confidential
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`information, documents or things regardless of whether the information was
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`designated as Protected Information at the time of disclosure shall not be deemed a waiver, in
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`whole or in part, of a party's claim of confidentiality, either as to the specific information
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`disclosed or as to any other information relating thereto or on the same or related subject matter.
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`9.
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`A party shall not be obligated to challenge the propriety of any
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`onfidential designation at the time made, and failure to do so shall not preclude a subsequent
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`hallenge thereto.
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`In the event that any party to this litigation disagrees at any stage of these
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`roceedings with any designation made by a producing or supplying party, the parties shall try
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`first to dispose of such dispute in good faith on an informal basis.
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`If the dispute cannot be
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`resolved, the objecting party may seek appropriate relief from the Board.
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`10.
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`All information provided by non-parties may be made specifically subject
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`to the terms of this Protective Order. Such non-parties and the parties to this litigation may
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`designate information Confidential or Confidential Attorneys’ Eyes Only, in accordance with
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`this Order, but by so doing shall be bound by all the other applicable provisions of this Order.
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`The confidential designations placed thereon, if any, shall have the same force and effect as if
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`those designations were made pursuant to the terms of this Order.
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`11.
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`In the event that a party wishes to use any Protected Information in any
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`affidavits, briefs, memoranda of law, or other pleadings filed with the Board, such Confidential
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`Information used therein shall be filed with the Board in a sealed, opaque container indicating on
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`the outside thereof the case heading of this opposition proceeding and a notification that the
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`contents are subject to a Protective Order and that the container is not to be opened except as
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`permitted by this Protective Order or upon further order of the Board.
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`12. Within sixty (60) days after the conclusion of this opposition proceeding,
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`the original and all copies of each document and thing produced by a party shall be returned to
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`the producing party or destroyed and, in the event that such copies are destroyed, counsel shall
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`certify in writing to the producing party or non-party that all such documents have been
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`destroyed.
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`Insofar as the provisions of any Protective Order entered in this action restrict the
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`ommunication and use of the documents produced thereunder, such orders shall continue to be
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`inding after the conclusion of this action except (a) that there shall be no restriction on
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`ocuments that are used as an exhibit before the Board (unless such exhibit was maintained
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`under seal) and (b) that a party may seek the written permission of the producing party or further
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`order of the Board with respect to dissolution or modification of such Protective Order.
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`13.
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`Nothing in this Order shall bar or otherwise restrict any attorney herein
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`from rendering advice to his or her client with respect to this opposition proceeding and, in the
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`course thereof, referring to or relying upon his or her examination of Protected Information
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`provided, however, that in rendering such advice and in otherwise communicating with his or her
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`client, the attorney shall not disclose the content of any Protected Information except if and as
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`permitted by paragraph 3 of this Protective Order.
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`14.
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`This Order shall be without prejudice to the right of any party to oppose
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`production of any information for
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`lack of relevance or any other ground other
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`than
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`confidentiality.
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`15.
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`For purposes of expediting discovery, the parties agree that should any
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`document which arguably contains work product or communications subject to the attomey-
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`client privilege be inadvertently produced, such production shall not constitute a waiver of the
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`parties’ respective work product or attomey-client privileges.
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`16.
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`This Protective Order shall be without prejudice to the right of the parties
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`0 request additional protection under Rule 26(0), Fed. R. Civ. P., for discovery requests made
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`ereafier by any party. Nothing in this Order shall prejudice any party or non-party from seeking
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`dditional orders with respect to the treatment of information or documents as Confidential.
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`17.
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`This Order shall not be construed to prevent any person, including those
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`i entified in paragraph 3 of this Protective Order, from making use of designated Protected
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`1 formation which (a) was lawfully in his or her possession prior to the receipt from the
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`s pplying party, (b) appears in any printed publication, or other published material available to
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`SB MANl 202274vl
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`the general public, (c) was or is hereafter obtained from a source or sources not under an
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`obligation of secrecy to the other party or parties, ((1) is exempted from the operation of this
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`Order by written consent of the party producing such Protected Information, (e) which hereafter
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`becomes available to the public as a result of acts by others not a party to this Order, or (f) by
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`order of the Board.
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`18.
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`Nothing in this Order is to be construed as a waiver or agreement to
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`produce any infonnation protected by the attomey-client privilege and/or work product doctrine.
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`19.
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`Any notice required to be given under this Order shall be given by hand
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`delivery, facsimile delivery or overnight delivery to attorneys of record.
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`By the Board:
`
`Dated:
`
`So Stipulatedz
`
`E
`
`’;—’7’i"-’
`regg R d
`luger, Peretz, Kaplan & Berlin, P.L.
`.- ttomeys for Applicant Optimizer, Inc.
`iami Center, Suite 1700
`101 South Biscayne Boulevard
`J,
`iami, FL 33131
`elephone: 305-379-9000
`P : 305-379-3428
`
`
`
`Telephone: (574) 234-4149
`Fax: (574)239-1900
`
`SB ' ANl 202274vl
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`EXHIBIT A
`
`declares that:
`
`I reside at
`
`
`I have read and understand the Protective Order in AM General LLC V.
`
`1.
`
`2.
`
`gmtimizer, Inc., Opposition No. 91161306, in the United States Patent and Trademark Office
`Before the Trademark Trial and Appeal Board.
`
`Order.
`
`3.
`
`I agree to comply with and be bound by all of the terms of the Protective
`
`to disclose any Confidential Information or Confidential
`I agree not
`4.
`Attorneys’ Eyes Only Information obtained pursuant to the Protective Order to any persons other
`than those specifically authorized by the Protective Order.
`
`I agree that I will not use such Confidential Information or Confidential
`5.
`Attorneys’ Eyes Only Information for any purpose other than the preparation and trial of this
`opposition proceeding or litigation relating thereto.
`
`I agree that, at the conclusion of this opposition proceeding, 1 will return
`6.
`to the person from whom I obtained Confidential Information or Confidential Attorneys’ Eyes
`Only Information I received pursuant to this Protective Order, as well as any documents derived
`therefrom, including any and all copies, summaries, abstracts, excerpts, indices, and descriptions
`of such Protected Information .
`
`I ated:
`
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`SBI ANI 202274v1
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` -....._
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`1
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`ii iiillf’. .:
`
`574.234.4149
`
`Fax 574.239.1900 www.bakerdaniels.com
`
`mdiana
`Washington, DC.
`China
`
`]_3AKERéDANIELS
`
`Est. 1863
`
`First Bank Building, 205 W. Jefferson Blvd, Suite 250 South Bend, Indiana 46601
`
`Gerard T. Gallagher
`Attorney at Law
`Dir: 574.239.1921
`gerardgallagher@bakerd.com
`
`January 19, 2005
`
`United States Patent and Trademark Office
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Re:
`
`AM General, LLC v. Optimizer, Inc.
`Mark: OPTIMIZER
`
`Serial No. 76/519,210
`Our Reference: AMG—L001 1 (971 153.2)
`
`Dear Sir:
`
`Enclosed for filing are an original and two copies of a Motion for Entry of Protective
`Order, and an original and two copies of the executed Protective Order. Please confirm receipt
`by dale-stamping the enclosed filing receipt card and returning same to our offices.
`If there are
`any fees due, please charge them to Baker & Daniels‘ Deposit Account No. 02-0387 (971153.2).
`
`Very truly yours,
`
`BAKER & DANIELS
`
`Gerard T. G agher
`
`GTG:rac
`
`Enclosure
`
`cc:
`
`Kevin D. O'Rear, Esq.
`
`ll|||||l||||lllllllllllllilllllllllllllllllllllll
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`U.S. Patent 5. TMO
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`o1-zsfoos
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`ITM Mail Rcpt Dt. #66
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`S IMANI 204983vl