IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In The Matter of Trademark Application:
`Mark: Adhesive R&D and design
`Serial No.:78/203,932
`Filed: January 16, 2003
`Published: July 27, 2004
`
`Serial No.
`
`
`78/203 932
`
`Opposition No.
`
`91 161723
`
`Atty. Docket: 2262.001OPTO/TGD/HMR
`
`) ) ) ) ) ) ) )
`
`)
`
`Adhesives Research, Inc.
`(Opponent)
`
`VS.
`
`Adhesive R&D, Inc.
`(Applicant)
`
`MOTION TO COMPEL OPPOSITION TO EXCECUTE PROTECTIVE ORDER,
`ANSWER REQUESTS FOR ADMISSION, AND PRODUCE NON-
`CONFIDENTIAL REQUESTED DISCOVERY INFORMATION
`
`Commissioner for Trademarks
`
`P.O Box 1451
`
`Alexandria, VA 22313-1451
`
`Applicant, Adhesive R&D, Inc., respectfully requests the attached protective
`
`order (Exhibit A) be imposed on both parties by the TTAB, so that discovery may be
`
`enjoyed by both parties. Applicant also requests that the calendar be reset. Parties had
`
`agreed to a stay, which lasted five weeks, while they tried to settle the matter. Since no
`
`resolution could be reached, and because applicant is no longer in agreement to a stay,
`
`applicant requests the calendar be revised to allow both parties time to comply, without
`
`penalizing either party, for the time that has expired during the agreed upon stay.
`
`WMWWWWWMWW
`
`06-17-2005
`U.S. Patent & TMOfcITM Mail Rcpt Dt. #72
`
`

`
`
`
`-2-
`
`Motion to Compel
`Serial No. 78/203,932
`
`I. BACKGROUND
`
`Despite over two months of negotiations, parties are unable to reach agreement on
`
`a designated recipient, acting in behalf of applicant, for trade secret/highly confidential
`
`information produced by opponent. As applicant Adhesive R&D, Inc. is representing
`
`itself “pro se” in these matters, any reference in the standard protective order to outside
`
`counsel, does not apply. There is no attorney of record for applicant, as applicant is being
`
`defended by Kevin Rosenberg, a Vice President employed by Adhesive R&D, Inc. Since
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`both parties are entitled to the same type of discovery, and because Kevin Rosenberg is
`
`functioning as outside counsel for applicant, it is logical that he would need the same
`
`access to discovery information as opponents outside counsel.
`
`II. OPPONENT HAS OFFERED NO REASONABLE ALTERNATIVE
`
`Opponent has offered no reasonable alternative, because none exists. Opponent
`
`may argue that the information requested is not relevant, or need not be produced for
`
`another authorized reason, but that is a separate issue. The ultimate destination of such
`
`information can not be in question because any other alternative would seriously impair
`
`applicant’s ability to defend itself. Information requested by either side during discovery
`
`is requested because the party needs the information as evidence to prove its case.
`
`Applicant’s discovery should not have any extraordinary restrictions placed on it.
`
`

`
`
`
`-3-
`
`Motion to Compel
`Serial No. 78/203,932
`
`III. FAILURE TO RULE NOW IMPAIRS APPLICANTS DEFENSE
`
`Applicant would be at a disadvantage if it has to argue not only the
`
`appropriateness of the request, but also for the ability of its pro se defense to see the
`
`requested information. Since any form of requested information can be labeled trade
`
`secret/commercially sensitive, it is appropriate to rule in applicants favor so that the
`
`entire matter may proceed.
`
`IV. THE RIGHT TO DEFEND ONESELF
`
`Implicit in the right to defend oneself, or a pro se defense, is the right to gather
`
`information from the other side, or to conduct discovery, under the same rules and
`
`protocol that would apply to hired counsel. If a party can appear in their own defense,
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`then it follows that the same rules would apply to both sides. Because applicant has no
`
`right to an attorney in these proceedings, the inability to conduct discovery would render
`
`the right to defend ones self meaningless.
`
`V. IMPORTANCE OF TRADE SECRET/COMMERCIALLY SENSITIVE
`
`INFORMATION
`
`Relevant trade secret/commercially sensitive information, as deemed by
`
`opponent, by definition, is unavailable to the seeking party, without appropriate
`
`

`
`
`
`-4-
`
`Motion to Compel
`Serial No. 78/203,932
`
`discovery. Because of the sensitive nature of the information, Federal Rules of Civil
`
`Procedure (Rule 34) provides ample protections for both parties. Opponent is not arguing
`
`that a particular request does not need to be produced for a specific authorized reason, but
`
`instead has taken the position that any information requested, which it labels trade
`
`secret/commercially sensitive, whether legitimate or not, need not be produced, unless
`
`applicant obtains outside legal counsel. If this view of the law prevailed, it would give an
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`unfair advantage to any larger entity bringing an opposition against a smaller company.
`
`Because there are a finite amount of funds available for a smaller company to defend
`
`itself, forcing a company to retain an attorney, and using tactical and procedural
`
`maneuvers to slow down the opposition, becomes a viable way of winning. A filed
`
`motion, no matter what a party’s View of it, still needs to be answered. A trademark
`
`opposition should be decided on the relevant facts, on a level playing field, and the
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`outcome should not be determined by which company is willing to spend more money.
`
`VI. CONCLUSION OF PROTECTIVE ORDER ARGUEMENT
`
`For the above stated reasons and because opponent is unwilling to sign the
`
`attached protective order, (Exhibit A) applicant request that TTAB compel opponent to
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`execute the attached protective order, so both parties can comply with discovery.
`
`

`
`
`
`-5-
`
`Motion to Compel
`Serial No. 78/203,932
`
`VII. REQUEST TO COMPEL ANSWERS TO APPLICANT’S REQUEST FOR
`
`ADMISSIONS
`
`Opponent returned its answers to Requests for Admission,(Attached Opponents
`
`Answers Exhibit B) to Applicant on April 8th, 2005. Requests 3, 4, 5, 6, 8 and 9 were
`
`answered inadequately, as the answers are nebulous, and provide no information.
`
`VIII. BACKGROUND
`
`Requests 3, 4, 5, 6, 8, and 9 deal with the specific chemistries of applicant’s
`
`product line, which are well established types of products, and have been used in industry
`
`for manufacturing all types of things for decades. Because these are engineered
`
`adhesives, meaning they are designed to do, and tested in, specific applications for
`
`suitability, and because by grouping them in families such as cyanoacrylate or anaerobic,
`
`a family of them can be removed from consideration for use based upon shared
`
`properties, opponents answer regarding the chemistry for their products is essential, and
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`applicant does not feel opponent has made a good faith effort to answer these questions.
`
`

`
`
`
`-6-
`
`Motion to Compel
`Serial No. 78/203,932
`
`IX. PRODUCTS SOLD BY PARTIES IS HIGHLY RELAVENT
`
`The fact that applicant and opponent sell different products to different people is a central
`
`issue to applicant’s defense. The definition of the goods and/or services for which
`
`opponent’s mark was registered, does not contain these types of products. There is no
`
`mention of these chemistries on opponent’s website. Opponent’s non-answers deny
`
`applicant the ability to advance its case.
`
`X. OPPONENT NEEDS TO MAKE A REASONABLE EFFORT TO EDUCATE
`
`ITSELF
`
`Applicant understands that because opponent sells different things to different
`
`people, they would be unfamiliar with applicant’s types of products; however, applicant
`
`does not understand how opponent can bring an opposition without knowing what it sells.
`
`Further, applicant has supplied opponent with Military and ASTM specifications which
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`clearly spell out what applicant’s products are and how they are defined, as well as other
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`non-confidential information. A great deal of information about these types of adhesives
`
`can be accessed by doing basic research on the Internet. Because these are reactive
`
`chemistries, and because they have to be handled in a specific way, otherwise they will
`
`

`
`
`
`-7-
`
`Motion to Compel
`Serial No. 78/203,932
`
`polymerize in their container, it is unlikely anyone would use these chemistries, let alone
`
`manufacture them, without being aware they were doing so. Because applicant has done
`
`a great deal already, to identify and educate opponent on the chemistries used in it’s
`
`products, and since opponent filed its opposition in August of 2004, applicant does not
`
`believe opponent has made a good faith effort to answer these requests. Opponent is free
`
`to retain an expert in the field of, anaerobic chemistry for example, in an effort to educate
`
`itself.
`
`XI. DIFFERENCE OF PRODUCTS IS COMMON INDUSTRY KNOWLEDGE
`
`Adhesives are classified into families, and because of shared properties, they can
`
`be removed from consideration for a particular application as a family, and remove the
`
`need to test every product in the family, in a particular application. For example, you
`
`carmot bond rubber with an anaerobic adhesive. So if a design engineer wanted to bond a
`
`piece of rubber, he can immediately disqualify all the different types of anaerobic
`
`adhesives without, testing any of the products in the family, based on the shared property
`
`that they don’t bond rubber. Because the differences in these adhesives is self evident by
`
`the different families the products fall into, applicant believes opponent’s answers to the
`
`respective requests was made in bad faith.
`
`

`
`
`
`-8-
`
`Motion to Compel
`Serial No. 78/203,932
`
`XII. CONCLUSION OF REQUESTS FOR ADMISSION ARGUMENT
`
`Since the types of products sold by the parties is central to the issue of market confusion,
`
`and in View of the specific nature of the requests, as well as the resulting
`
`prejudice to applicant of failure to comply by opponent, Applicant requests that opponent
`
`be compelled to answer the above requests, as provided for by Federal Rules for Civil
`
`Procedure (Rule 37), in either the affirmative or negative.
`
`XIII. REQUEST TO COMPEL OPPONENT TO PRODUCE NON-
`
`CONFIDENTIAL REQUESTED DISCOVERY INFORMATION
`
`Applicant respectful requests that opponent be compelled to immediately begin
`
`producing all non-confidential information requested in applicants discovery requests,
`
`and to compel opponent to begin producing all confidential information requested, that it
`
`does not intend on contesting, for any of the authorized reasons under Federal Rules for
`
`Civil Procedure, once a protective order is executed between the party’s.
`
`XIV. BACKGROUND
`
`The original opposition was filed in August of 2004. Opponent propounded
`
`discovery on applicant first. Both parties requested and received time extensions to
`
`comply with discovery, and because of other delays and a mutually agreed upon stay, not
`
`only have the deadlines, for both party’s to comply with discovery expired, but the
`
`

`
`
`
`-9-
`
`Motion to Compel
`Serial No. 78/203,932
`
`discovery period in the case has closed. Although neither party has relinquished any of
`
`the different types of confidential information, for lack of agreement on a suitable
`
`protective order, applicant has made a good faith attempt to provide opponent with those
`
`things requested, that are not of a confidential nature.
`
`XV. OPPONENT AGREES NON-CONFIDENTIAL DISCOVERY SHOULD BE
`
`PRODUCED WITHOUT AN EXECUTED PROTECTIVE ORDER
`
`Opponent has already asserted in a letter dated February 15, 2005, ( attached
`
`Tracy Durkin letter, page 1, second paragraph, exhibit C) that non-confidential requested
`
`information should be immediately produced. Opponent stated:
`
`“...we want to remind you that the lack of a Protective Order should in no way
`
`preclude you from producing requested information which you do not intend to designate
`
`as confidential, highly confidential [sic] or trade secret/commercially sensitive. Surely
`
`not all of the information we have requested falls into one of these categories (eg.,
`
`marketing materials which have been provided to the public). Accordingly, we look
`
`forward to receiving your non-confidential responses and documents immediately, or we
`
`will ask the court to order you to either produce them or be precluded from relying on
`
`them in defense of this matter.”
`
`

`
`
`
`-10- Motion to Compel
`Serial No. 78/203,932
`
`Since opponent agrees that non-confidential discovery requests should be immediately
`
`produced, and applicant has complied with opponents above request, applicant sees no
`
`reason why opponent has failed to, and refuses to, comply in the same manner.
`
`XVI. OPPONENT HAS ASSERTED A SPECIAL PRIVILEDGE
`
`In a lettered dated June 3, 2005 , (attached Tracy Durkin letter, page 2, last
`
`paragraph, exhibit D) opponent has asserted a special privilege that is not available to it
`
`under Federal Rules for Civil Procedure. Opponent stated:
`
`“To the extent that we have not fully responded to any of your discovery, we will
`
`review the same and make every effort to respond afier we have received the
`
`above noted information from you.”
`
`Since the referenced “noted information” covers all of the requested information
`
`propounded on applicant in opponent’s discovery, opponent is claiming it will not
`
`produce any discovery information, until after a protective order is executed, and
`
`applicant has supplied all of the information opponent has requested. Although opponent
`
`filed its discovery requests before applicant, both parties’ were granted extensions and
`
`those respective extensions have expired, as well as the discovery period itself. Since
`
`applicant sent this type of information to opponent on February 21, 2005, applicant can
`
`see no reason why opponent should not immediately make a good faith effort to turn over
`
`

`
`
`
`-11- Motion to Compel
`Serial No. 78/203,932
`
`those items that are not of a confidential nature. Further, applicant knows of no good
`
`reason why this opposition should be further delayed, by opponent’s stated intensions of
`
`waiting until it receives all of applicant’s information before it responds in kind.
`
`XVIII. CONCLUSION OF ARGUEMENT TO COMPEL DISCOVERY
`
`For the above stated reasons, and because Federal Rules for Civil Procedure
`
`provide for a fair discovery, applicant respectfiilly requests that opponent be compelled to
`
`immediately make a good faith effort to turn over all discovery information that has been
`
`requested, and is not of a confidential nature. Applicant also respectfully requests, that
`
`once a protective order is executed by the party’s, opponent be compelled to comply with
`
`applicants confidential discovery requests, in the same time frame as applicant.
`
`

`
`
`
`-12- Motion to Compel
`Serial No. 78/203,932
`
`Respectfully submitted,
`
`r—§g.d.
`Date: (Jim 14 20:25
`
`. Rosenberg
`Kevin
`Vice President
`
`Adhesive R&D, Inc
`3013 Mondovi Road
`
`Eau Claire, WI 54701
`
`

`
`
`
`g)(k’I'bf+ /4'
`
`/of 7
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In The Matter of Trademark Application:
`Mark: Adhesive R&D and design
`Serial No.:78/203,932
`Filed: January 16, 2003
`Published: July 27, 2004
`
`Adhesives Research, Inc.
`(Opponent)
`
`VS.
`
`Adhesive R&D, Inc.
`(Applicant)
`_
`
`\/\./\/\)§/\é\./é
`
`)
`
`Serial No.
`
`
`78/203 932
`
`Opposition No.
`
`91161723
`
`Atty. Docket: 2262.001OPTO/TGD/HMR
`
`PROVISIONS FOR PROTECTING
`CONFIDENTIALITY OF INFORMATION
`
`REVEALED DURING BOARD PROCEEDING
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3 514
`
`TERMS OF ORDER
`
`1.) Classes of Protected Information.
`
`The Rules of Practice in Trademark Cases provide that all inter parties proceeding
`files, as well as the involved registration and application files, are open to public
`inspection. The terms of this order are not to be used to undermine public access
`to files. When appropriate, however, a party or witness, on its own or through its
`attorney, may seek to protect the confidentiality of information by employing one
`of the following designations.
`
`Confidential—Material to be shielded by the Board from public
`access, but accessible by and to employees of either party.
`
`

`
`2
`
`,4 $9157
`
`Highly Confidential—Material to be shielded by the Board from
`public access and restricted from access by employees of either
`party, with the exception of in-house counsel and outside counsel
`of Adhesives Research, Inc., and Kevin Rosenberg, in his capacity
`as pro se defense for Adhesive R&D, Inc.
`
`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 Tracy-Gene G. Durkin, in her
`capacity as outside counsel for Adhesives Research, Inc., and
`Kevin Rosenberg, in his capacity as pro se defense for Adhesive
`R&D, Inc., subject to the provisions of paragraph 4 and 5, by
`independent experts or consultants for the parties.
`
`2)
`
`Information Not to Be Designated as Protected.
`
`Information may not be designated as subject to any form of protection if it (a) is,
`or becomes, public knowledge, as shown by publicly available writings, other
`than through violation of the terms of this document; (b) is acquired by a non-
`designating party or non-party witness from a third party lawfully possessing such
`information and having no obligation to the owner of the information; © was
`lawfully possessed by a non—designating party or non-party witness prior to the
`opening of discovery in this proceeding, and for which there is written evidence
`of the lawf11l possession; (d) is disclosed by a non—designating party or non-party
`witness legally compelled to disclose the information; or (e) is disclosed by a non-
`designating party with the approval of the designating party.
`
`3) Access to Protected Information.
`
`The provisions of this order regarding access to protected information are subject to
`modification by written agreement of the parties or their attorneys, or by motion
`filed with and approved by the Board.
`Judges, attorneys, and other employees ofthe Board are bound to honor the parties’
`designations of information as protected but are not required to sign forms
`acknowledging the terms and existence of this order. Court reporters,
`stenographers, video technicians or others who may be employed by the parties or
`their attorneys to perform services incidental to this proceeding will be bound
`only to the extent that the parties or their attorneys make it a condition of
`employment or obtain agreements from such individuals, in accordance with the
`provisions of paragraph 4.
`Parties are defined as including individuals, officers of corporations, partners of
`partnerships, and management employees of any type of business organization.
`Attorneys for parties are defined as including in-house counsel and outside
`counsel.
`
`

`
`
`
`A 301‘?
`
`Independent experts or consultants include individuals retained by a party for
`purposes related to prosecution or defense of the proceeding but who are not
`otherwise employees of either the party or its attorneys.
`Non-party witnesses include any individuals to be deposed during discovery or
`trial, whether willingly or under subpoena issued by a court of competent
`jurisdiction over the witness.
`Parties and their attorneys shall have access to information designated as
`confidential or highly confidential, subject to any agreed exceptions.
`Outside counsel, but not in-house counsel, for Adhesives Research and Kevin
`Rosenberg, in his capacity as pro se defense for Adhesive R&D, Inc., shall have
`access to information designated as trade secret/commercially sensitive.
`Independent experts or consultants, non-party witnesses, and any other individual not
`otherwise specifically covered by the terms of this order may be afforded access
`to confidential or highly confidential information in accordance with the terms
`that follow in paragraph 4. Further, independent experts or consultants may have
`access to trade secret/commercially sensitive information if such access is agreed
`to by the parties or ordered by the Board, in accordance with the terms that follow
`in paragraph 4 and 5.
`
`4) Disclosure to Any Individual.
`
`Prior to disclosure of protected information by any party or its attorney to any
`individual not already provided access to such information by the terms of this
`order, the individual shall be informed of the existence of this order and provided
`with a copy to read. The individual will then be required to certify in writing that
`the order has been read and understood and that the terms shall be binding on the
`individual. No individual shall receive any protected information until the party or
`attorney proposing to disclose the information has received the signed
`certification from the individual. A form for such certification is attached to this
`
`order. The party or attorney receiving the completed form shall retain the original.
`
`5) Disclosure to Independent Experts or Consultants.
`
`In addition to meeting the requirements of paragraph 4, any party or attorney, or
`Kevin Rosenberg, in his capacity as pro se defense for Adhesive R&D, Inc.,
`proposing to share disclosed information with an independent expert or consultant
`must also notify the party which designated the information as protected.
`Notification must be personally served or forwarded by certified mail, return
`receipt requested, and shall provide notice of the name, address, occupation and
`professional background of the expert or independent consultant.
`The party or its attorney receiving the notice shall have ten (10) business days to
`object to disclosure to the expert or independent consultant. If objection is made,
`then the parties must negotiate the issue before raising the issue before the Board.
`If the parties are unable to settle their dispute, then it shall be the obligation of the
`party or attorney proposing disclosure to bring the matter before the Board with
`an explanation of the need for disclosure and a report on the efforts the parties
`
`

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`/1 #of7
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`have made to settle their dispute. The party objecting to disclosure will be
`expected to respond with its arguments against disclosure or its objections will be
`deemed waived.
`
`6) Responses to Written Discovery.
`
`Responses to interrogatories under Federal Rule 33 and requests for admissions
`under Federal Rule 36, and which the responding party reasonably believes to
`contain protected information shall be prominently stamped or marked with the
`appropriate designation from paragraph 1. Any inadvertent disclosure without
`appropriate designation shall be remedied as soon as the disclosing party learns of
`its error, by informing all adverse parties, in writing, of the error. The parties
`should inform the Board only if necessary because of the filing of protected
`information not in accordance with the provisions of paragraph 12.
`
`7) Production of Documents.
`
`If a party responds to requests for production under Federal Rule 34 by making
`copies and forwarding the copies to the inquiring party, then the copies shall be
`prominently stamped or marked, as necessary, with the appropriate designation
`from paragraph 1. If the responding party makes documents available for
`inspection and copying by the inquiring party, all documents shall be considered
`protected during the course of inspection. After the inquiring party informs the
`responding party what documents are to be copied, the responding party will be
`responsible for prominently stamping or marking the copies with the appropriate
`designation from paragraph 1. Any inadvertent disclosure without appropriate
`designation shall be remedied as soon as the disclosing party learns of its error, by
`informing all adverse parties, in writing, of the error. The parties should inform
`the Board only if necessary because of the filing of protected information not in
`accordance with the provisions of paragraph 12.
`
`8) Depositions.
`
`Protected documents produced during a discovery deposition, or offered into
`evidence during a testimony deposition shall be orally noted as such by the
`producing or offering party at the outset of any discussion of the document or
`information contained in the document. In addition, the documents must be
`prominently stamped or marked with the appropriate designation.
`During discussion of any non-documentary protected information, the interested
`party shall make oral note of the protected nature of the information.
`The transcript of any deposition and all exhibits or attachments shall be
`considered protected for 30 days following the date of service of the transcript by
`the party that took the deposition. During that 30-day period, either party may
`designate the portions of the transcript, and any specific exhibits or attachments
`that are to be treated as protected, by electing the appropriate designation from
`paragraph 1. Appropriate stampings or markings should be made during this time.
`
`

`
`A n+7
`
`If no such designations are made, then the entire transcript and exhibits will be
`considered unprotected.
`
`9) Filing Notices of Reliance.
`
`When a party or its attorney files a notice of reliance during the party’s testimony
`period, the party or attorney is bound to honor designations made by the adverse
`party or attorney, or non-party witness, who disclosed the information, so as to
`maintain the protected status of the information.
`
`10) Briefs.
`
`When filing briefs, memoranda, or declarations in support of a motion, or briefs at
`final hearing, the portions of these filings that discuss protected information,
`whether information of the filing party, or any adverse party, or any non-party
`witness, should be redacted. The rule of reasonableness for redaction is discussed
`in paragraph 12 of this order.
`
`11) Handling of Protected Information.
`
`Disclosure of information protected under the terms of this order is intended only
`to facilitate the prosecution or defense of this case. The recipient of any protected
`information disclosed in accordance with the terms of this order is obligated to
`maintain the confidentiality of the information and shall exercise reasonable care
`in handling, storing, using or disseminating the information.
`
`12) Redaction; Filing Material With the Board.
`
`When a party or attorney must file protected information with the Board, or a
`brief that discusses such information, the protected information or portion of the
`brief discussing the same should be redacted from the remainder. A rule of
`reasonableness should dictate how redaction is effected.
`
`Redaction can entail merely covering a portion of a page of material when it is
`copied in anticipation of filing but can also entail the more extreme measure of
`simply filing the entire page under seal as one that contains primarily confidential
`material. If only a sentence or short paragraph of a page of material is
`confidential, covering that material when the page is copied would be appropriate.
`In contrast, if most of the material on the page is confidential, then filing the
`entire page under seal would be more reasonable, even if some small quantity of
`non-confidential material is then withheld from the public record. Likewise, when
`a multi—page document is in issue, reasonableness would dictate that redaction of
`the portions or pages containing confidential material be affected when only some
`small number of pages contain such material. In contrast, if almost every page of
`the document contains some confidential material, it may be more reasonable to
`simply submit the entire document under seal. Occasions when a whole document
`or brief must be submitted under seal should be very rare.
`
`

`
`
`
`A @447
`
`Protected information, and pleadings, briefs or memoranda that reproduce, discuss
`or paraphrase such information, shall be filed with the Board under seal. The
`envelopes or containers shall be prominently stamped or marked with a legend in
`substantially the following form:
`
`CONFIDENTIAL
`
`This envelope contains documents or
`information that are subject to a protective order
`or agreement. The confidentiality of the material
`is to be maintained and the envelope is not to be
`opened, or the contents revealed to any
`individual, except by order of the Board.
`
`13) Acceptance of Information; Inadvertent Disclosure.
`
`Acceptance by a party or its attorney of information disclosed under designation
`as protected shall not constitute an admission that the information is, in fact,
`entitled to protection. Inadvertent disclosure of information, which the disclosing
`party intended to designate as protected, shall not constitute waiver of any right to
`claim the information as protected upon discovery of the error.
`
`14) Challenges to Designations of Information as Protected.
`
`If the parties or their attorneys disagree as to whether certain information should
`be protected, they are obligated to negotiate in good faith regarding the
`designation by the disclosing party. If the parties are unable to resolve their
`differences, the party challenging the designation may make a motion before the
`Board seeking a determination of the status of the information.
`A challenge to the designation of information as protected must be made
`substantially contemporaneous with the designation, or as soon as practicable
`after the basis for challenge is known. When a challenge is made long after a
`designation of information as protected, the challenging party will be expected to
`show why it could not have made the challenge at an earlier time.
`The party designating information as protected will, when its designation is timely
`challenged, bear the ultimate burden of proving that the information should be
`protected.
`
`15) Board’s Jurisdiction; Handling of Materials After Termination.
`
`The Board’s jurisdiction over the parties and their attorneys ends when this
`proceeding is terminated. A proceeding is terminated only after a final order is
`entered and either all appellate proceedings have been resolved or the time for
`filing an appeal has passed without filing of any appeal.
`
`

`
`
`/1 70157
`
`The parties may agree that archival copies of evidence and briefs may be retained,
`subject to compliance with agreed safeguards. Otherwise, within 30 days after the
`final termination of this proceeding, the parties and their attorneys shall return to
`each disclosing party the protected information disclosed during the proceeding,
`and shall include any briefs, memoranda, summaries, and the like, which discuss
`or in any way refer to such information. In the alternative, the disclosing party or
`its attorney may make a written request that such materials be destroyed rather
`than returned.
`
`16) Other Rights of the Parties and Attorneys.
`
`This order shall not preclude the parties or their attorneys from making any
`applicable claims of privilege during discovery or at trial. Nor shall the order
`preclude the filing of
`any motion with the Board for relief from a particular provision of this order or
`for additional protections not provided by this order.
`By Agreement of the Following,
`Effective:
`
`Kevin G. Rosenberg
`Vice President
`
`Adhesive R&D, Inc.
`
`Tracy-Gene G. Durkin
`Attorney for Opponent
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`
`By Order of the Board, effective
`
`

`
`
`
`;;;.;::
`
`/9747
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TR ADFMARK TRIAL AND APPEAL. BOARD
`
`3 Opposition No. 91161723
`
`)
`
`)
`
`} )
`
`) Atty. Docket: 2262.00lOPTO/TOD/JDS
`
`In the Matter of Trademark Application:
`Mark: ADHESIVE R&D and Design
`Serial No.: 78/203932
`
`Filed: January 16, 2003
`Published: July 27, 2004
`—.—-.......a...- ..._.__-,.._,._._.. .
`_
`,_ _._-
`
`Adhesives lResearcl1, Inc,
`Opposer
`
`V.
`
`A(ll’l€SlV¢.‘ Rcseaxch & Dcvclopmcnt,
`
`..——~...__._‘,-.__. -___,, _.%'
`Applicant,
`
`0I’POSER’S RESPONSES TO APPLICANT'S FIRST SET OF REQUESTS FOR
`ADMISSION
`
`Pursuant to Rule 36(_b) of the Federal Rules of Civil Procedure, Opposer hereby rcsponds
`
`to txpplicanfs First Set of Requests for Admission.
`
`1:;:.sp2ga9s_e_@.¢0b;2_'Cl,i._0I1._&£~7_9.!Z_1_'I1sLLli_¢.z.A_.,1.1._R-emtifité
`
`1.
`
`Opposer, based upon its current knowledge, understanding and beliefofthc fact»;
`
`and infonnation and documents available to it, responds by its answers and objections as set
`
`forth below.
`
`These responses reflect only the current state of Opposer's knowledge,
`
`unrlerstandirlg, and belief respecting the matter.~3 about which admission has been requested and,
`
`thcxetorc, the responses herein can only constitute a preliminary rcsporlse of Opposcr.
`
`APE-' 08,2005 14:51
`
`202 218 7813
`
`Page 3
`
`

`
`
`
`5 ZJ7
`
`ta)
`
`2.
`
`Opposer has not yet completed discovery in this Opposition. Opposer anticipates;
`
`that 35 it Pfoceeds. further facts and documents may be discovered by Opposer relating to the
`
`matters about which admission has been requested, and Opposer reserves its right to modify or
`
`supplement its responses.
`
`3.
`
`These responses are given without prejudice to using or relying on subsequently
`
`discovered information omitted from these responses as a result of mistake, error, oversight or
`
`inaclvertence. Opposer further reserves the right to produce additional facts, documents, and
`
`evidence and to object on appropriat